The Complainants are The Canadian Education Centre (CEC) Network, British Columbia, Canada and CEC Turkey-Kanada Egitim Merkezi, Istanbul, Turkey, represented by Istanbul Patent & Trademark Consultancy Ltd., Turkey.
The Respondent is Ismail Ince, Savas Dost of Montreal-Quebec, Canada.
The disputed domain names <kanadaegitimmerkezi.com>, <kanadaegitimmerkezi.net>, <kanadaegitimmerkezi.org>, <canadaegitimmerkezi.com>, <canadaegitimmerkezi.net> and <canadaegitimmerkezi.org>, are registered with Netfirms, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 28, 2009 with regard to the domain names, <kanadaegitimmerkezi.com>, <kanadaegitimmerkezi.net>, <kanadaegitimmerkezi.org>. On May 28, 2009, the Center transmitted by email to Netfirms, Inc. a request for registrar verification with respect to those disputed domain names. On May 29, 2009, Netfirms, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. As the domain names <kanadaegitimmerkezi.com> and <kanadaegitimmerkezi.net> had previously been registered under privacy shield and since the Complainant had on its own motion included the disclosed Registrant as the Respondent at the time of filing the Complaint, the Center sent an email communication to the Complainant copying the Respondent, on June 4, 2009 noting the registrar's confirmation of the Registrant's identity. The Center verified that 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 June 5, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was June 25, 2009. The Response was filed with the Center on June 25, 2009.
The Center appointed Gökhan Gökçe as the sole panelist in this matter on June 29, 2009. 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.
On July 1, 2009, the Complainants submitted Supplemental filings informing the Center that, after the filing of this proceeding, it came to the attention of the Complainants that there were a further 3 domain names that had been registered by the same Respondent and requested that those domain names, <canadaegitimmerkezi.com>, <canadaegitimmerkezi.net> and <canadaegitimmerkezi.org> be added to this proceeding. In response to a previous email from the Complainant with regard to the addition of domain names to proceedings, the Center replied that it had transmitted the request to the Panel, the previous email stating that it was at the discretion of the Panel to consider the request in accordance with Rules, Paragraph 10.
On July 8, 2009, the Panel issued Administrative Procedural Order No. 1, granting Complainant's request to add the domain names <canadaegitimmerkezi.com>, <canadaegitimmerkezi.net> and <canadaegitimmerkezi.org>, to this proceeding. In accordance with Rules, paragraph 10, the Panel made the following order:
1. The Complainant's supplemental filing adding the domain names <canadaegitimmerkezi.com>, <canadaegitimmerkezi.net> and <canadaegitimmerkezi.org> to this proceeding is hereby accepted.
2. The Complainant is instructed to pay an additional amount of USD 500.00 as required by the WIPO Arbitration and Mediation Center (the “Center”), in accordance with Annex D to the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy.
3. The Panel also therefore orders that the Center obtain registrar verification confirmations for the domain names <canadaegitimmerkezi.com>, <canadaegitimmerkezi.net> and <canadaegitimmerkezi.org> from the registrar of those domain names.
4. Following registrar verification for the domain names <canadaegitimmerkezi.com>, <canadaegitimmerkezi.net> and <canadaegitimmerkezi.org>, the Panel further orders that the Center notify the Respondent that the said domain names have been added to the proceeding and allow the Respondent 5 days, in which to provide a Response in relation to these domain names as well as the other parts of the Reply from the Complainant (by email to domain.diputes@wipo.int) copying Complainant in accordance with the Rules, paragraph 2(h).
The Panel's decision to accept the addition of the domain names to this proceeding is based on consideration of the following. The addition of domain names after the filing of a complaint has been allowed in the past by other Administrative Panels, PepsiCo, Inc. v. Henry Chan, WIPO Case No. D2004-0033, allowing the amendment of the complaint to include an additional domain name after the filing of the complaint and the re-amendment of the complaint to incorporate two additional domain names after the appointment of the administrative panel.
Paragraph 10(e) of the Rules, explicitly provides that a “Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules”. The Panel in this case has decided to permit the consolidation request as the factual background, respondent identity, and substantive considerations in both the Complaint and supplement thereto are indistinguishable; thus it is expedient to hear and determine the proceedings as to all of the disputed domain names in order to avoid the risk of irreconcilable decisions resulting from separate proceedings. Paragraph 10(b) of the Rules further states, “In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case”.
