WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Galatasaray Spor Kulubu Dernegi, Galatasaray Pazarlama A.S. and Galatasaray Sportif Sinai Ve Ticari Yatirimlar A.S. v. InterAct Accessories, Inc.
Case No. D2003-0006
1. The Parties
The Complainants are (1) Galatasaray Spor Kulubu Dernegi (2) Galatasaray Pazarlama A.S. and (3) Galatasaray Sportif Sinai Ve Ticari Yatirimlar A.S. of Istanbul, Turkey, represented by Istanbul Patent & Trademark Consultancy Ltd.
The Respondent is InterAct Accessories, Inc., of Hunt Valley, Maryland, United States of America.
2. The Domain Name and Registrar
The disputed domain name <gsstore.com> ("the domain name") is registered with Register.com ("the Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center ("the Center") on January 8, 2003, and the Center transmitted its standard request for registrar verification to the Registrar the same day. On January 15, 2003, the Registrar verified that the Respondent was the registrant of the domain name, that the Uniform Domain Name Dispute Resolution Policy ("the Policy") applied and that the language of the registration agreement was English. The Registrar further stated that the Respondent had submitted to the registration agreement at the location of the Registrarís principal office, which the Panel understands to be intended to mean that the Respondent had submitted to the jurisdiction of the courts at that location. The Registrar also confirmed the contact details for the registrant on its WHOIS database.
The Registrar did not verify that it had received the Complaint, although the Complaint itself states that it has been sent to the Registrar. If there has been non-compliance with the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") in this regard, the Panel waives the irregularity under its general powers in paragraph 10 thereof.
The Center checked that the Complaint satisfied the formal requirements of the Policy, the Rules and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules") on January 20, 2003. In accordance with the Rules, paragraphs 2(a) and 4(a), the Center sent formal notification of the Complaint to the Respondent at the addresses indicated in the Registrarís WHOIS database by email, fax and courier and by email to "firstname.lastname@example.org" on January 20, 2003, and the proceedings accordingly commenced on that date. In accordance with the Rules, paragraph 5(a), the due date for Response was February 9, 2003. The Respondent did not submit any response and the Center notified the Respondentís default on February 12, 2003.
The Center appointed Jonathan Turner as the sole Panelist in this matter on February 25, 2003. 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. Having reviewed the file, the Panel is satisfied that (apart from the possible irregularity referred to and waived above) the Complaint complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constitute Panel in accordance with the Policy, the Rules and the Supplemental Rules.
4. Factual Background
The first Complainant is a very well-known association football (soccer) club founded in 1905 in Istanbul, Turkey. It has repeatedly won the Turkish Super League Cup and in 1999-2000 it won the UEFA Cup. The second Complainant is a connected company which owns the registered trademarks used by the club. The Third Complainant is another connected company which manages marketing operations in respect of the clubís trademarks.
The Complainants have registered various trade or service marks (hereinafter both referred to as trademarks) in Turkey, including "Galatasaray Spor Kulubu GS 1905," "GS 1905 Galatasaray Spor Kulubu 1980" and logos comprising a monogram combining the letters "G" and "S," together with "1905" or a depiction of a lion or bird. These marks have also been accepted as well-known trademarks by The Turkish Patent Institute. The Second Complainant has also applied to register "GALATASARAY STORE" as a trademark in Turkey, but the application has not yet been granted.
The "GS" monogram is used on the team shirts and on the Complainantsí website, which also advertises merchandise using the name "Galatasaray Store" with the first letters of these words picked out in a different colour.
The Respondent registered the domain name on December 16, 1999. The domain name currently resolves to a blank page and there is no evidence of any practical use of the domain name by the Respondent. The Respondentís contact address on the Registrarís WHOIS database is "email@example.com."
The Complainantsí representatives sent the Respondent a letter of Complaint on November 28, 2002. The Respondent did not reply.
5. Partiesí Contentions
The Complainants contend first that the domain name is identical or confusingly similar to trademarks in which they (or one of them) have rights. They point out that the dominant feature of the domain name is "GS" and that these are the initials of the name of the club, "Galatasaray Spor."
Secondly, the Complainants maintain that the Respondent has no rights or legitimate interests in respect of the domain name. They point out that the Respondent is not known by this name, that it does not have any permission of the Complainants to use it, and that it has made no bona fide use of it.
Thirdly, the Complainants allege that the Respondent registered and is using the domain name in bad faith. They assert that the Respondent was clearly aware of the Complainantsí extensive reputation, intended it to refer to the Complainants and hoped that the Complainants would pay for it. They note that it is common for leading football clubs to use such names for the sale of merchandise, as in the case of a rival Turkish football club, Besiktas Jimnastik Klubu which has a website at "www.bjkstore.com." The Complainants further assert on similar grounds that the Respondent registered the domain name in order to prevent them from reflecting their trademarks in a corresponding domain name. In this connection, they also note that passive holding of a domain name can constitute use in bad faith. Finally, the Complainants allege that the Respondent has tried to take unfair advantage of the reputation of their trademarks by creating a likelihood of confusion.
