WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dogan Gazetecilik Anonim Şirketi v. Hasan Dönmez and Gökhan Beyaz
Case No. D2010-0943
1. The Parties
The Complainant is Dogan Gazetecilik Anonim Şirketi, Istanbul, Turkey, represented by Dericioglu & Yaşar Law Office, Turkey.
The Respondents are Hasan Dönmez in the Original Complaint and Gökhan Beyaz in the Amended Complaint, Turkey.
2. The Domain Name and Registrar
The disputed domain name <milliyetemlak.net> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com (the “registrar”).
3. Procedural History
The Original Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 09, 2010. On the same day, the Center transmitted by email to the registrar a request for registrar verification in connection with the disputed domain name. On June 15, 2010, the registrar transmitted by email to the Center its verification response disclosing registrant (namely Gokhan Beyaz ) and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Registrar also verified that the language of the Registration Agreement was English. The Center issued and sent a Complaint Deficiency Notification to the Complainant for correction of such administrative deficiencies. The Complainant filed the Amended Complaint in Turkish against the Respondent Gökhan Beyaz on June 22, 2010. The Center then verified that the Complaint together with 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 the Respondents of the Complaint, and the proceedings commenced on June 23, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 13, 2010. The Respondent in the Original Complaint Hasan Dönmez did not submit any formal Response. However, on June 17, 21, 2010 and July 6, 2010, the Respondent Hasan Dönmez submitted email communications stating that he had earlier rights in the disputed domain name, his use of terms in the disputed domain name was of generic nature thus it could not be regarded as use of someone’s trademark and “an European judge had to be appointed as the sole Panelist as a Turkish Panelist could not be impartial for the subject matter case.” The Respondent in the Amended Complaint, Gökhan Beyaz, did not submit any Response.
The Center appointed Selma Ünlü as the sole panelist in this matter on July 21, 2010. Based on the Panel’s Statement of Acceptance and Impartiality signed in compliance with the Rules, paragraph 7 and lack of reasonable grounds for questioning the independence of the Panel, the Center confirmed the appointment of the Panel. Considering that a dispute between two Turkish parties regarding a domain name which contains Turkish words would most efficiently be reviewed by a Turkish Panel, the Panel finds that it was properly constituted.
The date scheduled for the issuance of the Panel’s decision was August 4, 2010.
As there have been submissions by both parties in both Turkish and English during the initial proceedings, it would be necessary for the Panel to make a determination n as to the proper language of the proceeding. The Panel notes that the Complainant filed the Original Complaint on June 9, 2010 in Turkish and English and submitted a request for Turkish to be the language of the administrative proceedings. The Amended Complaint is on the other hand in English, which is also in accordance with the Registration Agreement and the Complainant requested with the Amended Complaint for the proceedings to be held in English. The Respondent Hasan Dönmez, while indicating his inability to understand English, did not raise any formal objections as to the requested choice of language and submitted his Responses in both Turkish and English. The Respondent Gökhan Beyaz did not submit any Response. Accordingly the Panel, having considered the fact that the Registration Agreement is in English and the Respondent was able to communicate in English, decides that the language of the administrative proceedings should be English.
4. Factual Background
The facts stated in the Complaint are as follows:
(1) The Complainant is the leading media corporation in Turkey and the owner of the “Milliyet” newspaper, published since the 1950’s and widely known as one of the most popular newspapers in Turkey. The Milliyet newspaper has been offering a section dedicated to real estate and just like the newspaper itself the real estate section has also commenced to be offered via the Internet over the years.
(2) The word “milliyet” means “nationality” and the word “emlak” means “real estate” in the Turkish language.
(3) The Complainant is the owner of the EMLAK.MILLIYET.COM.TR trademark before the Turkish Patent Institute with the protection date of May 10, 2005, covering international class 36 including real estate services, in addition to a number of MILLIYET trademarks with earlier protection dates.
(4) The Complainant is the registrant of the <milliyetemlak.com> domain name with the creation date of July 28, 2005, and <milliyetemlak.com.tr> domain name with the creation date of January 1, 2009.
(5) The “www.milliyetemlak.com.tr” website is diverted to “www.milliyetemlak.com” and real estate notices are uploaded or followed by visitors on a nationwide basis.
(6) The evidence submitted by the Complainant presents that the “Milliyet Emlak” newspaper has been distributed in Turkey since the beginning of 2005.
The disputed domain name is active and used for real estate services specific to Bursa which is an industrial city in the Marmara region of Turkey, when the Panel visited the Respondent’s website on July 28, 2010.
