WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Anadolu Anonim Türk Sigorta Şirketi v. Engin Niron and N-Tour Express, Nadine Riemann
Case No. D2010-2106
1. The Parties
The Complainant is Anadolu Anonim Türk Sigorta Şirketi of Istanbul, Turkey, represented by Murat Teber and Elif Cagla Isik, Turkey.
The Respondents are Engin Niron of Alikahya-Kocaeli, Turkey and N-Tour Express, Nadine Riemann of Bremen, Germany, self-represented.
2. The Domain Name and Registrar
The disputed domain name <anadolusigorta.com> is registered with 1API GmbH (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 2010. On December 7, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 8, 2010, the Registrar transmitted by email to the Center its verification response confirming that the Respondent N-Tour Express, Nadine Riemann 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”).
Since the Complainant had asked for Turkish to be the language of the proceeding and, according to the verifications conducted by the Center with the Registrar, the language of the registration agreement is English, the Center sent a communication via email to the parties on December 16, 2010 concerning the language of the proceeding. The Complainant acknowledged receipt of such communication on the same day, agreeing on English as the language of the proceeding and confirming its availability to translate some correspondence in Turkish attached to the Complaint.
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 December 16, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 5, 2011.
The Respondent , Nadine Riemann acknowledged receipt of the Center’s communication on December 20, 2010 requesting for German to be the language of the proceeding. The Center replied to the Respondent on the same day advising that the language of the registration agreement is English.
On December 21, 2010, the Respondent Engin Niron sent an email communication to the Center, stating:
“I got the printed documents that is posted to my business address.
I have to state that I have no any relationship with the disputed
domain name anadolusigorta.com by october 2010 hence I don't
understand why my name written as respondant to the file.
I also need to correct the information on the printed file which is
showing my organisation information as N-Tour Express.
The correct information must be:
as may be verified by 1api GmbH
The Respondent Nadine Riemann filed a Response on January 5, 2011.
The Complainant sent a communication via email to the Center on January 6, 2011, indicating:
“...We check the disputed domain name “www.anadolusigorta.com” periodically and we see that its changing everyday and unfortunately it is being published as a cheap web site. On the right side of the web site it writes “sex buddy, photos of girls, nudes photos” and other in appropriate statements. Please see the attached screen shot of the disputed web site. This web site is now effecting the reputation of the Complainant Company.
For that reason, we kindly ask you to send our file as quick as possible to the Panel...”.
The Center appointed Luca Barbero, Dilek Ustun Ekdial and Dietrich Beier as panelists in this matter on February 11, 2011. The Panel finds that it was properly constituted. Each member of 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.
Due to exceptional circumstances, the Panel requested an extension of seven days of the decision due date in accordance with paragraph 10(c) of the Rules.
4. Factual Background
The Complainant Anadolu Anonim Türk Sigorta Şirketi is a Turkish Insurance company which was founded in 1925 and operates throughout Turkey via over 1500 professional agencies.
Attached to the Complaint is a list of the twenty-two trademark registrations filed by the Complainant before the Turkish Patent Institute, which includes the mark No. 2005/04779 for ANADOLU SIGORTA, filed on February 17, 2005, in class 36 and other marks containing the terms ANADOLU and SIGORTA, together or alone, in combination with other words and/or figurative elements, such as the trademark Nos. 2005/04782 for ANADOLU SIGORTA ANADOLU HIZMET VE HASAR ISLEMERI HATTI SEKIL filed on February 17, 2005, in class 36, 2005/04783 for ANADOLU SIGORTA MAKSIMUM HIZMET SIGORTACILIGI, filed on February 17, 2005, in class 36, 2005/04781 for DR. SIGORTA!, filed on February 17, 2005, in classes 9, 36 and 38.
The Complainant filed a trademark application for WWW.ANADOLUSIGORTAM.COM.TR before the Turkish Patent Institute (No. 2009/66645) on December 15, 2009, in classes 36, 38 and 42.
