Vitalen Otomotiv A.Ş and Vitalen Technology GmbH v Faith Ünsal

WIPO Case No. DEU2022-0001

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Vitalen Otomotiv A.Ş and Vitalen Technology GmbH v. Faith Ünsal

Case No. DEU2022-0001

1. The Parties

The Complainants are Vitalen Otomotiv A.Ş, Turkey, and Vitalen Technology GmBh, Germany, represented

by Juris Attorney Partnership, Turkey.

The Respondent is Faith Ünsal, Sweden.

2. The Domain Name, Registry and Registrar

The disputed domain name is <pedalcommander.eu>.

The Registry of the disputed domain name <pedalcommander.eu> is the European Registry for Internet

Domains (“EURid” or the “Registry”). The Registrar of the disputed domain name is team.blue Denmark A/S.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 12, 2022.

On January 13, 2022, the Center transmitted by email to the Registry a request for registrar verification in
connection with the disputed domain name. On January 21, 2022, the Registry transmitted by email to the

Center its verification response confirming that the Respondent is listed as the registrant and providing the

contact details.

The Center verified that the Complaint satisfied the formal requirements of the .eu Alternative Dispute

Resolution Rules (the “ADR Rules”) and the World Intellectual Property Organization Supplemental Rules for

.eu Alternative Dispute Resolution Rules (the “Supplemental Rules”).

In accordance with the ADR Rules, Paragraph B(2), the Center formally notified the Respondent of the

Complaint, and the proceedings commenced on February 3, 2022. In accordance with the ADR Rules,

Paragraph B(3), the due date for Response was March 14, 2022. The Respondent did not submit any

response. Accordingly, the Center notified the Respondent’s default on March 17, 2022.

The Center appointed Luca Barbero as the sole panelist in this matter on March 23, 2022. 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 ADR Rules,

Paragraph B(5).

page 2

4. Factual Background

The Complainants are the Turkish company Vitalen Otomotiv A.Ş (the first Complainant), and the German company Vitalen Technology GmbH (the second Complainant). The shareholders of the first Complainant

established the company Vitalen Holding A.Ş, which is the sole shareholder of the second Complainant,

incorporated in August 2021.

The Complainants produce and sell a throttle response controller under the trademark PEDAL

COMMANDER. Specifically, the first Complainant operates as a center for manufacturing and sales

operations whilst the second Complainant runs the operations in the European Union.

The first Complainant is the owner, amongst others, of the following trademark registrations for PEDAL

COMMANDER:

- International trademark registration No. 1408975 for PEDAL COMMANDER (figurative mark),

registered on April 13, 2018, in international Class 12, and designating the European Union;

- Turkish trademark registration No. 2012/89181 for PEDAL COMMANDER (figurative mark), filed on

October 22, 2012 and registered on January 20, 2014, in international class 12.

The Complainants operate the websites at the domain names <pedalcommander.com> registered on July 7,

2012; <pedalcommander.com.tr> and <pedalcommander.de>, used to promoted and offer for sale PEDAL

COMMANDER products.

The disputed domain name <pedalcommander.eu> was registered on May 19, 2020, and currently does not

resolve to an active website. According to the screenshots available on the Internet Archive at

<archive.org>, to which the Complainants refer in the Complaint, the disputed domain name previously

redirected to a website featuring the PEDAL COMMANDER trademark and displaying the indication “Pedal

Commander Europe Official Vendor”.

5. Parties’ Contentions

A. Complainants

The Complainants contend that the disputed domain name <pedalcommander.eu> is identical to the

trademark PEDAL COMMANDER in which the Complainants have rights as they reproduce the trademark in

its entirety with the mere addition of the country code Top-Level Domain (“ccTLD”) “.eu”.

The Complainants also contend that, besides the use of the trademark in the domain name, also the contents of the correspondent website including the interface, the figurative trademark displayed therein and the website design were identical to that of the original website displayed at the domain name

<pedalcommander.com>.

With reference to rights or legitimate interests in respect of the disputed domain name, the Complainants

state that, on September 15, 2020, the first Complainant had signed a Distributorship Agreement with the

company FTHSM Holding Ivs, of which the Respondent is founder and manager, which was cancelled on

July 5, 2021, due to unauthorized registration of the disputed domain name by the Respondent.

The Complainants underline that Clause 14 of such Distributorship Agreement specified that the rights on

domain names incorporating PEDAL COMMANDER belonged to the first Complainant.

With reference to the circumstances evidencing bad faith, the Complainants indicates that, considering the

Respondent’s company was once a distributor of the first Complainant, and that it did not abide to the rules

page 3

since it breached the Distributorship Agreement, the Respondent was well aware of the Complainants’ rights
and deliberately acted in bad faith at the time of registering the disputed domain name.

