WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dumankaya Yapi Malzemeleri SAN. VE TIC. A.S v. Domain Administrator, Name Administration Inc. (BVI)
Case No. D2015-1757
1. The Parties
The Complainant is Dumankaya Yapi Malzemeleri San. Ve Tic. A.S of Istanbul, Turkey, represented by AYDIN & AYDIN Law Firm, Turkey.
The Respondent is Domain Administrator, Name Administration Inc. (BVI) of Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland (the "United Kingdom"), represented by John Berryhill, Ph.d., Esq., United States of America (the "United States").
2. The Domain Name and Registrar
The disputed domain name <dky.com> (the "Disputed Domain Name") is registered with Uniregistrar Corp (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 3, 2015. On October 5, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 8, 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 October 14, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 3, 2015. Further to the Respondent's request, the Response due date was extended to November 7, 2015. The Response was filed with the Center on November 7, 2015.
The Center appointed Kaya Köklü, Tony Willoughby and John Swinson as panelists in this matter on December 4, 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 December 16, 2015, the Center received an unsolicited supplemental filing from the Complainant followed by a supplemental filing in response from the Respondent.
4. Factual Background
The Complainant is Dumankaya Yapi Malzemeleri San. Ve Tic. A.S, a construction company in Turkey which has been operating since 1961.
The Complainant owns a number of trade mark registrations for DKY or which incorporate DKY, each in stylized forms, the earliest of which was filed on October 16, 2012. The Complainant also owns a number of pending trade mark applications which incorporate DKY. Collectively, these will be referred to as the "Trade Mark".
The Complainant also owns a number of domain names which incorporate the Trade Mark, such as <dkyinsaat.com>, <dkykartal.com>, and <dkyotomotiv.com>.
The Respondent is Domain Administrator of Name Administration Inc. (BVI) of the Cayman Islands. The Respondent is in the business of monetizing domain names.
The Respondent registered the Disputed Domain Name on October 9, 2003. The website at the Disputed Domain Name currently features an assortment of general pay-per-click ("PPC") links.
5. Parties' Contentions
The Complainant makes the following contentions.
Identical or Confusingly Similar
The Trade Mark is well-known in Turkey. The Disputed Domain Name is exactly the same as the Trade Mark, which is registered with the Turkish Patent Institute. This is likely to cause confusion to consumers. The Trade Mark is protected against confusing or misleading use by third parties under Turkish trade mark and commercial law.
Rights or Legitimate Interests
The Respondent has no rights to or legitimate interests in the Disputed Domain Name. The Complainant has not licensed or otherwise permitted the Respondent to use the Trade Mark or to apply for a domain name incorporating the Trade Mark. The Respondent is not related with the Trade Mark.
The Respondent is not commonly known by the Disputed Domain Name. The Disputed Domain Name was registered in 2003, while the Trade Mark has been used since 1961.
Under Turkish law, a prudent merchant trading in the same area cannot claim to be unaware of the Trade Mark and the Complainant's domain names.
Registration and Use in Bad Faith
The Respondent registered the Disputed Domain Name in contravention of Turkish law. The Respondent's use of the Disputed Domain Name creates confusion with the Trade Mark, as customers will think that the Respondent's website is affiliated with the Complainant.
The Respondent is misleadingly diverting Internet users to its website. By using the Disputed Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, and has unfairly tried to take advantage of the fame of the Trade Mark. The Respondent knows the market and intentionally created a confusing website to gain more profit.
The Respondent makes the following contentions.
Identical or Confusingly Similar
The Complainant has not provided any evidence of rights to the Trade Mark prior to 2012. The 2012 registration is nine years after the Disputed Domain Name was registered.
None of the Complainant's domain names were registered prior to 2013.
The Complainant has provided no further evidence of its rights under paragraph 4(a)(i) of the Policy. The Complainant's assertion that the Trade Mark is "famous" cannot be correct, as the letters "DKY" are not exclusively identified with the Complainant (aside from in its stylized form). There are a number of Turkish trade marks which use the letters "DKY", and which are owned by third parties.
