WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Superonline Iletişim Hizmetleri A.Ş. v. Bulent OZKILINC and PrivacyProtect.org
Case No. D2012-1115
1. The Parties
The Complainant is Superonline Iletişim Hizmetleri A.Ş. of Istanbul, Turkey, represented by Istanbul Patent & Trademark Consultancy Ltd., Turkey.
The Respondent is Bulent OZKILINC of Yozgat, Turkey and PrivacyProtect.org of Australia.
2. The Domain Name and Registrar
The disputed domain name <superoffline.net> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May. On May, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 3, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 4, 2012 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 June 12, 2012.
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 Respondent of the Complaint, and the proceedings commenced on June 12, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 2, 2012. The Center received an email communication from the Respondent already on June 5, 2012 responding to some allegations of the Complainant. The Center received another email communication on June 12, 2012, immediately after the notification of the Complaint, and on July 13, 2012 referring to the appointment of the Panel. The Respondent did, however, not submit any formal response. Accordingly, the Center notified the parties about the commencement of panel appointment procedure on July 3, 2012.
The Center appointed Kaya Köklü as the sole panelist in this matter on July 13, 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.
In accordance with the Rules, paragraph 11, and since the Parties have not agreed otherwise, the Panel finds that the language of the administrative proceedings is the language of the Registration Agreement (i.e. English).
4. Factual Background
The Complainant is a Turkish telecommunication service company, which is well-known in Turkey.
The Complainant is the registered owner of the word and figurative trademark SUPERONLINE, first registered with the Turkish Patent Institute on September 13, 1995 and meanwhile protected in various countries according to the Madrid Protocol. The Complainant is additionally the owner of the trademarks SUPERONLINE.COM.TR (registered on August 18, 1997) and SUPERONLINE.NET.TR (registered on September 9, 1997).
The Complainant further owns and operates a web portal at “www.superonline.net”.
The Respondent is an individual from Yozgat, Turkey.
The disputed domain name was first registered by the Respondent on October 27, 2011.
At the web portal linked to the disputed domain name, the Respondent operates a Turkish website dealing with comments on consumer rights in a broader sense.
5. Parties’ Contentions
The Complainant requests the transfer of the disputed domain name.
The Complainant argues that the disputed domain name <superoffline.com> is confusingly similar to the trademark SUPERONLINE as it “only serves to increase the likelihood that consumers would wrongly associate the domain name with the Complainant and its internationally well-known trade/service mark”.
In particular, the Complainant argues the following:
“The disputed domain name <superoffline.com> is confusingly similar to Complainant’s mark except “ff” letters which creates an opposite term to “on”. Addition of the negative term does not eliminate the visual impression that the disputed domain name is associated with Complainant’s trademark. Moreover, in light of Complainant’s use of its mark in connection with a service description, an internet user would assume it is a web-site that he/she may submit his/her opinions, complaints, suggestions – briefly communicate with the Complainant, SUPERONLINE.”
Furthermore, the Complainant argues:
“Given the well-known nature of Complainant’s SUPERONLINE mark, in all the addition of negative term to Complainant’s mark SUPERONLINE does non only fail to distinguish the domain names from the mark, but also reinforces the association of the domain names with Complainant’s mark. In that sense, the Respondent creates a likelihood of confusion in the minds of the consumers, who expect the domain name <superoffline.net> to resolve to websites owned by, operated by or affiliated with the Complainant.”
Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. In particular, the Complainant states that the Complainant has never granted a permission or license to the Respondent concerning the use of the SUPERONLINE trademark. Given the Complainant’s “extensive goodwill and reputation in its […] trademark SUPERONLINE, it is further argued that the Respondent has never used and does not intend to use the disputed domain name for a bona fide noncommercial offering of goods or services”.
Finally, it is argued that the Respondent has registered and used the disputed domain name in bad faith. It is argued that due to the wide recognition of the SUPERONLINE trademark in Turkey, the Respondent must have known this well-known trademark long before the registration of the disputed domain name. The Complainant further argues that the Respondent has registered the disputed domain name to “divert potential consumers to Respondent’s website in order to defame, tarnish and dilute Complainant’s trademark.”
