WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Akmerkez Gayrimenkul Yatirim Ortakligi Anonim Sirketi v. Domain Privacy Service FBO Registrant / Emre Kekec
Case No. D2015-0906
1. The Parties
The Complainant is Akmerkez Gayrimenkul Yatirim Ortakligi Anonim Sirketi of Istanbul, Turkey, represented by Dericioglu & Yasar Law Office, Turkey.
The Respondent is Domain Privacy Service FBO Registrant of Burlington, United States of America / Emre Kekec of Leamington Spa, Warwickshire, the United Kingdom of Great Britain and Northern Ireland, self-represented.
2. The Domain Name and Registrar
The disputed domain name <akmerkez.com> is registered with Domain.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 27, 2015. On May 28, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 28, 2015, 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 June 8, 2015 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 amendment to the Complaint on June 10, 2015. On May 28, 2015, the Center received an email communication from the Respondent.
The Center verified that the Complaint together with the amendment to 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 12, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 2, 2015. The Response was filed with the Center on July 2, 2015.
The Center appointed Kaya Köklü as the sole panelist in this matter on July 16, 2015. 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.
On July 16, 2015, the Center received an unsolicited Supplemental Filing from the Complainant responding to the observations submitted by the Respondent in his Response.
On July 28, 2015, in response to the Panel Order No. 1 sent to the Parties on July 21, 2015, the Respondent provided a further submission to the Center.
On July 29, 2015 the Center received email communication from the Complainant, indicating that the Parties may agree on a settlement. The Center, however, did not receive a confirmation in this regard from the Respondent.
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 proceeding is the language of the registration agreement for the disputed domain name <akmerkez.com>, i.e., English. However, the Panel accepts various documents in Turkish language provided by the Parties. In the Panel's view, neither the Complainant nor the Respondent will be prejudiced by accepting documents in Turkish language as it is evident that the Complainant's representative and the Respondent are able to read and understand documents in Turkish.
4. Factual Background
The Complainant is a Turkish company operating a well-known shopping mall in Istanbul. The opening of the shopping mall was in the year 1993. In 1995, the mall was awarded by the International Council of Shopping Centers as Europe's "best shopping mall". In 1996, it was even announced to be the "World's Best Shopping Mall".
The Complainant is the holder of various word and figurative trademarks including the term AKMERKEZ. The first trademark registration in Turkey dates back to the year 1996.
Further, the Complainant holds and operates the domain name <akmerkez.com.tr> since 1997.
The Respondent is an individual with a Turkish origin, who is apparently living in the United Kingdom.
The disputed domain name was created by the Respondent on December 2, 1999. For the registration of the disputed domain name, the Respondent used a domain name privacy service.
There is no provided evidence that the disputed domain name has ever been actively in use. The provided documents by the Respondent only show several screenshots of utterly incoherent websites with varying design and content. At the time of the decision, the website linked to the disputed domain name directs users upon their choice either to the website of the Complainant or to the website of a Turkish political party.
Settlement talks between the Parties failed as the Respondent was willing to transfer the disputed domain name to the Complainant only under a range of conditions such as retaining his email address "[…]@akmerkez.com" for another 12 months, the donation of an unspecified amount of money to a charitable organization and the payment of maintenance fees for the disputed domain name until the year 2020. Furthermore, the Complainant was asked to pay all costs involved in "preparing and signing" the requested settlement protocol.
Provided screenshots by the Complainant demonstrate that the disputed domain name was for sale for a certain period of time until the Complainant approached the Respondent for its transfer.
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 AKMERKEZ 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 it has never granted a permission or license to the Respondent to use its trademark. 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 well aware of the Complainant's trademark rights when creating the disputed domain name.
The Respondent requests the denial of the Complaint.
He argues that he has a "legitimate reason to use" the disputed domain name. Before creation of the disputed domain name, the Respondent had carried out a research on available domain names comprising the terms "ak" and "merkez" as "an acronym of "Ankara Kültür Merkezi". It is particularly asserted that the disputed domain name was created for a civil organization named "Ankara Kültür Merkezi" (Ankara Culture Center). The Respondent alleges that this civil organization consists of a small "study group", which intends to share ideas and academic papers. However, the Respondent also asserts that this group is active only in a "closed email group", which operates a nonpublic website linked to the disputed domain name. In response to the Complainant's allegations, the Respondent argues that there is no "necessity of knowing a […] shopping mall's name in Istanbul", however, without explicitly confirming that it actually had no knowledge of the Complainant at the date of creating the disputed domain name.
Furthermore, the Respondent argues thoroughly in its submissions that he was willing to transfer the disputed domain name, but changed his mind due to an allegedly uncooperative attitude by the Complainant.
6. Discussion and Findings
A. Consideration of Supplemental Filings
The Panel notes that the Center received additional submissions by the Complainant and the Respondent respectively on July 16, 27 and 29, 2015.
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.
B. 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.
B.1 Identical or Confusingly Similar
The Panel finds that the disputed domain name is identical to the AKMERKEZ 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 various AKMERKEZ trademarks (in Turkey) since 1996.
The disputed domain name is identical to the Complainant's AKMERKEZ trademark as it incorporates the Complainant's trademark in its entirety without any additions or amendments.
Consequently, the Panel is satisfied that the Complainant has met the requirements under paragraph 4(a)(i) of the Policy.
