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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Özdilek Ev Tekstil Sanayi ve Ticaret Anonim Şirketi v. Montanya Ltd and Protected Domain Services

Case No. D2012-1595

1. The Parties

The Complainant is Özdilek Ev Tekstil Sanayi ve Ticaret Anonim Şirketi of Bursa, Turkey, represented by Basalan Patent & Trade Mark Ltd. Şti, Turkey.

The Respondent is Montanya Ltd of George Town, Kentucky, United States of America and Protected Domain Services of Denver, Colorado, United States of America.

2. The Domain Name and Registrar

The disputed domain name <özdilek.com> [<xn--zdilek-vxa.com>] is registered with Spot Domain LLC dba Domainsite.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 8, 2012. On August 8, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 10, 2012, the Registrar 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 August 13, 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 August 13, 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 August 16, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 5, 2012. The Respondent did not submit any response. Accordingly, the Center notified the parties about the commencement of the panel appointment process on September 10, 2012.

The Center appointed Joan Clark as the sole panelist in this matter on September 18, 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.

4. Factual Background

The Complainant is the owner of several trademark registrations in numerous countries for the trademark ÖZDILEK and trademarks comprising ÖZDILEK as its first and significant element. As examples it owns the trademark ÖZDILEK registered in numerous European countries in 2002, and the trademark ÖZDILEK TEKSTIL registered by the Turkish Patent Institute in 2005.

The Respondent is the registrant of the disputed domain name <özdilek.com> [<xn--zdilek-vxa.com>] registered on November 14, 2007 with the Registrar.

5. Parties’ Contentions

A. Complainant

The Complaint states that the Complainant is a joint stock company established under the laws of Turkey with its registered address in Bursa. The Complaint recounts the Complainant’s progress starting in 1971 with two weaving machines and five personnel producing 10 tons of towel production capacity per year, until today when it produces 10,000 tons of annual towel production and realizes substantial sales abroad to more than 20 foreign countries including the United States of America, Canada, Germany, United Kingdom of Great Britain and Northern Ireland, and many others. The Complaint states that in 2009 the trademark ÖZDILEK was determined by the Capital/Brand Finance Trade Mark Value Research to be the highest valued trademark in the shopping center/retail category.

The Complaint further states that the trademark ÖZDILEK TEKSTIL is recognized as a well-known trademark by the Turkish Patent Institute.

The Complaint maintains that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Complaint notes that the domain name which is the subject of the Complaint is <xn--zdilek-vxa.com> but that when this domain name is written on the web browser it is transformed to <özdillek.com> having the Turkish alphabet character “ö”. Accordingly, the Complaint explains that the domain name <xn--zdilek-vxa.com> is in fact used as <özdilek.com>, and that this translation takes place through the I-nav software. The Complaint avers that the disputed domain name is virtually identical to the Complainant’s trademark ÖZDILEK and trademarks including ÖZDILEK as the main element.

The Complaint notes that the Complainant owns <ozdilek.com>, <ozdilek.com.tr> and <özdilek.com.tr> and there is a very high risk of confusion between its domain names and the disputed domain name.

The Complaint refers to the importance and extensive use of the trademark ÖZDILEK and the very substantial sales under the mark.

The Complaint continues that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and states there is no evidence of the Respondent’s use of or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, and that on the contrary the Respondent has stated that the disputed domain name is for sale. The Complaint also produces trademark search reports showing that there is no ÖZDILEK trademark registration in the name of the Respondent.

Finally, the Complaint asserts that the disputed domain name was registered and is being used in bad faith. It notes that the Respondent’s website is being used for the advertisement of other websites or companies which are competitors of the Complainant. The Complaint maintains that the Respondent had knowledge of the Complainant and its area of activity and that it was not by coincidence that it provided advertisements of other websites and companies which are in the same area of activity as the Complainant. Furthermore, the Complaint notes that the printouts of pages from the Respondent’s website contain phrases such as “this domain name may be available for purchase” and “searching domain name” and “selling domain name” and “determination of the value of domain name” which is an indication of the bad faith of the Respondent in registering the disputed domain name and its intention of selling it.

The Complaint states that the Respondent has already communicated with one of the Complainant’s employees about the sale of the disputed domain name via an intermediary person and encloses the correspondence in question, which is further indication of the Respondent’s bad faith according to the Complainant.

The Complaint concludes by requesting that the Administrative Panel issue a decision that the disputed domain name be transferred to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy states that, in order to be successful with respect to the disputed domain name, the Complainant has the burden of providing that all three elements are present in the Complaint, namely:

(i) that the disputed domain name 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 disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy sets out four illustrative circumstances which, for the purpose of paragraph 4(a)(iii) above, shall be evidence of registration and use of a domain name in bad faith but are not limitative.

Paragraph 4(c) of the Policy sets out three illustrative circumstances each of which, if proven, shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name for purposes of paragraph 4(a)(ii) above.