The Respondent did not formally reply to the Complainant’s contentions. However, the Panel considers the Respondent’s email communication to the Center of June 5, 2012 equivalent to a response as it refers to the allegations raised in the Complaint.
In its email communication of June 5, 2012, the Respondent argues that the website linked to the disputed domain name “has nothing to do with complaining superonline.net”. It is particularly argued that the disputed domain name and the Complainant’s SUPERONLINE trademark “is the name of two diametrically opposed meanings, spellings, logos, [where] content is quite different from each other. In addition, the company that owns the site complained superonline.net operate in the Internet service provider, superoffline.net consumer rights advocates and consumers about how to use the rights contained in the law has a content.”
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.
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 bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complaint. Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.
However, concerning the uncontested information provided by the Complainant, the Panel may as appropriately accept the provided reasonable factual allegations in the Complaint as true. Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
Further it is noted that the Panel has taken note of the WIPO Overview of Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) and, where appropriate, will decide consistent with the WIPO Overview 2.0.
A. Identical or Confusingly Similar
The Complainant has provided sufficient evidence demonstrating that it is the registered owner of the well-known word and figurative trademark SUPERONLINE since the late 1990’s. However, the Complainant does not claim any rights in the terms which comprises the disputed domain name, being “super offline”, or in the term “super”. Rather, the Complainant appears to rely on the alleged confusing similarity between the terms “super online” (in which it possesses relevant trade mark rights) and the terms “super offline” (in which no trademark rights are claimed), essentially on the basis that the only alphanumeric difference between the two is that the latter contains a double “ff”, whereas the former contains a single “n”.
The relevant comparison under the first element of the Policy is between the disputed domain name and the relied upon trademark. The degree of fame of the relied upon trademark is neither a prerequisite nor a dispositive consideration for this purposes, especially where (as here) both the relied upon trademark, and the disputed domain name, are comprised of terms which may be regarded singly as descriptive or dictionary terms. In such cases, small differences between the relied-upon mark and the disputed domain name may be highly relevant considerations. Another highly relevant consideration, as indicated for example in the WIPO Overview 2.0, paragraph 2.1 and certain of the cases cited therein, may be whether the relied-upon trademark may be distinguished a such within the disputed domain name.
In light of the above, the Panel finds that the combination of the terms “super” and “offline” does not render the disputed domain name confusingly similar to the Complainant’s trademark SUPERONLINE. In the Panel’s view, having regarded to the differences between “online” and “offline” with respect to spelling and meaning, this Panel does not find the Complainant’s trademark to be recognizable as such within the disputed domain name. Accordingly, this Panel does not find there to be a likelihood of confusing similarity between the disputed domain name and the Complainant’s well-known trademark in question. Rather, this Panel believes that Internet users would likely be able to distinguish between the terms “online” and “offline”, and it does not necessarily follow that because the Complainant has rights in SUPERONLINE that Internet users would therefore confuse the expression “superoffline” with the Complainant. It might be true that due to the use of the term “super” within the disputed domain name, some may argue that some association between the disputed domain name and the Complainant’s trademark SUPERONLINE is created. However, it must also be taken into account that the Complainant (rightly) does not claim any exclusive rights in the use of the term “super” alone, and in any event this Panel believes that the possibility of a mere association is not sufficient to establish a confusing similarity under the Policy.
Consequently, this Panel finds that the Complainant has not satisfied the first requirement of the Policy which is to show that the disputed domain name is confusingly similar for purposes of the Policy to a trademark in which the Complainant has rights.
Naturally this finding in no way precludes any options the Complainant may wish to pursue under national trademark or unfair competition laws, but these are matters beyond the scope of the Panel’s rather more limited deliberations under the Policy.
B. Rights or Legitimate Interests and Bad Faith Registration and Use
The Panel notes that at the web portal linked to the disputed domain name, the Respondent operates a Turkish website dealing with comments on consumer rights in a broader sense.
In any event, as the Complainant has not satisfied the first requirement of the Policy, the Panel does not see the necessity to substantially comment on the satisfaction of the second and third requirements of the Policy.
For the foregoing reasons, the Complaint is denied.
Date: July 25, 2012