WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Turkcell Iletisim Hizmetleri A.S. and Turktell Bilisim Servisleri A.S. v. Izzet Mert Ozek / PrivacyProtect.org

Case No. D2011-0840

1. The Parties

The Complainants are Turkcell Iletisim Hizmetleri A.S. and Turktell Bilisim Servisleri A.S. of Istanbul, Turkey represented by Istanbul Patent & Trademark Consultancy Ltd. of Turkey.

The Respondent is Izzet Mert Ozek of Kocaeli, Turkey / PrivacyProtect.org of Nobby Beach, Australia.

2. The Domain Name and Registrar

The disputed domain name <fizyin.com> 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 13, 2011. The Complainants named PrivacyProtect.org as the Respondent of the case. On May 16, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 17, 2011, the Registrar transmitted by email to the Center its response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Registrar named Izzet Mert Ozek as the registrant of the record and provided its contact details. The Center sent an email communication to the Complainants on May 19, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amendment to the Complaint on May 17, 2011.

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 May 23, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 12, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 14, 2011.

The Center appointed Selma Ünlü as the sole panelist in this matter on June 15, 2011. 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.

4. Factual Background

The facts stated in the Complaint are as follows:

(1) The First Complainant, Turkcell Iletisim Hizmetleri A.S. (“Turkcell”) is the leading GSM based mobile operator company in Turkey and the third biggest GSM operator in Europe established in 1994 and having agreements with 541 operators in 193 countries as of 23 March 2007.

(2) The Second Complainant, Turktell Bilisim Servisleri A.S. (“Turktell”) is the subsidiary company of the First Çomplainant established in 2000 for providing cyber and digital services and a venture capital company for new projects for the First Complainant’s group companies.

(3) Fizy is a recognized international online music database platform created under < fizy.com> domain name by three Turkish entrepreneurs. The domain name has been used continuously since 2008 and it gained Mashable Award in the category of “Best Music Discovery Service”. It has more than one million subscripted users, while subscription is not necessary to use the website.

(4) Fizy, all with the domain names, trademarks, patent and copyrights, etc., was bought by the First Complainant through its group company Turktell (the Second Complainant) on January 28, 2011.

(5) The trademark FIZY was registered in the name of a third party, Fizy Medya İnternet ve Bilişim Teknolojileri Limited Şirketi on March 20, 2009; however, it was assigned to the Complainants by the assignment agreement dated January 28, 2011.

(6) The disputed domain name <fizyin.com> was registered in the name of the Respondent, on April 7, 2011, 10 years after the domain name <fizy.com> was registered on November 27, 2001.

Panel’s observation of the case file reveals the following:

(1) The disputed domain name is inactive and there was no content provided, when the Panel visited the Respondent’s website on June 22, 2011.

(2) The name, corporate address and email address details of the Respondent provided by the Registrar indicates that the Respondent is located in Turkey.

(3) The Complainants are the new owner of the FIZY trademark and the domain names containing “fizy” phrase such as <fizy.com>, <fizy.net>, <fizy.org> and <fizy.com.tr>.

(4) The web page <fizy.com> is a well recognized and preferred web page to discover music.

5. Parties’ Contentions

A. Complainants

The Complainants request the Panel to issue a decision transferring the disputed domain name to the Complainants on the following grounds:

(i) The disputed domain name is identical or confusingly similar to a trademark or a service mark in which the Complainants have rights;

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) The disputed domain name was registered and is being used in bad faith.

(i) Identity or Confusingly Similarity

The Complainants allege that the disputed domain name is identical with the registered trademark “fizy” since it incorporates exactly and entirely “fizy” phrase as distinctive and main element.

The Complainants argue that the disputed domain name constituted by the words “fizy” and “in” which together refer to “fizy is here”, “fizy is inside” fizy is built-in” sentences, etc. The Complainants also alleged that the term “IN” is a generic suffix and Respondent creates a likelihood of confusion with the FİZY marks of the Complainants.

