WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Turkcell Iletisim Hizmetleri A.S. v. Ozgur Karadag
Case No. D2011-2038
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 Ozgur Karadag of New York City, United States of America.
2. The Domain Name and Registrar
The disputed domain name <turkcellshop.com> is registered with 1&1 Internet AG.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 18, 2011. On November 18, 2011, the Center transmitted by email to 1&1 Internet AG a request for registrar verification in connection with the disputed domain name. On November 22, 2011, 1&1 Internet AG 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 November 24, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 14, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 19, 2011. On January 5, 2012, the Respondent sent an e-mail to the Center requesting two weeks of extension for filing his answer, which the Center acknowledged receipt of on January 17, 2012, indicating it’s late receipt and the Panel’s discretion (when appointed) to consider it or not..
The Center appointed Christian Pirker as the sole panelist in this matter on January 17, 2012. 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.
After reading the Complaint, the Panel noticed that there was evidence about the trademarks allegedly owned by the Complainant only in Turkish. Thus, the Panel decided to issue an Administrative Panel Procedural Order requiring the Complainant to produce numerous evidences in English and accordingly to authorize the Respondent to file its Response subsequently. The Panel Order I was issued on January 20, 2012 and followed by a Panel Order II, dated February 7, 2012, extending the delay to February 9, 2012 for the Complainant to file its evidence to February 23, 2012 for the Respondent to file its answer and to March 5, 2012 for the Panel to issue the decision.
The Complainant sent the evidence back translated in English on February, 9, 2012. The Panel and the Center have not received any submissions or supporting evidence from the Respondent in reply to the submissions filed by the Complainant as requested by the administrative panel orders.
4. Factual Background
The Complainant, Turkcell Iletisim Hizmetleri A.S which is well-known shortly as “Turkcell” , is the leading GSM based mobile operator in Turkey established in 1994 and having agreements with 541 operators in 193 countries as of March 23, 2007. Turkcell is the third biggest GSM operator in Europe.
The Complainant’s service marks TURKCELL have been registered on September 9, 1996 (Registrations Nos. 17330 and 174691), with the Turkish Patent Office (TPO), in class 38. The Complainant also owns numerous other trade and service marks including the word “Turkcell” abroad that are evidenced in its Complaint. Further, the TPO recognized the TURKCELL trademark as a “well-known mark”.
The Respondent registered the disputed domain name <turkcellshop.com> on July 10, 2010. It must be noted that in the field supposed to indicate the address of the Registrant in the Registrar database, the Respondent has indicated: “This Domain is For SALE. Make Offer!”.
5. Parties’ Contentions
Due to the confusing similarity between the disputed domain name and the TURKCELL trademarks, the disputed domain name <turkcellshop.com> is considered confusingly similar to the TURKCELL trademark. The domain name is a combination of two separate words, namely “turkcell” and “shop”. The word “turkcell” is the Complainant’s main trademark and also its company name. The second word of the disputed domain name is “shop”, a descriptive and generic term, which refers to a place where companies sell their goods and provide their services. Therefore, the addition of these two separate words increases the likelihood that consumers would wrongly associate the disputed domain name with the Complainant’s trademark.
The Respondent has no rights or legitimates interests in respect of the disputed domain name given that 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 service mark.
In respect of bad faith, the Respondent cannot have ignored the fact that TURKCELL is a registered and protected trademark of the Complainant. Indeed, as TURKCELL is a well-known mark, it is difficult to imagine that the Respondent would not have been aware of that mark.
Accordingly, the Complainant requests the sole Panelist to issue a decision that the disputed domain name <turkcellshop.com> be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to :
“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 deems applicable.”
Paragraph 4(a) of the Policy states that the Complainant must prove that each of the three following elements are present:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
As already stated in numerous other UDRP decisions (e.g. Turkcell Iletisim Hizmetleri A.S. v. Alan Adi Sahibi Gizli / turk-cell-tv Video Sitesi ibrahim caglayan, WIPO Case No. D2011-2041; Turkcell Iletisim Hizmetleri A.S. and Turktell Bilisim Servisleri A.S. v. Turkcell Fizy, WIPO Case No. D2011-1184; Turkcell Iletisim Hizmetleri A.S. v. Mr. Kurt, WIPO Case No. D2011-2039; Turkcell Iletisim Hizmetleri A.S. v. Volkan Unal, WIPO Case No. D2011-1433; Turkcell Iletisim Hizmetleri A.S. v. Kerem Baser, WIPO Case No. D2011-1024; 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) and supported by the evidence submitted, the Complainant has proven to own numerous TURKCELL trademarks.
This trademark is entirely included in the disputed domain name. The adjunction of the word “shop” to the trademark TURKCELL in the disputed domain name does not diminishing the confusing similarity with the trademark, since the dominant part of the disputed domain name is the trademark TURKCELL and the word “shop” is an ordinary descriptive English word.
In similar cases, the panels have found that adding descriptive words does not avoid the likelihood of confusion between a trademark and a domain name incorporating said trademark. See e.g. Sanofi-Aventis v. Gideon Kimbrell, WIPO Case No. D2010-1559; Greenbrier IA, Inc. v. Moniker Privacy Services/Jim Lyons, WIPO Case No. D2010-0017 and Zodiac Marine & Pool, Avon Inflatables Ltd and Zodiac of North America Inc. v. Mr. Tim Green, WIPO Case No. D2010-0024.
