WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Çelik Motor Ticaret A.S. v. Ahmet Soysal
Case No. D2016-0026
1. The Parties
The Complainant is Çelik Motor Ticaret A.S. of Istanbul, Turkey, represented by Gün & Partners, Turkey.
The Respondent is Ahmet Soysal of Trabzon, Turkey, self-represented.
2. The Domain Name and Registrar
The disputed domain name <garento.com> is registered with Bizcn.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 7, 2016. On January 7, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 11, 2016, 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. On January 12, 2016, the Center received two email communications from the Respondent.
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 January 13, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 2, 2016. On January 13, 2016, the Center received an informal communication in Turkish from the Respondent. The Response was filed with the Center on January 22, 2016.
The Center appointed Emre Kerim Yardimci as the sole panelist in this matter on February 12, 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 January 28, 2016 in order to submit the expert report requested by the Specialized IP court of Istanbul and the preliminary injunction decision rendered by the same court. The Respondent filed a supplemental filing on January 29, 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 Rules. 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 minimize 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 the parties’ supplemental filings are justified.
The Panel has further issued a procedural order on March 1, 2016 to the parties on whether a main court action for trademark infringement and unfair competition has been instituted and whether the Respondent has filed any reply to this court action. The Complainant has submitted, on March 3, 2016, further evidence showing the institution of the main court action. The Respondent failed to submit the requested evidence.
4. Factual Background
The Complainant has been operating a car rental company under the trademark GARENTA for more than two years, with 20 branches in Turkey.
The Complainant has registered Turkish trademark registrations No. 2013/63186 GARENTA and No. 2013/104426 GARENTA (logo) on July 19, 2013 and December 20, 2013, respectively. Moreover, the Complainant registered the domain name “www.garenta.com.tr” on July 24, 2013, which is currently active.
The Complainant brought legal action on December 30, 2015 against the Respondent before the 1st Istanbul Civil Court of Intellectual and Industrial Property Rights for determination of facts/evidence with a preliminary injunction request, among others, to block the access to the website “www.garento.com” belonging to the Respondent. After the panel of experts appointed by the Court submitted its report (concluding the likelihood of confusion between the Complainant’s trademark and the disputed domain name) to the Court on January 21, 2016, the Judge decided to order a preliminary injunction blocking access to the website “www.garento.com” on January 26, 2016.
The Panel in this UDRP proceeding issued a procedural order on March 1, 2016 regarding the continuance of proceedings following the preliminary injunction i.e., whether a main court action for permanent relief (i.e., the determination and stopping of the trademark infringement and acts of unfair competition) was instituted by the Complainant before the competent Court. The documents submitted by the Complainant in response to the procedural order show that such a court action was duly instituted and that the Judge decided to continue with the preliminary injunction request to block access to the website “www.garento.com”.
The disputed domain name was created on November 1, 2015. According to the current WhoIs record, the Respondent is an individual domiciled in Trabzon, Turkey.
The Panel visited the disputed domain name on March 11, 2016, and observed that the disputed domain name is resolved to a website mentioning that the access to the website is blocked according to the decision of the 1st Istanbul Civil Court of Intellectual and Industrial Property Rights.
5. Parties’ Contentions
The Complainant requests the transfer of the disputed domain name.
The Complainant asserts that the disputed domain name is confusingly similar to the Complainant’s trademark as the one letter difference (which is the last letter) is not sufficient to differentiate the Complainant’s trademark from the disputed domain name.
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 trademark as the parties are operating in the same sector and are direct competitors. Furthermore, the Respondent intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark.
The Respondent did not file a formal Response per se.
However, the Panel notes that the subject case is characterized by a lack of coherent submissions by the Respondent, who is self-represented.
It is clear that English, the language of the Registration Agreement and therefore the language of this proceeding, is not the Respondent’s first language, and that the Respondent has difficulty in expressing the nature of his case. The Panel has thus tried to make sense of the Respondent’s contentions as best it can.
The Respondent requests the denial of the Complaint.
The Respondent states that he is the sales manager of Karabak Tourizm and that the owner of Karabak Tourizm, Mr. Kamil Karabak, has rights in terms of the disputed domain name in view of the Court decision obtained from the Civil Court of Trabzon. Moreover, the Respondent states that Mr. Kamil Karabak is the holder the trademark registrations for GARENTOGO and MARGARENTO. He therefore claims that the disputed domain name is used in connection with a bona fide offering of goods or services.
6. Discussion and Findings
A. Supplemental Filings
The consensus view under paragraph 4.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“the WIPO Overview 2.0”) is that UDRP panels have sole discretion, under paragraphs 10 and 12 of the Rules, to accept an unsolicited supplemental filing from either party, bearing in mind the need for procedural efficiency, and the obligation to treat each party with equality and ensure that each party has a fair opportunity to present its case. The party submitting its filing would normally need to show its relevance to the case and why it was unable to provide that information in the complaint or response.
