WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hurriyet Gazetecilik ve Matbaacilik Anonim Sirketi v. Onuno L.L.C.
Case No. D2015-1504
1. The Parties
The Complainant is Hurriyet Gazetecilik ve Matbaacilik Anonim Sirketi of Istanbul, Turkey, represented by Dericioglu & Yasar Law Office, Turkey.
The Respondent is Onuno L.L.C. of Delaware, United States of America, self-represented.
2. The Domain Name and Registrar
The disputed domain name <hürriyetaile.com> (<xn--hrriyetaile-thb.com>) (the "Domain Name") is registered with Dynadot, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 22, 2015. On August 24, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 27, 2015, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 3, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 23, 2015. The Response was filed with the Center on September 23, 2015.
The Center appointed Ian Lowe as the sole panelist in this matter on October 13, 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.
4. Factual Background
The Complainant is a member company of the Doğan Group, Turkey's leading media and entertainment conglomerate. It first published the Hürriyet newspaper in Turkey in 1948. Its circulation extended to Europe in the 1960s with the migration of Turkish labour and it has since served Turkish citizens living in Europe and people of Turkish origin.
The Complainant is the proprietor of a number of trademark registrations comprising the mark HÜRRİYET including Turkey trademark registration number 104880 HÜRRİYET registered on July 13, 1988 in Class 16 in respect of newspapers, magazines, books and other products, and Community trademark number 000364877 HÜRRİYET registered as of August 12, 1996. The Complainant is also the registered proprietor of Turkey trademark number 2010 67885 in respect of the stylized word and device trademark AİLE WWW.HURRIYETAILE.COM ŞEKİL filed on October 22, 2010 and registered on February 8, 2012 and has been using the domain name <hurriyetaile.com> since August, 2010.
"Hürriyet" is the Turkish word for "freedom" and "aile" means "family".
The Domain Name was registered on February 21, 2011. According to a web page taken from <web.archive.org>, in December 2014 the Domain Name resolved to a web page with a few lines of text in what appears to be the Turkish language which the Complainant states was offering the Domain Name for sale for the sum of EUR 1,700. At the time of preparation of the Complaint, it resolved to a different web page, again with a few lines of text apparently in Turkish, which the Complainant alleges indicates that the Domain Name is still for sale.
5. Parties' Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to its HÜRRİYET trademark, <hurriyetaile.com> domain name and AİLE WWW.HURRIYETAILE.COM ŞEKİL trademark, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Respondent registered and is using the Domain Name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
The Respondent submits that since "Hürriyet" means "independence, freedom, liberty" in English and "aile" means "family" they are therefore generic words that should not have been registered as a trade mark. It claims that it has not done any business related to the Complainant's activity areas and that it is planning to use the Domain Name in a different class of business activity. In addition, it states that evaluating opportunities in respect of generic domain names should not be treated as bad faith.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name the Complainant must prove that:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has been for many years the registered proprietor of Turkey and Community trademarks comprising "hürriyet" and "hürriyetaile" and has used the mark HÜRRİYET in respect of its widely circulating Turkish language newspaper for over 60 years. Although the Respondent claims that "hürriyet" and "aile" are generic terms so that the Complainant is not entitled to register trademarks in respect of them, the fact remains that the Complainant does have valid trademark registrations. In addition, as a result of its long-standing widespread use of "Hürriyet" as the title of its newspaper, the Panel readily accepts that the Complainant has common law rights in respect of that mark in any event.
The Domain Name comprises the word "hürriyet" together with "aile". Whether the term "aile" is to be regarded as a generic term (meaning "family") that does not detract from the distinctiveness of the mark "hürriyet" or whether "aile" when taken together with "hürriyet" constitutes the combination mark HÜRRİYETAİLE in which the Complainant also claims rights, the Panel's view is that the Domain Name is either identical or confusingly similar to a mark (or marks) in which the Complainant has rights.
B. Rights or Legitimate Interests
The Respondent claims that it was entitled to register the Domain Name because it should be permitted to evaluate the opportunities in respect of generic domain names. It claims that it was intending to use the Domain Name for a business activity unrelated to the Complainant. It therefore accepts, it seems, that the Domain Name was registered either with a view to deriving value from it by selling it or by using it. The Respondent does not however explain how it came to register the combination of "hürriyet" and "aile" as a domain name or how it might have rights or legitimate interests in respect of the combination comprising the Domain Name.
The Panel considers that in view of the long-standing use of the term "Hürriyet" by the Complainant, the wide circulation of its Turkish language newspaper of that name and its significant use of the combination mark HÜRRİYETAİLE, it is very likely that the Respondent had the Complainant and its rights in "hürriyet" and "hürriyetaile" in mind when it registered the Domain Name. Since the Domain Name comprises an International Domain Name using Turkish words and characters whose meaning is known to the Respondent, it must have been familiar with Turkish and is all the more likely therefore to have been familiar with the Complainant's publication.
In those circumstances, the Panel considers that it is particularly difficult for the Respondent to establish that it has rights or legitimate interests in respect of the Domain Name and that it has failed to displace the strong prima facie case put forward by the Complainant that the Respondent could have no such rights or interests. Accordingly the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
As set out above the Panel considers it very likely that the Respondent had the Complainant in mind when it registered the Domain Name. Furthermore, no use has been made of the Domain Name beyond offering it for sale, and the Respondent states in the Response in terms that it was registered with a view to evaluating the opportunities the Domain Name might generate. Although the Respondent claims that the Domain Name simply comprises generic terms, the fact remains that it in fact comprises an unusual combination used by the Complainant for several years and includes a mark that the Complainant has used for over 60 years.
In circumstances where the Respondent registered the Domain Name with the Complainant and its rights in mind for commercial gain, the Panel has no hesitation in accepting that the Respondent did so with a view to trading on the notoriety of the Complainant's trademarks.
Accordingly, the Panel finds that the Respondent registered and has used the Domain Name in bad faith for the purposes of 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 Domain Name <hürriyetaile.com> (<xn--hrriyetaile-thb.com>) be transferred to the Complainant.
Date: October 27, 2015