WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Modanisa Elektronik Magazacilik ve Ticaret A.S v. Whois Agent / Whois Privacy Protection Service, Inc./ Alpay Polat
Case No. D2015-0377
1. The Parties
The Complainant is Modanisa Elektronik Magazacilik ve Ticaret A.S of Istanbul, Turkey, represented by Net Koruma Danismanlik Hizmetleri, Turkey.
The Respondent is Whois Agent, Whois Privacy Protection Service, Inc. of Washington, United States of America / Alpay Polat of Ankara, Turkey, self-represented.
2. The Domain Name and Registrar
The disputed domain name <nisa.moda> is registered with Name.com LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 4, 2015. On March 4, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 4, 2015, 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 March 12, 2015 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 amended Complaint on March 16, 2015.
The Center received email communications from the Respondent on March 10, 2015, March 11, 2015 and March 12, 2015.
The Center verified that the Complaint together with the amended 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 March 17, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 6, 2015. The Response was filed with the Center on April 1, 2015.
The Center appointed Emre Kerim Yardimci as the sole panelist in this matter on April 23, 2015. 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 Complainant submitted a Supplemental Filing, on May 2, 2015, to which the Respondent replied on May 4, 2015 by simply reiterating its previous response.
In light of the Supplemental Filings submitted by the parties, that the Panel decided to consider in this proceedings, the decision due date was postponed to May 18, 2015.
4. Factual Background
The Complainant is a Turkish e-commerce company which provides services in the area of fashion industry, offering branded products designed for Muslim women wear, accessories, jewelry, and beauty products through its online store “www.modanisa.com”.
The Complainant obtained several Turkish, Jordanian and CTM trademark registrations in classes 35, 25 and 41;
- Turkish Trademark registration MODANISA.COM No. 2011/06634 filed on January 26, 2011;
- Turkish Trademark registration MODANISA.COM No. 2011/95185 filed on November 18, 2011;
- Turkish Trademark registration MODANISA.COM No. 2012/10651 filed on February 2, 2012;
- Turkish Trademark registration MODANISA No. 2014/22377 filed on March 17, 2014;
- CTM registration MODANISA No. 010948198 filed on June 7, 2012;
- Jordanian Trademark registration No. 125913 filed on October 3, 2012.
The disputed domain name was registered on August 30, 2014 through a privacy service. The Registrar-identified registrant of the disputed domain name is a Turkish citizen Alpay Polat residing in Ankara, Turkey.
The disputed domain name <nisa.moda> is pointed to the web site “www.nisa.moda”, which is blog for wear, accessories, jewelry, decoration and baby wear targeting Muslim women. No reference is made as to the owner of the website or to the person operating the website.
5. Parties’ Contentions
The Complainant contends that the disputed domain name <nisa.moda> is identical to the trademark MODANISA in which the Complainant has registered rights.
The Complainant highlights that the trademark and domain name in question are formed by the words “moda” and “nisa” and that the only difference is that these words switched their position.
The Complainant asserts that its trademark MODANISA is known by consumers of all ages and that it is directly identified with the Complainant as soon as it is seen or heard and has reached a level of recognition that could have been achieved by only few trademarks and that the disputed domain name was registered in a way to create the impression of series of mark together with the Complainant’s trademark, which has been used as a trademark and a domain name since 2010. According to the Complainant, when all these facts are taken into consideration it is quite clear that the use of disputed domain name <nisa.moda> will give rise to confusion with the MODANISA trademark.
The Complainant further asserts that it did not give permission or license to the Respondent for the usage of the marks MODANISA.COM and MODANISA and that 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 points out that the Respondent acquired and is using the disputed domain name in bad faith since:
- The Respondent and the Complainant are operating in the same field of activity,
- The content of the respective website is the same,
- The Respondent registered the disputed domain name in the aim of obtaining improper benefit from the reputation acquired by the Complainant and its trademark,
- The disputed domain name resolves to a website offering services in direct competition with the Complainant’s services and that such use clearly threatens to divert actual clients away from the Complainant and disrupt the Complainant’s business,
- The Complainant also has long-standing rights in the MODANISA trademark in the related sector since 2010 and also the Complainant has a “trustable store” certificate and also in 2014 it has been chosen as “the most recommended ecommerce company with 12,217 recommendations”. Moreover, the Complainant asserts that “www.modanisa.com” is the 702th most visited website in Turkey and its “Modanisa Facebook” page official is liked and followed by 1,770,627 people and these facts prove that the MODANISA trademark has a well-known character in the related sector.
- Therefore the Complainant contends that considering that the owner of the disputed domain name is a Turkish citizen operating in the same field, it is unconceivable the disputed domain name was created without the Complainant’s trademark in mind.
The Respondent states that the disputed domain name is composed of two parts “nisa” and “moda”.
The Respondent states that the term “Nisa” is a generic word in Arabic that means “woman” and that at the same time the word “NISA” refers the verse of the Quran related to woman whereas the term “moda” is a base domain in the generic Top-Level Domain (gTLD). Considering that the content of the website is fashion design the term “moda” should not be taken into consideration for the assessment of similarity.
