The Complainant is Horoz Lojistik Ve Kargo Hizmetleri Tic A.S., of Istanbul, Turkey, represented by Gür Law & IP Firm, Turkey.
The Respondent is Private Domain Name Holder/ TTR Bilisim, Hizmetleri San.Tic.Ltd.Sti., of Istanbul, Turkey.
The disputed domain name <horozlojistik.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 11, 2009. On June 12, 2009, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name. On July 23, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 24, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 25, 2009. 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” or “UDRP”), 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 26, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 16, 2009. The Response was filed with the Center on June 29, 2009.
The Center appointed Dilek Ustun as the sole panelist in this matter on July 7, 2009. 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 Complainant Horoz Lojistik ve Kargo Hizmetleri A.S. was founded in 1942 by Mehmet Emin Horoz to operate on land and railway transportation, warehouse keeping and stockpiling.
The Complainant Horoz Lojistik ve Kargo Hizmetleri A.S. has the following trademarks registered by the Turkish Patent Institute.
HOROZ – Registered in the Republic of Turkey in 2000 by the Turkish Patent Institute, Trademark No. 2000 10974.
HOROZ YATİRİM HOLDİNG LOJİSTİK KARGO TAŞIT SERVİS+DEVİCE – Registered in the Republic of Turkey in 2003 by the Turkish Patent Institute, Trademark No. 2003 24983.
The complainant's domain name “horoz.com.tr” has been registered on June 18, 1998, by Middle East Technical University, the country code ‘.tr' domain name administration authority.
The Complainant contends that:
1. The disputed domain name <horozlojistik.com> is identical or confusingly similar to the Complainant's well-known trade/service marks.
2. The Respondent has no rights or legitimate interests in respect of the <horozlojistik.com> domain name. The Complainant argues, inter alia, that the Respondent is not using the domain name in connection with a bona fide offering of goods and services. The Complainant also contends that the domain name in question is not a term by which the Respondent is commonly known, and that the Respondent is not making a legitimate noncommercial or fair use of the domain name.
3. The domain name was registered and is being used in bad faith. The Respondent registered the domain name in September 2003, primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or to a competitor of the complainant for valuable consideration.
The Respondent is providing domain name registrations, web hosting and web design and programming services to its clients all around Turkey. The Respondent argues that the disputed domain name is neither identical nor similar to the complainant's registered trademarks.
The Respondent has rights and legitimate interests because they have registered the domain name in the name of their client “Horoz Nakliyat” according to an agreement. As such it appears it is possible the Respondent is holding the disputed domain name (or did at one point) for the benefit of another. Nonetheless the Respondent states no confusion is occurring from its ownership and use of the disputed domain name.
According to paragraph 15(a) of the Rules: “A panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) [that the] domain name [registered by the Respondent] is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights; and
(ii) [that the Respondent has] no rights or legitimate interests in respect of the domain name; and
(iii) [that the] domain name has been registered and is being used in bad faith.
The Complainant has proven that it owns the trademark/service mark(s) comprising solely the mark HOROZ, HOROZ LOJİSTİK.
The trademark is included in the disputed domain name. The suffix “.com” is incidental to a domain name and cannot serve to distinguish it. Additionally, by the time the Respondent registered the domain name in his own name, the Complainant was already a well-known establishment in Turkiye.
It is generally understood that for purposes of the Policy a right in a trademark can be established by a trademark registration or a showing of unregistered trademark rights. The latter is the case when the mark has been established on the market (See: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and ASSA ABLOY AB v. P D S AB, WIPO Case No. D2000-0442).
Numerous Policy decisions have recognized that the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to a complainant's trademark (See, Yapi Ve Kredi Bankasi A.S. v. Internet Bazaar AS, NAF Claim No. FA98243; Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253).
The Panelist reaches the same conclusion as the panel in Turkcell Iletisim Hizmetleri A.S. v. Celile Gun, WIPO Case No. D2008-0128
“The use of a generic term (i.e. “technology”) or the translated version of the Complainant's mark does not, by itself, remove the element of confusing similarity in the context of this proceeding. Although the word “technology” on its own is a generic word, the use of the Complainant's TURKCELL mark in combination therewith renders the domain name confusingly similar to the Complainant's TURKCELL and TURKCELLTEKNOLOJI marks.”
Based on the fact that the Respondent's domain name fully contains one of the Complainant's trademarks and adds a term that corresponds to another of the Complainant's trademark it is confusingly similar to the Complainant's trademarks, and the Panel is satisfied that the first element of paragraph 4(a) of the Policy has been proven by the Complainant.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the <horozlojistik.com> domain name. The Complainant argues, inter alia, that the Respondent is not using the domain name in connection with a bona fide offering of goods and services. The Complainant also contends that the domain name in question is not a trademark by which the Respondent is commonly known, and that the Respondent is not making a legitimate non-commercial or fair use of the domain name.
Viewing this situation in light of paragraph 4(c) of the Policy, what Respondent has done to date is not a bona fide offering of goods or services. There is little evidence that the Respondent has been commonly known by the domain name, nor has the Respondent demonstrated any trademark or service mark rights in the name to the Panel's satisfaction. Further, the Respondent has made no noncommercial or fair use of the name.
The Respondent has not provided any evidence of the type as specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the disputed domain name.
The Panel therefore concludes that Respondent has no rights or legitimate interests in the domain name <horozlojistik.com> and that the requirement of the UDRP Paragraph 4(a)(ii) is satisfied.
As discussed above, the Complainant has provided ample evidence to indicate that it has rights to the marks, which are widely-known in Turkey. Being located in Turkey, the Respondent must in all likelihood have known that it was securing the registration of a domain name which wholly comprised a widely-known mark in Turkey. This being the case, it is improbable that the Respondent was not aware of the Complainant's rights to the mark comprising the domain name. This establishes knowledge on the Respondent's part.
The Panel, in accordance with previous decisions issued under the Policy, is of the opinion that this knowledge of the Complainants' trademark at the time of the registration of the disputed domain name may be considered as an inference of bad faith (see, Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).
The notice for sale placed by the Respondent in the website to which the domain name resolves is indicative evidence of registration and use in bad faith.
In view of the above, the Panel finds that the Respondent has registered and used the domain name in bad faith, in accordance with paragraph 4(a)(iii) 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 <horozlojistik.com> be transferred to the Complainant.
Dated: July 10, 2009