WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ÖZALTUN OTELCİLİK TURİZM VE TİCARET LTD. ŞTİ, Allstar Hotels LLC and Mr. Metin ALTUN v. E-k Turizm Otelcilik ve Danışmanlık Ltd. Şti

Case No. D2012-0686

1. The Parties

The Complainants are ÖZALTUN OTELCİLİK TURİZM VE TİCARET LTD. ŞTİ. of Istanbul, Turkey, Allstar Hotels LLC of New York, Unites States of America and Mr. Metin ALTUN of Istanbul, Turkey, represented by Istanbul Patent & Trademark Consultancy Ltd., Turkey.

The Respondent is E-k Turizm Otelcilik ve Danışmanlık Ltd. Şti of Aydin, Turkey, represented by Gökhan Gökçe and Ayla Özenbaş, Turkey.

2. The Domain Name and Registrar

The disputed domain name <etatil.com> is registered with Directi Internet Solutions Pvt. 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 April 2, 2012. On April 2, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 4, 2012, 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 April 13, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response May 3, 2012. The Response was filed with the Center May 3, 2012.

Supplemental filings were submitted by the Complainant and the Respondent on May 23, 2012 and May 28, 2012, respectively.

The Center appointed Luca Barbero, Kaya Köklü and Brigitte Joppich as panelists in this matter on June 1, 2012. 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 Complainants are two associated companies and a Turkish individual, which together own and operate a vacation web portal at “www.tatil.com”.

The Complainants’ domain name <tatil.com> was registered on May 15, 1997; the Complainants state that this domain name was first used on September 14, 2004.

The Complainant ÖZALTUN OTELCİLİK TURİZM VE TİCARET LTD. ŞTİ. is the owner of the Turkish registration No. 2007/46771 for the service mark TATIL.COM (word and device), filed on August 31, 2007, in classes 39 and 43.

The Complainant ÖZALTUN OTELCİLİK TURİZM VE TİCARET LTD. ŞTİ. is the owner of the Turkish registration No. 2009/24538 for the service mark TATIL.COM.TR, filed on June 18, 2009, in classes 39 and 43.

The disputed domain name <etatil.com> was registered on August 8, 2004.

5. Parties’ Contentions

A. Complainants

The Complainants state that the disputed domain name fully incorporates the trademark TATIL.COM, with the addition of the letter “e”, which would not be sufficient to exclude confusing similarity. The Complainants further assert that, since the trademark TATIL.COM is used in connection with a wide variety of travel and touristic services, the public would perceive goods and services offered under the Complainants’ trademark or a variation of the same as emanating from or being endorsed by or affiliated with the Complainants.

With reference to rights or legitimate interests in the disputed domain name, the Complainants state that they have not licensed or otherwise permitted the Respondent’s use of their service mark and that the Respondent is not commonly known by the disputed domain name.

The Complainants also indicate that, in light of the alleged similarity between the disputed domain name and the Complainants’ mark TATIL.COM and domain name <tatil.com>, consumers might be mistaken into believing that the services offered by the Respondent are the ones of the Complainants or of one of the Complainants’ subsidiaries. This conduct, according to the Complainants, would constitute a trademark infringement as well as an act of unfair competition according to the Turkish law.

Regarding bad faith at the time of the registration, the Complainants contend that they have prior rights in the service mark TATIL.COM and state: “It is important for a finding of bad faith that the Respondent knew of the Complainant’s mark. When the Respondent registered the domain name, it is likely the Respondent, residing in Turkey, knew that TATIL.COM was the trademark of the Complainant. It registered the disputed domain name because it would be recognized as such.”

The Complainants also assert that the Respondent registered the disputed domain name with the purpose of disrupting the business of the Complainants and that the Respondent is gaining commercial benefit by attracting Internet users to its website and creating a likelihood of confusion with the Complainants’ website “www.tatil.com” through the use of the disputed domain name for a website which provides the same services offered by the Complainants and reproduces the colour and general design of the Complainants’ website “www.tatil.com”.

B. Respondent

The Respondent highlights that the disputed domain name <etatil.com> was registered on August 8, 2004 and states that it was actively used since 2005 in bona fide to promote holidays and travel agency services.

The Respondent states that in early 2011 the Complainant and the Respondent “worked together whereby the Complainant promoted a number of hotels which are promoted by the Respondent as evidenced in the agreement executed between the parties and the payments received from the Complainant”.

