WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Eregli Demir ve Çelik Fabrikalari T.A.S. and Iskenderun Demir ve Çelik A.S. v. Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org/ Turtlem / Temiztürk Elektronik
Case No. D2015-1919
1. The Parties
The Complainants are Eregli Demir ve Çelik Fabrikalari T.A.S. of Istanbul, Turkey and Iskenderun Demir ve Çelik A.S., Isdemir of Iskenderun, Turkey, represented by Gün & Partners, Turkey.
The Respondent is Privacy Protection Service INC d/b/a PrivacyProtect.org of Queensland, Australia / Turtlem, Temiztürk Elektronik of Osmaniye, Turkey, represented by Salim Purtaş, Turkey.
2. The Domain Name and Registrar
The disputed domain name <isdemir.com> is registered with Reg2C.com Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 27, 2015. On October 27, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 30, 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 November 5, 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 November 11, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 16, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 6, 2015. The Response was filed with the Center on December 5, 2015.
The Center appointed Kaya Köklü, Dilek Üstün Ekdial and Luca Barbero as panelists in this matter on January 7, 2016. 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 Complainant is an industrial company with its registered seat in Turkey. It is active in the field of iron and steel production. Its roots go back to the 1960's.
It is the owner of various Turkish word and figurative trademarks comprising the mark ISDEMIR, all of them applied and registered with the competent Turkish Patent Institute in or after the year 2003.
The Complainant further owns and operates the domain name <isdemir.com.tr>, which was first registered on September 18, 1998.
According to the current record, the disputed domain name <isdemir.com> was first created on October 21, 2001.
The Respondent is composed of a domain name privacy registration service and a Turkish company (both of them jointly referred to as "the Respondent" in the following decision).
At the time of the decision, the disputed domain name was not in use.
5. Parties' Contentions
The Complainant requests the transfer of the disputed domain name.
The Complainant is of the opinion that the disputed domain name is identical to its ISDEMIR trademark.
Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant explicitly states that the Complainant has never granted a permission or license to the Respondent to use its ISDEMIR trademark. The Complainant further alleges that the Respondent has never used and does apparently not intend to use the disputed domain name in connection with a bona fide, noncommercial offering of goods and services.
Finally, it is argued that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant argues that the use of a domain name privacy service indicates a relevant degree of bad faith. Furthermore, it argues that the Respondent must have been aware of the Complainant's ISDEMIR trademark, when registering the disputed domain name in 2001. Although, the Complainant had no registered trademark rights at that time, the Complainant alleges that it already acquired unregistered trademark rights due to prior use of its mark since the 1960's and the registration of its domain name <isdemir.com.tr> in 1998.
The Respondent requests the denial of the Complaint.
It argues that the term ISDEMIR is a combination of two generic Turkish words, namely "is" and "demir", which (among other options) can be understood as "labor" and "iron" in the English language. It argues that these terms cannot be monopolized by the Complainant. In this regard, the Respondent also argues that the Complainant's trademark registrations acquired distinctiveness only by the addition of figurative elements.
Furthermore, the Respondent alleges that it registered the disputed domain name more than two years prior to the Complainant's first ISDEMIR trademark registration. It is of the opinion that it has prior rights and a legitimate interest in the disputed domain name according to the "first come, first served" principle. It particularly argues that the Complainant did not use the brand ISDEMIR as a trademark before the year 2003.
Finally, the Respondent denies any bad faith registration or use of the disputed domain name. It particularly points out that it never tried to approach the Complainant for any ill intention and it never used the disputed domain name in an inappropriate way.
The Respondent believes that the conditions for a finding of Reverse Domain Name Hijacking ("RDNH") by the Complainant are fulfilled.
6. Discussion and Findings
The Panel determines in accordance with the Rules, paragraph 11(a), that the language of these administrative proceedings shall be the English language. Although the language of the Registration Agreement is Turkish and all provided documents by the Parties are also in Turkish language, the Panel finds, however, that it is reasonable to render the decision in English, as one of the Panel members is unable to read and understand Turkish but has been provided adequate translation of the relevant case materials by the other panelists. A decision in English allows all members of the Panel to effectively deal with this case and equally agree on a text, which can be signed by all three Panelists. As the submissions by the Parties remain accepted in the Turkish language, the Panel is convinced that neither the Complainant nor the Respondent will be prejudiced by a decision being rendered in English.
According to paragraph 14(a) and 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled. Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.
However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
It is further noted that the Panel has taken note of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") and, where appropriate, will decide consistent with the WIPO Overview 2.0.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is identical to the ISDEMIR trademark of the Complainant.
First, the Panel confirms that the Complainant has satisfied the threshold requirement of having trademark rights in ISDEMIR. As evidenced in the Complaint, the Complainant is the owner of various word and figurative trademarks comprising the mark ISDEMIR in Turkey. Unlike the Respondent, the Panel does not see sufficient arguments to limit the distinctiveness of the Complainant's trademark to its figurative elements only.