The Complainant is also the owner of the domain name <anadolusigorta.com.tr>, registered on October 5, 1998.
The disputed domain name <anadolusigorta.com> was created on November 20, 2009.
The disputed domain name has been redirected by the Respondents to a parking page providing several links to third parties’ commercial websites, including links referred to adult content sites.
5. Parties’ Contentions
The Complainant states that Anadolu Anonim Türk Sigorta Şirketi is one of the oldest insurance company in Turkey and among the biggest and renowned public companies in Turkey’s leading insurance conglomerate.
The Complainant contends that the disputed domain name <anadolusigorta.com> is identical to the trademark and to the domain name in which the Complainant has rights as it reproduces the well-known trademark ANADOLU SIGORTA in its entirety.
With reference to rights or legitimate interests in respect of the disputed domain name, the Complainant states that the Respondents have not used the disputed domain name in connection with a bona fide offering of goods or services and are not making a legitimate noncommercial or fair use of the disputed domain name, since the Respondents registered it with the sole purpose of confusing Internet users and to divert them to an “empty” website.
The Complainant points out that the Respondents are not commonly known by the disputed domain name, and that the Complainant has not authorized the Respondents to use its mark ANADOLU SIGORTA.
The Complainant concludes that the Respondents registered the disputed domain name without any rights or legitimate interests to take unfair advantage from the Complainant’s reputation.
With reference to the circumstances evidencing bad faith, the Complainant indicates that the Respondent Engin Niron contacted the Complainant on October 14, 2010, stating that it was in touch with potential companies who were interested in the disputed domain name and offering the disputed domain name to the Complainant for an amount of TL 100, 000 (corresponding to approximately 80, 000 USD).
The Respondent Nadine Riemann acknowledges the identity of the disputed domain name with the Complainant’s trademark ANADOLU SIGORTA.
With reference to rights or legitimate interests in respect of the disputed domain name, Ms. Riemann states that she purchased the disputed domain name to use it in connection with the sales and marketing of mechanical and electronic goods and points out that the she opted for a domain name constituted by Turkish words since “3 millions of Turkish people in Germany are within my [her] target market”. Ms. Riemann also states that the geographical term “anadolu”, which corresponds to the English word “Turkey”, has been used by several other Turkish companies as a trademark or a commercial name.
As to the bad faith issue, Ms Riemann confirmed in the Response that she purchased the disputed domain name from Engin Niron on October 17, 2010 but denies any involvement in the negotiations between Engin Niron and the Complainant as to the disputed domain name.
With reference to the trademarks on which the Complainant relies in this proceeding, Ms. Riemann points out that the trademark ANADOLU SIGORTA is not protected in Germany, where she is based, since the trademarks are only registered before the Turkish Patent Institute and the Complainant does not operate in Germany. She also states that, except for the trademark registration for DR. SIGORTA, mentioned above, the Complainant has no trademark registrations in class 9, which covers the goods that her company is involved in.
Ms. Riemann rejects the Complainant’s statements as to the false identity of the registrant of the disputed domain name. She attaches to the Response her identity card showing her name, her date and place of birth, and an excerpt from the Telekom directories highlighting the correspondence between her telephone number and the contact information indicated in the WhoIs.
Ms. Riemann also informs the Panel that, according to the historical records available on “www.archive.org”, the disputed domain name was, prior to the current date of registration, already owned by third parties who used it in different manners, and states that the Complainant should have acted timely against the prior owners.
As quoted above, the Respondent Engin Niron sent an email communication to the Center on December 21, 2010, stating that it should not be considered as a Respondent in the present procedure.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondents is identical or confusingly similar to a trademark or a service in which the Complainant has rights; and
(ii) that the Respondents have no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Preliminary Issues: Multiple Respondents.
The Complaint was filed against the Respondent Engin Niron in light of some correspondence that it addressed to the Complainant on October 13, 2010, in which it offered the disputed domain name for sale as per the following paragraphs. In section II B of the Complaint, the Complainant expressly mentions that the disputed domain name is formally registered in the name of N-Tour Express, Nadine Riemann (even if contending that the information published in the WhoIs were false).
