WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Türk Telekomünikasyon Anonim Şirketi v. Contact Privacy Inc. Customer 0118926942 / Orhan Taner, OT
Case No. D2016-1801
1. The Parties
The Complainant is Türk Telekomünikasyon Anonim Şirketi of Ankara, Turkey, represented by Tellioğlu Kaşlioğlu Hukuk Bürosu, Turkey.
The Respondent is Contact Privacy Inc. Customer 0118926942 of Toronto, Canada / Orhan Taner, OT of Göcek, Turkey.
2. The Domain Name and Registrar
The disputed domain name <turktelekomarena.com> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 5, 2016. On September 5, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 6, 2016, 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 September 7, 2016 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 amendment to the Complaint on September 10, 2016.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 13, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 3, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 4, 2016.
The Center appointed Kaya Köklü as the sole panelist in this matter on October 7, 2016. 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 is a large and widely-known communication network operator in Turkey. It is also the sponsor of Galatasaray Spor Kulübü, one of Turkey’s major soccer teams. The new stadium of Galatasaray is named “Türk Telekom Arena”.
The Complainant is the owner of the Turkish word and figurative marks for TÜRK TELEKOM ARENA (no. 2009/27920, applied for on May 29, 2009 and registered on February 3, 2011 and no. 2009/01975, applied for on January 15, 2009 and registered on April 8, 2011.
Furthermore, based on the Panel’s own research, it is the owner of many further trademarks including the terms “Türk Telekom”, which have been registered by the Turkish Patent Institute. These include, inter alia, the word mark TÜRK TELEKOMÜNIKASYON TTE registered on December 31, 1977; figurative trademarks for TÜRK TELEKOM, no. 2008/40228 with an application date of July 3, 2008 and no. 2008/18993 with an application date of April 3, 2008 (hereafter collectively referred to as the “TÜRK TELEKOM trademarks”).
Furthermore, the Complainant holds and operates a website linked to the domain name <turktelekomarena.com.tr> since 2009.
The Respondent seems to be an individual located in Göcek, Turkey.
The disputed domain name was created in the name of the Respondent on August 5, 2008, only a week after the Complainant concluded an agreement with Galatasaray on naming its soccer stadium “Türk Telekom Arena” on July 28, 2008.
The Panel notes that at the time of the Decision, the disputed domain name resolved to a hosting provider’s parking page.
5. Parties’ Contentions
The Complainant requests the transfer of the disputed domain name.
It is of the opinion of the Complainant that the disputed domain name is identical to the TÜRK TELEKOM ARENA trademarks and confusingly similar to the TÜRK TELEKOM trademarks owned by the Complainant.
Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. In particular, the Complainant states that it has never granted a license or any other permission to the Respondent to use its trademarks TÜRK TELEKOM ARENA or TÜRK TELEKOM. The Complainant further alleges that the Respondent has never used and does not intend to use the TÜRK TELEKOM ARENA and the TÜRK TELEKOM trademarks in connection with a bona fide offering of goods or services.
Finally, the Complainant is of the opinion that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant believes that due to the notoriety of the TÜRK TELEKOM and TÜRK TELEKOM ARENA trademarks in Turkey, the Respondent was or should have been aware of the Complainant’s trademarks when it registered the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraphs 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 and on the basis of the Complaint where no Response has been submitted.
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 the trademarks 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, even if the Respondent has not replied to the Complaint. 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 noted that the Panel has performed independent research by visiting the website linked to the disputed domain name. In addition, the Panel carried out a non-comprehensive trademark search for the mark TÜRK TELEKOM in the Turkish trademark register. The competence of the Panel to perform such independent research is undisputed and in line with previous UDRP decisions, e.g., Hesco Bastion Limited v. The Trading Force Limited, WIPO Case No. D2002-1038.
Finally, it is further mentioned 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 Complainant’s TÜRK TELEKOM ARENA trademark and confusingly similar to its TÜRK TELEKOM trademarks.
First, the Panel confirms that the Complainant has satisfied the threshold requirement of having rights in the TÜRK TELEKOM trademarks and TÜRK TELEKOM ARENA. As investigated by the Panel and evidenced in the Complaint, the Complainant is the owner of various word and figurative trademarks comprising TÜRK TELEKOM and TÜRK TELEKOM ARENA in Turkey.
Regarding the TÜRK TELEKOM ARENA trademarks of the Complainant, the Panel is of the opinion that the disputed domain name is identical.
