Tyco Fire & Security GmbH v. Batuhan Tashan
Claim Number: FA2003001887465
Complainant is Tyco Fire & Security GmbH (“Complainant”), represented by Jason J. Mazur of Arent Fox LLP, USA. Respondent is Batuhan Tashan (“Respondent”), represented by Arzu Akalin of Akalin Hukuk Bürosu, Turkey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <york-tr.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Gerald M. Levine as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 9, 2020; the Forum received payment on March 9, 2020.
On March 10, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <york-tr.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 10, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 3, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@york-tr.com. Also on March 10, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on April 3, 2020.
Complainant filed an Additional Submission dated April 8, 2020 which complies with Supplement Rule 7, and which the Panel accepts for reasons stated further below.
On April 7, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Gerald M. Levine as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A.
Complainant
Complainant is a subsidiary of Johnson Controls
International plc (“Johnson Controls”), which together with its affiliated and
related companies is one of the world’s largest providers of heating,
ventilation, air conditioning, and refrigeration products and services. It is,
though, a newcomer to the Johnson Controls family of companies by virtue of a transaction
in December 2019 when another Johnson Controls affiliate by the name of Johnson
Controls Technology GmbH (“Johnson’s Controls Technology”) merged into
Complainant. Complainant alleges that it and its predecessors-in-interest
adopted and first used the YORK mark in United States commerce at least as
early as 1886—over 130 years ago. Today, YORK is a global brand and is used
around the world as a distinctive indicator of the source of Complainant’s
renowned products and services.
Over the years, Complainant and its predecessors-in-interest have invested substantial sums of money in developing and marketing the YORK mark and the products and services offered under that mark. As a result of this extensive use and publicity, consumers around the world, including in the United States and Turkey, associate the distinctive YORK mark as a unique identifier of the source of the high-quality products and services offered by Complainant.
Complainant disclaims any commercial or business relationship with either Respondent or a company in which it claims employed it. It contends that it or its affiliate objected to Respondent’s bad faith registration of the domain name or authorized the use of it trademark and logo. It alleges it gave notices to Respondent in May, 2019 and July, 2019, though they were ignored and “no remedial action was taken in response, and the website at this domain name has remained active.” There is no evidence of such notices and the Panel disregards it. Whether or not notice was given is not critical for two reasons: first, and most important is that the <york-tr.com> is a 2017 registration that postdates by decades Complainant’s and its predecessors’ first use in commerce of YORK; and second, that the domain name was registered with actual knowledge of Complainant and its mark.
B. Respondent
Respondent is an individual who
describes himself as “an employee of MSG Akdeniz
Çözüm Ortaklığı A.Ş. (“MSG”) [which it alleges] is the
customer of Birleşik Dağıtım Pazarlama Turizm Ticaret ve
Sanayi Anonim Şirketi (“BIRPA”).” According to Respondent, MSG is acting
as a sub-distributor of products manufactured by one of the many affiliates of
Johnson Controls. In support of this commercial and business relationship,
Respondent submits a copy of a distribution agreement between a company by the
name of “Johnson Controls Klima ve Sogutma, Servis San. ye
Tic. A.S., a Johnson Controls company” and BIRPA. Respondent acknowledges that it is not a party to
this agreement but insists that MSG is a sub-distributor.
Respondent describes BIRPA, the actual contracting party, as “a former distributor of complainant” and that “BIRPA has given [Respondent] the authority to sell York trademarked products to MSG.” This may come as a complete surprise to Complainant. By way of further explanation, Respondent states that “the main purpose of using the complainant's trademark as domain name is to reach the sales targets set by the complainant. These goals were achieved and the brand has been brought to a higher position in Turkey by MSG.”
Respondent
further claims that it has performed services for Johnson Controls through this
“commercial relationship.” Indeed, “YORK products are(sic) sold by MSG for a
long time, [and] MSG has led(sic) to the recognition of york trademarks in
Turkey.” He contends further that “Turkey's leading companies that are among
the references of complainant have become the customers of York thanks to the
network of MSG. In other words, the respondent has created a domain name for a
trademark that respondent has made it well known by efforts of MSG.”
C. Additional Submissions
Complainant’s Additional Submission directly responds to Respondent’s submission of the BIRPA distribution agreement. In essence, Complainant denies that the document, a purported distribution agreement which Respondent contends supports his claim of a commercial or business relationship with Complainant, has any bearing on this proceeding. It states that “Even if true, Respondent utterly fails to demonstrate how this tenuous and former business relationship chain would authorize Respondent to register or use a YORK-based domain name in a deceptive and misleading manner for commercial purposes. To the extent Respondent is implying he had a relationship with Complainant, Complainant takes this opportunity to clarify that no such relationship ever existed.”
