WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Turkcell Iletisim Hizmetleri A.S. v. Cennet Iletisim Dis.Tic.Ltd.Sti

Case No. D2008-0756

 

1. The Parties

The Complainant is Turkcell Iletisim Hizmetleri A.S., Istanbul, Turkey, represented by Istanbul Patent & Trademark Consultancy Ltd., Turkey.

The Respondent is Cennet Iletisim Dis.Tic.Ltd.Sti, Istanbul, Turkey.

 

2. The Domain Name and Registrar

The disputed domain name <turkcellparcakontor.com> is registered with DSTR Acquisition VII, LLC d/b/a Dotregistrar.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 14, 2008. On May 15, 2008, the Center transmitted by email to DSTR Acquisition VII, LLC d/b/a Dotregistrar.com a request for registrar verification in connection with the domain name at issue. On May 15, 2008, DSTR Acquisition VII, LLC d/b/a Dotregistrar.com 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 the Respondent of the Complaint, and the proceedings commenced on June 5, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was June 25,2008. The Response was filed with the Center on June 24, 2008.

The Center appointed Hariram Jayaram as the sole panelist in this matter on July 8, 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

The Complainant is a Turkish corporation and a Turkish GSM based mobile operator company. TURKCELL is its trade/service mark which is used in connection with telecommunication services. It has also registered domain names incorporating the word ‘turkcell’ e.g. <turkcell.com> and <turkcell.com.tr>.

The Respondent is the registrant of the disputed domain name <turkcellparcakontor.com>, which was first created on July 26, 2006.

 

5. Parties’ Contentions

A. Complainant

This Complaint is based on the following grounds:

