The domain TOGG.com was caught in the sights of Türkiye’nin Otomobili Girişim Grubu Sanayi Ve Ticaret Anonim Şirketi, Turkey.
The Turkish automobile company filed a UDRP asserting rights in the TOGG mark, primarily as an acronym for its name. These marks were registered in recent years (2018-2021,) along with the Complainant’s own domain, togg.com.tr (2018.) Meanwhile, TOGG.com was registered 18 years ago, in 2003.
IP attorney, John Berryhill, represented the Respondent in this UDRP. Mr. Berryhill noted, in part:
The Complainant was founded in 2018, manufactures nothing, sells nothing, has no customers and no product reputation, and has obtained a variety of mostly figurative and recent trademark registrations in jurisdictions where actual use of a mark is not required. […] The disputed domain name is registered to “The Office of George Gould” for which “TOGG” is an acronym, and in connection with which business the domain name has been continuously used for 18 years. […] Bad faith registration cannot be found where a disputed domain name pre-dates the claimed rights at issue, except for a narrow form of anticipatory bad faith in which a domain registrant has reason to believe that a specific party plans to launch a particular mark and which is not relevant here.
Matthew Kennedy, sole panelist at the WIPO, agreed with the Respondent, ordering the domain to remain with them. Additionally, he found the Complainant to have brought the Complaint in bad faith, tagging them with a finding of Reverse Domain Name Hijacking.
Türkiye’nin Otomobili Girişim Grubu Sanayi Ve Ticaret Anonim Şirketi v. The Office of George Gould
Case No. D2021-19491. The Parties
The Complainant is Türkiye’nin Otomobili Girişim Grubu Sanayi Ve Ticaret Anonim Şirketi, Turkey, represented by Gün + Partners, Turkey.
The Respondent is The Office of George Gould1 United States of America (“United States”), represented by John Berryhill, Ph.d., Esq., United States.
2. The Domain Name and Registrar
The disputed domain name <togg.com> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 21, 2021. On June 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 23, 2021, 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 June 29, 2021.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 29, 2021. In accordance with the Rules, paragraph 5, the original due date for Response was July 19, 2021.
On July 6, 2021, the Complainant sent a communication to the Center in which it purported to withdraw the Complaint in order to seek a settlement with the Respondent. On the same day, the Respondent objected to the Complainant’s notice and stated that it would only agree to a withdrawal of the Complaint with prejudice to its pursuit of the same claims in a refiling or in another forum. On the same day the Center notified the Parties that, in light of the Respondent’s objection, the proceeding would continue and that, in accordance with paragraph 5(b) of the Rules, the due date for Response was extended to July 23, 2021. On July 21, 2021, the Parties requested suspension of the proceeding in order to explore settlement options. The Response was filed on July 22, 2021. On the same day, the proceeding was formally suspended until August 11, 2021. No settlement having been notified by that date, the proceeding was reinstituted on August 12, 2021.
The Center appointed Matthew Kennedy as the sole panelist in this matter on August 24, 2021. 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
The Complainant is a Turkish company founded on June 28, 2018 for the purpose of producing automobiles. The Complainant does not yet have a factory but it unveiled plans for two electric vehicles in December 2019, for which two prototypes were manufactured by a third party in Italy. The Complainant holds multiple trademark registrations in Turkey and the European Union containing the element TOGG, the earliest of which are Turkish trademark registration number 2018/99812 for a semi-figurative mark including the textual elements TOGG TÜRKIYE’NIN OTOMOBILI GIRIŞIM GRUBU, and Turkish trademark registration number 2018/99818 for a semi-figurative mark including the textual elements TOGG TURKISH AUTOMOBILE INITIATIVE GROUP, both applied for on November 7, 2018, both registered on March 8, 2019 and both specifying goods and services in classes 4, 9, 12, 35, 37, and 42. “TOGG” is an acronym formed by the initials of the first four words in the Complainant’s company name. The Turkish Patent and Trademark Office, by Decision T/03461 of January 21, 2021, recorded the well-known status of the TOGG mark with respect to motor vehicles. On December 27, 2019, the Complainant held an event to launch TOGG vehicles, which was widely reported in the Turkish media and also reported abroad, including in the United States. The Complainant also registered the domain name <togg.com.tr> on July 16, 2018, which it uses in connection with a website in Turkish and English where it provides information about itself and its planned automobiles.
The Respondent is “The Office of George Gould”. Mr. Gould is currently manager of computer operations for a company in Virginia, United States. From 2001 to 2012, he was Chief Information Officer / Project Management Lead at TOGG Inc., a company that he formed to carry on his information technology sales and service business. In 2010, TOGG Inc. sold its assets, including its business name and domain name, to a corporation named CedarPC Inc. The operations of CedarPC Inc. were later merged into those of a related corporation named T.C.B. Associates, Inc.
