WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
A100 Turizm Ticaret Limited Sirketi, Ciceksepeti Internet Hizmetleri A.S. v. whoisprotection biz, Meyve Sepeti Gida Ltd. Sti. / İbrahim Sönmez
Case No. D2014-1579
1. The Parties
The Complainant is A100 Turizm Ticaret Limited Sirketi, Ciceksepeti Internet Hizmetleri A.S. of Kagithane, Istanbul, Turkey, represented by Cagirgan Law Firm & IP Services Ltd., Turkey.
The Respondent is whoisprotection biz, Meyve Sepeti Gida Ltd. Sti. of Üsküdar, Istanbul, Turkey / İbrahim Sönmez of Üsküdar, Istanbul, Turkey, represented by Net Koruma Danışmanlık Hizmetleri, Turkey.
2. The Domain Name and Registrar
The disputed domain name <meyvesepeti.com> is registered with FBS Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 15, 2014. On September 15, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 23, 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 September 24, 2014, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The same day, the Center sent a notice to the Parties indicating that the Registrar had confirmed that the registration agreement for the disputed domain name was in Turkish. The Complainant filed an amended Complaint translated into Turkish on October 3, 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 October 7, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 27, 2014. A Response was filed in Turkish with the Center on October 27, 2014. A further Response was filed in English on November 11, 2014.
The Center appointed Kaya Köklü, Emre Kerim Yardimci and Dana Haviland as panelists in this matter on November 27, 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 Complaint has been filed by two related Turkish companies, which are in the following decision referred to as "the Complainant". The Complainant offers flower and fruit arrangements on various websites like "www.ciceksepeti.com" and "www.frutation.com".
It is the owner of the Turkish trademark MEYVESEPETİ (registration number 2009 48299), applied for on September 10, 2009, and granted by the Turkish Patent Institute on July 12, 2010, for the classes 31, 35 and 43.
The Complainant is further the owner of various ÇİÇEKSEPETİ trademarks in Turkey. The first ÇİÇEKSEPETİ trademark was applied for on March 3, 2008 (registration number 2008 11725), and claims protection for the classes 29, 30, 31, 35 and 44.
According to the current record, the disputed domain name <meyvesepeti.com> was first created on February 16, 2005.
The Respondent is composed of a domain name privacy service, a Turkish company and its owner (all of them jointly referred to as "the Respondent" in the following decision). Like the Complainant, the Respondent offers fruits and sweets arrangements on its website linked to the disputed domain name.
5. Parties' Contentions
The Complainant requests the transfer of the disputed domain name.
The Complainant is of the opinion that the disputed domain name is identical to its MEYVESEPETİ trademark and confusing similar to its ÇİÇEKSEPETİ trademark.
Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. In particular, the Complainant states that the Complainant has never granted a permission or license to the Respondent to use its trademarks. The Complainant further alleges that the Respondent has never used and does not intend to use its trademarks in connection with a bona fide, noncommercial offering of goods and services.
Finally, it is argued that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant particularly believes that the Respondent was not the initial owner of the disputed domain name in 2005. It is rather asserted that the Respondent acquired the disputed domain not before December 2013. Furthermore, the Complainant alleges that the Respondent registered more than 600 other domain names, some of which include third parties' trademarks. The Complainant argues that this is an indication for bad faith registration and use of the disputed domain name.
The Respondent requests the denial of the Complaint.
It argues that the term "meyve sepeti" is a generic expression in the Turkish language, meaning "fruit basket" in the English language. In view of the Respondent, the term "meyve sepeti" is of descriptive nature with regard to the products offered by the Respondent.
Concerning the Complainant's ÇİÇEKSEPETİ trademark, the Respondent is of the opinion that there is no confusing similarity with the disputed domain name under any legal point of view.
Furthermore, the Respondent alleges that it registered the disputed domain name nearly five years prior to the Complainant's MEYVESEPETİ trademark. Literally, the Respondent alleges in its Response that it> "registered the domain name 'www.meyvesepeti.com' on 16.02.2005 and started its business on that day." The Respondent further asserts that it "has a right on this word since 2005 and he is using this domain name actively since that date and has a reputation in the sector due to his success which is reached by using the domain name 'www.meyvesepeti.com'".
In its supplemental filing, however, the Respondent asserts that "all the customer databases and know how rights were taken over on May 2012", and that it started to operate its own business in May 2014.
The Respondent believes that based on its assertions, it has a right and a legitimate interest in the disputed domain name. Also, the Respondent denies any bad faith registration or use of the disputed domain name. In particular, the Respondent denies being the person that allegedly registered more than 600 other domain names including third parties' trademarks.
The Respondent also believes that the conditions for a finding of Reverse Domain Name Hijacking ("RDNH") by the Complainant are fulfilled.
6. Discussion and Findings
A. Language of the administrative proceedings
Although the language of the Registration Agreement is the Turkish language, the Panel determines in accordance with the Parties' consent provided on December 23, 2014, that the language of these administrative proceedings shall be the English language.
B. Consideration of Supplemental Filings
The Panel notes that the Center received additional submissions by the Complainant and the Respondent respectively on December 9, 2014, and 11, 2014. Upon request by the Panel, English translations of these submissions were provided by the Parties on December 23, 2014.
Paragraph 12 of the Rules unambiguously provides that the Panel may request, in its sole discretion, further statements or documents from either of the parties. There is no provision in the Rules for a party to file an additional submission without an explicit request by the Panel. This is because, under the expedited process provided under the Policy and Rules, each party is given one opportunity to put forward all the material on which it wishes to rely and is expected to do so.
