WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Deris Patent ve Marka Acentaligi A.S. v. Serkan Kolak
Case No. D2013-0861
1. The Parties
The Complainant is Deris Patent ve Marka Acentaligi A.S. of Istanbul, Turkey, represented internally.
The Respondent is Serkan Kolak of Istanbul, Turkey.
2. The Domain Name and Registrar
The disputed domain name <derishukuk.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 16, 2013. On May 16, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 17, 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 May 24, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 13, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 17, 2013.
The Center appointed Kaya Köklü as the sole panelist in this matter on June 26, 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.
In accordance with the Rules, paragraph 11(a), 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 a long-standing law firm in Turkey. Its founder Mr. Celal Dervis Deris established the law firm in 1912 in Istanbul. The trademark is now in use for more than 100 years for legal services, in particular in the field of intellectual property. Meanwhile, the law firm received many national and international awards for its provided services.
The Complainant is the registered owner of several trademarks incorporating the mark DERIS, such as the Turkish Trademark Registration No. 2003 24305, filed on September 12, 2003 and registered on December 9, 2004, in classes 9, 16, 35, 38, 41, 42 and 45, in particular covering protection for legal services. As evidenced in Annex 6, the Complainant owns further trademark registrations and applications in more than 70 jurisdictions worldwide, comprising the term DERIS.
According to the information provided in the case file, the Complainant additionally owns and operates several domain names incorporating the trademark DERIS, such as <deris.com>, <deris.com.tr>, <deris-hukuk.com>, <deris-hukuk.com.tr> and <derişhukuk.com>. Most of these domain names were registered long before the year 2012.
The Respondent is apparently an individual from Istanbul, Turkey.
The disputed domain name was registered on April 19, 2012.
The disputed domain name is linked to the homepage of another Turkish law office supposed to be operated by an attorney named “Meryem Deriş”.
5. Parties’ Contentions
First, the Complainant argues that the disputed domain name is confusingly similar to the Complainant’s DERIS trademarks. It is alleged that the main element of the disputed domain name is identical to the Complainant’s DERIS trademarks.
Second, the Complainant is of the opinion that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant in particular alleges that it has not licensed or otherwise permitted the Respondent to use any of its trademarks and has not permitted the Respondent to register or use any domain name incorporating its DERIS trademarks. The Complainant further asserts that the Respondent has never used the disputed domain name, nor made any demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services.
Third, the Complainant is convinced that the Respondent has registered and is using the disputed domain name in bad faith. It is argued that the DERIS trademarks were already well-known many years prior to the date of registration of the disputed domain name by the Respondent. It is argued that there are many “circumstances indicating that the disputed domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the owner of the trademark […] or to a competitor of that Complainant“. The Complainant particularly believes that the Respondent must have been aware of the Complainant’s well-known trademarks before the registration of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
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. Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
It is further noted that independent research, i.e., visiting the Internet site linked to the disputed domain name, has been performed by the Panel on July 7, 2013. The competence of the Panel to perform such independent research is in line with previous UDRP decisions (see, e.g., Hesco Bastion Limited v. The Trading Force Limited, WIPO Case No. D2002-1038).
Finally, it is noted that the Panel 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 confusingly similar to the DERIS trademarks of the Complainant.
First, the Panel confirms that the Complainant has satisfied the threshold requirement of having trademark rights regarding the sign DERIS. As evidenced in the Complaint, the Complainant is the owner of a large number of figurative DERIS trademarks, not only in Turkey, but also worldwide, particularly covering protection for legal services.
Although not identical, the disputed domain name fully incorporates the Complainant’s DERIS trademark.
The disputed domain name differs from the DERIS trademarks only by the addition of the Turkish generic term “hukuk”, which means “law” in the English language. In the Panel’s view, the addition of a generic term like “hukuk” does not negate the confusing similarity between the Complainant’s trademarks and the disputed domain name. The Panel finds that this incorporation of “hukuk” is purely descriptive and does not create a new distinctiveness separate from the Complainant’s DERIS trademarks. On the contrary, the full inclusion of the Complainant’s trademark in combination with this generic term may even enhance the false impression that the website linked to the disputed domain name is somehow officially related to the Complainant and its provided legal services.
