WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Hürriyet Gazetecilik ve Matbaacılık Anonim Şirketi v. SADECEHOSTING.com Internet Hizmetleri San Tic Ltd Sti, DNS Administrator / Tahir Zaimoglu

Case No. DTV2013-0002

1. The Parties

The Complainant is Hürriyet Gazetecilik ve Matbaacılık Anonim Şirketi of Istanbul, Turkey, represented by Dericioğlu & Yaşar Law Office, Turkey.

The Respondent is SADECEHOSTING.com Internet Hizmetleri San Tic Ltd Sti, DNS Administrator / Tahir Zaimoglu of Istanbul, Turkey.

2. The Domain Name and Registrar

The disputed domain name <hurriyet.tv> 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 February 1, 2013. On February 1, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 4, 2013, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 13, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 5, 2013. On February 18, 2013, the Center received an informal email communication from the Respondent. The Response was filed with the Center on February 20, 2013. On March 1, 2013, the Center received a Supplemental Filing from the Complainant. On March 6, 2013, the Center informed the parties about the commencement of panel appointment process.

The Center appointed Gökhan Gökçe as the sole panelist in this matter on March 18, 2013. 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, Hürriyet Gazetecilik ve Matbaacılık Anonim Şirketi, is one of the biggest group companies of Doğan Sirketler Grubu A.Ş. which publishes eight dailies (Hürriyet, Milliyet, Radikal, Posta, Vatan, Fanatik, Referans and Hürriyet Daily News), 25 periodicals, children and teen magazines, and books.

The Complainant owns and uses the trademark HURRIYET and has registered a number of trademarks incorporating the word “hürriyet” as evidenced in the annexes to the Complaint. The Complainant has used its trademark HÜRRIYET since 1948 and registered it with the Turkish Patent Institute on July 13, 1988. The Complainant registered its trademark HÜRRIYET with the United States Patent and Trademark Office on November 1, 2005, with Madrid system on December 28, 1994 and as a community trademark with the OHIM on June 25, 1999.

The Complainant is the owner of several domain names which incorporate its trademark. The Complainant registered the domain name <hurriyet.com.tr> on October 31,1996, <hürriyet.com.tr> on December 4, 2006, <hurriyetoto.com.tr> on September 4, 2006, <hurriyetemlak.com.tr> on February 10, 2006, <hurriyetemlak.com.tr> on December 4, 2006, <hurriyetoto.com> on September 2, 2006, <hurriyetemlak.com> on April 12, 2005, and <hurriyet.com> on August 15, 2001 and has been actively using each since their registration. The Complainant also provides television broadcasting services through its website “www.webtv.hurriyet.com.tr”.

The registrant of the disputed domain name has been identified by the concerned Registrar as SADECEHOSTING.com Internet Hizmetleri San Tic Ltd Sti, DNS Administrator. According to the Registrar, the Respondent registered the disputed domain name on October 28, 2011.

5. Parties’ Contentions

A. Complainant

In accordance with paragraph 4(b)(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.

Identical or Confusingly Similar

The Complainant submits HÜRRIYET is its trademark, which has been used since 1948 and has reached a level of recognition so that the public recognizes that this trademark indicates goods or services provided by the Complainant. The Complainant registered its trademark HURRIYET with the Turkish Patent Institute on July 13, 1988. Furthermore, the Complainant registered its trademark HURRIYET with the United States Patent and Trademark Office on November 1, 2005, with WIPO Madrid system on December 28, 1994 and as a community trademark with the OHIM on June 25, 1999, as evidenced in the annexes to the Complaint.

The Complainant notes that it has also registered a number of domain names incorporating its trademark HÜRRIYET. The Complainant registered the domain name <hurriyet.com.tr> on October 31, 1996, <hürriyet.com.tr> on December 4, 2006, <hurriyetoto.com.tr> on September 4, 2006, <hurriyetemlak.com.tr> on February 10, 2006, <hurriyetemlak.com.tr> on December 4, 2006, <hurriyetoto.com> on September 2, 2006, <hurriyetemlak.com> on April 12, 2005, and <hurriyet.com> on August 15, 2001 and has been actively using each since their registration.

