WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Namet Food Industry & Trade Inc. v. Fabulous com. / Stanley Pace

Case No. D2013-0316

1. The Parties

The Complainant is Namet Food Industry & Trade Inc. of Gebze, Turkey, represented by Güvener & Güvener, Turkey.

The Respondent is Fabulous com. of Beaumaris, Australia / Stanley Pace of Flower Mound, Texas, United States of America (“US”), represented by Rodenbaugh Law, US.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 15, 2013. On February 15, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 17, 2013, 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 February 27, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. In the same email, the Center requested the Complainant to indicate the correct registrar of the disputed domain name. The Complainant filed an amended Complaint on March 5, 2013.

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 6, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 26, 2013. The Response was received by the Center on March 27, 2013.

The Center appointed Assen Alexiev as the sole panelist in this matter on April 9, 2013. 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 respect of the timeliness of the submission of the Response, the Panel notes that the Response was transmitted on March 26, 2013 Pacific Daylight Time – the time zone where the Respondent’s representative is located, and was received by the Center on March 27, 2013 at 00:37 Central European Time. In view of this, taking into account the provision of paragraph 2(f)(i) of the Rules, and in compliance with its duty under paragraph 10(b) of the Rules, the Panel decided to accept and take into account the Response.

In respect of the language of the proceedings, the Panel notes the following. According to the information provided by the Registrar, the language of the registration agreement for the disputed domain name is English. Under paragraph 11 of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

The Complainant has submitted a request that Turkish be the language of the proceedings, pointing out that it is a renowned Turkish company situated in Turkey, and that the website associated to the disputed domain name is in the Turkish language. At the same time, the Complainant has submitted its Complaint in both English and Turkish, and the English version shows a good knowledge of the English language. The Respondent has objected to the Complainant’s request with the arguments that the registration agreement for the disputed domain name and the website associated to it are in English, and that the Complainant has provided no evidence that the same website has a Turkish version as well.

In these circumstances, the Panel is not satisfied that there are sufficient grounds to determine that the language of the proceedings should be Turkish, and finds that using the English language in this proceeding will be fair and efficient and will not put either of the parties at a disadvantage. Therefore, the Panel decides that the language of this administrative proceeding is English, as prescribed by paragraph 11 of the Rules.

On April 2, 2013, the Complainant filed a supplementary submission to the Center. This submission was followed by a reply filed by the Respondent on April 4, 2013. The Panel notes that the Rules contain no express provision for supplemental filings by either party, except in response to a deficiency notification or if requested by the Center or by the Panel. Paragraphs 10 and 12 of the Rules grant the Panel sole discretion to determine the admissibility of supplemental filings (including further statements or documents) received from either party. Taking this into account, for reasons of due process and equality of treatment of the two parties, and in order to provide both parties with a reasonable opportunity to present their cases, the Panel has determined to consider and admit the two supplemental filings in rendering its decision.

4. Factual Background

The Complainant is a Turkish company established in 1929. It produces charcuterie, fresh meat, processed products, frozen meatballs and burgers. According to the Complainant, it is among the top 25 fastest‐growing enterprises in Turkey.

The Complainant has registered the following trademarks for the territory of Turkey, as evidenced by the trademark certificates submitted with the Complaint:

- the trademark N NAMET 1929 with registration number 2001 16927 and priority date August 23, 2001, registered for goods and services in International classes 29, 30, 35;

- the trademark NAMET DOYULMAZ LEZZET N 1929 with registration number 2006 21966 and priority date May 11, 2006, registered for goods and services in International classes 29, 30, 31, 32, 35; and

- the trademark N 1929 NAMET DOYULMAZ LEZZET with registration number 2009 00016 and priority date January 2, 2009, registered for goods and services in International classes 29, 30, 31, 32, 35.

The Complainant has registered and used the domain name <namet.com.tr> for its corporate website since November 28, 2005.

The disputed domain name was registered on July 3, 2008.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical with the NAMET trademark, which is allegedly renowned and highly distinctive. The “.com” extension at the end of the disputed domain name does not differentiate it from the NAMET trademark, the core element of which is the distinctive “namet” word element. Thus, the disputed domain name creates confusion with the Complainant’s trademark.

