WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Galatasaray v. NorthWest Comp.
Case No. D2003-0018
1. The Parties
The Complainants are Galatasaray Spor Kulubu Dernegi, a company with its principal place of business in Istanbul, Turkey, Galatasaray Pazarlama A.S., a company with its principal place of business in Istanbul, Turkey, and Galatasaray Sportif Sinai Ve Ticari Yatirimlar A.S., a company with its principal place of business in Istanbul, Turkey ("Complainants").
Complainants' authorized representative is Ms. Dilek Ustun of Istanbul Patent & Trademark Consultancy Ltd., with offices in Istanbul, Turkey.
Respondent is NorthWest Comp. of California, United States of America ("Respondent").
2. The Domain Name and Registrar
The domain name at issue is <galatasaraystore.com> ("the Domain Name").
The registrar is BulkRegister.com, Inc. of Baltimore, Maryland, United States of America ("the Registrar").
3. Procedural History
The Complaint, in accordance with the Uniform Domain Name Dispute Resolution Policy (the "Policy"), was electronically filed with the World Intellectual Property Organization (WIPO) Arbitration and Mediation Center (the "Center") on January 9, 2003. The hardcopy version of the Complaint was received on January 13, 2003. An Acknowledgement of Receipt was sent by the Center to Complainant by e-mail on January 9, 2003.
On January 9, 2003, a Request for Registrar Verification was transmitted to the Registrar. On January 9, 2003, the Registrar confirmed by e-mail that the Domain Name is registered through the Registrar, that Respondent is the current registrant of the Domain Name and that the Policy is applicable to the Domain Name.
On January 14, 2003, a Notification of Complaint and Commencement of Administrative Proceedings (the "Commencement Notification") was transmitted by email and by courier to Respondent, setting a deadline on February 3, 2003, by which Respondent could make a Response to the Complaint.
Respondent did not file a Response, and on February 4, 2003, the Center sent a Notification of Respondent Default to the parties.
On February 10, 2003, the Center sent a Notification of Appointment of Administrative Panel and Projected Decision Date by email to the parties, in which Wolter Wefers Bettink was appointed as the Sole Panelist and the Projected Decision Date was set at February 24, 2003.
4. Factual Background
The following facts, supported by evidence and not disputed by Respondent, are established.
The first Complainant ("the Club"), a sports club, was established in 1905, by a group of students in Galatasaray High School. The Club has become the leading sports club in Turkey in terms of the number of supporters, according to a market research produced by Complainants. Although the Club is active in several sports, football has been the principal sports activity of the Club since its founding. The football team is one of the most successful professional football teams in Europe. In the 1999/2000 season it was the first ever Turkish football team to win the UEFA Cup.
The second Complainant ("Galatasaray Pazarlama") was established in 1997, in order to collect a number of trademarks under one entity. Trademarks formerly held by the Club were transferred to Galatasaray Pazarlama, which has granted the Club a license to use these trademarks.
The third Complainant was established in 1997, by the Club to take care of the Club's media, advertising and marketing activities relating to the football team.
Respondent registered the Domain Name on November 19, 2001.
The Domain Name leads to a website, displaying an aerial photograph of the western part of the city of Istanbul, in which a small area has been encircled. The following text is displayed:
You can find all information (stores, historical places, links) about Galatasaray (Istanbul) here!"
After the visitor of the website clicks on the photograph, another webpage (under the same domain) is reached where information is given on "Beyoglu" and on "Galatasaray". The website mentions, as far as relevant:
Galatasaray has traditionally marked the point at which one entered the quieter half of Beyoglu. In recent years however, a growing number of new and varied establishments have begun to draw greater crowds south of the border, so to speak. ..."
After the information on "Beyoglu" and "Galatasaray", under the heading "Shops, stores, restaurants" the addresses and phone numbers of five businesses (apparently shops, stores or restaurants) are provided. In the addresses of four out of five, the address finishes with "Galatasaray Istanbul" as the place of residence.
After this, under the heading "Galatasaray Region Related Links", links are provided to the websites of Galatasaray High School, Galatasaray University and the Club. The bottom of the page reads as follows:
"galatasaraystore, prepared by various shop owners to promote business at the Galatasaray region. If you want to be a part of site please contact us at firstname.lastname@example.org"
On November 28, 2002, Complainants' authorised representative sent a cease and desist letter to Respondent, demanding that Respondent would transfer the Domain Name to the Complainants. Respondent did not reply to this letter, and continued to use the Domain Name.