The Panel also notes that the other long established and leading newspaper in Turkey “Hurriyet” meaning “liberty” has also been offering real estate information via printed press and online media with the HURRIYET EMLAK mark for many years. Such use can be said to be common practice for the newspapers in Turkey.
The facts stated by the Respondent Hasan Dönmez are as follows:
(1) The Respondent indicated in the Original Complaint Hasan Dönmez, based on the submissions of both parties, is the former registrant of the disputed <milliyetemlak.net> domain name created on May 8, 2006.
(2) As perceived by the submissions of the parties, Hasan Dönmez was the primary registrant of the <milliyetemlak.com> domain name created on July 28, 2005 and then assigned to the Complainant.
(3) The Respondent indicated in the Amended Complaint Gökhan Beyaz is the current registrant of the disputed domain name.
5. Parties’ Contentions
The Complainant requests the Panel to issue a decision transferring the disputed domain name to the Complainant on the following grounds:
(i) The disputed domain name is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights;
(ii) The Respondents have no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name was registered and is being used in bad faith.
(i). Identical or Confusingly Similar
The Complainant alleges that the disputed domain name is almost identical to its MILLIYET and EMLAK.MILLIYET.COM.TR trademarks. The disputed domain name amounts to unauthorized use of the Complainant’s trademarks which enjoy a well known status and high recognition both in media and real estate markets.
The disputed domain name is also used for providing real estate services and such unauthorized use serves to heighten the likelihood of confusion on behalf of the public and/or the wrongful impression that the disputed domain name is a variation of the domain name owned by the Complainant.
Such confusing similarity between the domain name cannot be overcome with the use of the extension “.net” instead of “.com” in the disputed domain name. Philip Morris USA Inc. v. Mariana Gemenitzi, WIPO Case No. D2009-1715.
(ii). Rights or Legitimate Interests
The Complainant alleges that the Respondents have no rights or legitimate interests in respect of the disputed domain name since the Respondents are not commercially connected to the business of the Complainant and have never been authorized by the Complainant to use the name Milliyet or Milliyet Emlak.
The Respondents’ unauthorized use of the almost identical domain name cannot be regarded to fall within noncommercial or fair use, as the domain name is used commercially while offering real estate services resulting in unjust commercial benefit obtained from the Complainant’s trademarks and domain name.
(iii). Registered and Used in Bad Faith
The Complainant argues that the Respondents have registered and used the disputed domain name in bad faith as the Respondents should have known the Complainant’s well known trademarks well before the registration of the disputed domain name and that the Respondents registered the disputed domain name primarily for the purpose of unfair commercial benefit.
The Complainant additionally argues that:
- The change in the registrant of the disputed domain name during the proceedings;
- The fact that the Respondent Hasan Dönmez assigned the <milliyetemlak.com> domain name to the Complainant and a year after obtained the registration for almost identical <milliyetemlak.net> domain name;
- The proposal by the Respondent Hasan Dönmez to settle the dispute through mutual settlement set forth in his response to the Complainant outside the scope of the current proceedings;
- The passive holding of the disputed domain name for over a month by the Respondents;
- The attempt to divert the Complainant’s followers to the disputed domain name by having it appear as the second result through the Google search engine; and
The other infringing domain names registered in the name of the Respondent Hasan Dönmez clearly represent Respondents’ bad faith.
The Respondent Hasan Dönmez argues that the term “milliyet” meaning nationality in Turkish language is a generic term of general nature. The <milliyetemlak.com> domain name, including the word “milliyet” solely with reference to this general meaning, was first registered by himself on July 28, 2005, and then assigned to the Complainant, therefore he has earlier rights on the domain name before any registration for a trademark or domain name was made in the name of the Complainant.
The Complainant cannot oppose to the disputed domain name by relying on earlier rights on another domain name (<milliyetemlak.com>) primarily registered by the Respondent.
A monopoly right cannot be granted to anyone on the term “milliyet” as it is a generic word by relying on Dogan Gazetecilik AS v Internet Amele Birligi, WIPO Case No. D2008-0751.
The website under the disputed domain name has never been subjected to passive holding as the website has only been inaccessible for periods of 1-2 days due to technical problems.
The Respondent Gökhan Beyaz did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint where no Response has been submitted.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) The disputed domain name is identical or confusingly similar to the trademark in which the Complainant has rights; and
(ii) The Respondents have 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.
Paragraph 4(a) of the Policy states that the Complainant has the burden of proving that all these requirements are fulfilled.