The Complainants emphasize that the Respondent registered the disputed domain name to benefit from the Complainants’ reputation and, as shown by the screenshots available in the Internet Archive at “Archive.org”,

also copied the content, interface and design of the website at <pedalcommander.com>, attempting to pass

off as the original PEDAL COMMANDER website whilst intentionally attempting to attract Internet users to its

website for commercial gain, by creating a likelihood of confusion with the Complainants and their trademark

as to the source, sponsorship, affiliation or enforcement of the Respondent’s website.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

6.1. Preliminary Procedural Issues

A. Consolidation of Complainants

The Commission Regulation (EC) No. 874/2004 (the “Regulation”), the Regulation (EU) 2019/517 of the

European Parliament and of the Council, and the ADR Rules do not expressly contemplate the possibility of

an ADR complaint filed jointly by multiple complainants.

However, prior panels who rendered decisions in cases decided pursuant to the Uniform Domain Name

Dispute Resolution Policy (“UDRP”) accepted under certain circumstances a single complaint filed by more

than one complainant against a single respondent1.

According to section 4.11.1 of the WIPO Overview 3.0, “[when] assessing whether a complaint filed by

multiple complainants may be brought against a single respondent, panels look at whether (i) the

complainants have a specific common grievance against the respondent, or the respondent has engaged in

common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and

procedurally efficient to permit the consolidation”.

In the case at hand, the Complainants are sister companies, as the shareholders of the first Complainant

established the company Vitalen Holding A.Ş, which is the sole shareholder of the second Complainant.

The Complainants also state that they both sell the same products under the trademark PEDAL

COMMANDER. Specifically, the first Complainant acts as the center of the manufacture and selling

operations, whereas the second Complainant runs the operations in the European Union.

The Complainants further points out that they both operate via the website at <pedalcommander.com> and

alternative websites, namely “ and “ and, therefore,

the use of the disputed domain name is affecting both Complainants negatively.

Under these circumstances, the Panel finds that there is sufficient evidence to support a consolidation of the

Complainants as they have a common grievance against the Respondent. The Panel also finds that the

consolidation would be equitable and procedurally efficient. Therefore, the Panel accepts the single

consolidated Complaint against the Respondent.

1 Considering the substantive similarities between the ADR Rules and the Uniform Domain Name Dispute Resolution Policy (“UDRP”),

the Panel also refers to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”),

where appropriate.

page 4

B. Language of proceeding

Pursuant to the panel’s decision of November 29, 2021, in Vitalen Otomotiv A.S v. Faith Ünsal, WIPO Case

No. DEUL2021-0006, while the language of the registration agreement is Danish, the request for the

language of this ADR proceeding to be English was granted and, accordingly, the language of the ADR

proceeding shall be English.

6.2. Substantive Issues

According to Article 22(1)(a) of the Regulation, an ADR procedure may be initiated by any party where the

registration is speculative or abusive within the meaning of Article 21. Article 21(1) of the Regulation,

provides that a registered domain name shall be subject to revocation where it is identical or confusingly

similar to a name in respect of which a right is recognized or established by national law of a Member State

and/or European Union law and where it:

(a) has been registered by its holder without rights or legitimate interests in the name; or

(b) has been registered or is being used in bad faith.

Article 22(11) of the Regulation states that “the ADR panel shall decide that the domain name shall be

revoked, if it finds that the registration is speculative or abusive as defined in Article 21. The domain name

shall be transferred to the complainant if the complainant applies for this domain name and satisfies the

general eligibility criteria set out in Article 4(2)(b) of Regulation (EC) No 733/2002.”

This provision is reflected in paragraph B(11)(b) of the ADR Rules, stating that the sole remedies available

pursuant to an ADR proceeding where the respondent is the domain name holder in respect of which domain

name the complaint was initiated shall be limited to revocation or to the transfer of the domain name to the

complainant provided that it satisfies the eligibility criteria established for the registration of “.eu” domain

names.

A. Identical or Confusingly Similar to a name in respect of which a right or rights are recognized or established by national law of a Member State and/or European Union law

Article 10(1) of the Regulation contains a list of rights which may fulfill the definition of “name in respect of

which a right is recognized or established” provided in Article 21(1) of the Regulation. Said list includes, inter

alia: “registered national and community trademarks, geographical indications or designations of origin, and,

in as far as they are protected under national law in the Member-State where they are held: unregistered

trademarks, trade names, business identifiers, company names, family names, and distinctive titles of

protected literary and artistic works.”

