WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Haliç Televizyon Ve Radyo Yayinciliği A.Ş., Galata Televizyon Ve Radyo Yayinciliği Ticaret A.Ş. v. Ahmed Mahadov, STR1
Case No. D2010-1166
1. The Parties
Complainants are Haliç Televizyon Ve Radyo Yayinciliği A.Ş. and Galata Televizyon Ve Radyo Yayinciliği Ticaret A.Ş.of Istanbul, Turkey, represented by Istanbul Patent & Trademark Consultancy Ltd., Turkey.
Respondent is Ahmed Mahadov, STR1 of Stenhagen, Sweden.
2. The Domain Name and Registrar
The disputed domain name <joyturk.com> is registered with Intercosmos Media Group d/b/a directNIC.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 15, 2010. On July 16, 2010, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the disputed domain name. On July 16, 2010, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response, confirming that 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 Respondent of the Complaint, and the proceedings commenced on July 19, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response to the Complaint was August 8, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 9, 2010.
Complainant also sent to the Center and to Respondent’s electronic address a supplemental filing on July 19, 2010, which is discussed below.
The Center appointed Nasser A. Khasawneh as sole panelist in this matter on August 17, 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.
4. Factual Background
Complainant Haliç Televizyon Ve Radyo Yayinciliği A.Ş., registered the logo trademark JOYTURK 89.0 with the Turkish Patent Office (Turkish registration number 2004 23968), in classes 38 and 41 as of July 30, 2004. Complainant Galata Televizyon Ve Radyo Yayinciliği Ticaret A.Ş. registered and has renewed in Turkey (Turkish registration number 176657) the trademark logo JOY FM in Turkey as of June 18, 1996, in class 38 and the trademark logo JOY (Turkish Registration No. 2003 05247) as of November 3, 2003, in classes 38 and 41).
The disputed domain name was registered on August 1, 2004 and has routed Internet users to a website displaying the JOYTURK 89.0 logo. The website also displays links to radio broadcasters that compete with Complainants.1
5. Parties’ Contentions
Complainants allege that they are sister broadcasting companies owned by the same economic group.
Complainants allege that they have been broadcasting under the mark JOYTURK since 2004 and that theirs is a top tier radio station in Turkey. As a consequence, Complainants aver, the public has associated the JOYTURK trademark with Complainants. Complainants allege that they have provided online and live radio station broadcasting services under the JOYTURK mark continuously since 2003. Complainants contend that the disputed domain name is also confusingly similar to the JOY trademark because the domain name wholly incorporates the term "joy."
Complainants further allege that there exists a likelihood of confusion since, using the disputed domain name, Respondent operates similar online radio services to those provided by Complainants under their trademark, by providing links to Complainants’ direct competitors and by displaying the JOYTURK 89.0 trademark.
Complainants also allege: that Respondent has made no claim that he is using the disputed domain name in connection with a bona fide offering of goods and services; that Complainants have not licensed or otherwise permitted Respondent to use the mark JOYTURK or to apply for or use any domain name incorporating that trade/service mark; and that Respondent has not been commonly known by the disputed domain name. Complainants contend that they have prior rights in that trade/service mark, which predate Respondent’s registration of the domain name.
Addressing bad faith, Complainants aver that Respondent has taken deliberate steps to ensure that its true identity cannot be determined. As a consequence, Complainants contend that they were unable to commence legal proceedings against Respondent based on trademark infringement.
Complainants aver that Respondent is actually a Turkish citizen, named Adem Taş, who provided false identity in his domain name registration to avoid possible legal procedures. Complainants aver that the actual registrant, Adem Taş, created a “Joyturk” group on Facebook, which Complainants had shut down. However, Complainants aver that the actual registrant created a new group/page called “Joyfmsevenler” which can be viewed on http://www.facebook.com/ademtas1984#!/joyfmsevenler?v=wall.2 Complainants annex a communication allegedly made between Adem Taş and one of Complainants’ employees, which contains an admission by Adem Taş stating that “your company gets nuts when they come across with my name because of the joyturk domain name.”3
Citing article 2(a) of the Policy and section 18 of the contract with the registrar, Complainants allege that the registration of a domain name under a false identity is an element proving that the domain name was registered or maintained in bad faith within the meaning of paragraph 4(a)(iii) of the Policy. See City of Hamina v. Paragon International Projects Ltd., WIPO Case No. D2001-0001.
Complainants also aver that Respondent verbally offered to sell the disputed domain name to Complainants for a sum greater than out-of-pocket costs but that Respondent refused to put the offer in writing. Complainants also submitted a copy of a webpage offering sale of the disputed domain name for EUR 5,000.4
In conclusion, liberally quoting language from the Policy, Complainants contend that the disputed domain name was registered and has been used in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name -- and that by using the disputed domain name, the Registrant has intentionally attempt to attract, for commercial gain, Internet users to Respondent’s website, by creating likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of service on Respondent’s website or location.