Attached to the Response is some correspondence in Turkish with the Complainants regarding a possible business cooperation and samples of invoices issued by the Respondent to the Complainants.

The Respondent alleges that the Complainants achieved a turnover of approximately TL 214,600 through hotels which were subject of this cooperation and informs the Panel that, in mid 2011, it was approached by the Complainants who requested it to act as their agent in Aegean region and to transfer the disputed domain name to the Complainants.

After the Respondent’s refusal to transfer the disputed domain name to the Complainants, the Respondent received a legal notification, on November 16, 2011, stating that it had infringed the Complainants’ trademark rights and claiming damages of TL 1,000 per day in the event that the disputed domain name would not be transferred to the Complainant. The Respondent replied to that legal notification, on December 19, 2011, stating that it had made significant investments in the promotion of the disputed domain name and the services offered through the correspondent website and indicating that: i) the Complainant’s logo is not similar to the Complainant’s one, and that; ii) the word “tatil” is a generic word which means “holiday” in Turkish that the Respondent is entitled to use.

The Respondent concludes that the Complaint was filed in bad faith, resulting in an abuse of the UDRP administrative proceeding to obtain the transfer of the disputed domain name, and requests, therefore, that the Panel considers Reverse Domain Name Hijacking.

C. Parties’ Supplemental Filings

Both the Complainants and the Respondent filed supplemental filings including some additional allegations which are summarized herein:

A. Complainants

The Complainants highlight that, based on the evidence submitted by the Respondent in its Response, the disputed domain name was used in the past years by third parties, namely “Anis Tour” and “Sk Seiren Travel Tour”, and has been used by the Respondent as late as 2010.

With reference to the agreement mentioned by the Respondent, the Complainants rebut that it has never existed and informs the Panel that the Complainants had business relationships only with hotels controlled by the Respondent (Omer Holiday Village, Tusan Beach Resort, Atlantique Holiday Club, Ayvalik Beach Resort) for hotel reservations made through the Complainants’ website “www.tatil.com”.

The Complainants further state that, in 2011, they discovered that the disputed domain name was causing confusion with their website “www.tatil.com” among Internet users; therefore, they stopped selling the Respondent’s services and sent to the Respondent a settlement proposal, requesting also the transfer of the disputed domain name. The Complainants highlights that it never provided the Respondent with their consent to register their trademark as a domain name.

With reference to the Respondent’s claims regarding the Complainants’ mark TATIL.COM (word and design), the Complainants state that the inclusion of design elements is not sufficient to exclude confusing similarities, since the word portion of the mark and of the disputed domain name are identical.

The Complainants also allege that none of the conditions for a finding of reverse hijacking occurred in the present case, since the Complaint is based on the Complainants’ trademark rights and the business relationships between the parties prior to this administrative proceeding did not involve the disputed domain name but only the Respondent’s hotels.

B. Respondent

The Respondent states that the Complainants have failed to demonstrate the Respondent’s lack of legitimate interest in the disputed domain name and contends that the disputed domain name has been used since 2005 to promote the Respondent’s travel services, albeit they were initially offered through other entities (“Anis Tour” and then “SK Sieren Travel Tour”).

The Respondent contends that it has used the disputed domain name in connection with a bona fide offering of goods or services before any notice of the dispute and before the Complainants established their presence in the market. The Respondent also underlines that it is making a fair use of the generic term “tatil” to describe its business, without intent to divert consumers or to tarnish the mark at issue.

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainants must prove each of the following:

(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainants have 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

As mentioned in the paragraphs above, the Complainants contend that the disputed domain name is confusingly similar to their trademark TATIL.COM (word and design), which was filed on August 31, 2007 before the Turkish Patent Office. The Complainants have also provided evidence of ownership of a trademark registration for TATIL.COM.TR, filed in 2009.

The Panel notes that the registration of the disputed domain name, which is dated August 8, 2004, predates the trademark registrations the Complainants rely upon. As recognized by the majority of the UDRP panelists and summarized in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0“), at paragraph 1.4, the registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity according to paragraph 4(a)(i) of the Policy, since the UDRP does not make specific reference to the date on which the holder of the trademark or service mark acquired rights. In such circumstances, anyway, it may be difficult to prove that the domain name was registered in bad faith under the third element of the UDRP.