5. Applicable Rules
Paragraph 4(a) of the Policy directs that Complainants, to obtain the requested remedy, must prove each of the following:
(i) that the Domain Name is identical or confusingly similar to Complainants' trademark; and
(ii) Respondent has no rights or legitimate interest in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
6. Parties' Contentions
Complainants contend that the Domain Name is identical to trademarks and service marks held by Complainants. Complainants state that they have certain intellectual property rights in the marks GALATASARAY and GALATASARAYSTORE.
Galatasaray Pazarlama holds ten Turkish trademark and service mark registrations, and has also filed a trade and service mark application with the Turkish Patent Office on September 2, 2002, to register the mark GALATASARAY STORE.
The dominant part of the Domain Name is the designation "Galatasaray". The only difference between the trade marks and service marks held by Complainants and the Domain Name is the presence (in the marks) of the words Spor Külübü, which means Sports Club, and thus plays only an accessory role in Complainants' trademarks because of their descriptive character. The incorporation of a trademark in its entirety in a domain name is sufficient to establish that the Domain Name is identical or confusingly similar to the Complainants' registered mark.
Apart from the registrations, it is generally understood that an exclusive right in a trademark can be acquired without registration; one may be entitled to a common law trademark or service mark without registering the mark with the appropriate authority.
Complainants argue that Galatasaray is not a geographical term. Even if one assumes that it is a geographical term, the name Galatasaray has a stronger significance as a trademark than as a geographical term. A public opinion survey inquiring what the word Galatasaray means to the Turkish public, would definitely show that the word stands for a football club. The name of the area the Respondent refers to on his website is not Galatasaray but Galata. Galata is a geographical location in the town Beyoglu.
Addition of the term "store" to the mark GALATASARAY does not prevent the Respondent from infringing Complainants' common law and trademark rights.
Complainants state that Respondent has no rights or legitimate interests in the Domain Name.
Complainants argue that Respondent could only have a right to the Domain Name if Complainants had specifically granted him that right, as at the time of registration of the Domain Name, the Club had been in existence for nearly a century and had acquired common law rights in its name, while more recently several trademarks were registered by the Turkish Patent Institute, also before the date of registration of the Domain Name. Respondent has acquired no trademark or service mark rights and has not become known by the name Galatasaray. Complainants contest that, as is claimed on the website under the Domain Name, Galatasaray is a geographical location in Istanbul, and that the website is intended to provide information about stores, historical places and links in this location. Complainants believe that the Respondent's real intention is not to provide information on stores, historical places etc. in the Galata area, as a website owner whose real intention is to provide such information would not be satisfied with giving addresses of only five restaurants in the area, since there are hundreds of restaurants, cafes, pubs, bars as well as numerous worth-to-see places and historical sites in the area. Complainants believe that Respondent is hiding his real intentions and only pretending to be an innocent domain name holder.
Furthermore, Complainants argue that Respondent has registered and is using the Domain Name in bad faith. Complainants argue that the administrative contact listed for Respondent in regard to the Domain Name is a citizen of the Turkish Republic, and thus should know that Galatasaray is one of the best known marks in Turkey and in the world; that when Respondent registered the Domain Name it knew that the name was the name of the Complainants; that Respondent intended the Domain Name to refer to the name of Complainants; and that in registering the Domain Name Respondent hoped and anticipated that Complainants would pay Respondent a substantial sum of money, as it is well known that famous sports clubs generally intend to run a website incorporating their own name and extensions like "store" in order to sell products associated with their sports activities and fame. An example is the commercial website under "www.bjkstore.com", of another Turkish football club, Besiktas Jimnastik Klubu (shortly known as BJK).
Complainants state that, in the light of these facts, the Domain Name was registered primarily for the purpose of selling, renting or otherwise transferring it to the owner of a trademark for valuable consideration in excess of the domain name registrant's out of pocket costs (as indicated under 4(b)(i) of the Policy as a circumstance indicating bad faith).
Furthermore, Complainants state that the Domain Name was registered in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name (the circumstance indicating bad faith listed under 4(b)(ii) of the Policy), as Respondent did not react to the cease and desist letter, while it was aware of the fact that Complainants may have the intention to have a website under the Domain Name, and that Respondent by registering the Domain Name forced Complainants to pay for the transfer of the Domain Name, with which in fact Respondent does not have any kind of relationship.
