WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sabanci v. iu
Case No. D2003-0498
1. The Parties
The Complainant is Sabanci, of Istanbul, Turkey, represented by Arnold & Porter, of United States of America.
The Respondent is iu, of Bloomington, Indiana, United States of America.
2. The Domain Name and Registrar
The disputed domain name <gidasa.com> (the "Domain Name") is registered with Tucows.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 24, 2003. On June 26, 2003, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On June 26, 2003, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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 June 27, 2003. In accordance with the Rules, Paragraph 5(a), the due date for Response was July 17, 2003. The Response was filed with the Center on July 10, 2003.
The Center appointed Daniel J. Gervais as the sole panelist in this matter on July 16, 2003. 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
Sabanci is an international holding company based in Turkey. It is the parent of Sabanci Group, which is one of the two largest industrial and financial conglomerates in Turkey. Underneath the Sabanci corporate umbrella exist more than 70 companies, many of which are market leaders in their respective sectors, including food and retailing, financial services, polyester, cement, automotive, tire and tire cord, textiles, Internet and information technology. Together, these companies operate in ten foreign countries and export products throughout Europe and the Middle East, parts of Asia, North Africa and North America. Since 1980, Sabanci has been doing business in the United States through its wholly-owned subsidiary, Holsa, Inc.
The name of each of these companies, with the exception of a small number of banks and foreign partnerships, ends in the suffix "SA." The SA suffix is used by Sabanci to identify member companies of the Sabanci group. The "SA" logo is depicted graphically by a white "S" and "A" in blue circles. This logo has been registered as a trademark in, among other places, the European Union and the Republic of Turkey in numerous classes and services, including, without limitation: provision of food and drink, advertising, business management, insurance, financial affairs, telecom-munications, education, entertainment, sporting and cultural activities, temporary accommodations, legal services, scientific and industrial research, and computer programming.
One of the Sabanci companies is Gidasa Sabanci Gida Sanayi ve Ticaret A.S. ("Gidasa Sabanci"), which produces and sells food products in Turkey and other countries throughout the world. To promote and brand its food products that are produced and sold by Gidasa Sabanci, Sabanci owns, among other trademarks, the trademark "GIDASA" for use in connection with numerous types of meats, ready-to-cook soups and meals, dried legumes, fruits, jams, marmalades, eggs, proteins, snack foods, pastas, breads, puddings, and food flavorings. This trademark was registered in Turkey on November 28, 2002. Under the GIDASA Mark, Sabanci currently produces, markets and sells numerous food products including pastas, dry soup mixes, instant soups, semolina, wheat flour, rice flour, starch, and cracked wheat. GIDASA products are exported to countries throughout the world, including the United States, and certain European Union and African nations.
In March 2003, Sabanci attempted to register the <gidasa.com> domain name for use in connection with its planned official Complainant’s website. At that time, Sabanci discovered that the Respondent had already registered the domain name and had established a web page at "www.gidasa.com." Displayed on this web page in large type was the offer: "DOMAIN NAME FOR SALE! The domain name <gidasa.com> is for sale by owner. Please e-mail any offers for this domain name directly to firstname.lastname@example.org. Thank you."
On April 16, 2003, Sabanci’s attorney sent a letter to the Respondent notifying him that his use of the Domain Name infringed Sabanci’s rights and requesting that the Respondent transfer the domain name registration to Sabanci. That same day, the Respondent sent an electronic mail message in response admitting that he had offered the Domain Name for sale, and agreed to remove that language from his "www.gidasa.com" website. He indicated that he had put the domain name for sale as an automatic option offered by the hosting service/registrar.
On April 18, 2003, the Complainant’s attorneys replied that removing the "For Sale" mention from the "www.gidasa.com" website was not sufficient to protect the Complainant’s trademark rights in the GIDASA Mark and that resolution of the matter would require transfer of the Domain Name. Later that day, the Respondent sent an e-mail in which he refused to transfer the domain name to Sabanci. He responded, "Why would I transfer the name to sabanci as I have also an interest in this domain name? Why would I compromise my interests, and pleasure, and gain that I will get from this website?" On April 22, 2003, the Complainant’s attorneys replied to Mr. Ikibas by e-mail and explained that any "gain" Mr. Ikibas received from the <gidasa.com> domain name would be the result of an infringement of the GIDASA Mark.
