WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

D-Market Elektronik Hizmetler ve Ticaret Anonim Şirketi v. Registration Private / Emre Guney, Güney Bilgisayar ve Mühendislik Ltd.

Case No. D2014-0355

1. The Parties

The Complainant is D-Market Elektronik Hizmetler ve Ticaret Anonim Şirketi of Istanbul, Turkey, represented by Dericioğlu & Yaşar Law Office, Turkey.

The Respondent is Registration Private of Scottsdale, Arizona, United States of America / Emre Guney, Güney Bilgisayar ve Mühendislik Ltd. of Istanbul, Turkey, represented by Net Koruma Danışmanlık Hizmetleri, Turkey.

2. The Domain Names and Registrar

The disputed domain names <herseyburada.com> and <herseyburada.mobi> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 7, 2014. On March 7, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name <herseyburada.com>. On March 7, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name <herseyburada.com> which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 18, 2014, 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 amended Complaint and requested addition of the disputed domain name <herseyburada.mobi> to the present proceeding on March 21, 2014. On March 24, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name <herseyburada.mobi>. On March 24, 2014, 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.

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 March 26, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 15, 2014. The Response was filed with the Center on April 15, 2014.

The Center appointed Gökhan Gökçe as the sole panelist in this matter on April 24, 2014. 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.

The Complainant filed a Supplemental Filing on May 1, 2014. The Respondent filed an objection to the Supplemental Filing on May 7, 2014.

4. Factual Background

The Complainant is a company which is incorporated in Turkey. The Complainant runs an e-commerce platform at “www.hepsiburada.com” using the trademark HEPSİBURADA and HEPSİBURADA.COM & design. The domain names <hepsiburada.com> and <hepsiburada.com.tr> were registered by the Complainant respectively on July 4, 2000 and May 9, 2003.

The Complainant’s trademarks HEPSİBURADA.COM & design with registration No. 2000 20142 and application date September 22, 2000 and HEPSİBURADA with registration No. 2012 79983 and application date September 20, 2012 are registered in classes 35, 38, 42 before the Turkish Patent Institute. The Complainant also owns several other trademarks containing “hepsiburada” phrase.

The Respondent is a limited liability company incorporated in Turkey.

The disputed domain names <herseyburada.com> and <herseyburada.mobi> were registered on May 29, 2002 and April 15, 2008 respectively. The disputed domain name <herseyburada.com> currently resolves to a webpage in English offering the disputed domain name for sale for EUR 600.000 and including the Respondent’s contact details. The banner on the webpages states:

“Multipurpose and Extensively Large Generic Domain Name For Sale for more than 210 million Turkish speaking consumers www.herseyburada.com

A site where you can conduct any type of business that you would like it consists of giant ports, electronic shopping, travel agencies, on-line auctions, search engines, and suits to all wants and needs. A catchy slogan that stays in the mind of consumers and easily commercialaized. Shop from home for anything you can imagine from needles to threads, electronic and technolgical equipment, land, buildings, food, clothing, furniture, traveling arrangements, banking, industrial materials, raw or semi-raw materials, commercials, television, news, computer (service and sales)all in one domain.”

The disputed domain name <herseyburada.mobi> does not resolve to an active webpage.

5. Parties’ Contentions

A. Complainant

In accordance with paragraph 4(b)(i) of the Policy, the Complainant requests that the disputed domain names be transferred to the Complainant. The Complainant submits the grounds for these proceedings listed in paragraph 4(a) of the Policy.

Identical or Confusingly Similar

The Complainant submits that HEPSİBURADA is its trademark, which has been used in connection with an online shopping website which has more than 2 million registered members and a monthly average of 5.5 million individual users. The Complainant avers that it is well known in Turkey owning numerous awards which are given in the field of e-commerce.

The Complainant notes that it has also registered a number of domain names incorporating its trademark HEPSİBURADA. The Complainant registered the domain names <hepsiburada.com> and <hepsiburada.com.tr> respectively on July 4, 2000 and May 9, 2003.

The Complainant alleges that the Turkish words “hepsi” and “hersey” are synonyms meaning “all” in English and that the disputed domain names containing the words “hersey” were registered as the derivative of the trademark and the domain name of the Complainant containing the word “hepsi”. The Complainant states that the Turkish word “hepsiburada” means “all is here” in English and it is used by the Complainant to give an effect to consumers that everything they are looking for is available in their website. The Complainant alleges that the disputed domain names are confusingly similar as it gives the same perception to consumers.