GSM-based mobile communications began in Turkey with the activation of Turkcell in February 1994. Since signing a 25-year GSM license agreement with the Ministry of Transportation, Republic of Turkey on April 27, 1998, Turkcell has been growing by increasing the diversity and quality of its services in the mobile communication of voice and data and consequently the number of its subscribers. As of September 30, 2006, Turkcell has invested 6.1 billion US dollars, excluding license fees in Turkey since the day it was founded. With 30.8 million subscribers as of September 30, 2006, Turkcell not only stands as Turkey’s leading operator but also enjoys the proud place of being the third biggest GSM operator in Europe. The trading of Turkcell shares commenced concurrently on the Istanbul Stock Exchange and the New York Stock exchange on July 11, 2000, giving it the title of the first Turkish company quoted on the NYSE. The ambition to operate regionally led Turkcell to invest abroad as well. Turkcell’s subsidiaries owned via Fintur in Azerbeijan, Kazakhstan, Georgia, and Moldova reached to 6.9 million subscribers and its direct subsidiary in Northern Cyprus to almost 200,000 subscribers as of September 30, 2006. The Astelit company in Ukraine, in which Turkcell is the majority shareholder, began offering GSM services in February 2005 and has 4.7 million subscribers as of September 30, 2006. As the leading operator in Turkey and the region, Turkcell joined the Board of Directors of the GSM Association in the beginning of 2003. The world’s GSM giants such as Vodafone, Orange, NTT DoCoMo and AT&T Wireless are some of the other operators on the 21-seat board of directors of the GSMA that represents the world’s mobile communications market with nearly 690 members from 214 territories and countries and their overall subscribers are more than 2 billion. Turkcell’s affiliation with the GSMA, which directs and coordinates the international GSM sector and brings operators together with cell phone manufacturers, application developers and content/service providers on a common platform, allows it the opportunity to keep track of global developments very closely and to play an active role in the formulation of new global strategies. With its broad coverage and extensive international roaming capability, Turkcell offers its subscribers access to mobile communication services throughout Turkey and in the four corners of the world. Having concluded agreements with 541 operators in 193 countries as of March 23, 2007, Turkcell is also one of the world’s leading operators in international roaming. With agreements with 278 operators in 114 countries, Turkcell stands at the world’s summit in GPRS roaming. Keeping pace with the changes in the field of technology and the expansion of technologies allowing fast data transfer, Turkcell introduced services such as “TurkcellEDGE,” “TurkcellBlackBerry,” “TurkcellConnect” and “TurkcellE-Postacı” (e-postman) to its customers. Other services Turkcell offers with its vision of making life more simple include “TurkcellMobilÍdeme” (mobile payment) that permits credit cards to be used with a cell phone in shopping or payments using Turkcell’s infrastructure and “CepteCevap” (answer in the pocket) with which answers may be received to queries submitted by SMS. Turkcell made available to its subscribers the mobile Internet “Turkcell-im” by gathering its entire range of value-added products and services at a single point of communication and access. Turkcell’s subscribers have been enjoying since August 2006 the convenience of “Turkcell-im” that enables them to easily access through a single point a great many value-added services from entertainment to news and sports and from music to chat and messaging. Pursuing the goal of hiking up the productivity of corporate customers by means of mobile communication solutions, Turkcell also offers them innovative products and services using the new design possibilities afforded by its GSM infrastructure. Spearheading the utilization of mobile communication technologies in applications in the public domain with its pioneering role in m-government and m-municipality projects, Turkcell continues its efforts to come up with new projects intended for organizations in this category. Launched on April 1, 2005 as “Turkcell’s youth club” in consideration of the life styles and requirements of young people, “gnštrkcll” brings together subscribers with similar life styles and demands while offering GSM and non-GSM benefits. With 11 million members, “gnštrkcll” is not merely a service, a limited-duration campaign, or a discount; it’s a club that provides possibilities to young men and women in every area that counts in their lives. While providing communication service at suitable rates tailored to the needs of young people, “gnštrkcll” also gives them a chance to make their dreams come true, offers them privileges in their non-communication spending, entertains them with special events and informs them when necessary. A number of international appraisals and awards attest to the success hitherto achieved by Turkcell that generates employment opportunities for 20,000 people in its own right and through its ecosystem. In 2006, its fourth successive year, Turkcell was placed 43rd in the “INFO Tech 100,” a rated listing of companies in the fields of telecommunications and information technologies on the basis of financial data originating from Standard & Poor’s. Turkcell was selected together with 20 other telecommunication companies from among as many as 10,000 firms. In 2002, Turkcell won the first prize in the “Best New Service” category in the World Communication Awards with “GPRSL and.” Constantly investing in people and technology, Turkcell was deemed worthy of the ISO 9001 Quality Management System Certificate in 1999 thanks to its trained and specialized staff, its quality of service and its approach to quality management. Turkey’s first operator with an ISO 9001: 2000 certificate, Turkcell never slackens its efforts at improvement to keep abreast of developments. The “Kardelenler” project brought Turkcell several awards in international platforms; namely, the IPR Excellence Award, the “Crystal Obelisk” of the Foundation of Women Executives in Public Relations (WEPR) and the PR News CSR Awards. Turkcell is the Main Sponsor to the Turkish National Soccer Team and an Official Sponsor to the Turkish National Basketball Team. With Turkcell having assumed the titular sponsorship of the Turkey Super League for a five-season straight starting with the 2005-2006 season, Turkish Soccer League is now called the Turkcell Super League. Believing in the importance of support to ensure the continuity of the achievements of Turkish sportsmen/sportswomen in the recent years, Turkcell keeps up its support to Turkish soccer at a growing rate by sponsoring 12 teams on the Turkey Turkcell Super League. The “Free Sports Schools” project conducted in cooperation with the Women’s Commission of the Olympics Committee that has so far provided approximately 20,000 youths with the opportunity to engage in sports activities under the guidance of coaches is another project Turkcell supports with its understanding of social responsibility. The Complainant’s main websites are “www.turkcell.com” and “www.turkcell.com.tr”.

