WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Next Retail Limited v. Önder Celik
Case No. D2020-2408
1. The Parties
The Complainant is Next Retail Limited, United Kingdom, represented by Marks & Clerk Law LLP, United Kingdom.
The Respondent is Önder Çelik, Turkey, represented by Canpolat Legal, Turkey.
2. The Domain Name and Registrar
The disputed domain name <shopinext.com> (the “Disputed Domain Name”) is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 16, 2020. On September 16, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 17, 2020, 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 September 17, 2020, 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 amendment to the Complaint on September 18, 2020.
The Center verified that the Complaint together with the amendment to 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 September 22, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 12, 2020. On September 18, 2020, an informal communication was received from the Respondent. On September 22, 2020, the Respondent requested an extension due to claimed exceptional circumstances. On September 23, 2020, the Center in accordance with paragraph 5(b) and paragraph 5(e) of the Rules exceptionally granted the extension of time until October 22, 2020, to file a response. The Response was filed with the Center on October 21, 2020.
The Center appointed John Swinson as the sole panelist in this matter on October 30, 2020. 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 is Next Retail Limited, a company incorporated in the United Kingdom. The Complainant is part of a larger group of companies which includes Next Holdings Limited and Next Plc (the “Complainant Group”). According to the Complaint, the Complainant Group is a multi-channel retailer whose business includes over 500 of its own retail stores and 190 franchised stores in a number of countries, a home shopping catalogue and online shopping websites at <next.co.uk> and <nextdirect.com>.
The Complainant and the Complainant Group own a large number of trade marks for NEXT in various countries around the world, including trade mark number 2012/17553, registered in Turkey, registered on May 28, 2014 with an effective date of February 23, 2012 (the “Trade Mark”) and European Union Trade Mark number 000015594, registered on September 19, 1998 with the application date of April 1, 1996. According to the Complainant, Next Holdings Limited and Next Plc have mutually licensed their trade marks to one another and the Complainant Group uses the Trade Mark in relation to its retail and online stores and for a wide variety of its own brand goods (including clothing, cosmetics, electrical goods, jewellery, and furniture).
According to the Complaint, the Complainant Group has over 28,000 employees and an annual turnover of over GBP 4 billion. The Complainant Group spends a significant amount of money advertising and promoting its products branded with the Trade Mark (over GBP 77 million in 2016) and operates various social media accounts with large numbers of followers. The Complainant Group also ranks in the top 500 of the world’s most valuable brands according to the Brand-Finance® Brandirectory.
The Respondent is Önder Çelik, an individual of Turkey. According to the Response, the Respondent is the founder, sole shareholder and sole board member of SHOPINEXT ELEKTRONİK TİCARET VE BİLİŞİM HİZMETLERİ ANONİM ŞİRKETİ, a company incorporated in Turkey (the “Respondent’s Company”). The Respondent licensed his rights to the Disputed Domain Name to the Respondent’s Company. The Disputed Domain Name was registered on July 9, 2018. The Disputed Domain Name currently resolves to website offering e-commerce services provided by the Respondent’s Company. The Respondent’s Company filed Turkish trade mark application number 2020/31822 on March 13, 2020 for a logo mark featuring the text SHOPINEXT YENİ NESİL ALIŞVERİŞ. The Complainant has filed an opposition to this trade mark application.
5. Parties’ Contentions
The Complainant makes the following contentions.
Identical or confusingly similar
The element “shop” is descriptive of the services provided by the Respondent. The elements “shop” and “i” are non-distinctive and therefore not capable of distinguishing the Disputed Domain Name from the Trade Mark. The Trade Mark benefits from enhanced distinctiveness as a result of extensive use which enhances the similarity between the Disputed Domain Name and Trade Mark.
The Respondent is offering e-commerce solutions at the Disputed Domain Name which allow customers to set up online stores. This is very similar to the goods and services offered by the Complainant under the Trade Mark. One of the product groups displayed at the Disputed Domain Name is “Shopinext Moda”. The term “moda” is recognised internationally as meaning “fashion”. To the extent that the Disputed Domain Name is being used to offer retail services or fashion goods, this is identical to the goods and services offered by the Complainant under the Trade Mark.
As a result of the above, the public is likely to think that the Respondent’s offering at the Disputed Domain Name originates from the Complainant or is otherwise linked to or endorsed by the Complainant. The Disputed Domain Name is therefore confusingly similar to the Trade Mark.
Rights or legitimate interests
The Respondent could not have legitimate interests in the Disputed Domain Name which wholly incorporates the Trade Mark for the purposes of offering identical or similar goods and services to those offered by the Complainant under the Trade Mark for decades. The Complainant has not granted a licence or otherwise authorised the Respondent to use the Trade Mark.
The Respondent’s offering is not bona fide and the Respondent is not making a legitimate, noncommercial or fair use of the Disputed Domain Name. The Respondent is using the Disputed Domain Name to mislead customers, tarnish the Trade Mark and/or take advantage of the Trade Mark’s reputation.