Consequently, the Panel allowed the Complainants to amend their Complaint by including the additional domain names <canadaegitimmerkezi.com>, <canadaegitimmerkezi.net> and <canadaegitimmerkezi.org>, respecting fundamental procedural principles and allowing both the Complainants and the Respondent to present their case in respect of the additional domain names.
By email sent to the Center on July 6, 2009, the Respondent claimed that CEC Network had closed. In response the Complainants asked the Panel to disregard the Respondents statements. The Respondent sent a similar email to the Center on July 9, 2009 and at the Panel's request, the Center replied reminding the parties that the Panel will not consider further supplemental submissions from either party, except for as provided in the Panel's Administrative Procedural Order No. 1. The email of July 9, 2009 and its attachments were not considered by the Panel in accordance with the Panel's Administrative Procedural Order No. 1. The Respondent filed his supplementary Response in accordance with the Procedural Order on July 18, 2009.
The supplementary Response repeats the claims made in his email of July 6, 2009 and therefore the Panel has dealt with the issues raised in the email and its reply in its decision.
The factual and legal analysis below refers to the fully amended Complaint, incorporating the supplementary Complaint and Response. All Annexes were submitted with the initial Complaint and Response.
The first Complainant is The Canadian Education Centre (CEC) Network a private, independent non-profit company founded in 1995 with support from the Government of Canada to promote and market Canada as a study destination for international students.
Over 245 universities and other educational institutions or communities across Canada are members of the CEC Network. The CEC Network hosts an annual International Education Conference, providing a forum for Canadian education marketing professionals and an annual Agent Fair to bring together international education agents and Canadian schools. It also publishes hard copy guides and magazines promoting Canadian education and provides an international student website providing information to students in 15 languages.
The CEC Network has 13 Canadian Education Centres and four sub-offices in several countries around the world including Turkey. The centres, including the second Complainant, provide international students with materials and application forms for Canadian schools and host Canadian education fairs and other events.
The second Complainant is the Canadian Education Centre located in Turkey, which was established in 2001 and amongst other activities, hosts Canadian Education fairs in Turkey where it enjoys sole authority.
The Complainants use the domain names <cecnetwork.ca>, <studycanada.ca> and <studycanada.ca/turkey> as their main websites. The first Complainant registered the service mark CEC NETWORK RÉSEAU DES CÉC on April 25, 2006 with the Canadian Trademark and Patent Office, and has filed CEC NETWORK RESEAU DES CEC CANADIAN EDUCATION CENTRE NETWORK REASEAU DES CENTRES E'EDUCATION CANANDIENS, CEC NETWORK KANADA EGITIM MERKEZI and KANADA EGITIM FUARI www.studycanada.ca/turkey, for registration on April 30, 2009 with the Turkish Patent Office (TPO).
The Respondent is an individual who is one of the founders of Kan Ada Kultur ve Egitim Merkezi Danismanlik Limited Sirketi, located in Istanbul Turkey. The company was registered at the Istanbul Chamber of Commerce on March 9, 2009.
The disputed domain name <kanadaegitimmerkezi.com> was created by the Respondent on November 6, 2008 while the disputed domain names, <kanadaegitimmerkezi.org> and <kanadaegitimmerkezi.net> were created on January 14, 2009 respectively. The disputed domain names added to the dispute by way of a supplementary filing dated July 14, 2009, <canadaegitimmerkezi.com>, <canadaegitimmerkezi.net>, and <canadaegitimmerkezi.org> were created by the Respondent on December 24, 2008.
In accordance with paragraph 4(b)(i) of the Policy, the Complainants request that the domain names <kanadaegitimmerkezi.com>, <kanadaegitimmerkezi.net>, <kanadaegitimmerkezi.org>, <canadaegitimmerkezi.com>, <canadaegitimmerkezi.net> and <canadaegitimmerkezi.org> should be transferred to the Complainants.
The Complainants submit the grounds for these proceedings are listed in paragraph 4(a) of the Policy.