The Panel was not provided with a translation of the full correspondence in Turkish attached to the Complaint but was able to review and fully understand it in view of the translation of the documents provided by one of the panelists, having Turkish as a mother tongue.
In such an email communication sent by Engin Niron to the Complainant on October 13, 2010, it was stated that it acquired the disputed domain name on November 20, 2009 for five years from an auction sale because it wanted to be one of the commercial agents of the Complainant but the Public Relations department of the Complainant dismissed its request. It then claimed to have received some proposals from third parties relating the disputed domain name and that the website under the disputed domain name generated a substantial number of visits by Internet users.
The Complainant contacted the Respondent Engin Niron on October 26, 2010 via phone and via email on October 28, 2010 offering TL 2000 for the disputed domain name but the Respondent’s request was of TL 100, 000.
On November 3, 2010, Engin Niron sent a communication via email to the Complainant acknowledging that it used the email address <email@example.com> only once and stating that it could not accept the Complainant’s offer of TL 2000 for the disputed domain name which was registered on November 20, 2009 until November 2017 in the name of N-Tour Express – Nadine Riemann. It also mentioned that it got some offers for TL 10, 000 - 50, 000 but did not sell it and requested to the Complainant TL 80, 000 for the disputed domain name.
On November 5, 2010, the Complainant’s attorney sent a reply via email to Engin Niron offering TL 15, 000 as their last offer.
Engin Niron did not accept this offer via email dated November 23, 2010.
Additionally, Engin Niron sent an email communication to the Complainant’s attorney and explained that it is negotiating with a foreign broker company on the disputed domain name and if the Complainant did not accept its offer it will transfer the disputed domain name to this company on December 1, 2010 amount of USD 75, 000 - 90, 000 for 5 years period of time.
The statements contained in such correspondence submitted to the Panel confirms the fact that Engin Niron was aware of the registration of the disputed domain name in the name of the other Respondent but was nevertheless still negotiating a possible sale.
At the same time such statements on November 3, 2010 and the following several emails addressed by Engin Niron to the Complainant until November 29, 2010 contradict the allegation of both Respondents.
Ms. Riemann stated that she purchased the disputed domain name from Engin Niron on October 17, 2010 and Engin Niron indicated that it had “ …no any relationship with the disputed domain name <anadolusigorta.com> by October 2010” as in its statement submitted to the Center on December 21, 2010.
In light of the above the Panel finds that the correspondence provided by the Complainant shows a connection between the two Respondents.
As stated in other UDRP panel decisions, it is not particularly significant in practice who is named as the formal respondent in a proceeding since the motives and interests of the person who de facto controls the domain name and has been responsible for its registration that will usually be significant when addressing issues under the Policy.
See along these lines, inter alia, Blue Cross and Blue Shield Association, Empire HealthChoice Assurance, Inc. dba Empire Blue Cross Blue Shield and also dba Empire Blue Cross v. Private Whois Service / Search and Find LLC. / Michigan Insurance Associates / 4 Letter Domains Inc. / New York Health Ins., WIPO Case No. D2010-1699: “If the person actually controlling the domain name registered that domain name in bad faith, it is no answer to this that the named agent had no knowledge of a complainant’s mark and so far as he alone was concerned had acted in good faith. […] In such circumstances the knowledge of the principal is to be imputed to the agent”.
In light of the above and of the prior correspondence between the Complainant and Engin Niron, the Panel finds that the designation also of Engin Niron as the Respondent in this proceeding is appropriate.
A procedural issue has to be addressed also with reference to the designation of the sole Respondent Engin Niron in the heading of the Complaint. As stated in several UDRP decisions, from a purely procedural perspective, it is not particularly significant who is named as a respondent in the heading of a complaint and a complainant is usually deemed to have satisfied its procedural obligations under the Policy by identifying as the ”respondent” the person or persons named in the publically available WhoIs register at the time that the Complaint is filed with the Center.
