WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Telekutu Iletisim Hizmetleri Ltd. Sti. v. Mesut Tahtaci Mrcnet Ltd. / MRC NET LTD / TELEKUTU
Case No. D2011-1361
1. The Parties
The Complainant is Telekutu Iletisim Hizmetleri Ltd. Sti. of Istambul, Turkey, represented internally.
The Respondent is Mesut Tahtaci Mrcnet Ltd. / MRC NET LTD / TELEKUTU, TELEKUTU all of Gazimagusa, Turkey (referred to for convenience in these proceedings as “Respondents”).
2. The Domain Names and Registrars
The disputed domain names:
<tele-kutu.net> are registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 10, 2011. On August 10, 2011, the Center transmitted by email to GoDaddy.com, Inc a request for registrar verification in connection with the disputed domain name. On August 10, 2011, GoDaddy.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 15, 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 August 15, 2011. 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 Respondents of the Complaint, and the proceedings commenced on August 16, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was September 5, 2011. The Response was filed with the Center on August 15, 2011. An Amendment to the Response was received on August 15, 2011.
The Center appointed Kaya Köklü as the sole panelist in this matter on October 3, 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 active in the telecommunication sector, providing international telecommunication services like Broad Band Telephony, Voice-Over-IP, ISP and PSTN. It was established in the year 2005.
Since 2006, the Complainant has been the registered owner of the Turkish word and figurative trademarks TELEKUTU and LINECUBE. According to the Turkish Trademark Register, trademark protection is claimed for various goods and services in the international classes 09, 38 and 42, inter alia for telecommunications and computer services.
Further to its trademark rights, the Complainant has registered and operates several domain names comprising the trademarks TELEKUTU and LINECUBE , e.g. <telekutu.com.tr>, <telekutu.com>, <telekutu.net>, <linecube.com>, <linecube.net> and <linecube.com.tr>.
The Respondents are located in the Turkish Republic of Northern Cyprus. It is undisputed that the Respondents were business partners and agents of the Complainant in Northern Cyprus in the years 2009, 2010 and 2011.
In 2011, the Respondents filed a trademark application regarding the words “telekutu” and “telekutu iltisim” for the Turkish Republic of Northern Cyprus. These trademarks were granted in February 2011 by the Northern Cyprus trademark authority.
In addition to the trademarks, the Respondent also registered the disputed domain names comprising the signs TELEKUTU and LINECUBE.
The disputed domain names <kibristelekutu.com>, <kibristelekutu.net>, <kktctelekutu.com>, <telekutukibris.com>, <telekutukibris.net>, <telekutukktc.com> were all registered on July 2, 2011; the disputed domain names <tele-kutu.com> and <tele-kutu.net> were registered on January 30, 2011; the disputed domain name <line-cube.com> was registered on December 26, 2010.
All disputed domain names are in use by the Respondents. On the websites linked to the disputed domain names, the Respondents offer similar, if not identical telecommunication services as the Complainant.
As shown on screenshots provided with the Complaint, the content of the websites linked to the disputed domain names are to a large extend either identical or at least close copies of the websites operated by the Complainant itself.
Based on the argument of “brandjacking”, the Complainant has filed trademark infringement and invalidation proceedings against the Respondents in Northern Cyprus. Further to this, the Complainant has applied for criminal sanctions against the Respondent on the bases of alleged fraudulent activities. Additionally, the Complainant has filed for own trademark protection concerning the trademarks TELEKUTU and LINECUBE in Northern Cyprus itself. Proceedings appear to be pending at the time of the Panel’s decision.
5. Procedural Issue: Consolidation of Multiple Domain Names.
The Panel notes that the Respondents are Mesut Tahtaci Mrcnet Ltd., MRC NET LTD and TELEKUTU, TELEKUTU. Pursuant to paragraph 3(c) of the Rules, a single complaint may be brought in respect of multiple domain names “provided that the domain names are registered by the same domain name holder.” In this case, the Panel is satisfied that the disputed domain names (and the websites to which they resolve) are subject to common control and that the consolidation would be fair and equitable to all parties (see paragraph 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)).
Applying this principle to the facts of this case this Panel finds that there is a common person that has control over the disputed domain names. The Panel will therefore, as previously noted, for purposes of convenience in this decision, refer only to “the Respondents.”
6. Parties’ Contentions
The Complainant alleges that it is one of the leading telecommunication companies in Turkey offering Broad Band Telephony, Voice-Over-IP services and a PSTN (“public switched telephone network”). It is alleged that the Complainant operates offices in Turkey, the United States (“USA”) and Northern Cyprus. Further it is asserted that the Complainant has established presences in Australia, Belarus, Canada, Cyprus, Germany, Hungary, Iraq, Israel, Italy, Nigeria, Northern Cyprus, Spain, Turkmenistan and Ukraine.
