WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hürriyet Gazetecilik ve Matbaacılık Anonim Şirketi v. Hürriyet Gürsel Turnalı, Barut Ajans - Hürriyet Gürsel Turnalı
Case No. D2011-1902
1. The Parties
The Complainant is Hürriyet Gazetecilik ve Matbaacılık Anonim Şirketi of Istanbul, Turkey, represented by Dericioğlu & Yaşar Law Office of Turkey.
The Respondent is Hürriyet Gürsel Turnalı, Barut Ajans - Hürriyet Gürsel Turnalı of Istanbul, Turkey.
2. The Domain Name and Registrar
The disputed domain name <hurriyetport.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 2, 2011. On November 2, 2011, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com. a request for registrar verification in connection with the disputed domain name. On November 4, 2011, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 November 9, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 29, 2011. The Response was filed with the Center on November 23, 25 and 28, 2011.
The Center appointed Selma Ünlü as the sole panelist in this matter on December 14, 2011. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The facts stated in the Complaint are as follows:
(1) “Hürriyet” is a well-known Turkish daily newspaper established in 1948 and owned by the Complainant which is one of the group of companies of Doğan Group, one of the leading company in media and entertainment sector in Turkey.
(2) The Complainant is the owner of the HÜRRİYET trademark dated July 13, 1988 and various HÜRRİYET rooted trademarks registered for the goods including “newspapers, magazines, books, …” under Class 16 since 1996.
(3) The Complainant is the owner of the Community Trademarks dated April 16, 1998 and August 12, 1996 in the term “Hürriyet” covering Class 16. Also the Complainant has international trademark registrations before WIPO dated 1994. The HÜRRİYET trademark number 3010256, dated November 1, 2005, is registered in the name of the Complainant before the US Patent and Trademark office.
(4) The Complainant has registered various domain names containing the term “Hürriyet” since October 31, 1996.
The facts stated in the Response are as follows:
(1) The Respondent’s personal name is Hürriyet Gürsel Turnalı, as indicated in the copy of the national ID Card provided by the Respondent.
(2) The Respondent is the author of the books mentioned in the Response, published by the Respondent’s Firm “Barut Ajans – Hürriyet Gürsel Turnalı” which is registered with the Istanbul Trade Registry Office since March 20, 2007.
(3) The Respondent is hosting a TV program on Kanal T TV channel, namely “Hürriyetport with Hürriyet Tunalı”.
5. Parties’ Contentions
The Complainant requests the Panel to issue a decision transferring the disputed domain name to the Complainant on the following grounds:
(i) The disputed domain name is identical to the trademarks and service marks in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name was registered and is being used in bad faith.
(i) Identical or Confusingly Similar
The Complainant states that the HÜRRİYET trademark is identified with the Complainant and has been used since 1948. The Complainant indicates that the HÜRRİYET trademark and domain names derived from it are very well-known by consumers of every age in Turkey and also had received recognition by Turkish consumers in Europe. Therefore, the Complainant alleges that it has earlier rights to the term “Hürriyet” due to its registration since 1988.
Further, the Complainant states that the disputed domain name is indistinguishably similar to the HÜRRİYET trademark and gives rise to confusion. At this point, the Complainant refers to Philip Morris USA Inc. v. Mariana Gemenitzi, WIPO Case No. D2009-1715 by stating that the addition of the generic top level domain “.com” does not avoid the similarity between the disputed domain name and the Complainant’s trademarks and domain names.
(ii) Rights or Legitimate Interests
The Complainant argues that the Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services and the Respondent is not making a legitimate noncommercial or fair use.
The Complainant refers to Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and states that the Respondent is not commonly known by the domain name and has not acquired any trademark rights or personal rights in the name “Hürriyet”. Moreover, the Complainant indicates that the Respondent does not have any rights or legitimate interest in the disputed domain name since the Complainant did not give any such licence or permission to the Respondent.
(iii) Registered and Used in Bad Faith
The Complainant indicates that the disputed domain name is used in the same field of activity the Complainant is engaged and the Respondent gains unfair benefit from the Complainant’s reputation.
The Complainant refers to Builder’s Best, Inc. v. Yoshiki Okada, WIPO Case No. D2004-0748 and Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226 and states that the Respondent was clearly aware of the Complainant’s trademarks and registered the disputed domain name in bad faith.
Further, the Complainant states that the website “www.hurriyet.com.tr”, registered on October 31, 1996, is being actively used. According to the Alexa results, it is the 8th most visited website in Turkey and 399th in the world. Therefore, the Complainant alleges that the Respondent who resides in Turkey is aware or should have known about the Complainant’s rights in the term “Hürriyet” at the time of registration of the disputed domain name.
