WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Yildiz Holding Anonim Sirketi v. Ibrahim Cosar

Case No. D2018-1360

1. The Parties

The Complainant is Yildiz Holding Anonim Sirketi of Istanbul, Turkey, internally represented.

The Respondent is Ibrahim Cosar of Istanbul, Turkey.

2. The Domain Name and Registrar

The disputed domain name <ulkeralpella.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 19, 2018. On June 19, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 20, 2018, 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 June 22, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 12, 2018. The Respondent sent an informal communication to the Center in Turkish on June 23, 2018. The Respondent did not submit any substantive response. The Center informed the Parties that it would proceed to panel appointment on July 13, 2018.

The Center appointed Selma Ünlü as the sole panelist in this matter on July 27, 2018. 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 in this administrative proceeding, Yildiz Holding Anonim Sirketi having a number of subsidiaries with a long-standing past, is one of the Turkey’s leading actors in the food industry with its various product ranges since 1944.

As is submitted by the Complainant as Annexes E and F, the Complainant owns the registered ULKER and ALPELLA trademarks in several classes around the world, as well as in Turkey. The said trademarks are also registered to the well-known trademark registry before the Turkish Patent and Trademark Office.

As the Panel examined the registrations of the Complainant on the date of August 1, 2018, it has been noted that the Complainant has 1,065 trademark registrations before the Turkish Patent and Trademark Office consisting of the ULKER trademark as its very first registration in Turkey dating back to December 31, 1976 despite the fact that the said trademark is lapsed. It is also determined by the Panel that the Complainant’s ULKER trademark is recognized as a well-known trademark before the Turkish Patent and Trademark Office with the special number of T/00081.

Moreover, it has been also noted that the Complainant has 72 trademark registrations before the Turkish Patent and Trademark Office consisting of the ALPELLA trademark as its very first registration in Turkey dating back to September 9, 1994. It is also determined by the Panel that the Complainant’s ALPELLA trademark is also recognized as a well-known trademark before the Turkish Patent and Trademark Office with the special number of T/01665.

The Respondent has chosen not to submit any Response to the contentions raised in the Complaint.

The disputed domain name <ulkeralpella.com> was registered on March 22, 2018 and resolves to a Registrar parking site including pay-per-click (“PPC”) links.

5. Parties’ Contentions

A. Complainant

Pursuant to paragraph 4(i) of the Policy, the Complainant requests that the disputed domain name be transferred to the Complainant. The Complainant submits the grounds for these proceedings listed in paragraph 4(a) of the Policy.

In summary, the Complainant contends the following:

Identical or Confusingly Similar

The Complainant states that it owns registered ULKER and ALPELLA trademarks which are also registered as well-known trademarks. The Complainant states that it is the third biggest biscuit producer in the world and has different business activities other than confectionery and other food-related groups.

The Complainant asserts that the disputed domain name comprises of the words “Ulker” and “Alpella” which are confusingly similar to its registered ULKER and ALPELLA trademarks. Thanks to its commercial activities as of 1944, those trademarks have a certain level of famousness in Turkey and as a Turkish person it is not possible for the Respondent not to have any knowledge of these trademarks.

No Rights or Legitimate Interests

The Complainant alleges that the Respondent is not and has never been one of the Complainant’s licensees, nor is he otherwise authorized to use the Complainant’s mark. The Respondent does not have any rights or legitimate interests in the disputed domain name. Moreover, the Complainant states that the Respondent was contacted with regards to the transferal of the disputed domain name. However, the Respondent offered to sell the disputed domain name in return for compensation in the amount of TRY 50,000 and also alleged that there is no possible legal action to be taken unless the Respondent uses any content related to the Complainant.

Therefore, the Complainant argues that the Respondent is in no way authorized to use the Complainant’s ULKER and ALPELLA trademarks in the disputed domain name and is not using the disputed domain name in connection with bona fide offering of goods.

Registered and Used in Bad Faith

The Complainant indicates that the disputed domain name has been registered in bad faith. The Complainant contends that it offered the Respondent to buy the disputed domain name in return for the registration fees but the Respondent declined the offer and accused the Complainant of “kidding” due to the amount offered for the transfer.

