Align Technology, Inc. v. YUNUS BA\u015eAR
Claim Number: FA1912001876569
Complainant is Align Technology, Inc. (“Complainant”), represented by Ansel Halliburton, California, United States. Respondent is YUNUS BA\u015eAR (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <itero.net>, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 23, 2019; the Forum received payment on December 23, 2019.
On December 24, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <itero.net> 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 December 30, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 21, 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@itero.net. Also on December 30, 2019, 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 January 20, 2020.
On January 23, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
1. Complainant is a United States company that manufactures and markets the iTero line of intraoral scanners, used to take 3-D scans of a dental patient’s mouth, teeth, and gums.
2. Complainant has established its trademark rights in the ITERO mark based on its registration with multiple trademark agencies around the world, including the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,687,585 registered on Sep. 22, 2009).
3. Respondent’s <itero.net> domain name is identical or confusingly similar to Complainant’s ITERO mark as it includes the mark in its entirety, adding the “.net” generic top-level domain (“gTLD”).
4. Respondent has no rights or legitimate interests in the <itero.net> domain name. Respondent is not licensed or authorized to use Complainant’s ITERO mark and is not commonly known by the disputed domain name.
5. Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
6. Respondent registered and uses the <itero.net> domain name in bad faith. Respondent sent to Complainant’s CEO an unsolicited offer to sell the disputed domain. Further, the disputed domain resolves to a parked page with a public offer to sell the domain name in excess of out-of-pocket costs. Further, Respondent has a pattern of bad faith registration of domain names.
B. Respondent
Respondent made the following contentions.
1. Respondent is in the business of registering and using domain names. Respondent owns approximately 1,000 domain names as part of its business.
2. Respondent won the <itero.net> domain name at a Go Daddy domain name auction on December 21, 2019. Respondent argues Complainant’s trademark application in Turkey postdates Respondent’s purchase of the disputed domain name, so Complainant does not have rights in the mark in Turkey.
3. Respondent has rights and legitimate interests in the <itero.net> domain name. Respondent registered the disputed domain prior to Complainant’s application to register the ITERO mark in Turkey.
4. Respondent did not register or use the <itero.net> domain name in bad faith. Respondent’s many domain name registrations all consist of generic or common terms in Turkey. Respondent purchased the domain name at auction on December 21, 2019, prior to Complainant’s registration of the ITERO mark in Turkey. See Resp. Annex 3. Respondent did not register or use the domain name in an attempt to target or disrupt Complainant’s business. Respondent was not the owner of the domain name when an email was sent to Complainant offering to sell the disputed domain name on December 17, 2019.
1. Complainant is a United States company that manufactures and markets the iTero line of intraoral scanners, used to take 3-D scans of a dental patient’s mouth, teeth, and gums.
2. Respondent is domiciled in Turkey and buys, sells and manages domain names.
3. Complainant has established its trademark rights in the ITERO mark based on its registration with multiple trademark agencies around the world, including the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,687,585 registered on Sep. 22, 2009).
4. Respondent registered the disputed domain name on or about December 21, 2020;
5. After acquiring the domain name, Respondent sent an email to Complainant inquiring if it was interested in the domain name and it also offered the domain name for sale through Sedo.
6. There is no evidence showing that Respondent has a right or legitimate interest in the domain name.
7. The evidence shows that Respondent registered and used the domain name 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.
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the ITERO mark based on its registration of the mark with multiple trademark agencies around the world, including the USPTO. Registration of a mark with multiple trademark agencies is sufficient to establish rights in a mark for purposes of Policy ¶ 4(a)(i). See Emerson Electric Co. v. Cai Jian Lin / Shen Zhen Shi colorsun Zi Dong Hua You Xian Gong Si, FA 1798802 (Forum Aug. 31, 2018) (“Registering a mark with multiple trademark agencies around the world is sufficient to establish rights in a mark for the purposes of Policy ¶ 4(a)(i).”); see also Bloomberg Finance L.P. v. Jimmy Yau, FA 1764034 (Forum Jan. 25, 2018) (“The Panel finds that complainant has rights in BLOOMBERG mark under Policy ¶ 4(a)(i) based upon its registration with multiple trademark agencies, including the USPTO.”). Complainant provides copies of its registration of the ITERO mark with the USPTO (e.g. Reg. No. 3,687,585 registered on Sep. 22, 2009), along with a list of all its registrations with trademark agencies around the world. Therefore, the Panel finds Complainant has rights in the ITERO mark pursuant Policy ¶ 4(a)(i).