The Complainant Turkcell Iletisim Hizmetleri A.S., which is well-known shortly as “Turkcell” having been founded in 1994, does business not only in Turkey, but also internationally. The Complainant owns the following trade/service mark registrations:

Turkish registration no. 173130 for the mark TURKCELL Iletisim Hizmetleri A.S. for the goods in Turkish Class 38;

Turkish registration no. 174691 for the mark TURKCELL and device for the goods in Turkish Class 38;

Turkish registration no. 200631 for a device mark for the goods in Turkish Class 38;

Turkish registration no. 2001 06688 for the mark TURKCELL and device for the goods in Turkish Class 9, 35, 38;

Turkish registration no. 2001 06687 for the mark TURKCELL and device for the goods in Turkish Class 9, 35, 38;

Turkish registration no. 2001 06686 for the mark TURKCELL and device for the goods in Turkish Class 9, 35, 38;

Community Trademark registration no. 002525194 for the mark TURKCELL Iletisim Hizmetleri A.S. for the goods in Nice Classification Class 38;

Service mark registered by the United States Patent and Trademark Office (USPTO) for the mark TURKCELL and device for the goods in International Class 38 bearing the registration no. 2,806,970.

The Complainant submits that since November 10, 1996, TURKCELL is the legal owner of the domain name <turkcell.com.tr> and is still using this domain name legally. TURKCELL is also the trade name of the Complainant. The Complainant has used the mark TURKCELL in connection with a wide variety of goods and services. As a consequence, the public has come to perceive goods and services that are offered under a TURKCELL mark or a variation of the same as emanating from or being endorsed by or affiliated with the Complainant. The addition of the descriptive terms “piece” and “units”, added after the mark TURKCELL would not make a difference. The average consumer would expect the Complainant or its affiliates to use these descriptive terms in connection with the mark TURKCELL to identify its goods or services, since the Complainant is primarily using its TURKCELL mark in connection with goods and services in GSM based mobile operator activities. The disputed domain name <turkcellparcakontor > is a combination of three separate words, namely Turkcell, Parca and Kontor. The word “Turkcell” is the Complainant’s main trademark and also its company name. All the Complainants’ trading operations, advertisements and promotions are conducted under the mark “Turkcell” and it has used this mark continuously since 1994. The second word in the domain name is “Parca”, which is the Turkish equivalent of the word “Piece”. The third word in the domain name is “Kontor” which is the Turkish equivalent of the word “Units”. The disputed domain name incorporates the mark TURKCELL which constitutes the most significant meaningful portion. The disputed domain name consist of the additional descriptive terms “parca=piece” and “kontor=units”, added after the mark TURKCELL. In particular the terms “piece” and “units” are clearly generic in the industry in which the Complainant is active. Given the well-known nature of the Complainant’s TURKCELL mark, the addition of descriptive terms to the Complainant’s mark TURKCELL does not only fail to distinguish the disputed domain name from the mark but also reinforces the association of the disputed domain name with the Complainant’s mark. In that sense, the Respondent creates a likelihood of confusion in the minds of the consumer who expects the domain name <turkcellparcakontor.com> to resolve to websites owned by, operated by or affiliated with the Complainant. Using the English equivalent of the words “parka=piece” and “units=kontor” with the Complainant’s main trade/service mark TURKCELL does not eliminate the visual and conceptual identity with the Complainant’s TURKCELL trade/service mark. Based on the overall visual and conceptual impression and expected Internet user association, the disputed domain name is confusingly similar to the Complainant’s TURKCELL mark. The disputed domain name <turkcellparcakontor.com> is identical to the Complainant’s TURKCELL mark because the domain name wholly incorporates TURKCELL and also is confusingly similar to its TURKCELL mark because TURKCELL is so famous that buyers would be likely to think that any commercial site connected with the domain name <turkcellparcakontor.com>, particularly a site selling communication related consumer products or services or any domain name incorporating the TURKCELL name (or a close approximation thereof) originates with the Complainant.