1. Complainant has proved that the challenged domain name, <york-tr.com> is identical or confusingly similar to a trademark in which it has rights; and
2. Complainant has proved that Respondent has no rights or legitimate interests in <york-tr.com>; and
3. Complainant has proved that Respondent registered and is using <york-tr.com> in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph
4(a) of the Policy requires that Complainant must prove each of the following
three elements to obtain an order that a domain name should be cancelled or
transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant alleges and demonstrates with documentary evidence that it derived its trademark rights to the term YORK upon Johnson Controls Technology merging with it on December 12, 2019. By way of this merger, Complainant became the rights holder by assignment of the U.S. registered trademarks. This is evidenced by a series of documents filed with the United States Patent and Trademark Office (Complainant Annex A) that reflect the assignment of U.S. registered YORK trademarks.
In addition to the U.S. registrations, Complainant also alleges it holds global trademarks in other jurisdictions, including Turkey, the country of Respondent’s residence and of the MSG business. Recordation of trademark assignments have not been completed in Turkey to reflect the assignment to Complainant, but this is of no consequence since a complainant need only demonstrate it has rights in some jurisdiction, in this case the United States.
Even as Respondent admits taking the YORK trademark for a specific purpose, he nevertheless argues that “the domain of the dispute is not exactly the same as the trademark of the complainant. In the continuation of york, the expressions ‘-‘ and ‘tr’ are included. This indicates that there is a purpose to differentiate from the trademark of complainant.” The distinction Respondent is attempting to make is without meaning. The challenged domain name <york-tr.com> incorporates the YORK mark with minor additions of a dash and country code for Turkey. See Home Depot Product Authority, LLC v. FAG / yiming liu, Case No. FA190100 1827397 (Forum, February 23, 2019) (finding the addition of hyphens in <home-depot-com-survey.com> did not overcome confusing similarity with the complainant’s HOME DEPOT mark). See De Beers Intangibles Limited v. Ivetta Mavrova, D2016-1466 (WIPO August 30, 2016) (“[T]he addition of a generic or descriptive term or geographic wording to a trademark in a domain name is normally insufficient in itself to avoid the finding of confusing similarity.”). The dominant component of the domain name corresponds to the YORK trademark and though not identical is confusingly similar to Complainant’s mark. See Google LLC v. Kumar Anurag, FA2003001887509 (Forum April 3. 2020) (“Complainant’s GOOGLE mark is the initial, dominant and only distinctive element in the disputed domain name. Neither the addition of the hyphen or the descriptive word “webmasters” add any distinguishing characteristic to the disputed domain name.”).
Accordingly, Complainant
has satisfied Policy
¶ 4(a)(i).
Complainant has the burden of proof on the second requirement of the UDRP (Para. 4(a)(ii)), but it can be satisfied by presenting a prima facie case that Respondent lacks rights or legitimate interests in the domain name. See AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006); JUUL Labs, Inc. v. Dryx Emerson / KMF Events LTD, FA1906001849706 (Forum July 17, 2019) (“According to the majority of Panel decisions this Panel also takes the position that while Complainant has the burden of proof on this issue, once the Complainant has made a prima facie showing, the burden of production shifts to the Respondent to show by providing concrete evidence that it has rights to or legitimate interests in the domain name at issue.”)
Here, Complainant contends it has not authorized Respondent to use the trademark, that Respondent is not known by the name “York”, and that Respondent is not using the domain name in a noncommercial or fair use way. These contentions are credible in light of Respondent’s use of the domain name to resolve to a website that pretends to be an official website for York products. Accordingly, the Panel finds that Complainant has submitted sufficient proof to demonstrate a prima facie case that Respondent lacks rights or legitimate interests in the challenged domain name.
The UDRP provides a set of three nonexclusive circumstances anyone of which if demonstrated would support rights or legitimate interests. Respondent has stepped up to rebut Complainant’s assertions by claiming that it has rights or legitimate interests deriving in some fashion from the BIRPA distribution agreement. It advances the notion it has a commercial and business relationship with an affiliate of Johnsons Controls by virtue of having been appointed by the official distributor as a sub-distributor. However, this contention that MSG could create a commercial or business relationship with Complainant without its knowledge or consent is inexplicable and unworthy of belief.
