WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
KOC HOLDING A.S v. Mr. Ozguc Bayraktar
Case No. D2011-1098
1. The Parties
The Complainant is KOC HOLDING A.S, of Istanbul, Turkey, represented by Istanbul Patent & Trademark Consultancy Ltd., Turkey.
The Respondent is Mr. Ozguc Bayraktar, of Istanbul, Turkey.
2. The Domain Name and Registrar
The disputed domain name <kocegitim.com> is registered with Name.com LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 29, 2011. On June 29, 2011, the Center transmitted by email to Name.com LLC. a request for registrar verification in connection with the disputed domain name. On June 30, 2011 Name.com LLC. 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 July 4, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 24, 2011. On July 8, 2011, the Center received an email communication from the Respondent in which it stated it had received emails from the Center and would need “some time” to prepare its defense. On July 10, 2011, the Respondent sent a supplemental filing regarding panel appointment. On July 13, 2011, the Center responded noting the Respondent’s option to elect a three-member panel. On July 12, 2011, the Center received a supplemental filing in which the Complainant requests to add a new domain name to the proceeding. On the same date, the Center sent a communication to the parties informing the parties that the supplemental filing request would be forwarded to the Panel for determination pursuant to its discretion. On July 24, 2011, the Respondent sent a communication to the Center and requested an extension to the due date for Response for translation purposes. On July 25, 2011, the Center acknowledged receipt of sought comment from the Complainant regarding the extension request. On July 26, 2011, the Center acknowledged receipt, and noting a lack of exceptional circumstances per Paragraph 5(d) of the Rules, declined to extend the Response due date, but it sent another communication containing some information and requested again for a time extension for the translations. On July 27, the Respondent sent two communications to the Center with another request for time extension and some questions relative to the appointment of Panelists. On the same date, the Panel responded to the Respondent queries. On July 28 and 29, 2011, the Center reminded the Respondent regarding its option to elect a three-member panel.. On July 29, 2011, the Center notified the parties about the commencement of panel appointment process.
On August 4, 2011, the Centre received two email communications from the Respondent, whereby it asked for the transmission of case file and inquired as to the deadline for submitting a response. On the same day, the Centre acknowledged receipt of the Respondent email communications and reminded the Respondent that the due date for response was July 24, 2011. On August 5, 2011 the Respondent received a list of the materials provided to the Panel for the proceeding. On August 6, 2011, the Respondent transmitted by email to the Center its response along with its annexes, . In this email, the Respondent stated that it was late due to their intensive business period and gave a brief explanation about its response. Further to the late Response of the Respondent, the Complainant filed an objection to the submission of the Respondent. On August 8, 2011, the Center transmitted these email communications and annexes to the Panel,
The Center appointed Selma Ünlü as the sole panelist in this matter on August 2, 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.
Pursuant to its discretion, the Panel has declined Complainant’s request to add additional domain name to the proceedings. See, e.g., WIPO Case No. D2007-0547, and WIPO Case No. D2011-0571. See further below.
Firstly, it is convenient to deal with the procedural issues in this case such as to what extend the late Response and the Complainant’s additional filing for a further domain name should be taken into account.
Procedural Issue- Late Response
The Respondent sent several emails communication to the Center, stating that the Respondent is a legitimate Limited Company since 1993 , named Koç Eğitim, and requesting for time extension for submitting a response. On July 26, 2011 the Center explicitly refused its extension request, but nevertheless pointed out to the Respondent that it could give a late Response, which would be forwarded to the Panel for determination as to admission and weight. The Respondent filed its response after the deadline, on August 6, 2011, 12 days after the time limit and over one month later it had received the Center notification of Complaint and Commencement of Proceeding. The Panel finds that, the submission of a late response will not be accepted. As stated in the reasoning of the Center’s refusal on July 26, 2011, Paragraph 5(d) of the Rules requires exceptional circumstances for the time extension by the Center. However, of course, the Panel has the discretion to so accept a late-response depending on the circumstances.
