WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Yüksel Inºaat A.ª. v. Erdogan Koparal
Case No. D2002-0285
1. The Parties
The Complainant in these administrative proceedings is Yüksel Inºaat A.ª., SIM Sogutozu Is Merkezi Sogutozu Cad. No.14/A 06560 Bestepeler, Ankara, Turkey.
The Respondent is Erdogan Koparal, 193 Millet Cad. Istanbul, 02355, Turkey.
2. The Domain Names and Registrar
The domain names in dispute are <yukselinsaat.com>, <yukselinsaat.net>, and <yukselinsaat.org>.
The Registrar with which said domain names are registered is TierraNet Inc. DBA DomainDiscover (hereinafter “the Registrar”).
3. Procedural History
On March 26, 2002 the Complaint was received by the WIPO Arbitration and Mediation Center ("the Center") by e-mail and in hard copy on April 2, 2002.
On April 3, 2002 the Center sent a Request for Registrar Verification to the Registrar. On April 10, 2002 the Registrar responded, confirming that it is the registrar of said domain names and that the Respondent was the current registrant, Administrative Contact, Technical Contact and Zone Contact for each said registration. The Registrar furthermore confirmed in respect of each said registration that the Uniform Domain Name Dispute Resolution Policy (hereinafter “the Policy”) applied to each said registration, that the language of the registration agreement was English, and that the registrant had submitted in his registration agreement to the jurisdiction at the location of the principal office of the Registrar for court adjudication of disputes concerning or arising from the use of the domain names.
In accordance with Paragraph 4(a) of the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") and paragraph 5 of the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules") the Center reviewed the Complaint to ascertain whether it satisfied the formal requirements of the Policy, the Rules and the Supplemental Rules and that payment in the required amount had been made by the Complainant.
On April 12, 2002, the Center sent a Notification of Complaint and Commencement of Administrative Proceedings to the Respondent. Said Notification was sent to the Respondent by Post/Courier (with enclosures) and by e-mail (Complaint without attachments). A copy of said Notification was sent to the authorised representative of the Complainant by e-mail. Further copies of said Notification were sent to the Internet Corporation for Assigned Names and Numbers ("ICANN") and to the Registrar by e-mail.
The Center received confirmation via the courier’s Package Tracking Report that the Notification of Complaint and Commencement of Administrative Proceedings was successfully delivered on April 16, 2002. Service of the Notifications by e-mail to the addresses firstname.lastname@example.org, email@example.com, and firstname.lastname@example.org failed due to permanent fatal errors. Similarly delivery to the Respondent at the e-mail address provided by the Respondent for administrative contact purposes failed due to a permanent error.
Said Notification of Complaint and Commencement of Administrative Proceeding inter alia advised the Respondent that the Administrative Proceeding had commenced on April 12, 2002 and that the Respondent was required to submit a Response to the Center on or before May 2, 2002.
No Response was received by the Center and on May 4, 2002, the Center sent a Notification of Respondent Default to the Respondent by e-mail. A copy of said Notification of Respondent Default was on the same date sent to the authorised representative of the Complainant by e-mail.
On May 15, 2002, after having received a Statement of Acceptance and Declaration of Impartiality from him in accordance with paragraph 7 of the Rules, the Center proceeded to appoint James Bridgeman as the Administrative Panel. On the same day the case file was transmitted to the Administrative Panel.
The Complainant and a person purporting to represent the Respondent sent further e-mail communications both directly to this Administrative Panel and to the Center. Such further communications are not encouraged by the Rules, and communication directly with the Administrative Panel is prohibited by the Rules. In the circumstances this Administrative Panel has not considered the content of same in reaching this decision.
In the view of the Administrative Panel, proper procedures were followed and this Administrative Panel was properly constituted.
4. Factual Background
According to the Complaint, on March 15, 2002, on the application of the Complainant, the 30th Basic Civil Court of Ankara directed that the Respondent’s Internet site be stopped until the case is resolved.
The Complainant is engaged in the construction industry in Turkey and the owner of a Turkish registered trademark and service mark device mark YÛKSEL INªAAT A.ª and DEVICE, registration number 188944. The Complainant has registered the domain name <yukselinsaat.com.tr>.
In the absence of a Response, the only information relating to the Respondent is to be found in the registration details provided to the Registrar and the information posted on the Respondent’s web site at the <yukselinsaat.com> web address in which, he states that he established the web site to encourage debate about certain collapsed buildings in Turkey.
5. Parties’ Contentions
The Complainant requests that said domain names be transferred to the Complainant.
The Complainant alleges that said domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; that the Respondent has no rights or legitimate interests in respect of said domain names; and that said domain names were registered and are being used in bad faith.
