WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tuyap Tum Fuarcilik Yapim Anonim Sirketi (Tuyap Fairs and Exhibitions Organization Inc.) v. Tuyap /Kurumsal.net/Koznet Kurumsal Internet Hizmetleri
Case No. D2003-0442
1. The Parties
The Complainant is Tuyap Tum Fuarcilik Yapim Anonim Sirketi (Tuyap Fairs and Exhibitions Organization Inc.), of Istanbul, Turkey, represented by Pinar Kaya Yalcin of Turkey.
The Respondents are Tuyap /Kurumsal.net/ Koznet Kurumsal Internet Hizmetleri ("Respondent"), of Istanbul, Turkey.
2. The Domain Name and Registrar
The disputed domain name <tuyap.com> is registered with Bulkregister.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 9, 2003. On June 10, 2003, the Center transmitted by email to Bulkregister.com a request for registrar verification in connection with the domain name at issue. On the same day, Bulkregister.com transmitted by email to the Center its verification response confirming that the Respondent "Tuyap" is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, on the ground that the registrant of record was not the entity specified in the Complaint as the Respondent, the Complainant filed an amendment to the Complaint on June 17, 2003. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 19, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was July 9, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 10, 2003.
The Center appointed Anne-Virginie Gaide as the sole panelist in this matter on July 16, 2003. 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 Rules, paragraph 7.
On July 30, 2003, the Administrative Panel issued Panel Order no. 1, by which it requested Complainant to provide additional information on its relation to the holder of the registered trademark relied upon in the Complaint as well as on the legal proceedings initiated by Complainant in Turkey before the filing of the Complaint. On August 1, 2003, within the deadline set in Panel Order no. 1, Complainant filed a Reply by e-mail with the Center. Respondent did not file any observations on such Reply.
4. Factual Background
Complainant, a company founded in 1979, organizes fairs and exhibitions in Turkey and abroad.
Tuyap Holding Inc. is the registered owner of a Turkish registration for the service mark TÜYAP & design in international class 36 (reg. number 172 445), valid until October 23, 2005. The services covered are "investment, financing services".
In the course of the year 2000, Complainant entered into a Registrant Name Change Agreement with Cem Incecinar, in the name of which the Domain Name was registered at the time. This Agreement provided for the transfer of the Domain Name to Complainant.
As of November 23, 2001, the Domain Name was registered in the name of Tuyap Fuarcilik A.S. The administrative and technical contact for the Domain Name was at that time "kurumsal.net".
As of June 4, 2003, the registrant of the Domain Name was "Tuyap", the only address provided being "Istanbul, TR 80300". The administrative and technical contact for the Domain Name was still "kurumsal.net".
On May 1, 2003, the Domain Name resolved to a web page with the following content: "The Internet publishing and e-mail services have been closed for an unlimited period because Tuyap has not paid the prices for the Internet project services. The reasons for closing this web-site will be explained in the Internet site tomorrow".
On May 9, 2003, the Domain Name resolved to a web page with the following content, in Turkish and in English: "Tuyap.com Website hosting & e-mail services have been suspended permanently due to non-payment".
5. Parties’ Contentions
Complainant contends as follows:
Since 1979, Complainant has served more than 25,000 domestic and foreign client organizations by organizing 443 domestic fairs and exhibitions. It is the owner of the TUYAP Fair, Convention and Congress Center in Istanbul, the largest fair and congress center in Turkey, covering 121,000 square meters and designed to provide a full range of services to exhibitors and visitors. Complainant owns the domain name <tuyap.com.tr>, through which it currently broadcasts its Internet site, as well as numerous domain names including the term "tuyap".
Complainant is controlled by Tuyap Holding Inc., which owns 59,8% of Complainant's shares.
Complainant entrusted the company Koznet Kurumsal Internet Hizmetleri (herafter "Koznet") with design, consultancy and management services relating to its web site and to the Domain Name <tuyap.com>. Koznet transferred the Domain Name (until then registered with Network Solutions) to the current registrar Bulkregister.com, and modified on that occasion the Whois data pertaining to the Domain Name, without Complainant's consent, thus violating its contractual agreement with Complainant and the principles of good faith and commercial ethics.