The Panel is of the opinion that Respondent did not give an exceptional reason for the late response. Therefore, the Panel finds that the Respondent’s contention is not an exceptional case pursuant to Paragraph 14 of the Rules and accordingly, decided to refuse the Respondent’s late submissions.
Procedural Issue- Reasons for declining to consider the Additional Domain Name
First of all, as it is understood from the case file, the request from the Complainant was received after registrar verification, notification of the Complaint to the Respondent, and commencement of the proceedings. In accordance with the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition which draws a distinction between the addition of domain names prior to the formal commencement of proceedings and after notification of the Complaint to the Respondent, it states that “Any request for addition of domain names to a complaint only after it has been notified to the respondent and the proceeding has been formally commenced on that basis would normally need to be addressed by the panel (on appointment). Panels have in some cases been reluctant to grant such requests, where received only after appointment. Where panels grant such requests, they would typically order a partial recommencement of the procedure to allow a proper response opportunity in relation to the added domain names.”
At this point the Panel refers to Department of Management Services, State of Florida v. Digi Real Estate Foundation, WIPO Case No. D2007-0547, in which the panel refused the addition of a domain name stating that “(…) the addition of a new domain name after a sole panelist has been appointed is inconsistent with the Panel’s duty to ensure the Parties are treated with equality. Procedural equality means that each party must have the option of having the dispute determined by a three member panel (see paragraph 3(b)(iv), 5(b)(iv) and (v) and 5(c) of the Policy). However, if the amendment to the Complaint was now allowed, and a new domain name added, then the Respondent would have lost the right to have the dispute regarding the additional domain name determined by a three member Panel.”
Therefore the panel finds that the Complainant’s request to add further domain name should be refused.
4. Factual Background
The facts stated in the Complaint are as follows:
(1) The Complainant Koç Holding A.Ş. is Turkey’s leading industrial and service group in local and international markets in various areas such as automotive, energy, consumer durables and finance sector.
(2) Koç Ticaret A.Ş. was established in 1938 which developed the Koç Group and Koç Holding A.Ş. was founded in 1963.
(3) The Koç School founded in 1988 by the Vehbi Koç Foundation as a University Preparatory School. In 1998, an Elementary School added to Koç School which is fully accredited by the Turkish ministry of Education and has more than 2000 students from kindergarten to 12th grade. In 1993, Koç University which is one of the leading universities in Turkey, was founded as a non-profit private university in Istanbul.
(4) The Complainant registered its trade and service marks KOC numbered 99/021873, 2004/15189 and 2006/22509 respectively on 15.12.1999, 25.05.2004 and 15.05.2006.
(5) The Complainant registered some other trademarks regarding education, namely KOC TOPLULUGU EGITIM VE GELISIM YONETIMI SISTEMI (KOCAKADEMI), KOC UNIVERSITY, KOC OZEL ILKOGRETIM OKULU VE LISESI THE KOC SCHOOL device and KOC UNIVERSITESI respectively on 02.09.2004, 02.06.2006, 12.08.2003 and 02.06.2006.
(6) The trade and service mark KOC numbered 003428513 and dated 29.10.2003 was registered as Community Trademark (CTM) before the Office of Harmonization in the Internal Market (OHIM).
(7) The Complainant’s trademarks KOC numbered 2004 15189 and 99 021873 were declared by TPI as well-known trademarks.
(8) The Complainant created the disputed domain name <koc.com.tr> on February 09, 1996 , the domain name <kocschool.k12.tr> was created by Vehbi Koç Vakfi Özel İlköğretim Okulu ve Lisesi, on July 29, 1999, and the domain name <ku.edu.tr> was created by Koc Üniversitesi on October 20, 2000.
(9) The disputed domain name <kocegitim.com> was created on December 21, 2008 by the Respondent.
The facts stated in the e-mail communication dated July 08, 2011 by the Respondent which is regarded as a response are as follows:
(1) The respondent is the administrator of the disputed domain name and the owner of the disputed domain name is Koç Eğitim.
(2) Koç Eğitim was founded in Turkey as a legitimate limited company since 1993.