The Complainants aver that the disputed domain names are identical to the service mark CEC NETWORK KANADA EGITIM MERKEZI for which a trademark application was submitted to the Turkish Patent Institute on April 30, 2009 evidenced at Annex 7 of the Complaint. The first Complainant at Annex 6 of the Complaint exhibits the service mark CEC NETWORK RÉSEAU DES CÉC registered on April 25, 2006 with the Canadian Trademark and Patent Office. Furthermore the Complainants state that the service mark has been used in Canada and internationally since September 1, 1997.
The Complainants submit that the trademarks CANADIAN EDUCATION CENTRE and the Turkish equivalent KANADA EGITIM MERKEZI are well-known through out Turkey and internationally and that they have acquired common law trademark rights in these names as they are marks by which the organisation is known globally. Additionally, the Complainants submit that KANADA EGITIM MERKEZI has been used in Turkey since 1998.
The Complainants contend that the disputed domain names are identical to the service mark, KANADA EGITIM MERKEZI, in which the Complainants have acquired common law rights.
The Complainants' supplementary filing of July 16, 2009 contains further contentions in relation to common law rights and that the Complainants' use of the service mark has acquired exclusivity and uniqueness. The Complainants state that although KANADA EGITIM MERKEZI consists of 3 generic words the combination of those words has acquired a secondary meaning through the use of the phrase by the Complainants. Further to this, the Complainants put forward the argument that once common law rights are established such ownership rights may be asserted by the Complainants and cite several URDP panel decisions in order to substantiate their claims.
The Complainants submit that the Respondent has no rights or legitimate interest in respect of the disputed domain names.
The Complainants have never granted the Respondent a licence or permission to use the mark KANADA EGITIM MERKEZI, the Respondent has no association with the Complainants and the Respondent has never been commonly known by the disputed domain names. The Complainants claim their right to exercise control over how their trademark is used by third parties on the Internet.
The Complainants assert that they have established common law rights in the service mark KANADA EGITIM MERKEZI and exhibit evidence of use of the term in Turkey since 1998 at Annex 5 of the Complaint. The Complainants cite numerous cases where it has been established that exclusive rights in a trademark can be acquired with, or without, registration through common law rights. The Complainants contend that the disputed domain names were registered in late 2008 or early 2009, by which time the Complainants had achieved common law rights in the service mark established through recognition and use.
The Complainants note the Respondent is the husband of a former trainee of the second Complainant and this is confirmed by the ex-employee on the website “www.kanadaegitimdanismani.com” as evidenced at Annex 8 of the Complaint. Therefore, the Respondent was clearly aware of the Complainants extensive goodwill and reputation of its service mark KANADA EGITIM MERKEZI. The Complainants submit that the Respondent would only have a right to the domain names if that right had been specifically granted and cite F.M. Tarbell Co. dba Tarbell, Realtors v. Mark W. Litchenberger aka Mark L, WIPO Case No. D2007-0843. Furthermore, its is submitted that as the Respondent is a Turkish citizen it is unlikely that he would not have been aware of the Complainants extensive goodwill and reputation of its service mark KANADA EGITIM MERKEZI.
The Complainants claim that there is only one organisation named “Canadian Education Centre” translated to “Kanada Egitim Merkezi” in Turkey and use of that name by others would be misleading, a letter from the Embassy of Canada exhibited at Annex 9-A of the Complaint.
The Complainants submit that the only conceivable interest and reason for registering the disputed domain names was to create a connection to the Complainants and their service mark and/or for commercial benefit by confusing Internet users or by selling the disputed domain name to the Complainants.
The Complainants note that the Respondent offers consultancy services through the disputed domain name <kanadaegitimmerkezi.com> as exhibited at Annex 10 of the Complaint, the Complainants submit that the Respondent is using the domain names for commercial gain to misleadingly divert consumers or to tarnish the service mark of the Complainants. The Complainants protest that they could not register the domain names due to lack of availability caused by the Respondent's registration.
In the Complainants supplementary filing of July 16, 2009, the Complainant notes the Complainants non-profit status does not prevent them from owning and protecting trademarks against use by third parties. The Complainant further notes that registering a “.com.tr” domain name requires official documentation however no such documentation is required when registering “.info.tr”. The Complainants claim that they have provided the required official documentation and have registered the domain name <kanadaegitimmerkezi.com.tr> thus proving the Complainants' ownership rights in the trade name KANADA EGITIM MERKEZI.