The Respondent is an engineering student and a Turkish national living in the United States. According to a resume obtained by the Complainant, the Respondent received a degree in Managerial Engineering from Istanbul Technical University in Istanbul Turkey and worked for a subsidiary of a large Turkish conglomerate, Eczacibasi, in Istanbul. The Respondent is currently preparing a doctorate at the University of Indiana.
5. Parties’ Contentions
The Complainant bases its case on two different marks, first the GIDASA mark, second the SA logo, both of which are registered and presumed valid. Sabanci has spent substantial effort and money advertising and promoting both marks throughout the world. As a result, these marks have become well-known, and Sabanci has developed significant goodwill in them. In connection with the GIDASA Mark, Sabanci has registered the domain name <gidasa.com.tr>" and begun to develop an official Gidasa Sabanci website.
The Respondent’s domain name <gidasa.com> is identical to, and comprised entirely of, Sabanci’s registered trademark GIDASA.
US courts have recognized that consumers expect to find a company on the Internet at a domain name comprised of the company’s name or marks. See Panavision Int’l, L.P. v. Toeppen, 141 F.3d 1316, 1327 (9th Cir. 1998). This is all the more so when, as in Sabanci’s case, the company uses the Internet to provide consumer information regarding its products and services.
The Respondent has no connection or affiliation with Sabanci or Gidasa Sabanci, and has not received any license or consent, express or implied, to use the GIDASA Mark in a domain name or in any other manner. In addition, Sabanci is informed and believes that the Respondent has never been known by the name "Gidasa" or by the Domain Name. Furthermore, there is no connection, whether by acronym, plain meaning, secondary meaning or otherwise, between the Respondent and "Gidasa." Accordingly, the Respondent has no legitimate interest in the GIDASA Mark. There is no evidence of any legitimate connection between the Domain Name and the Respondent
The Respondent admitted that he offered the <gidasa.com> domain name for sale. Public notice that a domain name is for sale is evidence of bad faith under Paragraph 4(b) of the Policy. Parfums Christian Dior v. QTR Corp., WIPO Case No. D2000-0023 at § 6(c) (March 9, 2000); and Microsoft Corp. v. Amit Mehotra, WIPO Case No. D2000-0053.
As Sabanci’s numerous registrations attest, the SA Logo is famous and well-known throughout the world. The GIDASA mark incorporates Sabanci’s "SA" logo and, thus, is uniquely associated in the minds of consumers with Sabanci. As a Turkish national formerly residing in Turkey, the Respondent clearly had to have knowledge of Sabanci and its group of "SA" companies, including Gidasa Sabanci. Under these circumstances, "it is not possible to conceive of a plausible circumstance in which the Respondent could legitimately use the [domain name]. It is also not possible to conceive of a plausible situation in which the Respondent would have been unaware of this fact at the time of registration." Moreover, because Sabanci is one of the largest and most prominent companies in Turkey, it would strain belief for Respondent to claim that he was unaware of the GIDASA Mark at the time he registered the Infringing Domain Name.
Tellingly, the Respondent registered the Domain Name the same exact date that Sabanci’s Turkish trademark registration for GIDASA was granted. This suggests that the Respondent was monitoring Turkish trademark registrations and that he registered the Domain Name in order to prevent Sabanci from reflecting its trademark in a ".com" domain name.
Finally, the Respondent’s actions constitute registration and use in bad faith. The Respondent must have expected that any use of the Domain Name would cause harm to the Complainant. The Domain Name contains a mark that is so obviously indicative of Sabanci’s food products that the Respondent’s use of these domain names would inevitably lead to confusion of some sort.
In fact, the Respondent’s actions have caused the Complainant harm because it has been prevented from using the Domain Name in connection with its website promoting Gidasa Sabanci and its products, and has been forced to bring this action to obtain transfer of the Domain Name.
