WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Yıldız Holding Anonim Şirketi v. Arca Web Hizmetleri, Sabri Ülker, Tolga Senbakar

Case No. D2012-1851

1. The Parties

The Complainant is Yıldız Holding Anonim Şirketi of Istanbul, Turkey, represented by Aybüke Semerci, Turkey.

The Respondent is Arca Web Hizmetleri, Sabri Ülker, Tolga Senbakar of Istanbul, Turkey.

2. The Domain Name and Registrar

The disputed domain name <sabriulker.com> is registered with eNom (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 17, 2012. On September 17, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 17, 2012, 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. On September 20, 2012, the Center sent an email communication to the Complainant inviting it to amend the Complaint, namely paragraphs 9, relating to the identification of the Registrar with which the disputed domain name is registered. The Complainant filed an amended Complaint on September 20, 2012.

The Center verified that the Complaint together with the amended 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 September 24, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 14, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 15, 2012.

The Center appointed Kaya Köklü as the sole panelist in this matter on October 31, 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(a), 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 Complaint is one of the leading holdings in Turkey with several affiliated companies in six different industrial sectors. The origin of the Complainant can be traced back to the mid 1940’s, when the founder Sabri Ülker started its business with a small company manufacturing biscuits. Still, the Complainant is mainly active in the field of producing and selling sweets and chocolates. The Complainant’s products are exported to many countries worldwide. The founder Sabri Ülker died in June 2012.

The Complainant is the registered owner of more than 1,500 trademarks worldwide. Its trademark portfolio covers famous brands like ÜLKER, Godiva, Alpella, etc. The Turkish Patent Institute, the competent Turkish authority for granting trademarks, confirmed in 2012 the status of the brand ÜLKER as a well-known trademark in Turkey. The first trademarks comprising the sign ÜLKER were registered already decades ago.

The Complainant operates various domain names incorporating its trademark ÜLKER, in particular <ulker.com.tr>, <ulker.com> and also <sabriulker.com.tr>.

The true Respondent seems to be an individual from Istanbul, Turkey. According to the current record, the disputed domain name <sabriulker.com> was first created on April 9, 2003. In September 2012, the name of the domain name holder was changed to “Sabri Ülker”. This happened right after the parties could not agree on a settlement, as the first Respondent, Tolga Senbakar, did not accept to transfer the disputed domain name for an amount of YTL 1,000.00 (approximately USD 530.00).

5. Parties’ Contentions

A. Complainant

The Complainant requests the transfer of the disputed domain name.

First, the Complainant argues that the disputed domain name is confusingly similar to the Complainant’s well-known trademark ÜLKER.

Second, the Complainant is of the opinion that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant alleges that it has not licensed or otherwise permitted the Respondent to use any of its trademarks and has not permitted the Respondent to register or use any domain name incorporating its ÜLKER trademark. The Complainant additionally asserts that the Respondent has never used the disputed domain name, nor made any demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services. Finally, the Complainant sees no evidence or indication that the Respondent trades under or is commonly known by any name corresponding to the disputed domain name.

Third, the Complainant is convinced that the Respondent has registered and is using the disputed domain name in bad faith. It is argued that the trademark ÜLKER was already well-known many years prior to the date of registration of the disputed domain name by the Respondent.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

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 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 appropriate accept the provided reasonable factual allegations in the Complaint as true. Belupod.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.

It is further 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 Panel finds that the disputed domain name <sabriulker.com> is confusingly similar to the ÜLKER trademarks owned by the Complainant.

First, the Panel confirms that the Complainant has satisfied the threshold requirement of having trademark rights regarding the sign ÜLKER. As evidenced in the Complaint, the Complainant owns a large number of registered ÜLKER trademarks worldwide, including in Turkey.

Although not identical, the disputed domain name <sabriulker.com> fully incorporates the trademark ÜLKER.

The disputed domain name differs from the trademark only by the addition of the first name of the Complainant’s founder, namely the first name of Mr. Sabri Ülker.

In the Panel’s view, the addition of the name “Sabri” does not negate the confusing similarity between the Complainant’s trademark and the disputed domain name. The Panel finds that this incorporation does not create a new distinctiveness separate from the Complainant’s trademark ÜLKER. On the contrary, the full inclusion of the Complainant’s trademark in combination with the first name of its founder even enhances the false impression that the website linked to the disputed domain name is somehow officially linked to the Complainant. This false impression is particularly likely as the Complainant officially operates the website “www.sabriulker.com.tr”, which differs from the disputed domain name only in respect of the “.tr” contry code top-level domain (ccTLD).

Hence, the Panel is satisfied that the Complainant has met the requirements under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Panel further believes that the Respondent has no rights or legitimate interests in the disputed domain name.

