The Complainant is Turkcell Iletisim Hizmetleri A.S. of Istanbul, Turkey, represented by Istanbul Patent & Trademark Consultancy Ltd., Turkey.
The Respondent is Vural Kavak of Istanbul, Turkey.
The disputed domain name <turkcellmobile.com> is registered with IHS Telekom, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 5, 2010. On January 5, 2010, the Center transmitted by email to IHS Telekom, Inc. a request for registrar verification in connection with the disputed domain name. On January 6, 2010, IHS Telekom, 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” 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 January 28, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was February 17, 2010. An informal response was filed with the Center on February 15, 2010.
The Center appointed Gökhan Gökçe as the sole panelist in this matter on February 26, 2010. 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.
Language of the Proceedings.
The Registrar of the disputed domain names has informed the Center that the language of the relevant registration agreement is Turkish.
On the January 13, 2010 the Centre sent a notification to both Parties stating that according to information provided from the concerned registrar, the language of the registration agreement is Turkish, hence the Complainant should i) provide evidence of an agreement between the Complainant and Respondent in English or, ii) submit the Complaint in Turkish or, iii) submit a request with supporting arguments for English to be the language of the administrative proceedings.
The Complainant replied to the notification the same day requesting the language of the proceedings to remain in English. The Respondent replied on January 18, 2010 requesting that correspondence and his Response be submitted in Turkish.
In reaching its decision regarding language of the proceeding the Panel has considered paragraph 11 of the Rules, submissions and circumstances of this case, including:
- On January 11, and January 18, 2010, the Respondent communicated with the Center in English language; and
- The domain name includes an English word “mobile”;
- the Center sent all the communications in both languages, Turkish and English as such, the Panel contents that the Respondent had fair notice of the dispute.
- Further, based on the informal response, in the Panel's view, the Respondent will not be prejudiced by a Decision being rendered in English.
For all the above, the Panel determines according to Rules, paragraph 11(a), that the language of these proceedings be English.
4. Factual Background
The Complainant is a leading mobile phone (GSM) operator of Turkey and the company was incorporated in 1994 under the laws of Turkey. On April 27, 1998, the Complainant signed a 25 year GSM licence agreement with the Ministry of Transportation of the Republic of Turkey. Since then, the Complainant has been growing and expanding in fields of mobile communication of voice and data.
The Complainant is the first Turkish company to be listed on the New York Stock Exchange, where its shares have been traded since July 11, 2000 along with trading on the Istanbul Stock Exchange and enjoys worldwide recognition.
By the end of September 2006, the company had 30.8 million subscribers, making it not only a leading operator in Turkey but the third biggest operator in Europe.
With its broad coverage and extensive international roaming capability, the Complainant 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, the Complainant is also one of the world's leading operators in international roaming. And with agreements with 278 operators in 114 countries, the Complainant 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, the Complainant introduced services such as “TurkcellEDGE,” “TurkcellBlackBerry,” “TurkcellConnect”, and “TurkcellE-Postacı” (e-postman) to its customers.
Other services offered by the Complainant with its vision of making life more simple include “TurkcellMobilÖdeme” (mobile payment) that permits credit cards to be used with a cell phone in shopping or payments using the Complainant's infrastructure, and “CepteCevap” (answer in the pocket) with which answers may be received to queries submitted by SMS.
The Complainant is the Main Sponsor to the Turkish National Soccer Team and an Official Sponsor to the Turkish National Basketball Team and the Turkish Football League is now called the Turkcell Super League.
The Complainant has several trademark registrations before the Turkish Patent Institute containing the word “Turkcell”.
Furthermore, the Complainant has a trademark registration for the word Turkcell with the Office for Harmonization in the Internal Market and the United States Patent and Trademark Office.
The Complainant is also the owner of the domain name <turkcell.com> and <turkcell.com.tr> which is used to access its website used by millions of customers as evidenced in Annex 13 to the Complaint.
The Respondent registered the disputed domain name <turkcellmobile.com> on July 31, 2009.
In accordance with paragraph 4(b)(i) of the Policy, the Complainant requests that the domain name <turkcellmobile.com> be transferred to the Complainant.
The Complainant submits the grounds for these proceedings are listed in paragraph 4(a) of the Policy.
The Complainant submits Turkcell Iletısım Hızmetlerı A.S., which is well-known as “Turkcell” and that it is also the trade name of the complainant as evidenced in Annex 14 to the Complaint. The Complainant asserts that it does business in Turkey but also internationally and is therefore recognised globally.
The Complainant has registered several trade/service marks containing the word TURKCELL with the Turkish Patent Office (TPO) as evidenced by the Certificates of Registration in Annexes 4 to 9 to the Complaint. The earliest registration date is September 09, 1996.