When Complainant decided to work with another service provider, due in particular to failures in the service provided by Koznet, it asked Koznet to orient the Domain Name towards the servers of the new service provider. Mr. Erdinc Muslu, responsible for Koznet, instead oriented the Domain Name towards his own servers, and then published untrue and harmful statements on Complainant. Complainant contends that it has paid all the sums due to Koznet, and does currently not owe anything to this company. The confiscation of the Domain Name by Respondent caused material and moral damage to Complainant, which had in particular to reprint its promotional material to replace <tuyap.com> by <tuyap.com.tr>.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, Complainant must show that :
i) The Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
iii) The Domain Name has been registered and is being used in bad faith.
Before turning to an analysis of these three elements, it is necessary to address a preliminary issue, concerning who the proper Respondents are in this case.
Even though only "Tuyap" is listed as Registrant in the Whois record relating to the Domain Name, Complainant contended in the Complaint that Respondent was Koznet Kurumsal Internet Hizmetleri, Mr. Erdinc Muslu, with two different addresses in Istanbul. The Center notified Complainant that the Complaint was administratively deficient, because the registrant of record was not the entity specified in the Complaint as the Respondent. In the amendment to the Complaint, Complainant indicated that Respondent should be "kurumsal.net", as this name was listed as the administrative contact for the Domain Name in the Whois record. According to Complainant, kurumsal.net and Koznet Kurumsal Internet Hizmetleri are the same entity. Complainant also mentioned that the owner of the domain name <kurumsal.net> was Mr. Erdinc Muslu.
According to the definition provided by paragraph 1 of the Rules, "Respondent means the holder of a domain-name registration against which a Complaint is initiated". Strictly speaking, the Respondent in this case should be "Tuyap", the only name listed under Registrant. In view of the fact that "Tuyap" does not appear to be a person or a legal entity (this name corresponds to Complainant's name and to the Domain Name), the Administrative Panel finds it appropriate to consider the name listed under "administrative and technical contact", i.e. kurumsal.net, as a Respondent in this case. It is also appropriate to cite Koznet Kurumsal Internet Hizmetleri as a Respondent, in view of Complainant's uncontested contention that kurumsal.net and Koznet Kurumsal Internet Hizmetleri designate the same entity (see Amazon.com, Inc. v. Wes Mayder, WeDirect, Inc. and Iclicks, WIPO Case No. D2003-0258, where the Administrative Panel considered as a proper Respondent an entity which appeared to be probably identical to one of the listed Registrant, and whose name appeared as a technical contact).
On the other hand, the Administrative Panel considers that it is not appropriate to name as a Respondent Mr. Erdinc Muslu, as this person does not appear anywhere in the Whois record for the Domain Name. This might be justified, maybe, if Mr. Muslu was the only beneficial owner of Koznet. This has however not been alleged and cannot be inferred from the sole fact that he is the registrant of the domain name <kurumsal.net>.
Accordingly, the Administrative Panel considers that Respondent in the present case is Tuyap/kurumsal.net/Koznet Kurumsal Internet Hizmetleri.
A. Identical or Confusing Similarity
The Domain Name reproduces in its entirety the word element of the service mark "TÜYAP & design". The Administrative Panel assumes in this context that the term "TÜYAP" is distinctive, as this has not been contested. The fact that the typographic sign "" on the letter "U" is not reproduced in the Domain Name is not relevant. Indeed, it does not influence in a significant manner the visual impression produced by the mark, so that its absence does not constitute a material difference. The graphical elements of the mark consist in the font in which the word "TÜYAP" is written, as well as in a square device on the left of this word, which features what seems to be a stylized "T". This device is smaller than the word "TUYAP", which is thus clearly predominant. The Administrative Panel finds consequently that the Domain Name is confusingly similar to the service mark "TÜYAP & design".