Paragraph B(11)(d)(1)(i) of the ADR Rules determines that the Panel shall issue a decision granting the

remedies requested in the event that the Complainant proves “The domain name is identical or confusingly

similar to a name in respect of which a right is recognized by the national law of a Member State and/or

European Union law”.

In the case at hand, the Complainants have provided evidence of a valid trademark registration for PEDAL

COMMANDER (figurative mark), designating the European Union, registered in the name of the first

Complainant (International trademark registration No. 1408975 for PEDAL COMMANDER).

The Panel notes that the core of the trademark PEDAL COMMANDER (figurative mark), consisting of the

denominative element “pedal commander”, is entirely reproduced in the disputed domain name, with the

mere addition of the “.eu” ccTLD which, as stated in several prior cases, is disregarded, being a mere

technical requirement for registration. Therefore, the Panel finds that the disputed domain name is identical

to the Complainant’s trademark.

page 5

Accordingly, the Panel finds that the Complainants have proven that the disputed domain name is identical

to a name in respect of which they have rights, according to the first requirement of Article 21(1) of the

Regulation and Paragraph B(11)(d)(1)(i) of the ADR Rules.

B. Rights or Legitimate Interests

According to Article 21(2) of the Regulation and Paragraph B(11)(e) of the ADR Rules, any of the following

circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation

of all evidence presented, shall demonstrate a respondent’s rights or legitimate interests in a domain name:

(1) prior to any notice of the dispute, the respondent has used the domain name or a name corresponding to

it in connection with the offering of goods or services or has made demonstrable preparations to do so.

(2) the respondent, being an undertaking, organization or natural person, has been commonly known by the

domain name, even in the absence of a right recognized or established by national and/or European Union

law;

(3) the respondent is making a legitimate and noncommercial or fair use of the domain name, without intent

to mislead consumers or harm the reputation of a name in which a right is recognized or established by

national and/or European Union law.

A complainant is required to make a prima facie case that the respondent lacks rights or legitimate interests

and, once such prima facie case is made, the burden of production shifts to the respondent to submit

appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name.

If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have

satisfied the second element.

In the present case, the Panel finds that the Complainants have made out a prima facie case and that the

Respondent, by not submitting a Response, has failed to provide any elements to establish rights or

legitimate interests in the disputed domain name.

The Complainants stated that the Respondent was not authorized to register or use the disputed domain name. Moreover, according to Clause 14 of the Distributorship Agreement (submitted as Annex 7 to the

Complaint), signed between the first Complainant and the Respondent’s company few months after the

registration of the disputed domain name, it was clear that the rights on domain names encompassing the

trademark PEDAL COMMANDER were held by the first Complainant, whilst the Respondent’s company

could have been granted only a right of use of such domain names. Based on the evidence submitted by the

Complainants and in the absence of a Response, the Panel finds that, on balance of probabilities, the

Respondent maintained the disputed domain name in its name without having received any authorization

from the Complainants, while being aware of such Clause 14.

In addition, there is no indication before the Panel, also on the basis of the WhoIs records, that the

Respondent might be commonly known by the disputed domain name.

The disputed domain name is currently not pointed to an active website. However, based on the

screenshots available on the Internet Archive at “Archive.org”, it appears that the disputed domain name was

used in the past to promote the sale of PEDAL COMMANDER products in Europe. However, since the

Respondent maintained the disputed domain name in its own name notwithstanding the provision in Clause

14 of the Distributorship Agreement signed by its company with the first Complainant, from which it could be

easily inferred that the Respondent was not entitled to do so, and in light of the fact that the Respondent’s

website prominently displayed the Complainant’s trademark imitating the layout of the Complainants’ prior

website at <pedalcommander.com>, the Panel finds that the Respondent’s use of the disputed domain name

did not amount to an offering of goods or services in good faith. Indeed, the Complainants stated that the

Distributorship Agreement with the Respondent’s company was terminated in view of the registration and

use of the disputed domain name by the Respondent.

page 6

In view of the fact that the Respondent’s use of the disputed domain name was apparently commercial, the

Panel also finds that the Respondent has not made a legitimate and noncommercial or fair use of the

disputed domain name, without intent to mislead consumers or harm the reputation of the Complainants’

distinctive sign.

In addition, the Panel notes that the nature of the disputed domain name, being identical to the

Complainant’s PEDAL COMMANDER trademark, carries a high risk of implied affiliation. Section 2.5.1 of the WIPO Overview 3.0.

