Complainant is D-Market Elektronik Hizmetler Ve Ticaret Anonim Şirketi of Istanbul, Turkey, represented by Dericioğlu & Yaşar Law Office, Turkey.
Respondent is Above.com Domain Privacy/Transure Enterprise Ltd, Host Master of Beaumaris, Victoria, Australia, respectively Tortola, Virgin Islands, Overseas Territory of United Kingdom of Great Britain and Northern Ireland.
The disputed domain name <hepsiburadamarket.com> is registered with Above.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 19, 2010. On March 19, 2010, the Center transmitted by email to Above.com, Inc. a request for registrar verification in connection with the disputed domain name. On March 22, 2010, Above.com, Inc. 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 Complainant on March 24, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an Amended Complaint on March 29, 2010. The Center verified that the Amended 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 Respondent of the Complaint, and the proceedings commenced on March 31, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was April 20, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on April 21, 2010.
The Center appointed Nasser A. Khasawneh as sole panelist in this matter on April 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.
Complainant owns Turkish Trademark Registration No. 2000/20142 for the service mark logo HEPSIBURADA.COM in classes 35, 38 and 42, and has developed a substantial presence as an online shopping site for a variety of goods over the past ten years under the mark HEPSIBURADA.COM.
The disputed domain name was registered September 19, 2009 and presently resolves to a webpage that displays sponsored links in English and Turkish, primarily advertising third-party websites in the financial exchange/market sector.
Complainant avers that for several years it has operated an extremely successful online shopping website which carries a wide variety of products, associated with the term “hepsiburada”. Complainant avers that its website has two million registered members and a monthly average of 5.5 million individual users. Complainant claims that its “hepsiburada” business is a leader in its field and is well-known in Turkey.
Complainant details recent awards for its leadership, quality and popularity in the online shopping sector. Complainant avers that it registered the domain names <hepsiburada.com> and <hepsiburada.com.tr> in 2000 and 2003, respectively, for active use since that time in association with the <hepsiburada.com> online service.
Among its legal contentions, Complainant alleges that Respondent adopted the disputed domain name due to its confusing similarity to the term “hepsiburada”, in which Complainant has priority rights, and which is well-established to identify Complainant's business in Turkey.
Complainant also contends that Respondent has no rights or legitimate interests in the disputed domain name, on the basis that Complainant has not licensed or otherwise permitted Respondent to use any of its trademarks or to apply for or use any domain name incorporating its marks. Since the disputed domain name was used for an e-commerce website until April 7, 2008, Complainant alleges, it is not possible to consider such use as “non commercial use” or “fair use”. Complainant also claims that there is no bona fide use of the disputed domain name by Respondent.
Finally, addressing registration and use in bad faith, Complainant alleges that, since its trademark is well-known, it is obvious that Respondent intended to take advantage of the reputation for quality developed by Complainant over the years, and that Respondent has attempted to hide its identity. In support of its bad-faith allegations, Complainant again cites the past use of the disputed domain name to resolve to an e-commerce website, the same sector for which Complainant's “hepsiburada” websites are widely known.
In light of the above, Complainant requests transfer of the disputed domain name.
Respondent did not reply to Complainant's contentions.
The Rules require the Panel to 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. Rules, paragraph 15(a). Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Complainant must establish these elements even if Respondent does not submit a response. See, e.g., The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064. In the absence of a Response, the Panel may also accept as true the factual allegations in the Complaint. E.g., ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
Although the disputed domain name <hepsiburadamarket.com> is not identical to Complainant's HEPSIBURADA.COM mark, the Panel agrees that Respondent's domain name is confusingly similar to Complainant's mark.
Under the Policy, it is sufficient for a complainant to show that it has a trademark somewhere in the world, whether registered or not, at the time of the filing of the Complaint. Complainant has registered servicemark rights in the device mark HEPSIBURADA.COM in Turkey, and the distinctive feature of that mark are the letters “HEPSIBURADA.COM”.1
The test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone. Wal-Mart Stores, Inc. v. Traffic Yoon, WIPO Case No. D2006-0812. The top level domain “.com” in the disputed domain name is to be disregarded. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
The disputed domain name <hepsiburadamarket.com> is not identical to Complainant's HEPSIBURADA.COM mark but the addition of the descriptive word “market” to the mark does nothing to detract from its distinctiveness. Accordingly the Panel finds the disputed domain name to be confusingly similar to Complainant's mark. E.g., Sanofi-aventis, Sanofi-Aventis Deutschland GmbH v. Andrey Mitrofanov, WIPO Case No. D2007-1772; Giata Gesellschaft für die Entwicklung und Vermarktung interaktiver Tourismusanwendungen mbH v. Keyword Marketing, Inc., WIPO Case No. D2006-1137; Hoffmann-La Roche Inc. v. Aneko Bohner, WIPO Case No. D2006-0629.
The Panel also agrees with Complainant that Respondent's addition of the descriptive term increases the risk of confusion experienced by Internet users because the disputed domain name implies that Respondent is presenting a market, while Complainant's service mark is associated with an online marketplace. See, e.g., bwin Interactive Entertainment AG v. Andrei Gladchih, WIPO Case No. D2009-0167 (citing ACCOR, Société Anonyme à Directoire et Conseil de surveillance v. Tigertail Partners, WIPO Case No. D2002-0625).
The Panel concludes that the disputed domain name is confusingly similar to the registered mark of Complainant and that the requirements of paragraph 4(a)(i) of the Policy are fulfilled.
The Panel also concludes that Respondent has no rights or legitimate interests in the disputed 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: (1) the use of the “domain name in connection with a bona fide offering of goods and services”; (2) an entity being commonly known by the domain name; or (3) the making of “a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”. Policy paragraphs 4(c)(i)–(iii).