B.2 Rights or Legitimate Interests
The Panel further finds that the Respondent does not have any rights or legitimate interests in the disputed domain name.
While the burden of proof remains with the Complainant on this point as well, 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 of production shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name in order to meet the requirements of 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 evidence or convincing arguments 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 prima facie evidence that the Respondent has no rights or legitimate interests to use the Complainant's AKMERKEZ trademark in the disputed domain name.
The Respondent, however, failed to provide any indication in his Response that he is commonly known by the disputed domain name. Furthermore, the Respondent has failed to demonstrate any of the other 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 or is intended to be used in connection with a bona fide offering of goods or services.
In this regard, the Panel considers the Respondent's allegation that the disputed domain name has been created for the sole purpose of establishing a nonpublic platform for a small "study group" to share "ideas and academic papers" as not convincing and a simple self-serving assertion. More importantly, the Respondent's allegation is not supported with any material evidence. The Respondent did neither reveal reliable documentation on the members of the alleged "study group" (for example regarding its size or its composition), nor did the Respondent provide any specification on the frequency and the content allegedly shared on the platform linked to the disputed domain name. The screenshots of the website from the past years, as provided by the Respondent, do at least not indicate any such intention or relevant kind of use. A provided screenshot of a log-in interface, apparently created for members of the alleged "study group", is in the Panel's view worthless as it obviously was created after being confronted with a claim to transfer the disputed domain name by the Complainant. All in all, the provided documents by the Respondent, including in its Supplemental filing, rather reveal utterly incoherent websites linked to the disputed domain name with varying design and content, which support the Panel's opinion that the disputed domain name was never legitimately in use for the alleged intention.
Furthermore, the Panel does not share the Respondent's opinion that the term "akmerkez" is generic and, hence, could have been created by anyone applying the first come, first served principle. The Panel agrees insofar that "ak" and "merkez" (meaning respectively "bright" or "white" and "center" in the Turkish language) could be assessed as generic terms individually. But the Panel believes that the combination of both terms is no dictionary word and consequently a genuine creation by the Complainant, protected by its trademark AKMERKEZ.
Given the circumstances of this case, the Panel finds it hard to conceive of any use of the AKMERKEZ trademark by the Respondent, which would qualify as a legitimate use.
Consequently, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
B.3 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.
The Panel is of the opinion that the Respondent intentionally attempted to create a likelihood of confusion among customers with the Complainant's AKMERKEZ trademark, apparently for malicious intention.
The Panel believes that the Respondent must have been well aware of the Complainant's AKMERKEZ trademark when it created the disputed domain name in December 1999. At the date of creation of the disputed domain name, the Complainant and its trademark AKMERKEZ were already known and recognized, especially in Turkey and among Turkish speakers. Further, the Respondent acknowledges in his submissions that he carried out a domain name search before creating the disputed domain name. The Panel believes that the Respondent must have recognized the Complainant's domain name <akmerkez.com.tr> and its trademark rights at least at the time when he carried out the search for available domain names comprising the terms "ak" and "merkez".
The Panel is convinced that the Respondent created the disputed domain name in expectation that the Complainant eventually intents to expand the use of its trademark AKMERKEZ with the gTLD ".com" and that he would then at least be able to gain illegitimate benefit. This assessment is supported by the fact that the disputed domain name was for sale (Annex 6 of the Complaint), at least until the Complainant approached the Respondent regarding its claim for transfer of the disputed domain name. Furthermore, the Respondent agreed to transfer the disputed domain name to the Complainant only if several (in view of the Panel unacceptable) conditions are met by the Complainant. Part of the conditions for an amicable solution of the dispute set forth by the Respondent was to maintain his email address "[…]@akmerkez.com" and the payment of the maintenance fees for the disputed domain name until 2020. Additionally, the Respondent required the payment of all "fees and expenses for preparation and signing" the settlement agreement, apparently including his unspecified attorney's fees and other involved expenses. In his submissions, the Respondent justifies these conditions for transferring the disputed domain name by particularly arguing that a longer time is needed "for data migration and domain transfer". This is in view of the Panel a self-serving assertion only. The lack of willingness to actually follow through with his purported offer to transfer the disputed domain name in return for a compensation of out-of-pocket expenses, although being asked for prior to and during these administrative proceedings, is in the Panel's view a strong indication for the Respondent's malicious intent.
The fact that the website linked to the disputed domain name now (after the filing of the present case) directs users upon their choice either to the website of the Complainant or to the website of a Turkish political party is not suitable to change the Panel's assessment. In the Panel's view, this is rather an improper and in the end unsuccessful attempt to distract the assessment of the Respondent's bad faith use.
Additionally, it is worth to mention that the Respondent used a privacy service when creating the disputed domain name. Although privacy services might be legitimate in some cases, it is for the Panel difficult to see in the present case why the Respondent should need to protect its identity except to make it difficult for the Complainant to protect its trademark against him. The Panel rather believes that the choice of the disputed domain name (which is identical to the Complainant's trademark) and the Respondent's attempt to sell the disputed domain name rather indicates that the Respondent deliberately opted for a privacy shield in order to prevent the enforcement of legitimate trademark rights by the Complainant.
Taking all facts of the case into consideration, the Panel believes that this is a typical cybersquatting case, which the UDRP was designed to address.
All in all, the Panel 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, <akmerkez.com> be transferred to the Complainant.
Date: August 10, 2015