Moreover, the Complainant argues that the disputed domain name creates a likelihood of confusion in the minds of the consumers as being operated or affiliated by the Complainant since it is very similar to the Complainant’s trademark. On this point the Complainant refers to Ebay Inc. v. Wangming, WIPO Case No. D2006-1107 and Doğan Gazetecilik Anonim Şirketi v. Jason Statham, WIPO Case No. D2010-0164. Thus, the Complainant also alleges that the consumers may presume that the disputed domain name is one of the domain names owned by the Complainant.
Accordingly, the Complainant alleges that the main aim of the Respondent is to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant’s trademark.
The Respondent states that her name is Hürriyet Gürsel Turnalı and proves this allegation with her national ID Card copy attached to the Response. According to the Respondent, the purpose of registering and operating the website is to conserve her name and make it known to the people. According to the Respondent, the reason of operating the said website is to introduce the books written by the Respondent and share the interesting news with people by indicating the source of the news.
The Respondent states that she has a registered firm (sole proprietorship) named “Barut Ajans - Hürriyet Gürsel Turnalı” and the Respondent publishes her own books through this firm. She also provides copies of her books as evidence.
The Respondent also alleges that she hosts the TV program “Hürriyetport with Hürriyet Tunalı” on Kanal T TV channel and provides links to some episodes of it. The Respondent argues that, further to a comparison between the websites of the Complainant and the Respondent, it is clear that there is no similarity between them, the domain name also contains the word “port” which consists of the initials of other family members who are writers and which also means a big door. Therefore, the Respondent alleges that unfair competition does not exist by imitating the trademark of the Complainant. Moreover, the Respondent states that it is not possible that she imitates such a big newspaper which updates its website daily since she does not update her website regularly.
Further, the Respondent states that, when the web pages are compared, it will be seen clearly that the design and logo of the web pages are different and there is no similarity between them.
6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) The disputed domain name is identical or confusingly similar to the trademark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the Complainant has the burden of proving that all these requirements are fulfilled.
A. Identical or Confusingly Similar
Based on the evidence submitted by the Complainant concerning the trademark registrations of the term “Hürriyet”, the Panel finds that the Complainant has successfully proved its right in the term “Hürriyet”. The Complainant has a trademark registration in the term “Hürriyet” since 1988, which it started to use in 1948.
The disputed domain name contains the word “Hürriyet” as a core element and word “port” as a secondary element. Since the word “port” may be associated with the common Internet term “portal” it has no distinctive character for Internet users. Additionally, since the Complainant has various serial trademarks containing secondary elements, Internet users may believe that the disputed domain name is owned and operated by the Complainant.
The test for identical or confusing similarity under paragraph 4(a)(i) of the Policy is limited to a direct comparison between the Complainant’s trademark and the textual string which comprises the disputed domain name. In this case, the Complainant has demonstrated registered rights in the HÜRRİYET trademark. Moreover, the disputed domain name contains the term “Hürriyet” wholly. The Panel evaluates this matter by examining the similarity between the Complainant’s HÜRRİYET trademark and the disputed domain name. The disputed domain name contains the HÜRRİYET trademark with the descriptive word “port”.
In similar cases, e.g. Sanofi-Aventis v. Gideon Kimbrell, WIPO Case No. D2010-1559, Turkcell Iletisim Hizmetleri A.S. v. Vural Kavak, WIPO Case No. D2010-0010, Greenbrier IA, Inc. v. Moniker Privacy Services/Jim Lyons, WIPO Case No. D2010-0017 and Zodiac Marine & Pool, Avon Inflatables Ltd and Zodiac of North America Inc. v. Mr. Tim Green, WIPO Case No. D2010-0024, panels have found that adding descriptive words does not avoid the likelihood of confusion between a trademark and a domain name incorporating said trademark.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s HÜRRIYET trademark and thus, the first requirement under paragraph 4(a) of the Policy is satisfied.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy states that, a respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) You [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The burden of proof lays on the Complainant who must demonstrate a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. Once the Complainant has made out a prima facie case, then the Respondent may, by, inter alia, showing one of the above elements, prove rights or legitimate interests in the disputed domain name.
In light of the evidence submitted in the case file, it is clear that the Complainant has not granted the Respondent any right or license to its trademark.
As it is indicated in the national ID Card of the Respondent, her name is “Hürriyet Gürsel Turnalı”. The Respondent is also the owner of a registered firm named “Barut Ajans - Hürriyet Gürsel Turnalı”. As it is understood from the registry records provided by the Respondent, the commercial operations of the said firm are in the fields of publishing, press, advertising, promotion, production, cast, agency, organisation, and management services. Additionally, the Respondent provides some links to a TV program called “Hürriyetport with Hürriyet Tunalı” broadcast on Kanal T TV Channel.
