WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
D-Market Elektronik Hizmetler ve Ticaret Anonim Şirketi v. Sanatsam Sanatsal Kirtasiye Ihsan Kurtulmus
Case No. D2013-0425
1. The Parties
The Complainant is D-Market Elektronik Hizmetler ve Ticaret Anonim Şirketi of Istanbul, Turkey, represented by Dericioğlu & Yaşar Law Office, Turkey.
The Respondent is Sanatsam Sanatsal Kirtasiye Ihsan Kurtulmus of Izmir, Turkey.
2. The Domain Name and Registrar
The disputed domain name <hepsiburadakirtasiye.com> is registered with Click Registrar, Inc. d/b/a publicdomainregistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 1, 2013. On March 1, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 5, 2013, the Registrar 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 March 12, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 1, 2013. The Center received informal email communications from the Respondent on March 12 and 31, 2013. The Respondent did not submit any formal response. Accordingly, the Center notified the parties about the commencement of panel appointment process on April 2, 2013.
The Center appointed Selma Ünlü as the sole panelist in this matter on April 11, 2013. 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 Center received another informal email communication form the Respondent on April 18, 2013, which the Center forwarded to the Panel on April 19, 2013.
4. Factual Background
The facts stated in the Complaint are as follows:
(1) “hepsiburada” is a well-known Turkish e-commerce platform throughout Turkey and owned by the Complainant which belongs to the Doğan Group of Companies, the leading company in media and entertainment sector in Turkey.
(2) The Complaint owns several trademarks containing “hepsiburada” phrase. These trademarks are: HEPSIBURADA.COM (no. 2000 20142, registration date April 26, 2002), COOLUB HEPSIBURADA.COM’DAN GENÇLIK KULÜBÜ! ŞEKIL (no. 2009 59049, registration date November 11, 2010), HEPSIBURADA.COM TÜRKIYE’NIN EN BÜYÜK ONLINE ALIŞVERIŞ MERKEZI ŞEKIL (no. 2009 30250, registration date May 6, 2010), HEPSIBURADAOUTLET (no. 2010 48306, registration date September 7, 2011), HEPSIBURADAPROMOSYON (no. 2011 37279, registration date September 28, 2012) and HETA HEPSIBURADA.COM E-TICARET AKADEMISI (no. 2011 74036, registration date October 19, 2012).
(3) The domain names <hepsiburada.com> and <hepsiburada.com.tr> were registered by the Complainant respectively on July 4, 2000 and May 9, 2003.
(4) The disputed domain name was registered on September 5, 2012.
(5) According to the Alexa results dated March 1, 2013, the website ”www.hepsiburada.com” is the 22nd most visited website in Turkey and 1676th in the world.
(6) There has been no contractual bond between the parties and there has been no permission or license given to the Respondent regarding the use of “hepsiburada” phrase.
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 trademarks and domain names containing “hepsiburada” phrase are identified with the Complainant, which has been using them for years. The disputed domain name derived from the registered trademark and the domain name of the Complainant.
In English language “kırtasiye” means “stationary” and the subject word does not constitute any distinctiveness apart from the Complainant’s trademarks and domain names.
Further, the Complainant states that the disputed domain name is indistinguishably similar to the trademarks containing “hepsiburada” 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, does not make a legitimate noncommercial or fair use and the Respondent has not been commonly known by the disputed domain name.
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 disputed domain name and has not acquired any trademark rights or personal rights in the name “hepsiburada”. Moreover, the Complainant indicates that the Respondent does not have any rights or legitimate interests in the disputed domain name since the Complainant did not give any license or permission to the Respondent.
(iii) Registered and Used in Bad Faith
The Complainant argues that the Respondent aims to gain unfair benefit from the Complainant’s reputation since it is not possible for the Respondent not to be aware of such a well-known trademark and website of the Complainant.
At this point, 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.
Therefore, the Complainant alleges that the Respondent who resides in Turkey is aware of or should have known about the Complainant’s rights in the term “hepsiburada” at the time of registration of the disputed domain name.