In reply, Respondent argues that Complainant had not registered the ITERO mark in Turkey by the time of Respondent’s purchase of the disputed domain name. However, that submission carries no weight, as the Panel notes that Complainant had registered the ITERO mark through numerous other trademark agencies, including the USPTO and before the domain name was registered. The consistent practice under the UDRP has been, as the Policy itself says, that the Complainant must show that it has trademark interests in “a trademark”, by necessary implication no matter where it is registered.
It should also be said that Respondent argues that its registration of the <itero.net> domain name predates Complainant’s alleged rights in the mark. However, such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy on its express terms considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Forum Mar. 5, 2007) (“Although the domain name in dispute was first registered in 1996, four years before Complainant’s alleged first use of the mark, the Panel finds that Complainant can still establish rights in the CLEAR BLUE marks under Policy ¶ 4(a)(i).”). Accordingly, the Panel will defer until later in this decision, consideration of whether Respondent registered the <itero.net> domain name before Complainant’s alleged rights in the mark arose.
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s ITERO mark. Complainant argues Respondent’s <itero.net> domain name is identical or confusingly similar to Complainant’s ITERO mark, as it includes the mark in its entirety, adding the “.net” gTLD. Mere addition of a gTLD is not sufficient to distinguish a mark for purposes of Policy ¶ 4(a)(i). See David Duchovny v. Alberta Hot Rods c/o Jeff Burgar, FA 1734414 (Forum July 4, 2017) (“Respondent arrives at the disputed domain name by simply taking Complainant’s mark in its entirety and adding the gTLD “.com”. This is insufficient to distinguish the disputed domain name from Complainant’s common law trademark.”). Comparing the domain name with the trademark makes it very apparent that the domain name looks the same and sounds the same as the trademark. Therefore, the Panel finds the disputed domain name is identical to the trademark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s ITERO trademark and to use it in its domain name without making any alterations to the spelling of the trademark;
(b) Respondent registered the disputed domain name on or about December 21, 2020;
(c) Shortly after Respondent acquired the disputed domain name he sent to Complainant an unsolicited inquiry to Complainant as to whether it was interested in the domain name, which was in effect an indication that the Respondent was prepared to sell it to Complainant’s CEO. Further, the disputed domain name resolves to a parked page with a public offer to sell the domain at a price that it would have to be assumed was in excess of out-of-pocket costs;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in the <itero.net> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the ITERO mark. WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). The WHOIS information of record identifies the registrant of the at-issue domain name as “YUNUS BA\u015eAR,” and no information on the record indicates Respondent was authorized to register a domain name incorporating Complainant’s mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii), which strengthens Complainant’s prima facie case against Respondent.
All of these matters go to make out the prima facie case against Respondent. As Respondent has filed a Response, it remains to be seen if Respondent has rebutted the prima facie case against it.
Respondent’s major argument to rebut that case against him is that he does have rights and legitimate interests in the <itero.net> domain name as his purchase of the domain name predates Complainant’s application for a trademark in Turkey. Respondent provides a screenshot of Complainant’s ITERO trademark application in Turkey, which Respondent contends occurred after Respondent purchased the disputed domain name. It is possible that the individual facts of a case would entitle such a registrant to rights and legitimate interest in a domain name. See Warm Things, Inc. v. Weiss, D2002-0085 (WIPO Apr. 18, 2002). However, in the present case, it is not necessary to rely on that argument, as the evidence is that although Complainant applied for the trademark in Turkey after filing its complaint with Respondent, Complainant already had several registrations of the ITERO mark with other trademark agencies around the world, so that by the time the Respondent registered the domain name, the Complainant already had other trademark registrations on foot. There was no obligation on it to have a trademark registered in Turkey, either before or after the registration of the domain name. Accordingly, the Panel finds that Respondent’s argument does not rebut the prima facie case against it.