In response to Respondent’s claim that its right or legitimate interest rests on the BIRPA distribution agreement, Complainant submitted an Additional Submission (which the Panel has accepted) in which it makes the following points:
Annex 1 is an unsigned draft distribution agreement between two third parties: BIRPA, and an affiliate of Complainant named Johnson Controls Klima ve Sogutma, Servis San. Ve Tic. A.S. The draft agreement is not relevant because neither Respondent nor MSG are parties to the draft agreement and, in any event, it does not purport to authorize BIRPA to use or authorize others to use the YORK trademark in a domain name. The draft distribution agreement also places restrictions on the use of Complainant’s trademarks and requires prior approval before use, so clearly there is no good faith basis for BIRPA’s alleged customer’s employee to claim any rights from this document.
As the record now stands, these points are well taken. Even assuming MSG (Respondent’s alleged employer) is actually performing any distribution services, it offers no proof that Johnsons Controls approved BIRPA’s appointment of MSG as a sub-distributor; nor is there any proof the parties have ever or are currently conducting business with each other. Such relationships do not arise by reason of a magic wand. It is not sufficient to assert a fact without offering proof that the asserted fact is actually a fact and not a fiction.
For these reasons, the Panel finds that Respondent lacks both rights and legitimate interests in <york-tr.com> and accordingly Complainant has satisfied Policy ¶ 4(a)(ii)..
Under the UDRP, Complainant has the burden of proving Respondent both registered the challenged domain name in bad faith and is using it in bad faith. Para. 4(a)(iii). There are four nonexclusive circumstances any of which if proved establishes abusive registration. Para. 4(b) of the Policy states that “[f]or the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.”
Complainant alleges that “Respondent is acting with a bad faith intent to profit by deceiving consumers into believing the website is an official Turkish website for Complainant’s YORK brand and to confuse consumers into utilizing the services of the MSG company promoted on the site for that party’s commercial gain.” This asserts bad faith under the fourth circumstance:
[B]y using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
The Panel has reviewed Respondent’s website, as it is permitted to do to verify the facts asserted by Complainant. It observes that on first reaching the website there is a momentary showing of the York logo, before opening to a landing page advertising York brand products. See Time Inc. v. Max Martel, D2004-0122 (WIPO May 4, 2004) (<sportsbookillustrated.com>. “[T]here is no circumstance under which the Respondent, unless authorized by the Complainant, could legitimately use the Domain Name under dispute incorporating the [Complainant's] mark without creating a false impression of an association with the Complainant.”).
Complainant contends that registration alone satisfies both elements of Para. 4(a)(iii). The Panel agrees that the allegations of conjunctive bad faith comport with the facts in this case. In fact, Respondent does not attempt to deny that it created the website to attract attention to the York line of products. It admits it registered <york-tr.com> for the specific purpose: “to attract customers to ‘York’ brand products, [because] it is usual to choose ‘York’ as the domain name.” See Igor Lognikov v. Web Ventures, Nerdec, Inc. and Charles Edmunds, D2009-1684 (WIPO January 29, 2010) (“[respondent] bears the burden of proof that complainant consented to [the] activity.”)
In registering the domain name without authority, Respondent also violated Paragraph 2 of the Policy: “It is your responsibility to determine whether your domain name registration infringes or violates someone else's rights.” Even if the registration was innocent, which is not the case here, respondent would forfeit the domain name. In this case, Respondent purchased the domain name with actual knowledge of Complainant’s rights while at the same time fully recognizing it had no authority to make that purchase.
In a final attempt to rebut Complainant’s bad faith assertions, Respondent argues that the claim must be denied in that Complainant waited too long to commence these proceedings. It states it purchased the domain name in 2017 but “the complainant did not speak up for a long time, causing the respondent to act with the thought that it did not constitute a violation of rights. In this context, MSG has invested more in the website with this domain name and it is unfair that the complainant started this process after a long time.” There is no merit to this argument. Laches is not a defense to a claim of cybersquatting, and even if there were some circumstances under which lapse of time might be bar a claim, it would not be considered where the respondent acted with actual knowledge of complainant’s rights.
Under the circumstances presented in this dispute, even if the time lapse had been greater than two years, it would not prejudice a complainant’s right to a remedy under the UDRP. Respondents (or MSG’s) alleged loss of “investment” is not a material consideration where it acted with actual knowledge of Complainant’s rights and pretended an association which it does not have. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, 4.17: “Panels have widely recognized that mere delay between the registration of a domain name and the filing of a complaint neither bars a complainant from filing such case, nor from potentially prevailing on the merits.”
For the foregoing reasons, finds that Complainant has satisfied Policy ¶4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be Granted.
Accordingly, it is Ordered that the <york-tr.com> domain name be transferred from Respondent to Complainant.
Gerald M. Levine, Panelist
Dated: April 9, 2020
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page