The disputed domain name was created on January 5, 2003. According to historical WhoIs data provided by the Respondent, it was registered in the name of “The Office of George Gould” as early as July 13, 2005. According to an archived screenshot provided by the Respondent, the disputed domain name resolved to a website for TOGG Inc., which promoted the services of Mr. Gould and his company as early as May 31, 2009. According to further historical WhoIs data provided by the Respondent, the disputed domain name was registered in the name of “The Office of George Gould” with an email contact address in the <tcbinc.com> domain as early as February 25, 2012. However, according to the Registrar’s information, the disputed domain name was acquired by the current registrant on May 1, 2014.
The disputed domain name currently redirects to <tcbinc.com> which resolves to a website for “TCB – Taking Care of Business, Inc.” that promotes “Northern VA Managed IT Services”. The contact address shown on the website is in Virginia, United States.
5. Parties’ Contentions
A. Complainant
The disputed domain name is confusingly similar to the Complainant’s TOGG marks.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent does not appear to be commonly known by the disputed domain name. The Respondent is not making a legitimate noncommercial use of the disputed domain name. The Respondent is not licensed or authorized by the Complainant to use TOGG marks. The Complainant has no relationship with the Respondent whatsoever.
TOGG trademarks have a worldwide reputation, including in Turkey. Because it is reasonable to infer that TOGG trademarks are well-known, it is certain that the Respondent is aware of the Complainant’s marks. The Complainant’s launch of TOGG vehicles on December 27, 2019 was widely reported. The TOGG trademarks have frequently appeared in the media before and after the launch. It is likely that the Respondent keeps the disputed domain name in bad faith in an aim to obtain unfair benefits from the high reputation of the TOGG trademark which created a tremendous impression due to the great product launch. People searching for the Complainant on the Internet will normally expect to find the Complainant under the TOGG name and trademark but they will instead reach the Respondent’s website.
B. Respondent
The Complainant was founded in 2018, manufactures nothing, sells nothing, has no customers and no product reputation, and has obtained a variety of mostly figurative and recent trademark registrations in jurisdictions where actual use of a mark is not required. The Respondent agrees that the Complainant has shown that it owns junior formal rights in TOGG, which is thus far not used in connection with any goods or services at all, and that the Complainant has no sales, no customers, no products and thus no goodwill in any actual commercial activity.
The disputed domain name is registered to “The Office of George Gould” for which “TOGG” is an acronym, and in connection with which business the domain name has been continuously used for 18 years. In view of the fact that the disputed domain name was merely part of the overall sale of TOGG Inc.’s continued information technology business and rights in its name and marks, the Respondent is entitled to claim priority in the disputed domain name from its original registration date. The Respondent has continued to use the name “The Office of George Gould” and the disputed domain name for many years after acquiring that business because it provides information technology services to a longstanding customer base with installed software systems that depend on the ability to utilize the disputed domain name for routine status email messages.
Bad faith registration cannot be found where a disputed domain name pre-dates the claimed rights at issue, except for a narrow form of anticipatory bad faith in which a domain registrant has reason to believe that a specific party plans to launch a particular mark and which is not relevant here. The UDRP requirement to show the disputed domain name was registered in bad faith in relation to the Complainant’’s mark is not a proposition that is seriously addressed in the Complaint.
6. Discussion and Findings
6.1 Procedural Issue: Termination of the Proceeding
The Complainant purported to withdraw the Complaint after the commencement of the proceeding for the purpose of seeking a settlement with the Respondent. It did not notify its consent to the proceeding being dismissed with a finding against itself. The Respondent objected on the same day, stating that it would only agree to a withdrawal of the Complaint with prejudice to the Complainant’s pursuit of the same claims in a refiling or in another forum. The Complainant has not notified its agreement to the Respondent’s conditions.
In the above circumstances, given that the Parties have not notified a settlement of this dispute, the Panel understands the Complainant’s communication to be in effect a request for termination of the proceeding on other grounds, without a decision on the merits.
Paragraph 17(b) of the Rules provides as follows: “If, before the Panel’’s decision is made, it becomes unnecessary or impossible to continue the administrative proceeding for any reason, the Panel shall terminate the administrative proceeding, unless a Party raises justifiable grounds for objection within a period of time to be determined by the Panel.”
In the present case, the Respondent promptly objected to termination of the proceeding on two grounds, namely that the Respondent seeks (i) a decision on the merits to preclude a refiling and as persuasive authority elsewhere; and (ii) a finding under Paragraph 15(e) of the Rules.
The Panel considers these grounds for objection to be justifiable. The Respondent had already been put to the time and expense of engaging legal representation before the Complainant purported to withdraw the Complaint. Termination of the proceeding would potentially leave the Complainant free to refile a complaint under the Policy whereas continuing the proceeding will give the Respondent an opportunity to obtain findings regarding the merits of the Complaint and the Respondent’s request for consideration under paragraph 15(e) of the Rules. See, for example, Intellect Design Arena Limited v. Moniker Privacy Services / David Wieland, iEstates.com, LLC, WIPO Case No. D2016-1349.
