The Complainant is D-Market Elektronik Hizmetler Ve Ticaret Anonim Şirketi of Istanbul, Turkey, represented by Dericioğlu & Yaşar Law Office, Turkey.
The Respondent is Murat Keskin, mupefun of Istanbul, Turkey and Newport Beach, California, United States of America.
The disputed domain names <hepsiburadanow.com>, <hepsiburadaonline.com>, <hepsiburadashop.com>, <hepsiburadastore.com>, <hepsisburada.com>, <myhepsiburada.com>, and <newhepsiburada.com> are registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 19, 2010. On March 19, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On March 21, 2010, GoDaddy.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names <myhepsiburada.com>, <hepsiburadaonline.com>, and <hepsisburada.com> which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 24, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on March 30, 2010. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 31, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was April 20, 2010. The Respondent did not submit any formal response, but did e-mail the Center, claiming ownership of the domain name registrations and inviting an offer for sale. The Respondent also sent an e-mail on April 21, 2010, but did not offer any substantive comment.
The Center appointed Dilek Ustun as the sole panelist in this matter on April 26, 2010. 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.
The Complainant is well-known and recognized over the past years in the media sector with the term “hepsiburada”, which is an e-commerce platform throughout Turkey.
The Complainant owns the trademark HEPSIBURADA.COM, which was registered with the number 2000/20142 effective from September 22, 2000.
The domain names <hepsiburada.com> and <hepsiburada.com.tr> were registered by the Complainant on July 4, 2000 and May 9, 2003, respectively.
The disputed domain names were registered by the Respondent on:
<hepsisburada.com> Date of Registration: February 18, 2008.
<hepsiburadashop.com> Date of Registration: July 17, 2009.
<hepsiburadastore.com> Date of Registration: July 17, 2009.
<hepsiburadanow.com> Date of Registration: July 17, 2009.
<newhepsiburada.com> Date of Registration: July 17, 2009.
<myhepsiburada.com> Date of Registration: February 18, 2008.
<hepsiburadaonline.com> Date of Registration: February 18, 2008.
(i) The Complainant states that they have prior rights on the term “hepsi burada” and the disputed domain name are confusingly similar to the Complainant's mark HEPSIBURADA.COM as it incorporates this mark. The disputed domain names <hepsiburadaonline.com>, <myhepsiburada.com>, <newhepsiburada.com>, <hepsiburadanow.com>, <hepsiburadastore.com>, <hepsiburadashop.com>, and <hepsisburada.com> allocated by the Respondent also bear indistinguishable similarities with the Complainant's domain names and trademark.
(ii) The Respondent has no rights or legitimate interests in respect of the domain names. There is no evidence, which suggests that is commonly known by said domain names or the name “hepsiburada”, or is making a legitimate noncommercial or fair use of the disputed domain names.
(iii) The main element of all the disputed domain names is “hepsiburada”, and they are being used as e-commerce websites. This brings to mind that an unfair advantage will be taken from the commercial value singlehandedly acquired by the Complainant's trademark and domain names. In fact, the same consumer segment targeted by both the Complainant's trademark and the Respondent's resulting websites is an indication of the aim to gain improper benefit in bad faith and it proves that there is no legitimate interest.
(iv) The Respondent has registered and is using the disputed domain names in bad faith. The Complainant states that, the owner of the said domain names operates in the media sector (including online shopping), the same field of activity as the Complainant. The Complainant also stated in that the Respondent, in response to a warning notice, stated that it could transfer the disputed domain names in return for USD 1,500,000. However, this amount is in excess of out-of-pocket costs and an indication of bad faith registration and use.
The Respondent did not formally reply to the Complainant's contentions. However, prior to the notification of commencement of the proceedings, the Respondent in an e-mail communication dated March 24, 2010 stated that it was “the owner of all these domains” and that it “[has] no connection with the hepsiburada.com”. The Respondent alleged that the term “hepsi burada” was equivalent to the general phrase “shop everything is here” and that it was “open for an offer to sell the domain names”.
Paragraph 15(a) of the Rules requires the Panel to decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Under paragraph 4(a) of the Policy, the Complainant bears the burden of showing:
(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used by the Respondent in bad faith.
This Complaint is based on the HEPSIBURADA.COM trademark which is a registered trademark of the Complainant.
According to the Complaint, the Complainant has been using the trademark HEPSIBURADA.COM since 2000. In addition, the Complainant may rely on the distinctiveness of its mark in Turkey.
The addition of the words “online” , “shop”, “store”, “now”, “new” and “my” does not eliminate the similarity between the Complainant's trademark and the disputed domain names. Also the disputed domain name <hepsiSburada.com> is confusingly similar to the Complainant's trademark, especially since the added “s” only makes an insubstantial difference in the pronunciation and appearance of the word.
