WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Al Fakher International Co. v. WhoisGuard Protected, WhoisGuard Inc. / Harun Kaptan

Case No. D2019-1097

1. The Parties

Complainant is Al Fakher International Co., Cayman Islands, represented by Turunç, Turkey.

Respondent is WhoisGuard Protected, WhoisGuard Inc., Panama / Harun Kaptan, Turkey.

2. The Domain Name and Registrar

The disputed domain name <alfakherturkey.com> (“Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 10, 2019. On May 13, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 13, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on May 14, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on May 14, 2019.

The Center verified that the Complaint, together with the amended Complaint, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 15, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 4, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 5, 2019.

The Center appointed Marina Perraki as the sole panelist in this matter on June 7, 2019. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

According to the Complaint, Complainant produces and markets shisha tobacco products under the “Al Fakher” brand and is one of the major sellers in the market. Complainant owns several trademark registrations in different countries and territories around the world that consist of or include the words “Al Fakher”.

These trademark registrations include, for example, the European Union trademark registration (word and logo) No. 005309075, filed on September 12, 2006, registered on June 26, 2007, for goods and services in international classes 16, 34 and 43 and the Turkish Trademark Registration No. 2006/38296 (word and logo), filed on September 4, 2006, registered on July 31, 2007, for goods in international classes 16 and 34.

Complainant operates its website for the sale of its products at “www.alfakher.com”.

The Domain Name was registered on March 8, 2019, and, at the time of filing of the Complaint, resolved, per the respective screenshot provided by Complainant, to a parking page.

5. Parties’ Contentions

A. Complainant

Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Complainant has demonstrated rights through registration and use on the AL FAKHER mark.

The Panel finds that the Domain Name <alfakherturkey.com> is confusingly similar with the AL FAKHER mark of Complainant.

The Domain Name incorporates the said mark of Complainant in its entirety. This is sufficient to establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525).

The geographic term “turkey” which is added in the Domain Name is disregarded as it is a geographic, non-distinctive term (BHP Billiton Innovation Pty Ltd v. Oloyi, WIPO Case No. D2017-0284; Accenture Global Services Limited v. Jean Jacque / Luck Loic, WIPO Case No. D2016-1315; Wragge Lawrence Graham & Co LLP v. Registration Private, Domains by Proxy LLC / Ian Piggin, WIPO Case No. D2015-0135; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8).

The generic Top-Level Domain (“gTLD”) “.com” is also disregarded, as gTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons only (Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275; Hay & Robertson International Licensing AG v. C. J. Lovik, WIPO Case No. D2002-0122).

The Panel finds that the Domain Name <alfakherturkey.com> is confusingly similar to the AL FAKHER mark of Complainant.

Complainant has established Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name.

Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Name. As per Complaint, Respondent was not authorized to register the Domain Name.

Respondent did not demonstrate, prior to the notice of the dispute, any use of the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services. On the contrary, as Complainant has demonstrated, the Domain Name lead to a web parking page.

The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name.

Complainant has established Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:

(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or

(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

The Panel concludes that Respondent has registered and used the Domain Name in bad faith. As per Complaint, Complainant’s AL FAKHER mark has long been recognized worldwide for shisha tobacco products. Because the AL FAKHER mark had been widely registered and used at the time of the Domain Name registration by Complainant, the Panel finds it more likely than not that Respondent had Complainant’s mark in mind when registering this Domain Name (Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., WIPO Case No. D2014-1754; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).

Respondent should have known about Complainant’s rights, as such knowledge is readily obtainable through a simple browser search due to Complainant’s wide use of AL FAKHER mark on the Internet, namely at the website “www.alfakher.com” (Caesars World, Inc. v. Forum LLC, WIPO Case No. D2005-0517; Compart AG v. Compart.com / Vertical Axis Inc., WIPO Case No. D2009-0462).

Furthermore, the Domain Name incorporates in whole Complainant’s mark plus the additional non-distinctive geographic term “turkey”. Therefore, inclusion of the word “turkey” creates a likelihood of confusion with Complainant’s mark and business, giving the false impression that the Domain Name concerns Complainant’s business in Turkey.

As regards bad faith use, Complainant demonstrated that the Domain Name leads to an inactive site. The non-use of a domain name would not prevent a finding of bad faith (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Société Air France v. Domain Administrator, See PrivacyGuardian.org / Steve David, Kamran Khan, Muhammad Faisal, supra; DCI S.A. v. Link Commercial Corporation, WIPO Case No. D2000-1232; Clerical Medical Investment Group Limited v. Clericalmedical.com (Clerical & Medical Services Agency), WIPO Case No. D2000-1228; Accor, So Luxury HMC v. Youness Itsmail, WIPO Case No. D2015-0287; Crédit industriel et commercial S.A. v. Registration Private, Domains By Proxy, LLC, WIPO Case No. D2016-2447; WIPO Overview 3.0, section 3.3).

Lastly, as Complainant has demonstrated, at the time of the filing of the Complaint, the Domain Name was registered with a privacy shield service to hide the registrant’s identity.

Under these circumstances and on this record, the Panel finds that Respondent has registered and is using the Domain Name in bad faith.

Complainant has established Policy, paragraph 4(a)(iii).

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <alfakherturkey.com> be transferred to Complainant.

Marina Perraki
Sole Panelist
Date: June 20, 2019