WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sölen Çikolata Gida San ve Tic. A.S. v. Whois Privacy Protection Service / Erdem Murat Egrioglu
Case No. D2015-2300
1. The Parties
The Complainant is Şölen Çikolata Gida San ve Tic. A.Ş. of Gaziantep, Turkey, represented by June Intellectual Property Services Inc., Turkey.
The Respondent is Whois Privacy Protection Service of Istanbul, Turkey / Erdem Murat Egrioglu of Trabzon, Turkey, represented by Net Koruma Danismanlik Hizmetleri, Turkey.
2. The Domain Name and Registrar
The disputed domain name <şölen.com> is registered with Nics Telekomünikasyon Ticaret Ltd. Sti. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2015. On December 17, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 18, 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 December 23, 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 amended Complaint on December 28, 2015. Further to the Center’s communication (sent in English and Turkish) regarding the language of proceeding of December 23, 2015, the Complainant requested English to be the language of proceeding on December 28, 2015. The Respondent did not comment on this request by the specified due date.
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 and 4, the Center formally notified the Respondent of the Complaint in both Turkish and English, and the proceedings commenced on January 4, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 24, 2016. The Center received email communications from the Respondent on January 5, 21 and 22, 2016. On January 23, 2016, the Respondent requested a four day extension to submit his Response. In compliance with paragraph 5(b) of the Rules, this request was granted. The Response was filed with the Center on January 28, 2016.
The Center appointed Emre Kerim Yardimci as the sole panelist in this matter on February 10, 2016. 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.
The Complainant filed a Supplemental Filing on February 22, 2016 in order to respond to some of the Respondent’s arguments in the Response. This submission, however, was without any substantiating evidence. The Respondent filed a Supplemental Filing on February 23, 2016 in reply to the Complainant’s Supplemental Filing.
The Panel refers to The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447 which states:
“Under the Policy and the Rules, parties have no right to submit additional arguments or evidence. However, the Panel may, in its sole discretion, request further statements or documents from the parties under paragraph 10 of the Rules; and a party’s request may be regarded as an invitation to the Panel to exercise this discretion.
The principles which should be applied in exercising this discretion have been considered in numerous cases decided under the Policy and Rule. The principles adopted and confirmed in these decisions are that additional evidence or submissions should only be admitted in exceptional circumstances, such as where the party could not reasonably have known the existence or relevance of the further material when it made its primary submission; that if further material is admitted, it should be limited so as to minimise prejudice to the other party or the procedure; and that the reasons why the Panel is invited to consider the further material should, so far as practicable, be set out separately from the material itself.”
In the view of the above principles, the Panel considers that neither the Complainant’s nor the Respondent’s Supplemental Filings are justified since no proper reason was cited by either party regarding exceptional circumstances for submitting a Supplemental Filing and therefore the Panel declines to accept them.
4. Factual Background
The Complainant Şölen Çikolata Gida San ve Tic. A.Ş. has been the owner of the trademark ŞÖLEN since 1991 in connection with confectionery. The Complainant has more than 200 products in the categories of snacks, licensed products, kid’s products and treats and exports to more than 100 countries worldwide.
The Complainant has been using the trademark ŞÖLEN continuously since 1989 and holds a considerable number of trademark registrations in Turkey and national registrations in other jurisdictions in addition to International registrations under the Madrid Protocol. The oldest of the Turkish registrations dates back to an application date of 1990.
The Complainant holds several domain names incorporating “solen”.
The disputed domain name was registered on January 1, 2013 through a privacy service. The Registrar identified that the registrant of the disputed domain name is apparently a Turkish citizen, Erdem Murat Egrioglu, residing in Trabzon, Turkey.
5. Parties’ Contentions
The Complainant requests the transfer of the disputed domain name.
The Complainant asserts that the disputed domain name is identical to the Complainant’s well-known trademark ŞÖLEN.
The Complainant considers that the Respondent has no rights or legitimate interests in respect of the disputed domain name, mainly because the Respondent is not commonly known by the disputed domain name and the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. The Complainant further argues that the Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services.
Finally, in addressing the question of registration and use of the disputed domain name in bad faith, the Complainant observes that the Respondent could not ignore the Complainant’s well-known trademark as the parties are located in the same country. Furthermore, the disputed domain name was previously listed for sale and the present passive holding of the disputed domain name supports a finding of registration and use in bad faith for the intention of selling the disputed domain name.
The Respondent requests the denial of the Complaint.
It argues that the term “şölen” is a generic expression in the Turkish language, meaning “feast” in the English language and that the disputed domain name is used in connection with a bona fide offering of goods or services.