The Respondent did not reply to the Complainantsí contentions.
6. Discussion and Findings
In accordance with paragraph 4 of the Policy, the Complainants must prove (A) that the domain name is identical or confusingly similar to a trademark or service mark in which they have rights; (B) that the Respondent has no rights or legitimate interests in respect of the domain name; and (C) that the domain name has been registered and is being used in bad faith
A. Identical or Confusingly Similar to Mark in which Complainants have Rights
It is clear that the Complainants have registered and unregistered rights in the marks "Galatasaray Spor Kulubu GS 1905," "GS 1905 Galatasaray Spor Kulubu 1980" and the "GS" monogram, as well as unregistered rights in the names "Galatasaray Spor" and "Galatasaray."
The Complainants may have an unregistered right in the name "Galatasaray Store" with the "G" and the "S" emphasized as it appears on their website. However, it is not clear whether they can rely on this for the purposes of paragraph 4(a) of the Policy, since there is no evidence that this name was in use before the registration of the domain name. Given the conclusion reached below, it is not necessary to resolve this point.
In the view of the Panel, the Complainants cannot rely on the pending application to register "Galatasaray Store" as a trademark for the purposes of paragraph 4(a) of the Policy, since the application has not yet been granted: see Vertical Computer Systems, Inc. v. Registrant of "pointmail.com," WIPO Case No. D2001-0006 <pointmail.com>.
The domain name is not identical to any of the Complainantsí marks. In considering whether it is confusingly similar, the following matters are relevant. First, as the Complainants point out, the more distinctive part of the domain name is the letters "GS." Secondly, these letters are not highly distinctive, in that they could stand for the many other organizations in the world with names consisting of words beginning with "G" and "S." Thirdly, supporters of the Complainantsí team would expect the Complainants to have an official website advertising and selling merchandise, and that this might well be at a web address such as "www.gsstore.com," like that of the rival club Besiktas Jimnastik Klubu at "www.bjkstore.com."
In the context of the Policy as a whole, the function of the first requirement is to ensure that the Complainants have a sufficient interest in the disputed domain name; whether the registration and use of the disputed domain name are objectionable is assessed under the second and third criteria. Accordingly, the first requirement should be regarded as setting a relatively low, threshold test. In particular, it is appropriate to consider whether potential as well as actual use would be liable to cause confusion, especially where, as here, the disputed domain name is not being used at all: see Koninklijke Philips Electronics N.V. v. In Seo Kim, WIPO Case No. D2001-1195 <philipssucks.com>.
Approaching the matter on this basis, the Panel is satisfied that the domain name is confusingly similar to the Complainantsí marks within the meaning of paragraph 4(a) of the Policy. In particular, confusion would be likely to occur if the domain name were used in relation to football merchandise, since supporters of the Complainantsí team would be likely to assume that a site at this address was an official site approved by the club.
The Panel thus finds that the first requirement of the paragraph 4 of the Policy is satisfied.
B. Rights or Legitimate Interests
The Panel is satisfied that the Respondent has no rights or legitimate interests in respect of the domain name. The Respondent does not appear to have used it for any bona fide business. The fact that "GS" might be short for "gameshark," which the Respondent uses in its email address, does not suffice to confer any right or legitimate interest on the Respondent in respect of the domain name.
C. Registered and Used in Bad Faith
The Panel is not satisfied that the Respondent registered or is using the domain name in bad faith.
As noted above, the letters "GS" could stand for many businesses or other organizations with names consisting of words beginning with "G" and "S," including the name "gameshark" which the Respondent uses in its email address; and "store" is generic. Furthermore, the Respondent is in the USA, a country where the "beautiful game" of association football has become more popular in recent years, but is still far from being a dominant sport. There is no reason to suppose that the Respondent had heard of the Complainants, still less that the Respondent knew that they used or were called by the initials "GS."
The Complainantsí assertion that the Respondent knew about the Complainants and intended the domain name to refer to them is not challenged by the Respondent, but the Panel does not consider that it is bound to accept an unsubstantiated assertion which appears improbable on the basis of the available information.
The Complainantsí representatives have made every point which could be made in support of their case that the Respondent has acted in bad faith. However, the fact is that there is no evidence to support this contention, and on the available information it seems unlikely.
The Panel is not satisfied on the balance of probabilities that the domain name was registered or is being used in bad faith. The Complaint must therefore be rejected.
For all the foregoing reasons, the Complaint is denied.
Dated: March 3, 2003