The Complainant states that it is the owner of the above referenced registered trademark and has provided a photocopy of said registration as an annex to the Complaint. The trademark is registered in respect of construction services relating to railways, airports, bridges, underground structures, and multi-story buildings.
The Complainant further submits that said domain name <yukselinsaat.com> is particularly confusingly similar to the Complainant’s domain name <yukselinsaat.com.tr>.
The Respondent is not related to the Complainant and has no connection with any other construction business or person named Yuksel Insaat. Neither is the Respondent related to any business or person with a name that is confusingly similar to the Complainant’s name.
Furthermore the Complainant submits that the results of a WHOIS query conducted by the Complainant in the Registrar’s database on March 3, 2002 against the domain name <yukselinsaat.com>, produced a web page on which the statement “for sale, for sale, for sale, for sale, tr” was posted. The Complainant has submitted a copy of said web page with the Complaint.
The Complainant submits that by permitting said statement “for sale, for sale, for sale, for sale, tr” to be posted on the Registrar’s WHOIS database, the Respondent shows that he has commercial interests in the domain name.
Furthermore the Complainant submits that the domain name <yukselinsaat.com> should be considered as having been registered and used in bad faith because the Respondent’s web site established at the <yukselinsaat.com> address, contained statements that purported to represent that web site as the official web site of the Complainant. The Complainant has submitted a number of screen shots of pages of the Respondent’s web site accessible at the address www.yukselinsaat.com/indexEn.xp., to illustrate this point.
In the English language version of this site, the following words appear:
“Yüksel Construction Co., Inc. TÛV CERT ISO 9001 YÜKSEL PROJE important public announcement.”
The web page contained a number of photographs of people and a photograph of what appears to be a collapsed building captioned “Yüksel Complex, Yalova, Turkey (following Agust (sic) earthquake)”
The web page further contained the following statements:
“Our buildings are collapsing: 316 people died in Yalova Complex (Agust (sic) 1999) – Bolu Tunnel collapsed (October 12 1999) – Aksary Istanbul Underground construction collapsed.”
The web page further stated:
“So many innocent people lost their lives. Despite the fact that all these innocent people died in the buildings that we built, to this date, we have not made any public statement. Now the next anticipated Istanbul earthquake is immanent. We have our signatures on many familiar buildings that are home to thousands of people in Istanbul. It really scares us to think the possibility of loosing (sic) thousands of more people in the next inevitable earthquake. That is why we have decided to judge ourselves (sic) in front of you with our good deeds and sins on these pages…”
Further down the web page there is a statement:
“As you have guessed it, this can not be a site that Yüksel Insaat Co. put together and obviously, it is not. This site is an invitation to thinking and talking about what is going on here. Why have we built this site? Because we have lost 4 of our own family members under those buildings…”
The Complainant submits that this web site has harmed the commercial reputation of the Complainant. The Complainant has furthermore provided copies of newspaper articles published in the Turkish newspaper Hürriyet.
The Complainant submits that while the Respondent has not yet established a web site to which the domain names <yukselinsaat.org> and <yukselinsaat.net> resolve, the Complainant is concerned at the possibility that the same content may be published on web sites at these addresses.
There was no Response filed by the Respondent.
6. Discussion and Findings
Court Proceedings and the Jurisdiction of this Administrative Panel
Sub-paragraph 4(k) of the Policy addresses “Availability of Court Proceedings” and provides that the mandatory administrative proceeding requirements set forth in Paragraph 4 shall not prevent either party from submitting the dispute to a court of competent jurisdiction for independent resolution before such mandatory administrative proceeding is commenced or after such proceeding is concluded.” It follows that the fact that the Complainant has commenced court proceedings in Turkey is no bar to the jurisdiction of this Administrative Panel.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the domain names registered by the Respondent are 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 domain names in question; and
(iii) the domain names have been registered and are being used in bad faith.
Identical or Confusingly Similar
It is clear that the Complainant has rights in the Turkish registered trademark and service mark device mark YÛKSEL INªAAT A.ª and DEVICE, registration number 18894. In the view of this Administrative Panel, it is further clear that the said domain names and each of them are confusingly similar to the Complainant’s trademark and service mark, and this is evidenced by the fact that the Complainant registered the domain name <yukselinsaat.com.tr> to represent its company name, and trade mark, in the Turkish domain.
The Complainant has therefore succeeded in establishing the first element in the test set out in paragraph 4(a) of the Policy.