The Complainant alleges to be a victim of “brandjacking” by the Respondent and, hence requests the transfer of the disputed domain names in these administrative proceedings. The Complainant argues its requested remedy as follows:
First, the Complainant believes that the disputed domain names are identical or at least confusingly similar to the Complainant’s trademarks TELEKUTU and LINECUBE.
Second, it is argued that the Respondent has no rights or legitimate interests in using the disputed domain names. In particular, it is asserted that the Complainant has never granted a license or any other permission to the Respondent to use and exploit the Complainant’s trademarks. In the Complainant’s view, the Respondent has registered the disputed domain names solely for the purpose to take advantage of the Complainant’s reputation by creating confusion among Turkish speaking users living in Northern Cyprus and/or Turkey. It is alleged that consumers may easily be misled to consider the Respondent’s offers under the disputed domain names as an official service provided by the Complainant. The Complainant further alleges that the Respondent does not even have a legally required permission by the respective state authorities to provide telecommunication services in Northern Cyprus or in the rest of the world.
Last, but not least, the Complainant states that having been a business partner and agent for a number of years, the Respondent did register the disputed domain names well aware of the Complainants trademarks and business products. Additionally, the copying of large parts of the Complainant’s websites to the websites corresponding to the disputed domain names is another indication of the Respondent’s ill intention and bad faith registration and use of the disputed domain names.
The Respondent requests that the Complaint be denied.
The Respondent is of the opinion that it has a right or at least a legitimate interest to use the disputed domain names. In particular, it is alleged that due to the Respondent’s trademark registrations for TELEKUTU and TELEKUTU ILETISIM in Northern Cyprus, the Respondent shall have prevailing rights to use these signs in the territory of Northern Cyprus. In this regard, the Respondent asserts that its business is geographically limited to Northern Cyprus only.
7. 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 is obliged to prove that each of the three following elements are satisfied:
(i) The disputed domain names are identical or confusingly similar to the trademarks in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) The disputed domain names have been registered and are being 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.
At the same time, in accordance with the Rules, paragraph 14(b), if a party in the absence of exceptional circumstances does not comply with any provision of or requirement under the Rules or any request of the Panel, the Panel shall draw such inferences there from, as it considers appropriate.
Concerning the uncontested information provided by the Complainant, the Panel may as appropriately accept the provided reasonable factual allegations in the Complaint as true (see Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).
The Panel further notes that it has performed an independent research, by visiting the Internet sites linked to the disputed domain names, on October 13, 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).
Additionally, it is noted that the Panel has recognized the Second Edition of the WIPO Overview of Panel Views on Selected UDRP Questions (WIPO Overview 2.0”) and, where appropriate, will decide consistently with WIPO Overview 2.0.
Before going into further details of the case, the Panel will first address a procedural aspect relating to the pending court proceedings in Northern Cyprus. According to the case file, there are pending court and administrative proceedings initiated by the Complainant against the Respondent. These proceedings inter alia concern the use of the disputed domain names and the trademark registration of the signs TELEKUTU and TELEKUTU ILETISIM by the Respondent in Northern Cyprus.
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 or initiate new litigation before ordinary courts, if dissatisfied with the result in these administrative proceedings (see Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187).
A. Identical or Confusingly Similar
First, the Panel confirms that the Complainant has satisfied the threshold requirement of having trademark rights in the marks TELEKUTU and LINECUBE. According to the case file, the Complainant is the registered owner of the respective word and figurative trademarks in Turkey. Both trademarks were registered in Turkey well before the registration of the disputed domain names.
Second, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademarks in question. The disputed domain names <line-cube.com>, <tele-kutu.net> and <tele-kutu.com> are nearly identical reflections of the registered trademarks TELEKUTU and LINECUBE, simply differing by the use of a hyphen in the middle, which has no distinguishing effect.
The remaining disputed domain names fully incorporate the sign TELEKUTU. T hey additionally comprise the words “Kibris” or “KKTC” which stand for “Cyprus” or “Turkish Republic of Northern Cyprus” in the Turkish language, which is the official language spoken in Northern Cyprus. Both additions are of a generic and, hence a descriptive nature only. In the Panel’s view, the addition of such geographical terms does not negate the confusing similarity between the Complainant’s trademarks and the disputed domain names.
For the sake of completeness, the Panel also notes that the addition of a top level domain has no distinguishing effect and, as being a prerequisite of a domain name registration, is not to be considered within the assessment of identity or confusing similarity between the disputed domain names and the trademarks in question.
Given the findings above, 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 provided sufficient prima facie evidence that it has not granted a license or any other permission to the Respondent concerning the use of the trademarks TELEKUTU and LINECUBE.