Complainant must show a prima facie case proving the negative that a respondent lacks rights or legitimate interests. E.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. The absence of rights or legitimate interests is established if a complainant makes out a prima facie case and the respondent enters no Response. Id., (citing De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002 -0005).
Complainant avers that Respondent is not commonly known by the disputed domain name, does not offer services related to Complainant's mark, and that Respondent has no license to use the mark. In the absence of a Reply, the Panel accepts these undisputed facts as true.
Pointing to archives of the Turkish language online shopping website to which the disputed domain name resolved in 2008, Complainant also contends that Respondent's use of the disputed domain name is commercial, and not non-commercial. The Panel, however, is unable to rely on the archives annexed to the Complaint, because there is no proof that Respondent was the registrant at the time that the archived screenshots were captured.2 Moreover, the disputed domain name no long resolves to a shopping website and presently displays only sponsored advertising links.
The sponsored advertising links, though, demonstrate that Respondent is not making a non-commercial or fair use; the Panel infers that Respondent receives revenues from the activity of users who click on the sponsored link advertisements displayed on the website to which the disputed domain name resolves. E.g., The Bear Stearns Companies Inc. v. Darryl Pope, WIPO Case No. D2007-0593 (“[t]he Panel is free to infer that Respondent is likely receiving some pecuniary benefit (...) in consideration of directing traffic to that site” (citing COMSAT Corporation v. Ronald Isaacs, WIPO Case No. D2004-1082)). See Fat Face Holdings Ltd v. Belize Domain WHOIS Service Lt, WIPO Case No. D2007-0626. Since the website under the disputed domain name contains sponsored link advertising, the Panel finds that Respondent is not making a legitimate non-commercial or fair use of the disputed domain name.
The Panel finds that Complainant has established a prima facie case. Refraining from submitting a response, Respondent has brought to the Panel's attention no circumstances from which the Panel could infer that Respondent has rights or legitimate interests in making use of the disputed domain name.
Therefore, the Panel concludes that the second element of paragraph 4(a) of the Policy is established.
The Panel also concludes that Respondent has registered and is using the disputed domain names in bad faith, as explained below.
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy:
(i) circumstances indicating that the respondent has registered or 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 the respondent's documented out-of-pocket costs directly related to the domain name;
(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct;
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the respondent's website or location or of a product or service on its website or location.
These circumstances are not exhaustive, however, and panels may draw inferences about bad faith registration or use in light of the circumstances, such as whether the trademarks in question are well-known, whether there is no response to the complaint, concealment of identity, and other circumstances. E.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The Panel does not hesitate to find that Respondent knew of Complainant's mark when Respondent registered the disputed domain name, for the following reasons. First, it appears that Complainant's mark and associated online marketplace is well-known in Turkey. Second, Complainant's service mark was in use for several years before the registration of the disputed domain name. Therefore, this Panel finds “that Respondent most likely was aware of Complainant's trademark when it registered the disputed domain name. It seems [highly] unlikely . . . that Respondent would have chosen this name randomly.” Kahn Lucas Lancaster, Inc. v. Marketing Total S.A., WIPO Case No. D2007-1236. Thus, the Panel finds that Respondent registered the disputed domain name in bad faith.
It only remains to determine whether Respondent, in addition to registering in bad faith, is also using the disputed domain name in bad faith.3 Despite the fact that the record contains little evidence relating to the four illustrative circumstances in paragraph 4(b) of the Policy, the Panel nevertheless concludes that Respondent is also using the disputed domain name in bad faith, as explained below.
First, Respondent has chosen to refrain from filing a Response to the Complaint.
Second, it appears that Respondent, a serial cybersquatter, attempted to conceal its identity.
The use of privacy registration services is presently a legally acceptable practice and may be for legitimate purposes. E.g., HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062. Without more, the use of a privacy or proxy registration service would not be sufficient to establish bad faith use or registration. Id. In this case, however, Respondent is a serial cybersquatter with a well-established history of abusing the trademark rights of others.4 Based on the record in this case, Respondent has an apparent bad faith motive for using a privacy registration service, to conceal its identity and try to avoid responsibility for its abusive conduct. The Panel finds, therefore, that Respondent's use of a proxy service is further evidence of Respondent's bad faith. See, e.g., Canadian Tire Corp oration Limited v. CK Aspen, WIPO Case No. DTV2007-0015) (also citing other decisions finding use of privacy registration services as indications of bad faith).
The Panel concludes that the requirements of paragraph 4(a)(iii) of the Policy are fulfilled.
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 <hepsiburadamarket.com> be transferred to Complainant.
Nasser A. Khasawneh
Dated: May 18, 2010
1 Throughout the Complaint, Complainant appears to assume that it has protectable trademark rights in the simple term “hepsiburada”, which is made up of two common Turkish words. Complainant's proof of the prestige and recognition of the term is considerable, however, the only concrete proof of its trademark rights consists of the Turkish trademark registration for the “HEPSIBURADA.COM” device mark. In the Panel's view, however, as explained above, these registered rights are sufficient for present purposes.
2 As noted above, the Whois listing indicates registration of the disputed domain name on September 19, 2009.
3 Both the elements of bad faith registration and bad faith use must be established. E.g., E. & J. Gallo Winery v. Hanna Law Firm, WIPO Case No. D2000-0615; Telstra Corporation Limited v. Nuclear Marshmallows, supra.
4 A review of the Center's online decisions reveals that Respondent has been involved in 38 reported UDRP proceedings in the two years beginning April, 2008; in every proceeding, the panel ordered transfer or cancellation against Respondent.