The Complainants note the Respondent has intentionally attempted to conceal his true identity by obtaining the domain names as a private registration to prevent the Complainants from communication with the Respondent as contact information is not available on the public WhoIs database.
The Complainants contend that the Respondent registered the disputed domain names in bad faith in order to prevent the Complainants from reflecting the mark in corresponding domain names, and is using the disputed domain names in bad faith to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainants' service mark. Furthermore, due to the content of the webpage as evidenced at Annex 10 of the Complaint, the Complainants state that Internet users are likely to conclude that the website is hosted by the Complainants, which is not the case.
The Complainants note, the Respondent has also registered <kanadaegitimmerkezi.ca> as exhibited by Annex 12.
At Annex 13 of the Complaint the Complainants have submitted an email from a school's Foreign University Counsellor enquiring whether the Respondent, who also uses “www.kanadakulturmerkezi.com” and “www.canadianculturalcenter.com” is affiliated with the Complainants. The Complainants state it is obvious that both domain names belong to the same office as evidenced by screenshots of the website exhibited at Annex 14 of the Complaint. The Respondent sent an email to the Counsellor enquiring whether they could give a presentation on Canadian summer and language. The Complainants rely on this email as evidence of the Respondent's intention of creating confusion and attempting to benefit from the Complainants' not-for-profit structure to generate business and revenue. Furthermore, with reference to the Counsellor's email it demonstrates that their actions create confusion and affiliation with the Complainants.
The Complainants assert that the Respondent's registration of the disputed domain names is in bad faith as the Respondent must have been aware of the reputation and goodwill of the Complainants' service mark KANADA EGITIM MERKEZI at the time of registering the disputed domain name. The Complainants note that the term “CANADIAN EDUCATION CENTER” and “KANADA EGITIM MERKEZI” are internationally well-known service marks and there is a strong indication that registration of domain names containing these phrases has the intention of creating an association with the Complainants' marks.
Furthermore, the Complainants state that it would have been impossible for the Respondent to use the disputed domain names as the name of any business or service for which it would be commercially useful without violating the Complainants' rights.
The Complainants cite several UDRP decisions where the panel has held that knowledge of a mark at the time of registration followed by the use in commerce and likelihood of confusion is indicative of bad faith.
In January and February 2009, the Respondent and the Complainants engaged in conversations regarding the transfer of the disputed domain names, email correspondence is exhibited at Annex 15 of the Complaint. The Complainants state they have requested the Respondent to transfer the domain names by telephone and email. The Respondents agreed to this request on condition that the Complainants would promote their commercially contracted institutes, publishing their advertisements in the official CEC NETWORK – KANADA EGITIM MERKEZI magazine. Although the first Complainant accepted the Respondent's requests in order to secure transfer of the domain names the Respondent never effected any transfer. The Complainants submit that this also proves the Respondent's bad faith and intention of commercial use and gain from the domain names.
The Complainants' supplementary filing of July 16, 2009 makes further contentions in relation to bad faith registration and use of the disputed domain names. The Complainants note that the Respondent's trade name consists of two separate words “kan” and “ada” (which translate as “blood” “island”) however when read phonetically there is no difference between the trade name and the word “Kanada” or “Canada”. The Complainants contend that this is an obvious indication of bad faith. The Complainants also contend that they are the sole organisation that has authority to conduct activities under the trade name KANADA EGITIM MERKEZI.
Furthermore the Complainants note that the Respondent's company was not established until March 9, 2009 as evidenced in Annex A of the Response. The Complainants submit the Respondents promise to transfer the domain names was a delaying tactic to enable the Respondent to register their trade name. It is further alleged the Respondent chose a trade name confusingly similar to the Complainants' in order to defend any legal actions taken in relation to the disputed domain names.
The Respondent filed a Response to the allegations in the Complaint and requests the Panel to deny the remedy requested, namely transfer of the disputed domain names to the Complainants.
The Respondent disputes the arguments put forward by the Complainants and submits that he used the disputed domain names for his official business and his company, Kan Ada Kultur Ve Egitim Merkezi Danismanlik Limşted Sirketi, which is registered with the Istanbul Chamber of Commerce since March 9, 2009 with registration number 693299 as evidenced at Annex A of the Response.