Registered and used in bad faith
Given the substantial fame and reputation of the Complainant and the Trade Mark, the Respondent must have been aware of them at the time the Disputed Domain Name was registered. A Turkish court concluded that the Trade Mark was well-known in a 2017 decision.
The mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trade mark (particularly domain names comprising typos or incorporating the mark plus a descriptive term) by an unaffiliated entity can itself create a presumption of bad faith. The Disputed Domain Name wholly incorporates the Trade Mark plus a descriptive term which gives rise to the presumption of bad faith.
The Respondent’s use of the Trade Mark in the Disputed Domain Name is intended to confuse the public into thinking that the Respondent’s goods and/or services are the goods or services of the Complainant, or that they are affiliated with, linked to or endorsed by the Complainant. Further, given the Respondent is based in Turkey and the website at the Disputed Domain Name is wholly in the Turkish language, the only logical reason for the Respondent to choose to use the English word “next” in the Disputed Domain Name was to improperly exploit the goodwill and reputation of the Complainant and the Trade Mark by generating traffic to its own website.
The Respondent makes the following contentions.
Identical or confusingly similar
The Disputed Domain Name is not identical or confusingly similar to the Trade Mark. The Disputed Domain Name should not be divided into three parts to extract descriptive portions which support an argument of confusing similarity. This does not reflect the approach of ordinary customers who perceive domain names in compound. The Complainant’s contention that the elements “shop” and “i” are non-distinctive and that the element “next” creates confusion with the Trade Mark is incorrect. The “i” element grants the Disputed Domain Name distinctiveness.
“Next” is a descriptive term in the English language and was found to be a generic term in Sanofi-aventis v. Whoisguard, tvforever, michael Trinidad, WIPO Case No. D2009-1671. The term is suggestive of the future‑leaning, new type of e-commerce product and service offered by the Respondent’s Company. The name “Shopinext” is suggestive of an innovative way of shopping and conducting e-commerce activities. The terms “next” and “shop” are equally descriptive and to the extent that the Complainant argues “shop” should be disregarded, “next” must also be disregarded.
The Disputed Domain Name and Trade Mark are not similar based on a side-by-side comparison.
Rights or legitimate interests
The Complainant does not have an exclusive right to the term “next” or other terms which incorporate the term “next”. Results of Internet and trade mark database searches evidence many trade marks incorporating the term “next” on its own or in addition to other terms. Further, given “next” is a descriptive and generic term in the English language, it cannot be exclusively owned by the Complainant.
Before receiving notice of the dispute on September 22, 2020, the Respondent had made use of the Disputed Domain Name in connection with a bona fide offering of goods or services. Screenshots of website at the Disputed Domain Name dating back to August 28, 2019 evidence the development of the website and the products offered by the Respondent. A placeholder message referring to the Respondent’s planned products was displayed between August 28, 2019 and June 9, 2020. The website in its current form has appeared at the Disputed Domain Name since June 9, 2020. This is also evidenced by the copies of various advertising materials relating to the Disputed Domain Name and incorporating the name “Shopinext”, as well as screenshots of interactions with customers under the name “Shopinext” provided with the Response.
The Respondent has also been commonly known by the Disputed Domain Name. “Shopinext” is the only distinctive element of the Respondent’s Company’s trade name and it is also the registered enterprise name of the Respondent’s Company. The Respondent has unregistered trade mark rights in the name “Shopinext”.
Registered and used in bad faith
The Respondent did not have the Complainant in mind when registering the Disputed Domain Name. The term “next” is descriptive and was included in the name “Shopinext” because it is associated with the future and innovation and therefore aligns with the business of the Respondent’s Company. Further, the Trade Mark and the Disputed Domain Name are not confusingly similar based on a side-by-side comparison.
The business conducted by the Complainant and the Respondent’s Company is fundamentally different and the two are not competitors. The Respondent’s Company provides marketplace and intermediary services to e-commerce sellers meaning that unlike the Complainant, it does not operate a physical or online retail store.
The Respondent registered the Disputed Domain Name to reflect the enterprise and trade names of the Respondent’s Company and the Complainant provided no evidence that the Respondent was targeting the Complainant or the Trade Mark.
Based on the factors outlined above, the Respondent contends that the Disputed Domain Name was not registered:
- primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name to the Complainant;
- to prevent the Complainant from reflecting the Trade Mark in a corresponding domain name;
- in an intentional attempt to attract for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s Trade Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or products; or
- to disrupt the Complainant’s business.
Reverse Domain Name Hijacking
The Respondent has requested that the Panel make a finding of Reverse Domain Name Hijacking.
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.
6.1. Procedural Issues
The Respondent’s name
The Registrar disclosed the name of the Respondent as being “below Celik”. According to the Response, the Respondent’s correct name is “Önder Çelik”. This is consistent with the email address for the Respondent provided by the Registrar. The Panel accepts that the Respondent’s correct name is Önder Çelik.
6.2. Substantive Issues
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.
Generally, the test for identity or confusing similarity involves a side-by-side comparison of the domain name and the trade mark to assess whether the trade mark is recognizable within the domain name (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
Although each case is judged on its own merits, where a domain name incorporates the entirety of a trade mark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark (WIPO Overview 3.0, section 1.7).