The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not provided the Respondent with any license or permission enabling the use of the NAMET trademark by the latter, nor has it granted any approval for registering an affiliated name as a domain name. The Respondent has no rights to use the “namet” name and trademark. The contents of the website at the disputed domain name do not suggest any legitimate use of “namet” phrase. The website is not actively used and only contains advertisements and an announcement that the disputed domain name is for sale. This indicates that the Respondent has no legitimate interests to use the disputed domain name and that it has acquired and held the same for unfair financial gain.

According to the Complainant, the Respondent has registered the disputed domain name to unfairly use the reputation of the Complainant, to prevent the Complainant from using this domain name, and to acquire financial gains by creating a false impression of affiliation with the Complainant. The Respondent does not use the disputed domain name in a legitimate and active fashion and the associated website contains a very limited number of advertisements and an announcement that the domain name is for sale. This allegedly suggests that the Respondent aims to acquire financial gains over the renowned NAMET trademark and that the disputed domain name was registered in bad faith.

Finally, the Complainant alleges that the Respondent has registered the disputed domain name with prior information about the trademark of the Complainant and for the purpose of selling it. Even if the Respondent had no prior information about the Complainant or the trademark thereof, the Respondent must have made a research beforehand. Such conduct represents willful blindness and indicates bad faith.

In its supplemental submission, the Complainant clarified that “Namet Gida Sanayi ve Ticaret A.S.” is its name in Turkish.

B. Respondent

The Respondent describes himself as a domain names investor who owns a portfolio of tens of thousands of descriptive, generic, dictionary word, keyword and/or geographic domain names. The Respondent invests in such property for its value as an investment property for future development and/or resale.

The Respondent points out that the Complainant has not explained its relationship with “Namet Gida Sanayi ve Ticaret A.S.”, which has registered the NAMET trademark, and has thus not established its trademark rights. The US trademark application of Namet Gida Sanayi ve Ticaret for a colored design mark N 1929 NAMET DOYULMAZ LEZZET contains a number of different graphical and word elements. The applicant for this trademark has argued to the United States Patent and Trademark Office (“USPTO”) that its trademark “must be reviewed for the likelihood of confusion as a whole and should not be broken into component parts to reach a conclusion of confusing similarity,” and that the trademark should not be dissected because the purchaser “is presumed not to retain a specific memory of the exact components” of the trademark. These arguments are irreconcilable with any assertion by the Complainant that it owns exclusive rights in the term “Namet.”

The Respondent submits that the certificates of Turkish trademark registration referred to by the Complainant and attached to the original Complaint have no English translation, so it is impossible to establish whether the Complainant is the owner of a valid registration for a trademark containing “Namet”. These trademark registrations are not relevant to this matter involving purported bad faith of a registrant from the US. The disputed domain name does not include the entirety of such mark, only a component that has a different meaning.

According to the Respondent, the term “Namet” is common and generic in the Czech dictionary and is also a surname. In the Czech language, “Námět” means a “topic” or an “inspired theme”. It is the generic name for an object serving as a source of inspiration for a new creation. “Namet” has a dictionary meaning in other Slavic languages as well, including Slovak, Serbian, Croatian, Bosnian, and Russian. The Complainant does not have monopoly over the Czech generic word “Námět” or over the surname “Namet”. There are many companies that use “Namet” in their trade names - from construction companies to fuel - that have nothing to do with the Complainant or its business. A brand owner who does not coin a term, but rather, adopts a term that in other contexts is a generic or descriptive term, must live with the consequences of that choice, which may sometimes include situations where other users cannot be prevented from adopting those same descriptive terms for use other than as a mark.

The Respondent acquired the disputed domain name on July 10, 2008 after it had been registered for six years, expired and was on sale in a domain auction, apparently free from trademark claims for those six years, and nearly five years since. The Respondent acquired it because of its intrinsic value as a dictionary term in the West Slavic languages. Its registration is consistent with the Respondent’s business model, registering short and inherently valuable domain names for their dictionary, generic, geographic and/or surname significance.

According to the Respondent, a surname domain name business involving use of words, some of which happen to be components of trademarks, for their non-trademark value, is a legitimate business. Pay-per-click advertising is a widely accepted, good faith practice when used in connection with prime, descriptive, geographic, generic, dictionary word, surname and/or keyword domain names and terms.