On the basis of the above, Complainants request transfer to Complainant Haliç Televizyon Ve Radyo Yayinciliği A.Ş.
Respondent did not reply to Complainants’ contentions.
6. Discussion and Findings
A. Notification of Proceedings to Respondent
The Policy is intended to resolve disputes concerning allegations of abusive domain name registration or acquisition in an efficient manner. Fundamental due process requirements must nonetheless be met. The requirement that a respondent have notice of proceedings that may substantially affect its rights is such a fundamental requirement. The Policy and the Rules establish procedures to assure that respondents receive adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules).
The Center sent to Respondent by courier notification of these proceedings. The Center used the address listed in the WhoIs record for the disputed domain name, but the courier company was unable to deliver to the address indicated in Respondent’s WhoIs record. The Center also notified Respondent by using an email address provided by the registrar in its verification response to the Center, but the electronic notifications returned delivery errors.
The Panel is satisfied that by sending communications to the contacts made available through the registrar, and those provided by the registrant to the registrar as listed in the WhoIs records, the Center has exercised care and has fulfilled its responsibility under paragraph 2 of the Rules to employ all reasonably available means to serve actual notice of the Complaint upon Respondent.
B. Length of Complaint
The Complaint slightly exceeds the 5,000 word limit imposed by the Rules and Supplemental Rules paragraph 10(a), but the portions of the Complaint outlining the facts and grounds for relief are shorter than 5,000 words. See Talal Abu-Ghazaleh International, Talal Abu Ghazaleh & Co., Abu Gazaleh Intellectual Property and Aldar Audit Bureau v. Fadi Mahassel, WIPO Case No. D2001-0907 (suggesting that “[t]he word limit referred to in the WIPO Supplemental Rules, Paragraph 10a), is only applicable to the description of grounds on which the Complaint is made”). Absent any Reply or objection by Respondent and in the interests of efficiency, the Panel renders this decision on the basis of the Complaint as submitted, without requesting amendment.
C. Supplemental Pleadings
As noted above, within a few days of filing the Complaint, Complainants sent to the Center (and the electronic addresses of Respondent listed in the WhoIs record) supplemental materials consisting of a screen print of a Sedo parking page, allegedly offering for sale the disputed domain name for EUR 5,000. Complainants submitted the page as evidence in support of arguments already presented in the Complaint paragraph V.3).e).
Paragraphs 10 and 12 of the Rules grant the Pane discrletion to determine the admissibility of supplemental filings, including further statements or documents. The Panel has determined that no prejudice to Respondent will result from accepting and considering as evidence Complainants’ supplemental filing since the evidence pertains to allegations already clearly set forth in the original Complaint. The Panel further determines that the interest of due expedition will be served by proceeding to decision without inviting further submissions from the parties in this instance.
D. Substance of the Complaint and Applicable Standards
The Rules require the Panel to decide the 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). Complainants 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 Complainants have 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.
Complainants 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 reasonable 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).
E. Identical or Confusingly Similar
Although the disputed domain name <joyturk.com> is not identical to the JOYTURK 89.0 logo trademark, the Panel agrees that the disputed domain name is confusingly similar to the mark of Haliç Televizyon Ve Radyo Yayinciliği A.Ş.
Under the Policy, it is sufficient for a complainant to show that it has a trademark somewhere in the world, whether or not registered, at the time of the filing of the Complaint. Complainant Haliç Televizyon Ve Radyo Yayinciliği A.Ş.has registered rights in a logo displaying the words “joyturk 89.0” in Turkey, and the Panel finds that the distinctive feature of that mark is the letters “joyturk.”
The test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the mark 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.
Accordingly, the Panel finds the disputed domain name <joyturk.com> to be confusingly similar to the mark of Haliç Televizyon Ve Radyo Yayinciliği A.Ş.5
The Panel concludes that the disputed domain name is confusingly similar to the registered mark of one of Complainants and that the requirements of paragraph 4(a)(i) of the Policy are fulfilled.
F. Rights or Legitimate Interests
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) Respondent 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 . . . .” Policy, paragraphs 4(c)(i)–(iii).
Complainants 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).
Complainants aver that Respondent is not commonly known by the disputed domain name, and that Respondent has no license to use the mark. In the absence of a Response, the Panel accepts these undisputed facts as true.
