WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kurtsan Ilaçlari A.S. v. Ismail Ahmet Tokcan/Nedim Ayaz
Case No. D2006-0168
1. The Parties
The Complainant is Kurtsan Ilaçlari A.S., Istanbul, Turkey, represented by an internal representative.
The Respondent is Ismail Ahmet Tokcan, Istanbul, Turkey/Nedim Ayaz, Hamburg, Germany.
2. The Domain Name and Registrar
The disputed domain name <otaci.com> is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 5, 2006. On February 8, 2006, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On February 9, 2006, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that 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 February 17, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was March 9, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 10, 2006.
The Center appointed Dilek Ustun as the Sole Panelist in this matter on March 14, 2006. 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.
The Respondent submitted an e-mail to the Center on March 16, 2006. Considering that this communication was filed seven days after the due date without any explanation for the delay, the Panel has decided not to consider it. The Panel notes that, even if it had decided to consider the Respondent’s communication, it would not have impacted on the Panel’s final decision.
4. Factual Background
The Complainant is a Turkish company which works generally in the field of pharmaceuticals and dietetic foods and has the following trademarks registered with the Turkish Patent Institute:
- OTACI registered in 1989;
- OTACI ARNICA registered in 1997;
- OTACI ALOE registered in 1997;
- OTACI IVY registered in 1996;
- OTACI ICEDROP registered in 1997;
- OTACI MEYANBALI registered in 1997;
- OTACI DOGACI and figure registered in 2002;
- OTACI DOGACI registered in 2001;
- OTACI DEFNE and figure registered in 1996;
- OTACI GUNLUK AGACI and figure registered in 1996;
- OTACI DIET LIFE PLUS registered in 1996;
- OTACI DIET LIFE BRUNCH registered in 1998;
- OTACI DOMATESLI DILIM registered in 2001;
- OTACI LIMON OZLU DROPS registered in 1997;
- OTACI SEFTALI OZLU DROPS registered in 1997;
- OTACI OKA DIET registered in 1997;
- OTACI SAGLIKI YASAM KLUBU registered in 2001;
- OTACI ZAYIFLAMA MERKEZI registered in 2001;
- OTACI LUNCH registered in 2002;
- OTACI PAPATYA BEBE SAMPUANI registered in 1996;
- OTACI VITAMINLI DROPS registered in 1999;
- OTACI VISNE OZLU DROPS registered in 1997;
- OTACI CILEK OZLU DROPS registered in 1997;
- OTACI LILY registered in 1996;
- OTACI SALVIA registered in 1997;
- OTACI CHOKO BRUNCH registered in 2002;
- OTACI BRUNCH registered in 2002; and
- OTACI LIFE PLUS and figure registered in 2004.
The Complainant has filed trade and service mark applications for the following trademarks before the Turkish Patent Institute:
- OTACI ANADOLU on June 17, 2005;
- OTACI AURA on May 27, 2005;
- OTACI KITIR on August 18, 2005;
- OTACI TERMAL on May 27, 2005;
- OTACI SAYDAM on May 17, 2005;
- OTACI OLIVE on August 11, 2005;
- OTACI ECHINACEA on August 19, 2005;
- OTACI figure on August 31, 2005;
- OTACI CAMOMILE on September 8, 2005; and
- OTACI.COM on December 8, 2005.
OTACI is also registered in different countries around the world: in the European Union since 1998 in classes 3, 5, 10, 29, 30, 32; in Iraq since 2001 in classes 3, 5, 10, 29, 30, 41, 42; in Saudi Arabia since 2001 in classes 3, 29, 30; in Uzbekistan since 1997 in classes 3, 5, 29, 30; in France since 2001 in class 3; in the United States of America since 1997 in classes 3, 5, 30; in Azerbaijan since 1998 in classes 3, 5, 10, 30; in the United Kingdom of Great Britain and Northern Ireland since 1992 in class 3 and since 1993 in class 5; in Germany since 1994 in classes 29, 30, 42; in Ukraine since 1996 in classes 3, 5, 30; in Russia since 1996 in classes 3, 5, 29, 30; as OTACI DIET LIFE BRUNCH, as a Community Trademark, since 1999 in classes 29, 30, 32; as OTACI DIET LIFE PLUS, as a Community Trademark, since 1999 in classes 29, 30, 32; and as OTACI ICEDROP in Germany since 1995 in classes 5, 30.
The Complainant was the original registrant of the domain name <otaci.com>. Through administrative error, the domain name expired and was registered by Nedim Ayaz. Following some negotiations between Nedim Ayaz and the Complainant, the disputed domain name <otaci.com> was transferred to Ismail Ahmet Tokcan on October 27, 2005.
5. Parties’ Contentions
The Complainant has named both Nedim Ayaz, the previous registrant of the domain name, and Ismail Ahmet Tokcan, the current registrant, as the Respondent in this proceeding, asserting that they are in fact the same individual as there is no such entity as Ismail Ahmet Tokcan and that Nedim Ayaz feigned the transfer to avoid any potential proceedings.