The Complainant states that the disputed domain name was registered well after the Complainant’s trademarks and after the Complainant’s registration of its domain names. The Complainant contends it is inevitable that there is a high possibility of Internet users being confused as the disputed domain name are almost identical to the Complainant’s registered domain name and that the denomination “.tv” does not remove the similarity between the disputed domain name and the Complainant’s trademarks and domain names. Furthermore, the disputed domain name incorporates its trademark which is recognized as an indicator of goods and services to be offered by the Complainant and have become to be a symbol of quality in the minds of the consumers.

Rights or Legitimate Interests

The Complainant submits that it has actively been using its trademark in domain names and the Respondent’s use of the Complainant’s trademark in the disputed domain name takes unfair advantage of the marks since the Complainant’s trademark registration is previous to the Respondent’s registration of the disputed domain name.

The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name as the Respondent has no trademark registration similar to the disputed domain name and has no personal rights in the name “hürriyet”.

The Complainant submits it has never granted the Respondent a license or permission to use the mark HÜRRIYET.

The Complainant submits there is no evidence that the Respondent used the disputed domain name in connection with a bona fide offering of goods or services, 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 contends that these factors all indicate the Respondent’s motive in registering the disputed domain name is merely to take unfair advantage of the Complainant’s trademark.

Registered and Used in Bad Faith

The Complainant contends its trademark HÜRRIYET has become a symbol of quality and it has become well known and recognized throughout Turkey and Europe. It is clear that the disputed domain name, which are almost identical with the Complainant’s HÜRRIYET trademark has been registered by the Respondent to gain improper benefit from the Complainant’s trademark’s reputation. Furthermore, the Complainant submits that the Respondent undoubtedly knew the disputed domain name was identical to the Complainant’s trademark at the time of registration.

The Complainant notes that the disputed domain name is for sale for USD 50.000 and that registering and putting up for sale for USD 50.000 which is a very high amount proves that the Respondent has knowledge about the Complainant’s HÜRRIYET trademark and uses it for commercial gain which proves the bad faith of the Respondent under paragraph 4(b)(iv) of the Policy.

The Complainant further states that in addition to being for sale, the disputed domain name is in a parking mode and the Respondent is a passive holder. The Complainant avers that the Respondent registered the disputed domain name primarily for the purpose of attracting Internet users by creating a likelihood of confusion with the Complainant’s mark and it is evident that the disputed domain name was registered and used by the Respondent in bad faith.

The Complainant also notes that the following domain names have been transferred to the Complainant in previous UDRP proceedings: <hurriyet.com>, <hurriyet.org,>, <hurriyetemlak.com>, <hurriyetoto.com>, <hurriyetemlak.org>, <hurriyetport.com>, <hurriyetport.net>.

B. Respondent

On February 20, 2013, the Center received an online submission by Tahir Zaimoglu with contact information different from the one confirmed by the Registrar.

In the online submission, the Respondent states that “hürriyet” means “liberty” in Turkish and is a “highly brandable” word and that the Complainant is a newspaper, not a television station. The Respondent further states that it plans to use the disputed domain name for a crowd generated Internet TV station where everyone becomes a TV broadcaster at home from their PC or with their mobile phones/tablets and further states that the infrastructure necessary is currently being built by Hosting Internet Hizmetleri A.Ş.

The Respondent contends that the disputed domain name is not related to the Complainant but stands for freedom, liberty and independence, and that it never tried to mislead Internet users for commercial gain.

C. Complainant’s Supplemental Filing

Upon the receipt of the Respondent’s submission, the Complainant states that its HÜRRIYET trademarks are also registered in class 38 for “radio and television broadcasting services” and that the Complainant also provides television broadcasting services through the website “www.webtv.hurriyet.com.tr”.

The Complainant further states that the Respondent’s primary purpose is to sell the disputed domain name as it can be seen on <projectz.com>.

6. Discussion and Findings

The online submission received by the Center as a response to the Complaint was filed by Tahir Zaimoglu whose contact information is different from the one confirmed by the Registrar. However, given the fact that the Complainant has not objected to the response, the Panel accepts the Respondent’s submission.

With respect to the Complainant’s supplemental filing, the Panel has sole discretion to decide whether or not to consider supplemental filings under the Rules, paragraph 10(d). The Panel has, therefore, decided to accept the supplemental filing of the Complainant and to take it into consideration when rendering its Decision.