Panel’s observation of the case file (especially Annex 15 of the Complainant which is the printouts of the webpage having the disputed domain name) reveals the following:
(1) “Koç Eğitim” phrase has been used for 21 years.
(2) Education at the foreign countries under the KoçAbroad mark is given.
(3) Education services via its High School named Koç Eğitim Kolejleri and Koç Eğitim Lisesi is given.
(4) There are 19 branches in Istanbul and Turkey.
(5) Under the print-outs taken from the webpage of the disputed domain name, <hhtp://www.kocegitim.com.tr> is written, so the disputed domain name is directed to this domain name which can only be taken by National Registrar ODTU if there was a legitimate right.
5. Parties’ Contentions
The Complainant requests the Panel to issue a decision transferring the disputed domain name to the Complainant on the following grounds:
(i) The disputed domain name is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name is registered and is being used in bad faith.
(i). Identity or Confusingly Similarity
The Complainant alleges that the disputed domain name is identical to the mark in which Complainant has rights since it is a combination of two separate words KOC and EGITIM. EGITIM means “education” in Turkish and KOC is the trademark and company name of the Complainant.
The Complainant states that the disputed domain name wholly incorporates KOC and since KOC is so famous, it may constitute confusion in the minds of public and Internet users. Moreover, the Complainant argues that using the generic word “egitim” does not evaluate the confusion but, on the contrary, it creates an association with the Complainant’s mark since the Complainant provides education services via its schools and university. At this point the Complainant refers to Guccio Gucci S.p.A. v. Zhou Guodong, WIPO Case No. 2010-1695, in which the Panel concluded that “the inclusion of prefixes and suffixes do not successfully distinguish the Disputed Domain Names from the trade mark GUCCI.”
The Complainant also refers to the Turkcell Iletisim Hizmetleri A.S. v. Celile Gun, WIPO Case No. D2008-0128, in which the Panel is of the opinion that “The use of a generic term (i.e. “technology” or the translated version of the Complainant’s mark does not, by itself, remove the element of confusion similarity in the context of proceeding. Although the word “technology” on its own is a generic word, the use of the Complainant’s TURKCELL mark in combination therewith renders The Disputed Domain Name confusingly similar to the Complainant’s TURKCELL and TURKCELLTEKNOLOJI marks.”
The Complainant further mentions the panel finding for Turkcell Iletisim Hizmetleri A.S. v. Cennet Iletisim Dis.Tic.Ltd.Sti , WIPO Case No. D2008-0756: “The disputed domain name is <turkcellparcakontor.com> and the Complainant’s mark is TURKCELL. The disputed domain name incorporates the TURKCELL mark in its entirety. It also has the Turkish words “parca” and “kontor” meaning “peace” and “units” respectively. These words are descriptive and generic to the industry to which the Complainant belongs. (…) The Panel (…) finds that the disputed domain name is confusingly similar to the trademark and The Disputed Domain Name.”
(ii) Rights or Legitimate Interests
The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name since the Respondent is not a licensee of the Complainant and does not have the Complainant’s permission or authorisation to use the trade and service marks of the Complainant that includes KOC. Thus, the Complainant alleges that the Respondent tries to create a connection to the Complainant and its trademark KOC.
The Complainant further alleges that the disputed domain name is not a mark by which the Respondent is commonly known. Also the Complainant refers to the Compagnie de Saint Gobain v. Com- Union Corp., WIPO Case No. D2000-0020, in which the Panel found no rights or legitimate interests as respondent was not commonly known by the mark or never applied for a licence or permission from the complainant to use the trademarked name.
Moreover, the Complainant argues that the Respondent was fully aware of the Complainant’s trademark KOC at the time of the registration of the disputed domain name. The Complainant KOC is a well-known trademark and company. The Respondent is a Turkish citizen and Turkey resident. It is not possible for it, not to be aware of the well-known Koç’s trademarks. Thus, the Complainant refers to WIPO Case No. D2009-0938, Koc Holding A.Ş. v. KEEP B.T. <koc.com>. In this case, the Panel concluded that “… as the Respondent in Turkey, considering the size of the Complainant’s business, it is unlikely that the Respondent was unaware that KOC was a famous mark at the time of the registering the disputed domain name.”