While the burden of proof remains with the Complainant, the Panel recognizes that this would result in the impossible task of proving a negative, in particular as the evidence needed to show the Respondent’s lack of rights or legitimate interests is primarily within the knowledge and sphere of the Respondent. Therefore, the Panel agrees in line with prior UDRP panels that the Complainant is 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, Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

The Panel finds that the Complainant has satisfied this requirement by providing uncontested prima facie evidence that the Respondent has no trademark, license or any similar right to use the Complainant’s trademark in the disputed domain name.

In the absence of a Response, the Respondent has failed to provide any evidence of a right or legitimate interest in the disputed domain name according to the Policy, paragraphs 4(a)(ii) and 4(c).

In particular, the Panel notes that the Respondent cannot claim any personal name rights in the disputed domain name. For two reasons, the Panel is convinced that “Sabri Ülker” is not the true name of the disputed domain name holder. First, the name of the registrant was changed just shortly after the settlement talks between the parties had failed. Second, the provided contact details with the Registrar are wrong and most likely intentionally wrongly submitted to the Registrar. In view of the Panel, both incidents are strong indications that the Respondent apparently tries to cause confusion among the Complainant as well as the Panel deciding on the requested transfer of the disputed domain name by using a personal name identical to the name of the founder of the Complainant.

The Panel further confirms that the Respondent does not provide (nor does the case file contain) any evidence of a bona fide use of the disputed domain name or any legitimate noncommercial or fair use pursuant to paragraph 4(c)(iii) of the Policy. There is also no evidence or indication to assess that the Respondent trades under or is commonly known by any name corresponding to the disputed domain name. On the contrary, the Panel believes that the Respondent tries to gain benefit from click-through revenue only.

In light of the above, the Panel concludes that the Complainant has also satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel is convinced that the Respondent has registered and is using the disputed domain name in bad faith.

First, the Panel is fully aware of the high reputation and recognition of the Complainant’s trademark ÜLKER, in particular in Turkey, where both the Complainant and the Respondent are located. As confirmed by independent studies provided in the case file, the Complainant’s trademark is among the brands with the highest public awareness in Turkey. Hence, it is clear that the Respondent must have known the Complainant and its ÜLKER trademark when it registered the disputed domain name in 2003.

It is further apparent that the Respondent tries to monetize on the prominence of the ÜLKER name and trademark. In the Panel’s view, the Respondent’s purpose is to tarnish the Complainant’s trademark and/or to put pressure on the Complainant to pay ransom for the hijacked disputed domain name. This becomes in particular obvious as the Respondent claimed an unspecified amount of money for the transfer of the disputed domain name. In its communication with the Complainant prior to these administrative proceedings, the Respondent made clear that it expects an amount of money significantly exceeding YTL 1,000.00, and hence more than the compensation of out-of-pocket expenses.

Last but not least, the Panel finds that the Respondent’s failure to respond to the Complaint additionally supports the above finding that it has registered and is using the disputed domain name in bad faith.

In light of the above, the Panel cannot conceive of any good faith use of the disputed domain name by the Respondent.

The Panel therefore concludes that the disputed domain name was registered and is being used in bad faith and that the Complainant consequently has satisfied the third element of the Policy, namely, paragraph 4(a)(iii) of the Policy.

D. Considerations on Requested Remedy

As to the findings above, the Complainant has satisfied all three requirements of paragraph 4(a) of the Policy.

In addition to the above, the Panel notes that the disputed domain name incorporates not only the Complainant’s trademark, but also name and surname of the Complainant’s founder, namely Mr. Sabri Ülker. The Panel believes that a transfer of a domain name incorporating not only the Complainant’s trademark but also the full name of a well-known individual – even if this person is closely linked to the Complainant –requires some kind of authorization from the concerned individual. Hacı Ömer Sabancı Holding A.Ş. v. Ayhan Yılmaz, WIPO Case No. D2012-0732.

In the present case, the Panel notes that the founder of the Complainant has died in June 2012. The Panel concludes that, if at all, the successors of Mr. Sabri Ülker could raise objections against the transfer of the disputed domain name to the Complainant based on post mortem name and personal rights.

The Panel, however, does not believe that such a conflict may arise in the present case. The Complainant has provided evidence demonstrating that it is the registered owner and lawful operator of the domain name <sabriulker.com.tr>, which is identical to the disputed domain name, different only in respect of the ccTLD. Consequently, the Panel is convinced that the successors of Mr. Sabri Ülker explicitly agree in the use of the name “Sabri Ülker” within a domain name by the Complainant.

In light of the above, the Panel finds that there is sufficient indication that a transfer of the disputed domain name to the Complainant will not cause any new domain name dispute between the Complainant and the successors of Mr. Sabri Ülker.

Hence, in the Panel’s view, the Complainant has satisfied the requirements of the requested remedy.

7. Decision

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 <sabriulker.com> be transferred to the Complainant.

Kaya Köklü
Sole Panelist
Date: November 12, 2012