WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Düş Yeri Bilişim Teknoloji ve Animasyon Anonim Şirketi v. Gregg Ostrick, GNO, Inc.
Case No. D2019-2060
1. The Parties
The Complainant is Düş Yeri Bilişim Teknoloji ve Animasyon Anonim Şirketi, Turkey, represented by Tellioğlu Kaşlioğlu Hukuk Bürosu, Turkey.
The Respondent is Gregg Ostrick, GNO, Inc., United States of America (“United States”), represented by John Berryhill, Ph.d., Esq., United States.
2. The Domain Name and Registrar
The disputed domain name <pepee.com> is registered with Name.com, Inc. (Name.com LLC) (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 22, 2019. On August 22, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 August 28, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 17, 2019.
On September 16, 2019, the Respondent requested extension of time to submit a response. On September 17, 2019, the Center granted the Respondent an automatic four calendar day extension for response under paragraph 5(b) of the Rules until September 21, 2019. The Response was filed with the Center on September 21, 2019.
The Center appointed Assen Alexiev, Gökhan Gökçe, and Andrew D. S. Lothian as panelists in this matter on October 10, 2019. The Panel finds that it was properly constituted. Each member of 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 Turkish entertainment company which produces animated cartoon movies and has animation and recording studios.
The Complainant is the owner of the Turkish trademark PEPEE with registration number 2009 08967, applied for on February 24, 2009, and registered on April 30, 2010, for goods and services in International Classes 28 and 41 (the “PEPEE trademark”).
The Complainant is also the registrant of the domain name <pepee.com.tr>, registered on March 23, 2009.
The disputed domain name was registered on June 13, 2006. It resolves to a parking page displaying pay-per-click (“PPC”) links.
5. Parties’ Contentions
The Complainant maintains that the disputed domain name is confusingly similar to the PEPEE trademark in which the Complainant has rights.
According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name, as the Complainant has not authorized the Respondent to use the PEPEE trademark, and “Pepee” is not a common word or a generic name, but a distinctive sign registered as a trademark.
On the issue of bad faith, the Complainant submits that the existence of the website at the disputed domain name dilutes the PEPEE trademark and harms the Complainant’s standings and market recognition. The Complainant also points out that the website at the disputed domain name contains links that refer to the Complainant and that the Respondent offers the disputed domain name for sale.
The Respondent submits that the dispute involves a domain name consisting of a diminutive nickname, which the Respondent has registered and used since June 2006. The Respondent obtained the disputed domain name immediately upon its expiration and abandonment by a prior registrant in the belief that, as a variant diminutive nickname for such names as Giuseppe, Joseph, and José, or as a variant juvenile term for urination, the name would have potential commercial value. Subsequent to registering the disputed domain name, the Respondent has used it in connection with various search advertising systems in order to automatically associate the disputed domain name with content relevant to it. The Respondent states that its principal is a native of Louisiana and resident of Alabama, has no children, and does not watch Turkish children’s animated cartoons for entertainment, and denies any actual notice of the Complainant prior to receiving the Complaint in this matter. Upon learning of this proceeding, it instructed its PPC parking provider to target the disputed domain name toward topics such as urinary incontinence, bed wetting products, etc.
The Respondent points out that the Complainant claims rights arising from a Turkish animated television show of which the first episode was aired for the first time in June 2008 and which has received wider distribution since 2015 in Kazakhstan, Germany and the United Kingdom, but has not been broadcast in the United States. The Respondent adds that the Complainant has provided no information about the program’s popularity, audience size and critical reception, and the English language Wikipedia entry for the Complainant’s program was created in 2013. The Complainant’s earliest filing of any sort was made in Turkey in 2009, and the Complainant registered the domain name <pepee.com.tr> in 2009. The Respondent points out that in view of the above circumstances, the Complainant does not own any rights in the name “Pepee” that are senior to the Respondent’s registration of the disputed domain name, and therefore the disputed domain name cannot have been registered in bad faith by the Respondent.
The Respondent draws the Panel’s attention to the fact that the Complainant is aware that the disputed domain name has been registered since 2006. According to the Respondent, in such situation the Complainant should have explained how there may have been a change of ownership of the disputed domain name or why the Complainant maintains that it was registered in 2006 in bad faith relative to a television show that did not exist until 2008. According to the Respondent, the failure of the Complainant to address these issues shows that it has initiated the present proceedings as a test of whether the Respondent would defend its rights in the disputed domain name or not.
The Respondent further submits that the Complainant has waited over a decade between launching its television program in Turkey, and becoming concerned with the disputed domain name. Such a long delay erodes the Complainant’s credible claim of tangible harm, and there are no facts suggesting that the Respondent’s senior registration and use of the disputed domain name has caused any disruption, diversion, or harm of any kind to the Complainant.
According to the Respondent, the present proceeding demonstrates the hazard of selecting a trademark despite there being a prior registrant of a key domain name. The results produced by automated PPC advertising systems are vulnerable to change depending on the activities of keyword advertisers themselves, and it appears that the Complainant’s promotion of the PEPEE trademark had the effect of altering the PPC links posted on the website at the disputed domain name.