Accordingly, the Panel finds that the disputed domain name <turkcellshop.com> is confusingly similar to the Complainant’s trademark TURKCELL in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy a Respondent can establish its rights or legitimate interests in its domain name if it shows the presence of any of the following circumstances:
(i) before any notice to the Respondent of the dispute, the Respondent’s 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) The Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) The Respondent is 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.”
It is for the Complainant to demonstrate that this condition is met prima facie. Provided that the Complainant is successful in demonstrating that the condition is met prima facie, it is for the Respondent to demonstrate its rights or legitimate interests. Accordingly, the burden of production shifts to the Respondent.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent failed to respond to the Complaint.
Moreover, there is no evidence in the file that the Respondent has rights or legitimate interests in the disputed domain name.
Accordingly, the Panel considers that the Respondent does not have any rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The third element to be established by the Complainant is that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the policy states the following four (non-exclusive) circumstances which, if found to be present, are deemed to provide evidence of bad faith in registering and using the disputed domain name.
(i) “Circumstances indicating that the Respondent has registered or the Respondent has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark, or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) The Respondent has registered the 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 domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or its location.”
The Complainant alleges that the Respondent has acquired the disputed domain name “primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark … or to a competitor of that complainant, for valuable consideration in excess of [registrant’s] documented out-of-pocket costs directly related to the disputed domain name.”
The Panel notes that some UDRP panels in certain default cases have accepted factual allegations from a complainant as correct, particularly as these pertain to paragraphs 4(a)(ii) and 4(a)(iii) of the Policy, regarding the factors that make out illegitimacy of a respondent’s use or the presence or absence of bad faith, see Luis Cobos v. West, North (Nick Handle: JNMTOKTCQD), WIPO Case No. D2004-0182; Microsoft Corporation v. Andrey Tumakov, WIPO Case No. D2002-1039; Plymouth State College v. Domains, Best Domains, WIPO Case No. D2002-0939.
Accordingly, since the Respondent was aware of the proceedings, did obtain an extension of time after having requested it and, notwithstanding, has failed to give any answer and failed to challenged the Complainant’s allegations according to which the disputed domain name was registered and is being used in bad faith, such bad faith registration and use allegation can be accepted as true.
Furthermore, the Panel notes that the Respondent’s website “www.turkcellshop.com” appears to be currently inactive but the publically available WhoIs data information mentioned clearly that the disputed domain name is “For SALE” and that the Respondent wishes to receive “Offers”.
The instances of bad faith listed in Policy, paragraph 4(b) are expressly without limitation. The Panel agrees with previous WIPO UDRP panels’ decisions that the Respondent’s registration of a domain name incorporating a well-known mark of which it was clearly aware, without any evident right to do so, can itself be taken as evidence of bad faith. See, e.g., Playboy Enterprises International, Inc. v. Federico Concas, a.k.a John Smith, a.k.a. Orf3vsa, WIPO Case No. D2001-0745.
In SportSoft Golf, Inc. v. Hale Irwin’s Golfers’ Passport (NAF Claim no.94956) a finding of bad faith was made where Respondent "knew or should have known" of the registration and use of the trademark prior to registering the domain name. Likewise Marriott International, Inc. v. John Marriot (NAF Claim no 94737); Canada Inc. v. Sandro Ursino, Case AF-0211 and Centeon L.L.C./Aventis Behring L.L.C. v. Ebiotech.com NAF Claim no 95037). (in Federated Western Properties, Inc. v. Mr. Faton Brezica aka "Its Me Haraqi" and "Its Me Pr", WIPO Case No. D2002-0083).
Further, as previous UDRP panels have held, the fact that a respondent’s name or WhoIs information contains what can be construed as an offer to sell the domain name may be considered as a strong evidence of bad faith. See Parfums Christian Dior S.A. v. QTR Corp., WIPO Case No. D2000-0023; (finding bad faith where WhoIs information included the phrase "this domain name is for sale"); Microsoft Corp. v. Amit Mehrotra, WIPO Case No. D2000-0053. Numerous other panels have drawn the same conclusion from similar facts. See The J. Paul Getty Trust v. Domain 4 Sale & Co. (NAF Claim No. 95262); Euromarket Designs, Inc. v. Domain For Sale VMI, WIPO Case No. D2000-1195; Gruner + Jahr Printing & Publishing Co. v. Global Media Consulting, WIPO Case No. D2000-1395; Google, Inc. v. wwwgoogle.com and Jimmy Siavesh Behain, WIPO Case No. D2000-1240; The Board of Governors of the University of Alberta v. Michael Katz, WIPO Case No. D2000-0378.
Finally, some panels have found that "passive holding" of a domain name may be evidence of bad faith, particularly when other factors tending to show bad faith are present. See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Taking into account the above, the strength of the Complainant’s trademark, the passive holding and the offer to sell, the absence of participation in the proceedings of the Respondent, further supports the conclusion that Respondent’s registration was made with knowledge of the Complainant’s mark, which further supports a finding of bad faith.
Accordingly, the Panel is convinced that the disputed domain name has been registered and is being used in bad faith and that the Complainant has fulfilled the third element under paragraph 4(a) of the Policy.
For 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 <turkcellshop.com> be transferred to the Complainant.
Dated: March 5, 2012