The Complainant contends that since the TURKCELL mark is famous and the Respondent has no rights in it, the only reason why the Respondent could have wanted to register and use the disputed domain name fully incorporating the TURKCELL mark was that it knew of this mark and wanted to use it in the disputed domain name in order to confuse Internet users and divert them to another website for its own benefit and profit or sell back to Turkcell and not for any legitimate noncommercial or fair use purpose. The Complainant has not licensed or other wise permitted the Respondent to use the mark TURKCELL or to apply for, or use any domain name incorporating that trade/service mark. The Respondent has no relationship with or permission from the Complainant for use of its trade/service mark. The Complainant has prior rights in that trade/service mark, which precede the Respondent’s registration of the domain name. The Respondent is clearly aware of the Complainant’s extensive goodwill and reputation in its trade/service mark TURKCELL. The Respondent in this case would only have a right to the domain name <turkcellparcakontor.com> if the Complainant had specifically granted that right. The Complainant has the right to exercise control on how its trade/service mark is used by third parties in the Internet. The Respondent has acquired no trade/service mark rights and there is no common knowledge (as an individual, business, or other organization) that it is known by the disputed domain name. The disputed domain name is not a mark by which the Respondent is commonly known. The Respondent is not an institution and has never been licensed or granted permission by the Complainant to use its mark. The Internet is an alternative public medium as are television, newspapers and the radio. It is inconceivable that the Respondent, without license or permission, would be able to use the famous trade/service mark of a well-known GSM operator like TURKCELL for a GSM operator public commentary production on television, in the newspapers, or on the radio. This would infringe the famous GSM operator’s trade/service mark. This same reasoning is valid for internet domain names in general and for the disputed domain name <turkcellparcakontor.com> in this case in particular. The Complainant is the biggest wireless telecommunication services provider in Turkey. It has advertisements all over Turkey, from subways to advertisement spaces on the side of the roads, streets and buildings. Its thousands of commercials appear on almost all TVs and radios everyday. Since the TURKCELL mark is famous and the Respondent is apparently Turkish and located in Turkey, it is not likely that it has not known one of the most recognized and advertised TURKCELL mark in Turkey. The reasons why the Respondent could have wanted to register the domain name fully incorporating the TURKCELL mark were either it wanted to use it in the disputed domain name in order to confuse Internet users and divert them to another website for its own benefit and profit or sell back to TURKCELL, or both. Because the Respondent had registered the disputed domain name, the Complainant could not register the domain name in its own name. The Respondent was fully aware that the Complainant had established rights in the TURKCELL mark at the time it registered the disputed domain name.

The Complainant further submits that the content of the website “www.turkcellparcakontor.com” covers online services for selling GSM units (kontor) as pieces (parca). The Respondent sells too units of other Turkish GSM companies, namely Avea and Vodafone, both of whom are the Complainant’s business competitors. By using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site. The Respondent has unfairly tried to take advantage of the undisputed fame of the trade/service mark TURKCELL associated directly with the Complainant. The Respondent could have chosen domain names adequately reflecting both the object and independent nature of its site, as evidenced today in thousands of domain names. The Respondent is Turkish and apparently knows TURKCELL very well. When the Respondent registered the disputed domain name, it knew that TURKCELL was a famous trademark of the Complainant. The Respondent’s certain constructive and actual knowledge of the Complainant’s trade/service mark rights prior to registering the disputed domain name is already strong evidence of registration of the disputed domain name in bad faith. The Complainant argues that registration and use of a domain name incorporating a famous mark is necessarily in bad faith where a Respondent knew at the time of the registration that he could not make any actual use of the registered domain name without infringing on the trademark owner’s rights. The Complainant also affirms that by registering “turkcell” as a domain name, the Respondent has clearly planned to take advantage of the fame of TURKCELL before the Turkish population. In accordance with the previous decisions issued under the Policy, the Complainant is of the opinion that actual knowledge of the Complainant’s trademark at the time of the registration of the disputed domain name is to be considered as inference of bad faith.

