WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Hurriyet Gazetecilik Ve Matbaacilik A.S. v. Firat Birden

Case No. D2008-0126

 

1. The Parties

Complainant is Hurriyet Gazetecilik Ve Matbaacilik A.S., of Istanbul, Turkey, represented by Istanbul Patent & Trademark Consultancy Ltd., Turkey.

Respondent is Firat Birden, of Oklahoma City, Oklahoma, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <hurriyet.org> is registered with GoDaddy.com, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 28, 2008. On January 29, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain name at issue. On January 29, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 Respondent of the Complaint, and the proceedings commenced on February 6, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was February 26, 2008. An informal Response was filed with the Center on February 8, 2008.

The Center appointed Nasser A. Khasawneh as the sole panelist in this matter on February 25, 2008. 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.

 

4. Factual Background

Complainant publishes a well-known newspaper in Turkey under the Hürriyet name. The HURRIYET trademark enjoys trade and service mark registrations in several countries. Some of Complainant’s trade and service marks registered with the Turkish Patent Office are listed below, with registration dates.

104880 Hürriyet 16 13/07/1988

170714 H+Hürriyet 16 29/05/1996

173222 H+Hürriyet 35,42 13/06/1996

96 06811* Hürriyet bayrak sekli 16 16/05/1996

96 008629* Hürriyet haber ajansı 38 13/06/1996

2000 14239 hürriyetim 9,35,38,42 12/07/2000

Complainant has the following trade and service mark registrations as Community Trademarks, on the application dates indicated below.

000800896 Hürriyet 16,35,38,41 16/04/1998 (application date)

000364877 Hürriyet (Word) 16,35,38,41 12/08/1996 (application date)

Complainant has the following trade and service marks registered as of the dates indicated with the WIPO International Bureau, United States Patent and Trademark Office.

630519A Hürriyet 16,41 28/12/1994 DE,AT,BX,ES,FR

630519* Hürriyet 16,41 28/12/1994 DE,IT

747147 Hürriyet+Device 16 19/09/200 AT, BX, CH, CN, CZ, DE, DK, EE, IT, JP, LI, LT, LV, MC,

MD, NO, PL, PT, RO, RU

GB, SE, SI, SK, TM, RS

3,010,256 HÜRRIYET 16,35,38,41 01/11/2005 U.S.

Complainant registered the domain name <hurriyet.com.tr> on October 31, 1996, which is currently in active use.

The disputed domain name was registered on December 12, 1999 and currently revolves to a parking page.

 

5. Parties’ Contentions

A. Complainant

Complainant states that Hurriyet is Turkey’s best known media brand and that for more than 50 years, it has published under the HURRIYET mark Turkey’s most widely read daily newspaper. The Hurriyet Group, Complainant adds, is Turkey’s leading publishing house, with 1,900 employees and the largest national print-media market share. Complainant avers that it operates four national newspapers and five online news sites and classified portals and Complainant also owns seven printing facilities.

Complainant seeks transfer of the disputed domain name on the following grounds.

Complainant first summarily contends that the disputed domain name is identical to a trademark or service mark in which Complainant has rights.

Second, Complainant contends that Respondent would only have a right to the domain name <hurriyet.org> if Complainant had specifically granted that right. Complainant avers that it has not licensed or permitted Respondent to use the mark HURRIYET or to apply for or use any domain name incorporating Complainant’s marks, that Respondent has no relationship with Complainant, and that Complainant’s trade and service mark rights precede registration of the disputed domain name. Complainant contends that Respondent does not use the domain name either commercially or non-commercially, has not been commonly known by the domain name, and is seeking to create the impression of a connection with Complainant and its mark.

Third, Complainant contends that Respondent registered the disputed domain name in bad faith “for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of the trademark for valuable consideration in excess of the domain name registrant’s out-of-pocket costs,” even though Complainant also states that “the Respondent has not attempted to sell the domain name to the Complainant and does not actively use it.” In support of these contentions, Complainant alleges:

1. That Respondent must have known of Complainant’s marks and that in the circumstances there are strong indications that by registering the domain name, Respondent was trying to create an association with Complainant and its marks.

2. That Respondent registered the domain names in order to prevent the owner of the mark from reflecting the mark in corresponding domain names.