The Complainant contends the denominations “.com” and “.mobi” do not remove the similarity between the disputed domain names and the Complainant’s trademarks and domain names.

Rights or Legitimate Interests

The Complainant submits that it has actively been using its trademark and domain names since 2000 and that its trademark is identified with the Complainant due to its widespread use and promotion activities.

The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain names on the basis that it has never granted the Respondent a license or permission to use its trademark, the Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services, the Respondent is not commonly known by the disputed domain names, and the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names.

The Complainant further contends that these factors indicate that the Respondent’s reason in registering the disputed domain names is merely to take unfair advantage of the Complainant’s trademark.

Registered and Used in Bad Faith

The Complainant contends that it has become a symbol of quality in the e-commerce sector and it has become well known and recognized throughout Turkey. The Complainant alleges that the disputed domain names, which are almost identical with the Complainant’s trademark has been registered by the Respondent to gain improper benefit from the Complainant’s trademark’s reputation. Furthermore, the Complainant submits that the Respondent undoubtedly knew the disputed domain names were identical to the Complainant’s trademark at the time of registration.

The Complainant notes that the disputed domain name <herseyburada.com> has been for sale since 2002 and currently for a price of EUR 600.000 which according to the Complainant proves that the Respondent has knowledge about the Complainant’s trademark and uses it for commercial gain, which proves the bad faith of the Respondent under paragraph 4(b)(iv) of the Policy.

The Complainant further alleges that in addition to offering the disputed domain name <herseyburada.com> for sale, the Respondent has filed a trademark application for HERSEYBURADA before the Turkish Patent Institute, which was rejected due to confusing similarity to the Complainant’s trademark.

The Complainant further contends that the registration of the disputed domain name <herseyburada.mobi> by the same Respondent, has the same motive and intention as the disputed domain name <herseyburada.com>.

The Complainant avers that the Respondent registered the disputed domain names primarily for the purpose of attracting Internet users by creating a likelihood of confusion with the Complainant’s mark and it is evident that the disputed domain names were registered and used by the Respondent in bad faith.

B. Respondent

Identical or Confusingly Similar

The Respondent states that it has a 20 years history of selling technology products and providing after sale services since 1994. The Respondent contends that the disputed domain names are made up of a generic term meaning “everything here” and <herseyburada.com> has been registered since 2002. The Respondent further contends that the disputed domain name <herseyburada.com> was used as an online shopping site between 2006 and 2008.

The Respondent alleges that the grounds for the denial of its trademark application for HERSEYBURADA.COM in 2006 was due to the term being a general and generic term and its second application in 2011 was denied due to similarity with the Complainant’s trademark upon the objection of the Complainant.

The Respondent further states that there is a difference in meaning between “hepsi” which means “all” and “her sey” meaning “everything” and therefore there is no similarity or leading confusion between the Complainant’s trademark and the disputed domain names. The Respondent alleges that there is no lexical or aural similarity between the Complainant’s trademark and the words used in the disputed domain names.

Rights or Legitimate Interests

The Respondent claims that it has natural and legal rights over the disputed domain name <herseyburada.com> as it registered the disputed domain name 12 years ago and used it for online shopping services between 2006 and 2008. The Respondent also points out that no action has been taken against the disputed domain name <herseyburada.com> in the last 12 years.

Registered and Used in Bad Faith

The Respondent contends that at the time the disputed domain name <herseyburada.com> was registered in 2002 only 11% of Turkey’s population had access to Internet and therefore it is not possible to claim that the Complainant’s trademark was well-known. The Respondent claims that the Complainant failed to provide evidence of well-known status at the time of registration of the disputed domain name <herseyburada.com>.

The Respondent further claims that attempts to sell the disputed domain name <herseyburada.com> which is used bona fide and comprises of generic words and trademark applications filed by the Respondent cannot be presented as evidence of bad faith.

The Respondent makes a claim of reverse domain name hijacking based on its contentions that the Complainant’s trademark and the words used in the disputed domain name have different meanings.

