WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Turkcell Iletisim Hizmetleri A.S. v. Muzaffer Kabakci
Case No. D2013-1075
1. The Parties
The Complainant is Turkcell Iletisim Hizmetleri A.S. of Istanbul, Turkey, represented by Istanbul Patent & Trademark Consultancy Ltd., Turkey.
The Respondent is Muzaffer Kabakci of Ankara, Turkey.
2. The Domain Name and Registrar
The disputed domain name <turkcellinteraktif.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 13, 2013. On June 13, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 13, 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 June 21, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 11, 2013. The Center received an informal email communication from the Respondent on July 7, 2013. The Respondent did not submit any formal response. Accordingly, the Center notified the parties about the commencement of panel appointment process on July 12, 2013.
The Center appointed Mladen Vukmir as the sole panelist in this matter on July 19, 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.
4. Factual Background
The Complainant is a corporation organized under the laws of Turkey, with its principal place of business at Istanbul, Turkey. The evidence submitted to the Complaint clearly indicates the Complainant’s overall presence in Turkish media and everyday life as well as in the Turkish and international markets.
The Complainant is the exclusive owner of TURKCELL trademarks registered in Turkey, European Union (“EU”) and United States of America (“USA”), which are listed and evidenced in Annexes 4 to 11 to the Complaint, namely:
- TURKCELL İLETİŞİM HİZMETLERİ A.Ş. (figurative), Turkey, No. 173130, registered on September 9, 1996, in class 38;
- TURKCELL (figurative), Turkey, No. 174691, registered on September 9, 1996, in class 38;
- TURKCELL İLETİŞİM HİZMETLERİ A.Ş., CTM, No. 0025251924, registered on June 6, 2003 in class 38; and
- TURKCELL + device, US, No. 2,806,970, registered on January 20, 2004, in class 38.
The Turkish Patent Institute recognized the TURKCELL trademark as a well-known trademark in 2008, as shown in Annex 12 to the Complaint.
The Complainant owns domain name <turkcell.com.tr> since November 10, 1996, as evidenced in Annex 13 to the Complaint.
“Turkcell” is the trade name of the Complainant, as evidenced in Annex 14 of the Complaint.
In accordance with the usual practice and consensus views amongst UDRP panels (see paragraph 4.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)), on August 1, 2013, the Panel made a limited factual research into Turkish Patent Institute’s online trademark database for the Complainant’s trademark TURKCELL İNTERAKTİF MESAJ No. 2012 52065 and determined that said trademark was applied for on June 6, 2012 and registered on June 17, 2013.
The disputed domain name was registered on July 16, 2012.From the email communication between the Center and the courier, it is evident that the written notice of the Complaint could not be successfully delivered to the Respondent by post due to incomplete and incorrect address information provided by the Respondent in the publicly-available WhoIs.
5. Parties’ Contentions
The Complainant contends that:
- The TURKCELL trademarks are recognized as well known by the Turkish Patent Office;
- The Complainant is a leading GSM operator in Turkey and the third biggest GSM operator in Europe;
- The disputed domain name is confusingly similar to the name of the Complainant, which has been in business in Turkey since 1994, and a number of registered trademarks incorporating the word “Turkcell”;
- The Complainant applied for the TURKCELL İNTERAKTİF MESAJ trademark before the Turkish Patent Institute on June 6, 2012, which is one month before the disputed domain name was registered;
- By registering and using the disputed domain name that is confusingly similar to the Complainant’s trademarks, the Respondent creates likelihood of confusion for the public which is likely to be under impression that the disputed domain name is owned by, operated by or affiliated with the Complainant;
- The Complainant refers to panel findings on all “turkcell + dictionary word” cases;
- The Respondent does not have any rights or legitimate interests in respect of the disputed domain name;
- The Complainant, has not licensed or otherwise permitted the Respondent to use the trademark TURKCELL or to apply for or use any domain name incorporating that trademark;
- The Respondent registered the disputed domain name in order to prevent the Complainant from reflecting the mark in corresponding domain name and from offering online services through that domain name;
- The disputed domain name has been registered and is being used in bad faith;
- The Complainant cited a number of WIPO UDRP cases where there have been attempts to use the Complainant’s TURKCELL trademark as a domain name solely or with another phrase;
- The Complainant requests the transfer of the disputed domain name.
