WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Turkcell Iletisim Hizmetleri A.S. v. Kerem Baser
Case No. D2011-1024
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 Kerem Baser of Istanbul, Turkey.
2. The Domain Name and Registrar
The disputed domain name <ozturkcell.com> is registered with GoDaddy.com, Inc (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 16, 2011. On June 16, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 18, 2011, the Registrar 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 June 22, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 12, 2011. The Respondent did not submit any formal Response. However, the Center is in receipt of an email communication from the Respondent of June 24, 2011.
The Center appointed Thomas Hoeren as the sole panelist in this matter on July 26, 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 one of the leading operators in GSM-based mobile communications in Turkey; its business started in February 1994. The Complainant’s TURKCELL service marks were registered on September 9,1996 with the Turkish Patent Office (TPO), (Registration Nos. 173130 and 174691), for “communication/telecommunication services via portable phones” in class 38. The Complainant’s TURKCELL trademark was registered as a Community Trademark before the Office for Harmonization in the Internal Market (OHIM) on January 4, 2002 (Registration No. 002525194). Since November 10, 1996 the Complainant has owned the domain name <turkcell.com.tr> and is still using this domain name legally.
The Complainant promoted its services and brand with Öztürkcell advertorial videos and commercials. This commercial video has been widely broadcasted in Turkey since the end of the April 2011.
The Respondent registered the disputed domain name on May 5, 2011. It has not used the disputed domain name for constructing its own website. The Complainant sent an email to the Respondent, on May 16, 2011, for the transfer of the disputed domain name. Following this email, on May 24, 2011, the Respondent sent a response to the Complainant and asked for 30.000 Turkish Liras (USD 18000) for the disputed domain name (Annex 15 of the Complaint).
5. Parties’ Contentions
The Complainant contends that:
1. The disputed domain name is substantially similar to the Complainant’s trademark TURKCELL.
2. The Respondent has no rights or legitimate interests in respect of the domain name.
3. The Complainant contends that the Respondent had knowledge of the ownership rights of the Complainant in the service mark at time of registration of the disputed domain name, and the fact that the Respondent asked for 30.000 Turkish Liras for the transfer of the domain name evidences bad faith registration and use.
The Respondent did not reply to the Complainant’s contentions. However, the Center is in receipt of an email communication from the Respondent on June 24, 2011, indicating in part as follows:
“i want to explain the case shortly by the circumstances of fact. when i bought this domain name there was nothing about "ozturkcell" , adv started after i bought this domain. if they had started to advs they would have bought the domain name for sure ,can u imagine that such a big company like that forgot to buy the domain name before they start to commercials , it is impossible. after they started to advs they sent me an email and wanted me to send them a price quotation until that time i would never contacted them after they sent me an e mail i just responded and they used this e mail against to me !!! till this time i would never been bad faith and never mislead s.t. . “
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute:
“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 seems applicable.”
Paragraph 4(a) of the Policy states that, for the Complaint to be granted, the Complainant must prove each of the following:
(i) that the domain name registered by the Respondent is identical or confusingly similar to the trademarks or service marks in which the Complainant has rights; and
(ii) that the Respondent has no rights or no legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is used in bad faith
A. Identical or Confusingly Similar
The Complainant has rights to the TURKCELL marks. This is supported by the evidence of goodwill and use submitted by the Complainant and the relevant certificates of registration and trademark applications (see Turkcell Iletisim Hizmetleri A.S. v. Celile Gun, WIPO Case No. D2008-0128; Turkcell İletişim Hizmetleri A.S. v. arishediyelikesyasan.vetic.a.s, Kerim Guzelis, WIPO Case No. D2011-0809.
The Complainant asserts, and the Panel agrees with the following:
The disputed domain name is a combination of two separate words, namely “oz (öz)” and “turkcell”. TURKCELL is the Complainant’s main trademark which is known by many people in Turkey and internationally. The Complainant’s trading operations, advertisements and promotions are conducted under the mark TURKCELL continuously since 1994. The second word in the trademark is ”oz (öz)“, which gives the meaning of “the real, the original” when it is put before something to compare with. In this context, the Respondent tries to give the impression of “they are the original TURKCELL”. The disputed domain name <ozturkcell.com> is confusingly similar to the Complainant’s TURKCELL mark because the domain name wholly incorporates TURKCELL. Using the generic and descriptive term ”oz (öz)“, with the Complainant’s main trademark TURKCELL does not eliminate the visual and conceptual similarity with the Complainant’s TURKCELL trademarks. The Panel therefore finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy by showing that the disputed domain name is confusingly similar to its trademarks.
B. Rights or Legitimate Interests
The Complainant has not licensed or otherwise permitted the Respondent to use the mark TURKCELL or to apply for or use any domain name incorporating that mark. The Respondent has no relationship with or permission from the Complainant for use of its service mark. The Complainant has prior rights in that service mark, which precede the Respondent’s registration of the domain name. The disputed domain name is not a mark by which the respondent is commonly known. The Respondent is not an institution and has never been licensed or granted permission from the Complainant to use its mark. The use of a domain name as a pay-per-click website does not give the Respondent rights or legitimate interests in the disputed domain name. The Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a list of indicative circumstances that suggest bad faith registration, however, such list is not exhaustive and a finding of bad faith depends on the circumstances of the case. Furthermore, the addition of the descriptive term “oz (öz)” added before the mark TURKCELL is very misleading as the average consumer would expect the Complainant or its affiliates to use the disputed domain name in connection with the mark TURKCELL to identify its goods or services.
It is clear that the Respondent has registered the disputed domain name to derive benefits from the Complainant for huge consideration in excess of the domain name’s out-of-pocket registration costs. As mentioned above, the Complainant sent an email to the Respondent, on May 16, 2011, for the transfer of the domain name in question. Following this email, on May 24, 2011, the Respondent sent a response to the Complainant and asked for 30.000 Turkish Liras (equivalent to USD 18000) for the disputed domain name. Therefore, it is clear that the Respondent has registered the disputed domain name to gain excessive profits in excess of the domain name’s out-of-pocket registration costs. Moreover, the disputed domain name is used as a pay-per-click website and such use falls under paragraph 4(b)(iv) of the Policy. Finally, it does not matter whether the Respondent has registered the disputed domain name before the ozturkcell videos or not. As it stated in its mail, it knew the trademark rights of the Complainant (“the big company”); it only had the feeling that it could register and use a domain name including the trademark if the Complainant itself does not register the full word “ozturkcell”. This impression is wrong and is no justification for the approach of the Respondent as it obviously knew the company and its highly known company name/trademarks.
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 <ozturkcell.com> be transferred to the Complainant.
Dated: August 9, 2011