6. Discussion and Findings

I. Procedural Matters

The Panel notes that the Center received additional submissions by the Complainant on May 1, 2014 and by the Respondent on May 7, 2014. The Panel has sole discretion to decide whether or not to consider supplemental filings under the Rules, paragraph 10(d). In previous UDRP decisions, it has been decided that unsolicited additional submissions may be taken into consideration in the interest of fairness if a respondent raises a matter which the complainant could not have been expected to have addressed in its complaint, Viz Communications, Inc. v. Redsun dba <www.animerica.com> and David Penava, WIPO Case No. D2000-0905. After consideration of the Complainant’s and the Respondent's additional submissions, the Panel decides not to accept the additional submissions.

II. Substantive Matters

The Panel turns to the merits of the case, paragraph 4(a) of the Policy sets forth the following three elements which the Complainant must prove, during the administrative proceedings, to merit a finding that the disputed domain names be transferred to the Complainant:

(a) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(b) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

Pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

A. Identical or Confusingly Similar

The Policy simply requires the Complainant to demonstrate that the disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights. The Panel is satisfied that the Complainant is the owner of HEPSIBURADA.COM & design and HEPSIBURADA trademarks.

The Panel notes that the only difference between the Complainant’s trademark and the disputed domain names is their first parts which mean “all” and “everything” respectively. Taking into consideration the Complainant’s trademark and the disputed domain names as a whole, the Panel is in the opinion that this difference is insufficient to prevent threshold Internet user confusion as both have approximately the same meaning and are phonetically similar; the different portion starting with same two letters and both having equal number of syllables. As evidenced in the annexes of the Complaint and validated by the Respondent, the Turkish Patent Institute has also found the disputed domain name <hepsiburada.com> confusingly similar with the Complainant’s trademark and denied its registration.

The Panel further finds that the addition of the domain name extensions “.com” and “.mobi” are typically irrelevant when determining whether the disputed domain names are confusingly similar to the Complainant’s trademark, PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189. The Panel recognizes the Complainant’s rights and concludes that the disputed domain names are confusingly similar to the Complainant’s HEPSIBURADA.COM & design and HEPSIBURADA trademarks.

The Panel finds that the requirements of paragraph 4(a)(i) of the Policy are fulfilled. Consequently, the Panel finds for the Complainant on the first element of the Policy.

B. Rights or Legitimate Interests

In accordance with paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the disputed domain names. It is established in numerous UDRP decisions that it is difficult for a complainant to prove a negative and for that reason the Complainant is required to make out an initial prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110. Once the Complainant makes a prima facie case, the burden of demonstrating rights or legitimate interests in the disputed domain names shifts to the Respondent.

The Complainant claims that the Respondent has no rights or legitimate interests in the disputed domain names on the basis that it has never granted the Respondent a license or permission to use its trademark, the Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services, the Respondent is not commonly known by the disputed domain names, and the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names. The Complainant alleges that the Respondent’s reason for registering the disputed domain names were for selling and merely to take unfair advantage of the Complainant’s trademark.

The Respondent claims that it has natural and legal rights over the disputed domain name as it registered the disputed domain name <herseyburada.com> 12 years ago and used it for online shopping services between 2006 and 2008, emphasizing that no action has been taken against the disputed domain name <herseyburada.com> in the last 12 years. The Respondent claims that the disputed domain name <herseyburada.com> was used for bona fide offering of goods and services.

The annexes of the Complaint and “www.archive.org” records shows that the disputed domain name <herseyburada.com> has been offered for sale shortly after its registration and is currently also offered for sale for EUR 600.000. Offering a domain name for sale may be considered a bona fide offering of goods and services only if it does not conflict with another’s trademark rights and there are no other factors that would render such use non-legitimate. The Respondent in its advertisement for sale of the disputed domain name <herseyburada.com> clearly states that the disputed domain name is “a catchy slogan that stays in the mind of consumers and easily commercialized.” which can be used for “Shop from home for anything you can imagine from needles to threads, electronic and technological equipment, land, buildings, food, clothing, furniture, traveling arrangements, banking, industrial materials, raw or semi-raw materials, commercials, television, news, computer (service and sales)all in one domain.”The Panel is in the opinion that the fact that the banner is a description of the services offered by the Complainant is a strong indication that the reason the Respondent’s registration of the disputed domain names is to take unfair advantage of the Complainant's trademark’s reputation. The Panel also finds that the determination of such a high value for the disputed domain name is also due to the value of the Complainant’s trademark and a further indication of bad faith. Therefore, although the registration and offering for sale of the disputed domain name may constitute a legitimate interest of the Respondent in the disputed domain names, it is clear to the Panel that it is not the case here as it has been shown that the disputed domain names have been chosen with the intent to profit from or otherwise abuse the Complainant’s trademark rights, Allocation Network GmbH v. Steve Gregory, WIPO Case No. D2000-0016.

