WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Ets Ersoy Turistik Servisleri Anonim Şirketi v. ETS Yemekçi Gida Turizm San ve Tic Ltd Şti, ETS GÜVENLİK ANONİM ŞİRKETİ / InterBirim.com

Case No. D2011-0934

1. The Parties

The Complainant is Ets Ersoy Turistik Servisleri Anonim Şirketi of Istanbul, Turkey, represented by Boğaziçi Patent Marka ve Danısmanlık Limited Şirketi, Turkey.

The Respondent is ETS Yemekçi Gida Turizm Sanve Tic Ltd Şti, ETS GÜVENLİK ANONİM ŞİRKETİ / InterBirim.com of Istanbul, Turkey, represented by DESI Patents & Trademarks Office, Turkey.

2. The Domain Name and Registrar

The disputed domain name <ets-grup.com> is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 30, 2011. On May 30, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On May 31, 2011, GoDaddy.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the then-named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 8, 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 amended Complaint on June 20, 2011.

The Center verified that the Complaint together with the amended 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 June 27, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 17, 2011. The Response was filed with the Center on July 18, 2011.

The Center appointed Kaya Köklü as the sole panelist in this matter on July 27, 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.

In accordance with the Rules, paragraph 11, and since the Parties have not agreed otherwise, the language of the administrative proceedings is the language of the Registration Agreement (i.e., English).

4. Factual Background

The Complainant is a Turkish company mainly active in the Turkish tourist industry, comprising several Turkish subsidiaries like Etstur, Atlasjet, Voyage Hotels and Jetset. The first member of the group was established in 1991.

The Complainant and its subsidiaries own a large number of combined word and figurative trademarks in Turkey for various goods and services. These goods and services mainly concern the tourist industry sector, like temporary accommodation services. All trademark registrations indicated in the Complaint commonly comprise the sign “ETS”.

Further to its trademark rights, the Complainant has registered and operates several domain names comprising the sign “ETS”, e.g. <ets.com.tr>, <etstur.com>, <etsair.com>, <etscar.com> and <etskargo.com>.

The disputed domain name <ets-grup.com> was created on November 9, 2006 and is still in use by the Respondent.

The Respondent is also a Turkish company active in mainly three business sectors, namely in providing security services, professional cleaning services and catering services. The parent company of the Respondent, E.T.S. Endüstriyel Temizlik ve Hizmet Sanayi Ltd. Sti., was initially established in 1986. In 2003, the company owners decided to reorganize their corporate structure by dividing the company into three separate legal entities, each covering the different business sectors mentioned above. All these three companies are still owned by the same owners of the initial parent company established in 1986 and carry the sign “ETS” in their company name. Two of them are on behalf of the Respondent part of these administrative proceedings.

According to documents provided by the Parties, the Complainant has initiated trademark infringement proceedings against the Respondent in Turkey. Upon request of the Complainant, the Turkish IP court in Istanbul has granted a preliminary injunction order against the Respondent prohibiting the use of the disputed domain name <ets-grup.com>. The Respondent has filed an opposition against this court order requesting the dismissal of the Complainant’s injunction application. The oral hearing in the Turkish infringement proceedings is scheduled for November 2011.

5. Parties’ Contentions

A. Complainant

The Complainant alleges to be the largest company group in Turkey, with nearly 4.000 employees and 328 agencies. It is also alleged that the subsidiary of the Complainant, Etstur, has been awarded as the Best Company Adopting Customer Satisfaction in the years 2007 and 2009.

As a remedy in these administrative proceedings, the Complainant requests the transfer of the disputed domain name for the following reasons:

First, the Complainant believes that the disputed domain name is identical or at least indistinguishably similar to the Complainant’s trademarks. Second, it is argued that the Respondent has no rights or legitimate interests in using the disputed domain name. In the Complainant’s view, the Respondent has registered the disputed domain name solely for the purpose to take advantage of the Complainant’s reputation by creating confusion among Internet users. It is alleged that consumers may easily be misled to consider the Respondent as a group member of the Complainant.

Last but not least, the Complainant cannot conceive any possibility that the Respondent did not know the Complainant’s company group when registering the disputed domain name. In the Complainant’s view, this shall be an indication for the Respondent’s “ill intention”.

B. Respondent

The Respondent requests that the Complaint shall be denied.

The Respondent argues that the disputed domain name is neither identical nor similar to the Complainant’s trademarks, in particular as each of the Complainant’s trademarks comprises distinctive figurative elements which are not used by the Respondent.