Complainants also allege that there is no bona fide offering of goods or services by Respondent. Since Respondent’s website at the disputed domain name contains links to competitors of Complainants in addition to the link to the website of Complainant Haliç Televizyon Ve Radyo Yayinciliği A.Ş., the Panel agrees. See also Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", WIPO Case No. D2000-0847 ("use which intentionally trades on the fame of another can not constitute a ‘bona fide’ offering of goods or services…to conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest…").
The existence of links to competitors of Complainants on the website to which the disputed domain name routes demonstrates that Respondent is not making a legitimate noncommercial or fair use; the Panel infers that Respondent receives revenues from the activity of users who click on the links to competitors. 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.
The Panel finds that Complainants have 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.
G. Registered and Used in Bad Faith
The Panel further finds that the third element of paragraph 4(a) of the Policy, bad faith registration and bad faith use, is established.
Using a domain name to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion, may be evidence of bad faith registration and use. Policy, paragraph 4(b)(iv). See, e.g., L´Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623. UDRP panels may draw inferences about bad faith registration or use in light of the circumstances, such as whether the trademark in question is well-known, whether there is no response to the complaint, a respondent’s attempts to hide its identity, and other circumstances. See e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The Panel finds that, based on the record, the use of the JOYTURK 89.0 logo in Turkey is widespread. Whether the true registrant in this case is Turkish (as alleged by Complainants) or Swedish (as indicated by the registrar and WhoIs record), it is clear from the content of the website to which the disputed domain name resolves that the website was targeted to a Turkish audience, as it also contains links to other Turkish radio broadcast or webcasters. Thus, it is reasonable to infer that the registrant of the website in question knew of the JOYTURK 89.0 trademark at the time of registration.
Moreover, from the first months that the website to which the disputed domain name routes was posted on the Internet, the website displayed a copy of the JOYTURK 89.0 logo of Complainant Haliç Televizyon Ve Radyo Yayinciliği A.Ş.6
The Panel infers therefore that the disputed domain name was registered with the intention to attract Internet users to the website at the disputed domain name for commercial gain, by creating a likelihood of confusion with Complainant’s marks. Under the circumstances, therefore, the Panel concludes there is no question that the disputed domain name was registered in bad faith. E.g., Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Akbank Turk A.S. v. Arif Bilgin, The Diamond Bar, WIPO Case No. DME2009-0009.
Examination of the webpage to which the disputed domain routes users reveals that the disputed domain name is used not only to promote Complainants’ broadcasts, but also to promote the broadcasts of Complainant’s competitors. The Panel concludes that this activity demonstrates bad faith use by Respondents. mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141; Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784 (citing Google, Inc. v. wwwgoogle.com and Jimmy Siavesh Behain, WIPO Case No. D2000-1240; Casio Keisanki Kabushiki Kaisha (Casio Computer Co., Ltd.) v. Jongchan Kim, WIPO Case No. D2003-0400; and Downstream Technologies, LLC v. Bartels System GmbH, WIPO Case No. D2003-0088).
The Panel further finds that Respondent’s failure to reply to the Complaint, the failure to maintain accurate contact information in the WhoIs record, and the public offering of the disputed domain name for sale in excess of out-of-pocket costs are cumulative evidence of bad faith use. Policy, paragraph 4(b)(i).
Having found that the circumstances establish bad faith registration and use, the Panel concludes that the requirements of Policy, paragraph 4(a)(iii) are fulfilled. Accordingly, it is not necessary to consider Complainants’ allegations that the registrant has been falsely identified in the WhoIs record.
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 <joyturk.com> be transferred to Complainant Haliç Televizyon Ve Radyo Yayinciliği A.Ş.
Nasser A. Khasawneh
Dated: August 31, 2010
1 The Panel has undertaken limited factual research by viewing the website to which the disputed domain name resolves, and by viewing archives at “www.archive.org/index.php”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 4.5.
2 The Panel has viewed the cited Facebook page and notes that it displays the JOY trademark logo of Complainant Galata Televizyon Ve Radyo Yayinciliği Ticaret A.Ş. The page also displays links to one of the URLs owned by Complainant Galata Televizyon Ve Radyo Yayinciliği Ticaret A.Ş.
3 The Complaint represents that it attaches the referenced communication. However that portion of the Complaint is not readable in electronic form. Since the Panel finds bad faith on other grounds, as explained below, in the interests of efficiency, the Panel has determined that a readable copy of this communication is not required to resolve this proceeding.
4 The webpage image was submitted as Complainants’ supplemental filing of July 19, 2010.
5 Consequently, it is not necessary for the Panel to consider the question of whether confusing similarity also results from incorporation in the disputed domain name of elements of the JOY FM or other logos belonging to Complainant Galata Televizyon Ve Radyo Yayinciliği Ticaret A.Ş.
6 The Panel has viewed archives of the website to which the disputed domain name resolves dating back to 2004.