Even though the Respondent Gökhan Beyaz is indicated as the current registrant of the disputed domain name and thereby the direct addressee of the Complainant’s submissions, Gökhan Beyaz did not present any submission or evidence in response to the Complainant’s claims. The submissions made by the former registrant of the disputed domain name, the Respondent Hasan Dönmez, are examined by the Panel within the context of the status of the disputed domain name prior to its apparent assignment to the Respondent Gökhan Beyaz.
Further, upon careful review of the evidential materials submitted by the Complainant to support its contentions, the Panel finds the following:
A. Identical or Confusingly Similar
The test for identity or confusing similarity under the Policy, paragraph 4(a)(i) is limited in scope to a direct comparison between the Complainant’s trademark and the textual string which comprises the disputed domain name. In this case, the Complainant has demonstrated registered trademark rights in the mark EMLAK MILLIYETI.COM.TR. The disputed domain name contains the distinctive elements of this mark namely “milliyet” and “emlak”. Consequently, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark and the first requirement under paragraph 4(a) of the Policy is satisfied.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy rules that, a respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making 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.”
The burden of proof rests with the Complainant who must demonstrate a prima facie case that the Respondents lack rights or legitimate interests in the disputed domain name. Once the Complainant has made out a prima facie case, then the Respondents may, by, inter alia, showing one of the above elements, prove rights or legitimate interests in the disputed domain name.
Despite the Respondent Hasan Dönmez’s argument that he was the primary registrant of the <milliyetemlak.com> domain name, this domain name has now been assigned to the Complainant, the Respondent can no longer rely on this domain name to found any argument a claim for rights or legitimate interests. Thus, the Panel finds that the Respondent Hasan Dönmez is unable to adduce evidence to show cause that he has rights or legitimate interests to the disputed domain name.
On the other hand, the Respondent Gökhan Beyaz did not present any submissions on its rights or legitimate use and the Panel considers that the current Respondent is unable to adduce evidence to show cause that it has rights or legitimate interests to the disputed domain name either.
Considering that the use of EMLAK.MILLIYET.COM.TR and MILLIYET marks has not been authorized or licensed to the Respondents and the disputed domain name does not apparently correspond to the Respondents’ name by which they have become commonly known and the use of the word “milliyet” cannot be regarded as purely generic when used in addition to the word “emlak” due to the instant association to be made with the Milliyet newspaper, the Panel observes that the Respondents cannot be regarded as using the disputed domain name in connection with a bona fide offering of goods or services.
Hence, as the rights or legitimate interests of the Respondents could not be duly demonstrated under paragraph 4(c)(ii) of the Policy, 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
Paragraph 4(b) of the Policy enumerates four, non-inclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or has 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; or
(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; or
(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 web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s web site or location or of a product or service on respondent’s web site or location.
The foregoing considered, the Panel is of the opinion that the Respondents have registered and used the disputed domain name in bad faith since despite the fact that no precise information as to the date of the assignment is submitted by the parties, the Panel observed by the submissions of the parties that the Respondent Hasan Dönmez assigned the <milliyetemlak.com> domain name to the Complainant and later acquired registration for <milliyetemlak.net> domain name which is indistinguishably similar to the former after this assignment. The registration of the disputed domain name and Respondent Gökhan Beyaz’s later acquisition can both be regarded as registered in bad faith because:
- If the assignment was voluntary, it means that the Respondent accepted the Complainant’s earlier rights and assigned the former domain name however one year later registered an indistinguishably similar domain name despite being aware of these rights; and/or alternatively,
- with or without respect to accepting the Complainant’s rights, Respondent’s registered and/or acquired a domain name indistinguishably similar to the one already assigned to the same Complainant with the aim of another possibly profitable assignment.
The Panel finds that the disputed domain name was registered not only for the purpose of disrupting the business of a competitor and attempted to attract, for commercial gain, Internet users to their website or other online location or websites, by creating likelihood of confusion with or a link that would result in unjust benefit obtained from the Complainant’s earlier registered rights but also with the aim of a possible future assignment.
It is generally concluded that bad faith will be found when a domain name is so obviously connected with the complainant or its product that its use by anyone other than the complainant suggests opportunistic bad faith. See, e.g., Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163.
Hence, the Panel is convinced that the disputed domain name has been registered and used in bad faith and that the Complainant has satisfied the third element under 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 disputed domain name <milliyetemlak.net> be transferred to the Complainant.
Dated: July 30, 2010