In the case at hand, the Panel notes that the name and contact information of the second Respondent N-Tour Express, Nadine Riemann, who is the registrant of the disputed domain name according to the WhoIs database, are indicated by the Complainant in the section II B The Respondent of the Complaint. Furthermore, N-Tour Express, Nadine Riemann was mentioned as the Respondent in the Complaint, was provided with the Complaint and responded to the Complaint within the deadline provided by the procedure.
The Panel accordingly considers the Complaint directed against both Respondents and shall examine the requirements of paragraph 4(a) of the Policy for both Respondents independently.
B. Identical or Confusingly Similar
The Complainant has provided evidence of ownership of the trademark registration No. 2005/04779 for ANADOLU SIGORTA, filed on February 17, 2005, in class 36.
In comparing the Complainant’s marks to the disputed domain name with reference to ANADOLU SIGORTA it should be taken into account the well-established principle that the generic top level domain may be excluded from consideration as being merely functional component of a domain name. See, inter alia, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429 “the specific top level of the domain name such as ‘.net’ or ‘.com’ does not affect the domain name for the purpose of determining whether it is identical or confusingly similar”; Chevy Chase Bank, F.S.B. v. Peter Ojo, WIPO Case No. D2000-1770 “the accused domain name <chevychasebank.org> is legally identical to Complainant’s trade name CHEVY CHASE BANK”.
The Panel finds, therefore, that the disputed domain name is identical to the trademark owned by the Complainant.
C. Rights or Legitimate Interests
The Complainant must show that the Respondents have no rights or legitimate interests in respect of the disputed domain names. The Respondents may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
“(i) before any notice to you 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 (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 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.”
It is well-established that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondents’ rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a) (ii) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.
Accordingly, in line with the UDRP precedents, it is sufficient that the Complainant show a prima facie case that the Respondents lack rights or legitimate interests in the disputed domain name in order to shift the burden of evidence on the Respondents. If the Respondents fail to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; MetAmerica Mortgage Bankers v. Whois ID Theft Protection, c/o Domain Admin, NAF Claim No. FA852581).
In the case at hand the Complainant has made a prima facie case and the Respondents have failed to raise any convincing circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name.
The Panel observes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondents and the Complainant. The Respondents are not a licensee of the Complainant, nor have the Respondents otherwise obtained an authorization to use the Complainant’s trademarks. Furthermore, there is no indication before the Panel that the Respondents are commonly known by the disputed domain name or by a name corresponding to the disputed domain name.
The Panel notes that the disputed domain name is pointing to a parking page displaying several links to third parties’ commercial websites, including links to adult sites. Such use of the disputed domain name cannot be qualified as a bona fide offering of goods or services or as a legitimate, noncommercial or fair use of the disputed domain name.
As stated in the decisions Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415 and Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787, where the panel found that the respondent’s use of the domain name to resolve to a directory of commercial websites was not a bona fide offering of goods and services because “(a) the disputed domain name is fairly unique and specific to the Complainant; (b) there is no apparent connection between the disputed domain name and the Respondent’s website directory [...]; and (c) there is no other apparent legitimate justification for the Respondent’s registration and use of the disputed domain name for its website”. Similarly, in Bilfinger Berger AG v. eService Finance Dept., WIPO Case No. D2003-0827, the panel stated that “[…] although services are offered in the form of a directory, the services do not correspond to a bona fide offering by Respondent. [The Domain Name <bilfinger.com>] is only used as a link to a generic directory [. . .]. There is no indication that the links contained on the website are related to the Respondent or to the BILFINGER name”.
Moreover, the sponsored links to “adult” web sites (highlighted by a screenshot submitted by the Complainant and still available on the site corresponding to the disputed domain name) are certainly also seriously tarnishing the Complainant’s trademark. As stated in Hartsfield Area Transportation Management Association, Inc. v. Max Davidovich, WIPO Case No. D2006-0743, “the adoption by the Respondent of a domain name confusingly similar to the Complainant’s mark inevitably leads to the diversion of the Complainant’s consumers, wishing to access the Complainant’s website, to the website of the Respondent with added links to pornography and gambling websites, alien to the business of the Complainant, with the consequential tarnishing of the Complainant’s trade name and service mark HATMA.”
