WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
DTV Haber Ve Görsel Yayıncılık Anonim Şirketi v. Para Bilgi Teknolojileri Reklam. Yayin. Dan. San. Tic. Ltd. Sti.
Case No. D2010-2109
1. The Parties
The Complainant is DTV Haber Ve Görsel Yayıncılık Anonim Şirketi of Istanbul, Turkey, represented by Dericioğlu & Yaşar Law Office, Turkey.
The Respondent is Para Bilgi Teknolojileri Reklam. Yayin. Dan. San. Tic. Ltd. Sti of Ankara, Turkey, represented by Z&K Hukuk Bürosu, Turkey.
2. The disputed domain name and Registrar
The disputed domain name <kanald.com> is registered with Alantron BLTD.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 2010. On December 8, 2010, the Center transmitted by email to Alantron BLTD a request for registrar verification in connection with the disputed domain name <kanald.com>. On December 14, 2010, Alantron BLTD transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant, providing the registrant’s contact details and advising that the language of the registration agreement of the disputed domain name is Turkish. The Center sent an email to the parties on December 16, 2010, concerning the language of the proceeding, communicating that the language of the registration agreement of the disputed domain name is Turkish. The Complainant addressed an email to the Center on December 20, 2010, requesting an extension of time to translate the Complaint from English to Turkish and the Center replied, on the same day, granting the Complainant an extension of seven days.
The Complainant transmitted by email a translated version of the Complaint on December 19, 2010.
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 December 28, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 17, 2011. The Response was filed with the Center, in English language, on January 17, 2011.
The Center appointed Luca Barbero, Dilek Ustun Ekdial and Thomas M. Legler as panelists in this matter on March 2, 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.
4. Factual Background
The Complainant is a Turkish company which belongs to the Dogan Yayin Holding A.S. and broadcasts the channel KANAL D television channel in Turkey.
Attached to the Complaint are certificates for the several trademarks containing the wording “kanal d”, such as:
Turkish trademark registration No. 203634 for KANAL D (word and device), registered on August 26, 1998, in classes 38, 41 and 42;
Turkish trademark registration No. 2006/39108 for KANAL D HIGH DEFINITION (word mark), registered on August 11, 2006 in classes 16, 38 and 41;
Turkish trademark registration No. 2006/39109 for KANAL D HD (word mark), registered on August 11, 2006 in classes 16, 38 and 41;
Turkish trademark registration No. 2007/01513 for KANAL D HOME VIDEO (word and device), registered on January 17, 2007 in classes 9, 16, 38, 41 and 42;
Community Trademark registration No. 5190467 for KANAL D (word and device), filed on July 11, 2006 and registered on June 12, 2007, in classes 38, 41 and 42.
The Complainant is also the owner the domain name <kanald.com.tr>, registered on October 8, 1996.
The disputed domain name <kanald.com> was registered on December 31, 1997.
5. Parties’ Contention
The Complainant points out that its trademark KANAL D has reached a high level of recognition among consumers and states that it has a priority right on such mark based on its prior trademark and domain name registrations.
The Complainant contends that the disputed domain name is identical to its mark KANAL D as it reproduces the mark in its entirety and states that the registration and use of the disputed domain name by the Respondent is apt to confuse users as to the source and affiliation of the Respondent’s web site and services. The Complainant underlines that the letter “d” in the Complainant’s mark is meant to refer to the Complainant’s Dogan Group.
As to the right or legitimate interest in respect of the disputed domain name, the Complainant states that the Respondent has no trademark rights or personal rights on the expression “kanal d” and that the Complainant is not commonly known by the disputed domain name. The Complainant contends that the Respondent has been exploiting the reputation of the Complainant’s mark KANAL D in order to attract Internet users to a dating site under the disputed domain name. Therefore, the Complainant concludes that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services and that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
With reference to the circumstances evidencing bad faith, the Complainant states that the Respondent registered the disputed domain name with the purpose of gaining improper benefit from the reputation acquired by the Complainant over the years.
The Complainant has submitted records from <domaintools.com> highlighting that the disputed domain name was registered in the name of Nurullah Ciftci in 2003, in the name of Hasari Gida Tekstil Kirt. Giyim ve Tas. Tic. LTd.Sti in 2007 and was subsequently transferred to the Respondent in 2008.
The Complainant also states that the Respondent’s use of the disputed domain name for a dating site, where also some pornographic photos have been published, is causing dilution of its trademark KANAL D.
As additional circumstances evidencing bad faith, the Complainant states that the Respondent registered 427 domain names and that most of them are redirected to sites under construction, suspended or offered for sale.