The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights
The Complainant asserts that the Respondent’s domain name <otaci.com> is identical to its registered trade and service marks and their trade and service marks which are in the phase of application, listed above, and which they have the right to use. It has used the trademark OTACI in Turkey, the European Union and other countries for many years and its trademarks have acquired distinctiveness through use.
The Respondent has no rights or legitimate interests in respect of the domain name
The Complainant states that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant also states that the Respondent is neither a licensee of the Complainant, nor has it obtained permission to use the Complainant’s trademarks. The Complainant adds that the Respondent has never been known by this name.
The domain name was registered and is being used in bad faith
The Complainant states that the domain name <otaci.com> was registered by the Respondent primarily for the purpose of selling it.
The Complainant’s trademark has long been established in the market and is widely known. The Respondent has also registered the <otaci.com> domain name corresponding to a well known trademark.
The Respondent submitted an e-mail to the Center on March 16, 2006, seven days after the Response due date. As stated above, the Panel has decided not to consider this communication.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The domain name is 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 interest in respect of the domain name; and
(iii) The domain name has been registered in bad faith and is being used in bad faith.
In relation to the identity of the Respondent, the Panel accepts the Complainant’s argument that Nedim Ayaz and Ismail Ahmet Tokcan are the same entity and are referred to in this decision collectively as the Respondent.
B. Identical or Confusingly Similar
The Complainant has proven that it owns the trademark OTACI and a number of trademarks including the word OTACI.
Since the domain name comprises the Complainant’s trademark and the generic “.com” suffix, the Panel finds that the domain name is identical to a trademark/service mark in which the Complainant has rights.
The Panel therefore concludes that the domain name <otaci.com> is identical to the Complainant’s trademark/service mark and, as a consequence, the action brought by the Complainant meets the requirement of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
Viewing this situation in light of paragraph 4(c) of the Policy, what the Respondent has done to date is not considered a bona fide offering of goods or services. There is no evidence whatsoever that the Respondent has been commonly known by the domain name, nor has the Respondent demonstrated any trademark or service mark rights in the word OTACI or OTACI.COM.
The Complainant has shown that the Respondent has neither a license nor any other permission to use the domain name in dispute.
As the Complainant has established a prima facie case that the Respondent has no rights or legitimate interest in the domain name, a case which the Respondent has not rebutted, the Panel concludes that the Respondent has no rights or legitimate interests in the domain name <otaci.com> and that the requirement of paragraph 4(a)(ii) of the Policy is satisfied.
D. Registered and Used in Bad Faith
The Complainant provided evidence of facts which are clearly relevant to the issue of whether the Respondent registered and is using the domain name in bad faith.
When the Respondent registered the domain name, he most probably knew that the trademark OTACI was used by the Complainant. The Respondent is a Turkish citizen, OTACI is a well-known mark in Turkey and outside of Turkey, and the Complainant’s products sold under this mark are widely publicized in the media and in the market. This leads the Panel to conclude that the Respondent knew about the products of the Complainant and its fame on the Turkish market through use of its mark OTACI.
The Complainant asserts, and provides supporting evidence, that the Respondent’s objective was to sell the domain name to the Complainant for valuable consideration well in excess of the Respondent’s out-of-pocket expenses or in order to prevent the Complainant from reflecting its trademark OTACI in a corresponding domain name.
Further, the Respondent willingly indicated false or incomplete contact information in the Registrar’s database. The Panel agrees that the Respondent provided false contact information mainly for the purpose of remaining unreachable by all means other than by e-mail. While not an express ground of bad faith under paragraph 4(b), false contact information is widely recognized as an indication of bad faith in domain name registration. The Panel has confirmed the conclusion of other WIPO UDRP Panels: Grupo Televisa, S.A., Televisa, S.A. de C.V., Estrategia Televisa, S.A. de C.V., Videoserpel, Ltd. v. Party Night Inc., a/k/a Peter Carrington, WIPO Case No. D2003-0796 (December 2, 2003); Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775 (October 2, 2002).
All the circumstances, taken together, need to be assessed in determining the question of bad faith. In this case, the following facts are considered relevant:
- that the Complainant’s marks are widely-known marks in multiple jurisdictions, including in Turkey and other countries;
- that the Respondent has no legitimate claim, right or interest to the domain name;
- that there is no evidence of actual or intended use in good faith;
- that the Respondent offered to sell the domain name to the Complainant for valuable consideration in excess of the Respondent’s out-of-pockets costs related to the domain name;
- that the Respondent provided false contact information mainly for the purpose of remaining unreachable by all ways other than by (probably a web-based) e-mail.
For the reasons outlined above, the Panel finds that the domain name <otaci.com> has been registered and used in bad faith by the Respondent within the meaning of paragraphs 4(a)(iii) and 4(b)(i) of the Policy.
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 <otaci.com> be transferred to the Complainant.
Dated: March 28, 2006