The Respondent did not formally reply to the Complainant’s contentions.
On July 7, 2013, the Respondent contacted the Center via email in which he stated that the disputed domain name belongs to him and asked for his options to defend the disputed domain name. On July 9, 2013, the Center informed the Respondent on his right to respond to the Complaint within (20) calendar days of the date of commencement of the administrative proceeding (July 11, 2013), further providing him with links containing useful information about the Complaint, the administrative proceedings and filing of a Response.
6. Discussion and Findings
The Panel now proceeds to consider this matter on the merits on the basis of the Policy, Rules, Supplemental Rules and other applicable substantive law, pursuant to paragraph 15(a) of the Rules.
Paragraph 4(a) of the Policy provides that the Complainant must prove, with respect to the disputed domain name, each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark 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.
A. Identical or Confusingly Similar
Primarily, the Panel emphasizes that under general consensus view, the mere fact of ownership of a registered trademark by the complainant is generally sufficient to satisfy the threshold requirement of having trademark rights (see paragraph 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, “WIPO Overview 2.0”). In this case, the Panel determines that the Complainant has successfully demonstrated the existence of its registered rights in respect of the TURKCELL trademark.
Furthermore, it is well established that the threshold test for confusing similarity under the Policy involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion (see paragraph 1.2, WIPO Overview 2.0).
In number of cases, previous UDRP panels have found that adding descriptive words or generic terms does not avoid the likelihood of confusion between a trademark and a domain name incorporating the said trademark. See, 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; and Veuve Clicquot Ponsardin v. Net-Promotion, Inc., WIPO Case No. D2000-0347.
The Complainant has established that it is the owner of a number of TURKCELL trademarks in Turkey, as well as in the EU and in the USA (listed under Section 4, Factual Background). Further, the Complainant has established that its TURKCELL trademarks are well-known trademarks in Turkey.
The Panel determines that it is evident that the disputed domain name incorporates the Complainant’s TURKCELL trademark in its entirety and without any modification within the disputed domain name. In other words, the disputed domain name consists of three parts, of which the main part - is identical to the Complainant distinctive trademark TURKCELL. The Panel further determines that the remaining part is the generic term “interaktif” which stands for “interactive” in Turkish and the applicable generic top-level domain (gTLD) suffix “.com”, which may be disregarded under the confusing similarity test. Therefore, the Panel finds that the Complainant’s trademark TURKCELL is clearly recognizable within the disputed domain name.
Further, the Panel upholds the Complainant’s contention that the term “interaktif” is clearly generic in the communication industry, and that used by the Respondent in combination with the Complainant’s trademark TURKCELL in the disputed domain name is insufficient to prevent a finding of confusing similarity.
Therefore, it is safe to conclude that the Respondent clearly did not intend to distinguish the disputed domain name from the Complainant’s trademark by adding the generic term “interaktif” to the Complainant’s trademark TURKCELL when creating the disputed domain name.
For all the foregoing reasons, the Panel finds that the Complainant has fulfilled the first requirement under paragraph 4(a) of the Policy, i.e. that the disputed domain name is confusingly similar to the Complainant’s TURKCELL trademarks.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The consensus view of UDRP panels on the onus of proof under paragraph 4(a)(ii) of the Policy, is summarized in paragraph 2.1 of the WIPO Overview 2.0, whereby: “… a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If a respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP…If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant…”
In accordance with the Policy and paragraph 3(b)(ix)(2) of the Rules, the Complainant must describe the grounds on which the Complaint is made, including, in particular, why the Respondent should be considered as having no rights or legitimate interests in respect of the disputed domain name that is the subject matter of the Complaint.
In the present case, the Complainant states that the Respondent has no relationship with or permission from the Complainant for using its trademarks, as well as that the Complainant’s rights in its trademarks precede the Respondent’s registration of the disputed domain name.
The Complainant further alleges that the disputed domain name is not a trademark by which the Respondent is commonly known, neither has the Respondent been granted any license, permission, or authorization under which he could own or use any domain name registration which is confusingly similar to the TURKCELL trademark.
The Respondent failed to deliver a formal Response to the Complaint or to give any explanation for registering the disputed domain name.
The Panel observes that there is no relationship, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant.