The complainant trade/service mark TURKCELL was registered as Community Trademark (CTM) before the Office for Harmonization in the Internal Market (OHIM). A copy of the Certificate of Registration is evidenced in Annex 10 to the Complaint.
The Complainant Turkcell has a trade/service mark registered by the United States Patent and Trademark Office (USPTO). A copy of the Certificate of Registration is evidenced in Annex 11 to the Complaint.
The trademark TURKCELL was recognized as “well-known mark” by the Turkish Patent Office as evidenced in Annex 12 to the Complaint.
The Complainant submits that since November 10, 1996, it has been the legal owner of the domain name <turkcell.com.tr> which is still being used as evidenced in Annex 13.
The Complainant submits that the disputed domain name is similar to the Complainant's registered trademark and identical to its company name, the disputed domain name consists solely of the words “Turkcell” and “mobile” and the Complainant or its affiliates use the mark TURKCELL to identify its goods or services in connection with goods and services in GSM based mobile operating activities as evidenced in Complaint Annex 3. Furthermore the Complainant has registered service marks under Class 38 “communication/telecommunication services via portable phones” as evidenced in Complaint Annexes 4 and 5 and therefore the addition of the generic term “mobile” fails to distinguish the disputed domain name from the Complainant's trade/service mark. The Complainant avers the Respondent creates a likelihood of confusion in the minds of the consumers, who would expect the disputed domain name <turkcellmobile.com> to resolve to websites owned by, operated by or affiliated with the Complainant.
The Complainant contends that the disputed domain name is identical to Complainant's trademark as it wholly includes the TURKCELL trademark, which was registered in 1996 well before the establishment of the Respondent's domain name. The Complainant sites several previous WIPO UDRP decisions that substantiate its contentions stated above.
The Complainant contends that the Respondent was never authorized to use and register its trademark, or to seek the registration of any domain name that incorporated the service/trade mark TURKCELL, and that the Respondent is not affiliated with the Complainant.
Furthermore, the Complainant has prior rights in that trade/service mark TURKCELL, which precede Respondent's registration of the domain name and asserts that the Respondent was clearly aware of the Complainant's extensive goodwill and reputation in its service/trade mark at the time of registering the disputed domain name. The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name as there is no trademark registration and the Respondent is not known by that name.
It is submitted that the Complainant is entitled to protect and control use of its trademark by third parties on the Internet and the Respondent in this case would only have a right to the disputed domain name the Complainant had specifically granted that right, which the Complainant did not grant.
The Complainant asserts that it could not register the domain name due to lack of availability caused by the Respondent's registration thereof.
The Complainant notes the disputed domain does not resolve in an active website and submits that the Respondent registered the domain name in bad faith and primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the owner for valuable consideration in excess of the domain name registrants out of pocket costs.
The Complainant contends that the disputed domain name incorporates a famous mark and the Complainant further asserts that the Respondent must have known of the existence of the Complainant's service/trade mark and products/services it offers. Furthermore, in consideration of the addition of the generic term “mobile” suggests the Respondent was aware of the products and services the Complainant offers as it directly relates to the Complainant's business. Therefore creating a strong inference that by registering the disputed domain name, the Respondent intended to create an association with the Complainant's service/trade mark and it is difficult to imagine any other reason, hence the Respondent must have known the trademark TURKCELL.
The Complainant argues that the Respondent has taken active steps to conceal his identity by providing inaccurate or incomplete contact information which is a strong indication of bad faith.
The Respondent filed an informal Response to the allegations in the Complaint and requests the Panel to deny the remedy requested, namely transfer of the disputed domain names to the Complainant.
The Respondent states the disputed domain name has only been inactive for the past 6 months since he registered the domain name.
The Respondent submits that he is not using the disputed domain name with intent for commercial gain or to misleadingly divert consumers to other sites offering or selling products or services.
The Respondent contends that he has not used the Complainant's trade name in any active website, has not offered the disputed domain name for sale to the Complainant or its competitors and has not engaged in any activity that would tarnish Complainant's trademark.
Paragraph 4(a) of the Policy sets forth the following three elements which the Complainant must prove, during the administrative proceedings, to merit a finding that the domain name of the Respondent be transferred to the Complainant:
(a) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(b) the Respondent has no rights or legitimate interests in respect of the domain name; and
(c) the domain name has been registered and is being used in bad faith.
Pursuant to paragraph 15(a) of the Rules, the Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The Complainant has provided sufficient evidence of owning several trade and service mark registrations with the Turkish Patent Institute, as a Community Trademark before the OHIM and the United States Patent and Trademark Office consisting of the words TURKCELL.