In this sense, based on the evidence, the Panel holds that the use of the HÜRRİYET trademark has not been authorized or licensed to the Respondent. Additionally, the Panel is of the opinion that although the personal name of the Respondent “Hürriyet Gürsel Turnalı” and trade name of the Respondent “Barut Ajans - Hürriyet Gürsel Turnalı” both contain the name “Hürriyet”, this does not give a legitimate interest to the Respondent to use “Hürriyet” with a descriptive term in a domain name to post an information service website, which can be seen as competitive with the Complainant.
Moreover, the Panel is of the opinion that the Complainant has an exclusive right to use the HÜRRİYET trademark, especially for the goods and services related to press and print media, since the Complainant uses the said trademark for more than six decades. Anyone who resides in Turkey knows HÜRRİYET as a flagship in the media sector and as a famous trademark. Therefore, any use of the HÜRRİYET trademark in relation to the goods and services mentioned above is likely to mislead the consumer and dilute the trademark. Under these circumstances, use of the disputed domain name by the Respondent does not appear legitimate or the fair use. At this point the panel refers to Peter Frampton v. Frampton Enterprises, Inc., WIPO Case No. D2002-0141 where the Panel stated that “While the "PETER FRAMPTON" mark clearly is a personal name, and one shared with the Respondent, nevertheless as a result of the Complainant's extensive use of his name since 1967, in connection with advertising and promoting his musically-related goods and services, that mark has acquired considerable secondary meaning, and consequently distinctiveness, in the Internet community, and certainly in a much larger community of the contemporary music industry and its followers, in conjunction with and as a source indicator of the goods and services which the Complainant offers.”
Also it is noteworthy to mention that “Hürriyet” means freedom in Turkish and is a common personal name in Turkey. Therefore, as it is settled with the Turkish jurisprudence, it is not allowed to create confusion with a well-known trademark based on the ground that the Respondent’s personal name covers the said trademark. On this point, the Panel refers to the 11th Chamber of Court of Appeal’s decision numbered E. 2000/5942, K. 2000/8429 and dated October 31, 2000 where the Court concluded that since the disputed word was used as a trade name for many years and had reached the status of a well known trademark, it is not possible to use the names and surnames in commerce in good faith even if the said word is the surname of the respondent company’s co-founder.
The Panel also notes that the website at the disputed domain name is not being used to promote the Complainant’s television show “Hürriyetport with Hürriyet Tunalı” but rather as an information service website, which speaks more to taking advantage of the Complainant’s trademark than using the website to promote, for example the Respondent’s TV program.
Accordingly, the Panel is of the view that the Complainant has proved that the Respondent does not have rights or legitimate interests in the disputed domain name, as required under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four, non-inclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) The respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on respondent’s website or location.
By consideration of the foregoing, and in view of the content of the case file the Panel is of the opinion that due to the extensive and intensive usage of the HÜRRİYET trademark by the Complainant, as well as the above mentioned domain names, the Respondent, who appears to be located in Turkey, could not have been unaware of its existence. See, e.g., Ebay Inc. v. Wangming, WIPO Case No. D2006-1107; General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087. On the other hand, the Respondent also admits the well-known status of the Complainant’s trademark in her Response.
Also the Panel finds as bad faith the fact that the Respondent is operating the website to post news under mainly politics, media, sport, health and culture headings as the Complainant has done through print media since 1948 and through its websites since 1996. Also, the Respondent mentioned as the reason for operating such a website to promote the books written by her and share some interesting news with Internet users. However, during a visit to the “www.hurriyetport.com” website the Panel did not find any information regarding the said books. Therefore, even though the Respondent is commonly known by her name as a writer, it does not give her a right to operate a website in what some may see as a similar field of the Complainant.
The Panel refers to The Bruce Trail Association v. Andrew Camp and Bruce Trail Enterprises, WIPO Case No. D2001-1021 where the panel concluded that the respondents acquired legitimate interests since the same term was used for a different purpose and there was no confusion created in the eyes of public to make them think that they are involved with the custodians of the Complainant. However, in the present case a contrary situation exists where the Respondent used the term “Hürriyet” for the same purpose as the Complainant and there is confusion created amongst Internet users. Also, the Panel believes that Complainant’s HÜRRİYET trademark has acquired high recognition and fame in the eyes of the public, sufficient to prevent the Respondent from obtaining legitimate interests to the word “Hürriyet” with a descriptive term in a domain name to post an information service website which can be seen as competitive withte Complainant.
In light of above and since the Respondent admits the well-known status of the Complainant’s trademark in her Response, the Panel holds that the Respondent intentionally attempted to attract Internet users to its websites for commercial gain by benefitting from the Complainant’s reputation.
Accordingly, the Panel is of the opinion that the Complainant has met the requirement of paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <hurriyetport.com> be transferred to the Complainant.
Dated: December 28, 2011