WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Çilek Mobilya Sanayi ve Pazarlama Ticaret Anonim Şirketi v. Haluk Artun / Mehmet Subaşı
Case No. D2010-1673
1. The Parties
The Complainant is Çilek Mobilya Sanayi ve Pazarlama Ticaret Anonim Şirketi of Bursa, Turkey, represented by Basalan Patent & Trade Mark Ltd. Şti, Turkey.
The Respondent is Haluk Artun / Mehmet Subaşı of Istanbul, Turkey, appearing pro se.
2. The Domain Name and Registrar
The disputed domain name <cilek.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 5, 2010. On October 5, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On October 5, 2010, GoDaddy.com, 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 October 8, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 28, 2010. The Response was filed with the Center on October 28, 2010.
The Center appointed Gökhan Gökçe as the sole panelist in this matter on November 4, 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
The Complainant established as a design-focused company in 1995 and is a leading manufacturer and designer of furniture products made exclusively for children and teens. The Complainant has successfully promoted its products internationally since 1996 and operates 444 sales outlets scattered over 5 continents with a yearly retail turnover of approximately TL 220 million. In addition to stores, the Complainant’s products are available in furniture chain stores in Switzerland, Austria, Norway, Kuwait, Mexico, Germany, Israel and Spain.
The Complainant has registered its design mark, ÇİLEK in 70 countries all around the world, its earliest registration is with the Turkish Patent Institute (“TPI”) is January 10, 1997. Furthermore, in 2008 the TPI recognised the Complainant’s trademark as a “Well-Known Trademark”.
The Respondent is an individual who registered the disputed domain name <cilek.com> on November 25, 1999.
5. Parties’ Contentions
In accordance with paragraph 4 of the Policy, the Complainant requests that the disputed domain name should be transferred to the Complainant.
The Complainant submits the grounds for these proceedings are listed in paragraph 4(a) of the Policy.
Identical or Confusingly Similar
The Complainant exhibits a number of design marks it has registered with TPI at Annex 5 of the Complaint. The earliest registration of the Complainant’s design mark ÇİLEK is January 10, 1997, furthermore, the TPI recognised it as “well known mark” on May 25, 2008 as evidenced in Annex 8 of the Complaint. The Complainant has registered ÇİLEK as a design mark in Israel, Kuwait, Canada, Saudi Arabia, United Arab Emirates, Greece, Malaysia, the United States of America, Algeria, Australia, Japan, Indonesia and Taiwan as evidenced in Annex 6 of the Complaint.
The Complainant submits that although it registered its design mark in 1997 it has been using it since 1995 and notes that it registered the domain name <cilek.com.tr> on April 9, 1997 as exhibited at Annex 22 of the Complaint. The Complainant contends that there is a high risk of confusion due to the similarity between the disputed domain name <cilek.com> and its registered domain name.
The Complainant also draws attention to the fact that it has invested in the promotion of its reputation and has heavily promoted its trademark developing goodwill and exhibits promotional material at Annex 24 of the Complaint. The Complainant contends that its trademark is well-known and presents reports of its trademark’s recognition and popularity exhibited at Annex 23 of the Complaint.
Rights or Legitimate Interests
The Complainant asserts there is no evidence of the Respondent’s use of, or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services and exhibits a print out of the website at Annex 26 of the Complaint. The Complainant has conducted a number of searches and has concluded that the Respondent does not own a registered trademark.
Registered and Used in Bad Faith
The Complainant contends that the disputed domain name is not actively being used by the Respondent. The Complainant alleges that the website is evidence that the Complainant is well aware of the Complainant’s business as the disputed domain name resolves to a website displaying advertisements of companies in direct competition with the Complainant as evidenced in Annex 30 of the Complaint.
The Complainant submits that the Respondent has acted in bad faith as it offers the disputed domain name for sale through “www.sedo.com”.
The Respondent filed a Response to the allegations in the Complaint and requests the Panel to deny the remedy requested, namely transfer of the disputed domain name to the Complainant.
Identical or Confusingly Similar
The Respondent contends that “cilek” is a generic word meaning strawberry in Turkish. It submits evidence that it is a name of a geographic location in Turkey and that cilek is used as a brand name by many and not just the Complainant and list a number of domain names containing the word “cilek”.
Rights or Legitimate Interest
The Respondent claims legitimate interest in the disputed domain name and submits that he intended to use the domain name and develop a content portals and he has registered over 1000 generic domain names to build a network of websites. In furtherance of this project the Respondent registered domain names, <sefatal.com> meaning peach in Turkish and <visne.com> meaning cherry in Turkish in 1999 at the same time as the disputed domain name as evidenced at Annex 2 of the Response and has most recently registered <murdum.com> meaning plum in Turkish on June 11, 2010 as evidenced at Annex 2 of the Response.
The Respondent contends that until the disputed domain name is used within his project he has parked the domain name with “www.sedo.com” and claims that such use is evidence of use providing a legitimate interest.
Registered and Used in Bad Faith
The Respondent denies any allegation of bad faith. The Respondent states that there is no evidence of registration in bad faith as he registered the disputed domain name before the Complainant’s mark became well-known. The Respondent claims that he was not aware of the Complainant’s company at the time of purchasing the disputed domain name and that it was purchased with the intention of being used in the project described above.