Following Oki Data Americas Inc. v. ASD Inc., WIPO Case No. D2001-0903, a domain name that reproduces the trademark in its entirety is confusingly similar to the mark. It has been stated in several decisions by other UDRP administrative panels that incorporating a trademark in its entirety into a domain name can be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark. Use of the trademark in the domain name is likely to create confusion amongst Internet users and create an impression that the disputed domain name resolves in a website which is endorsed by or affiliated in some way with the Complainant, Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.
The Panel finds that the addition of the generic word “mobile” does not distinguish the Respondent's domain name from Complainant's trademark as it is well-established under the Policy that a domain name composed of a trademark coupled with a generic term is still confusingly similar to the trademark, Veuve Clicquot Ponsardin v. Net-Promotion, Inc., WIPO Case No. D2000-0347.
Furthermore the generic term, “mobile” is directly related to Complainant's business and the addition of generic word is especially confusing where the generic words bear an obvious relationship to Complainant's business.
In view of the foregoing, the Panel recognises the Complainant's rights and the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights, and therefore, the Complainant has succeeded on this first element under the Policy.
The Panel finds that the requirements in paragraph 4(a)(i) of the Policy are fulfilled, consequently, the Panel finds for the Complainant on the first element of the Policy.
In accordance with paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Although the Policy states that the complainant must prove each of the elements in paragraph 4(a), it is often observed that it is difficult for a complainant to prove a negative and it has therefore generally been accepted under the Policy that, once a complainant has presented a prima facie case of a respondent's lack of rights or legitimate interests in a domain name, the burden shifts to the respondent. The Policy at paragraph 4(c) provides various ways in which a respondent may demonstrate rights or legitimate interests in the domain name.
The Complainant contends that the Respondent is not using the disputed domain name for legitimate noncommercial or fair use of the domain name. The Panel visited the domain name which did not resolve in any website and gave an error message. The Respondent contends that the disputed domain name has only been inactive for the last 6 months but has failed to provide any evidence of previous use or preparations for intended use. Aside from his statement, there is no supporting evidence and the Panel does not accept that this alone provides evidence to draw the conclusion that the domain name will in fact be used for a bona fide offering of goods or services as the Respondent claims. The Respondent has failed to establish “demonstrable preparations” to use the disputed domain name for a bona fide offering of goods or services, Helen Fielding v. Anthony Corbert aka Anthony Corbett, WIPO Case No. D2000-1000.
The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name. There is nothing in the record to suggest that the Respondent, or any business operated by him, is commonly known by the disputed domain name and that in the absence of evidence there is nothing to suggest that the Respondent has rights or legitimate interest in the disputed domain name.
Paragraph 4(a)(ii) requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the disputed domain name. The Complainant has established a prima facie case that the Respondent lacks a legitimate right or interest in the disputed domain name. The Respondent was unable to demonstrate a legitimate interest or right in the disputed domain name. The Panel therefore concludes that the Respondent has not satisfied paragraph 4(c) of the Policy and concludes that the Respondent has no rights or legitimate interests in the disputed domain name.
The requirements of 4(a)(ii) are fulfilled and consequently the Panel finds in favour of the Complainant on the second element of the Policy.
Finally, the Complainant must show that the domain name has been registered and is being used in bad faith under paragraph 4(a)(iii) of the Policy.
The Complainant's trademark TURKCELL was registered and has been used long before the Respondent's registration of the disputed domain name.
Considering the size of the Complainant's business, the Panel finds it is unlikely that the Respondent was unaware of the Complainant and its established reputation at the time of registering the domain name. Furthermore, the Respondent has added the generic word “mobile” which directly relates to the Complainant's business thus it is most likely that the Respondent was aware of the Complainant's trademark, its reputation and goods and services offered under its trademark, when the Respondent registered the domain name and draws an inference of bad faith, Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226. In this Panel's view, it therefore follows that the Respondent, at the time of registration, must have been aware that any legitimate commercial use of the domain name could likely result in a violation of the Complainant's trademark rights, suggesting that there was never an intention of good faith use, Telstra Corporation Limited v. Nuclear Marshmallows WIPO Case No. D2000-0003.
The Complainant contends that an inactive website is evidence of bad faith use and registration. When the Panel visited the disputed domain name, it resolved in an inactive website and the Respondent has not submitted any evidence or suggestion that he has any intention of using the domain name for any purpose or legitimate activity consistent with good faith use. Paragraph 3.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions states the lack of active use of the domain name does not as such prevent a finding of bad faith. The Panel must examine all the circumstances of the case to determine whether the Respondent is acting in bad faith. As in Ladbroke Group Plc v. Sonnoma International LDC, WIPO Case No. D2002-0131 after examining all circumstances surrounding the registration and use of the domain name, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith. Accordingly the Panel finds in favour of the Complainant on the third element 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 <turkcellmobile.com> be transferred to the Complainant.
Dated: March 24, 2010