Complainant is not the registered holder of this mark. The registered holder is indeed Tüyap Holding A. S. Complainant has declared, and Respondent has not contested, that it is controlled and managed by Tüyap Holding, which is its majority shareholder. In view of the relationship between Complainant and Tüyap Holding, the Administrative Panel considers that Complainant has rights to the service mark "TÜYAP & design" (which appears on Complainant's letterhead). It is accordingly not necessary to examine whether Complainant could be seen as having common law trademark rights due to its long use of the mark. It is to be noted in this respect that the application of the notion of common law trademark rights might not be appropriate when deciding a dispute between two parties located in a non-common law country.
In conclusion, the first condition provided in paragraph 4(a) of the Rules is satisfied.
B. Rights or Legitimate Interests
The record contains no element that would command a finding of rights or legitimate interests of the Respondent regarding the Domain Name.
There could be a question as to whether a dispute between Respondent and Complainant on the subject of the fees due to Respondent for its services may justify the retention of the Domain Name as a security for payment. In other words, it is not impossible that Respondent could invoke, under Turkish law, some sort of lien or charge on the Domain Name, which might be a legitimate interest (see Clinomics Biosciences, Inc. v. Simplicity Software, Inc., WIPO Case No. D2001-0823, where the Administrative Panel found that the issue of whether the Respondent had a lien was outside the scope of the proceedings, because it requested an evaluation of the applicable commercial law of liens). However, in the absence of any allegation on this issue from Respondent (who is in default), the Administrative Panel infers, in conformity with paragraph 14(b) of the Rules, that no such lien or charge exists in favor of Respondent, and that Respondent has no rights or legitimate interests to the Domain Name.
In conclusion, the second condition provided in paragraph 4(a) of the Rules is satisfied.
C. Registration and Use in Bad Faith
Paragraph 4(b) of the Policy provides four circumstances which may be evidence of registration and use of a Domain Name in bad faith, with the indication that the list thus given is not exhaustive.
As of November 2001, the Domain Name was registered in the name of Complainant, the Respondent being only the administrative and technical contact for the Domain Name. Sometimes between November 2001 and June 2003, Respondent deleted the name and address of Complainant under the Registrant details, leaving only the name "tuyap" and a zip code. The only concrete details left were those of Respondent, under administrative and technical contact. This subsequent appropriation of the Domain Name must in the Panel's view be equivalent to registration within the meaning of paragraph 4(b) of the Policy. It can be noted that the notion of registration has already been stretched to encompass subsequent acquisition of a domain name (see Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", WIPO Case No. D2000-0847). Thus, the fact that Respondent's acts in respect of the Domain Name are not technically a registration or an acquisition should not prevent a finding of "registration in bad faith" within the meaning of paragraph 4b) of the Policy.
None of the circumstances set forth in paragraph 4(b) corresponds exactly to the present situation. It must however be examined whether the circumstances provided under letter (i) and (iii) could be applicable by analogy.
a) Paragraph 4(b)(i)
Paragraph 4(b)(i) provides that circumstances indicating that respondent has acquired the Domain Name primarily for the purpose of selling or otherwise transferring the domain name to the complainant, for a valuable consideration in excess of the out-of-pocket costs related to the domain name, shall be evidence of registration and use in bad faith.
In the present case, it might be argued that Respondent modified the Whois data of the Domain Name (thus "acquiring" it by deleting Complainant's name as Registrant and leaving only its own details in the Whois data) and used it to broadcast presumably untrue statements about Complainant for the purpose of pressuring Complainant into paying the disputed fees (in all likelihood in excess of the costs related to the Domain Name), in exchange of the restitution of the Domain Name. The Administrative Panel believes however that this interpretation of the Policy is a bit stretched, and that the situation at issue differs from the one contemplated by the drafters of the Policy, i.e. a typical cybersquatting situation. Moreover, it is not quite clear whether Respondent is willing to restitute control over the Domain Name to the Complainant if its fees were paid (there is no evidence of such an offer in the file, and the amount of the fees in dispute is unknown).
b) Paragraph 4(b)(iii)
Paragraph 4(b)(iii) of the Rules, on the other hand, provides that registration of a domain name primarily for the purpose of disrupting the business of a competitor shall be evidence of registration and use in bad faith.