Further, the Panel is in the opinion that the use of the disputed domain name <herseyburada.com> for online shopping services between 2006 and 2008 does not constitute bona fide offering of goods and services as such services are exactly the same as those offered by the Complainant which is protected by its registered trademark.

With regard to the disputed domain name <herseyburada.mobi>, the Panel notes that the Complainant’s contention that its registration by the same Respondent indicates the Respondent’s intention to take unfair advantage of the Complainant’s trademark. The Panel also notes that the Respondent did not rebut the Complainant’s contention in this regard, and therefore, on balance, the Panel finds that the Complainant has made out a prima facie case of the Respondent’s lack of rights or legitimate interests in the disputed domain name <herseyburada.mobi>.

Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain names. The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The Respondent has failed to demonstrate rights or legitimate interests in the disputed domain names and therefore the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain names.

The requirements of 4(a)(ii) of the Policy are fulfilled and consequently the Panel finds in favor of the Complainant on the second element of the Policy.

C. Registered and Used in Bad Faith

Finally, the Complainant must show that the disputed domain names have been registered and are being used in bad faith under paragraph 4(a)(iii) of the Policy.

Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that, if found by a 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 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 the respondent’s website 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 website or location or of a product or service on the respondent’s website or location.

The Complainant’s registration of its trademarks and domain names predates the registration of the disputed domain names. Further, the Respondent has stated that it has a 20 years history in the IT sector. Therefore, the Panel is of the opinion that it is highly unlikely that the Respondent was unaware of the Complainant’s trade name at the time the disputed domain names were registered. Thus, the Panel finds that the Respondent must have been aware of the Complainant’s trademark at the time of registration of the disputed domain names. The Panel, in accordance with previous decisions issued under the Policy, is of the opinion that actual knowledge of the Complainant’s trademark at the time of registration of the disputed domain names is to be considered as an inference of bad faith, Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226.

As evidenced in the Annexes of the Complaint, the Respondent has offered the disputed domain name for sale shortly after its registration. The fact that the Respondent is offering the disputed domain name <herseyburada.com> for sale for EUR 600,000, a price obviously in excess of the Respondent’s cost of registering the disputed domain name <herseyburada.com> and the advertisement included in the Respondent’s webpage further demonstrates bad faith registration and use. It is well established that registration for the primary purpose of selling, renting, or otherwise transferring the domain name to the complainant who is the owner of the trademark or to a competitor of the complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name is evidence of bad faith, Ferrari S.p.A. v. Allen Ginsberg, WIPO Case No. D2002‑0033; Advance Magazine Publishers Inc. v Marcellod Russo, WIPO Case No. D2001-1049

In reaching a conclusion, the Panel observed whether or not bad faith existed when the disputed domain names were registered and whether or not the disputed domain names were used in bad faith. The Panel draws inferences of bad faith from the following: the disputed domain name <herseyburada.com> is being offered for sale for a price in excess of its registration costs, the disputed domain name <herseyburada.mobi> is inactive, the Respondent had prior knowledge of the Complainant’s trademark, and, in the Panel’s assessment, the sole purpose of registration of the disputed domain names was to resale to the Complainant or its competitors for profit.

After examining all circumstances surrounding the registration and use of the disputed domain names, the Panel finds that the Respondent registered and is using the disputed domain names in bad faith. Accordingly the Panel finds in favor of the Complainant on the third element of the Policy.

D. Reverse Domain Name Hijacking

In light of the above findings, the Respondent’s request is dismissed.

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 names <herseyburada.com> and <herseyburada.mobi> be transferred to the Complainant.

Gökhan Gökçe
Sole Panelist
Date: May 12, 2014