Westmore · UDRP DecisionBoynerler.com
The Panel found <boynerler.com> confusingly similar to the Complainant’s BOYNER trademark and held that the Complainant had established a prima facie case that the Respondent lacked rights or legitimate interests. The Complaint nevertheless failed because the Complainant did not prove bad-faith registration and use. In particular, the Respondent’s surname was Boyner, the registered organization was Boyners, and the Complaint did not provide compelling evidence that the Respondent targeted the Complainant or was likely aware of its trademark when registering the domain name.
The timeline behind boynerler.com
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
Westmore reconstructs the full history behind boynerler.com — from public RDAP and the Internet Archive — as part of UDRP Intelligence:
This decision illustrates the separation between the second and third UDRP elements. A respondent’s default and failure to prove that it is commonly known by a domain may permit a complainant to satisfy the rights-or-legitimate-interests element, while the same record may still be insufficient to prove bad-faith targeting. The surname correspondence was especially important because it provided a plausible explanation for the registration that the Complaint did not overcome with evidence of trademark awareness or targeting.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Boyner Büyük Magazacilik Anonim Sirketi v. Ali Boyner, Boyners Case No. D2018-1832 1. The Parties Complainant is Boyner Büyük Magazacilik Anonim Sirketi of Istanbul, Turkey, represented by Tellioglu Kaslioglu Law Office, Turkey. Respondent is Ali Boyner, Boyners of Geneva, Switzerland. 2. The Domain Name and Registrar The disputed domain name <boynerler.com> is registered with GoDaddy.com, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 10, 2018. On August 10, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 13, 2018, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the 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 August 14, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 3, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 4, 2018. The Center appointed Stephanie G. Hartung as the sole panelist in this matter on September 7, 2018. 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 Complainant is a company organized under the laws of Turkey who – according to some limited factual research undertaken by the Panel within its Powers set forth by paragraphs 10 and 12 of the Rules –apparently is active, inter alia , in the online sales business under the website at “www.boyner.com.tr” set up in the Turkish language. Complainant has demonstrated to be the owner of numerous registered trademarks relating to the name “Boyner” with protection for the territory of Turkey as well as the European Union, including, inter alia : - Figurative mark BOYNER, European Union Intellectual Property Office (“EUIPO”), Registration Number: 004063475, Registration Date: December 21, 2005, Status: Active. Respondent, who according to the WhoIs information for the disputed domain name as confirmed by the Registrar to the Center on August 13, 2018, is a resident of Switzerland whose last name is “Boyner”. As of the time of the rendering of this decision, the disputed domain name redirects to a standard parking site set up by the Registrar where the disputed domain name is offered for sale. The website also includes pay-per-click links. Complainant requests that the disputed domain name be transferred to Complainant. 5. Parties’ Contentions A. Complainant Complainant contends that it is one of the biggest companies in Turkey. Furthermore, Complainant argues that Respondent has no rights or legitimate interests in respect of the disputed domain name since (1) Complainant has not given Respondent any authorization or license to use its BOYNER trademark and (2) “Boyner” is not a common word or generic name commonly used by third parties in relation to goods or services, but is the surname of the family being Complainant’s shareholders. Finally, Complainant submits that Respondent has registered and is using the disputed domain name in bad faith since the existence of the parking site under the disputed domain name dilutes Complainant’s BOYNER trademark and harms Complainant’s commercial standing and market recognition. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, Complainant carries the burden of proving: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainants have rights; and (ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith. Respondent’s default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(f) of the Rules provides that if Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute solely based upon the Complaint. Further, the Panel may draw such inferences as are appropriate from Respondent's failure to submit a Response. A. Identical or Confusingly Similar The Panel concludes that the disputed domain name <boynerler.com> is confusingly similar to the BOYNER trademark in which Complainant has rights. The disputed domain name incorporates the BOYNER trademark in its entirety. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see, e.g. , PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS) , WIPO Case No. D2003-0696 ). The addition of the suffix “ler” to Complainant’s BOYNER trademark in the disputed domain name is not in contrast to such finding. According to further limited factual research undertaken by the Panel, the syllable “ler” is used to form the plural in the Turkish language. Therefore, for those who have command of the Turkish language, the disputed domain name will read as “Boyners” which obviously constitutes just a minor modification of Complainant’s BOYNER trademark; for all others without command of the Turkish language, it must be found that Complainant’s trademark is still easily recognizable within the disputed domain name, which in turn and according to a consensus view among UDRP panels is sufficient to find for a confusing similarity between trademark and disputed domain name (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“ WIPO Overview 3.0”), section 1.7 ). Therefore, Complainant has established the first element under the Policy as set forth by paragraph 4(a)(i). B. Rights or Legitimate Interests The Panel, further, has to decide whether or not Respondent has rights or legitimate interests in respect of the disputed domain name. In order to demonstrate such rights or legitimate interests, according to paragraph 4(c) of the UDRP, a non-exclusive catalogue of respondent defenses includes the following: (i) before any notice of the dispute, the respondent’s 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) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or (iii) the respondent is 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. While the overall burden of proof in UDRP proceedings is on the complainant, there is a consensus view among UDRP panels that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element (see WIPO Overview 3.0, section 2.1 ). Complainant contends not to have authorized or licensed Respondent to use its BOYNER trademark. Also, Respondent so far obviously has not made use of the disputed domain name other than to redirect it to a standard parking page run by the Registrar where it is offered for sale which neither constitutes a bona fide offering of goods or services within the meaning of UDRP, paragraph 4(c)(i), nor a legitimate noncommercial or fair use without intent for commercial gain within the meaning of UDRP, paragraph 4(c)(iii). Complainant, moreover, points to the fact that the term “Boyner” apparently is the surname of the family who are Complainant’s shareholders. By the same time, according to the WhoIs information for the disputed domain name as confirmed by the Registrar to the Center on August 13, 2018, “Boyner“ also is the registered surname of Respondent and “Boyners” is the name of the registered organization. It, therefore, might well be that Respondent (as an individual, business, or other organization) is or has been commonly known by the disputed domain name as set forth by UDRP, paragraph 4(c)(ii), bearing in mind that “Boynerler” as reflected in the disputed domain name means “Boyners” when translated from Turkish to English. Respondent, however, has failed to bring any evidence showing that it truly is or was “commonly known” as opposed to “incidentally being known” by the disputed domain name as this typically includes the presentation of, e.g. ,a birth certificate or articles of incorporation (see WIPO Overview 3.0, section 2.3 ). Against this background, it must be summarized that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name with the burden of production shifting to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 3.0, section 2.1 ). Given that Respondent has defaulted, Respondent has not met that burden. Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy. C. Registered and Used in Bad Faith Finally, the Panel must answer whether or not Respondent has registered and is using the disputed domain name in bad faith. As a general rule, bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark with a catalogue of non-exclusive scenarios constituting evidence of such bad faith set forth by paragraph 4(b) of the UDRP, namely: (i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or (ii) the 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 the respondent has engaged in a pattern of such conduct; or (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location. Complainant submits that the mere existence of the parking site under the disputed domain name (where the latter is even offered for sale) dilutes Complainant’s BOYNER trademark and harms Complainant’s commercial standing and market recognition. By the same time, Complaint itself points to the fact that “Boyner” is a typical Turkish family name which Complainant’s shareholders and Respondent obviously have in common. The Panel notes that the Complaint lacks any explanation or at least attempts to explain as to why Respondent, named “Boyner”, still aimed at Complainant and its BOYNER trademarks when registering the disputed domain name. There is no information whatsoever given in the Complaint as to why e.g. Complainant’s BOYNER trademark is so well-known even outside the territory of Turkey that it is more likely than not that Respondent was aware of this trademark when registering the disputed domain name. Also, Complainant has not commented on the fact that the disputed domain name indeed varies from Complainant’s BOYNER trademark as it includes the term “Boynerler” (meaning “Boyners” when translated from Turkish to English) and not simply “Boyner” as in Complainant’s trademark. While the Panel accepts that Respondent’s default in the case results to a finding, in line with UDRP jurisprudence, that Respondent lacks rights or legitimate interests in the disputed domain name, nevertheless, it would have been up to Complainant to establish with compelling evidence bad faith registration and use of the disputed domain name, as set out in paragraph 4(b) of the UDRP. The Panel finds that Complainant has not met its burden in this regard. Accordingly, the Panel finds that Complainant has not satisfied the third element under the Policy as set forth by paragraph 4(a)(iii). 7. Decision For the foregoing reasons, the Complaint is denied. Stephanie G. Hartung Sole Panelist Date: September 19, 2018
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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