The Panel turns to the merits of the case, paragraph 4(a) of the Policy sets forth the following three elements which the Complainant must prove, during the administrative proceedings, to merit a finding that the disputed domain name be transferred to the Complainant:

(a) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(b) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(c) the disputed domain name has been registered and is being used in bad faith.

Pursuant to paragraph 15(a) of the Rules, the Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

A. Identical or Confusingly Similar

The Policy simply requires the Complainant to demonstrate that the disputed domain name is identical or confusingly similar to a trademark in which it has rights. The Panel is satisfied that the Complainant is the owner of the trademark HÜRRIYET as evidenced in the annexes to the Complaint. Although the Complainant contends that its trademark has been used since 1948, as its registration with the Turkish Patent Institute on July 13, 1988 predates the registration of the disputed domain name, the Complainant has established registered trademark rights and there is no need for the Panel to consider earlier pre-registration use of its trademark HÜRRIYET.

While not dispositive under the first element, the Panel notes the Complainant has registered a number of domain names incorporating its trademark HÜRRIYET. The Complainant registered the domain name <hurriyet.com.tr> on October 31, 1996, <hürriyet.com.tr> on December 4, 2006, <hurriyetoto.com.tr> on September 4, 2006, <hurriyetemlak.com.tr> on February 10, 2006, <hurriyetemlak.com.tr> on December 4, 2006, <hurriyetoto.com> on September 2, 2006, <hurriyetemlak.com> on April 12, 2005, and <hurriyet.com> on August 15, 2001 and has been actively using each since their registration. It is clear that the only difference between the disputed domain name and the Complainant’s registered domain names is the extensions “.com.tr” and “.tv”.

The Panel also notes that the Complainant has certain registered domain names with the Turkish Patent Institute. The Turkish Patent Institute states that “com.tr” is a domain used by persons and legal entities for commercial purposes and official documentation is required which must certify that the domain name applied for is the applicant’s registered trademark or corporate name. Therefore, the procedure is quite stringent and demonstrates that as the Complainant is the registered owners of the referenced “.com.tr” domain name it correspondingly lends support to the strength of the mark.

In relation to the disputed domain name <hurriyet.tv> , the Panel finds the addition of the “.tv” extension is irrelevant when determining whether the disputed domain name is confusingly similar to the Complainant's trademark, PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189. It has been stated in several decisions by other UDRP panels that the incorporation of a trademark in its entirety into a domain name may be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark, Hürriyet Gazetecilik ve Matbaacılık Anonim Şirketi v. Moniker Privacy Services / Kemal Demircioglu, WIPO Case No. D2010-1941; Bayerische Motoren Werke AG, Sauber Motorsport AG v. Petaluma Auto Works, WIPO Case No. D2005-0941. The Panel recognizes the Complainant’s rights and concludes that the disputed domain name is identical and confusingly similar with the Complainant’s HÜRRIYET trademark.

The Panel finds that the requirements in paragraph 4(a)(i) of the Policy are fulfilled; consequently, the Panel finds for the Complainant on the first element of the Policy.

B. Rights or Legitimate Interests

In accordance with paragraph 4(a)(ii), the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It is established in numerous UDRP decisions that it is difficult for a complainant to prove a negative and for that reason the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110. Once the Complainant makes a prima facie case, the burden of demonstrating rights or legitimate interests in the disputed domain name shifts to the Respondent. The Policy at paragraph 4(c) provides various ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

Pursuant to paragraph 4(c) of the Policy, the Respondent may exhibit that it has rights or legitimate interests in the domain name by showing one or more of the following circumstances:

(i) before any notice to the Respondent of the dispute, the Respondent’s 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) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or

(iii) the Respondent is 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.

Thus, if the Respondent proves any of these elements or indeed anything else that shows it has a right or legitimate interest in the disputed domain name, the Complainant will have failed to discharge its onus and the Complaint will be dismissed.

The Complainant contends that the Respondent has no right or legitimate interest in the disputed domain name; it has no supporting trademark registration and has neither association to the Complainant, nor a connection to the disputed domain name and is not commonly known by the disputed domain name. The Complainant has not granted the Respondent a license or permission to use the mark HÜRRIYET or to apply for or use a domain name incorporating that mark. The Complainant alleges the Respondent’s reason for registering the disputed domain name is to confuse Internet users and to create a connection to the Complainant to take unfair advantage of its trademark HÜRRIYET.