In addition, there is no indication that the Respondent is commonly known by the disputed domain name, that he has used the same in connection with bona fide offering of goods or services, or that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue. On the contrary, the Panel finds that it can be safely concluded that the Respondent was fully aware of the Complainant’s extensive goodwill and reputation in its TURKCELL trademarks, especially taking in account that the Complainant is a well-known Turkish company and that the Respondent is a Turkish resident. In this respect, the Panel finds that since the term “Turkcell” is not a generic term, but rather an original creation made up by the Complainant, the likelihood that the Respondent came up with the same name for the disputed domain name without being aware of the Complainant’s earlier rights over TURKCELL trademark when creating the disputed domain name, is extremely low, almost impossible.
Given the above, the Panel finds that the Complainant has made the prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and in absence of any formal reply from the Respondent, has therefore satisfied the second requirement under paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular, but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith:
(i) circumstances indicating that the holder 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 holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder 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 holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s 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 holder’s website or location or of a product or service on the holder’s website or location.
With regard to the bad faith at the time of registration, the Panel notes that it is not likely that the Respondent was not aware of the Complainant and its TURKCELL trademark. On the contrary, the Complainant provided sufficient evidence to show that its TURKCELL trademark is well-known in Turkey, that the Complainant is one of the leading GSM operators in Turkey, as well as the evidence of its overall presence in Turkish media and everyday life. Therefore, the Panel holds that it is safe to assume that the Respondent, who appears to be a Turkish national, was aware of the Complainant and its TURKCELL trademark at the time of registration of the disputed domain name. In this regard, it is also very symptomatic, that the Respondent registered the disputed domain name combining the Complainant’s trademark TURKCELL with the generic word “interaktif” just one month after the Complainant applied for registration of the trademark TURKCELL İNTERAKTİF MESAJ and about the same time that said trademark application became visible on the Turkish Patents Institute’s online trademark database.
Taking into account the above, in this Panel’s view, it can be safely assumed that the Respondent registered the disputed domain name in order to prevent the Complainant from reflecting its TURKCELL trademark, or possibly even its TURKCELL INTERAKTIF MESAJ trademark, in a corresponding domain name, and has therefore acted in bad faith.
Moreover, the circumstances in which the Respondent seems to have provided incomplete and/or incorrect contact information, in the Panel’s view, only contribute to the Panel’s judgment that the Respondent registered the disputed domain name in bad faith. In this respect, the Panel hereby refers to Ticketmaster Corporation v. Dmitri Prem, WIPO Case No. D2000-1550, where the panel concluded that “in the absence of explanation, the omission of significant information may be taken to amount to bad faith in securing a domain name registration”. As it has been held in various UDRP decisions, including previous UDRP decisions involving the Complainant’s TURKCELL trademark, incomplete contact information provided by the respondent and attempts to hide its true identity can constitute bad faith. See also Miss Universe L.P., LLLP v. Domainsrin, WIPO Case No. D2010-1643 and Park Place Entertainment Corporation v. Bowno, WIPO Case No. D2001-1410, Turkcell Iletisim Hizmetleri A.S. v. Mr. Kurt, WIPO Case No. D2011-2039.
In addition, in line with the consensus view summarized under paragraph 3.2 of the WIPO Overview 2.0 stating that “examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa. Some panels have also found that the concept of passive holding may apply even in the event of sporadic use, or of the mere “parking” by a third party of a domain name (irrespective of whether the latter should also result in the generation of incidental revenue from advertising referrals)”. In the Panel’s opinion the fact that the Respondent did not file a formal response, can also be indicative of the bad faith on his behalf.
Finally, the Panel notes that the Respondent did/does not actively use the disputed domain name (the disputed domain name appears to be merely “parked” with the Registrar), nor does it seem from the evidence presented that the Respondent ever tried to sell or contact the Complainant in relation to the disputed domain name. In this regard, the Panel is of the opinion that such lack of active use of the disputed domain name without any attempt to sell or to contact the trademark holder (so called passive holding), does not prevent a finding of bad faith. According to the consensus view summarized under paragraph 3.2 of the WIPO Overview 2.0 it is adopted that “…the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith”.
Given the above, the Panel determines that the disputed domain name has been registered and is being used in bad faith and that the Complainant fulfilled the third element under paragraph 4(a) 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 <turkcellinteraktif.com> be transferred to the Complainant.
Date: August 1, 2013