Concerning the TÜRK TELEKOM trademarks, the disputed domain name differs only by the addition of the rather descriptive term “arena”. In the Panel’s view, the addition of such descriptive term does not negate the confusing similarity between the Complainant’s TÜRK TELEKOM trademarks and the disputed domain name. The Panel finds that this additional incorporation is purely descriptive and does not create a new distinctiveness separate from the Complainant’s TÜRK TELEKOM trademarks. On the contrary, the full inclusion of the Complainant’s trademark in combination with the generic term “arena”, directly refers to the sponsoring of Galatasaray’s soccer stadium by the Complainant, even enhances the false impression that the disputed domain name is officially related to the Complainant. The Panel concludes that the disputed domain name is likely to confuse Internet users in their believing that the disputed domain name is affiliated or endorsed by the Complainant or that the use of the disputed domain name is at least authorized by the Complainant.
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
The Panel further finds that the Respondent does not have any rights or legitimate interests in the disputed domain name.
While the burden of proof remains with the Complainant on this point as well, the Panel recognizes that this would often result in the impossible task of proving a negative, in particular as the evidence needed to show the Respondent’s lack of rights or legitimate interests is primarily within the knowledge of the Respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the burden of production shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name in order to meet the requirements of paragraph 4(a)(ii) of the Policy. Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
The Panel finds that the Complainant has satisfied this requirement, while the Respondent has failed to file any evidence or convincing argument to demonstrate a right or legitimate interest in the disputed domain name according to the Policy, paragraph 4(a)(ii) and 4(c).
With its Complaint, the Complainant has provided prima facie evidence that the Respondent has no rights or legitimate interests to use the Complainant’s TÜRK TELEKOM ARENA and TÜRK TELEKOM trademarks in the disputed domain name.
In the absence of a Response, the Respondent failed to provide any indication that it is commonly known by the disputed domain name. Furthermore, the Respondent has failed to demonstrate any of the other nonexclusive circumstances evidencing rights or legitimate interests under the Policy, paragraph 4(c) or any other evidence of a right or legitimate interest in the disputed domain name. Especially, the Respondent has failed to show that the disputed domain name has been or is intended to be used in connection with a bona fide offering of goods or services. Indeed, given the circumstances of this case, the Panel finds it hard to conceive of any use of the TÜRK TELEKOM ARENA or TÜRK TELEKOM trademarks by the Respondent, which would qualify as a legitimate use.
Consequently, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel is further convinced that the Respondent has registered and is using the disputed domain name in bad faith.
The Panel is of the opinion that the Respondent intentionally attempted to create a likelihood of confusion among customers at least with the Complainant’s TÜRK TELEKOM trademarks, apparently for commercial gain or other illegitimate benefit.
The Panel believes that the Respondent must have been well aware of the Complainant’s TÜRK TELEKOM trademarks when it registered the disputed domain name in August 2008. At the date of creation of the disputed domain name, for example, the Complainant’s TÜRK TELEKOMÜNIKASYON TTE trademark was already under protection since December 31, 1977 and the company is widely-known in Turkey. Furthermore, the Complainant’s sponsoring agreement with Galatasaray was just concluded and announced a week before.
In view of the Panel, it is immaterial here to also discuss a potentially bad faith registration concerning the Complainant’s TÜRK TELEKOM ARENA trademarks, which were registered only a few months after the creation of the disputed domain name. The Panel believes that it is sufficient to assess bad faith registration of the disputed domain name in relation to the Complainant’s above mentioned TÜRK TELEKOM trademarks.
In view of the Panel, it is apparent that the Respondent created the disputed domain name in expectation that the Complainant would use its TÜRK TELEKOM trademarks in combination with the term “arena”, which was just shortly before agreed to be the new name of Galatasaray’s soccer stadium. The Panel is convinced that the Respondent tried to gain illegitimate benefit by creating the disputed domain name — either by putting pressure on the Complainant to pay money for the transfer of the disputed domain name or by misleading Internet users, who are searching for official information on the Complainant and/or Galatasaray’s soccer stadium.
As it has been the case in several previous UDRP cases, the fact that the disputed domain name is currently effectively inactive does not prevent a finding of bad faith use and does not change the Panel’s views in this respect.
Taking all facts of the case into consideration, the Panel is of the opinion that this is a typical cybersquatting case, which the UDRP was designed to address.
All in all, the Panel concludes that the disputed domain name was registered and is being used in bad faith and that the Complainant consequently has satisfied the third element of the Policy, namely, paragraph 4(a)(iii) of the Policy.
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 <turktelekomarena.com> be transferred to the Complainant.
Date: October 22, 2016