The Respondent states that Complainants have failed to note that the accurate translation of “CANADIAN EDUCATION CENTRE NETWORK” which is “KANADA EGITIM MERKEZI AGI” and indicates that their failure to provide the accurate translation is an attempt to deceive the Panel. Furthermore, the Respondent contends that the Complainants are known as The Canadian Education Center in Turkey and notes their official website is “www.cec.org.tr” as evidenced in a WhoIs search exhibited at Annex B, the Respondent states that this was also intentionally concealed from the Panel.
The Respondent claims that the Complainants have made no attempt to protect its trademark as the there is no registration with the United States Patent Office, nor has it applied for registration in Canada or other countries. The Respondent has completed searches for trademarks CEC NETWORK and KANADA EGITIM MERKEZI on the United States Patent and Trademark Office website and Canadian Trademarks Database, which displays no results were found, as exhibited at Annex C1, C2, C3 and C4 of the Response. The Respondent also notes that the Complainants have applied for registration of their trademarks in Turkey, nonetheless the application is pending and no trademarks have been registered.
The Respondent contends that KANADA EGITIM MERKEZI consists of 3 generic words and as a term it is a general descriptive term. The Respondent notes “Kanada” means Canada in several languages, “egitim” means education, training or instruction used by over 200 million people in Turkish and several dialects of the Turkish language, and, “merkezi” means central in Turkish. For that reason the Respondent disputes that the Complainants have any ownership rights over the term “kanadaegitimmerkezi”.
Furthermore the Respondent submits that the Complainants trademarks have a distinctive logo phrase “Canadian Education Centre Network” or the French equivalent “Réseau de Centre d'Education Canadien” otherwise they would not qualify as a trademark as it is a generic term that can not be protected. The Respondent also notes that the domain name “Kanada Egitim Merkezi” is part of the Respondents registered business name.
In the Respondent's supplementary filing of July 18, 2009, the Respondent provided evidence of 6 similar domain names, containing other country names such as <maltaegitimmerkezi.com> all registered on January 21, 2009. The Respondent claims that the domain name consists of only generic words. The Respondent repeats its contention that the Complainants' trademark is not similar to the domain names and it has a distinctive logo and slogan and that the domain names are not similar as they contain generic words and do not use the logo or slogan.
The Respondent in its Response to the Procedural Order repeats that the Complainants are known as CEC or Canadian Education Centre Network in Turkey.
The Respondent states that as a Canadian citizen he has the right to provide educational services and relies on Part I, Section 2 (b) of the Canadian Charter of Rights and Freedoms as exhibited at Annex D of the Response. The Respondent also notes that there are several education services for Canada and lists 5 different domain names that include the words “Canadian education” and provides screen shots of each website at Annex E1, E2, E3 and E4 of the Response.
The Respondent contends that the Complainants have falsely and misleadingly stated that according to a letter from the Embassy of Canada (exhibited at Annex 9a of the Complaint) only the Complainants are known as the “Canadian Education Centre” which equates to “Kanada Egitim Merkezi” as there is only reference made to “Canadian Education Centre” and there is no mention of “Kanada Egitim Merkezi” in the letter from the Canadian Embassy and exhibits the letter at Annex F of the Complaint.
The Respondent states that he is a Turkish Citizen who completed his studies in Canada and has a business, “Via International” promoting Canadian educational services based in Montreal, Quebec and decided to open a similar business in Turkey. There is a screenshot of Via International exhibited at Annex G1 of the Response. The Respondent notes that he registered his business KAN ADA KULTUR VE EGITIM MERKEZI DANISMANLIK LIMITED SİRKETI on March 3, 2009, 3 months after registering the domain names, the Respondent submits documents evidencing establishment of his business at Annex G2-G11 of the Response. The Respondent claims he has invested in his business name in Turkey and that it has started to be recognised all over Turkey and states that he has secured several agreements with Canadian institutions.
The Respondent states that the Complainants have not produced any evidence that the Respondent registered the disputed domain names to sell them to Complainants.
