Twitter, Inc. v. MEHMET ERDOGAN
Claim Number: FA1603001663992
Complainant is Twitter, Inc. (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is MEHMET ERDOGAN (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <perisearch.net>, registered with FBS Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 4, 2016; the Forum received payment on March 4, 2016.
On March 7, 2016, FBS Inc. confirmed by e-mail to the Forum that the <perisearch.net> domain name is registered with FBS Inc. and that Respondent is the current registrant of the name. FBS Inc. has verified that Respondent is bound by the FBS Inc. 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 8, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 28, 2016 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@perisearch.net. Also on March 8, 2016, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On March 31, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
The Panel notes that the website resolving from the disputed domain name operates in the English language and therefore determines that this administrative proceeding will also be conducted in the English language pursuant to UDRP Rule 11(a).
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <perisearch.net> domain name is confusingly similar to Complainant’s PERISCOPE mark.
2. Respondent does not have any rights or legitimate interests in the <perisearch.net> domain name.
3. Respondent registered and uses the <perisearch.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant holds a regsitration for its PERISCOPE mark with the Benelux Office for Intellectual Property (Reg. No. 0972256, registered on March 25, 2015) and the Australian Government Registrar of Trade Marks (Trade Mark No. 1695150, registered on May 21, 2015).
Respondent registered the <perisearch.net> domain name on September 4, 2015, and uses it to pass off as Complainant and provide competitive video streaming.
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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The Panel finds that Complainant has rights in the PERISCOPE mark under Policy ¶ 4(a)(i) through its registration of the mark with the Benelux Office for Intellectual Property and the Australian Government Registrar of Trade Marks. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority).
Respondent’s <perisearch.net> domain name is confusingly similar to the PERISCOPE mark because it contains a truncated version of the mark, “peri,” combined with the word “search” and the gTLD “.net.” Complainant argues that “search” is a term that describes Complainant’s use of the mark for online search tools. The Panel agrees and finds that the <perisearch.net> domain name is confusingly similar to the PERISCOPE mark. See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends that Respondent is not commonly known by the <perisearch.net> domain name, as the available WHOIS information lists “MEHMET ERDOGAN” as Registrant. Complainant states that Respondent is not authorized to use the PERISCOPE mark, and is not associated with Complainant. Thus, the Panel finds that there is no evidence to suggest that Respondent is commonly known by the <perisearch.net> domain name under Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant claims that Respondent fails to use the <perisearch.net> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website is used to provide competitive video streaming services. Complainant provides evidence comparing Respondent’s use of the <perisearch.net> domain name with its own website, demonstrating Respondent’s competitive use of the disputed domain name. The Panel finds that Respondent’s use of the <perisearch.net> domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Complainant alleges that Respondent also uses the <perisearch.net> domain name to attempt to pass off as Complainant. The Panel notes that Respondent’s resolving website contains Complainant’s logo, Complainant’s color scheme, Complainant’s Terms of Service and Privacy Policies, and a claim to be licensed by Complainant. The Panel finds that this is further evidence that Respondent fails to use the <perisearch.net> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
According to Complainant’s evidence, Respondent uses the <perisearch.net> domain name in bad faith because the resolving website is used to provide competitive video streaming services to those provided by Complainant, disrupting Complainant’s business. The Panel thus finds that Respondent uses the <perisearch.net> domain name in bad faith under Policy ¶ (b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Respondent uses the <perisearch.net> domain name to pass off as Complainant. The Panel finds that this constitutes bad faith use of the <perisearch.net> domain name under Policy ¶ 4(b)(iv). See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness).
Complainant claims that Respondent registered the <perisearch.net> domain name in bad faith because it did so with actual knowledge of Complainant’s rights in the PERISCOPE mark, based upon Respondent’s use of the domain name. The Panel agrees and finds that Respondent had actual knowledge of Complainant’s rights in the PERISCOPE mark and thus registered the domain name in bad faith under Policy ¶ 4(a)(iii). See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights).
The Panel 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 <perisearch.net> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: April 3, 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page