In light of the foregoing and in absence of a Response, the Panel finds that the Complainants have proven

that the Respondent has no rights or legitimate interests in the disputed domain name according to the

second requirement of Article 21(1) of the Regulation and Paragraph B(11)(d)(1)(ii) of the ADR Rules.

C. Registered or Used in Bad Faith

According to Article 21(1)(b) of the Regulation, a complainant is required to demonstrate that a domain name

has been registered or used in bad faith.

Article 21(3) of the Regulation and Paragraph B(11)(f) of the ADR Rules provide a non-exhaustive list of

circumstances which, if found by the Panel to be present, may be evidence of the registration or use of a

domain name in bad faith:

(1) circumstances indicating that the domain name was registered or acquired primarily for the purpose of

selling, renting, or otherwise transferring the domain name to the holder of a name in respect of which a right

is recognized or established by national and/or European Union law, or to a public body; or

(2) the domain name has been registered in order to prevent the holder of such a name in respect of which a

right is recognized or established by national and/or European Union law, or a public body, from reflecting

this name in a corresponding domain name, provided that:

(i) the Respondent has engaged in a pattern of such conduct; or

(ii) the domain name has not been used in a relevant way for at least two years from the date of registration;

or

(iii) there are circumstances where, at the time the ADR Proceeding was initiated, the Respondent has

declared its intention to use the domain name, in respect of which a right is recognized or established by

national and/or European Union law or which corresponds to the name of a public body, in a relevant way

but failed to do so within six months of the day on which the ADR Proceeding was initiated;

(3) the domain name was registered primarily for the purpose of disrupting the professional activities of a

competitor; or

(4) the domain name was intentionally used to attract Internet users, for commercial gain to the

Respondent’s website or other online location, by creating a likelihood of confusion with a name on which a

right is recognized or established, by national and/or European Union law, or it is a name of a public body,

such likelihood arising as to the source, sponsorship, affiliation or endorsement of the website or location or

of a product or service on the website or location of the Respondent; or

(5) the domain name is a personal name for which no demonstrable link exists between the Respondent and

the domain name registered.

page 7

The Panel notes that, in light of the prior registration and use of the trademark PEDAL COMMANDER in

connection with the Complainants’ products, the Respondent was more likely than not aware of the

Complainants and its trademark when it registered the disputed domain name, which it is identical to the potential reseller) would have been entitled to register a domain name with the Complainant’s trademark

noting that the Distributorship Agreement was not signed until September 15, 2020, the Panel notes that the

Respondent’s intention was probably to take unfair advantage of the Complainant’s goodwill attaching to that

trademark due to its identity with the disputed domain name.

The Panel also finds that, considering the nature of the disputed domain name along its use the disputed

domain name was intentionally used to attract Internet users, for commercial gain, to the Respondent’s

website, by creating a likelihood of confusion with the Complainants’ trademark due to its identity with the

disputed domain name.

Moreover, the circumstance that the Respondent maintained the disputed domain name in its name although

the Distributorship Agreement signed between the Respondent’s company and the first Complainant clearly

established that all domain name registrations using PEDAL COMMANDER belonged to the first

Complainant, and that the Respondent’s company agreed to “transfer the rights and ownership of the pedal

commander brand’s domain […] to the manufacturer [i.e. the First Complainant]” supports a finding of bad

faith.

Furthermore, the Complainants stated that the cited Distributorship Agreement was terminated due to the

Respondent’s registration of the disputed domain name and the Respondent, failed to submit a Response,

did not rebut such allegation. Although the Complainant has not submitted evidence of the termination of the

said agreement (such as a termination letter), the Panel finds that the fact that the Respondent retained the

disputed domain name even after the termination would further demonstrate the Respondent’s bad faith.

In view of the circumstances of the case, the Panel also finds that the current passive holding of the disputed

domain name does not prevent a finding of bad faith.

In view of the above, the Panel finds that the Complainants have also met the requirement of Article 21(1) of

the Regulation and Paragraph B(11)(d)(1)(ii) of the ADR Rules.

7. Decision

For the foregoing reasons, in accordance with Paragraph B(11) of the ADR Rules, the Panel orders that the

disputed domain name <pedalcommander.eu> be transferred to the second Complainant, Vitalen

Technology GmbH 2.

/Luca Barbero/ Luca Barbero

Sole Panelist

Date: April 22, 2022

2 The remedy sought is transfer of the disputed domain name to the Complainant Vitalen Technology GmbH. As the Complainant

Vitalen Technology GmbH is established in Germany, it satisfies the general eligibility criteria for registration of the disputed domain

name set out in Article 4(2)(b) of the Commission Regulation (EC) No. 733/2002 as amended by Regulation (EU) 2019/517 of the

European Parliament and of the Council.