In this case, the Panel does consider that the Complainant’s and the Respondent’s supplemental filings are justified and therefore admits the supplemental filings in this proceeding.
B. Concurrent Civil Proceedings
Paragraph 18 of the Rules states: “In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain name dispute . . . the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.”
It is to be noted that the court action instituted by the Complainant is an action for the determination of facts with a preliminary injunction request and according to the Turkish Civil procedural law, the court action was finalized with the decision dated January 26, 2016. The Complainant has further instituted a main court action for trademark infringement and unfair competition with the continuation of the injunction to block access to the website “www.garento.com” belonging to the Respondent.
The Panel finds that the case is sufficiently developed to reach a conclusion under the Policy and does not believe that the decision reached will interfere with either parties’ further claims in court.
Therefore, the Panel finds it is entitled to proceed to a decision in compliance with Paragraph 18(a) of the Rules.
C. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A trademark registration provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. As indicated above, the Complainant holds two trademark registrations for the GARENTA trademark.
The disputed domain name <garento.com> differs from the Complainant’s registered GARENTA trademark by the last letter “o”. In the Panel’s view, considering that the two indications are not generic and on the contrary they are coined words, and considering that there is only a one letter difference between the mark and the disputed domain name, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.
In the Panel’s view, the disputed domain name is sufficiently close to the mark, both visually and phonetically, as to be confusingly similar to it. The Complainant has satisfied paragraph 4(a)(i) of the Policy.
As regards the generic Top-Level Domain (gTLD) “.com”, it is typically disregarded under the confusing similarity test.
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
D. Rights or Legitimate Interests
The onus is on the Complainant to make out at least a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and it is then for the Respondent to rebut this case.
The Panel accepts the Complainant’s submissions that the Respondent does not appear to be known by the disputed domain name, has not used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, is not making a legitimate noncommercial or fair use of the disputed domain name, and has no consent from the Complainant to use its trademark.
The Respondent contends that he is the sales manager of Karabak Tourizm and that the owner of Karabak Tourizm, Mr. Kamil Karabak, has rights in terms of the disputed domain name in view of the Court decision obtained from the Civil Court of Trabzon declaring that Mr. Kamil Karabak is entitled to use the indication GARENTOGO and is entitled to use the domain name <garentogo.com>. The Respondent further contends that Mr. Kamil Karabak is the holder of trademark registrations for GARENTOGO and MARGARENTO.
First of all, the Respondent, Ahmet Soysal, does not have any trademark registration and is not known by the disputed domain name. Even if the Panel considers that the beneficial owner of the disputed domain name is Mr. Kamil Karabak, the subject Court decision does not concern the disputed domain name <garento.com> but rather the domain name <garentogo.com> and the underlying indication GARENTOGO. Moreover, the trademarks apparently owned by Mr. Kamil Karabak, i.e., GARENTOGO and MARGARENTO, do not give rise to any rights or legitimate interests for the disputed domain name <garento.com>.
In the Panel’s view, the Complainant has made out its prima facie case under this element of the Policy and the Respondent has failed to rebut it. Accordingly, the Complaint succeeds in relation to the second element of the Policy.
E. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product.
After carefully consideration of the parties’ contentions and the evidences submitted before the Panel, the Panel concludes that the circumstances of paragraph 4(b)(iv) of the Policy are applicable to the present case.
According to the evidence submitted before Panel, the Panel finds that the Complainant’s trademark GARENTA enjoys a certain reputation in the car rental sector (in which both parties are active). The Complainant also has offices in the city of Trabzon where the Respondent is located or where the beneficial owner of the disputed domain name <garento.com> is principally operating.
The Respondent has failed to explain its choice of the disputed domain name. Therefore, the Panel finds that the Respondent should have had actual notice of the Complainant’s trademark rights at the time of the registration of the disputed domain name.
Considering that the disputed domain name and the Complainant’s mark are found to be confusingly similar to each other, it seems likely that the disputed domain name <garento.com> is used to divert Internet users seeking the Complainant’s website to the Respondent’s website.
Certainly, the preliminary injunction blocking access to the page at the disputed domain name is a strong indication of usage of the disputed domain name in bad faith.
The Panel finds that the Respondent is using the disputed domain name to intentionally attempt to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark.
Therefore, in the view of cumulative circumstances, the Panel finds that this requirement is satisfied, according to 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, <garento.com> be transferred to the Complainant.
Emre Kerim Yardimci
Date: March 14, 2016