In his Response, the Respondent asserts the following:
The purpose of registration of the Domain Name was to launch a "free speech forum" for consumer rights in which all food producers will be subjected to critical public speech. Due to the intensity of the Respondent’s study workload to develop such a substantial and challenging website, so far he has not been able to activate this system. The word ‘sanayi’ means industry in Turkish. The Respondent intended to combine the term of ‘gida’, which means food, with first two letters of ‘sanayi’ as a suffix with the implication of food industry so as to launch free speech forum to support the consumer rights, critics, problems and concerns regarding the quality of foods and related-services of producers and marketing companies in this field.
Additionally, to argue that ‘sa’ suffix reserves all domain names ending with that suffix to Sabanci Holding A.S. is not plausible and is baseless since every single person or company has equal rights to the words and equal priority to associate the words within the sequence appreciated. The fact that already existing domain names such as these in the following do not belong to Sabanci Holding A.S. proves that all domain names ending with ‘sa’ suffix do not necessarily belong to Sabanci Holding A.S.
- <kitapsa.com>/ (in Turkish "kitap" means book)
- <susa.com>/ ( in Turkish "su" means water)
- <ciceksa.com> (in Turkish "cicek" means flower)
- <banksa.com> (the term "bank" is used as an abbreviation in bank name).
The Respondent first learned of the similarity between the Domain Name and the Complainant’s mark when he received an email from the Complainant. When the Respondent registered the Domain Name, he was unaware that there was a company called Gidasa Sabanci Gida Sanayi ve Ticaret AS. The date of registration, which matches with the establishment of the company, is but a coincidence.
Given the fact that he has been living in United States to pursue a PhD for four years, it is not plausible to argue that the Respondent monitors the establishment of new companies in Turkey to acquire their domain names in bad faith. In addition, because the only way to learn about new registrations is to file a (paper) application or go in person to the Turkish Patent Institute, there should be evidence that the Respondent had an "accomplice" in Turkey. In addition, the Respondent contends that, given the cost-benefit analysis for this kind of cooperation within the context of a purported investment, this "cooperation" should have targeted several domain names and should not be constrained to just the current case the Complainant has offered no such evidence.
The website under <gidasa.com.tr> domain name, which has been developed for the Sabanci Gida Sanayi AS, is not functional. Therefore, it could be concluded that there is no interruption caused by the Domain Name to the customer relationship of the Complainant.
Free speech right to use any domain name to criticize goods and services is as legitimate as any commercial activity. See Bridgestone Firestone, Inc., Bridgestone/Firestone Research, Inc., and Bridgestone Corporation v. Jack Myers, WIPO Case No. D2000-0190. Free speech forum project, through which ‘established businesses’ are subjected to critical public speech, is making a legitimate non-commercial or fair use of the domain name and it is constitutionally protected under the (US Constitution’s) First Amendment. Freedom of speech and free exchange of information are also key elements to the development and creativity of human beings and civil societies in democratic systems in a healthy way. It is in the common interest to encourage participation in matters of public concerns. The project, as a civil forum, which is based on mainly English with its contents is able to propose that it is going to be used as a means to provide the international public, especially Turkish consumers, with information, commentary and criticism about food production by companies that are related to Turkey or Turkish people. In that regard, in order to protect consumer rights through free speech forum is much more significant especially for Turkey to attract even worldwide attention to make positive influence on trade in food products. Furthermore, having regard to the service area of the Complainant company that was restricted, as indicated in its document, to Turkey and a couple of other countries, the Respondent has a more legitimate right than the Complainant company to keep the Domain Name in order to achieve my goal.
Consequently, the Respondent is making a legitimate non-commercial 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. He has a legitimate interest to develop this website. It is a non-profit activity. He does not sell goods or services, but merely will provide commentary with respect to consumer rights.
The Respondent denies any attempt to cybersquat. Because he was unaware of the existence of the Complainant, he could not have registered the Domain Name primarily for the use of selling, renting or otherwise transferring it to the Complainant for a profit.