Moreover, the Respondent contests the well-known character of the Complainant’s trademark ŞÖLEN and therefore denies any bad faith registration or use of the disputed domain name.
Lastly, the Respondent also claims 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 Proceeding
Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The language of the Registration Agreement for the disputed domain name is Turkish.
The Complainant, upon receiving a notification from the Center that the language of the Registration Agreement was Turkish, submitted a request for this dispute to proceed in English. The Center made a preliminary determination to accept the Complaint filed in English and accept a response in either English or Turkish, subject to a determination by the Panel pursuant to paragraph 11(a) of Rules.
The Center has throughout the proceedings issued its case-related communications, including the Center’s Complaint notification documents, in both Turkish and English. The Complainant has also filed its Supplemental Filing in Turkish.
The Respondent submitted a response in Turkish through its representative, who has extensive experience in UDRP proceedings with a good command of English. As a matter of fact, the Response includes many references to UDRP decisions rendered in English.
The Panel notes the following passage from the Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004:
“The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.”
In accordance with the above, in deciding the language of the proceeding, the Panel takes the following into consideration:
a) The Respondent has been given the opportunity to submit a Response in Turkish, which it has done.
b) The Respondent is represented by an experienced representative with good command of English (as evidenced by the representative’s ability to mount a defense to an English language complaint).
Upon considering the above, the Panel concludes, according to the Rules, paragraph 11(a), that there is no prejudice or unfairness to the Respondent in accepting the Complaint in English and for its decision to be rendered in English. Accordingly, the Panel determined that the language of this administrative proceeding be English.
B. Status of Respondent
There is a preliminary question as to whether the Panel should deal with the matter on the basis that Mr. Erdem Murat Egrioglu is the true Respondent.
Despite the information obtained by the Registrar showing that Mr. Erdem Murat Egrioglu is the registrant of the disputed domain name in its records, the Respondent claims that the registrant of the disputed domain name in fact is not Mr. Erdem Murat Egrioglu but Geo-Net Harita Mühendislik ve Bilisim hizmetleri Ticaret Limited Sirketi, a Turkish company fully owned by Mr. Erdem Egrioglu. The Respondent submitted as evidence one invoice for the purchase of the disputed domain name where Geo-Net Harita Mühendislik ve Bilisim hizmetleri Ticaret Limited Sirketi appears as the addressee.
Paragraph 1 of the Rules defines the “Respondent” as the “holder of the domain name registration against which a complaint is initiated”. Moreover in accordance with the findings of previous panels (See, e.g. British Broadcasting Corporation v. Data Art Corporation / Stoneybrook, WIPO Case No. D2000-0683) the Panel finds that the claim of the Respondent does not affect this proceeding as the beneficial owner of the disputed domain name is still Mr. Erdem Murat Egrioglu.
The Panel finds that this proceeding was properly brought by the Complainant against the Respondent.
C. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, a complainant must prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
The Panel finds that the Complainant satisfies this element by virtue of its registrations before the Turkish Patent Institute (and various international and national registrations) for the trademark ŞÖLEN.
The Panel further finds that the disputed domain name is identical to the ŞÖLEN trademark insofar as ŞÖLEN is incorporated in its entirety in the disputed domain name. See, Pomellato S.p.A. v. Richard Tonetti, WIPO Case No. D2000-0493 (finding <pomellato.com> identical to POMELLATO).
The addition of the generic Top-Level Domain (“gTLD”) “.com” after ŞÖLEN is not a distinguishing element insofar as use of a TLD is required, necessary and functional to indicate use of a domain name on the Internet.
The Panel therefore finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
D. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights to or legitimate interests in the disputed domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.:
(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Even though the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name, it is the consensus view among panelists that a complainant has to make only a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy. As a result of doing so, the burden of proving that the Respondent has rights or legitimate interests in the disputed domain name will then shift to the Respondent.
The Complainant has substantiated that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Complainant has fulfilled its obligations under paragraph 4(a)(ii) of the Policy.
As stated in the discussion following Question 2.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) (“Does a respondent automatically have rights or legitimate interests in a domain name comprised of a dictionary word(s)?”), the consensus view is:
“the respondent may lack a legitimate interest in the domain name, even if it is a domain name comprised of a dictionary word or phrase. Factors a panel tends to look for when assessing whether there may be rights or legitimate interests would include the status and fame of the trademark, whether the respondent has registered other domain names containing dictionary words or phrases, and whether the domain name is used in connection with a purpose relating to its generic or descriptive meaning (e.g., a respondent may well have a right to a domain name ‘apple’ if it uses it for a genuine site for apples but not if the site is aimed at selling computers or MP3 players, for example, or an inappropriate other purpose). Panels have recognized that mere registration of a domain name, even one that is comprised of a confirmed dictionary word or phrase (which may be generic with respect to certain goods or services), may not of itself confer rights or legitimate interests in the domain name. 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).”
