WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Koçtaş Yapi Marketleri Ticaret A.S. v. Levent Basturk

Case No. D2013-0864

1. The Parties

The Complainant is Koçtaş Yapi Marketleri Ticaret A.S. of Istanbul, Turkey, represented by Istanbul Patent & Trademark Consultancy Ltd., Turkey.

The Respondent is Levent Basturk of Istanbul, Turkey.

2. The Domain Name and Registrar

The disputed domain name <koçtaş.net> [xn--kota-1oa63e.net] is registered with IHS Telekom, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 16, 2013. On May 16, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 16, 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. On May 31, 2013, the Center sent an email communication to the Complainant inviting it to clarify its submission to one (or two) appropriate mutual jurisdiction(s) with respect to any challenges that may be made by the Respondent to a decision by the Administrative Panel to transfer or cancel the disputed domain name. On May 31, 2013, the Complainant filed amendment to the Complaint.

On May 31, 2013, the Center transmitted the language of the proceedings document to the parties in both English and Turkish. On May 31, 2013, the Complainant requested English to be the language of the proceedings. The Respondent did not submit its comments.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 6, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 26, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 27, 2013.

On May 22, 2013, the Center advised the Registrar that the Center had noted that the disputed domain name had expired on May 15, 2013, and requested the Registrar to confirm that: (1) the domain name will be placed in Registrar lock status after the lapse of the expiry date until the UDRP proceedings are concluded; and (2) whether any action is required by the parties to keep the domain name under Registrar lock so that the administrative procedure can continue as required under the UDRP. The Registrar replied to the Center on May 22, 2013, stating that in order to keep the domain name active against expiry and deletion it must be renewed. On May 23, 2013, the Center wrote to the Complainant and to the Respondent to contact the Registrar and to confirm to the Center when the necessary arrangements had been made with the Registrar to ensure that the domain name remains active. On May 31, 2013, the Complainant wrote to the Center and the Registrar confirming that the disputed domain name had been renewed. On June 3, 2013, the Registrar wrote to the Center and the Complainant confirming that the disputed domain name had been renewed.

The Center appointed Gökhan Gökçe as the sole panelist in this matter on July 10, 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 was established in 1996 and belongs to Koç Holding A.S., one of Turkey’s top industrial conglomerates. It is one of the leading companies in the Turkish “do-it-yourself” (DIY) home renovation market. It operates about 30 stores in 18 Turkish provinces.

The Complainant owns and uses the trademark KOÇTAŞ and has registered a number of trademarks incorporating the word “koçtaş” as evidenced in the annexes to the Complaint. The first KOÇTAŞ trademark (no. 197425) was applied for before the Turkish Patent Institute on April 2, 1998 and registered on July 7, 1999 in Nice class 02. Since then the Complainant has registered numerous KOÇTAŞ and KOÇTAŞ-figurative trademarks in various classes.

The Complainant is also the owner of several domain names which incorporate its trademark. The Complainant registered <koctas.com>, <koctas.com.tr> in 1996 and <koçtaş.com> in 2006 and has been operating these website since.

The Respondent registered the disputed domain name on May 15, 2012. The Panel visited the disputed domain name on July 19, 2013, and observed that the disputed domain name does not resolve to an active website.

5. Parties’ Contentions

A. Complainant

In accordance with paragraph 4(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 that it has numerous trademarks incorporating its trademark KOÇTAŞ registered in 1999 and that it is the owner of the domain names <koctas.com>, <koctas.com.tr> registered in 1996 and <koçtaş.com> in 2006, as evidenced in the annexes of the Complaint.

“Koçtaş” is also the trade name of the Complainant.

The Complainant claims that the disputed domain name is identical to the Complainant'’s trademark as it wholly incorporates “koçtaş” and that the disputed domain name likely originates from the Complainant’s trademark KOÇTAŞ which the Complainant has been continuously using since 1996.

The Complainant cites Koçtas Yapi Marketleri Ticaret A.S. v. Yavuz Bayyigit / Omer Faruk Aksakalli, WIPO Case No. D2011-1278 and Koçtas Yapi Marketleri Ticaret A.S. v. Orhan Izgin, WIPO Case No. D2012-2245 in which the panel acknowledged the Complainant'’s trademark and trade name rights in KOÇTAŞ and its well-known status.

Rights or Legitimate Interests

The Complainant states that it has never granted the Respondent a license or permission to use or apply for a domain name incorporating KOÇTAŞ. The Complainant further states that the Respondent is not associated with or permitted by the Complainant to use its mark. The Complainant notes that it has prior rights in KOÇTAŞ which precede the Respondent’s registration of the disputed domain name.

The Complainant asserts that the Respondent has not been commonly known by the disputed domain name and that the Respondent does not have any trademarks or service marks in the disputed domain name.

The Complainant further asserts that KOÇTAŞ is a famous trademark which the Respondent is likely aware of as it is a Turkish individual/entity located in Turkey. The Complainant alleges that the Respondent’s reason for registering the disputed domain name is either to confuse Internet users for its own benefit and profit or to sell the disputed domain name to the Complainant for commercial gain.

The Complainant claims that it could not register the disputed domain name because of the unavailability and that the Respondent was fully aware of the Complainant’s rights in KOÇTAŞ at the time of registration.

Registered and Used in Bad Faith

The Complainant claims that the Respondent knew the Complainant’s trademarks at the time of registration of the disputed domain name and argues that registration and use of a domain name incorporating a famous mark is necessarily in bad faith where a respondent knew at the time of the registration that he could not make any actual use of the registered domain name without infringing on the trademark owner’s rights.