The Panel concurs with the opinion of several prior UDRP panels which have held that, when a domain name wholly incorporates a complainant's registered mark that may be sufficient to establish confusing similarity for purposes of the Policy. See e.g., Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle, WIPO Case No. D2005-1105; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047; Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615.
The Panel has also confirmed the conclusion of the panel in WIPO Case No. D2004-0896 here;
None of the 78 disputed Domain Names are identical to Complainant's trademarks. However, all Domain Names consists of (i) Complainants trademark with the addition of a generic term, or (ii) combinations of Complainant's trademarks, or (iii) misspellings of Complainant's trademarks, with or without combination of generic terms. Such combinations or misspellings are not sufficient to distinguish Respondent's domain names from Complainant's trademarks. On the contrary, if the addition is a term associated with the business of the Complainant - such as in <newsyahoo.com>, <personalyahoo.com>, <yahoomails.com>, <yahoomembers.com>, <yahooomail.com>, <yahiomail.com>, <yahogroups.com>, <yahoimail.com>, <yahopmail.com>, <yahpomail.com>, <yajoomail.com>, <ayhoomail.com>, <launchyahoomusic.com>, <yahoolauncher.com>, <yahoomember.com>, <yahoomemberservices.com>, <yayoomail.com>, <yahoomaiil.com>, <yyahoomail.com>, <yahoolauch.com>, <yahoomasanger.com>, <shopyahoo.com>, <yahooweb.com>, <yahoomial.com>, <chatroomyahoo.com>, <avchatrooms.com> and <avchatroom.com> - it can even add to the similarity between the domain name and the trademark in question (see ACCOR v. Jose Manuel Fernandez Garcia, WIPO Case No. D2002-0988). Even if the generic terms are misspelled, it may, in the eyes of the public, add to the similarity of the trademark if the misspelling is obvious and easy to read as the original term – such as mial v. mail.
Therefore, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy is met.
The Panel finds that the Respondent has not demonstrated a right or legitimate interest in the disputed domain names.
While the burden of proof in principle rests with the Complainant, the Panel has recognized that this would result in the impossible task of proving a negative, in particular as requiring the lack of rights or legitimate interests, is primarily within the knowledge of the Respondent. Therefore, the Panel believes that the Complainant is only required to make out a prima facie case in order to meet the requirements in paragraph 4(a)(ii) of the Policy, Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
The Panel finds that the Complainant has satisfied this requirement, while the Respondent has failed to demonstrate any right or legitimate interest in the disputed domain names according to the Policy, paragraph 4(a)(ii) and 4(c).
With its Complaint, the Complainant has provided non-contested prima facie evidence that the Respondent has no trademark, license or any other similar right to use the disputed domain names.
The Respondent indicated in its e-mail to the Center that the term “hepsi burada” was equivalent to the general phrase “shop everything is here”; however, the use of a generic term such as this is not legitimate if the purpose is to take advantage of the fame of the mark, which, in this Panel's estimation, it is.
The Panel finds that there is no indication that the disputed domain names are used in connection with a bona fide offering of goods and services. In addition, there is no indication that the Respondent has been commonly known by the disputed domain names.
The Panel finds that the Complainant has satisfied the requirements of 4(a)(ii) of the Policy.
The Complainant's trademark is well-known in Turkey. All the disputed domain names refer to Complainant's trademark, directly or misspelled, and the sheer number of domain name registrations makes it clear that the Respondent had prior knowledge of the Complainant and registered the disputed domain names with the Complainant specifically in mind.
Further, the Respondent uses the disputed domain names to intentionally attract, presumably for commercial gain, Internet users by creating a likelihood of confusion with the Complainant and its trademark as to the source, sponsorship, affiliation, and endorsement of the Respondent and the Respondent's websites. The Respondent is also disrupting the Complainant's business by using the disputed domain names for competing, commercial websites.
The Respondent's extensive registration and use of the disputed domain names incorporating misspellings of Complainant's trademarks is a further evidence of bad faith, as such actions are not only trading of the goodwill pertaining to the said trademarks, but will also cause harm to the goodwill.
Moreover, in this Panel's view, the Respondent's comments in its email communications with the Center and with the Complainant as evidenced in the annexes to the Complaint reveal that it acquired the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to the Complainant for valuable consideration in excess of its documented out-of-pocket costs.
Thus, this Panel concludes that the disputed domain names are both registered and used in bad faith.
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, <hepsiburadaonline.com>, <myhepsiburada.com>, <newhepsiburada.com>, <hepsiburadanow.com>, <hepsiburadastore.com>, <hepsiburadashop.com>, and <hepsisburada.com> be transferred to the Complainant.
Dated: May 7, 2010