Therefore, the Panel declines to terminate this proceeding and will proceed to render its Decision on the merits.
6.2 Substantive IssuesParagraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:
(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 has been registered and is being used in bad faith.
A. Identical or Confusingly SimilarBased on the evidence submitted, the Panel finds that the Complainant has rights in the TOGG TÜRKIYE’NIN OTOMOBILI GIRIŞIM GRUBU semi-figurative mark and the TOGG TURKISH AUTOMOBILE INITIATIVE GROUP semi-figurative mark. The Panel has taken note of the date on which the Complainant obtained registration of the above marks and will consider that issue below in relation to the third element of paragraph 4(a) of the Policy.
The disputed domain name incorporates, as its operational element, the four-letter string “togg”, which is the dominant and relevant part of each of the above marks.
The only additional element in the disputed domain name is the generic Top-Level Domain (“gTLD”) suffix “.com”. As a technical requirement of domain name registration, a gTLD suffix is generally disregarded in the comparison between a domain name and a trademark for the purposes of the Policy.
Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.
B. Rights or Legitimate InterestsGiven the findings in Section 6.2.C. below, it is unnecessary for the Panel to consider whether the Respondent has any rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad FaithThe third element of paragraph 4(a) of the Policy is a conjunctive requirement, meaning that the Complainant must demonstrate both bad faith registration and bad faith use. Failure to prove either will lead to denial of the claim.
According to the evidence in the case file, the latest time at which the disputed domain name would have been acquired by the Respondent was in 2014, four years before the Complainant was formed and five years before it obtained its earliest trademark registrations. It is unnecessary to consider the Respondent’s claims that the disputed domain name was originally registered by a previous owner of part of its business because the Respondent could not possibly have had the Complainant or its marks in mind in 2014 when it acquired the disputed domain name. Nothing in the record of this dispute indicates that the disputed domain name was acquired in anticipation of the Complainant’s rights in its marks either.
Therefore, the Panel does not find that the disputed domain name was registered in bad faith. The Complainant has failed to satisfy the third element in paragraph 4(a) of the Policy.
D. Complaint Brought in Bad FaithThe Respondent requests consideration under paragraph 15(e) of the Rules, which provides that if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”. “Reverse Domain Name Hijacking” is defined in paragraph 1 of the Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name.”
The Respondent submits that the Complainant had to know, when it selected TOGG as a mark in 2018, that the disputed domain name was already registered. and that this case was filed as a bad faith attempt to steal a legitimately registered and used senior name. The disputed domain name is a short, pronounceable four-letter domain name potentially of considerable commercial value. The Respondent is not even trying to sell the disputed domain name but is using it in the course of business conducted for 18 years. The Respondent reasonably believes the Complainant is behind one or more inquiries which have been made to purchase the disputed domain name.
The Panel notes that the Complainant has legal representation in this proceeding. The Complaint specified the creation date of the disputed domain name in 2003, which was 16 years before the earliest registrations of the Complainant’s trademarks in March 2019. Although the Complaint also specified that the WhoIs details for the disputed domain name were last updated in December 2019, the Complainant does not articulate any argument that this would have been the acquisition date of the disputed domain name (which appears by all accounts not to be the case) such that the Respondent would have acquired the disputed domain name after the Complainant acquired its trademark rights. The Complaint merely argues that the Respondent “keeps” the disputed domain name in bad faith. The Panel does note that the Complaint was initially filed against a privacy service, and that the disputed domain name redirects to a business that on the surface bears no relation to the “togg” initials but that in the interval between filing the Complaint and purporting to withdraw it, the Complainant obtained the privacy-protected details of the Respondent, as confirmed by the Registrar, and the Center notified the amended Complaint to the Respondent. While the relation between “togg” and the redirection of the disputed domain name to the “tcbinc” site would still not necessarily have been readily apparent, the Complainant did not articulate any specific argument that the acquisition of the disputed domain name by the Respondent post-dated the Complainant’s business launch and publicity.
In the above circumstances, the Panel finds that while the relation between “togg” and “tcbinc” may not have been obvious to the Complainant, the Complainant at best launched this proceeding without addressing the critical issue in the case (namely, potential later acquisition by the Respondent) and potentially knowing that it could not succeed in its Complaint under any reasonable interpretation of the Policy. See WIPO Overview 3.0, section 4.16.
Therefore, the Panel declares that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
7. DecisionFor the foregoing reasons, the Complaint is denied.
Matthew Kennedy
Sole Panelist
Date: September 1, 20211 The original Complaint was filed against a WhoIs privacy service but the Complainant filed an amended Complaint that replaced the privacy service with the name of the underlying registrant confirmed by the Registrar.
