WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Turkcell Iletisim Hizmetleri A.S. v. Domain Admin, PrivacyProtect.org / tuncer altintopak
Case No. D2010-2206
1. The Parties
The Complainant is Turkcell Iletisim Hizmetleri A.S. of Istanbul, Turkey, represented by Istanbul Patent & Trademark Consultancy Ltd., Turkey.
The Respondent is Domain Admin, PrivacyProtect.org of Moergestel, the Netherlands / tuncer altintopak of Izmir, Urfali, Turkey.
2. The Domain Name and Registrar
The disputed domain name <turk-cell.org> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 16, 2010. On December 16, 2010, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name. On December 17, 2010, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 21, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on December 24, 2010.
The Center verified that the Complaint together with the amendment to 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 December 29, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 18, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 19, 2011.
The Center appointed Ugur G. Yalçiner as the sole panelist in this matter on January 28, 2011. 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 is a well-known GSM-based mobile communications company that has existed in Turkey since February 1994 and which later signed a 25 year GSM license agreement with the Turkish Ministry of Transportation in April 1998. As of July 2000, the Complainant's shares were listed on both the Istanbul Stock Exchange and the New York Stock Exchange. With 30.8 million subscribers as of September 30, 2006, Turkcell is being the third biggest GSMoperator in Europe.
As shown by Annex 3 of the Complaint, the Complainant operates its websites under its main domain names at “www.turkcell.com” and “www.turkcell.com.tr”, the latter of which the Complainant has held since November 10, 1996.
Additionally, as evidenced in its Complaint, the Complainant's service marks TURKCELL have been registered as of September 9, 1996 with the Turkish Patent Institute (Registration Nos. 173130 and 174691) regarding “communications/telecommunications services via portable phones” under class 38. The Complainant also owns a number of other trade and service marks including the word “Turkcell” in Turkey and abroad that are evidenced in its Complaint.
The disputed domain name <turk-cell.org > was created on September 7, 2010.
5. Parties’ Contentions
Identical or Confusingly Similar
With respect to paragraph 4(a)(i) of the Policy and paragraph 3(b)(viii), (b)(ix) (1) of the Rules Complainant contends that:
The Complainant TURKCELL ILETISIM HIZMETLERI A.S., which is well-known shortly as “TURKCELL” having been founded in 1994, does business not only in Turkey, but also internationally.
The Complainant’s service mark TURKCELL have been registered on September 9, 1996 with the Turkish Patent Institute (TPI), (Registration Nos. 173130 and 174691), on communication/telecommunication services via portable phones” in class 38, copies of the certificates of registration of these service marks are attached to the Complaint. Also some of the Complainant’s trade/service marks registered in Turkey with registration Nos. 200631, 2001 06686, 2001 06687, 2001 06688.
The trade/service mark TURKCELL was registered well before the creation date of the Respondent’s domain <turk-cell.org> as Community Trademark (CTM) before (OHIM) and also registered before United States Patent and Trademark Office.
The trademark TURKCELL was recognized as “well-known mark “by the Turkish Patent Institute.
Since November 10, 1996, TURKCELL is the legal owner of the domain name <turkcell.com.tr> and is still using this domain name legally.
TURKCELL is also the trade name of the Complainant.
The disputed domain name <turk-cell.org> and the word “Turkcell” is the Complainant’s main trademark and also its company name. The Complainant’s trading operations, advertisements and promotions are conducted under the mark TURKCELL and it has used this trademark continuously since 1994.
The disputed domain name <turk-cell.org> is identical to the Complainant’s TURKCELL mark because the domain name wholly incorporates "Turkcell". A hypen which is dividing the trademark into two words does not eliminate the visual and phonetic identity of the Complainant’s TURKCELL trademarks. Regarding to this issue, the Complainant refers to the precedent WIPO Cases such as Guinness UDV North America, Inc. v. UKJENT, WIPO Case No. D2001-0684 (<s-m-i-r-n-o-f-f.com>), Prada S.A. v. the peace company WIPO Case No. D2006-1404 (<pra-da.com>) and Ticketmaster Corporation v. Cecil Spafford, WIPO Case No. D2002-0944 (<ticket--master.com>).
And finally, due to the fame and well-known status of the Complainant, several attempts to use the Complainant’s trademark as a domain name solely or with another phrase has been prevented several times by UDRP panelists.
Rights or Legitimate Interests
With respect to paragraph 4(a)(ii) of the Policy and paragraph 3(b)(ix)(2) of the Rules, the Complainant contends that:
It has not licensed or otherwise permitted the Respondent to use the mark TURKCELL or to apply for or use any domain name incorporating that service mark.