The Panel is further of the opinion that the trademark registrations owned by the Respondent within the territory of Northern Cyprus are not sufficient to establish prevailing rights or legitimate interests in the disputed domain names.
The Panel has no doubts that the Complainant has prevailing trademark rights concerning the disputed domain names <line-cube.com>, <tele-kutu.net> and <tele-kutu.com> due to its prior trademark registration of the signs LINECUBE and TELEKUTU with the Turkish Patent Institute in 2006.
On the other hand, the Panel finds that one could consider to make a different assessment concerning the remaining disputed domain names, as they contain a territorial reference to a country, namely KIBRIS or KKTC (standing for Cyprus or the Turkish Republic of Northern Cyprus in the Turkish language) where the Complainant has no registered trademark rights in the trademark TELEKUTU as of the date of this decision.
The Panel, however, is of the opinion that the territorial indication KIBRIS or KKTC within the wording of the remaining disputed domain names as such is not sufficient to justify any prevailing rights or legitimate interests of the Respondent in the sign TELEKUTU + KIBRIS or + KKTC, for the following reasons:
Although the above mentioned remaining disputed domain names contain a territorial indication to Northern Cyprus, this does not necessarily lead to the argued conclusion that the services provided under these disputed domain names are limited to Cyprus only. The Respondent’s allegation in this regard is not convincing as the markets in Turkey and the Turkish Republic of Northern Cyprus can hardly be separated. In this respect, the Panel takes into consideration that both involved territories, the Republic of Turkey and the internationally not recognized Republic of Northern Cyprus, have strong cultural and economic ties. Indications of these strong relations between both countries are e.g. the same official language (Turkish) and the valid currency (the Turkish Lira).
Furthermore, the Complainant provided sufficient evidence that the websites linked to the disputed domain names, which are to a large extend unauthorized copies of the official websites of the Complainant, do not indicate a limitation of the offered services to people in Northern Cyprus only. In so much as, the Respondent did not demonstrate sufficient facts or arguments that could convince the Panel of the Respondent’s allegation. The Panel even doubts whether the Respondent in fact operates in the relevant field of online communication as it did not contest the Complainant’s allegation that the Respondent does not have the required administrative authorization to provide online telecommunication services, neither in Turkey nor in Northern Cyprus.
Finally, it is noted that the Complainant was the first to use the signs TELEKUTU and LINECUBE in the geographical region known as “Northern Cyprus”, which has also not been disputed by the Respondent. It is has not even been disputed that the Respondent has operated as an agent of the Complainant for the last three years. Therefore, the Respondent must have been well aware of the Complainant’s trademark rights when registering the disputed domain names in Northern Cyprus.
Hence, there are, in the view of the Panel, strong indications that the Respondent has in fact hijacked the Complainant’s trademarks. Bearing these circumstances in mind, the Panel cannot assess a prevailing right or legitimate interest of the Respondent in the disputed domain names even if it has registered the signs TELEKUTU and TELEKUTU ILETISIM as trademarks in Northern Cyprus. At least, it is concluded, that the Respondent failed in convincing the Panel that it has prevailing rights or legitimate interests in the disputed domain names.
The Panel, however, underlines that the Respondent may still try to file counterarguments in the pending ordinary and criminal proceedings in Northern Cyprus. This legal option shall not be prejudiced by the Panel’s decision.
Given the findings above, the Panel concludes that the second requirement under paragraph 4(a) of the Policy is fulfilled.
C. Registered and Used in Bad Faith
The Panel is further convinced that the Respondent has registered and used the disputed domain names in bad faith.
The Panel is well aware of the reputation and recognition of the trademarks TELEKUTU and LINECUBE in Turkey. As the Panel has found credible that both parties were business partner for some years, the Respondent must have known of both trademarks when registering the disputed domain names in Northern Cyprus.
In view of the Panel, it appears that the Respondent has registered and uses the disputed domain names solely for the purpose of creating an association with the recognized trademarks TELEKUTU and LINECUBE in order to mislead Internet users who may search for official information and services provided by the Complainant.
This assessment is supported by the fact that the Respondent has copied large parts of the Complainant’s official websites; to some extend even without bothering to make at least a little change in the wording.
For the foregoing reasons, the Panel cannot conceive of a good faith use of the disputed domain names by the Respondent.
The Panel therefore concludes that the disputed domain names were registered and used in bad faith and that the Complainant has also satisfied the third element of the Policy, namely, 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 domain names, <kibristelekutu.com>, <kibristelekutu.net>, <kktctelekutu.com>, <line-cube.com>, <tele-kutu.com>, <telekutukibris.com>, <telekutukibris.net>, <telekutukktc.com> and <tele-kutu.net> be transferred to the Complainant.
Dated: October 24, 2011