The Complainant asserts that the Respondent must have known that KOÇTAŞ is a registered and protected trademark of the Complainant and that this is a strong indication that the Respondent intended to create an association with the Complainant.

The Complainant further asserts that bad faith is shown by the Respondent’s use of the disputed domain name or lack thereof. The Complainant states that the Respondent has not placed any content on the website that relates to a business or has been created by the Respondent and that the Respondent has included superficial links to a handful of third parties’ commercial websites that do/do not even purport to relate to the Complainant but apparently create revenue for the Respondent.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1 Language of the Proceedings

Under paragraph 11 of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceedings shall be the language of the Registration Agreement. In the present case, the language of the Registration Agreement is Turkish.

The Complainant submitted its Complaint in English and requested the language of the proceedings to be English. The Respondent has not submitted a response. The Center notified the Respondent in both English and Turkish, and taking into account the Respondent’s default, the Panel concludes that, according to Rules, paragraph 11(a), the language of the proceedings shall be English, Inter-IKEA Systems B.V. v. SC Agis International Sport S.R.L, WIPO Case No. DRO2006-0001.

Therefore, the Panel has decided to accept the Complainant’s filings in English and issue a decision in English.

6.2 Substantive Elements of the Policy

As the Respondent has not filed a Response, the Panel may decide the dispute based on the Complaint and may accept all factual allegations as true. The Panel may also draw appropriate inferences from the Respondent’s default. Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009.

According to paragraph 4(a) of the Policy, the following three elements must be proven by the Complainant, 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.

A. Identical or Confusingly Similar

The Policy requires the Complainant to demonstrate that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Panel is satisfied that the Complainant is the owner of the trademark KOÇTAŞ as evidenced in the annexes to the Complaint and Turkish Patent Institute records. Further, while not dispositive under the first element, the Panel notes the Complainant has registered a number of domain names incorporating its trademark KOÇTAŞ which have been in use since 1996.

In relation to the disputed domain name, it is clear that the disputed domain name fully incorporates the Complainant’s trademark and the only difference between the disputed domain name and the Complainant’s trademark is the addition of the “.net” extension. The Panel finds that the addition of the “.net” 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. D2010-1941. 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, 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 to the Complainant’s KOÇTAŞ 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) of the Policy, 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 an initial 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 generally deemed to have satisfied paragraph 4(a)(ii) of the Policy.

The Complainant claims that it has never granted the Respondent a license or permission to use or to apply for a domain name incorporating KOÇTAŞ; the Respondent is not associated with or permitted by the Complainant to use its mark; the Respondent has not been commonly known by the disputed domain name; the Respondent does not have any trademarks or service marks in the disputed domain name. The Complainant alleges the Respondent’s reason for registering the disputed domain name is either to confuse Internet users for its own benefit and profit or to sell the disputed domain name to the Complainant for commercial gain. The Complainant further claims that it could not register the disputed domain name because of the unavailability and that the Respondent was fully aware of the Complainant’s rights in KOÇTAŞ at the time of registration.

The Panel finds that there is no evidence to suggest that the Respondent has any rights in any trademarks or service marks which are identical, similar or related to the disputed domain name. The Panel accepts that the Respondent is not commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights.

The Panel visited the disputed domain name on July 19, 2013, and found that the disputed domain name does not resolve to a website. Therefore, the Panel finds that the Respondent is not making use of the disputed domain name in connection with a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the disputed domain name.

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 rights or legitimate interests in the disputed domain name. The Respondent did not submit a response and therefore the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name.

The requirements of 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 website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on the respondent’s website or location.

The Complainant has been using its trademark KOÇTAŞ since 1996 and has registered numerous KOÇTAŞ and KOÇTAŞ-figurative trademarks since 1999. Further, as stated in previous decisions issued under the Policy, the Complainant is well known and widely recognized in Turkey, Koçtaş Yapi Marketleri Ticaret A.S. v. Yavuz Bayyigit / Omer Faruk Aksakalli, WIPO Case No. D2011-1278 and Koçtaş Yapi Marketleri Ticaret A.S. v. Orhan İzgin, WIPO Case No. D2012-2245. On the other hand, the disputed domain name was registered in 2012 and the Respondent appears to be a Turkish individual located in Turkey. As the Complainant’s trademark which is incorporated in the disputed domain name was registered and used well before the Respondent’s registration of the disputed domain name, the Panel is of the opinion that it is highly unlikely that the Respondent was unaware of the Complainant’s trademark KOÇTAŞ at the time the disputed domain name was registered. Thus, the Panel finds that the Respondent must have been aware of the Complainant’s trademark at the time of registration. 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.

Furthermore, the Panel finds that the Respondent’s failure to respond to the Complaint reinforces the inference of bad faith registration and bad faith use, The Hongkong and Shanghai Banking Corporation Limited v. Bill Lynn, WIPO Case No. D2001-0915.

The Panel visited the disputed domain names on July 19, 2013, and observed that the disputed domain name does not resolve to an active website. In light of the facts that (i) the Complainant’s trademark has a strong reputation and is widely known in Turkey, (ii) the disputed domain name was registered well after the registration and use of the Complainant’s trademark, (iii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the disputed domain name, and that (iv) the Respondent did not respond to the Complaint, the Panel is of the opinion that the passive holding of the disputed domain name by the Respondent amounts to the Respondent acting in bad faith, 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 <koçtaş.net> [xn--kota-1oa63e.net] be transferred to the Complainant.

Gökhan Gökçe
Sole Panelist
Date: July 23, 2013