Additionally, the Respondent is of the opinion to have a right and a legitimate interest to use the disputed domain name. In particular, it is alleged that the sign ETS as used in the disputed domain name is an abbreviation of the parent company’s name, Endüstriyel Temizlik ve Hizmet Sanayi Ltd. Sti., which was established nearly 5 years before the first company registration of the Complainant.

Furthermore, it is argued that the Respondent is commonly known by the disputed domain name since its registration in 2006. It is alleged that there has not been any confusion among customers so far and that it does not seem to be bona fide to file a complaint 5 years after the registration of the disputed domain name. According to the Respondent’s view, the latter shall in particular be true as both Parties were once located in Istanbul in the same neighborhood. Hence, the Respondent believes that the Complainant must have known the existence of the Respondent and the use of the disputed domain name for many years.

It is further alleged that more than 40 companies are registered in the Istanbul Chamber of Commerce having business names comprising the sign ETS, although not affiliated with the Complainant.

6. Discussion and Findings

According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint and the Response.

In accordance with paragraph 4(a) of the Policy, the Complainant is obliged to prove that each of the three following elements is satisfied:

(i) The disputed domain name is identical or confusingly similar to the trademark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) The disputed domain name has been registered and been used in bad faith.

Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled (see Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228).

I. Procedural Aspects

Before going into the details of the case, the Panel will first address two procedural aspects relating to the late response of the Respondent and the pending court proceedings in Turkey.

a) Late Response

The Respondent failed to file a Response within the deadline of July 17, 2011. Instead, the Response was filed with a delay of one day on July 18, 2011.

The deadline set by the Center expired on a Sunday, which is a non-working day not only in Turkey. The submission of the Response in the next working day does in the Panel’s view not impair any rights or legitimate interests of the Complainant. This is particularly the case, as the delayed Response has not led to any substantial delay in the administrative proceedings.

Hence, the Panel exercises its discretion to admit the late Response and affirms to consider the provided information and evidences in its decision.

b) Pending court proceedings in Turkey

According to the case file, there are pending court proceedings regarding the use of the disputed domain name before the Turkish IP court in Istanbul, Turkey. As evidenced by the provided documents in the case file, the Turkish IP court has already issued a preliminary injunction order prohibiting the Respondent’s use of the disputed domain name on the basis of trademark and unfair competition rules.

In accordance with paragraph 18 (a) of the Rules, the Panel shall have the discretion to decide whether to suspend or to terminate administrative proceedings or to proceed to a decision if there are any legal proceedings initiated before ordinary courts prior or during UDRP proceedings.

In line with previous UDRP decisions, the Panel exercises its discretion to issue a decision, recognizing that this does not prevent the Parties to continue their litigation before Turkish courts, if dissatisfied with the result in these administrative proceedings (see Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187).

II. Merits of the Case

Concerning the assessment of the merits of the case, it is noted that limited independent research, by visiting the Internet site linked to the disputed domain name, has been performed by the Panel on August 6, 2011. The competence of the Panel to perform such independent research is in line with previous UDRP decisions (see, e.g., Hesco Bastion Limited v. The Trading Force Limited, WIPO Case No. D2002-1038).

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s series of ETS trademarks as provided in the Complaint.

First, the Panel confirms that the Complainant has satisfied the threshold requirement of having trademark rights in Turkey regarding the mark ETS. The Complainant has provided sufficient evidence showing that it owns a large number of figurative trademarks incorporating the sign ETS for various goods and services.

Although not identical, the disputed domain name fully incorporates the sign ETS, which is a distinctive part of the Complainant’s trademarks.

The disputed domain name mainly only differs from the respective trademarks by the addition of the generic Turkish term “grup”, which means “group” in the English language.

In the Panel’s view, the addition of the generic term “grup” does not negate the confusing similarity between the Complainant’s trademarks and the disputed domain name. The Panel finds that the incorporation of “grup” is purely descriptive and does not create a new distinctiveness separate from the Complainant’s trademark ETS.

In other words, the Panel is of the opinion that the disputed domain name which incorporates “ETS” as the distinctive part of the Complainant’s registered trademarks is sufficient to establish a confusing similarity for the purpose of the Policy.

Hence, the Panel concludes that the first requirement under paragraph 4 (a) of the Policy is fulfilled.