However, based on the evidence before the Panel, the Panel cannot find any rights or legitimate interests of the Respondent. Although the disputed domain name consists only of a generic term, the Respondent has not provided any persuasive evidence under paragraph 4(c) of the Policy for the following reasons:
First, the Respondent did not submit any evidence showing the use of the disputed domain name or at least any demonstrable preparations for such use in connection with the generic meaning of “şölen”. See Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964 (domain name must have been registered because of, and any use consistent with, its attraction as a dictionary word or descriptive term, and not because of its value as a trademark).
On the other hand, there is no indication that the Respondent has registered other domain names containing dictionary words.
Nor has the Respondent submitted any evidence showing that he is making a noncommercial use of the disputed domain name.
Lastly, there is no evidence revealing that the Respondent has been commonly known by the disputed domain name.
The Panel thus finds that the Respondent failed to prove that it has any rights or legitimate interests in the disputed domain name.
The Panel therefore finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
E. Registered and Used in Bad Faith
At the time of registration of the disputed domain name, the Complainant’s trademark ŞÖLEN was a well-known trademark in Turkey for a considerable time. The Complainant submits that considering that the Respondent resides in Turkey, it is inconceivable that the Respondent would not have known of the Complainant’s trademark.
On the other hand, the Respondent claims that the disputed domain name is registered for its generic meaning. However, as discussed under the previous section D, there is no evidence that the Respondent is using or is preparing to use the disputed domain name for its dictionary meaning. In other words, there is no indication that the Respondent has used the disputed domain name for a bona fide offering of goods or services, or for any legitimate noncommercial purpose.
The incorporation of a well-known trademark into a domain name by a registrant having no plausible explanation for doing so may be, in and of itself, an indication of bad faith (Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087; Microsoft Corporation v. Montrose Corporation, WIPO Case No. D2000-1568).
The Respondent states that before registering the disputed domain name <şölen.com>, it had tried to obtain the domain name <solen.com> and that the latter was not available as it was registered by a French entity. As the domain name <solen.com> has no dictionary meaning in Turkish, such statement of the Respondent leads the Panel to think that the Respondent had the trademark of the Complainant in mind when registering the disputed domain name.
Moreover, it appears from the screenshot (in Annex 12) submitted with the Complaint that the disputed domain name is offered for sale. The Respondent acknowledges that it has offered the disputed domain name for sale for a limited period of time.
Lastly, the Respondent challenges the well-known character of the trademark ŞÖLEN and claims the Complainant’s trademark is not well-known in Turkey despite the fact that its well-known status has been declared by the Turkish Patent Institute which is easily reachable from the online database of the Turkish Patent Institute (as shown in Annex 5 of the Complaint).
In the view of the above facts and submissions, the Panel is persuaded that the Respondent has registered and used the disputed domain name with the Complainant in mind for the purpose of selling, renting or otherwise transferring the disputed domain name to the Complainant for profit. Policy, paragraph 4(b)(i).
Considering that the Complainant has been in existence for nearly 25 years and that its trademark is well-known, there is no other likely buyer of the disputed domain name. Otherwise, there would have been little economic purpose in putting the disputed domain name up for sale.The fact that the disputed domain name was advertised generally for sale, and that the Respondent did not approach the Complainant directly, is no bar to such a finding. See, e.g., Millennium & Copthorne International Ltd. v. Blanche McGovern, WIPO Case No. D2000-0318. Likewise, the fact that the disputed domain name is currently passively held is no bar to a finding of bad faith under Policy, paragraph 4(b)(i).
Therefore, in the view of cumulative circumstances, the Panel finds that the requirement of registration and use in bad faith is satisfied, according to the Policy, paragraph 4(a)(iii).
7. Reverse Domain Name Hijacking
The Respondent requests a finding of Reverse Domain Name Hijacking.
This is defined in the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”. Moreover, paragraph 15(e) of the Rules provides as follows: “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 an abuse of the administrative proceeding”.
In the present case, the Complainant owns a well-known registered trademark in a name identical to the disputed domain name where the Complainant’s rights clearly predate the Respondent’s domain name registration. Moreover, the Respondent does not use the disputed domain name for its generic meaning and has offered the disputed domain name for sale to general public.
In the view of the above, the Panel finds that there is no room for a RDNH order.
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 <şölen.com> be transferred to the Complainant.
Emre Kerim Yardimci
Date: February 24, 2016