The Respondent repeats that the Complainants official website is “www.cec.org.tr” and that they are known in Turkey as Canadian Education Center. The Respondent notes the Complainants have since purchased the domain name <kanadaegitimmerkezi.com.tr> and the Respondents have appealed this registration as in accordance with Turkish Law only registered Turkish companies have the right to purchase domain names incorporating their business name. The Respondent provides documentation evidencing registration this at Annex H1 of the Response. Furthermore, the Respondent notes that they have registered the domain name <kanadaegitimmerkezi.info.tr>.
The Respondent in its supplementary filing of July 18, 2009 repeats that the Complainants have registered <kanadaegitimmerkezi.com.tr> and notes that the Respondent has raised objections to this registration and it is now pending until the objection is considered. The Respondent again notes that he is the owner of <kanadaegitimmerkezi.info.tr> and states that he is also the owner of <kanadaegitimmerkezi.com.tr> and notes that these domain names have been registered as they are relevant to his business name.
Furthermore, the Respondent claims according to Canadian newspapers and the president of the company the Complainants (CEC Network) closed on June 30, 2009. The Respondent lists a number of websites containing blogs or news (Vancouver News) that confirm CEC Network closed on June 30, 2009 and provides a print out of WYSTC Blog.
The Respondent denies any allegation of bad faith and states that the Complainants have failed to prove the elements required under the Policy. The Respondent asserts that it did not register the domain names to sell, rent or transfer the domain names to any third parties.
The Respondent defends his right to make a “private registration” and disputes that the he has taken active steps to hide his true identity.
The Respondent notes that the Complainants allege the Respondent has prevented the Complainants from reflecting their service mark in the corresponding domain name and gains commercial benefit by attracting Internet users to his website through use of the Complainants mark. Furthermore, the Complainant contends that users will assume that the Respondents website is provided by the Complainants. The Respondent denies these allegations and notes that the Complainants state that they are government organisation workers, however as evidenced in the screenshot exhibited at Annex I of the Response, the Respondent company describes itself as an independent private organisation. The Respondent further states that the Complainants Liaison Office in Turkey can not be involved in commercial activities and the parent company names must be used, therefore KANADA EGITIM MERKEZI can not be their brand or trade name in Turkey. The Respondent refers to government websites evidencing these principles and provides print outs at Annex J, J1 and J2.
The Respondent notes that the Complainants were granted permission to open a liaison office for Canadian Education Network but not under the name “Kanada Egitim Merkezi” and exhibits the letter of authorisation from the Treasury. The Respondent points to the fact that although Apple is a well-known brand name and the translation into Turkish is “elma” their domain name in Turkey is <apple.com.tr> and there is a company in Turkey named Elma Computers and their domain name is <elma.com.tr>, evidence of this is provided at Annex L,L1 and L2 of the Response. The Respondent relies on this fact to support the notion that foreign companies cannot use the translation of their company name. Furthermore the Respondent notes that the first Complainant offers services in 13 different companies however do not use the translated equivalent of “CANADIAN EDUCATION CENTRE” as their domain names.
The Complainants allege that Respondent's registration of the disputed domain names is in bad faith as the Respondent must have been aware of the reputation and goodwill of the Complainants' service mark. The Respondent disputes this and notes that the Complainants have been using “www.cec.org.tr” as their official website since July 10, 2001 and have not applied for the disputed domain names until 2009, after 8 years had lapsed.
The Respondent states that he is a Canadian and Turkish citizen and he is familiar with both the Canadian and Turkish education systems. The Respondent notes that he uses two domain names <kanadakulturmerkezi.com> and the disputed domain name <kanadaegitimmerkezi.com> and contends that he chose these domain names in good faith to be used for his officially registered businesses.
Paragraph 4(a) of the Policy sets forth the following three elements which the Complainant must prove, during the administrative proceedings, to merit a finding that the domain names of the Respondent be transferred to the Complainant:
(a) the domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(b) the Respondent has no rights or legitimate interests in respect of the domain names; and
(c) the domain names have been registered and are being used in bad faith.
Pursuant to paragraph 15(a) of the Rules, the Panel shall decide a 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.
At Annex 5 of the Complaint, the Complainants provide evidence of their application for registration of service mark CEC NETWORK KANADA EGITIM MERKEZI with the TPO on April 30, 2009.