The Respondent alleges that it is not displaying information relating to MODANISA in his website “www.nisa.moda” and that therefore the claims of financial loss are groundless. The Respondent’s website which is formed by the disputed domain name is not directly competing with the Complainant’s services and the Respondent is not referring to any product of the Complainant.
The Respondent contends that the content of the respective websites “www.nisa.moda” and “www.modanisa.com” are similar as claimed by the Complainant and that it is expected in fashion and clothes business that websites have some common features and qualities.
C. Complainant’s Supplemental Filing
The Complainant states that in Modanisa Elektronik Magazacilik ve Ticaret A.S. v. Mehtap Geckil, WIPO Case No. D2014-2285 the panel was satisfied “from the evidences submitted by the Complainant that the trademark MODANİSA is a well-known trademark in hijab fashion sector”.
The Complainant asserts that contrary to the Respondent’s claim, changing the places of the words (using “moda” at the end of the domain name rather than using it at the beginning) does not remove the similarity between the disputed domain name and the Complainant’s trademark.
The Complainant indicates that the Respondent is using the MODANISA trademark in his web page, Facebook page, Twitter page and this usage increases the level of the similarity between the trademarks. Accordingly, the Respondent violates the Complainant’s trademark rights.
Moreover, the Complainant submits an expert report obtained upon its request of recording of evidence from the 2nd Specialized IP Court of Anatolia for determination of evidence showing that Respondent displays and refers to products of the Complainant in his website at the disputed domain name.
The Complainant, in order to show the actual confusion between the trademark and the disputed domain name, submits a cease and desist letter with respect to allegedly unlawful usage of a design on the web page “www.nisa.moda” mistakenly sent to the Complainant.
The Complainant contends that it is likely that Internet users may not understand “moda” as a new type of gTLD and enter the <nisa.moda>, supposing that it is the new website of the Complainant “as it is one-to-one same of the Complainant’s current website ‘modanisa’”.
D. Respondent’s Supplemental Filing
The Respondent replied to the Complainant’s supplemental allegations and submission by referring to its first response.
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 and 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 Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Preliminary procedural issues
The Panel notes that, according to the consensus view of the UDRP panelists as summarized in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.2, it is in its discretion whether to accept it, bearing in mind the need for procedural efficiency, and the obligation to treat each party with equality and ensure that each party has a fair opportunity to present its case. The party submitting the supplemental filing would normally need to show its relevance to the case and why it was unable to provide that information in the complaint or response. In addition, most UDRP panels that have allowed unsolicited filings have also tended to require some showing of “exceptional” circumstances.
This Panel has decided, in light of the complexity and peculiarity of the factual background of the case, to review the unsolicited supplemental filings submitted by the parties as noted above under section 5.C and D of this decision
B. Identical or Confusingly Similar
The Panel notes that, according to the evidence on records, the Turkish trademark No. 2011/06634 MODANISA.COM (word mark), Turkish trademark No. 2012/24593 MODANISA (figurative mark) and CTM registration No. 010948198 (figurative mark) MODANISA - among others - on which the Complainant relies, are currently registered in the name of the Complainant. If a complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights according to paragraph 4(a)(i) of the Policy. In addition, figurative, stylized or design elements in a trademark may be disregarded for the purpose of assessing identity or confusing similarity where, as in the present case, they do not form an especially prominent or distinctive part of the trademark overall. See Section 1.11 of the WIPO Overview 2.0.
In order to properly address the issue for the assessment of similarity, the Panel reviewed three recent UDRP decisions namely, Canyon Bicycles GmbH v. Domains By Proxy, LLC / Rob van Eck, WIPO Case No. D2014-0206 (<canyon.bike>), Hultafors Group AB v. my domain limited, WIPO Case No. D2014-0597 (<snickers.clothing>) and NVIDIA Corporation v. Brent Angie/Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtection.org, WIPO Case No. D2014-1171 (<geforce.graphics>).
The Panel in Canyon Bicycles GmbH v. Domains By Proxy, LLC / Rob van Eck, WIPO Case No. D2014-0206 (<canyon.bike>) indicated that “given the advent of multiple new gTLD domain names, panels may determine that it is appropriate to include consideration of the top-level suffix of a domain name for the purpose of the assessment of identity or similarity in a given case, and indeed that there is nothing in the wording of the Policy that would preclude such an approach.”
The Panel is of the opinion that it is necessary, in the special circumstances of this proceeding, to take into consideration the new gTLD for the assessment of confusing similarity. As a matter of fact, not only the new gTLD “.moda” is directly and closely associated with the Complainant’s goods and services that are provided under the trademark MODANISA but also, in this particular case, the term “moda” is a salient part of the Complainant’s trademark.
In the view of the above, the Panel compares the Trademark MODANISA as against the disputed domain name <nisa.moda> as a whole.
The disputed domain name is composed of the terms “Moda” and “Nisa” (that are incorporated the Complainant’s MODANISA mark) where these terms are formed inversely, i.e., “Nisa” and “Moda”. Therefore, Internet users seeing and choosing the disputed domain name would, in the Panel’s view, be likely to associate it with the Complainant in some manner. Most probably they may assume that the disputed domain name was owned by, or was affiliated with, the Complainant.