Finally, Complainants state that (the circumstance indicating bad faith listed under 4(b)(iv) of the Policy) by using the Domain Name Respondent has created a likelihood of confusion with Complainant's marks, and unfairly tried to take advantage of the fame of the name Galatasaray, associated directly with Complainants. Complainants argue that the registration and use of a domain name incorporating a famous well-known mark is necessarily made in bad faith, whereas Respondent knew at the time of registration that he could not make any actual use of the Domain Name without infringing the trademark owner's rights.
Respondent has not filed a Response.
7. Due Process
Where, as in this case, a Respondent does not submit a Response, the rules of due process require the Panel to verify, to the extent possible, that Respondent is aware of the present proceedings. The Panel is satisfied, on the basis of the file documentation, that this is the case.
A copy of the Complaint was sent by the Center to Respondent by courier, by fax and by e-mail to two e-mail addresses of Respondent. The fax message apparently failed to reach Respondent, but it can be assumed that Respondent received the copy of the Complaint by e-mail and by courier.
The Panel therefore assumes that Respondent has received the Complaint and is aware of the proceedings, but has chosen not to respond.
8. Discussion and Findings
a. Trademark rights
Summarizing, Complainants base their assertion of trademark rights on three grounds:
i) a GALATASARAY STORE word mark, filed by Galatasaray Pazarlama with the Turkish Patent Institute on September 2, 2002,
ii) a 'common law' trademark right of Complainants in the designation GALATASARAY, and
iii) 10 Turkish trademarks and servicemarks, all held by Galatasaray Pazarlama.
The Panel observes the following in relation to these trademark rights:
i) As this trademark application was made after November 19, 2001, the date of registration of the Domain Name, the Panel will not consider this trademark. For completeness’ sake, it is mentioned that Complainants have not stated or documented that this trademark has been registered, so that it has to be assumed that it is still in its application phase. Since Complainants have not stated or substantiated that under Turkish trademark law, it is possible to derive rights from a trademark application, the Panel assumes that this is not the case, which would be another reason not to consider this trademark as a possible base for Complainants' claims.
ii) In two UDRP cases involving Complainants, other Panels have held that Complainants hold common law trademark rights in the name Galatasaray, which would have acquired secondary meaning (see Galatasaray Sport Kulübü Dernegi c.s. v Maksimum Iletisim A.S., (WIPO Case No. D2002-0726) and Galatasaray Sport Kulübü Dernegi c.s. v Metkom Iletisim A.S. (WIPO Case No. D2002-0917)). In view of the consideration under (iii) below, this Panel only wishes to remark that Turkey, the country of residence of Complainants, is not a common law country, so that it is not certain whether in this case Complainants could rely on such rights.
iii) Complainants have, in the Complaint and in Annex 16 to the Complaint, listed 10 (ten) Turkish trademark registrations to substantiate their claims. However, in Annex 9 to the Complaint, copies of only six trademark registration certificates have been provided. Consequently, only these six marks will be considered in this case.
b. Identical or confusingly similar
The Domain Name consists of the combination of the designation "galatasaray", the word "store", and the ".com" gTLD suffix. The presence of the .com suffix is immaterial, as it only indicates that the Domain Name is registered in the .com gTLD. Of the elements "galatasaray" and "store", the element "galatasaray" is the dominant element. The element "store" refers to a business establishement from where goods are sold. The Domain Name creates the expectation that on the corresponding website, one can buy goods relating to "galatasaray".
The Panel notes that among the six marks it can consider, as noted above under 8(a), there is no wordmark protecting the designation GALATASARAY as such. All six marks consist of logos.
Only two of the six logos contain the element GALATASARAY, which makes the other four irrelevant. The two relevant logos consist of
i) a circle , displaying a stylized letter G and S and the number (year) 1905 in the inner circle, and the text, in capitalized letters "GALATASARAY SPOR KULUBU 1905" in the outer circle (trademark, registration number appears to be 210931), and
ii) a circle, displaying a lion's head within a stylized letter G in the inner circle and the text, in capitalized letters "1905 - GALATASARAY SPOR KULUBU – 1980 75.YII" in the outer circle (service mark, registration number appears to be 21093)
Complainants have established, by providing (Annex 15) a publication issued by the Turkish Patent Institute on well-known trademarks, that these two logos must be considered to be well-known marks in Turkey.