The Complainant concludes that the Respondent has intentionally attempted to attract Internet users to its site for commercial gain by creating a likelihood of confusion with the Complainant’s well-known mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s site.
The Respondent rebuts the Complainant’s contentions and explains that its company is a professional Internet provider which renders hosting and domain name registration services and develops Internet software projects.
The Respondent states that the disputed domain name was first registered in 1997 in the name of the founder of its company Nurullah Çiftçi and that its “friendship site” under the disputed domain name has become popular having reached a number of 8000 registered users.
The Respondent states that the Complainant cannot claim exclusive rights on the mark KANAL D since the Complainant does not own a word trademark for KANAL D. The Respondent also states that the Complainant’s mark KANAL D was applied for in 1998, after the registration of the disputed domain name, and within classes which do not interfere with the Respondent’s activity.
The Respondent rejects the Complainant’s statements as to the misleading use of the disputed domain name stating that no reference is made to the Complainant and to its mark on the web site corresponding to the disputed domain name, including its Terms of Service, since the wording “KanalD” on the Respondent’s site is written without the space between the words “Kanal” and “D”, and the letter “d” is in capital letter and in different color and font. The Respondent highlights that the generic term “kanal” stands for “channel” or “chat room” and the letter “d” is the abbreviation of the word “dostluk” (which means “friendship” in Turkish) and designates the Respondent’s friendship channel under the disputed domain name.
With reference to the right or legitimate interest in respect of the disputed domain name, the Respondent states that it has put great efforts and investments in incorporation process and to distinguish its domain name by making it known as a trademark. The Respondent underlines that the Complainant registered its trademarks in 1998, one year after the registration of the disputed domain name by the Complainant and that the Complaint should be denied since the Complainant has never claimed any right or made any warning for the disputed “domain name” for thirteen years. The Respondent highlights that the Complainant’s late filing of the Complaint is not in good faith and falls under “forfeiting of right due to prescription” according to general legal principles of the international law.
As to the Complainant’s assertions on the Respondent’s bad faith, the Respondent states that it registered and has been using the disputed domain name in good faith. The Respondent highlights that it has never contacted the Complainant to sell the domain name, that it conducts a different activity from the Complainant and that the Complainant is abusing UDRP by filing a UDRP complaint against the Respondent.
The Respondent reiterates that none of the web design, or the logo used, or the service rendered or the Terms of Services on the disputed domain name includes any expression, reference or word or trademark which may mislead the user by creating the assumption or information that the disputed domain name belongs to the Complainant. The Respondent also points out that it has never broadcasted advertisements or sponsored links on the site corresponding to the disputed domain name and has never charged its users for using the web site.
As to the contents of the web site under the disputed domain name, the Respondent underlines that it is a social networking web site based on IRC and web, that it provides a “group option” to search friends and that the pornographic or infringing contents or profiles highlighted by the Complainant have been promptly deleted by the site’s administrators as soon as they became aware of such infringements.
With reference to its activity, the Respondent clarifies that the Respondent’s company provides domain name registration and hosting services on the basis of a license issued by the Telecommunication Communication Presidency and states that some of the domain names mentioned by the Complainant and not redirected to active web sites were registered by the Respondent for its customers and were expired as the customers did not wish to provide for the renewal.
The Respondent concludes that all the Complainant’s claims are meritless and groundless and requests the dismissal of the Complaint.
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 Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights; and
(ii) that the Respondent has 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 issue: the language of the proceeding
According to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
In the case at hand, as mentioned in paragraph 3, the Complainant originally submitted the Complaint in English, requesting that English be the language of the proceeding. After the Center’s communication that the language of the Registration Agreement is, according to the Center’s verifications with the competent registrar, Turkish, the Complainant provided for the translation of the Complaint in Turkish and requested that Turkish be the language of the proceeding. Subsequently, the Respondent voluntarily replied in English language, accepting English as the language of the proceeding.
In light of the fact that both parties have shown that they can effectively communicate in English and considering that the Respondent has opted for English as language of the proceedings and so did the Complainant when the Complaint was first filed, the Panel determines that the language of the proceeding be English.
B. Identical or Confusingly Similar
The Complainant has provided evidence of ownership of several trademark registrations constituted by the wording “kanal d” together with other letters and/or words or figurative elements.
The Panel has reviewed the trademark certificates attached to the Complaint and finds that the wording “kanal d” has to be considered as the most distinctive element of the Complainant’s trademarks and that, therefore, the disputed domain name is confusingly similar to the Complainant’s trademark.