Secondly, Respondent contends that its rights and legitimate interests in the <itero.net> domain name are demonstrated by its use of the domain name as part of its domain reselling business. Specifically, Respondent claims that it registers domain names or acquires domain names through auctions meaningful in Turkey. Such a use may be legitimate if it was not registered or used to infringe on a complainant’s mark. See Franklin Mint Fed. Credit Union v. GNO, Inc., FA 860527 (Forum Mar. 9, 2007) (concluding that the respondent had rights or legitimate interests in the <fmcu.com> domain name because it was a generic domain name reseller who owned numerous four-letter domain names); see also Front Range Internet, Inc. v. Murphy, FA 145231 (Forum Apr. 4, 2003) (“In some circumstances, the trading of domain name registrations is considered a bona fide offering of goods and services.”). However, for a panel to accede to such an argument, there must be evidence which by itself or by inference shows that in acquiring the domain name, Respondent was buying it because it was valuable as a generic word and that it was to be used as such. It is in this evidentiary area that Respondent’s argument breaks down. Respondent submits that “Dozens of companies with the word "itero" are operating in our country.” Presumably, that is the reason why Respondent also says he deals in “general dictionary words”. He then invites the Panel to conduct a search at (https://online.turkpatent.gov.tr/trademark-search/pub/trademark_search) which the Panel has done. That search does not show that the word “itero” is a general dictionary word. Nor does it show that the word “itero” is even in extensive use by itself as a separate word. What it does show, however, is that there are other and different words used in registered trademarks in Turkey which, when their spelling is examined, it is seen that the letters making up the word “itero” appear in that order. An example that often recurs is “profiterole”, where the letters making up the word “itero” appear in the word “profiterole” because they are part of the word. That does not seem to show anything , one way or the other. However, the Panel did notice two cases where the word is clearly used as a trademark. The first one, not surprisingly is ITERO, where the application for the trademark was apparently filed on December 23, 2019 and which presumably is the application by Complainant mentioned in the present case. The second, is ITERO ELEMENT that was filed or registered by Complainant much earlier, on November 24, 2014.That trademark, using the word ITERO as a trademark and not as a generic word, was therefore clearly on the trademark registry at the time Respondent registered the disputed domain name and it came up ( with the other results), when the Panel searched for ITERO, as it was invited to do by the Respondent. Had the Respondent conducted such a search, he would have seen that the word ITERO was being used in Turkey as a trademark, albeit in the combined word ITERO ELEMENT.
The Respondent’s statement that “The complainant does not have any trademark registration application in our country before this date” (December 24, 2019) therefore seems to be somewhat dubious, as it had the trademark ITERO ELEMENT. The use of the word “itero” was thus on the record in use in its trademark sense before the disputed domain name was registered. So, likewise the Respondent’s statement that “There is no registration of any brand names” is incorrect, at least so far as ITERO ELEMENT is a brand.
Accordingly, as the Respondent is arguing that the word in the domain name is “a general dictionary word” or a “meaningful word”, there must be evidence available to establish that fact, both the meaning of the word and how it is used in practice, but none has been adduced. In the absence of any such evidence, the panel is not able to conclude that the word itself gives Respondent a right or legitimate interest in the domain name.
Even if the word “ itero” were such a word that might give the Respondent some rights in the domain name, it is well established that such a principle cannot apply if the domain name registrant is targeting the trademark owner. Although the evidence is slight, because events were compressed together in a short time, the Panel is satisfied that the Respondent was in fact targeting the Complainant. That is so because almost immediately the Respondent acquired the domain name, he contacted the Complainant in the first step of trying to sell the domain name to it.