3. That registration and use of a domain name incorporating a famous mark is necessarily in bad faith where at the time of the registration a respondent knew that he could not make any actual use of the registered domain name without infringing trademark rights (citing Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028 and Telstra Corporation. Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

Finally, Complainant contends that Respondent is using the domain name in bad faith because the disputed domain name resolves only to a parking page with a non-working search engine and advertising links to third party sites unrelated to Complainant. Complainant contends that Respondent has placed no content on its website but instead earns revenue “per-click” from passive holding of the domain name and makes no good faith use of the name. Complainant contends that since “hurriyet” is a Turkish word, and Respondent is knowledgeable of the Turkish language, Respondent therefore knew the implications of registering the domain name. Complainant alleges that Respondent’s true intentions were to sell the disputed domain name to Complainant for a profit and to capitalize upon the good will associated with its widely known marks.

B. Respondent

Respondent submitted a brief letter responding to the Complaint. In his letter, Respondent contends that the word “hurriyet” means “freedom” or “liberty” in Turkish, and that he registered the disputed domain name with the top-level extension “.org” as “recommended” for an individual using a domain name for non-commercial purposes.

Respondent points out that he registered the disputed domain name in 1999, while Complainant’s United States of America registration dates only from 2005.

With respect to bad faith use or registration, Respondent alleges that he has not used the domain name to compete with Complainant or confuse or mislead newspaper readers. Respondent also avers that he never advertised through the website in relation to the Hurriyet newspaper and repeatedly urges that he did not contact Complainant or others about selling the domain name. Respondent points out that the Cellular One and Telstra cases cited by Complainant did not, like the present case, involve domain names based on generic terms such as “hurriyet.”

Finally, Respondent states that he registered his site with an Internet parking service to generate very modest revenues to help defray his costs of maintaining the registration until he could place content on the website for personal use.

 

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel agrees with Complainant that Respondent’s domain name <hurriyet.org> is confusingly similar to Complainant’s trademarks.

Panels disregard the “.com” suffix in evaluating confusing similarity. E.g., VAT Holding AG v. VAT.com, WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315.

The Panel concludes that the disputed domain name is confusingly similar to the registered HURRIYET trademarks of Complainant and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.

B. Rights or Legitimate Interests

The Panel also concludes that Respondent has no rights or legitimate interests in the domain name.

The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes: (i) using the domain name in connection with a bona fide offering of goods and services; (ii) being commonly known by the domain name; or (iii) making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. Policy, paragraphs 4(c)(i) – (iii).

A complainant must show a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name, after which the burden of rebuttal passes to the respondent. E.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. If Complainant establishes a prima facie case that Respondent lacks legitimate rights or interests, the burden of proof shifts to Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the domain name. Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

Based on Complainant’s unopposed representations, the Panel finds that Complainant has given Respondent no authorization to use its trademarks and, that Respondent was not commonly known by the disputed domain name.

Complainant also alleges that Respondent is not making commercial or non-commercial use of the disputed domain name. The Panel has reviewed screens from the site to which the disputed domain name resolves, however, and it is apparent to the Panel that Respondent is using a parking page with active links to third-party websites. As conceded by Respondent, those links generate revenues for Respondent. The Panel finds that this constitutes commercial use and thus (also in light of the above discussion) there exists a prima facie case. Respondent must therefore show that he has rights or legitimate interests in the domain name.

Respondent’s contention appears to be that his use of the “hurriyet” term is legitimate because “hurriyet” means “freedom” or “liberty” in Turkish. Respondent also alleges that he has not used the website to compete with or mislead readers of the newspaper Hurriyet.

Panels have determined that respondents may lack a legitimate interest in a domain name, even if, as in the present case, it is comprised of generic or dictionary words. Among factors that panels examine in such situations are the status and fame of the mark and how the domain name is used. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, “http://www.wipo.int/amc/en/domains/search/overview/#22.”

The Panel finds that Complainant has established that it has a widely known mark. While it is conceivable that a dictionary term such as “hurriyet” might be used legitimately in a domain name, Respondent is not making any use of the term in a domain name here other than to resolve to a parking page. Respondent also fails to describe let alone evidence business plans or any other indication of demonstrable preparations (whatever his intentions may be) to use domain name <hurriyet.org> other than as a parking page. Compare Emmanuel Vincent Seal trading as Complete Sports Betting v. Ron Basset WIPO Case No. D2002-1058 (business plans submitted by respondent insufficiently detailed to constitute demonstrable preparations to use for bona fide purpose).