In the present case, it is likely that Respondent modified the Whois data for the Domain Name and used its control over the Domain Name for the purpose of disrupting the business of Complainant. First, by preventing web users from accessing Complainant's web site by means of the Domain Name, Respondent obviously caused an important disruption. Complainant explains in this respect that it had to reprint various commercial documents in order to mention <tuyap.com.tr> instead of <tuyap.com>. Moreover, assuming Complainant does not owe any sum to Respondent for its past services (as alleged without contestation by Complainant), the use of the Domain Name in connection to web pages falsely accusing Complainant of not paying its provider, is obviously apt to disrupt Complainant's business by creating doubts about its solvability and commercial honesty.
Arguably, Complainant is not a commercial competitor of Respondent, since they do not offer similar goods or services. Rather, Complainant was a customer of Respondent. The notion of "competitor", as provided in paragraph 4(b)(iii) of the Policy, has been interpreted differently by Administrative Panels. In Mission KwaSizabantu v. Benjamin Rost, WIPO Case No. D2000-0279, the Panel held that the term "competitor" should not be restricted to a commercial or business competitor but should encompass a person who acts in opposition to another. In The Toronto-Dominion Bank v. Boris Karpachev, WIPO Case No. D2000-1571, the Panel also adopted a broad approach, holding that the genre of competition referred to needed not be commercial, and that the respondent's opposition to the practices of a broker, of which he was previously a customer and which he criticized, was sufficient to qualify him as a competitor. In Tribeca Film Center, Inc. v. Lorenzo Brusasco-Mackenzie, WIPO Case No. D2000-1772, the Panel preferred a restrictive view, and held that a respondent can disrupt the business of a "competitor" only if it offers goods or services that can compete or rivals with the goods or services offered by the trademark owner.
The Administrative Panel finds it not necessary to take side in this controversy. Indeed, In view of the fact that paragraph 4(b) of the Policy is not exhaustive, it should be possible to apply its provisions by analogy to situations that differ only slightly from the situations described in this paragraph. The Administrative Panel sees no reason why registration and use for the purpose of disrupting the business of a previous customer should be treated differently from registration and use for the purpose of disrupting the business of a competitor. Even though disruption of the business of a customer is not expressly described in the Policy, it appears materially very similar to the situation concerned by paragraph 4(b)(iii). A finding of bad faith registration and use is therefore justified in the Panel's opinion, even if, arguably, the term "competitor" does not cover a previous customer of the respondent.
Finally, the fact that Respondent did not reply to the Complaint, even though it received the Complaint sent by courier, is an additional element supporting a finding of bad faith.
In view of the above, the Administrative Panel finds that Responded registered and used the Domain Name in bad faith, so that the third condition of paragraph 4(a) of the Policy is satisfied.
7. Other proceedings
In the Complaint, Complainant mentioned that on May 6, 2003, its attorney had introduced "a complaint" against Koznet Internet Hizmetleri to the office of the Prosecutor of Istanbul.
According to paragraph 18(a) of the Rules, in the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding or to proceed to a decision.
In its Panel Order No. 1, the Administrative Panel requested Complainant to provide more information about the initiated proceedings, in order to determine whether it might be appropriate to suspend or terminate the administrative proceeding. In its Reply of August 4, 2003, Complainant clarified that the proceeding at issue was a criminal proceeding. It further explained that the purpose of the criminal complaint was to prevent the use of the Domain Name by Respondent, but did not aim at the transfer of the Domain Name.
In view of the fact that the proceeding initiated on May 6, 2003, in Turkey will not address the question of the ownership of the Domain Name, the Administrative Panel has not found necessary to suspend or terminate the present administrative proceeding, and has decided to proceed with a decision, in view of the fact that the procedures at issue do not have the same object.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <tuyap.com> be transferred to the Complainant.
Dated: August 21, 2003