A. Identical or Confusingly Similar

The disputed domain name was registered in 2007 as follows: <xn--zdilek-vxa.com>. This is translated by common browsers into <özdilek.com> by using the software I-nav, which is the way in which trademarks including letters “a”, “o” or “u” with an umlaut can be expressed in a form suitable for domain name registration. See Württembergische Versicherung AG v. Emir Ulu, WIPO Case No. D2006-0278. A print-out of the page of the website for the Respondent’s disputed domain name (Annex 25 to the Complaint) shows <özdilek.com> as the title of the website.

The translated or short form of the disputed domain name, <özdilek.com>, is virtually identical to the Respondent’s trademark ÖZDILEK, since the suffix “.com” is not to be considered in determining the question of identity or confusing similarity. The version of the disputed domain name as originally registered, <xn--zdilek-vxa.com>, contains in whole the word “özdilek” which is identical to the Complainant’s trademark ÖZDILEK.

The Panel is satisfied that the Complainant has rights in the trademark ÖZDILEK registered in 2002, as well as in ÖZDILEK TEKSTIL registered in 2005, among numerous other trademarks involving the word “özdilek”.

The Panel finds that the disputed domain name is identical to trademarks in which the Complainant has rights, and the first condition of paragraph 4(a) of the Policy for the Complaint to succeed has been satisfied.

B. Rights or Legitimate Interests

The Respondent has chosen not to reply to the Complaint, although an individual named Paul Keating stating he was a representative of the Respondent, contacted the Center and requested copies of the correspondence in this matter which were duly forwarded to him in an email communication of August 14, 2012. However no further word was received from Mr. Keating. The Panel accepts his statement that he was a representative of the Respondent, particularly since his enquiry for copies of the correspondence was made immediately after the Respondent was notified of these proceedings. In any event, the issue as to whether Mr. Keating were an authorized representative of the Respondent is moot, since neither he nor anyone else on behalf of the Respondent filed a response or made any attempt to refute the assertions in the Complaint.

It is alleged in the Complaint that the Respondent was not previously known by the disputed domain name and that there is no evidence of the Respondent’s use of or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. There has been no rebuttal of these assertions and no contrary evidence in the file. Copies of the website pages under the disputed domain name, as produced by the Complainant, do not show any offer to sell goods or services, but refer the Internet users to companies that the Complainant claims are its competitors. Such use cannot be considered to be in good faith in accordance with paragraph 4(c)(i) of the Policy, as the Respondent is luring Internet users to its own website by using a domain name which is identical to the Complainant’s trademarks.

The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and the second condition of paragraph 4(a) of the Policy for the Complaint to succeed has been satisfied.

C. Registered and Used in Bad Faith

In the absence of any explanation from the Respondent, as the disputed domain name has been found to be identical to the Complainant’s trademarks, and as the disputed domain name was registered in 2007, several years after registration of the Complainant’s trademark ÖZDILEK in 2002 and ÖZDILEK TEKSTIL in 2005, the Panel concludes that the disputed domain name was registered to take advantage of the considerable renown of the Complainant and its trademarks. It would be unrealistic to believe that the Respondent was not aware of the Complainant and its trademarks ÖZDILEK, ÖZDILEK TEKSTIL and others when the Respondent’s website under the disputed domain name refers Internet users to companies which are competitors of the Complainant, many of them in similar textile businesses.

There is no evidence in these proceedings that the Respondent ever intended to use the disputed domain name in good faith. Instead it has been used to lure Internet users to the Respondent’s website and then direct them to companies in competition with the Complainant in the same field of business.

The purpose of the registration of the disputed domain name, in addition to luring Internet users by creating confusion with the Complainant and its trademarks, appears to have been to offer a confusing domain name for sale. The print-outs of pages from the Respondent’s website, produced by the Complainant, bear the notation “This domain name may be available for purchase!”. In fact, the Complainant has produced correspondence dated from May and June 2012, between a representative of the Complainant and a domain name broker, relating to a proposed sale of the disputed domain name to the Complainant. During this correspondence an offer to sell the disputed domain name on behalf of its undisclosed owner to the Complainant for USD 16,000.00 was made, but negotiations were never completed. This reinforces the Panel’s conclusion that the disputed domain name was registered in bad faith for purpose of sale in view of its obvious confusion with the Complainant’s trademarks. While there is no evidence that the Respondent has offered goods or services for sale on its website under the disputed domain name, the latter has been used to attract Internet users by creating confusion with the Complainant and its trademarks and with a view to offering the disputed domain name for sale. The Panel finds that this use, as well as the original registration of the disputed domain name, has been in bad faith and the third condition of paragraph 4(a) of the Policy for the Complaint to be successful has been satisfied.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <özdilek.com> [<xn--zdilek-vxa.com>] be transferred to the Complainant.

Joan Clark
Sole Panelist
Dated: October 1, 2012

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