(iii). Registered and Used in Bad Faith
At first side, the Complainant address the WIPO Case No. D2006-0319, Petrol Ofisi A.S. v. Ozguc Bayraktar <petrolofisi.com> and <petrolofisi.net>, in which the Respondent of the present case as well was found to have registered and used in bad faith a domain name reflecting the trademark of well-known companies without their prior consent.
The Complainant argues that the Respondent cannot ignore the fact that Koc is a well-recognized company in Turkey and its trade and service marks are commonly known, alleging that the Respondent was aware of that mark when it registered the disputed domain name. Further, the Complainant alleges that the Respondent cannot use the registered domain name without infringing on the trademark owner’s rights and refers to the WIPO Case No. D2000-0028, Celluar One Group v. Brien. In this case, the Panel found that “the Respondent’s registration of the domain name was necessarily in bad faith since the respondent knew about Cellular One’s mark and nevertheless registered a domain name that was entirely composed of that trademark and the country name China. The panel found bad faith registration based on the fact that it would have been impossible for the respondent to use the domain name as the name of any business or service for which it would be commercially useful without violating the Complainant’s rights in its trademark.”
The Complainant mentions Parfums Christian Dior S.A. v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226, and states that the awareness at the time of the registration of the disputed domain name is to be considered as an inference of bad faith.
Moreover, the Complainant refers to the Ferrari S.p.A. v. American Entertainment Group, Inc., WIPO Case No. D2004-0673, in which the Panel hold that “When it may be presumed that “the Respondent (…) knew of the renown of the Complainant’s trademarks”, a finding of “opportunistic bad faith” is in order.”
The Respondent stated in its e-mail communication dated July 08, 2011 that:
(1) The administrator of the disputed domain name is the respondent and the owner of the disputed domain name is Koç Eğitim,
(2) Koç Eğitim was founded in Turkey as a legitimate limited company since 1993.
Even though the Respondent requested a time extension, the Center did not grant a time extension to the Respondent and stated that their message dated July 08, 2011 shall be regarded as the Response if the Center does not receive any further communication by the due date.
A late submission was filed by the Respondent on August 06, 2011. However, as stated above, it was not taken into consideration.
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 where no Response has been submitted.
In accordance with paragraph 4(a) of the Policy, the Complainant must 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 is being used in bad faith.
Paragraph 4(a) of the Policy states that the Complainant has the burden of proving that all these requirements are fulfilled.
A. Identical or Confusingly Similar
The test for identical or confusing similarity under the Policy, paragraph 4(a) (i) is limited in scope to a direct comparison between the Complainant’s trademark and the textual string which comprises the disputed domain name. In this case, the Complainant has demonstrated trademark rights in the marks contains “KOC” phrase.
The Complainant well proved its well-known status and registered trademark rights on “KOC” phrase; the Panel evaluates this matter, by examining the similarity between the Complainant’s KOC trademarks and the disputed domain name. The disputed domain name contains the “KOC” trademark with the descriptive word “egitim”. The <kocegitim.com> incorporates the whole of the KOC trademark. In various decisions the addition of generic or descriptive terms to a distinctive trademark name is to be considered confusingly similar to the registered trademark. See, i.e. Allstate Insurance Company v. Moniker Privacy Services / Pablo Palermao, WIPO Case No. D2011-0198, Sanofi-Aventis v. US-Meds.com, WIPO Case No. D2004-0809 and F. Hoffman La Roche AG v.Pinetree Development, Ltd., WIPO Case No. D2006-0049. The Panel is of the opinion that the combination of “KOC” and “egitim” does not remove the similarity between the phrases.
