WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Toros Tarım Sanayi ve Ticaret Anonim Şirketi v. Mehmet, Metbil Teknoloji / Toros Fidancılık Özel Ağaç Tarım ve Hayvancılık Pazarlama Ticaret Limited
Case No. D2021-1464
1. The Parties
The Complainant is Toros Tarım Sanayi ve Ticaret Anonim Şirketi, Turkey, represented by Gün & Partners, Turkey.
The Respondent is Mehmet, Metbil Teknoloji,Turkey, / Toros Fidancılık Özel Ağaç Tarım ve Hayvancılık Pazarlama Ticaret Limited Turkey.
2. The Domain Name and Registrar
The disputed domain name (“Domain Name”) <torostarim.net> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 11, 2021. On May 11, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 11, 2021, 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 May 18, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 7, 2021. On June 4 and 7, 2021, the Center received communication from the Respondent requesting for an extension of time. The Center in accordance with paragraph 5(e) of the Rules exceptionally granted the Respondent an extension of time. The Center informed the Parties on June 18, 2021 that is was proceeding to panel appointment.
The Center appointed Dilek Ustun Ekdial as the sole panelist in this matter on July 1, 2021. 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 Response was filed with the Center on July 14, 2021.
4. Factual Background
The Complainant is a Turkish company and the flagship company of TEKFEN Agri-Industry Group, which was founded in 1974 in order to operate mainly in the agricultural inputs sector and it commenced its fertilizer production activities in 1981. The first trade name of the Complainant was Toros Gübre ve Kimya Endustrisi Anonim Şirketi. The trade name of the Complainant was changed as Toros Tarım Sanayi ve Ticaret Şirketi in the year 2005.
The Complainant is the registered proprietor of a number of Turkish trade mark registrations of or including a TOROS device mark. The Complainant has also a pending trademark application for the trademark TOROS TARIM in classes 01, 04, 31, 35, 39, and 40 with number 2021/16589. Additionally, well-known status of TOROS trademark was recorded before the specific registry of the Turkish Patent Trademark Office under the registration number T/99446 in the name of the Complainant, registered on December 21, 1997.
The Complainant operates a website connected to its <toros.com.tr> domain name, a domain name that it registered on June 30, 1997.
The Domain Name was registered on June 6, 2020 and it’s still an active web site which directs to a website related with the Respondent.
5. Parties’ Contentions
The Complainant has registered trademark rights in TOROS. The Complainant submits that the Domain Name is confusingly similar to the Complainant’s TOROS trademark. The Complainant states that the addition of the descriptive word “tarim” (in English “agriculture”) reinforces the confusing similarity with the Complainant’s TOROS trademarks.
The Complainant submits that the Respondent has no rights or legitimate interests in the Domain Name.
The Complainant asserts that the Respondent is unable to demonstrate rights or legitimate interests in the Domain Name. The Respondent has not been allowed by the Complainant to make any use of its trademarks.
The Complainant argues that the Respondent had to have a knowledge of the Complainant and its products at the time of registration of the Domain Name because of the well-known situation of the trademark TOROS in Turkey. The Respondent registered and used the Domain Name with the intention to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s registered TOROS trademark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on his website or location. It constitutes registration and use in bad faith pursuant to paragraph 4(b)(iv) of the Policy.
The Respondent did not reply to the Complainant’s contentions but sent an email to the Center on June 4 and June 7, 2021 and requested an extension of time for reply which is reading: “Hello, Due to the quarantine conditions applied in our country due to the pandemic, there are difficulties in obtaining some information and documents in our defense. We request additional time for the supply of information and documents”. The Center in accordance with paragraph 5(e) of the Rules granted the Respondent an extension of time until July 17, 2021.
The formal response has been received on July 14, 2021 by the Center.
According to the Respondent the domain name <torostarim.net> was registered by an Internet services company (Metbil Teknoloji) associated with the Respondent (Toros Fidancılık Özel Ağaç Tarım ve Hayvancılık Pazarlama Ticaret Limited Şirketi). Respondent’s website resolves from this domain name. The Respondent provided a copy of a service agreement between the Respondent and an internet services company; namely Metbil Teknoloji dated March 8, 2020.
The Respondent further contends that the words “toros” and “tarim” are geographic and descriptive “Toros” is the name of the most famous and high mountain ranges in Turkey and the word “tarim” (in English “agriculture”).
The Respondent also provided a copy of a commercial register; it shows their tradename is Toros Fidancılık Özel Ağaç Tarım ve Hayvancılık Pazarlama Ticaret Limited Şirketi since the year 2015. According to the Respondent; since the word “Toros” is also their company name and the word “tarim” (in English “agriculture”) is descriptive; they have rights and legitimate interest with the Domain Name <torostarim.net>.
The Respondent also stated that they are in good faith and the Complainant arguments have no grounds that he did not register or use the Domain Name in bad faith.
6. Discussion and Findings
Paragraph 15(a) of the Rules requires the panel to decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Under paragraph 4(a) of the Policy, the Complainant bears the burden of showing:
(i) that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Domain Name contains the Complainant’s well-known trademark TOROS with the descriptive word “tarim” (in English “agriculture”). The addition of this term does not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The generic Top-Level Domain (“gTLD") extension “.net” is generally not to be taken into consideration when examining the identity or similarity between the Complainant’s trademark and the Domain Name.
Therefore, the Panel finds that the Domain Name is confusingly similar to the trademark TOROS in which the Complainant has rights, satisfying the condition of the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Respondent has provided an evidence of the type specified in paragraph 4(c) of the Policy which is sufficient to rebut a claim to no right or legitimate interest, namely in providing evidence related to the word of “toros” being a copy of their commercial register. It would be possible that a company is able to register the word “toros” with different extensions in Turkey. In this case, the particular extension as used on the Respondent’s website is “fidancılık “which means “arboriculture” in English. Even tough the Respondent could have choice “fidancılık” as part of the domain name instead of “tarim” they nevertheless use the word “toros” as the main part of their company name.
However; it is clear that the Respondent has demonstrated bona fide offering of goods and services and that this sufficiently bears a relation to its use of the Domain Name (the Respondent’s full trade name – emphasis added – is Toros Fidancılık Özel Ağaç Tarım ve Hayvancılık Pazarlama Ticaret Limited Şirketi) to rebut the claim made against it.
In light of the above, the Panel finds that Complainant has not met its burden under paragraph 4(a)(ii) of the Policy to demonstrate that the Respondent has no rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad Faith
The Panel finds it’s not necessary in this case to analysis of the third condition relating to the registration and use of the disputed domain name in bad faith would not be required for deciding on the Complaint (because the rejection of the second condition already means that the Complaint should be denied).
The Panel does note that to the extent the Complainant considers it may have a broader trademark or unfair competition claim against the Respondent, nothing in the present decision precludes them from addressing that in a competent court.
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, <torostarim.net> be denied.
Dilek Ustun Ekdial
Date: August 16, 2021