See, along these lines, inter alia, Adaptive Molecular Technologies, Inc. v. Priscilla Woodward & Charles R. Thorton, d/b/a Machines & More, WIPO Case No. D2000-0006 (“While the domain ‘militec' is not identical to Complainant's MILITEC (& Design) and MILITEC-1 trademarks, as Complainant would have this panel believe (Amended Complaint, paragraph 13), it undoubtedly is confusingly similar, in that it is the primary, distinctive element of both of Complainant's trademarks. Moreover, Respondent does not dispute Complainant's trademark rights”) and Zwiesel Kristallglas AG v. WWW Enterprise Inc., WIPO Case No. D2005-1223, concerning the domain name <zwiesel.com>, (“The Panel accepts the Complainant's allegations that the word ‘zwiesel' is the essential element of the Complainant's marks (‘ZWIESEL GLAS' and ‘SCHOTT ZWIESEL') and is universally recognized and relied upon as identifying the Complainant”).
In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the trademarks in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
The Panel finds that the issue of the rights or legitimate interests in the disputed domain name is, in the case at hand, strictly connected with the bad faith requirement and deems therefore appropriate to analyze such issue in the following paragraph.
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 mentioned in the paragraphs above, the most dated trademark certificate for KANAL D (word and device) submitted by the Complainant is the Turkish trademark registration No. 203634 of August 26,1998, after the registration of the disputed domain name by Nurullah Ciftçi, who appears to be the head of the Respondent’s business, on December 31, 1997. The Panel notes that the Complainant mentioned (in the paragraph concerning the legitimate interest of the Complaint) that it apparently filed a trademark application on July 10, 1996 but does not specify if such date could correspond to the filing date of the mentioned trademark No. 203634.
Be it as it may, even if it can be supposed that - also in light of the registration of the domain name <kanald.com.tr> on October 8, 1996 by the Complainant, for which it was presumably required to provide evidence of a trademark application -, the Complainant had registered trademark rights at the time of the registration of the domain name, the Panel finds that the Complainant has not submitted evidence showing that the Complainant’s mark was, at that time, widely known in Turkey or otherwise concretely known by the Respondent, acting thus in bad faith.
The Panel finds, in particular, that the Complainant has failed to prove that it had common law or other trademark rights on the mark KANAL D at the time of the registration of the disputed domain name. The Panel notes that the core of the Complainant’s trademark KANAL D., which is constituted by the generic term “kanal” and the letter “d”, is rather descriptive in Turkish and, in fact, these two generic terms have solely been admitted as trademark and design (logos) and not as mere word marks. Since the UDRP is a pleading only proceeding, the statements and evidence submitted by the parties must be as complete as possible. A proof of a fact, therefore, cannot be deemed satisfied by assertions or suppositions, but requires concrete evidence. Moreover, when a trademark is not inherently distinctive, there is an onus on the complainant to submit convincing evidence of secondary meaning and distinctiveness acquired through the extensive use of the mark.
In addition, the Panel finds that the Complainant has not provided convincing evidence of the Respondent’s bad faith use of the disputed domain name, while the Respondent has submitted evidence of prima facie good faith and legitimate use of <kanald.com> in connection with a chat service, indicating that the term "Kanal" was at those times regularly used for chat services.
The Panel also notes that no reference has been made to the Complainant on the Respondent’s site and that no other evidence of bad faith use of the disputed domain name has been submitted by the Complainant, e.g., evidence that the Respondent registered the domain to sell it to the Complainant or to divert or otherwise confuse users as to the source or approval of its site by the Complainant.
As to the "forfeiture of rights", also called the doctrine of "laches", cited by the Respondent, the Panel finds that, even if bringing a Complaint after 14 years from registration is surprising, in light of the Rules and the scope of the Policy, whose remedies are injunctive rather than compensatory in nature, and whose aim is avoiding confusion in the future as to the source of communications, goods, or services, the equitable defense of laches does not properly apply to this proceeding. See, along these lines, Mile, Inc. v. Michael Burg, WIPO Case No. D2010-2011, Charter Communications, Inc. v. CK Ventures Inc. / Charterbusiness.com, WIPO Case No. D2010-0228,The E.W. Scripps Company v. Sinologic Industries, Tom Cruise v. Network Operations Center / Alberta Hot Rods, WIPO Case No. D2006-0560.
In light of the above, based on the statements and documents submitted to the Panel in the present proceeding, the Panel finds that the Complainant has failed to prove that the disputed domain name has been registered and is being used in bad faith.
Conversely, the Panel deems that, in light of the particular circumstances of this case, the most appropriate venue to resolve the present dispute between the parties could be a proceeding under Turkish law before the competent Court in Turkey, where it may have a different outcome.
For all the foregoing reasons, the Complaint is denied.
Dilek Ustun Ekdial
Thomas M. Legler
Dated: March 28, 2011