WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Est Marjinal Medikal Tanıtım ve İletişim Sanayi Ticaret Limited Şirketi v. Kerim Ture
Case No. D2014-1137
1. The Parties
The Complainant is Est Marjinal Medikal Tanıtım ve İletişim Sanayi Ticaret Limited Şirketi of Istanbul, Turkey, represented by Coşkun Kuran, Turkey.
The Respondent is Kerim Ture of Istanbul, Turkey, represented by Net Koruma Danışmanlık Hizmetleri, Turkey.
2. The Domain Name and Registrar
The disputed domain name <safamerve.com> is registered with DNC Holdings, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 2, 2014. On July 2, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 3, 2014, 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 July 7, 2014, 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 7, 2014.
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 July 8, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response July 28, 2014. The Response was filed with the Center July 25 and 26, 2014.
On August 5, 2014, the Center received a Supplemental Filing from the Complainant. The Center acknowledged receipt of the Supplemental Filing on August 6, 2014.
On August 14, 2014, the Center received a Supplemental Filing from the Respondent. The Center acknowledged receipt of the Supplemental Filing on August 15, 2014.
The Center appointed Selma Ünlü, Alistair Payne and Luca Barbero as panelists in this matter on August 20, 2014. The Panel finds that it was properly constituted. Each member of 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 sells hijab textile products through its website at “www.sefamerve.com”.
The Complainant owns two Turkish registrations for SEFAMERVE trademark under numbers 2012/16474 protected from February 20, 2012 and registered on March 11, 2013, and 2013/06782 protected from January 23, 2013 and registered on January 27, 2014.
The Complainant operates a website from its domain name at <sefamerve.com> which was registered on May 4, 2011.
The Respondent registered the disputed domain name on October 13, 2010, which resolves to a webpage operated by Directnic.com and featuring advertising links that direct users to other hijab companies and other unrelated websites (Annex 8 to the Complaint).
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 or confusingly similar to a trademark or service mark in which the Complainant has rights;
ii. The Respondent has no rights or legitimate interests in respect of the disputed domain name;
iii. The disputed domain name was registered and is being used in bad faith.
(i) Identity or Confusing Similarity
The Complainant submits that the Respondent has registered the disputed domain name in order to confuse Internet users between the disputed domain name and the Complainant’s website.
The Complainant submits that the difference of one letter does not prevent confusing similarity between the disputed domain name and the Complainant’s mark. At this point, the Complainant refers to Yurtici Kargo Servisi A.S. v. Yurticicargo Yurticikargo, WIPO Case No. D2003-0707.
Accordingly, the Complainant argues that consumers might believe that the disputed domain name will lead them to a website operated by the Complainant or its affiliates.
(ii) Rights or Legitimate Interests
The Complainant states that the Respondent has no relationship with or authorization from the Complainant to use the SEFAMERVE mark in any domain name, that the Respondent has no rights or legitimate interests in the disputed domain name and that the Respondent has not been commonly known by the disputed domain name.
The Complainant also asserts that the Respondent has never operated under the “safamerve” title or mark and that the disputed website is inactive and directs Internet users to the Complainant’s competitors.
(iii) Registered and Used in Bad Faith
The Complainant alleges that the Respondent has registered the disputed domain name in bad faith because it was registered with knowledge of the Complainant’s rights in the SEFAMERVE marks. The Complainant states that it was inconceivable that the Respondent could have been unaware of the Complainant’s trademarks as they are active in the same business field.
The Complainant states that the disputed domain name was chosen on purpose in order to prevent the Complainant from using the disputed domain name. Also, the Complainant states that the website at the disputed domain name advertises competitors of the Complainant and contains links to websites for adult products which also tarnishes the Complainant’s reputation particularly because consumers of hijab products are religious people.
Lastly, the Complainant alleges that the Respondent intentionally attempted to attract consumers for commercial gain by registering the disputed domain name and in this manner misdirecting the Internet public who misspell one letter of the Complainant’s domain name and end up at the disputed domain name.