Also, the Complainant stated that they had sent a cease and desist letter via Public Notary to the Respondent; however, the Respondent had failed to respond to the letter.
The Respondent did not reply to the Complainant’s contentions formally. However, as stated in the procedural history, the Respondent sent some informal email communications briefly stating that the website under the disputed domain name had been closed.
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 containing “hepsiburada” phrase, the Panel finds that the Complainant has successfully proved its right in the term ”hepsiburada”. Also, the Complainant has a trademark registration HEPSIBURADA.COM since 2002.
The Panel is of the opinion that disputed domain name contains “hepsiburada” as the core element and the word “kırtasiye” (which means “stationery” in English) has been used as a subsidiary element of the disputed domain name..
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 “hepsiburada” originated trademarks. Moreover, the disputed domain name contains the term “hepsiburada” wholly. The Panel evaluates this matter by examining the similarity between the Complainant’s “hepsiburada” originated trademarks and the disputed domain name. The disputed domain name contains the “hepsiburada” phrase with the descriptive word “kırtasiye”.
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, UDRP 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 trademarks 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. Therefore, the Panel finds on the current record that the Complainant has proved rights in the HEPSIBURADA.COM trademark and also established a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name for the purposes of the Policy.
Also the well-known reputation of the Complainant’s trademark has been proven through the evidence submitted by the Complainant.
Consequently, in the absence of an accurate response, the Panel accepts the Complainant’s allegations as true that the Respondent has no authorization to use the HEPSIBURADA.COM trademark in the disputed domain name.
Hence, as the Complainant has made out its prima facie case, and as the Respondent has not demonstrated any rights or legitimate interests as illustrated under paragraph 4(c) of the Policy, nor has the Panel found any other basis for finding any rights or legitimate interests of the Respondent in the disputed domain names, the Panel concludes that the Complainant has satisfied the requirements of 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
(ii) 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 use of the HEPSIBURADA.COM and “hepsiburada” originated trademarks by the Complainant, as well as the above mentioned domain names, the Respondent who is domiciled in Turkey, could not have been unaware of the Complainant’s 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.
Moreover, the Complainant’s HEPSIBURADA.COM trademark has been used over a decade and has been used before the registration of the disputed domain name. Therefore, the Panel refers to the Kahn Lucas Lancaster, Inc. v. Marketing Total S.A., WIPO Case No. D2007-1236 where the panel stated that “Respondent most likely was aware of Complainant's trademark when it registered the disputed domain name. It seems unlikely … that Respondent would have chosen this name randomly.” Thus, the Panel finds that the Respondent has registered the disputed domain name in bad faith.
Although the Complainant alleges that the Respondent sells stationary equipment through the website to which the disputed domain name resolves, the Complainant does not submit any evidence proving such argument. However, the Panel notes that the Respondent did not file a counter argument on this matter.
Also, the Panel visited the website to which the disputed domain name resolves and, contrary to the Complainant’s argument, found no active website under the disputed domain name. In this particular case, the Panel is convinced that the Respondent is passively holding the disputed domain name. “Passive holding” has been accepted as a sufficient bad faith indicator in a number of previous UDRP cases. As it is well reasoned in the case of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, “inaction […] can, in certain circumstances, constitute a domain name being used in bad faith.” Also, the Panel refers to Compaq Computer Corporation v. Boris Beric, WIPO Case No. D2000-0042 and VEDA GmbH v. Mr. Nicholas Silverstone, WIPO Case No. D2002-1040. The Panel finds these UDRP decisions apt in the present case:
(i) the Respondent did not offer any counter-argument and remained in default,
(ii) the Complainant’s trademark has a strong reputation and is well known in Turkey,
(iii) the Respondent has not proven any good faith use.
Also the Panel noted that the Respondent failed to respond to the warning letter sent by the Complainant.
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 <hepsiburadakirtasiye.com> be transferred to the Complainant.
Date: April 25, 2013