Rights or Legitimate Interests
The Respondent's registration of the Disputed Domain Name precedes the Complainant's rights in the Trade Mark. The right of seniority is a recognised equitable right which previous panels have held sufficient to find that a respondent has rights to or legitimate interests in the relevant domain name.
The Complainant's business relates to the construction industry. The letters "DKY" are used by many parties, and are a "generic" three-letter acronym for a number of different phrases.
The Trade Mark is not well known outside of a particular trade or region, unlike globally recognizable trade marks such as IBM, VW, or HSBC. The letters "DKY" are not even used exclusively by the Complainant in its own jurisdiction.
The Complainant does not consider the use the Respondent makes of the Disputed Domain Name. The Respondent is known for registering "generic" domain names and associating those domain names with paid advertising links. The advertising links provided on the website at the Disputed Domain Name include topics such as "Email Accounts", "DNS Hosting", "Abbreviations" and "Monograms". There is no evidence that the Respondent has provided links relating to construction services.
The Respondent's use of the Disputed Domain Name has been unrelated to the Complainant and its industry, and the Complainant has not shown any illegitimate use of the Disputed Domain Name by the Respondent. Previous panels have found that non-infringing use of a domain name consisting of a "generic" three-letter acronym can found a legitimate interest in the relevant domain name.
Registration and Use in Bad Faith
The Complainant has provided no reason to believe that the Respondent knew or should have known of the Complainant when the Disputed Domain Name was registered in 2003. The Respondent has no particular knowledge of Turkey, and denies knowledge of the Complainant at the time of registering the Disputed Domain Name. The Respondent's use of the Disputed Domain Name has not been related to the goods or services offered by the Complainant.
Further, during the course of two years of correspondence with the Respondent's domain name broker, during which the Complainant sought to purchase the Disputed Domain Name, the Complainant did not assert its rights to the Trade Mark, and made statements indicating that it was comfortable for the Respondent to sell the Disputed Domain Name to another purchaser.
It appears that the Complainant has grown dissatisfied with the commercial negotiation and has attempted to use the Policy as an alternative means of securing the Disputed Domain Name. The Complainant failed to mention the negotiations at all in the Complaint.
As such, there is no basis for a finding of bad faith registration or use under the Policy.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark 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.
The onus of proving these elements is on the Complainant.
As a preliminary matter, the Panel in its discretion declines to consider the Complainant's supplemental filing submitted on December 16, 2015. There appear to be no exceptional circumstances justifying the acceptance of such a filing. In any event, the Panel notes that this filing would not have affected the outcome of this decision. That being the case there is no need for the Panel to consider the Respondent's filing in response.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
The Complainant has registered rights in the Trade Mark dating back to October 16, 2012, but also seems to be claiming common law rights in the Trade Mark with a date of first use in 1961. However, the Complainant has provided no evidence of these common law rights. As such, the Panel accepts that the Complainant has rights in the Trade Mark for the purpose of the Policy, but on the present record, not prior to October 16, 2012.
Although the Trade Mark is stylized, the letters "DKY" are clearly discernable and are the dominant aspect of the Trade Mark. As such, the Disputed Domain Name is at least confusingly similar to the Trade Mark. The textual element of the Trade Mark has been wholly incorporated into the Disputed Domain Name, and no additional words have been added.
The Complainant succeeds on the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Complainant's submissions in relation to this element consist of several brief and general statements which are wholly unsupported by evidence. The Panel is inclined to find that the Complainant has not met its burden of making out a prima facie case that the Respondent lacks rights or legitimate interests. However, even if the Complainant has done so, the Panel finds that the Respondent has rebutted the Complainant's prima facie case.