The Panel notes that the Complainants' application for registration is still pending, therefore at present the Complainants' application has not been finally accepted and the Complainants do not own the registered service mark as yet. Nonetheless, the fact that the Respondent registered the disputed domain names before the Complainants does not prevent a finding of identical and confusingly similar, Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827.
The Complainants state that they have used the mark KANADA EGITIM MERKEZI in Turkey since 1998. The Complainants contend they have rights in the trademark, KANADA EGITIM MERKEZI, on the basis that it has established wide recognition globally and the use of that mark has come to be recognised by the general public as indicating an association with services offered exclusively by the Complainants.
It has been well established that having rights in a mark, for the purpose of paragraph 4(a) of the Policy, affords protection to common law rights. To successfully demonstrate common law rights, a complainant must submit evidence that demonstrates the mark has become a distinctive identifier associated with the complainant or its goods or services, Skype Limited v. Benjamin Decraene, WIPO Case No. D2005-1112. Paragraph 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions states relevant evidence of such includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. The Complainants have exhibited evidence at Annex 5, which contains various materials the majority of which demonstrates the wide use of the term, “KANADA EGITIM MERKEZI”. This evidence, in the Panel's opinion constitutes evidence that the Complainant has established common law rights in the term “KANADA EGITIM MERKEZI”.
The Respondent argues that the Complainants' trademark comprises of a combination of generic or descriptive terms, “KANADA EGITIM MERKEZI” and is therefore available to be used as a domain name. The Complainant in its supplementary filing of July 16, 2009 argues that although the trade name consists of generic words that the combination of those words and through use by the Complainants has acquired distinctiveness, the Complainants cite several past WIPO UDRP decisions and provides evidence of the Complainants' widespread use of the term at Annex 5 of the Complaint.
The Respondent states that the Complainants have failed to note that the accurate translation of “CANADIAN EDUCATION CENTRE NETWORK” which is “KANADA EGITIM MERKEZI AGI” and indicates that their failure to provide the accurate translation is an attempt to deceive the Panel. Furthermore, the Respondent notes their official website is “www.cec.org.tr” as evidenced in Annex B of the Response. The Panel is of the opinion that the fact that the Complainants use the website “www.cec.org.tr” is not a bar to these proceedings and while the Panel does not dispute the translation provided by the Respondent the Panel notes that the Complainants are trying to protect their use of the phrase “KANADA EGITIM MERKEZI” therefore the Panel deems the Respondent's contentions are not relevant here.
The Respondent claims that the Complainants have made no attempt to protect their trademark as there is no registration with United States Patent and Trademark Office, nor has it applied for registration in Canada or other countries. The Panel is of the opinion that there is no obligation on the Complainants to register their trademark with numerous countries.
In relation to disputed domain names, <kanadaegitimmerkezi.com>, <kanadaegitimmerkezi.net>,<kanadaegitimmerkezi.org>, <canadaegitimmerkezi.com>, <canadaegitimmerkezi.net>, <canadaegitimmerkezi.org>, the Panel is of the opinion that there is a likelihood of confusion based on the overall visual and phonetic similarities between the trademark and the disputed domain and it is therefore confusingly similar to the mark in which the Complainants have rights.
For all the aforementioned reasons, the Panel finds that the requirements in paragraph 4(a)(i) of the Policy are fulfilled, consequently, the Panel finds for the Complainant on the first element of the Policy.
The Complainants rely both on common law rights and the pending registration of the mark CEC NETWORK KANADA EGITIM MERKEZI trademark. The Complainants put forward their right to exercise control over how their trademark is used by third parties on the Internet and contend that the Respondent has no rights or legitimate interests in the domain names. Furthermore, it is submitted that the Complainants have never granted the Respondent a licence or permission to use the mark KANADA EGITIM MERKEZ and the Respondent has no association to the Complainants and is not commonly known by the phrase “KANADA EGITIM MERKEZI”.
The Complainants assert that at the time of registering the domain name the Respondent must have been aware of the reputation and goodwill of the Complainants' trademark as the Respondent is the husband of a former trainee of the second Complainant as evidenced at Annex 8 of the Complaint. The Complainants note that the disputed domain name <kanadaegitimmerkezi.com> is used to offer consultancy services similar to those offered by the Complainants and allege that the Respondent is using the disputed domain names to misleadingly divert consumers for commercial gain.