In any determination of bad faith, the word ‘use’ necessarily refers to an active behavior and the absence of any behavior may not be considered as a ‘use’, neither as a ‘bad faith use’.
With regard to ‘for sale’, in Kyobo Case, the panel held that ‘the offer for sale of the domain name by Mr. Kong’ and ‘professional domain name broker’ signs on their own, however, cannot be sufficient evidence of registration and use in bad faith. See Kyobo Life Insurance Co., Ltd. v. Max, WIPO Case No. D2003-0008. Therefore ‘for sale’ should be suggestive of bad faith, when combined with other evidence. In that regard, there is no other evidence. Furthermore, as an indication of good faith, during the communication with the Complainant, as soon as I received a letter from the Complainant I changed the Domain Name’s appearance from for sale sign to another sign to show my good faith. Additionally, there is no evidence that the Respondent demanded money from the Complainant or from its attorneys.
With regard to the term of gain, which used in an email to the Complainant’s attorneys, under Paragraph 4(b)(iv) of the Policy the term "gain" is used with an adjective, which is ‘commercial’. Within the context and sequence of the email, (interests, and pleasure, and gain), the Respondent asserts that the "gain" was not materialistic, but spiritual, which will be obtained by knowing and feeling that the website does its job in the common interest.
6. Discussion and Findings
In accordance with Paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the Domain Name, the complainant must pass a three-step test, i.e., prove that each of the three following elements are satisfied:
1. The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights (see below, section A);
2. The respondent has no rights or legitimate interests in respect of the domain name (see below, section B); and
3. The domain name has been registered and is being used in bad faith (see below, section C).
Paragraph 4(a) in fine of the Policy clearly states that the burden of proving that all these elements are present lies with the complainant.
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. Moreover, in accordance with Paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the panel, the panel shall draw such inferences therefrom, as it considers appropriate.
A. Identical or Confusingly Similar
This first part of the test raises two issues: (1) does the complainant have rights in a trademark or service mark; and (2) is the domain name identical or confusingly similar to such trademark or service mark.
The Complainant has demonstrated to the Panel’s satisfaction that is has rights in the GIDASA mark based on registration of that mark in Turkey, and the similarity between such mark and the Domain Name is admitted. The Panel also notes that the GIDASA mark is partly descriptive, as the word "gida" means food, and the Complainant sells food products.
The Complainant has also demonstrated rights in a family of marks ending with the suffix SA following a word in the Turkish language. The Respondent has drawn the Panel’s attention to at least two domain names (<kitapsa.com> and <ciceksa.com>) which do not belong to the Complainant. "Kitap" means "book." That domain name resolves to an inactive website, however and no parallel existence and use of that mark has been established. As to <ciceksa.com>, the WHOIS database confirms it is available for registration. Other examples mentioned by the Respondent are not directly relevant. The <ciceksa.com> name may also be relevant, though it appears to be inactive. In BankSA, the SA refers to South Australia. In susa.com, "sa" is not a suffix; rather "s" is a prefix to "usa." By contrast, the Complainant has indicated several marks incorporating the SA logo, including: DUSA, MARSA, DANONESA, SAPEKSA, CARREFOURSA, DIASA, OLMUKSA and TEKNOSA. It seems reasonable to assume that the Domain Name would be found to be confusingly similar with that family of marks, especially in light of the fact that the Respondent did not deny or attack the strength of that mark. Confusion within such a family is often broader than with a single mark, especially in the case of a well-known company that markets many different types of goods and services.
The Panel thus finds in favor of the Complainant on this first part of the test.
B. Rights or Legitimate Interests
According to Paragraph 4(c) of the Policy, 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."
It is well established that the Respondent was never authorized by the Complainant to use the Complainant’s marks. But, as several administrative decisions under the Policy have indicated, using a trademark for criticism or public information may constitute a legitimate or fair use.
The Respondent relies very heavily on the US Constitution’s First Amendment and free speech. He argues his point forcefully and cites several decisions under the Policy. His legal arguments are for the most part valid and the principles he relies on are indeed fundamental. Had there been any evidence to support the Respondent’s claims, the Panel would have been tempted to agree. Here, however, there is none.