Instead, Respondent’s domain name is being used to resolve to a website containing a variety of links that change from time to time. When this Panel viewed this web page, the first listed links appeared to promote third-party adult-related services and content.

The Panel finds that Respondent uses its domain name in a way unrelated to the term’s meaning or ordinary associations. The use of the disputed domain name to generate revenues through a parking page is not of itself a bona fide use in connection with the provision of goods or services.

The Panel concludes that Respondent fails to demonstrate that he has rights or is making legitimate or fair use of the term in the disputed domain name under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel finds that the third element of paragraph 4(a) of the Policy, bad faith registration and bad faith use, is also established.

The Policy, paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names:

(i) circumstances indicating that you have registered or you have acquired the domain name 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.

Complainant generally alleges that Respondent knew of its well-known marks and sought to create confusion and capitalize upon the good will associated with its marks.

While Complainant alleges that Respondent intended to sell the disputed domain name to Complainant for profit, Complainant curiously also states in its Complaint that Respondent has made no attempt to do so, in the nine years he has held the registration. Complainant also provides an annex including a screen print of Respondent’s website, showing that at one time, Respondent posted a brief statement in Turkish indicating that the domain name is for sale. The mere posting of such a notice does not, without more, show that Respondent sought to sell the domain name for profit specifically to Complainant, as Complainant alleges.

The Panel finds there are other indications in the record, though, that Respondent has registered and used the disputed domain name in bad faith.

Panels may draw inferences about bad faith registration or use in light of the circumstances. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Respondent contends that Telstra is inapposite because the complainant in Telstra had established invented names as trademarks, whereas Complainant’s HURRIYET marks derive from a dictionary term. However, Telstra stands, among other things, for the proposition that panels must look at a totality of circumstances when examining bad faith registration and use under the Policy. As for Cellular One Group, the panel in that proceeding considered the complainant’s trademarks also to be invented names, and concluded that the respondent could not have made a good faith use of the domain name. Nonetheless in this case, as in Telstra, review of all the circumstances leads this Panel to conclude that Respondent registered and used the disputed domain name in bad faith. The four criteria established by the Policy, paragraph 4(b) are nonexclusive. In addition to these criteria, other factors can support a finding of bad faith. 402 Shoes, Inc. dba Trashy Lingerie v. Jack Weinstock and Whispers Lingerie, WIPO Case No. D2000-1223.

One such factor is the nature of the use that Respondent has made of the domain name.

Complainant alleges that Respondent has not developed any active web site at “www.hurriyet.org” other than as a parking page with revenue-generating links for profit. Respondent responds that he is a university student and has not had the time to develop his website. The Panel finds that, particularly since the domain name has been registered for nine years, Respondent’s explanation is insufficient. Failure to use a domain name in a bona fide manner has been found in certain circumstances to constitute evidence of bad faith. 402 Shoes, Inc. dba Trashy Lingerie v. Jack Weinstock and Whispers Lingerie, supra; see Telstra Corp., supra; Leland Stanford Junior Univ. v. Zedlar Transcription & Translation, FA 0006000094970 (NAF July 11, 2000); Revlon Consumer Products. Corporation. v. Yoram Yosef aka Joe Goldman, WIPO Case No. D2000-0468 (WIPO July 27, 2000) (citing cases where panel found inaction constitutes bad faith).

The Panel is sympathetic to the idea that the Turkish dictionary terms for “liberty” or “freedom” may potentially be able to be used in good faith in connection with a domain name. However, for this to occur, there would need to be certain active use, or in the context of an offering of goods or services, at least demonstrable preparations to do so. A general, unsupported intent is of itself insufficient.

Respondent in this case has not attempted to describe his intentions or what he in good faith would have placed on his website. The Panel infers, therefore, that Respondent registered the disputed domain name intending to trade on the fame of Complainant’s trademark.

There can be little doubt in the Panel’s view that Respondent was aware of Complainant’s popular newspaper and trademarks, which were registered and used widely for decades before Respondent registered the domain name. The Panel finds that Respondent registered and is using a domain name which is confusingly similar to Complainant’s mark, for the purpose of attracting Internet users for commercial gain.

The Panel therefore concludes that the domain name was registered and used in bad faith pursuant to the Policy, paragraph 4(a)(iii).

 

7. Decision

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 <hurriyet.org> be transferred to Complainant.


Nasser A. Khasawneh
Sole Panelist

Dated: March 10, 2008