B. Respondent

The Respondent submits that it started operating in the sector with the sale of pre-paid minute packs of Turkcell and Telsim in 2006. In 2007 it broke a new ground with pre-paid minute packs of Avea. Having carried on its operations since July 2006, the Respondent has made renewal acts three times for continuing these operations. It did not only undertake the sale of Turkcell pre-paid minute packs but also took responsibility with the sale of Telsim and Avea pre-paid minutes. Current actions are about getting dealership of these brands. Owing to this case, the broadcast of its company on Internet has been abolished. The action of the Respondent is justifiable.

The field name used by the Respondent is “www.pkmerkezi.com” and contains information about providing service concerning Avea, Turkcell and Vodafone. It cannot be confused with a well-known brand like Turkcell. The Complainant uses the field name “www.turkcell.com.tr” and mentions about its services in its realm. The Respondent which uses the field name gains legal and justified interest in this service. The sale of pre-paid minute packs is a service which came into being out of necessity. The Complainant is preparing for providing this service. This service is being provided at the address “www.turkcellparcakontor.net” of the Complainant. The registration of the Respondent is not malicious. None of the terms described in paragraph 4(b) of the Policy happened. The Respondent has not prevented the Complainant from using the brand. It has stopped this service for the time being. There is no possibility that it will bring damage to the Complainant or commercial rivals. The Respondent is the first corporation to provide this service and encouraged the Complainant to step into this service by breaking a new ground in the sector. No damage but benefit has been brought.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements to obtain an order for the domain name to be cancelled or transferred to it:

(i) the domain name registered by the Respondent 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 interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The disputed domain name is <turkcellparcakontor.com> and the Complainant’s trade/service mark is TURKCELL. The disputed domain name incorporates the TURKCELL mark in its entirety. It also has the Turkish words “parca” and “kontor meaning “piece” and “units” respectively. These words are descriptive and generic to the industry to which the Complainant belongs. In Turkcell Iletisim Hizmetleri A.S v. GWT, WIPO Case No. D2007-0614, the panel observed that:

“…the full incorporation of the trade mark in the domain name is sufficient to make a finding of confusion between the trade mark and the domain name.”

This Panel agrees with that decision and finds that the disputed domain name is confusingly similar to the Complainant’s trade/service mark. The Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel agrees with the Complainant that the Respondent is not known by the disputed domain name. It also notes that there is no evidence to suggest that the Complainant has licensed or otherwise permitted the Respondent to use the TURKCELL mark in its domain name. As the Complainant’s trade/service mark is widely known, the Respondent must be deemed to be fully aware of its existence at the time of registration of the disputed domain name. It is plausible that the Respondent registered the disputed domain name to confuse Internet users and divert them to its website. In its response, the Respondent makes reference to the use of its domain name <pkmerkezi.com>. This particular domain name is of no relevance. The subject matter of the dispute is the continued existence of the disputed domain name <turkcellparcakontor.com> in the register. The Respondent has not rebutted the Complainant’s allegations.

The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

There is bad faith on the part of the Respondent because the website with the disputed domain name offers online services for the sale of the GSM units of the Complainant as well as its competitors. The Complainant with an address in Turkey has registrations of its trade/service mark inter alia in that country and has promoted the use of the mark extensively. The Respondent has also its address in Turkey and most likely knew of the trade/service mark rights of the Complainant before the registration of the disputed domain name. As held in Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429, the panel finds:

“…Respondent’s … constructive and actual knowledge of Complainant’s trademark rights prior to registering the disputed domain name to be strong evidence of registration and use of the domain in bad faith…”

The Panel holds that Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

 

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 <turkcellparcakontor.com> be transferred to the Complainant.


Hariram Jayaram
Sole Panelist

Dated: July 22, 2008