The Complainants mentioning the Yahoo! Inc. and Overture Services, Inc. v. Registrant (187640), a/k/a Gary Lam, a/k/a Birgit Klosterman, a/k/a XC2, a/k/a Robert Chua, a/k/a Registrant, WIPO Case No. D2004-0896, state that there is confusing similarity where the entire mark in question is incorporated into the disputed domain name and where only a generic word has been added. In this decision it was concluded that “None of the [..]) disputed Domain Names are identical to Complainant’s trademarks. However, all Domain Names consists of (i) Complainants trademark with the addition of a generic term, or (ii) combinations of Complainant’s trademarks, or (iii) misspellings of Complainant’s trademarks, with or without combination of generic terms. Such combinations or misspellings are not sufficient to distinguish Respondent’s domain names from Complainant’s trademarks. On the contrary, if the addition is a term associated with the business of the Complainant [..]) it can even add to the similarity between the domain name and the trademark in question..[..]) Even if the generic terms are misspelled, it may, in the eyes of the public, add to the similarity of the trademark if the misspelling is obvious and easy to read as the original term – such as mial v. mail. It is the opinion of this Panel that all disputed Domain Names are confusingly similar to Complainant’s trademarks [..])”

The Complainants mentioned that mere addition of the generic suffix “in” fails to alleviate confusion.

(ii) Rights or Legitimate Interests

Complainants allege that, the Respondent has no prior rights or legitimate interests in respect of the disputed domain name since the Respondent is not licensed or permitted for use of the Complainants’ service mark.

On the other hand they state that the Respondent have not used the disputed domain name in connection with a bona fide offering of goods and services. Under the disputed domain name the Respondent operated an identical website with FİZY websites despite his knowledge on the Complainants’ established rights on the FİZY marks and with the aim of taking unfair advantage of the Complainants.

Additionally the disputed domain name is not a mark by which the Respondent is commonly known;

(iii) Registered and Used in Bad Faith

The Complainants claim that the website under the disputed domain name <fizyin.com> is forwarded to a Facebook application “Muzik Dinle” (which means “Listen to Music” in English) and to use this application, the Internet users should allow the Respondent to access all kinds of information, including their friends information.

The Complainants argue that with respect to their well-known status and extensive usage, the Respondent is well aware of the Complainants’ FİZY marks, so he has registered and used the disputed domain name in bad faith for the purpose of obtaining all kinds of information of the users via a Facebook application by reputation over the FİZY marks and domain names, which are owned by the Complainants and are well known and relied by the Turkish consumers.

The Complainants allege that the Respondent registered the domain name, <fizyin.com> just to creating likelihood of confusion with the Complainants’ mark as to the source , sponsorship, affiliation, or endorsement of service on Respondent’s application. There will be no bona fide reasons for registering the <fizyin.com> domain name and demanding all private information of the users pretending like the well-known Complainants’ companies and well known trustable website.

In addition to this, the Complainants also assert that the Respondent indicated the bad faith by using “privacy services” to hide its identity to be unreachable by the Complainants.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

In relation to the multiplicity of Complainants, the Panel believes that, due to the common grievance of the Complainants it is procedurally efficient and equitable to allow the multiplicity of the Complainants. Also it is accepted by UDRP panels that when multiple complainants who are the part of a single entity and have an interest in a trademark, they may submit a unitary complaint against the Respondent. See, e.g., Media West-CPI, Inc., Media West-DMR, Inc., Media West-GMP, Inc., Media West-GSI, Inc., Media West-PNI, Inc., Media West-PNJ, Inc., Media West-SJC, Inc., Media West-NPP, Inc., Cape Publications, Inc., Des Moines Register and Tribune Co., Gannett Satellite Information Network, Inc., Multimedia Holdings Corp., Phoenix Newspapers, Inc., Gannett Co., Inc. v. Unasi, Inc., WIPO Case No. D2005-1336.

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 Complainants 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 Complainants have 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 Complainants have the burden of proving that all these requirements are fulfilled.

A. Identical or Confusingly Similar

The test for identity or confusing similarity under the Policy, paragraph 4(a)(i) is typically limited in scope to a direct comparison between a complainant’s trademark and the textual string which comprises the disputed domain name.

Based on the evidence submitted by the Complainants concerning the transfer of the FİZY, the Panel finds that the Complainants have successfully proved the earlier registered rights on the FİZY marks.