The Respondent is clearly aware of the Complainant’s extensive goodwill and reputation in its service and trademark TURKCELL.
The Respondent has acquired no trademark or service mark rights and he has no common knowledge (as an individual, business, or other organization) that he is known by the domain name.
The Respondent was fully aware that the Complainant had established rights in the TURKCELL marks at the time it registered the Domain Name.
Registered and Used in Bad Faith
With respect to paragraph 4(a)(iii), 4(b) of the Policy and paragraph 3(b)(ix)(3) of the Rules Complainant contends that:
The Respondent does not actively use the disputed domain name.
The Respondent has placed no content on the site at <turk-cell.org> that relates to a business or has been created by the Respondent. As prior WIPO UDRP panels have held, the incorporation of a famous mark into a domain name, coupled with an inactive website, may be evidence of bad faith registration and use. So, the domain name was registered primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of the trademark for valuable consideration in excess of the domain name registrant’s out-of-pocket costs.
In accordance with previous decisions issued under the Policy, the Complainant is of the opinion that actual knowledge of Complainant’s trademark at the time of the registration of the disputed domain name is to be considered an inference of bad faith in many UDRP cases such as Parfums Christian Dior v. Javier Garcia Quintas and WIPO Case No. D2000-0226, (<christiandior.net>)
And finally, the registration and use of a domain name incorporating a famous mark is necessarily in bad faith where a respondent knew at the time of the registration that he could not make any actual use of the registered domain name without infringing on the trademark owner’s rights.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical or Confusingly Similar
Based on the evidence submitted by the Complainant containing several national and international trademark registrations and domain name registrations in relation to the mark, the Panel finds that the Complainant has successfully demonstrated registered rights on the TURKCELL mark. Further, as the disputed domain Name <turk-cell.org> incorporates the trademark TURKCELL in its entirety and the mere addition of a hyphen between the terms “turk” and “cell” does not avoid the risk of confusion with the Complainant's mark, the disputed domain name needs to be regarded as identical or at least confusingly similar to such mark.
The Panel recognizes the Complainant's reputation in its field of activities (and is satisfied with the fact that it is not likely for the Respondent to be unaware of the existence of the trademark TURKCELL). The Complainant established satisfactory evidence that TURKCELL is the Complainant's trademark which has been granted protection both in national and international jurisdictions.
Consequently, the Panel finds that the disputed domain name is identical or at least 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 [the 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 [the 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 [the 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 Panel finds that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and so the burden of proof has effectively been shifted to the Respondent, who is unable to adduce evidence to show that it has rights or legitimate interests in the disputed domain name.
The Complainant has shown that it has rights to the trademark TURKCELL and trade name TURKCELL both in Turkey and abroad. Furthermore, it appears that the Complainant has never licensed or authorized the Respondent to utilize the TURKCELL mark. The Respondent has not shown that it has any previous association or rights under the TURKCELL mark, association with the Complainant, or that the Respondent is currently known under that name.
In the absence of the Respondent's rebuttals to these claims, the Panel accepts as true the Complainant's contentions that the Respondent was not commonly known by the disputed domain name, knew of the Complainant's mark, and lacked authority to use the Complainant's mark. Additionally, the Respondent has not evidenced any existing intentions or preparations to use the disputed domain name in general as well as in a way that would not violate the Complainant's rights in the TURCKELL trade and service marks.
As a result 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
According to paragraph 4(a)(iii) of the Policy, the third element that a complainant must prove is that the domain name has been registered and is being used in bad faith.
The Panel finds out that the Complainant‘s commercial activities began in 1994 and today it is a leading mobile communication company in Turkey and the third biggest GSM operator in Europe, as well as one of the world's leading operators in international Roaming.
Moreover, the Panel is satisfied with the relevant evidence filed by the Complainant showing that it owns trademark registrations for TURKCELL, which have been registered before the Respondent’s registration of the disputed domain name on September 7, 2010.
The Respondent has also made no active use of the disputed domain name. In a number of previous cases, passive holding of a domain name was construed to fall within the meaning of paragraph 4(a)(iii) of the Policy, evidencing bad faith use in light of the circumstances. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (<telstra.org>).
In view of the foregoing, and in the absence of a rebuttal from the Respondent, the Panel finds that the Respondent was aware or must have been aware of the trademark TURKCELL before registering the disputed domain name <turk-cell.org>, which evidences bad faith registration and therefore the Complainant has met the requirements of 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 <turk-cell.org> be transferred to the Complainant.
Ugur G. Yalciner
Dated: February 9, 2011