In this case, Disputed Domain Name incorporates the entirety of the Trade Mark. It is well accepted that the first element of the Policy functions predominantly as a standing requirement. Notwithstanding the Respondent’s submissions, the Panel finds that the addition of the terms “i” and “shop” do not prevent a finding of confusing similarity (WIPO Overview 3.0, section 1.8).
The Complainant is successful 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 first required to at least make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Complainant provided very limited submissions on this element.
The Complainant contends that the Respondent could not have rights or legitimate interests in the Disputed Domain Name because the Disputed Domain Name wholly incorporates the Trade Mark for the purpose of offering identical or similar goods or services to the Complainant. The Complainant is a retailer of consumer goods and offers products to customers via its websites, retail stores and home shopping catalogue. By contrast, the Respondent offers marketplace and intermediary services to e-commerce businesses. In the Panel’s view, the services offered by the Respondent and Complainant are similar in that they both involve online commerce of some sort but not the same in an important way, namely the channels and particular means of trade.
The Respondent contends that he has been commonly known by the Disputed Domain Name. The Respondent registered a company on February 12, 2020 that holds a trade name and enterprise name which feature the term “Shopinext” (the “Respondent’s Company”). The Respondent licensed the Disputed Domain Name to the Respondent’s Company. The Respondent also provided several news articles which reference the Respondent’s Company and screenshots of several interactions on various forums between Internet users and the Respondent who commented under the name “Shopinext”.
The Respondent’s Company has only been registered for a short period of time and the Respondent has not provided any evidence in relation to the size, revenue, or clients of the business. The Respondent and the Respondent’s Company are separate legal entities and there is little evidence showing that reputations of the Respondent and the Respondent Company are intertwined. Accordingly, the Panel is not prepared to find that the Respondent is commonly known by the Disputed Domain Name based on the evidence provided.
The Respondent also contends that prior to receiving notice of the dispute on September 22, 2020 he had made use, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding with the Disputed Domain Name in connection with a bona fide offering of goods or services.
From August 28, 2019 until June 9, 2020, the website at the Disputed Domain Name displayed a message to customers stating that they would soon be able to purchase e-commerce services and inviting them to send an email to “[...]@shopinext.com” to be kept up to date. The website at the Disputed Domain Name appeared in its current form on or about June 9, 2020 and seems reasonably sophisticated, offering information on the services provided by the Respondent’s Company and allowing customers to sign up and seek support. The Respondent also provided evidence that he conducted a marketing campaign which prominently featured “Shopinext” branding.
UDRP panels have generally considered evidence of credible investment in website development or promotional materials and proof of a genuine business plan utilising the domain name (and signs of pursuit of that plan) as evidence of demonstrable preparations to use a domain name (see section 2.2 of WIPO Overview 3.0). It has been held that “even perfunctory preparations” will generally suffice for this purpose (see Télévision Française 1 (TF1) v. Khaled Bitat, WIPO Case No. D2007-0137 and Asbach GmbH v. Econsult Ltd., d.b.a. Asbach Communities and Whois-Privacy Services, WIPO Case No. D2012-1225).
The Panel considers that the evidence provided by the Respondent (including in respect of the website’s development, advertising efforts and the registration of the Respondent’s Company on February 12, 2020) sufficiently exceeds what is needed to prove the “demonstrable preparations” threshold, and also generally points to a lack of indicia of cybersquatting intent. The Panel is satisfied that the Respondent is using, or has made demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services.
Much of the evidence provided by the Respondent in respect of this element was publicly available but the Complainant did not include or address any of this evidence in its Complaint. In these circumstances, the Panel is not satisfied that the Complainant has established a prima facie case showing that the Respondent lacks rights or legitimate interests. Regardless, the Respondent has rebutted any prima facie case and demonstrated that he has rights or legitimate interests in the Disputed Domain Name for the reasons outlined above.
In light of the above, the Complainant does not succeed on the second element of the Policy.
Accordingly, the Complaint fails.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered or subsequently used the Disputed Domain Name in bad faith.
The Panel is not required to consider this element as the Complainant has failed to satisfy the second element. For much of the same reasons set out above with respect to the second element, there is little evidence before the Panel to demonstrate bad faith under the Policy. The Panel notes that the crux of the dispute between the parties appears to be a trade mark dispute, which falls outside of the relatively limited “cybersquatting” scope of the UDRP. That dispute may be more appropriately addressed by a court of competent jurisdiction which may have more fulsome evidence before it.
D. Reverse Domain Name Hijacking
The Respondent has asked the Panel to make a finding of Reverse Domain Name Hijacking (“RDNH”). Under the Rules, RDNH is defined as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”.
The Panel does not consider this an appropriate case in which to make a finding of RDNH. There is a genuine dispute between the parties and none of the circumstances that would warrant a finding of RDNH are present in this case.
For the foregoing reasons, the Complaint is denied.
Date: November 13, 2020