6. Discussion and Findings
Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the Respondent has registered and is using the disputed domain name in bad faith.
A. Identical or Confusingly Similar
The Complainant has provided evidence and has thus established its rights in the PEPEE trademark, registered in 2010. As summarized in section 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the date of registration of the Complainant’s trademark is not considered relevant to the first element test. In view of this, the fact that the disputed domain name was registered almost three years before the Complainant registered its trademark does not by itself preclude the Complainant’s standing to file the present case. This circumstance however bears on the Panel’s further substantive determination of the other elements of the Policy.
The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy (see section 1.11 of the WIPO Overview 3.0). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLD section of the disputed domain name.
The relevant part of the disputed domain name is therefore the element “pepee”. It is identical to the textual component of the PEPEE trademark. The design elements of the PEPEE trademark are incapable of representation in domain names, so the Panel will disregard them for the purposes of assessing identity or confusing similarity under the first element (see section 1.10 of the WIPO Overview 3.0).
Taking the above into account, the Panel is satisfied that the disputed domain name is identical to the PEPEE trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
In view of the finding of the Panel under section 6C below that the Complainant has failed to establish that the Respondent has registered the disputed domain name in bad faith, it is not necessary to make a finding of whether the Respondent has rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant points out that the website at the disputed domain name contains links that target the Complainant and redirect to an offer for sale of the disputed domain name.
The Respondent maintains that it has acquired the disputed domain name in 2006 for its potential value as a diminutive nickname or as a variant juvenile term for urination, without targeting the Complainant. The Respondent also points out that it could not have registered the disputed domain name with knowledge that it corresponded to the Complainant’s PEPEE trademark and with the intent to sell it to the Complainant, because the Complainant did not have rights in the PEPEE trademark when the Respondent registered the disputed domain name. The Respondent also denies that it has used the disputed domain name to target the Complainant.
The Panel has reviewed the evidence in the case file and has reached the conclusions that follow. The Respondent has submitted evidence that it acquired the disputed domain name in 2006 and that it was listed in a 2007 WhoIs record for it. The Registrar has confirmed that the Respondent is the current registrant of the disputed domain name, and the case file contains no evidence of change of ownership over it in the period after 2006. The evidence in the case file shows that the Complainant started using the PEPEE trademark in 2008 and applied for its registration for the first time in 2009.
As summarized in section 3.8.1 of the WIPO Overview 3.0, where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent. As an exception to this general proposition, in certain limited circumstances where the facts of the case establish that the respondent’s intent in registering the domain name was to unfairly capitalize on the complainant’s nascent (typically as yet unregistered) trademark rights, panels have been prepared to find that the respondent acted in bad faith. Such scenarios include registration of a domain name shortly before or after announcement of a corporate merger, further to the respondent’s insider knowledge, further to significant media attention, or following the complainant’s filing of a trademark application.
The Complainant does not allege the existence of any of these exceptions, and the case file contains no evidence that may lead to a conclusion that the Respondent had knowledge of the Complainant prior to the filing of the Complaint or that it has somehow targeted the Complainant with the registration of the disputed domain name.
Taking into account all the above circumstances, the Panel’s conclusion is that the Complainant has not established that the disputed domain name has been registered in bad faith. As the Policy requires the Complainant to establish that the disputed domain name was both registered and used in bad faith, this necessarily means that the Complaint should fail, and it is not necessary for the Panel to examine the issue of whether the disputed domain name has been used in bad faith.
At the same time, the Panel finds it necessary to address one additional issue. The evidence submitted by the Complainant shows that it knew at the time of filing of the Complaint that the disputed domain name was registered two years before it started using the PEPEE trademark and three years before it filed its trademark application for the mark PEPEE. Where a domain name registration precedes the registration of the trademark that may be the basis of a complaint under the Policy, one would expect the respective trademark owner to diligently investigate the relevant facts (either through appropriate online tools or by directly contacting the domain name registrant) prior to the filing of a complaint, and then to file a complaint only if it can refer to circumstances showing that the domain name registrant has targeted it when registering the respective domain name. The Complainant does not appear to have made any such efforts and in any case, the Complaint does not refer to such circumstances, although it should have done so.
Paragraph 15(e) of the Rules provides that if after considering the submissions the panel finds that the complaint was brought in bad faith, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. Reasons articulated by panels for finding Reverse Domain Name Hijacking include clear knowledge of a lack of respondent bad faith, such as registration of the disputed domain name well before the complainant acquired trademark rights. This situation is present here. However, the Complainant has brought evidence that the disputed domain name has been used for a webpage that clearly targets it. In view of this use of the disputed domain name, the Panel is not satisfied that the Complainant had clear knowledge of a lack of bad faith on the part of the Respondent when it filed the Complaint. Therefore, the Panel has decided that a finding of Reverse Domain Name Hijacking is not warranted by the circumstances of the case.
For the foregoing reasons, the Complaint is denied.
Andrew D. S. Lothian
Date: October 24, 2019