WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
GönençGürkaynak v. Marco Rinaudo / Fundacion Private Whois
Case No. D2012-1350
1. The Parties
The Complainant is GönençGürkaynak of Istanbul, Turkey, represented by ELIG, Turkey.
The Respondent is Marco Rinaudo / Fundacion Private Whois of Zona 15 Panama.
2. The Domain Name and Registrar
The disputed domain name <tektekci.com> is registered with Internet.bs Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 2, 2012. On July 3, 2012, the Center transmitted by email to Internet.bs Corp. a request for registrar verification in connection with the disputed domain name. On July 6, 2012, Internet.bs Corp. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 6, 2012 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 amended Complaint on July 9, 2012.
The Center verified that the Complaint together with the amended 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 July 10, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 30, 2012. The Response was filed with the Center on July 28, 2012.
The Center appointed Kaya Köklü as the sole panelist in this matter on August 9, 2012. 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.
In accordance with the Rules, paragraph 11, and since the Parties have not agreed otherwise, the Panel finds that the language of the administrative proceedings is the language of the Registration Agreement (i.e., English).
4. Factual Background
The Complainant is an individual located in Istanbul, Turkey.
He is the registered owner of two different TEKTEKÇİ trademarks, which inter alia cover protection for various kinds of alcoholic and non-alcoholic beverages. The word mark TEKTEKÇİ was filed with the Turkish Patent Institute, the competent authority for trademark registrations in Turkey, on November 10, 2009. According to the registration data, the trademark application was first published on June 14, 2010 in the respective bulletin of the Turkish Patent Institute. The trademark was finally registered on November 23, 2011. Subsequently, a figurative mark comprising the sign TEKTEKÇİ was registered with the Turkish Patent Institute on December 20, 2011.
The Complainant further owns and operates a web portal at “www.tektekci.com.tr” since October 31, 2011.
According to the information received by the Registrar, the Respondent is Marco Rinaudo and Fundacion Private Whois from Panama. The Response, however, was submitted by someone who is named “TolgaMerctan”, apparently an individual from Turkey. All these Respondents seem to be linked to each other and are herein altogether referred to as “Respondent”, unless indicated otherwise.
The disputed domain name was first registered by the Respondent on February 24, 2011. According to undisputed screenshots provided by the Complainant, the disputed domain name has been offered for sale by the Respondent.
5. Parties’ Contentions
The Complainant requests the transfer of the disputed domain name.
First, the Complainant is of the opinion that the disputed domain name is identical to the Complainant’s Turkish trademark TEKTEKÇİ.
Second, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. In particular, the Complainant alleges that the Respondent has never used and does not intend to use the TEKTEKÇİ trademark in connection with a bona fide offering of goods or services. The Complainant additionally argues that the Respondent does not make any legitimate noncommercial or fair use of the disputed domain name, without the intent for commercial gain to misleadingly divert consumers or to tarnish the trademark mark at issue. Additionally, the Complainant asserts that the Respondent is not known by the disputed domain name since the disputed domain name has never been used “for any other purpose than being presented in World Wide Web as a sales item”.
Finally, it is argued that the Respondent registered and is using the disputed domain name in bad faith. The Complainant argues that the “sales notification” on the web page linked to the disputed domain name is “sufficient evidence in order to surface the respondents’ intention for selling”.
The Respondent replied to the Complainant’s contentions on June 7, 2012.
In its Response, the Respondent accuses the Complainant of reverse domain name hijacking.
The Respondent argues to have priority rights as it registered the disputed domain name more than 10 months prior to the Complainant’s first TEKTEKÇİ trademark registration.
Further, the Respondent argues that putting a domain name on sale “after shutdown of e-commerce site […] is normal behavior since the domain registered for making business did not go as planned”. Furthermore, the Respondent asserts that it does not intend to sell the disputed domain name anymore. It is argued that “tektekçi” also “means treasure hunting with detectors […] in Turkish and that it decided to make a site dedicated for treasure hunters and a share forum”.
The Respondent is of the opinion that “this dispute is total wrong, misleading case and arrogation which only planned to make a reverse domain hijack attempt”.
In essence, the Respondent requests that the Complaint is denied.
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 and on the basis of the Complaint where no Response has been submitted.
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 bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complaint. Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.
However, concerning the uncontested information provided by the Complainant, the Panel may as appropriately accept the provided reasonable factual allegations in the Complaint as true. Belupod.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
It is additionally noted that an independent research, by visiting the Internet site linked to the disputed domain name and by searching for further information on the trademark TEKTEKÇİ on the web site of the Turkish Patent Institute, has been performed by the Panel on August 14, 2012. The competence of the Panel to perform such independent research has been confirmed by prior UDRP decisions (see, e.g. Hesco Bastion Limited v. The Trading Force Limited, WIPO Case No. D2002-1038).
Further, the Panel points out that it has taken note of the WIPO Overview of Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) and, where appropriate, will decide consistent with the WIPO Overview 2.0.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is identical to the Complainant’s trademark TEKTEKÇİ.
First, the Panel confirms that the Complainant has satisfied the threshold requirement of having trademark rights regarding the sign TEKTEKÇİ. The Complainant has provided sufficient evidence demonstrating that the sign TEKTEKÇİ gains trademark protection in Turkey in the form of a word mark and a figurative mark comprising of the sign TEKTEKÇİ.
Second, the Panel finds that the disputed domain name is identical to the Complainant’s trademark TEKTEKÇİ. The disputed domain name is an identical adoption of the registered trademark TEKTEKÇİ and does not incorporate any amendments or additions. The Panel points out that the addition of a generic top level domain (“gTLD”) has no distinguishing effect and, as being a prerequisite of a domain name registration, may not to be considered within the assessment of identity or confusing similarity between the disputed domain name and the trademark in question.