Accordingly, the Panel agrees with Complainant that the disputed domain name <nisa.moda> is confusingly similar to the Complainant’s MODANISA trademark. The Complainant has thus fulfilled paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or 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; or
(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
“… a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP. If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
In the Panel’s view the Complainant has made out its prima facie case under this element of the Policy and the Respondent should come forward with some allegations or evidence of relevant rights or legitimate interests in the disputed domain name.
The Respondent in its response stated that the disputed domain name is composed of the word “Nisa” which is a word in Arabic referring to woman and the term “Moda” as the gTLD referring to fashion and clothing which is related with the content of its website. Although not explicitly claimed by the Respondent, he seems to want to convey the opinion that such use can be considered as legitimate.
The Respondent further objects by stating that “there is no display, mark, or sale of any products related to MODANISA in our website when it is looked into”. However, the Complainant in Annex 1 and Annex 3 of the supplemental filing showed that the Respondent is using the Complainant’s MODANISA trademark. In this regard, Annex 3 is an expert report ordered by the 2nd Specialized IP Court of Anatolia upon request of the Complainant for determination of evidence of the content of the website “www.nisa.moda”. The expert report concluded with three visual evidences about the use of the Complainant’s trademark MODANISA and the Complainant’s products within the website of “www.nisa.moda”.
Paragraph 4(c) of the Policy provides a list of three circumstances, any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name.
The Panel finds that paragraph 4(c)(iii) of the Policy is not applicable in this case, since there is a use with the intention of commercial gain of the disputed domain name. Paragraph 4(c)(ii) of the Policy is not applicable either, as it appears that the Respondent is not commonly known by the disputed domain name.
With reference to paragraph 4(c)(i) of the Policy, the use of the disputed domain name, which is confusingly similar to the Complainant’s trademark, to direct Internet users to the services of the Complainant’s competitors is not bona fide, as it is a misleading use of a trademark to divert consumers for commercial gain. (See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Abbott Laboratories v. United Worldwide Express Co., Ltd., Case WIPO Case No. D2004-0088). Therefore, the Panel considers that in the view of such use together with the Complainant’s claim, not rebutted by the Respondent, that the Complainant’s trademark has reached a certain level of recognition, and particularly given the findings of the Expert Report ordered by the 2nd Specialized IP Court of Anatolia, the Respondent’s use cannot be considered use of the disputed domain name in connection with “a bona fide offering of goods or services”.
While the Panel notes that “Nisa” and “Moda” may respectively be considered in some respect to be two separate dictionary terms (in that they mean respectively “woman” in Arabic and “fashion” in Turkish), the website at the disputed domain name is not strictly providing information related to any such dictionary or generic meaning, but rather presents and advertises many products of fashion firms in the specific “hijab” sector, which are in competition with the Complainant, and which the Expert Report has found to appropriate the Complainant’s trademark.
In the circumstances of this case, and in view of the Panel’s discussion below, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant’s trademark or service 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed 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 argues that the disputed domain name was registered and used in bad faith. The Complainant argues that the Respondent was well aware of the MODANISA trademark at the time it registered the disputed domain name, particularly as the Respondent is located in Turkey.
The Complainant also claims that the Respondent refers to the MODANISA trademarks together with third party trademarks in the website “www.nisa.moda”. All these facts corroborate that the Respondent was aware of the Complainant when it registered the disputed domain name.
The Complainant’s contention of bad faith is based on the argument that at the time of registration of the disputed domain name the Respondent knew, or at least should have known, about the existence of the Complainant and that registration of a domain name containing the Complainant’s well-known trademark constitutes bad faith per se.
The Panel finds that the Complainant’s presence on the Internet for not less than three years indicates that the Respondent was or should have been aware of the marks prior to registering the disputed domain name (Caesar World, Inc. v. Forum LLC, WIPO Case No. D2005-0517).
The Panel observes that the Respondent is offering on the websites at the disputed domain name goods or services which are in direct competition with the Complainant’s goods or services and therefore it is very unlikely that the Respondent had never heard of MODANISA. Moreover, the Panel notes that the Respondent did not deny knowledge of the Complainant’s trademark.
The Panel finds that the Respondent is using the disputed domain name to intentionally attempt to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark because it would easily be confused by consumers in the field of very niche market of fashion, clothing and accessories aiming Muslim women or at least suggest an association with MODANISA mark, with the intent to exploit the Complainant’s reputation. In this regard, the Panel notes evidence provided by the Complainant regarding actual confusion, i.e., a warning letter sent mistakenly to the Complainant but addressed to the Respondent.
Therefore, in the view of cumulative circumstances, the Panel finds that the requirement of registration and use in bad faith is satisfied, according to the Policy, paragraph 4(b)(iv) and 4(a)(iii).
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 <nisa.moda> be transferred to the Complainant.
Emre Kerim Yardimci
Date: May 20, 2015