Accordingly, the Panel’s conclusions after considering all of the evidence, are that the word “itero” is not a generic word, a dictionary word or a word that confers a right to register it, but a trademarked word in which the Complainant had an interest; that when the Respondent registered the domain name he promptly encouraged the Complainant to buy it and was thus targeting the Complainant.
The evidence does not satisfy the Panel that the Respondent has rebutted the prima facie case against it.
The Panel therefore finds that the Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant contends Respondent registered and uses the <itero.net> domain name in bad faith as Respondent registered it with intent to sell it in the manner described in the Policy, i.e. to the Complainant or a competitor. A Respondent’s registration with intent to sell it in excess of out-of-pocket costs is evidence of bad faith pursuant to Policy ¶ 4(b)(i). See Airbnb, Inc. v. 张昕 / 何青玉, FA 1786279 (Forum June 18, 2018) (“Complainant provides a screenshot of the disputed domain name’s resolving webpage, where Respondent offers to sell the domain name for €9,999 [. . .] The Panel therefore finds that Respondent registered and is using the <airbnb.pro> domain name in bad faith per Policy ¶ 4(b)(i).”); see also Deutsche Lufthansa AG v. Kenechukwu Okoli, FA 1821759 (Forum Jan. 13, 2019) (“The domain name’s website listed the domain name for sale for $9,150. Respondent also contacted Complainant directly to offer the domain name for sale. Doing so suggests bad faith registration and use of the <lufthansamiles.com> domain name pursuant to Policy ¶ 4(b)(i).”).
In any event, the Panel takes the combination of those occurrences as sufficient to raise an inference that the Respondent registered and acquired the domain name primarily to sell it to the Complainant for a price in excess of his out-of-pocket costs within the wording of Policy ¶ 4(b)(i). Moreover, the conduct of the Respondent after it acquired the domain name shows that he used the domain name to further that objective. Therefore, the Panel finds Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(i).
Secondly, Respondent registered and uses the <itero.net> domain name in bad faith as he has a pattern of bad faith registration of domain names containing established trademarks or brands. A respondent’s pattern of registration of domain names containing famous marks is evidence of bad faith pursuant to Policy ¶ 4(b)(ii). See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s previous registration of domain names such as <pillsbury.net>, <schlitz.net>, <biltmore.net> and <honeywell.net> and subsequent registration of the disputed <marlboro.com> domain name evidenced bad faith registration and use pursuant to Policy ¶ 4(b)(ii)); see also N.H. Sweepstakes Comm’n v. We Web Well, Inc., FA 197499 (Forum Nov. 3, 2003) (finding that the complainant’s submission of WHOIS evidence that listed the respondent as the registrant of other domain names incorporating third-party trademarks was sufficient to establish that the respondent had a pattern of registering and using domain names in bad faith pursuant to Policy ¶ 4(b)(ii)). The Panel makes the same finding in the present case.
Complainant provides a screenshot of Respondent’s first 100 out of 3,374 domain name registrations, which Complainant submits contains registrations identical or similar to famous marks. That conclusion is rejected by the Respondent, who is very precise in saying that he does not impinge of the interests of trademark owners. He says in the Response
“He ( the Complainant) says we have registered similar names to trademarks. This information is also wrong and slander. (It is clear that the Whoxy service used by the complainant provides false information.)”
“The domains in our portfolio are definitely not trademarks. We are very meticulous and sensitive in this regard.”
That submission would come as surprise to the owners of the trademarks for KELVIN KLEIN, FACEBOOK and FIT BIT.
The Panel agrees with the submission of the Complainant as it is clear that the Respondent has registered domain names many of which appear to relate to going concerns, i.e., businesses that have been or are functioning and some of which are bound to have trademarks. Complainant also provides WHOIS information and a screenshot of one domain name in particular which Respondent registered, and resolves to the same parked page with an offer to sell the domain name.
Therefore, the Panel finds that the Respondent has established a pattern of registering domain names that target trademark and other business owners and consequently that Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(ii).
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <itero.net> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: January 24, 2020
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