In view of the Respondent's wife's uncontested previous employment the Panel finds that the Respondent knew of Complainants and its mark prior to registration of the disputed domain names and therefore had both actual and constructive knowledge of Complainants' mark. It must also have been apparent to the Respondent that his registration of the disputed domain names would prevent the Complainants from registering their mark in a corresponding domain name.
The Respondent claims that he has interests in the disputed domain names as he is known by his business name. The Panel notes the recent registration date of the business, namely, March 3, 2009. The business was registered after the domain names were registered and email correspondence regarding transfer of the domain names is evidenced at Annex 15 of the Complaint. The Panel does not find that the Respondent has established a right or legitimate interest in the disputed domain names.
In relation to the Respondent's claims in its supplementary filing of July 18, 2009 that CEC Network closed on June 30, 2009, the Complainant asserted that such did not affect its trademark rights.
The requirements of 4 (a)(ii) are fulfilled and consequently the Panel finds in favour of the Complainants on the second element of the Policy.
Paragraph 4(b) of the Policy provides a non-exhaustive list of 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.
Although the domain names were registered before the Complainants registered their trademark CEC NETWORK KANADA EGITIM MERKEZI, the Complainants rely on common law rights established through recognition and the use of the mark KANADA EGITIM MERKEZI. As discussed above, the Panel finds the Respondent's domain names are confusingly similar to the Complainant's mark. There is no doubt in the Panel's mind that the Respondent was aware of the Complainants' use and rights in the trademark. The Panel is of the opinion that actual knowledge of the Complainants' trademark at the time of registration of the disputed domain names suggests bad faith, Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226.
The Complainants submit email correspondence at Annex 13 of the Complaint which evidences a query from a school enquiring whether the Respondent is affiliated with the Complainants. The Panel is of the opinion that the majority of users would assume that the disputed domain names are affiliated with the Complainant. Previous UDRP Panels have held that misdirection of traffic to other websites suggests bad faith, General Electric Company v. Fisher Zvieli, a/k/a Zvieli Fisher, WIPO Case No. D2000-0377; The Sportman's Guide, Inc. v. John Zuccarini, WIPO Case No. D2001-0617.
The Complainants argue the Respondent has taken active steps to conceal his identity by obtaining a private registration and provided minimal contact information which is a strong indication of bad faith. Domain registration privacy is not necessarily a sign of bad faith, it serves a number of purposes and it did not prevent the Registrar from promptly identifying the Respondent, Dastek (Pty) Ltd v. Contactprivacy.com / Hanno Schumacher, WIPO Case No. D2009-0659.
The Respondent clearly states that it has never attempted to sell the domain names to the Complainants' for commercial gain and there is no evidence of a pattern of such conduct.
The fact that the Respondent has registered the domain name <kanadaegitimmerkezi.ca> as exhibited in Annex 12 of the Complaint is not relevant to the issues to be determined in this proceeding and therefore has not been considered by this Panel in reaching its decision.
The Respondent claims he believed he had legitimate rights in using a generic term as his domain name for his business. The Respondent registered the domain names prior to registration of his business; therefore it cannot be argued that the domain names were chosen by the Respondent as it reflected his business name. There was no guarantee that the Respondent would be able to find a trade name incorporating the phrase “Kanada or Canada Egitim Merkezi” and it would appear that he failed to as his chosen trade name consists of two separate words “kan” and “ada”. This coupled with the fact that the Respondent was aware of the Complainants international use of the mark for more than 10 years. The Panel therefore comes to the conclusion that Respondent registered the domain names with the intention of being mistakenly affiliated with the Complainants to benefit from their established reputation.
For purposes of the Policy the Respondents registered and have used the disputed domain names in bad faith as “using the domain name, intentionally to attract, for commercial gain, Internet users to [Respondents'] website . . ., by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement” falls directly within paragraph 4(b)(iv) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <kanadaegitimmerkezi.com>, <kanadaegitimmerkezi.net>, <kanadaegitimmerkezi.org>, <canadaegitimmerkezi.com>, <canadaegitimmerkezi.net> and <canadaegitimmerkezi.org> be transferred to the first Complainant, Canadian Education Centre Network.
Gökhan Gökçe
Sole Panelist
Dated: August 12, 2009