The Respondent is in the business of monetizing "generic" and three-letter domain names. As submitted by the Respondent, a number of previous panels have found that as long as this business is not infringing on a complainant's rights in a mark, the Policy allows registration and use of domain names for this purpose. See, e.g., R.V. Kuhns & Associates, Inc. v. Gregory Ricks / Whois Privacy Corp. / Domain Administrator, WIPO Case No. D2014-2041.
Based on the case file, the Respondent's use of the Disputed Domain Name has been non-infringing since it was registered in 2003 (which predates the Complainant's registration of the Trade Mark by around nine years). Although the website at the Disputed Domain Name is a PPC link page, the links currently (and historically) featured on that page are unspecific. They do not reference the Complainant or its competitors, or the construction industry or any similar industry. They do not attempt to trade off the Complainant's (nor do they appear to trade off a third party's) name or trade mark. There is no evidence to suggest that the Disputed Domain Name was registered with any knowledge of the Complainant.
Therefore, the Complainant does not succeed in establishing the second element of the Policy.
C. Registered and Used in Bad Faith
In light of the above finding, the Panel is not required to consider the third element of the Policy. However, the Panel will briefly address the key aspects of this element for completeness.
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
As previously mentioned, while the Complainant claims to have rights in the Trade Mark dating back to 1961, it has not provided any evidence of such rights. The Complainant's earliest registered "DKY" Trade Mark of which it has provided evidence was filed on October 16, 2012. This is around nine years after the Respondent registered the Disputed Domain Name (on October 9, 2003).
The Complainant is based in Turkey and the Respondent is formally based in the Cayman Islands (though its controlling mind is possibly elsewhere). The Complainant has not provided any evidence that it was famous in 2003, either in Turkey or otherwise, or to show that the Respondent ought to have had knowledge of the Complainant at the time it registered the Disputed Domain Name.
The Complainant refers to the "fame" of the Trade Mark in such a way that suggests it is an instantly recognizable brand. However, as the Respondent submits, the Trade Mark is not "famous" in the sense that it is a global household name such as IBM, VW, or HSBC. The Complainant has not provided the Panel with any evidence that would lead it to consider otherwise. The Complainant cannot claim to have exclusive use of three letters, which could represent an acronym for the name of different organizations around the world, without providing a reasonable amount of evidence in support of that claim (see, e.g., Instrumentation Northwest, Inc. v. INW.COM c/o Telepathy, Inc., WIPO Case No. D2012-0454).
The Panel accepts the Respondent's submission that it had no knowledge of the Complainant at the time it registered the Disputed Domain Name. Based on the above, the Panel finds that the Disputed Domain Name was not registered in bad faith.
The Complainant makes further general statements, again unsupported by evidence, in relation to the Respondent's bad faith use of the Disputed Domain Name. The Complainant submits that the Respondent is misleadingly diverting Internet users to its website, and is taking advantage of the Complainant's rights in the Trade Mark. However, the links at the website at the Disputed Domain Name do not refer to the Complainant, or to the construction or any related industry.
In the view of the Panel, the content of the website is not misleading and does not attempt to trade off the Complainant's reputation or the Trade Mark. The PPC links direct Internet users to products and services which do not take advantage of the Complainant's rights.
The Panel finds that the Respondent is not using the Disputed Domain Name in bad faith.
The Complainant does not succeed in establishing the third element of the Policy.
D. Reverse Domain Name Hijacking ("RDNH")
In coming to a decision the Panel has to have regard to paragraph 15(e) of the Rules and in particular the following passage, namely:
"If after considering the submissions the Panel finds that the Complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its Decision that the Complaint was brought in bad faith and constitutes and abuse of the administrative proceeding."
RDNH is defined in paragraph 1 of the Rules as meaning "using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name."
In this case the Respondent has not sought a finding of RDNH, but, as paragraph 15(e) of the Rules makes clear, such a finding is not dependent upon a request from the Respondent. If abuse is apparent on the face of the case papers, the Panel is under an obligation to declare it. See Goway Travel Limited v. Tourism Australia, WIPO Case No. D2006-0344 ("The Rules specifically put the burden on the Panel to determine whether a complainant has tried to use 'the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name'."). Thus, findings of RDNH have been made not only in cases where no such finding has been sought by the respondent, but also in cases where there has been no response (M Corentin Benoit Thiercelin v. CyberDeal, Inc., WIPO Case No. D2010-0941).