Second, the disputed domain name is identical to the Complainant's ISDEMIR trademark as it incorporates the wording of the Complainant's trademark in its entirety without any additions or amendments.
In view of the above, the Panel is satisfied that the Complainant has met the requirements under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests. Particularly, it is the Complainant's burden to demonstrate that the general principle of "first come, first served" shall not be applied in this case.
The Complainant's submissions in relation to this element consist of several brief and general statements which in view of the Panel remain unsupported by evidence. In particular, the Complainant did not provide sufficient evidence demonstrating that it acquired unregistered trademark rights before the registration of the disputed domain name.
Although it is in principle possible to acquire unregistered trademark rights according to Turkish trademark law, as indicated in Art. 8(b) of Turkish Trademark Decree Law, it is the Panel's view that the establishment of any such right require a certain degree of commercial use, which goes beyond the mere registration of a domain name.
The Panel is aware that according to Turkish law, an applicant for a Turkish ".com.tr" domain needs to submit official documentation demonstrating that the applied domain name comprises either a trademark or the company name of the applicant. The Panel had no chance to review the relevant application files as they were not part of the present case file. But, it is conceivable that the competent authority in Turkey registered the Complainant's domain name <isdemir.com.tr> based on the assessment that "isdemir" is a possible abbreviation of the Complainant's company name "Iskenderun Demir ve Celik A.S.". The registration of the domain name <isdemir.com.tr> as such does consequently not necessarily indicate that the term "isdemir" was at that time also used as a trademark. It would have been the Complainant's burden to demonstrate that it acquired unregistered trademark rights in ISDEMIR by way of additional use.
However, the Complainant failed to provide any relevant evidence demonstrating the use of ISDEMIR as an unregistered trademark prior to the registration of the disputed domain name in 2001. The documentation provided by the Complainant particularly in Annex 7 of the Complaint is in the Panel's view not helpful as it only contains quotations from press articles which were all published after the year 2003.
Consequently, the Panel is inclined to find that the Complainant has not met its burden of making out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
However, the Panel believes that it is not required to come to a final conclusion regarding the second element of the Policy as it is of the opinion that the Complainant in any case failed in establishing the following third element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the disputed domain name in bad faith.
As previously mentioned, the Complainant alleges that it has acquired rights in the trademark ISDEMIR even prior to the registration of the disputed domain name. However, it has not provided sufficiently convincing evidence of such rights.
The Complainant's earliest registered ISDEMIR trademark of which it has provided evidence was filed on December 12, 2003. This is around two years after the Respondent registered the disputed domain name on October 21, 2001.
Further, the Complainant did not provide sufficient evidence demonstrating that it was using ISDEMIR as an unregistered trademark prior to the registration of the disputed domain name in October 2001. Quite the opposite, the Respondent provided documentation indicating that the Complainant still used other marks to identify itself, e.g., I.D.C. (for "Iskenderun Demir Celik") until at least 2003.
As already mentioned above, the Panel is of the opinion that the mere registration of the domain name <isdemir.com.tr> as such does not sufficiently indicate that the term "isdemir" was at that time already used as a trademark by the Complainant.
As an overall assessment, the Panel sees no sufficient indication in the case file that the Complainant has used the mark ISDEMIR as a trademark prior to 2001. Hence, the Panel is not convinced that the Complainant already had unregistered trademark rights when the disputed domain name was registered. Consequently, the Panel does not see sufficient basis for a bad faith registration of the disputed domain name at that time.
Furthermore, taking into account the considerations in section 3.9. of the WIPO Overview 2.0, the Panel is of the opinion that using a privacy registration service as such is not sufficient to indicate a bad faith registration and use. The use of privacy services might be legitimate in many cases. It is rather the obligation of the Complainant to demonstrate further circumstances proving that the Respondent must have tried to conceal its true identity for illicit purposes. In the present case, the Complainant failed to convince the Panel in this regard.
The Panel notes that it does not find the Respondent's wholly unsupported claims as to its planned use of the disputed domain name to be very credible. However, as the burden of proof concerning bad faith registration and use remains, as a general rule, with the Complainant, the Panel finds that the present case needs to be assessed to the detriment of the Complainant (non liquet).
Consequently, the Panel finds that the Complainant does not succeed in establishing the requirements of paragraph 4(a)(iii) of the Policy.
D. Reverse Domain Name Hijacking
Reverse Domain Name Hijacking ("RDNH") 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).
The Respondent believes that the case at hand constitutes an attempt of a RDNH.
The Panel does not share the view of the Respondent and does not see sufficient indication to assess an attempt for RDNH by the Complainant. The Panel points out again that the decision is rather a result of what appears to the Panel to be a non liquet case, which may not necessarily prejudice the Complainant to initiate new administrative proceedings (in case of new available evidence) or ordinary court proceedings against the Respondent in a court of competent jurisdiction.
Consequently, the Panel is of the opinion that the present case does not qualify as an attempt of RDNH.
For the foregoing reasons, the Complaint is denied.
Dilek Ustun Ekdial
Date: January 25, 2016