Rights or Legitimate Interests
It is clear that the Respondent has no commercial association with the Complainant and has no rights or legitimate interest in the trademark or service mark YÛKSEL INªAAT A.ª and DEVICE or any similar trademark such as YUKSEL INSAAT. The question arises as to whether the Respondent has any rights in the domain names as distinct from the trademark or service mark.
The web site established at the domain name address <yukselinsaat.com> is clearly a gripe site and the other domain names, <yukselinsaat.org> and <yukselinsaat.net>, do not resolve to any web site. In the view of this Administrative Panel, while the Respondent is entitled to freely express his views, provided that he does not contravene the laws of libel, such right does not extend to having a right to use the Complainant’s trademark as a domain name for the purposes of establishing a web site to express such views.
This would equally be the case regardless of whether the views were laudatory or otherwise.
In paragraph 4(c) of the Policy there is a non-exhaustive list of ways in which the Respondent can establish that he has rights or legitimate interest in the domain names in issue. In the view of this Administrative Panel, the activities of the Respondent do not fit into any of the categories. The Respondent is not using the domain names in connection with any offering of goods or services, bona fide or otherwise. Neither is the Respondent an individual, business, or other organization that has been commonly known by the domain names or any of them.
This Administrative Panel has considered whether it could be argued that the Respondent is making a legitimate non-commercial or fair use of the domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue and has concluded that this is not the case either.
Firstly there is the submission of the Complainant, supported by the evidence of the print out of the WHOIS search results, that the Respondent has offered one of the domain names for sale. This indicates that the Respondent is not engaged in a “non-commercial” use of that domain name, and by inference of all three of the domain names in issue. Secondly it is clear that the content of the web site established by the Respondent is designed to tarnish the Complainant’s trademark and service mark as detailed below.
In the view of this Administrative Panel the Respondent has no rights or legitimate interests in said domain names and the Complainant has therefore succeeded in establishing the second element of the test in paragraph 4(a) of the Policy.
Paragraph 4(b) of the ICANN Policy sets out the following examples of circumstances that will be considered by an Administrative Panel to be evidence of the bad faith registration and use of a domain name viz. circumstances indicating :
(i) that the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the domain name registrant’s out-of-pocket costs directly related to the domain name; or
(ii) the domain name was registered in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the domain name registrant has engaged in a pattern of such conduct; or
(iii) the domain name was registered primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the domain name registrant intentionally attempted to attract for financial gain, Internet users to the registrant’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s web site or location or of a product or service on the registrant’s web site or location.
While there is no evidence that the Respondent approached the Complainant directly with an offer to sell any of the domain names, there is evidence that the Respondent has offered the domain name <yukselinsaat.com> for sale on the Registrar’s WHOIS page. While this is inconsistent with the Respondent’s statement on the web page at the <yukselinsaat.com> address, that he built the web site to start a debate because he lost four members of his family in collapsed buildings, this Administrative Panel is sensitive to the fact that this may well be the case and has great sympathy with the family of victims of such a disaster.
Nonetheless the fact that the “for sale” statements were posted, amount to circumstances indicating that the domain names were registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the domain name registrant’s out-of-pocket costs directly related to the domain name.
Furthermore on the balance of probabilities this Administrative Panel does not accept that the said domain names were registered and are being used by the Respondent to facilitate a debate on the issue of collapsed buildings in Turkey. It is noteworthy that only one of the domain names resolves to a web site viz. <yukselinsaat.com>. Neither <yukselinsaat.net> nor <yukselinsaat.org> resolve to any web site. Even if the Respondent did want to set up a bona fide gripe site, in the view of this Administrative Panel, he would not be entitled to use any of these domain names in any event as they are virtually identical to the Complainant's trademark. Nonetheless the fact that the Respondent registered all three gTLD names indicates that he has another motive in holding these registrations. In the view of this Administrative Panel, on the balance of probabilities, said domain names were registered and are being used in order to prevent the Complainant, as owner of the trademark or service mark, from reflecting the mark in a corresponding domain name, and by registering the three gTLD names the Respondent has engaged in a pattern of such conduct.
This Administrative Panel therefore finds that the Respondent has registered and is using said domain names in bad faith.
With specific reference to Paragraphs 4(i) of the Policy and 15 of the Rules it is the decision of this Administrative Panel that the Complainant has established that said domain names <yukselinsaat.com>, <yukselinsaat.net> and <yukselinsaat.org> and each of them are confusingly similar to the trademark and service mark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in said domain names and that the Respondent has registered and is using said domain names in bad faith.
This Administrative Panel therefore directs that said domain names <yukselinsaat.com>, <yukselinsaat.net> and <yukselinsaat.org> shall be transferred to the Complainant.
Dated: May 28, 2002