(i) Identity or Confusing Similarity
The Respondent submits that he is a reputable businessman and that the disputed domain name was registered before the registration date of the Complainant’s trademarks.
Also, the Respondent states that “sefa” and “safa” words have different meanings in Turkish; and that “sefa” means “complacence, comfort” while “safa” is the name of a holy hill.
Furthermore, the Respondent alleges that the words “safa” and “merve” are the names of two religious hills which are commonly known by people of the Islamic Religion. Accordingly, the Respondent also argues that these words should not have been registered as trademarks by the Turkish Patent Institute as they refer to a geographical and religious symbol.
(ii) Rights or Legitimate Interests
The Respondent states that the disputed domain name was registered on October 13, 2010 and has not been used in bad faith. At this point the Respondent emphasizes that, at the time that the disputed domain name was registered the Complainant did not have a trademark registration or a domain name registration.
(iii) Registered and Used in Bad Faith
The Respondent admits that the disputed domain name operates as a competitor website selling hijabs. However, the Respondent states that subject website is not used by the Respondent actively and that it is automatically parked by the Registrar. Therefore, the advertising income received from the advertisement from the website goes to the Registrar and the Respondent has not authorised these advertisements and does not profit from them.
Further, the Respondent alleges that at the time the Complainant acquired its domain name <sefamerve.com> from the former owner in 2012, it already knew that the Respondent was the owner of the disputed domain name. Therefore, the Respondent states that the Complainant is acting in bad faith by filing this Complaint and requests a finding of Reverse Domain Name Hijacking.
C. Supplemental Filings of the Parties
(i) Complainant’s Supplemental Filing
On August 5, 2014, the Center received a Supplemental Filing from the Complainant. In the Supplemental Filing the Complainant stated that its trademarks fulfill the conditions for registration and are not generic. The Complainant re-emphasized that one letter difference between the disputed domain name and cited trademarks is not enough to eliminate the similarity between them. Also, the Complainant referred to the paragraph 3.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) and states that although the trademarks of the Complainant were registered after the registration date of disputed domain name, the Respondent cannot continue to use the disputed domain name and to violate the Policy by infringing the Complainant’s trademark rights.
Also, the Complainant submits two Notary approved written statements to demonstrate that the “Sefamerve” project was first launched by Mr. Okur, the manager and owner of the Complainant, in a meeting held in May/June 2010 with the participation of a third party company’s representatives. The Complainant alleges that one of the third party company’s representatives has mentioned this project to one of their colleagues who is in the same company and has a neighborhood relation and is relative of the partner of the Respondent.
Lastly, the Complainant submitted a private opinion provided by a legal professor from Turkey.
(ii) Respondent’s Supplemental Filing
In response to the Supplemental Filing of the Complainant, the Center received a Supplemental Filing from the Respondent on August 14, 2014. The Respondent stated that the private legal opinion submitted by the Complainant cannot be considered due to the doubt on the independence of the opinion provider, who was paid by the Complainant.
The Respondent also disputed the allegations of the Complainant with respect to the Respondent’s stealing of the Complainant’s idea to use the “sefamerve” mark, stating that the allegations were fabricated.
6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide a complaint on the basis of the statements and documents submitted and 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 each of the following three elements:
(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.
Paragraph 4(a) of the Policy states that the Complainant has the burden of proving that all of these requirements are fulfilled.
Before considering the merits, the Panel will consider the supplemental filings of the Parties. Panels have the discretion whether to accept an unsolicited supplemental filing from either party, bearing in mind the need for procedural efficiency, and the obligation to treat each party with equality and to ensure that each party has a fair opportunity to present its case.
Since both of the Parties submitted their supplemental statements before the Panel was appointed causing no further delay in the proceeding, the Panel will take them into account in its Decision.
A. Identical or Confusingly Similar
The Panel finds that the first element of the UDRP is satisfied, since the Complainant owns a trademark registration for SEFAMERVE, to from which the disputed domain name differs by only one letter. Also, “safa”, which is an Arabic word, means “sefa” in Turkish and these two words are often confused by the public. Therefore, contrary to the Respondent’s argument, the Panel find there is no a considerable conceptual difference between these words and the one letter difference between them does not remove the risk of confusion between the subject words.