The Respondent asserts that the website is not for sale and is not auctioned through “www.sedo.com” and alleges bad faith on part of the Complainant for making such allegation.
6. Discussion and Findings
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.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant is the owner of the design mark ÇİLEK as evidenced at Annex 5,6 and 8 of the Complaint. Although the Complainant’s trademark is not a word mark and is displayed with a design it is obvious that an image cannot be reproduced in a domain name. In this regard, this element must be determined taking into consideration the dominant textual elements of the trademark. The dominant textual elements of the Complainant’s mark is the word “cilek”, which is prominently displayed over the design, being a strawberry. The Panel is satisfied that the disputed domain name reproduces the trademark in its entirety and the domain name is identical or confusingly similar to a registered trademark. (Additionally, the Panel notes the Complainant is the registered owner and uses “www.cilek.com.tr” which is identical to the disputed domain name <cilek.com> which while heightenndt a dispositive under this element was also likelihood of confusion.).
The Policy simply requires the Complainant to demonstrate that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Panel recognises the Complainant’s rights and concludes that the domain name at issue is identical and confusingly similar with the Complainant’s trademark. 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.
B. Rights or Legitimate Interests
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) of the Policy, it is often observed that it is difficult for a complainant to prove a negative and it is therefore generally 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 of production 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 Panel visited the disputed domain name, the domain name is parked using Sedo parking services which redirects users to competing sites and thus capitalising on the Complainant’s trademark. The Respondent claims he has plans to use the domain name for a project however the Panel is not convinced as there is no evidence aside from his statement and 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 Panel believes that the Respondent was fully aware of the Complainant’s established reputation and trademark and there is no evidence that the Respondent has made any effort or has any intention to use the domain name for any purpose or legitimate activity consistent with having rights or legitimate interests, suggesting that there is no intention of fair use and the Respondent registered the domain name for commercial gain.
The Respondent claims rights or legitimate interests in the disputed domain name on the basis that it contains a generic word and submits a number of domain names which contain the word “cilek” used by a third parties. The Panel distinguishes the sites listed by the Respondent from the disputed domain name as they merely contain the word cilek and are being used for a legitimate purpose. Furthermore, the Respondent has failed to submit any evidence that he intended to use the disputed domain name in connection with any generic meaning of a word it incorporates, Teva Pharmaceutical Industries Ltd. v. Protected Domain Services / Dworld c/o Basil Administrator, WIPO Case No. D2010-0532.
The Respondent was unable to demonstrate a legitimate interest or right in the disputed domain name and there is nothing before the Panel to support the existence of the Respondent’s rights in the disputed domain name or that any of the circumstances listed in paragraph 4(c) of the Policy would apply. The Panel finds that the Complainant has succeeded in making out an initial prima facie case that the Respondent lacks rights or legitimate interests. The requirements of paragraph 4(a)(ii) are fulfilled and consequently the Panel finds in favour of the Complainant on the second element of the Policy.
C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the Complainant must prove is that the disputed domain name has been registered and is being used in bad faith.
The Complainant’s registered its CİLEK trademarks long before the Respondent’s registration of the disputed domain name and at the time of the Respondent’s registration was enjoying international recognition. The Panel finds that the Respondent, a resident of Turkey, was in light of the present circumstances more than likely aware of the Complainant’s trademark prior to registering the disputed domain name and draws an inference of bad faith, Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226. It therefore follows that the Respondent, at the time of registration, may have been aware that commercial use of the domain name, apparently targeting the Complainant would result in a violation of the Complainant’s trademark rights. Telstra Corporation Limited. v. Nuclear Marshmallows WIPO Case No. D2000-0003.
As detailed above, the Panel visited the disputed domain name and it resolved in a parking page which includes links to website offering goods and services in direct competition with the Complainant. The Panel finds parking a domain name in such a manner for financial gain suggests bad faith on the part of the registrant. Deloitte Touche Tohmatsu v. Henry Chan, WIPO Case No. D2003-0584. Although the content of the website is automatically generated, the Panel is of the opinion the Respondent is ultimately responsible for the content of the website, Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912.
In light of the above the Panel concludes the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant’s trademarks, Deutsche Telekom AG v. WWW Enterprise Inc., WIPO Case No. D2004-1078. There is no suggestion that the Respondent had any intention of legitimate use, that he enjoys a connection to the domain name or that there is conceivable good faith use for the disputed 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
D. Reverse Domain Name Hijacking
The Respondent requests a finding of reverse domain name hijacking.
Such a finding is intended only for the worst cases where there is bad faith such as malice or dishonesty or some other abuse of process. It is not sufficient for the Complainant to be late with his Complaint. In this matter none of the following conditions are present;
(a) the Complainant “must” have recognised the futility of commencing a complaint under the Policy in respect of a generic word;
(b) the Complainant has made no real attempt to demonstrate common law usage of its claimed trademark in order to demonstrate rights which pre-date the registration of the domain name;
(c) the Complaint was so lacking in merit that it can only have been brought in the hope that no Response would have been filed so that the Complainant would win by default.
As discussed above, the Panel has not found that the Complaint was not patently lacking in merit or without grounds, the Complainant was able to establish a prima facie case that the Respondent did not have rights or legitimate interests in the disputed domain name.
Accordingly, the Panel declines to make such a ruling.
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 <cilek.com> be transferred to the Complainant.
Dated: November 24, 2010