The Respondent does not use the word “namet” to designate the source or origin of products remotely resembling the Complainant’s. Rather, the Respondent has used the disputed domain name to show advertisements related to its non-trademark significance. Displaying hyperlinks and content related to the descriptive word “namet” at the resolving website is not an illegitimate use under the Policy. The Respondent has never initiated contact with the Complainant and was not even aware that this surname and dictionary term is a component of a trademark; it was not acquired for any association it might have with the Complainant’s mark. The Respondent only learned of the existence of the Complainant when it received the Complaint from the Center. The Respondent makes an effort to avoid trademarks. The trademark application in the US had not even been filed when the Respondent registered the disputed domain name.

The Respondent further points out that the Complainant has delayed the commencement of this proceeding without denying that it was aware of the third party ownership of the disputed domain name. Panels have recognized that unreasonable delay in initiating a complaint is a proper issue to consider.

The Respondent submits that he cannot be held to have had notice of Turkish trademark registrations, even if they had any relevance to this action brought by a different party than the purported Turkish trademark registrant. The WIPO Overview 2.0, paragraph 3.4, states that panels generally do not find constructive notice sufficient to infer bad faith, particularly in cases where complainant’s trademark is less well-known or corresponds to a common word or phrase. The mark has not been established to be famous or registered worldwide, and the Respondent has provided ample evidence that the word “namet” is a common word in Czech and other languages, and was registered solely for that purpose.

In the Respondent’s submission, the fact that the disputed domain name is listed for sale on Sedo is not evidence of bad faith. It is not in itself wrongful to trade in domain names, and investment in the secondary market for domain names can constitute the basis of a legitimate interest in a domain name, provided that the domain name is not being acquired in contexts in which its use identical, or confusingly similar to, a complainant’s trademark and the registration is not in bad faith. The bona fide nature of the Respondent’s use of the disputed domain name is not affected by whether or not the Respondent is interested in selling the disputed domain name for the preferred price. If the Respondent has legitimate interests in the disputed domain name, it has the right to sell that domain name for whatever price it deems appropriate regardless of the value that appraisers may ascribe to the domain name. It is undisputed that the Respondent has held the disputed domain name for years without approaching the Complainant or any competitor. This shows that the Respondent did not acquire the disputed domain name primarily to disrupt the Complainant’s business.

Finally, the Respondent argues that bad faith findings based on “passive holding” tend to involve marks that are inherently distinctive and well known, and where it would be difficult to conceive of a reason for choosing the respective domain name other than in reference to a well-known mark. That is not the case here.

6. Discussion and Findings

Pursuant to Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark 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 Respondent has registered and is using the disputed domain name in bad faith.

A. Identical or Confusingly Similar

The Complainant has provided certificates for the registration of three trademarks, registered in Turkey. This information was verified by the Panel through an online check at the official website of the Turkish Patent Institute at http://online.tpe.gov.tr/trademark/servlet/ETMSearchServlet. The Complainant has also clarified that its name in Turkish is “Namet Gida Sanayi ve Ticaret A.S.” Thus, the Complainant has established its rights in these trademarks, registered in Turkey.

It is a common practice under the Policy to disregard the generic top-level domains (“gTLD”) such as the “.com” for the purposes of the comparison under the Policy, paragraph 4(a)(i). Therefore, the relevant part of the disputed domain name is its “namet” section. This element is identical to the “namet” element of the Complainant’s combined trademark N NAMET 1929 with registration number 2001 16927, in which this “namet” element is the most prominent due to its size and central position, and because the element “1929” is likely to be regarded simply as a date. The “namet” element is also included in the other two trademarks of the Complainant, but they contain additional word elements as well, so the “namet” element is not so prominent there.

Therefore, the similarity between the disputed domain name and the trademark with registration number 2001 16927 of the Complainant creates a certain likelihood of confusion in Internet users, which is lesser in respect of the other two trademarks. Taking this into account, the Panel finds that the disputed domain name is confusingly similar to the trademark N NAMET 1929 with registration number 2001 16927, in which the Complainant has rights.

B. Rights or Legitimate Interests

The Policy requires the Complainant to make at least a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name. Once the Complainant makes such a showing, the Respondent may provide evidence to demonstrate that it has rights or legitimate interests in the disputed domain name. The burden of proof, however, always remains on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).

The Complainant alleges that it has not provided the Respondent with any license or permission enabling the use of the Complainant’s trademarks by the latter, nor has it granted any approval for registering the disputed domain name; that the Respondent has no rights to use the Complainant’s name and trademark; and that the associated website is not actively used and only contains advertisements and an announcement that the disputed domain name is for sale. These allegations may be regarded as sufficient to sustain the required prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name.