Furthermore, the Respondent is not making use of the disputed domain name in connection with a bona fide offering of goods or services. The Respondent registered the disputed domain name approximately seventeen months ago. He has not made active use of the disputed domain name to host a crowd generated Internet TV, nor has he made any other apparent use of the name. The Respondent claims that it is developing a website for the disputed domain name and intends to use the website for a crowd generated Internet TV station where everyone becomes a TV broadcaster at home from their PC or with their mobile phones/tablets and further states that the infrastructure necessary is currently being built by Hosting Internet Hizmetleri A.S. However, it has failed to provide any evidence of preparations for intended use. The Respondent has failed to provide evidence of “demonstrable preparations” to use the disputed domain name for a bona fide offering of goods or services, which suggests there is no such intention, Helen Fielding v. Anthony Corbert aka Anthony Corbett, WIPO Case No. D2000-1000. Aside from the Respondent’s statement there is no evidence of such intended use and the Panel does not accept that this alone provides sufficient evidence to draw the conclusion that the disputed domain name will in fact be used for a bona fide offering of goods or services as the Respondent claims.

The disputed domain name resolves in a page stating the it is offered for sale. The Panel finds that this provides concrete evidence that the disputed domain name was registered and is being used in bad faith and for commercial gain, not for any legitimate reason. Offering a domain name for sale may be considered a bona fide offering of goods and services only if it does not conflict with another’s trademark rights and there are no other factors that would render such use non-legitimate. It is obvious to this Panel that the Respondent had knowledge of the Complainant’s trademark at the time it registered the disputed domain name and the Respondent has not established a right or legitimate interest in the disputed domain name, Allocation Network GmbH v. Steve Gregory, WIPO Case No. D2000-0016.

As discussed, there is no evidence that the Respondent has made any effort or has any intention to use the disputed domain name for any purpose or legitimate activity consistent with having rights or legitimate interests. Therefore, the Panel infers that there is no intention of legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain or to misleadingly divert consumers.

Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has established a prima facie case that the Respondent lacks a right or legitimate interest in the disputed domain name. The Respondent has not provided evidence of its rights or legitimate interests in the disputed domain name. The Panel, therefore, concludes that the Respondent has not satisfied paragraph 4(c) of the Policy and concludes that the Respondent has no rights or legitimate interests in the disputed domain name.

The requirements of paragraph 4(a)(ii) of the Policy are fulfilled and, consequently, the Panel finds in favor of the Complainant on the second element 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 your 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 web site 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 the respondent's web site or location or of a product or service on the respondent's web site or location.

The Complainant’s trademark HÜRRIYET was registered and used long before the Respondent’s registration of the disputed domain name. Furthermore, as discussed above, the Complainant has registered domain names that are almost identical to the disputed domain name. The Respondent has not denied knowledge of the Complainant’s trademarks. The Panel, in accordance with previous decisions issued under the Policy, is of the opinion that actual knowledge of the Complainant's trademark at the time of registration of the disputed domain name is to be considered as an inference of bad faith. Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226.

Despite the fact that the Respondent has stated it had intentions to use the disputed domain name as a crowd generated Internet TV station, there is no evidence to support its contentions. Furthermore, the Complainant contends that it has several trademarks which incorporate “hürriyet” and are also registered in class 38 for “radio and television broadcasting services” and that the Complainant also provides television broadcasting services through the website “www.webtv.hurriyet.com.tr”. Therefore, even if the Respondent was to provide evidence to support its contentions, any such use would infringe the Complainant’s trademarks rights.

Additionally, the fact that the Respondent is offering the disputed domain name for sale for USD 50.000, a price obviously in excess of the Respondent’s cost of registering the disputed domain name, further demonstrates bad faith registration and use. It is well established that registration for the primary purpose of selling, renting, or otherwise transferring the domain name to the complainant who is the owner of the trademark or to a competitor of the complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name is evidence of bad faith, Skype Limited v. Xiaochu Li, WIPO Case No. D2005-0996.

As in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, after examining all circumstances surrounding the registration and use of the disputed domain name, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith. Accordingly, the Panel finds in favor of the Complainant on the third element 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 <hurriyet.tv> be transferred to the Complainant.

Gökhan Gökçe
Sole Panelist
Date: April 1, 2013