Although the Respondent asserts that the trademark SEFAMERVE cannot be protected as a trademark since it does not comply with the absolute grounds of refusal, such assertion cannot be accepted since the trademark is already registered and protected by the Turkish Patent Institute as a result of having passed an ex-officio examination. Therefore, the Panel is of the opinion that the registrability of the subject trademark is not relevant to this decision.
Also, the Panel notes that the registration date of the disputed domain name is before the protection date of the Complainant’s trademarks. In accordance with the Consensus View expressed in WIPO Overview 2.0, paragraph 1.4 “Registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity under the UDRP. The UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired rights. However, in such circumstances it may be difficult to prove that the domain name was registered in bad faith under the third element of the UDRP.” This is a matter for further discussion under the head of bad faith as examined below.
B. Rights or Legitimate Interests
In view of the Panel’s finding under Section 6.C, the Panel does not need to address the question of whether the Respondent has rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
It is a consensus view among UDRP panels that registration of a disputed domain name before the Complainant acquires trademark rights does not prevent a finding of identity or confusing similarity under paragraph 4(a)(i) of the Policy However, in such circumstances it is generally difficult to prove that the disputed domain name was registered in bad faith since in most circumstances the Respondent may have no knowledge of the Complainant’s trademark rights and it is generally difficult for the Complainant to demonstrate otherwise. There are, however, a number of examples where the exception applies as set out in the paragraph 3.1 of the WIPO Overview 2.0. For instance, the disputed domain name may be registeredshortly before or after a publicized merger between companies, but before any new trademark rights in the combined entity have arisen; or when the respondent as a former employee or business partner, or other informed source seeks to take advantage of any rights that may arise from the complainant's enterprises; or where the potential mark in question is the subject of substantial media attention of which the respondent is aware. See: ExecuJet Holdings Ltd. v. Air Alpha America, Inc., WIPO Case No. D2002-0669.
In the Panel’s view none of the above mentioned exceptions apply in this case. The Complainant has not submitted any evidence demonstrating that, at the time of registration of the disputed domain name, it intended to file a trademark application for “Sefamerve” and/or that the Respondent was aware of that fact.
The allegation of the Complainant in its Supplemental Filing stating that a third party who attended the meeting at which the “sefamerve” project was first discussed subsequently informed the Respondent of the idea seems to the Panel not to go beyond a mere allegation. Even if the allegation of the Complainant is true, it needs to be proven to be the case on the preponderance of evidence and a UDRP administrative proceeding is an inappropriate forum for the determination of such complex matters of fact and law. These matters would be properly examined before a court where the parties and their evidence can be examined by a judge.
The Panel notes in relation to the private legal opinion provided by a law professor as submitted by the Complainant, that the opinion was given in accordance with local law and did not analyze the point that the Respondent registered the disputed domain name before the date of the Complainant’s trademarks as would be done in accordance with the Policy.
In conclusion, the Panel finds that the Complainant has not provided evidence that the disputed domain name was registered and is being used in bad faith and the Complaint fails under this element of the Policy.
D. Reverse Domain Name Hijacking
Paragraph 1 of the Rules defines reverse domain name hijacking as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”. To prevail on such a claim, a respondent must show that the complainant knew the respondent's unassailable rights or legitimate interests in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the complaint in bad faith. See: Futureworld Consultancy Opty Ltd. v. Online Advice, WIPO Case No. D2003-0297, Andrew Etemadi, Founder and Chief Technology Officer for Eyemagine Technology LLC v. Clough Construction and Deanne Clough, WIPO Case No. D2012-2455 and Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151.
The Panel has determined based on the facts and circumstances before it that, although the Complainant has failed to meet its burden of proof with respect to the third element of the Policy, the Panel is not persuaded based on the totality of the record that the Complainant acted in bad faith in bringing the Complaint and therefore declines to make a finding of reverse domain name hijacking.
For the foregoing reasons, the Complaint is denied.
Date: September 3, 2014