In response to the allegations of the Complainant, the Respondent submits that it acquired the disputed domain name after its abandonment by a prior registrant; that this acquisition was made because of the intrinsic value of the disputed domain name as a dictionary term in the West Slavic languages, and in line with the Respondent’s business model to register short and inherently valuable domain names for their dictionary, generic, geographic and/or surname significance. This activity started several years prior to the Complainant’s earliest trademark registration in the US. The Respondent’s position is basically that there may be a legitimate interest in a domain name where that domain name represents a dictionary word and is used in connection with the subject matter that this term describes, and where there is no obvious intention to trade on the rights or reputation of a trademark owner.

The Panel is of the position that as long as the website at a disputed domain name posts PPC links genuinely related to the generic meaning of the same domain name and such links are not based on the value of a trademark of the complainant, this may be permissible under the Policy.

After the review of the evidence submitted by both parties, the Panel has reached the following conclusions. As alleged by the Respondent and not denied by the Complainant in its supplemental filing, the word “namet“ has a dictionary meaning in the Czech and other Slavic languages. At the same time, the Complainant has not established that the website at the disputed domain name posts PPC links that are based on the value of the Complainant’s trademark, and are not genuinely related to the generic meaning of “namet”. Taking the above into account, the Panel is of the opinion that the Complainant has failed to establish that the Respondent does not have a legitimate interest in the disputed domain name.

Therefore, the Panel finds that the Complainant has not proven the lack of rights and legitimate interests of the Respondent in the disputed domain name.

C. Registered and Used in Bad Faith

For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the holder has registered or 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 the holder’s documented out-of-pocket costs directly related to the domain name; or

(ii) the holder 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 holder has engaged in a pattern of such conduct; or

(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’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 your website or location or of a product or service on the holder’s website or location.

The Complainant alleges that the Respondent has registered the disputed domain name to unfairly use the reputation of the Complainant, to prevent the Complainant from using the disputed domain name, and to acquire financial gains by creating a false impression of affiliation with the Complainant; that the associated website contains an announcement that the disputed domain name is for sale; or alternatively that the Respondent’s conduct is an example of willful blindness to the trademark rights of the Complainant.

The Respondent denies that it knew or had a duty to know the Complainant when the disputed domain name was acquired by him, and contends that the registration was made for investment purposes in view of the value of the disputed domain name as a dictionary term in the West Slavic languages, and in line with the Respondent’s business model to register domain names for their dictionary, generic or geographic significance. The Respondent points out that the disputed domain name was registered before the Complainant had applied for registration of its trademark in the US, in which circumstances bad faith cannot be proved, as the Respondent could not have contemplated the Complainant’s not-yet-existing right.

After the review of the evidence submitted by both parties, the Panel has reached the conclusion that it appears that the Respondent was unaware of the existence of the Complainant at the time it registered the disputed domain name and that the Respondent has not sought to target the Complainant’s trademark. The evidence submitted by the Complainant does not establish that the Respondent knew or should have known of the Complainant or of its trademarks registered in Turkey as of the date when the Respondent acquired the disputed domain name. As alleged by the Respondent and not denied by the Complainant in its supplemental filing, the word “namet” has a dictionary meaning in the Czech and other Slavic languages. At the time when the Respondent registered the disputed domain name, the Complainant had not filed a trademark application in the US, and there is no evidence in the case file to suggest that the Respondent had actually been put on notice of the Complainant’s Turkish trademarks. This leads the Panel to the conclusion that there is nothing about the circumstances of this case to suggest that the Respondent was willfully blind to the Complainant’s trademark rights when acquiring the disputed domain name.

Taking this into account, the Panel is of the opinion that the registration of the disputed domain name could not have been in bad faith because the Respondent could not have contemplated the Complainant’s trademark rights. Therefore, the Complainant has failed to establish that the registration of the disputed domain name is in bad faith under the Policy. In these circumstances, the Panel finds no reasons to regard the use of the disputed domain name for posting PPC links unrelated to the Complainant and the public offer of the Respondent for sale of the disputed domain name as illegitimate either.

For these reasons, the Panel finds that the Complainant has failed to establish that the Respondent has registered and used the disputed domain name in bad faith.

7. Decision

For the foregoing reasons, the Complaint is denied.

Assen Alexiev
Sole Panelist
Date: April 30, 2013