This being said, in the present case, the Panel considers that the Complainants have established rights only in the combination of the word and figurative elements which constitute their trademarks and that the design element is the sole source of distinctiveness of their trademarks. The Panel is thus not satisfied by the evidence submitted by the Complainants that the term “tatil”, which is the only common element between the Complainants’ marks and the disputed domain name, has itself become distinctive of the Complainants’ services, since “tatil” is a generic Turkish word which means “holiday” or “vacation”. See, among the decisions addressing similar situations, Meat and Livestock Commission v. David Pearce aka OTC / The Recipe for BSE, WIPO Case No. D2003-0645. See also WIPO Overview, at paragraph 1.1.

In any event, given its findings under the second and third elements of the Policy, the Panel does not find it necessary to finally determine whether the Complainants’ registered trademarks alone are sufficient to enable them to satisfy the test for identity or confusing similarity.

B. Rights or Legitimate Interests and Bad Faith Registration and Use

In light of the fact that the “tatil” is a generic Turkish word which means “holiday” or “vacation” and that the prefix “e” is commonly used as an abbreviation for “electronic” or for online products or services and thus the term “etatil” indeed describes the services which have been provided on the Respondent’s website - even before the filing of the Complainants’ trademarks - the Panel is of the opinion that the Respondent, before any notice of the dispute, has used the disputed domain name in connection with a bona fide offering of goods or services for purpose of the Policy.

Moreover, at the time the disputed domain name was registered in August 2004, the Respondent could have only become aware of the existence of the Complainants’ domain name <tatil.com>, since it was already registered as of 1997 and thus not available for registration. However, as the Complainants themselves stated, the website “www.tatil.com” was not active at that time, since the Complainant’s domain name <tatil.com> was first used on September 14, 2004, more than a month after the registration of the disputed domain name. Furthermore, the Complainants’ figurative trademark TATIL.COM was filed before the Turkish Patent Office only in August 2007.

Therefore, the Panel finds that the Respondent did not register the disputed domain name in bad faith.

With reference to the use of the disputed domain name, the Panel notes that the website to which the disputed domain name resolves neither displays the Complainants’ figurative trademarks nor imitates the look and feel of the Complainants’ website “www.tatil.com”. In the Panel’s view, the use of <etatil.com> to promote holiday services is consistent with the meaning of the disputed domain name, which is constituted by the common prefix “e” and the Turkish generic term for “holiday”.

The Panel thus concludes that also the use of the disputed domain name made by the Respondent does not amount to bad faith.

C. Reverse Domain Name Hijacking

Reverse domain name hijacking is defined in paragraph 1 of the Rules as using the Policy in bad faith to attempt to deprive the domain-name holder of a domain name.

As highlighted, amongst others, in Ville de Paris v. Salient Properties LLC, WIPO Case No. D2009-1279 (citing Jazeera Space Channel TV Station v. AJ Publishing aka Aljazeera Publishing, WIPO Case No. D2005-0309) “[a]llegations of reverse domain name hijacking have been upheld in circumstances where a respondent’s use of a domain name could not, under any fair interpretation of the facts, have constituted bad faith, and where a reasonable investigation would have revealed the weaknesses in any potential complaint under the Policy” (see also Goldline International, Inc v. Gold Line, WIPO Case No. D2000-1151).

In the case at hand, it is uncontested that the registration date of the disputed domain name precedes the dates of the Complainants’ relevant trademark registrations and the evidence shows that the disputed domain name has been used as part of a bona fide business of the Respondent. The Complainant was aware of those facts before submitting its Complaint and cannot reasonably claim exclusive rights in the generic term “tatil” (“holiday”), which constitutes the only common element between the Complainants’ marks and the disputed domain name.

As stated, inter alia, in Prime Pictures LLC v. DigiMedia.com L.P., WIPO Case No. D2010-1877, a reasonable investigation prior to the filing of the Complaint would have revealed the weakness in the Complainant’s case since there was no basis in the Complaint for alleging that the disputed domain name was registered in violation of the Complainants’ rights.

7. Decision

For all the foregoing reasons, the Complaint is denied and the Panel declares that this is an appropriate case to make a finding of Reverse Domain Name Hijacking.

Luca Barbero
Presiding Panelist

Kaya Köklü
Panelist

Brigitte Joppich
Panelist

Dated: June 23, 2012