Given the findings above, the Panel concludes that the first requirement under paragraph 4(a) of the Policy is fulfilled.
B. Rights or Legitimate Interests and Bad Faith Registration and Use
As both the Complaint and the Response are drafted very superficially and provide only a very limited picture of the true case, the Panel has difficulties in assessing whether the Respondent may have rights or legitimate interests in the disputed domain name.
The only assessment that can be made with certainty is that the alleged priority rights of the Respondent in the disputed domain name do not exist as the Complainant’s trademark application dates back already to the year 2009 whereas the disputed domain name was registered not before the year 2011.
However, the Panel cannot exclude the fact that the Respondent has used or intends to use the disputed domain name in connection with a bona fide offering of goods or services. The Respondent has provided a screenshot dated August 2011 displaying an online store which was under construction for maintenance work at that time. Whether this web portal linked to the disputed domain name was indeed ever active and used in connection with a bona fide offering of goods or services cannot be assessed for sure by the Panel.
Also, it remains unclear to the Panel, whether the Respondent’s allegation that it intends to establish a web portal for metal detectors, is true or just a self-serving assertion. Nevertheless, the Respondent’s allegation that the term “tektekçi” is sometimes used in the Turkish language to colloquially describe metal detectors for treasure hunters reflects the truth.
Nonetheless, the Panel believes that it can be left open whether the Respondent actually is entitled to rely on rights or legitimate interests to use the disputed domain name.
The Panel finds that the Complainant has in any case failed to demonstrate that the “bad faith” requirement of the Policy is fulfilled.
Paragraph 4(a)(iii) of the Policy explicitly requires bad faith registration and use of the disputed domain name.
The Complainant did not provide any evidence or convincing arguments concerning a bad faith registration by the Respondent. When the disputed domain name was registered in February 2011, the trademark TEKTEKÇİ was neither registered nor used by the Complainant. The Complainant himself provided documents indicating that it had started to run its own business under the trademark TEKTEKÇİ not before May 2012. Furthermore, the official website at “www.tektekci.com.tr” was first registered at the end of October 2011, and hence, more than 10 months after the registration of the disputed domain name by the Respondent. Consequently, at the time of the disputed domain name registration, the Respondent could – if at all – have only become aware of the existence of the Complainants’ trademark application, which was (according to the Panel’s own research) published in the bulletin of the Turkish Patent Institute in June 2010.
Hence, the Panel cannot assess for sure that at the time of registration of the disputed domain name the Respondent was aware of the Complainant’s TEKTEKÇİ trademark application. There are no sufficient indications in the case file which would justify the assumption that the Respondent consulted the bulletin of the Turkish Patent Institute in order to register a domain name comprising the sign TEKTEKÇİ in bad faith. In the Panel’s view, this is particularly questionable as the sign TEKTEKÇİ was not commonly known or even actively used by the Complainant at that time.
The Panel is aware that the case file contains some inconsistencies which could be assessed as indications of bad faith registration and use. In particular, it remains unclear why the Respondent registered the disputed domain name on behalf of an individual and/or a privacy domain name registration service located in Panama, although the true Respondent seems to be an individual from Turkey. Additionally, it remains striking why the Respondent argues a bona fide use of the disputed domain name, whereas it has only submitted an old screenshot of an “under construction” notice on the web portal linked to the disputed domain name.
Nevertheless, the Panel has remaining doubts whether the Respondent was in fact aware of the Complainant’s trademark TEKTEKÇİ at the time of the disputed domain name registration. If it is assumed that the Respondent did not register the disputed domain name in bad faith, the Respondent’s subsequent attempt to sell the disputed domain name could also not be assessed as an indication for bad faith registration.
As the burden of proof concerning a bad faith registration and use remains, as a general rule, with the Complainant, the Panel finds that the existing doubts in the present case need to be assessed to the detriment of the Complainant (non liquet).
The Panel thus concludes that the Complainant has failed to prove or sufficiently demonstrate bad faith registration and use by the Respondent.
C. Reverse Domain Name Hijacking
Reverse domain name hijacking is defined in paragraph 1 of the Rules as using the Policy in bad faith to attempt to deprive the domain name holder of a domain name.
As highlighted, amongst others, in Ville de Paris v. Salient Properties LLC, WIPO Case No. D2009-1279 (citing Jazeera Space Channel TV Station v. AJ Publishing aka Aljazeera Publishing, WIPO Case No. D2005-0309) “[a]llegations of reverse domain name hijacking have been upheld in circumstances where a respondent’s use of a domain name could not, under any fair interpretation of the facts, have constituted bad faith, and where a reasonable investigation would have revealed the weaknesses in any potential complaint under the Policy” (see also Goldline International, Inc v. Gold Line, WIPO Case No. D2000-1151).
The Respondent argues that the case at hand constitutes an attempt of a reverse domain name hijacking, in particular based on the argument that the disputed domain name was registered more than 10 months prior to the TEKTEKÇİ trademark of the Complainant.
The Panel does not share the view of the Respondent and does not see sufficient indication to assess an attempt for reverse domain name hijacking by the Complainant. On the contrary, the Panel once again points out that it was simply not able to find sufficient indication that the Respondent registered and is using the disputed domain name in bad faith, which does not necessarily lead to the conclusion that the Respondent acted in good faith. The Panel’s decision is rather a result of a non liquet case.
Hence, the Panel is of the opinion that the present case does not qualify as an attempt of reverse domain name hijacking.
For all the foregoing reasons, the Complaint is denied.
Dated: August 23, 2011