The Panel follows the reasoning of the panel in Viz Communications, Inc. v. Redsun dba www.animerica.com and David Penava, WIPO Case No. D2000-0905, that it is appropriate to consider the circumstances of each case before deciding whether or not to admit additional submissions.
In this case, given the fact that both parties filed Supplemental Filings and after consideration of them, the Panel decided to take both Complainant's and Respondent's Supplemental Filings into account.
C. Legal Assessment
According to paragraph 14(a) and 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 trademarks 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. However, concerning uncontested information provided by the Complainant, the Panel may, where relevant, 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 the Panel has taken note of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") and, where appropriate, will decide consistent with the WIPO Overview 2.0.
C.1 Identical or Confusingly Similar
The Panel finds that the disputed domain name is identical to the MEYVESEPETİ trademark of the Complainant.
First, the Panel confirms that the Complainant has satisfied the threshold requirement of having relevant trademark rights. As evidenced in the Complaint, the Complainant has been the owner of a MEYVESEPETİ Turkish trademark since 2010.
The disputed domain name is identical to the Complainant's MEYVESEPETI trademark as it incorporates the Complainant's trademark in its entirety without any additions or amendments.
In so far, the Panel is satisfied that the Complainant has met the requirements under paragraph 4(a)(i) of the Policy.
However, with regard to the Complainant's ÇİÇEKSEPETİ trademark, the Panel is of the opinion that there is no identity or confusing similarity with regard to the disputed domain name. Although the second part of the disputed domain name is identical with the second part of the Complainant's trademark (namely regarding the term "sepeti"), the Panel believes that the differences between the terms "meyve" and "çiçek" with regard to their meaning, their appearance and their pronunciation are sufficiently significant to preclude a confusing similarity between the disputed domain name and the Complainant's ÇİÇEKSEPETİ trademark.
C.2 Rights or Legitimate Interests
The Panel finds that the Complainant has failed to sufficiently demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.
Although the Complainant's MEYVESEPETİ trademark is protected for various classes in Turkey, it is the Panel's view that it has, if at all, weak distinctiveness with regard to its use in connection with the relied-upon meaning of the term, namely to describe and promote fruit baskets.
In light of the descriptive nature of the Complainant's trademark, the Panel takes into consideration section 2.2 of the WIPO Overview 2.0. The consensus view included for this section provides, in the last sentence, as follows:
Normally, in order to find rights or legitimate interests in a domain name based on the generic or dictionary meaning of a word or phrase contained therein, the domain name would need to be genuinely used or at least demonstrably intended for such use in connection with the relied-upon meaning (and not, for example, to trade off third-party rights in such word or phrase).
Based on this consensus view, the Panel believes that it is the Complainant's burden to prove that the Respondent is not primarily using the disputed domain name in connection with the promotion of fruit baskets but to trade off the Complainant's MEYVESEPETI trademark rights. In its submissions, the Complainant was, however, unable to disprove the Respondent's allegation that it is using the Complainant's trademark in connection with its relied-upon meaning, namely for the online promotion of fruit baskets. Consequently, the Panel is unanimously of the opinion that the Complainant failed to demonstrate that the Respondent has or ever had the malicious intent to trade off the Complainant's trademark rights.
The Panel is certainly aware of the inconsistencies within the Respondent's submissions, particularly with regard to the alleged date of acquisition of the disputed domain name by the Respondent. However, it is the Panel's view that in the circumstances of this case the date of acquisition of the disputed domain name by the Respondent is not relevant for the assessment whether the Respondent is using the trademark descriptively in connection with its relied-upon meaning.
As the burden of proof concerning the absence of a right or a legitimate interest remains, as a general rule, with the Complainant, the Panel finds that the existing doubts in the present case need to be assessed to the detriment of the Complainant (non liquet).
Consequently, the Panel finds that the Complainant has not satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C.3 Registered and Used in Bad Faith
As the Complainant failed to establish the absence of a right or a legitimate interest, the Panel does not need to consider the Complainant's assertions of bad faith registration and use."
C.4. Reverse Domain Name Hijacking
Reverse Domain Name Hijacking is defined in paragraph 1 of the Rules as using the Policy in bad faith to attempt to deprive the domain name holder of a domain name.
As highlighted, amongst others, in Ville de Paris v. Salient Properties LLC, WIPO Case No. D2009-1279 (citing Jazeera Space Channel TV Station v. AJ Publishing aka Aljazeera Publishing, WIPO Case No. D2005-0309) "[a]llegations of reverse domain name hijacking have been upheld in circumstances where a respondent's use of a domain name could not, under any fair interpretation of the facts, have constituted bad faith, and where a reasonable investigation would have revealed the weaknesses in any potential complaint under the Policy" (see also Goldline International, Inc v. Gold Line, WIPO Case No. D2000-1151).
The Respondent believes that the case at hand constitutes an attempt of a RDNH.
The Panel does not share the view of the Respondent and does not see sufficient indication to assess an attempt for RDNH by the Complainant. The Parties' submissions contain some serious inconsistencies. Due to these inconsistencies and misleading statements (introduced deliberately or not), the Panel is not able to get a full and clear picture of the true circumstances of the case. It needs to be pointed out again that the decision is rather a result of what appears to the Panel to be a non liquet case, which may not necessarily prejudice the Complainant to initiate ordinary court proceedings against the Respondent in a court of competent jurisdiction.
Consequently, the Panel is of the opinion that the present case does not qualify as an attempt of RDNH.
For all the foregoing reasons, the Complaint is denied.
Emre Kerim Yardımcı
Date: January 13, 2015