WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hachette Rusconi S.p.A. v. Levent Ural
Case No. D2001-1278
1. The Parties
The Complainant in this administrative proceeding is Hachette Rusconi S.p.A. based at Viale Sarca 235, 20126 Milan, Italy, represented by Mariacristina Rapisardi, Via Serbelloni 12, 20126 Milan, Italy.
The Respondent is Levent Ural, 16 Epsom Road, Leatherhead, KT22 6TA Surrey, UK.
2. The Domain Name and Registrar
The domain name at issue is <rakam.com> ("the Domain Name"). The Domain Name is registered with Joker.com, 40213 Düsseldorf, Germany.
3. Procedural History
Complainant filed a Complaint ("the Complaint") with the World Intellectual Property Organization Arbitration and Mediation Center ("the Center") electronically on October 22, 2001, and by hard copy on October 23, 2001.
On October 24, 2001, the Center acknowledged receipt of the Complaint.
On October 26, 2001, the Center transmitted to Joker.com a request for registrar verification in connection with this case so as to:
- confirm that the Domain Name at issue is registered with registrar;
- confirm that the person identified as the Respondent is the current registrant of the Domain Name;
- provide full contact details, i.e. postal address(es), telephone number(s), facsimile number(s), e-mail address(es) available in the Registrar's Who is database for the registrant of the disputed Domain Name, the technical contact, the administrative contact, and the billing contact for the Domain Name.
In email correspondence between the Center and Joker.com from October 26-November 2, 2001, it becomes clear that Joker.com is the registrar of the Domain Name. It indicated that the Domain Name was registered in the name of Levent Ural at the above mentioned address and that the administrative and technical contact is GET FREE DOMAINS FROM - www.uk2.net -, Prestons Road, E14 9SB London, Docklands, UK.
On November 12, 2001, an amended Complaint was sent to the Center in which Complainant agrees to submit to the jurisdiction of the Court in Surrey, UK where Respondent is located. On November 12, 2001, the Center verified that the Complaint met the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy ("the Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules").
The panel has reviewed the documentary evidence provided by the Parties and the Center and agrees with the Center's assessment that the Complaint complies with the formal requirements of the aforementioned Rules.
The administrative proceeding commenced on November 12, 2001. The same day, the Complaint was notified to Respondent.
On November 20, 2001, Respondent filed a Response by email and on November 29, 2001, by hardcopy, the receipt of which was acknowledged by the Center on November 29, 2001.
Upon receipt of the necessary declaration of independence and impartiality of the present panel, the Center appointed on January 8, 2002, Prof. Dr. Charles Gielen as sole panelist.
4. Factual Background
According to Complainant it owns several registrations of the trademark RAKAM and marks containing the word RAKAM amongst others for goods in classes 16, 24, 25 and 26. Complainant files copies both of Italian and UK registrations as well as of an International Registration covering a number of countries. Furthermore Complainant files proof of use of the trademark RAKAM for a magazine in the Italian language dealing with fashion and similar items, which magazine according to Complainant is published since 1929. Complainant states that this mark is well known both in Italy and abroad. Any use of the mark RAKAM in other countries than Italy is not filed.
Respondent says he is a Turkish national who acquired a number of domain names which consist of words out of the Turkish language in connection with possible development of possible websites aimed at the Turkish market, such as <tabiat.com> (=nature), <burun.com> (=nose), <dokuz.com> (=nine), <buhafta.com> (= this week). "Rakam" means "number."
After having contacted Respondent by letter of November 22, 2001, with an invitation to get in touch in order to settle the matter friendly, Respondent answered by email on November 27, 2001, that he never heard about the trademark Rakam, that rakam means "number" in Turkish, that he owns several domain names consisting of Turkish words which are for sale and that if Complainant is interested to buy the domain name, an offer can be made. Then Complainant made an offer for English pounds 200, which was not considered serious by Respondent. Complainant increased its offer to pounds 600 which was rejected as well. A counteroffer of pounds 2.500 was made by Respondent which offer remained unanswered.
5. Parties' Contentions
Complainant alleges that the Domain Name is identical to the trademark registered and used by Complainant. He points out that Respondent does not carry any legitimate business under the name Rakam and that <rakam.com> does not identify in any way services offered by Respondent. Furthermore the Domain Name is registered and used in bad faith. Complainant points in particular at article 4 (b) (i) of the Policy and the admittance by Respondent that the only reason to have the domain names is to make some investment and sell them to people who might be interested. Since Respondent was only prepared to assign the Domain Name against payment of English pounds 2.500,- there is no doubt about his bad faith.
Respondent does not dispute that the trademark Rakam is identical to the Domain Name, but states that this is a normal word in the Turkish language. He denies to have registered and used the Domain Name in bad faith. He denies to have known about the trademark. Furthermore he says that he did not solicit and/or target Complainant with the knowledge of the trademark. The fact the he was willing to assign the Domain Name against payment of English pounds 2.500,- does not mean that he is in bad faith.
6. Discussion and Findings
To succeed in its Complaint, Complainant must show that each of the conditions of paragraph 4(a) of the Policy are satisfied, namely that
1. the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
2. the Respondent has no rights or legitimate interests in the Domain Name; and
3. the Domain Name has been registered and used in bad faith.
These three elements will be considered below.
6.1. Identity or confusing similarity
Respondent does not dispute that the Domain Name is identical with Complainants' trademark. The panel finds that the Domain Name and the trademark of Complainant are identical.
6.2. Rights or legitimate interests
The panel is of the opinion that Respondent did not give any proof of existing rights and or/legitimate interest in the Domain Name. The simple fact that the word "rakam" is a normal Turkish language word as such does not give any rights to or give rise to any legitimate interests on the side of Respondent. The panel therefor concludes that condition 2 is fulfilled.
6.3. Bad Faith
According to paragraph 4(a)(iii) of the ICANN Policy, it is incumbent on the Complainant to prove that the Respondent has registered and is using the domain name in bad faith. The panel is of the opinion that such proof is not given. The panel agrees with Complainant that according to article 4 (b) (i) of the Policy bad faith can be deduced from circumstances indicating that the Domain Name is registered primarily for the purpose of transferring the Domain Name to Complainant for valuable consideration. But the fact that Respondent is prepared to assign a domain name for valuable consideration is not sufficient to accept bad faith. For bad faith it is necessary that the acquisition of the Domain Name and use thereof is "primarily" meant for the transfer to Complainant and it is on this point that the Complainant did not give any proof. The only argument put forward is the notoriety of the trademark. However the panel did not find any proof of notoriety except maybe with respect to Italy. Furthermore the word "rakam" apparently is a normal word in the Turkish language such as the other words for which Respondent owns domain name registrations and which words do not seem to coincide with any other reputed marks. Therefore the panel concludes that there is no proof that the Domain Name was primarily acquired and used for assignment to Complainant in accordance with paragraph 4 (b)(i) of the Policy.
For the foregoing reasons, the panel concludes and decides that the Complaint is denied.
Prof. Dr. Charles Gielen
Dated: January 14, 2002