Additionally, the Panel considers that the disputed domain name is confusingly similar to the Complainants’ domain name <fizy.com> which was registered well before the disputed domain name. Furthermore, the Panel finds that the confusing similarity cannot be overcame with the addition of suffix “in” in the disputed domain name as it bears no distinctive character. Therefore, as the disputed domain name wholly contains FİZY mark, the Panel finds the disputed domain name needs to be regarded as confusingly similar. See, e.g., Dr. Ing. H.c.F. Porsche AG v. Vasily Terkin, WIPO Case No. D2003-0888.

In similar cases, UDRP panels have found that adding descriptive words does not remove the likelihood of confusion between a trademark and a domain name incorporating said trademark.

Sanofi-Aventis v. Gideon Kimbrell, WIPO Case No. D2010-1559: “In relation to the incorporation in the disputed domain name of a generic word “buy”, the Panel finds that the inclusion of a generic element together with a trademark cannot contribute to distinguishing the disputed domain name from a registered trademark where such domain name incorporates a distinctive trademark. The Panel finds that the addition of the merely generic and descriptive element “buy” in the disputed domain name does not avoid a finding of confusing similarity in this case. Indeed, the inclusion of such terms in the disputed domain name may increase the risk of confusion for the Internet users taking into account that the Respondent is using the disputed domain name to link to websites that are offering medicines, including generic ones and those of the Complainant’s competitors.”;

Turkcell Iletisim Hizmetleri A.S. v. Vural Kavak, WIPO Case No. D2010-0010: “The Panel finds that the addition of the generic word “mobile” does not distinguish the Respondent’s domain name from Complainant’s trademark [...]. Furthermore the generic term, “mobile” is directly related to Complainant’s business and the addition of generic word is especially confusing where the generic words bear an obvious relationship to Complainant’s business.”

The Panel also finds that adding a descriptive word “in” may be evaluated as an invitation such as “sign in to fizy”, “come in to fizy” – “fizy in”. It is obvious that as a result of the recognition of the Complainants and their trademark FİZY, the disputed domain name may be regarded by many Internet users as a domain name associated with websites operated by the Complainants. The Panel concludes that although the disputed domain name includes additional word to the Complainants’ mark, the additional word is not sufficient to distinguish the domain names from the Complainants’ mark.

Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainants’ mark FİZY and thus, the first requirement under paragraph 4(a) of the Policy satisfied.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy states that, a Respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:

“(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) You [Respondent] are 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.”

The burden of proof lays on the Complainants who must demonstrate a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. Once the Complainants have made out a prima facie case, then the Respondent may, by, inter alia, showing one of the above elements, prove rights or legitimate interests in the disputed domain name.

The Panel finds on the current record that the Complainants has proved rights in the FİZY mark and also prima facie established that the Respondent does not have rights or legitimate interests in the disputed domain names for the purposes of the Policy. The Complainants have not granted the Respondent any right or license to use the FİZY marks.

The Panel finds that the Respondent has not provided evidence of the circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name. Thus, the Panel finds that the Respondent has failed to furnish evidence to show that it has rights or legitimate interests in the disputed domain name.

In this sense, based on the content of the case file, the Panel holds that the use of the FİZY mark has not been authorized or licensed to the Respondent, the disputed domain name does not obviously correspond to the Respondent’s name or a trade name by which it has become commonly known.

Hence, as the rights or legitimate interests of the Respondent have not been duly proven under paragraph 4(c)(ii) of the Policy, the Panel concludes that the Complainants have satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four, non-inclusive, circumstances that, 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 respondent 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 respondent’s 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 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 respondent’s website or location.

By consideration of the foregoing, the Panel is of the opinion that due to the extensive and intensive usage of such marks, as well as the above mentioned domain names, the Respondent, who appears to be located in Turkey, cannot be taken to be unaware of their existence. The use of the disputed domain name on the same services with the Complainants also strengthens this evaluation.

Based on this submission and the facts, the Panel considers that the disputed domain name was registered primarily for the purpose of getting the private data of the Internet users including their friends’ which are not needed to provide a music service. Moreover, the Panel is of the opinion that, these kind of personal information are not needed to unless they will be abused by third parties.

Hence, the Panel is convinced that the disputed domain name has been registered and is being used in bad faith and that the Complainants have established the third element under paragraph 4(a)(iii) of the Policy.

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 <fizyin.com> be transferred to the Second Complainant,

Turktell, as requested in the Complaint.

Selma Ünlü
Sole Panelist
Dated: June 28, 2011