When reviewing these logos, it is clear that GALATASARAY and the image of an intertwined G and S are both dominant elements, while SPOR KULUBU means "sports club" and the numbers merely indicate the year the Club was founded (and the year of its 75th anniversary in the second logo).
As set out in WIPO Case No. D2002-0726, referred to above, the designation GALATASARAY (as such) is very well-known worldwide as the name of the Club, which is one of Europe’s leading football clubs. In this light, the element GALATASARAY must be considered to be the most distinctive and most dominant element of the above mentioned marks.
Moreover, in view of the above, the Domain Name creates the expectation with the public that on the corresponding website, one can buy merchandise relating to the Club (shirts, caps, flags etcetra). This likelihood is supported by the fact that if one enters "Galatasaray store" as a query into a search engine such as Google, most of the websites referred to regard the Club.
Therefore, the Domain Name is confusingly similar to the (most distinctive element of the) well-known marks in which Galatasaray Pazarlama holds rights.
c. Rights or legitimate interests
On the basis of the evidence and the decision in WIPO Case No. D2002-0726, referred to above, the Panel assumes that "Galatasaray" - meaning "Galata palace" - is sometimes used to refer to an area in the Beyoglu district of Istanbul. The Galatasaray Lycée (founded in 1868) and the Galatasaray University are located in this area.
The content of Respondent’s website and the use of the English language under the Domain Name suggest that it is being used as a means to provide the international public with information on and links to shops and restaurants in this area. The Panel notes that such use could in principle demonstrate a right or legitimate interest in the Domain Name, when the Domain Name is considered as being used in connection with the bona fide offering of services (the Policy, under 4(c)).
The Panel is, however, not convinced that Respondent's real intention is to use the Domain Name in connection with such a bona fide offering of services, since:
(i) although the term "Galatasaray" is sometimes used as a designation for the geographical area referred to above, this use is uncommon;
(ii) it is not obvious that under the Domain Name <galatasaraystore.com> information can be found on shops and restaurants in the "Galatasaray" area of Istanbul; such information does not relate to one "store", but several stores or shops and restaurants;
(iii) the website consists of only one page, containing information on only five shops and restaurants in the area;
(iv) neither from the website, nor from general information on Istanbul found on the internet, is it obvious why Respondent has chosen to devote a special website to this area, as it does not appear to be an area which stands out by reason of its shops or restaurants.
The Panel is aware that holders of infringing domain names sometimes try to create the appearance of a legitimate interest in a domain name by opening a website under the domain name, of which the content in some way refers to the domain name, without referring to the (holder of a) trademark to which the domain name is identical or confusingly similar. In view of the circumstances indicated above, this appears to be such a case.
The Panel therefore finds that Respondent has no right or legitimate interest in the Domain Name.
d. Bad faith
Respondent has, by not submitting a Response, failed to rebut the arguments raised by Complainants to support their opinion that Respondent has registered and is using the Domain Name in bad faith.
Given the facts that
(i) the designation "Galatasaray" is well-known world-wide as the name of the Club (as discussed above);
(ii) in the minds of the relevant, international public the designation "Galatasaray" almost exclusively refers to Complainants;
(iii) Respondent’s website contains a hyperlink to the Club’s website without an apparent need to do so, as the Club is not located in the area on which Respondent's website provides information;
(iv) Respondent has failed to bring forward any circumstances indicating any actual good faith use which would not infringe the Complainants' trademarks (of which the dominant element is "Galatasaray");
the Panel finds it unlikely that
(i) Respondent could commercially use the Domain Name without violating Complainants’ trademark rights, and
(ii) Respondent would have selected the Domain Name without knowing of the reputation of Complainants’ marks.
These facts justify the conclusion that both the registration and the use of the Domain Name have been made in bad faith. See also Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (May 1, 2000), in which the Panel concluded that the domain name was so obviously connected with such a well-known product (trademark) that its very use by someone with no connection with the product (trademark holder) suggested bad faith.
The Panel therefore concludes that Complainants have supplied sufficient evidence that Respondent's registration and use of the Domain Name have been made in bad faith.
On the basis of the foregoing, the Panel decides that Complainants have provided the required evidence for the requested order transferring the domain name from Respondent to Complainants. Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel orders the registration of the Domain Name <galatasaraystore.com> be transferred to Complainants.
Wolter Wefers Bettink
Dated: February 24, 2003