B. Rights or Legitimate Interests

To begin with, the Panel affirms that the burden of proof concerning the second requirement under paragraph 4(a) of the Policy in principle remains with the Complainant. The Panel is fully aware that in some cases, this may result in the impossible task of proving a negative, as the evidence needed to show the Respondent’s lack of rights or legitimate interests may be within the knowledge and sphere of the Respondent. However, the Panel agrees in line with prior UDRP panels that in the latter case, the Complainant is at least required to make out a prima facie case before the responsibility shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name in order to meet the requirements in paragraph 4(a)(ii) of the Policy (see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

The Panel finds that the Complainant has not made out a prima facie case sufficiently demonstrating the Respondent’s alleged lack of rights or legitimate interests in the disputed domain name.

It is evidenced by the provided documents that the Respondent’s parent company has been established in 1986, already comprising and using the abbreviation “E.T.S.” in its company name standing for “Endüstriyel Temizlilik ve Hizmet Sanayi Ltd. Sti”. It is undisputed that the abbreviation “E.T.S.” is used for more than 25 years - first by the parent company of the Respondent and, since 2003, by the affiliated Respondent itself. The Panel cannot exclude that according to Turkish law, the Respondent is entitled to claim firm name rights in the sign “ETS” derived from the prior use by its parent company. In other words, the Respondent may benefit from any name right deriving from the early company registration of the parent company in 1986.

As the Complainant was not established before 1991 – which is 5 years later than the registration of the Respondent’s parent company – the Panel cannot exclude existing firm name rights of the Respondent in the sign “ETS”. At least, the Complainant failed to provide any facts or legal arguments substantiating the opposite.

The Panel affirms that it has taken notice from the Turkish IP court order, prohibiting the Respondent to further use the disputed domain name. The Turkish IP court explicitly confirmed in its preliminary order that the Respondent has a right to use the sign “ETS”. The preliminary injunction was however granted as the court was of the opinion that the addition of the term “grup” in the disputed domain name may cause the wrong impression that the Respondent is a member of the Complainant’s company group (which is in the Panel’s view rather an unfair competition than a trademark infringement argument).

The Panel finds that it would not be appropriate to assess the Turkish IP court decision in detail, in particular not whether the additional use of the term “grup” may in fact constitute an unfair competition behavior. However, the Panel recognizes that the Turkish IP court explicitly affirmed that the Respondent may have name rights in the sign “ETS”.

The Panel believes that this rather indicates a prima facie case that the Respondent is entitled and has a right to use the sign ETS within the disputed domain name. The Complainant at least failed to convince the Panel of the opposite.

Without prejudice to the pending litigation proceedings in Turkey and taking into account all facts and arguments provided by the parties, the Panel finds that the Complainant has not fulfilled the second requirement under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

In light of the legal assessment above, there is no need for a detailed discussion of bad faith registration and use of the disputed domain name anymore. However, the Panel would like to take the opportunity to also render some arguments, why the Complainant also failed to sufficiently demonstrate the Respondent’s alleged bad faith conduct.

As indicated above, the Respondent may benefit from company name rights in the sign “ETS” derived by its parent company established in 1986, i.e. 5 years before the Complainant initially started its business. Hence, it is already questionable, whether using the abbreviation of someone’s own company name in a domain name may be suffice to exclude bad faith registration and use.

Furthermore, the Panel has not the impression that the Respondent is a typical cybersquatter. When the Panel visited the disputed domain name, it could not identify any indication that the Respondent may try to benefit from misled consumers or to tarnish the Complainant’s trademark rights. The Complainant did at least not provide sufficient facts and arguments to convince the Panel that the Respondent does not make a bona fide use of the disputed domain name.

The confusing similarity of the relevant company signs as such is however not sufficient to successfully argue a bad faith registration and use. The Complainant’s additional argument that the Respondent must have known the Complainant’s trademarks when registering the disputed domain name is – in light of the discussion above – also not enough to assess bad faith registration and use by the Respondent. This is in particular the case, as the Panel has the overall impression that the Respondent (erroneously or not) relied on own company name rights in the sign “ETS” when registering the disputed domain name in the year 2006. In the Panel’s view, this would exclude bad faith registration by the Respondent.

Apart from the question whether the Respondent in fact acted in bad faith or not, the Complainant at least failed to provide sufficient evidence, which may justify the Panel’s assessment of a bad faith registration and use of the disputed domain name in the present case.

Hence, the Panel finds that the Complainant has also not fulfilled the third requirement under paragraph 4(a) of the Policy.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Kaya Köklü
Sole Panelist
Dated: August 10, 2011