In similar cases, Sanofi-Aventis v. Gideon Kimbrell , WIPO Case No. D2010-1559, Turkcell Iletisim Hizmetleri A.S. v. Vural Kavak, WIPO Case No. D2010-0010, Greenbrier IA, Inc. v. Moniker Privacy Services/Jim Lyons, WIPO Case No. D2010-0017, Zodiac Marine & Pool, Avon Inflatables Ltd and Zodiac of North America Inc. v. Mr. Tim Green, WIPO Case No. D2010-0024, the panels have found that adding descriptive words does not remove the likelihood of confusion between a trademark and a domain name incorporating said trademark.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark KOC, the first requirement under paragraph 4(a) of the Policy 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 [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 [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 [Respondent] are making a legitimate non-commercial 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 burden of proof lays on the Complainant who must demonstrate a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. Once the Complainant has made out a prima facie case, then the Respondent may, by, inter alia, showing one of the above elements, prove rights or legitimate interests in the disputed domain name.
The Panel finds that the Complainant has proved its earlier rights in the KOC trade and service marks and also the fame of KOC trademarks in Turkey. Also, the Complainant satisfactorily proved that it offered services under KOC before the creation of the disputed domain name. The Complainant has not granted the Respondent any rights or license to use said trade and service mark of KOC.
However, from the Annex 15 submitted by the Complainant, it is understood that the KOC EĞİTİM has been extensively used on educational services for 21 years. So, the evidence indicates that the disputed domain name is used in connection with an offering of services in commerce.
Although the use in connection with the sale of goods or services is apparent, our inquiry must go further since not all such use qualifies as bona fide use. "To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy." Ciccone v. Parisi, WIPO Case No. D2000-0847. In the case at hand, it is not proved that that Respondent adopted KOC EGITIM as a deliberate infringement of Complainant's rights. Rather, the selection was based on a long period of prior use of KOC on education services.
Besides, it is understood that the webpage containing the disputed domain name is directed to the webpage with the domain name <kocegitim.com.tr>. The domain names ending with “.tr” are given by a National Registrar ODTÜ upon the submission of a document showing that the main element of the domain name is a trade name, trademark or trademark application of the applicant. So, the Panel supposes that the Respondent has a trade name, trademark or trademark application which may show legitimate rights of the Respondent. Considering that the Respondent stated that the owner of the domain name is Koç Eğitim, which is a legitimate limited company since 1993, the Panel evaluates that the Complainant cannot duly prove that the Respondent does not have any rights or legitimate interests on the Domain Name.
The Panel is of the view that the Complainant has not proved that the Respondent does not have rights or legitimate interests in the disputed domain name, being the elements in paragraph 4(a)(ii) of the Policy. Accordingly, as the onus is on the Complainant, it has not been proved.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy enumerates four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the Respondent has registered the disputed 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 Respondent has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site 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 Respondent’s web site or location or of a product or service on the Respondent’s web site or location.
Complainant contends that Respondent registered and used the Domain Name in bad faith. In its Complaint, Complainant makes allegations of several specific acts perpetrated by Respondent that are indicative of bad faith use and registration. These contentions, however, are unsupported by the evidence. In fact, the record is devoid of any proof that, by acquiring the Domain Name, Respondent intended to confuse or deceive consumers in any manner. Specifically, the evidence does not show any circumstances where Respondent registered or acquired the Domain Name for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant or a competitor. There was no evidence that Respondent engages in a pattern of conduct to prevent others from using registered marks as domain names. Finally, no evidence was presented that shows Respondent procured the Domain Name to disrupt the business of Complainant or another competitor. See the American Eyewear, Inc. v. Thralow, Inc. WIPO Case No. D2001-0991.
What can be seen from the documents submitted by the Complainant is that "KOC EGITIM" has been used for education services for 21 years having 19 branches in Istanbul and Turkey. It sought to select a domain name that was a natural extension of its established business name.
The record is devoid of any proof of bad faith registration and use of the Domain Name on the part of Respondent. Complainant has also failed to meet its burden as to this element.
Although the disputed domain name <kocegitim.com> is confusingly similar to the Complainant’s marks, the Complainant has failed to show that the Respondent does not have rights or legitimate interests or there is a bad faith registration and use by the Respondent. Therefore, the Complainant's request is denied.
Dated: August 16, 2011