ADMINISTRATIVE PANEL DECISION
Tizio Mobilya Ins.Tur. San.Ve TI.c.Ltd. S,ti. v. Privacy--Protect.org / Marco Gaetano Tizio
Case No. D2012-0240
1. The Parties
The Complainant is Tizio Mobilya Ins.Tur. San.Ve TI.c.Ltd. S,ti. of Akyurt, Ankara, Turkey, represented by SIMAJ Patent & Trademark Attorneys, Turkey.
The Respondent is Privacy--Protect.org of Shanghai, China / Marco Gaetano Tizio of Roma, Italy, self-represented.
2. The Domain Name and Registrar
The disputed domain name 'Tizio.com' is registered with Hebei Guoji Maoyi (Shanghai) LTD aka Hebei International Trading (Shanghai) Co., Ltd dba HebeiDomains.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 9, 2012. On February 9, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 10, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 15, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 17, 2012.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 24, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 15, 2012. An email communication from the Respondent was filed with the Center on March 14, 2012.
The Center appointed James A. Barker as the sole panelist in this matter on March 29, 2012. 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.
On May 2, 2012, the Panel issued a Panel Order (the “Panel Order”) under paragraph 12 of the Rules, inviting the Respondent to provide further information by May 8, 2012, and extending the due date for decision until May 21, 2012. The Respondent submitted no reply to that invitation.
4. Factual Background
The Complainant, a business incorporated in Turkey under the name Tizio Mobilya I.ns,aat Turizm Sanayi ve Ticaret Limited S,irketi (Tizio Furniture Building Tourism Industry and Trade Limited Company) was established at the beginning of 2001 in Ankara, Turkey. The Complainant says that it is a renowned furniture producer in Turkey and has numerous stores in Turkey. The Complainant also launched stores in Dakar, Senegal, in 2009 and in New York in 2010. The Complainant owns the trademark Tizio, and its manufacturing plants are located in Akyurt, Ankara. All its relevant products marketed domestically and internationally are manufactured in these plants.
The Complainant has various registered marks in Turkey for ONNI, CONCETTO MOBILI Tizio, and Tizio, variously registered in a number of classes since as early as 2001. The Complainant’s Tizio mark has been registered in Turkey since at least 2003. The Complainant says that its Tizio mark has no meaning in any language. The Complainant also has registrations of marks maintained under the Madrid Agreement and Protocol, including a design mark for Tizio. The designations for that mark under the Madrid Agreement and Protocol are Austria, Benelux, Czech Republic, France, Germany, Greece (limited to class 20), Hungary, Islamic Republic of Iran, Italy ( limited to class 20), Poland, Romania, Russian Federation, Slovakia, Slovenia, United Kingdom of Great Britain and Northern Ireland (limited to class 20), and United States of America (limited to class 20). In addition to designations maintained under the Madrid Agreement and Protocol, the Complainant has a registration with the number of 3200901295 in OAPI (Organisation Africaine de la Propriété Intellectuelle) member states on July 2, 2009. The Complainant provided evidence of its registered marks in attachments to the Complaint.
The Complainant also operates the websites “www.Tizio.com.tr” and “www.Tizio.us”.
The disputed domain name was created on December 17, 2007. According to the evidence submitted in the Complaint the disputed domain name resolved to a website which contained various references, including the “bedroom furniture” and “sofa sets”.
5. Parties’ Contentions
Based on its registered marks, the Complainant claims that the disputed domain name is identical to the mark or name in which the Complainant has rights.
The Complainant says that the Respondent has no right or authorization to use the disputed domain name. The disputed domain name “is patently false and it is likely to cause confusion for consumers of the Complainant” because it is identical to the Complainant’s mark. The Complainant says that the Respondent’s website features some pictures and headings related to furniture of the Respondent, but these “are only for show and they are not real”. The Respondent has no license, permission or authorization by which it could own or use the domain name registrations which are confusingly similar to any of the Complainant’s mark. It does not appear that the Respondent is commonly known by the Tizio trademark. By using a privacy service, the Respondent has attempted to hide its activities from scrutiny.
The Complainant says that the disputed domain name was registered and has been used primarily for the purpose of transferring the domain name registration for valuable consideration. On February 10, 2009 the Complainant’s authorized representative contacted the disputed domain name’s registrant (whose information was available at that time), Chen Karl, which the Complainant says was probably a fake identity since there was no information about the registrant of the domain name in the concerned registrar’s WhoIs database. The Complainant’s representative asked Chen Karl if he wanted to sell the disputed domain name and offered USD 1,000. In reply to that mail, Chen Karl invited “an offer that he could not refuse”. However, the Complainant considered that its offer of USD 1,000 was sufficient and the dialogue was concluded. After this situation the information about the registrant started to be protected by “Privacy--Protect.org”.
