WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Vakko Holding Anonim Sti. v. Esat Ist
Case No. D2001-1173
1. The Parties
Complainant is Vakko Holding Anonim Sti, Istanbul, a corporation organised and existing under the laws of Turkey.
Respondent is Esat, Esat ist, Istanbul, Turkey.
2. The Domain Names and Registrar
The domain names at issue are <vakkorama.com> and<vakkorama.net>. The registrar is Register.com, New York, USA.
3. Procedural History
A Complaint was submitted to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") in hard copy on September 26, 2001, and subsequent in digital format on October 4, 2001. The WIPO Center sent an "Acknowledgement of Receipt of Complaint" to the parties on October 4, 2001.
On October 9, 2001, a Request for Registrar Verification was transmitted to the Registrar, Register.com, who on the same day replied that they were not the Registrar of the said domain names. This was, however, due to a misspelling of the domain names in some parts of the Complaint. After some correspondence between the WIPO Center and the Complainant, the Complaint was subsequently amended. Register.com then confirmed that the domain names <vakkorama.com> and <vakkorama.net> were registered with them. The Registrar forwarded at the same time the requested WHOIS details.
A Formal Requirements Compliance Checklist was completed by the assigned WIPO Center Case Administrator on November 5, 2001. The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in compliance with the requirements of the Uniform Dispute Resolution Policy ("the Policy") and the Rules for Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999 (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy, in effect as of December 1, 1999 (the "WIPO Supplemental Rules").
The fees for a single-member Panel were paid on time and in the required amount by the Complainant.
The Respondent contacted the WIPO Center on October 11, 2001, and asked for advice as to how to proceed. The Respondent at the same time declared that "At the time we registered <vakkorama.com> and <vakkorame.net> these names were expired. We are sure that we have registered these names through a legal process." The WIPO Center referred the Respondent to the explanations on the homepage of ICANN.
All formal deficiencies having been cured, on November 5, 2001, a "Notification of Complaint and Commencement of Administrative Proceeding" (the "Commencement Notification") was transmitted to the Respondent by the required means, setting a deadline of November 25, 2001, by which the Respondent could file a Response to the Complaint.
On November 28, 2001, having received no Response from the designated Respondent, the WIPO Center transmitted to the parties a "Notification of Respondent Default".
The Respondent sent an e-mail to the WIPO Center on December 3, 2001, in which he stated that he had no relationship to the Complainant and that the domain names were not subject to trademark protection on an international level. Thus a dispute over the domain names was not reasonable. The WIPO Center referred to the previous formal Notification and said that they would forward the e-mail to the Panel for its consideration
On December 6, 2001, the WIPO Center invited Knud Wallberg to serve as a panelist in the Case, and transmitted to him a "Statement of Acceptance and Request for Declaration of Impartiality and Independence".
Having received on December 7, 2001, the WIPO Center transmitted on December 14, 2001, to the parties a "Notification of Appointment of Administrative Panel and Projected Decision Date", in which Knud Wallberg was formally appointed as the Sole Panelist. The Projected Decision Date was December 28, 2001.
The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and WIPO Supplemental Rules.
The Administrative Panel shall issue its Decision based on the Complaint, the Policy, the Rules, the WIPO Supplemental Rules, but without the benefit of a formal Response from the Respondent.
4. Factual Background
The Complaint is based on the trademark VAKKORAMA, which is registered as a figurative mark by the Turkish Patent Institute for the goods and services, with which the Complainant is currently using with the mark, primarily clothing and related articles. The registration certificate and its notary public approved translation were provided as an Annex to the Complaint.
5. Parties´ Contentions
The Respondent is neither authorized nor sanctioned by our Complainant for using the registered trademark of their company in any way. Complainant has exclusive rights regarding to the trademark that is used as a domain name.
This registration of the domain name and the manner is directly or indirectly used infringes the legal rights of the Complainant. The Respondent is liable for the breach of trademark rights.