Secondly, the Complainant alleges that since the trademarks ULKER and ALPELLA are well-known marks throughout the world, including Turkey in particular; the Respondent aims to gain unfair profit from the Complainant. The Complainant states that it is quite possible for Internet users to mistakenly click the disputed domain name while searching anything about the Complainant’s products.

B. Respondent

The Respondent did not submit a substantive reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Policy requires the Complainant to demonstrate that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Panel is satisfied that the Complainant is the owner of several registrations of the ULKER and ALPELLA trademarks.

The Panel recognizes the Complainant’s rights and concludes that the disputed domain name contains the Complainant’s ULKER and ALPELLA trademarks in their entirety. In effect, the disputed domain name is identical to trademarks in which the Complainant has rights. Therefore, the Panel concludes that the requirements of paragraph 4(a)(i) of the Policy is provided.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy states that a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [the Respondent] of the dispute, your use 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) you [the Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [the Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The burden of proof is on the Complainant to demonstrate a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. Once the Complainant has made out a prima facie case, then the Respondent may, by, inter alia, showing one of the above circumstances, demonstrate rights or legitimate interests in the disputed domain name.

In light of the evidence submitted in the case file, e.g., trademark registration certificates, domain name registrations, etc., it is clear to the Panel that the Complainant has earlier rights on the ULKER and ALPELLA trademarks. The Respondent does not appear to be commonly known by the disputed domain name, nor does the Respondent appear to be engaged in a bona fide offering of goods or services. The Complainant has not granted the Respondent any right or license to use the ULKER and/or ALPELLA trademarks. Therefore, the Panel finds on the current record that the Complainant has proved rights on the ULKER and ALPELLA trademarks and also established a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name for the purposes of the Policy.

Consequently, in the absence of a substantive response, the Panel accepts the Complainant’s allegations as true that the Respondent has no authorization to use the ULKER and ALPELLA trademarks in the disputed domain name. Hence, as the Complainant has made out its prima facie case, and as the Respondent has not demonstrated any rights or legitimate interests as illustrated under paragraph 4(c) of the Policy, nor has the Panel found any other basis for finding any rights or legitimate interests of the Respondent in the disputed domain name, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Finally, the Complainant must show that the disputed domain name has been registered and is being used in bad faith under paragraph 4(a)(iii) of the Policy.

Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that, if found by a panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the 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) the 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 the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.

By consideration of the foregoing, the Panel is of the opinion that due to the earlier rights of the Complainant in the ULKER and ALPELLA trademarks, as well as its extensive and intensive usage, the Respondent, who appears to be located in Turkey where the Complainant has a recognition, was aware of the Complainant and its ULKER and ALPELLA trademarks at the time of registration of the disputed domain names. See e.g., Ebay Inc. v. Wangming, WIPO Case No. D2006-1107; General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087. Referring to Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226, the Panel believes that the awareness of the Complainant’s trademark at the time of the registration of the disputed domain name is to be considered an inference of bad faith registration.

Moreover, the Panel notes that:

(i) the Respondent did not submit any substantive response;

(ii) the Complainant’s trademarks have a strong reputation and are registered as well-known trademarks in Turkey;

(iii) the Respondent had applied to the Complainant to offer the sale of the disputed domain name but declined the offer of the Complainant regarding the transfer of the disputed domain name in return of a payment for the registration and holding disbursements, accused the Complainant of “kidding” due to the amount offered and made another offer to sell the disputed domain name in the amount of TRY 50,000. The Respondent also alleged that there is no possible legal action to be taken unless the Respondent uses any content related to the Complainant within the later offer.

Therefore, in light of the above-mentioned circumstances in the present case, the Panel finds that the disputed domain names have been registered and are being used in bad faith within the meaning of paragraph 4(b)(i) of the Policy and that the Complainant has established the third element under paragraph 4(a)(iii) of the Policy.

7. Decision

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, <ulkeralpella.com> be transferred to the Complainant.

Selma Ünlü
Sole Panelist
Date: August 3, 2018