Moreover, the Respondent Engin Niron expressly recognised, in the correspondence with the Complaint prior to the present UDRP proceeding, that the website under the disputed domain name has been generating a significant traffic. On the other hand, Ms. Riemann stated in her Response that she purchased the disputed domain name to use it in connection with the “sales and marketing of mechanical and electronic goods such as electrical fuse systems, short circuit protectors and in-car circuits” and that she “almost completed the web page works”, but in the Panel’s view she has not provided convincing evidence of her effective preparation to use the disputed domain name for the above mentioned purpose.
Thus, in light of the above, the Panel finds that the Respondents have no rights or legitimate interests in respect of the disputed domain name, in accordance with paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith:
(i) circumstances indicating that the holder 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 holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder 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 holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website 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 holder’s website or location or of a product or service on the holder’s website or location.
As to bad faith at the time of the registration, the Panel notes that, in light of the reputation of the Complainant and of its mark ANADOLU SIGORTA in Turkey and among Turkish people located in other countries of the world, both Respondents must have been aware of the Complainant’ s mark when decided to register the disputed domain name.
Indeed, the correspondence exchanged between the Complainant and Engin Niron attached to the Complaint shows that it clearly registered the disputed domain name with the intent of approaching the Complainant to propose itself as a commercial agent of the Complainant.
Also the Respondent Nadine Riemann was more likely than not aware of the Complainant’s mark. In fact, the statement in her Response “… since 3 millions of Turkish people in Germany are within my target market, I have especially used a name in Turkish …”, clearly shows that she intended to target Turkish Internet users.
The Panel also notes that the mark ANADOLU SIGORTA is constituted by the word “Anadolu”, which means “Turkey” and “sigorta”, which is the Turkish for “insurance” and finds that the selection of a domain name constituted by such terms for activities clearly not related to the insurance services but instead referred to the sales and marketing of mechanical and electronic goods as alleged by the Respondent Nadine Riemann is not plausible.
A number of UDRP panels have found “opportunistic bad faith” in the registration of renowned or even somewhat less famous trademarks as found in Gateway, Inc. v. Lorna Kang, WIPO Case No. D2003-0257. Along the same lines Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137; Prada S.A. v. Mark O'Flynn, WIPO Case No. D2001-0368; Ferrari S.p.A. v. Inter-Mediates Ltd., WIPO Case No. D2003-0050 and The Nasdaq Stock Market, Inc. v. Act One Internet Solutions, WIPO Case No. D2003- 0103. As stated, inter alia, in DHL Operations B.V v. Net Marketing Group, WIPO Case No. D2005-0868 “...it is obvious that the value and goodwill, of the Complainant’s mark DHL which has an extensive worldwide recognition, would have been known to the Respondent at the time of registration of the disputed domain name. The registration and use of the mark by an entity unconnected to the Complainant gives rise to the presumption of opportunistic bad faith”.
As mentioned above, the disputed domain name is pointing to a parking page with commercial links to third parties’ websites, including adult content sites.
The Panel finds that, under the circumstances, paragraph 4(b)(iv) of the Policy is applicable in this case since both the Respondents, independently from each other, have attempted to attract Internet users to a website for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondents’ site.
Moreover, the request from the Respondent Engin Niron of a sum of approximately USD 80, 000 for the disputed domain name, which is a sum well in excess of the out of pocket costs directly related to the disputed domain name, is a further evidence of bad faith .
In view of the Panel, the conduct and the communications of both Respondents meet independently from each other the requirements of paragraph 4(a) of the Policy.
In view of the above, the Panel finds that the disputed domain name was registered and is being used in bad faith.
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 <anadolusigorta.com> be transferred to the Complainant.
Dilek Ustun Ekdial
Dated: March 8, 2011