The Complainant says that the Respondent was aware of the Complainant’s existence and its Tizio trademark and products at that time it registered the disputed domain name. The Complainant points out that its website at “www.Tizio.com.tr” was registered on July 11, 2002. The disputed domain name was registered on December 17, 2007 according to WhoIs database search. The Respondent’s use of the domain name is not fair; it is being used to deceive the Complainant’s potential clients. This use is disruptive to the Complainant’s business and results in a loss of potential business to the Complainant because the Respondent is confusing Internet users.
^ The Respondent did not submit a formal Response but sent an email communication to the Center on March 14, 2012. In that email, the Respondent stated, in response to an email to the Center from a person claiming to be the former registrant (“Marco Gaetano Tizio”), that someone was trying to impersonate him, and that he was using the disputed domain name in connection with “family email”.
6. Discussion and Findings
To succeed under paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
These three elements are discussed as follows.
A. Identical or Confusingly Similar
The Complainant provided evidence of its registered rights in the Tizio mark. It is well-established, in prior decisions under the Policy, that the “.com” extension is to be disregarded for the purpose of comparison. Without that element, the disputed domain name is, self-evidently, identical to the Complainant’s mark. Accordingly, the Panel finds that the Complainant has established this first element of the Policy.
B. Rights or Legitimate Interests
Under paragraph 4(c)(ii) of the Policy, one of the ways that a respondent might demonstrate rights or legitimate interests in a disputed domain name is by putting forward evidence that demonstrates that the respondent has been commonly known by the disputed domain name, even if the respondent has acquired no trademark or service mark rights. In this connection, on March 3, 2012, an email was sent to the Center from a person claiming to be “Marco Gaetano Tizio” (and from an email address similar with that listed as a contact for the disputed domain name holder), stating that he had registered the disputed domain name until October 2007; and stating that he was no longer the registrant.
On March 14, 2012, the Respondent sent an email (from the Registrar-confirmed email address for the registrant of the disputed domain name) to the Center asserting that he is “Marco Tizio” and is using the disputed domain name in connection with “family email” and that “someone is trying to steal my domain name and makes replies pretending to be me!”.
The implication of this second email is that the Respondent claims to be using the disputed domain name because it corresponds to his personal name.
No further communication was received from the Respondent. Accordingly, on May 2, 2012, the Panel issued the Panel Order, inviting the Respondent to provide material evidence that he was, in fact, known as Marco Tizio (such as by providing a certified true copy of the Respondent’s passport, driver’s license and/or birth certificate corresponding to that name).
The Respondent made no response to the Panel Order. From this, the Panel can only conclude that the Respondent could not provide the evidence the order sought, and that his name was not, in fact, that of the named Respondent. It follows that the Respondent has not demonstrated evidence to support a defense under paragraph 4(c)(ii) of the Policy. There is no other evidence in the case file to suggest that the Respondent might have some other right or legitimate interest in the disputed domain name.
In the face of no evidence to the contrary, the Complainant has made a prima facie case, and therefore established this second element of the Policy.
C. Registered and Used in Bad Faith
The Complainant must also establish that the Respondent both registered and has used the disputed domain name in bad faith. On the Complainant’s evidence, it is a well-known manufacturer of furniture and has marks registered in a number of jurisdictions, and a long-standing presence on the Internet.
Against this, the nature of the Respondent’s business is unknown. The Respondent has chosen to provide no information, even when invited to do so by Panel Order.
Paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules. Paragraph 5(a) of the Rules is expressed as a mandatory requirement: that a respondent “shall” submit a response which addresses the matters set out in paragraph 5(b). By contrast, paragraph 12 of the Rules is not expressed as a mandatory requirement: It provides that a panel may “request” further statements or documents from the parties. As such, the Respondent failure to respond to the Panel Order is not, as such, a failure to comply with the Rules. But the Respondent’s failure to submit a response under paragraph 5(a) of the Rules, is a failure to comply with that paragraph.
In the light of such a failure, previous UDRP panels have inferred that the respondent does not deny the facts asserted and contentions made by the complainant. Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441. This Panel takes a similar approach.
In addition, the Complainant contends that the Respondent’s website contains references to the Complainant’s products. From this, it is reasonable to draw the inference that the Respondent knew of the Complainant and its products, and sought some gain by using the disputed domain name because of its connection with the Complainant. The Complainant also contends that the Respondent sought to sell the disputed domain name and then, when the Complainant refused to continue negotiations for such a sale, the Respondent used a privacy service to shield his identity. The Respondent’s failure to substantiate his own claim to be known by the disputed domain name also suggests that he could not do so. This is further evidence that the Respondent has sought to shield his true identity.
These circumstances indicate to the Panel that the Respondent both registered and has used the disputed domain name in bad faith. The Panel therefore finds that the Complainant has established this third element.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, 'Tizio.com', be transferred to the Complainant.
James A. Barker
Dated: May 21, 2012