A fair use defense based on subparagraph 4(c)(iii) requires actual use ("you are making…"). Here, only a stated intent exists. Even if considered under subparagraph 4(c)(i), some "demonstrable preparations to use" must be shown. Here, several months have passed and no concrete steps have been taken. The Panel also noted that shortly after registering the Domain Name, a domain-for-sale sign was put up. Finally, food industry criticism is in no way that the Panel can see related to the Respondent’s background or experience.
The Panel thus finds that the Respondent had not shown, based on the facts of this case, any legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith, namely:
(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 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 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 on-line 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 on the respondent’s website or location.
This part of the Complainant’s case is weaker. The Panel will discuss first the issue of the GIDASA mark and then the SA logo mark.
The Domain Name was registered on November 28, 2002. The Complainant’s GIDASA mark was registered on the same day, but there is no evidence that this information would have been available to the Respondent. There is no evidence of an online search facility for Turkish trademarks. In addition, the Complainant company was formed in either late November or early December 2002. The Respondent strongly denies any prior knowledge and the facts tend to support his claim. The Complainant (as a corporate entity) and its GIDASA mark did not exit prior to registration of the Domain Name; they came into being at the earliest on the date of registration itself. If, as the Complainant alleges, the Respondent had found a way to access Turkish trademark registrations on the date of issue, correlate those marks with existing domain name registrations and then try to sell the domain names, there should be some evidence not only of access but logically of a pattern of such conduct. No such evidence has been provided.
The Complainant then refers to the US Toeppen case, which the Panel is prepared to consider given that the Respondent is based in the United States and that he too has offered a response based in large part on US law. The Toeppen case supports the assertion that there may be dilution of a mark when it is used as a domain name in a way that may mislead or frustrate Internet users looking for a company by its name (as the URL). As Thomson J. noted, "potential customers of Panavision will be discouraged if they cannot find its web page by typing in ‘Panavision.com,’ but instead are forced to wade through hundreds of websites. This dilutes the value of Panavision's trademark." The Panel finds that the facts of this case are distinguishable from Toeppen. First, the Complainant has made no significant use of its corresponding ".com.tr" site and offered no evidence of the importance of its website(s). Secondly, the word "gida" is descriptive of a type of good. Third, the fact that the mark is protected in the United States has not been demonstrated; there is simply a statement that some goods may have been exported to that market since the Complainant was formed in late 2002. There should be more evidence of US transactions to support a claim based on a common law (unregistered) GIDASA trademark in the US prior to registration of the Domain Name. Finally, the US Statute on which Toeppen is based itself may not support the Complainant’s assertions (though that is obviously not a determination that this Panel can make).
It is not clear that there has in fact been "used in commerce" in a way that would be likely to cause confusion with the GIDASA mark or constitute misrepresentation, as provided for in 15 USC 1125(a) simply because it was offered for sale; or that the Complainant’s GIDASA mark is famous as provided in 15 USC 1125(c); or that the domain name is identical or confusingly similar to a mark that "is distinctive at the time of registration of the domain name" (under 15 USC 1125(d)). There is also scant evidence of bad faith as provided in 15 USC 1125(d)(1)(A)(i).
The Complainant has other arguments, however. One is that the Domain Name was acquired "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."
With respect to the GIDASA mark, this argument must fail because the Complainant is unable to demonstrate that the Respondent had knowledge (actual or constructive) of its GIDASA mark at the time of registration. This defeats the claim that the Domain Name was acquired for that purpose.
The Panel agrees with the view that a general offer to sell may indeed constitute a sign of bad faith in cases where no contrary evidence is adduced and where there are corroborating facts to support the claim of bad faith. Here the Respondent categorically denies knowledge of the Complainant’s GIDASA mark at the time of registration and, as noted above, the facts of the case seem to support his claim. The Complainant’s evidence is purely circumstantial (dates). As this panelist noted in a recent decision, because of the documentary nature of these proceedings, to determine that a plausible submission is untrue, some corroborating evidence is usually required. Here, the Panel finds no such evidence.