The Panel concludes that the disputed domain name is likely to confuse Internet users in their believing that the disputed domain name is affiliated or endorsed by the Complainant or that the use of the disputed domain name is at least authorized by the Complainant.
In view of the above, the Panel is satisfied that the Complainant has met the requirements under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Panel further finds that the Respondent has not demonstrated any rights or legitimate interests in the disputed domain name.
While the burden of proof remains with the Complainant, the Panel recognizes that this would often result in the impossible task of proving a negative, in particular as the evidence needed to show the Respondent’s lack of rights or legitimate interests is primarily within the knowledge of the Respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the burden shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name 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 file any evidence or convincing argument to demonstrate a right or legitimate interest in the disputed domain name according to the Policy, paragraph 4(a)(ii) and 4(c).
With its Complaint, the Complainant has provided uncontested prima facie evidence that the Respondent has no trademark, valid license or any similar right to use the Complainant’s DERIS trademaks in the disputed domain name.
In the absence of a Response, the Respondent has failed to demonstrate any of the nonexclusive circumstances evidencing rights or legitimate interests under the Policy, paragraph 4(c) or any other evidence of a right or legitimate interest in the disputed domain name. Especially, the Respondent has failed to show that the disputed domain name has been used in connection with a bona fide offering of goods or services. There is also no sufficient evidence in the case file to assess that the Respondent trades under or is commonly known by a personal or firm name corresponding to the disputed domain name <derishukuk.com>.
In theory, it is conceivable that a lawyer with the surname “Deriş” may successfully rely on prevailing personal name rights. However, in the present case, the Respondent apparently has a different surname than “Deriş”, as demonstrated by the WhoIs record of the disputed domain name. If at all, the attorney “Meryem Deriş”, indicated as the operator of the website linked to the disputed domain name, could rely on personal name rights, which may constitute a right or legitimate interest to use the disputed domain name, although there are existing trademark rights in the term “deris” owned by the Complainant. However, in the absence of a Response, there is no reliable information on any actual or legal relation between the Respondent and the operator of the website linked to the disputed domain name. The Panel cannot even assess for sure whether the indicated attorney “Meryem Deriş” really exists. If the Respondent or any operator of the disputed domain name had had any legitimate interests for a bona fide use of the disputed domain name, it could readily have produced something demonstrable to support such a claim. The Panel infers from the failure to do so that it has no rights or legitimate interests in the disputed domain name.
Based on the findings above, the Panel believes that in the present case the Complainant has made a prima facie case and the evidence available to the Panel does not provide a basis for the Panel to find any rights or legitimate interests of the Respondent.
C. Registered and Used in Bad Faith
The Panel is further convinced that the Respondent has registered and is using the disputed domain name in bad faith.
First, the Panel believes that the Respondent must have been well aware of the DERIS trademarks when it registered the disputed domain name in April 2012. At the date of registration, the DERIS trademarks were already established and well-known for many years, especially in Turkey, where the Respondent is apparently located.
Furthermore, the Panel shares the view of the Complainant that the Respondent’s main purpose is to create a likelihood of confusion among customers and/or to tarnish the Complainant’s DERIS trademarks, likely for commercial gain or any other illegitimate benefit.
Additionally, the Panel finds that the Respondent's failure to respond to the Complaint also supports the conclusion that it has registered and used the disputed domain name in bad faith in order to mislead Internet users. Any legitimate and good faith use of the disputed domain name would have led the Respondent to defend its registration, in particular as the disputed domain name is supposed to be operated by another law firm.
The Panel therefore concludes that the disputed domain name was registered and is being used in bad faith and that the Complainant consequently has satisfied the third element of the Policy, namely, 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 <derishukuk.com> be transferred to the Complainant.
Date: July 10, 2013