The Respondent has no rights or legitimate interests in respect of the domain name and it is obvious that the domain name is registered with bad faith intent, in order to obtain financial gain during transferring the domain name to its original and legal owner. Respondent has sent an e-mail to Complainant to ask the fund of 20.000 USD in order to transfer the domain. The e-mails sent by the Respondent and their translations were provided as annexes to the Complaint.
Also there is no evidence of the registrant’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services, before any notice to the domain name registrant of the dispute.
The domain name registrant (as an individual, business, or other organization) has not been commonly known by the domain name, even if the registrant has acquired no trademark or service mark rights; This situation is completely contrary for the Complainant for its Trade Mark that has been commonly known by the domain name. Also, Superonline, The Complainant’s Internet Company, is the former owner of the Domains in behalf of the Complainant until the current registration date of the Domains. Copies of the printout of the Whois database search conducted on September 27, 2000, were provided as an Annex to the Complaint.
As mentioned above in section 3, the Respondent has not filed a formal Response in accordance with Paragraph 5 of the Rules. The Panel has decided that it will take into account the e-mails sent by the Respondent to the WIPO Center.
6. Discussion and Findings
According to Paragraph 15(a) of the Rules the Panel shall decide a Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
2) that the Respondent has no legitimate interests in respects of the domain name; and
3) the domain name has been registered and used in bad faith.
Identical or Confusingly Similar
The domain names <vakkorama.com> and <vakkorama.net> contains the dominant part of the registered figurative trademark VAKKORAMA with the addition of the suffix .com and .net, which shall be disregarded in this context. The domain names are thus confusingly similar to the trademark VAKKORAMA in which the Complainant has rights.
The prerequisites in Paragraph 4(a)(i) of the Policy are therefore fulfilled.
The Complainant has not licensed or otherwise permitted Respondent to use its trademark or to apply for any domain name incorporating the mark. Further, the Respondent has not demonstrated that he has any prior rights or legitimate interests in the domain name. The Respondent has shortly indicated that he might use the domain names to open a virtual shop selling goods bearing the trademark VAKKORAMA, but even if he did so this does not give him the right to register and use VAKKORAMA as part of a business identifier such as a domain name without authorisation from the rightholders.
The prerequisites in Paragraph 4(a)(ii), cf. 4 (c) of the Policy are also considered fulfilled.
Paragraph 4(a)(iii) of the Policy further provides registration and use in bad faith. Paragraph 4(b) regulates, by way of example, the kind of evidence that is required.
The trademark VAKKORAMA is registered in Turkey, which is not only the country of incorporation of the Complainant but which is also the country of residence of the Respondent. In addition the mark must be considered well-known in Turkey. The Panel, therefore, finds that it is unlikely that the Respondent did not know of the said mark when he registered the domain names. That this is the case is also clear from the copies of the e-mail correspondence that was annexed to the Complaint. The registration of the domain names must be considered done in bad faith.
In addition, the Panel finds that the Complainant has demonstrated that the Respondent approached them after having registered the contested domain names and offered to sell them back to the Complainant for $ 20,000. This behaviour falls clearly within the definition of bad faith in the Policy, cf. Paragraph 4(b)(i).
Given the circumstances of the present case, the Panel finds that it is important to state that the mere holding of a domain name that is identical or confusingly similar to a trademark belonging to someone else, in itself can be considered disrupting to the business of the rightholder. The Panel thus agrees that it is within the scope of the rights conferred to a trademark to regard "passive use" as "use", cf. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, and several other subsequent decisions.
Bearing these facts and the above arguments in mind, the Panel finds that the domain names have been registered and are being used in bad faith, cf. Paragraph 4(a)(iii) and 4(b) of the Policy.
Consequently, all the prerequisites for cancellation or transfer of the domain names according to Paragraph 4(a) of the Policy are fulfilled.
In view of the above circumstances and facts the Panel decides, that the domain names registered by Respondent are confusingly similar to the trademarks in which the Complainant has rights, that the Respondent has not shown to have any rights or legitimate interests in respect of the domain names, and that the Respondent’s domain names have been registered and are being used in bad faith.
Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel requires that the registration of the domain names <vakkorama.com> and <vakkorama.net> be transferred to the Complainant.
Dated: December 28, 2001