With respect to the SA mark, the situation is more complicated. In cases where administrative panel have found that a simple offer to sell to the general public was sufficient for a finding of bad faith, there were other factors at play. In eBay Inc. v. Sunho Hong, WIPO Case No. D2000-1633 cited by the Complainant, the Panel found that the Respondent had knowledge of the Complainant’s EBAY mark. In AT&T Corp. v. Fred Rice, WIPO Case No. D2000-1276, the panelist wrote; "The Panel concludes that the Respondent either registered them in order to sell them to the Complainant hoping that the Complainant would offer a large sum of money for them or he registered them in order to use them to connect to an internet facility. In use they will inevitably lead to confusion of some kind. In the Panel’s view the Domain Names are so obviously indicative of AT&T that a significant proportion of visitors to sites connected to those names would do so in the expectation that they were visiting a site of the Complainant."
The Complainant also relies on Playboy Enterprises International Inc. v. BEG Service KB, WIPO Case No. D2001-0494, where the panelist found that "it strains belief that the Respondent did not know of the Complainant and its heavy involvement in the entertainment industry at the time the name was registered." The Complaint also cites Microsoft Corporation v. Amit Mehrotra, WIPO Case No. D2000-0053. There, the trademark at issue ("Microsoft") was clearly famous; because the Complainant’s evidence was uncontested, there was no credible alternative; and the Complainant had demonstrated a pattern of behavior by the Respondent who had registered several famous marks as domain names. Finally, the Complaint mentions Parfums Christian Dior v. QTR Corporation, WIPO Case No. D2000-0023, where in the case of an uncontested complaint, the panel found that the mention as the domain owner’s name in the WHOIS database "This is domain name is for sale" (sic) was evidence of bad faith.
The circumstances of the offer are also relevant. For example, a mere invitation to send an email is not as strong a sign as a actual priced offer on an auction site (see, e.g., Wal-mart Stores, Inc. v. Yongsoo Hwang, NO-WALMART and NO-WALMART.COM, WIPO Case No. D2000-0838), especially when the Respondent refuses to discuss the transfer after having been contacted by the Complainant. In fact, the Complainant’s version of the facts articulated in the Response is compatible with the email messages sent after the initial contact with the Complainant’s attorneys.
Other relevant administrative decisions include eMedicine.com, Inc. v. Sjafy Lim, WIPO Case No. DTV2001-0003; Choice Courier Systems, Inc. v. William H. Kirkendale, WIPO Case No. D2002-0483 ("WIPO decisions have found offers to sell a domain name to constitute evidence of bad faith, but the respondent’s behavior in those cases has always been more egregious.[…] In addition, the focus is not on whether the Respondent offered to sell the domain name, but whether the circumstances indicate that Respondent’s primary purpose in registering the domain name was to sell it for an excessive sum"); Manchester Airport PLC v. Club Club Limited, WIPO Case No. D2000-0638 ("selling a domain name is not per se prohibited by the Policy nor is it illegal or even, in a capitalist system, ethically reprehensible. Selling of domain names is prohibited by the Policy only if the other elements of the Policy are also violated, namely trademark infringement and lack of legitimate interest"); and Etam, plc v. Alberta Hot Rods, WIPO Case No. D2000-1654.
The Complainant has offered evidence that this "SA" suffix is well-known and the Panel is prepared to believe that, as a Turkish national who lived in Turkey for many years and given that Sabanci is such a large company that it accounts, according to the Complainant’s information, for six percent (6%) of all taxes paid in Turkey, the Respondent was aware of this suffix, as asserted by the Complainant. In fact, while the Respondent argues repeatedly that he did not know that a company called Sabanci Gida Sanayi had been established when he registered the Domain Name, he does not deny knowledge of the famous SA logo or of the Sabanci companies. There is thus uncontested evidence that the SA mark is well-known and that the Respondent was most likely aware of the existence of such mark.