Abuse can take several forms, but one of the most egregious examples is where a complainant fails to disclose relevant facts, such as the existence of highly material prior communications involving the relevant domain name (G.A. Modefine S.A. v. A.R. Mani, WIPO Case No. D2001-0537). Moreover, abuse is commonly found where the complainant knew or ought to have known at the outset that for one reason or another the case was doomed to failure. For a very recent decision on the topic the Panel refers to the case of SK Lubricants Americas v. Andrea Sabatini, Webservice Limited, WIPO Case No. D2015-1566, a decision of a three-member panel. The following passage is particularly appropriate to many of the facts of this case:
"In the view of the Panel this is a complaint which should never have been launched. The Complainant should have appreciated that establishing registration and use in bad faith in respect of a domain name which had first been registered many years previously and which was a three letter acronym was likely to involve difficult considerations. The Complainant appears to have ignored any such considerations. It initially adopted an entirely unwarranted and unnecessarily aggressive approach to the Respondent in the form of its email correspondence including its email of August 6, 2015 (see above), which was materially incorrect in important respects. Having failed by that correspondence to force the Respondent to transfer the Domain Name at the price the Complainant was prepared to pay, it simply launched the present proceedings. These were presented in a very limited and inadequate manner, and with no proper consideration of the issues involved, the factual background, or what the Complainant had to establish if it was to present a credible case. Given the nature of the Policy and the multiplicity of previously decided cases dealing with similar issues in relation to short acronym type domain names, this was a case that had no reasonable prospects of success. If the Complainant took competent legal advice it should have appreciated that this was the position. If it did not take competent legal advice it has only itself to blame. In all the circumstances the Panel agrees with the Respondent that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. "
In this case the Complainant made no attempt to prove the existence of any trade mark rights prior to 2012, yet asserted without any supporting evidence that the Disputed Domain Name was registered in bad faith. The Complainant asserted use in bad faith, but made no proper attempt to justify that assertion. There is nothing in the evidence to suggest that the Respondent has been targeting the Complainant or the Trade Mark. The Complaint had no prospect of success and the Complainant or those advising it must have been aware of that fact, but proceeded with the Complaint in the hope, perhaps, that as is so often the case, the Respondent would not bother to respond. That alone would have justified a finding of abuse of process, but to cap it all the Complainant made no mention whatever of its numerous failed attempts to acquire the Disputed Domain Name through a domain name broker for substantial sums of money. This was a line of email correspondence in which the Complainant ultimately expressed itself "happy" that the Disputed Domain Name should be sold to a third party for a sum in excess of the substantial sums that the Complainant had been offering. In none of that correspondence did the Complainant assert that it had rights to the Disputed Domain Name.
That undisclosed email correspondence, brought to the Panel's attention by the Respondent, demonstrates that the Complainant's interest in acquiring the Disputed Domain Name only arose following its acquisition of its registered trade mark rights and that it appreciated that in order to acquire the Disputed Domain Name from the owner it would necessarily have to pay a substantial sum. The Complainant knew that correspondence was fatal to its case and the Panel can only conclude that its failure to disclose it was an attempt to deceive the Panel.
The Complaint concludes with a certificate to the effect that the information contained in the Complaint was to the best of the Complainant's knowledge complete and accurate. In the Panel's view, the signatory should never have been permitted to sign and submit that certificate.
In light of the above findings the Panel has no hesitation in finding that the Complainant has used the Policy in bad faith "to attempt to deprive a registered domain name holder of a domain name". The Panel finds that the Complainant is guilty of Reverse Domain Name Hijacking.
For the foregoing reasons, the Complaint is denied.
Date: December 15, 2015