A prefix or suffix mark may of course be sufficient in a proceeding of this sort, but the evidence submitted must support the claim. Here, the exclusive nature of rights in the "SA" suffix were put into question by the Respondent, who provided a number of examples of domain names using that suffix, including some that incorporate Turkish words. As discussed under 6(A) above, the Panel does not consider the examples mentioned by the Respondent to be conclusive.
The Panel carefully examined the Respondent’s claim that it incorporated the letters SA in the Domain Name as an abbreviated form of "sanayi" (industry). Had the Panel been able to follow the Respondent down that path, the conclusions reached might have been different. But the argument, while not implausible, is not as strong as the Complainant’s. If "SA" is used as an abbreviation, logically it should be recognized as such by Turkish-speaking Internet users, perhaps even be mentioned in a dictionary or list of abbreviations that exist in most languages. Otherwise, why didn’t the Respondent register <gidasanayi.com> or an equivalent thereof? Yet, the Respondent has failed to offer evidence to support its use of SA as an abbreviation of sanayi.
In light of the above, while the Panel finds value in the arguments concerning the use of "SA" submitted by both parties, on balance the Panel finds that the Complainant’s argument on this point is significantly stronger than the Respondent’s. The Panel thus finds that the Domain Name was registered in bad faith, because it infringes the Complainant’s SA suffix mark.
Was the Domain Name used in bad faith?
The only use made of the Domain Name, which otherwise remained inactive, was to offer it for sale. No legitimate interest has been shown (see under 6(B) above). Many decisions under the Policy have addressed a similar set of facts. In Educational Testing Service v. TOEFL, WIPO Case No. D2000-0044, the panel stated: "the Panel concludes that the Respondent did in fact register and use the ‘toefl.com’ domain name in bad faith. It has made no use of the domain name other than to offer it for sale at a price that is likely to substantially exceed its out-of-pocket costs of registration, and the price that the domain name commands would largely be based on the trademark of the Complainant. […] The Respondent was the first-to-register, and in circumstances of legitimate registration and use this may secure its right to the domain name. However, because the Respondent is contributing no value-added to the Internet – it is merely attempting to exploit a general rule of registration – the broad community of Internet users will be better served by transferring the domain name to a party with a legitimate use for it."
This case is not entirely dissimilar to Federated Western Properties, Inc. v. Mr. Faton Brezica aka "Its Me Haraqi" and "Its Me Pr," WIPO Case No. D2002-0083, in which the registrant of <macys.biz> argued that it had plans to launch a website for Albanian speaking Internet users, and "mac translates into the word cat, or small cat, in the Albanian language. The Y and S are initials for two other Albanian words; Y for (Ylberi) which means rainbow and S for (simpatia) which means sympathy." The panel concluded as follows: "In light of the linking of the disputed domain name to a ‘For Sale’ notice; the inadequacy of the explanation (‘for personal reasons’) for the changes made by Respondent to the registration information after contact from Complainant, […] the proffering of an implausible and unsubstantiated explanation of his purpose in registering the disputed domain name, the Panel concludes that Respondent sought to benefit from the goodwill of Complainant and its famous MACY’S mark." Also relevant is Servired, S.C. c/ Felix Loureiro (Hispaseguridad), WIPO Case No. D2002-0715. Here, it is worth noting that the respondent admitted that (part of) the target audience for his planned forum would have been Turkish-speaking Internet users, including those living in Turkey, which thus becomes a relevant market (i.e., the "público consumidor") to determine potential confusion.
Finally, if one does the same analysis as outlined above based on the Toeppen case, the likelihood that the Complainant would win its case based on the SA suffix mark is not insignificant. Against the backdrop of this analysis, on balance the Panel finds that by not using the Domain name and offering it for sale immediately after registration, and in the absence of a demonstrable legitimate interest or credible preparations for a good faith use, the Respondent has made bad faith use of the Domain Name.
For all the foregoing reasons, the Panel orders the transfer of the Domain Name <gidasa.com> to the Complainant.
Daniel J. Gervais
Dated: July 23, 2003