WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Turkcell Iletisim Hizmetleri A.S. v. Volkan Unal

Case No. D2011-1433

1. The Parties

The Complainant is Turkcell Iletisim Hizmetleri A.S. of Istanbul, Turkey, represented by Istanbul Patent & Trademark Consultancy Ltd., Turkey.

The Respondent is Volkan Unal of Istanbul, Turkey.

2. The Domain Names and Registrar

The disputed domain names <cepbizden.com>, <turkcelllife.com>, <turkcellmania.com>, <turkcellnfc.com>, <turkcellt20.com>, <turkcellworld.com> and <turkcell532.com> are registered with Key-Systems GmbH dba domaindiscount24.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 24, 2011. On August 25, 2011, the Center transmitted by email to Key-Systems GmbH dba domaindiscount24.com a request for registrar verification in connection with the disputed domain names. On August 26, 2011, Key-Systems GmbH dba domaindiscount24.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

On September 7, 2011, the Center received an email communication from the Respondent. On the same day, the Center informed the Respondent regarding the UDRP proceedings.

On September 7, 2011, the Center transmitted an email to the parties in both Turkish and English regarding the language of proceedings. On September 9, 2011, the Complainant submitted a request that English be the language of proceedings. On the same day, the Respondent submitted a request that Turkish be the language of proceedings.

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 on September 14, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 4, 2011. The Response was filed with the Center on October 2, 2011.

The Center appointed Ugur G. Yalçiner as the sole panelist in this matter on October 13, 2011. 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 Registrar of the disputed domain names has informed the Center that the Registration Agreement for the disputed domain names is Turkish. The Center sent an email communication to both Parties on September 7, 2011, stating that according to information provided from the concerned Registrar, the language of the Registration Agreement is Turkish, hence the Complainant should i) provide evidence of an agreement between the Complainant and the Respondent that the proceedings should be in English, or ii) submit the Complaint in Turkish, or iii) submit a request with supporting arguments and materials for English to be the language of the administrative proceedings.

On September 9, 2011, the Complainant requested that the language of the proceedings should be in English. The Respondent replied on September 9, 2011, requesting that correspondence and its Response be submitted in Turkish.

The Panel has considered paragraph 11 of the Rules, submissions and circumstances of this case, including:

- Most of the disputed domain names <turkcellmania.com>, <turkcelllife.com>, <turkcellworld.com>, <turkcellt20.com>, <turkcell532.com>, <turkcellnfc.com> consist of generic English words.

- The Respondent has communicated with the Center in the English language.

- The Center sent all the communications in both languages, Turkish and English, and as such, the Panel is satisfied that the Respondent had fair notice of the dispute.

In the light of the above considerations, the Panel decides that the language of these administrative proceedings shall be English.

4. Factual Background

The Complainant is a leading and well-known GSM-based mobile communications company that was established in Turkey since February 1994 and which later signed a 25 year GSM license agreement with the Turkish Ministry of Transportation in April 1998. As of June 30, 2011, the Complainant has made USD 8.8 billion worth of investments (including 2G and 3G licenses) in Turkey. With 34.1 million subscribers as of June 30, 2011, the Complainant is the leading GSM operator in Turkey and the third biggest GSM operator in Europe.

As shown by annex 3 of the Complaint, the Complainant operates its websites under its main domain names at <turkcell.com> and <turkcell.com.tr>, the latter of which the Complainant has held since November 10, 1996.

Additionally, as evidenced in its Complaint, the Complainant’s service marks TURKCELL have been registered as of September 9, 1996, with the Turkish Patent Institute (Registration Nos. 173130 and 174691) regarding “communications/telecommunications services via portable phones” under class 38. The Complainant also owns a number of other trade and service marks including the word “Turkcell” in Turkey and abroad that are evidenced in its Complaint.

The disputed domain name <turkcellmania.com> was registered on June 16, 2011, <turkcelllife.com> on June 18, 2011, <turkcellworld.com> on June 18, 2011, <turkcellt20.com> on June 18, 2011, <turkcell532.com> on June 18, 2011, <turkcellnfc.com> on July 4, 2011, <cepbizden.com> on June 14, 2008. Additionally, six out of the seven disputed domain names comprise the mark TURKCELL.

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar

With respect to paragraph 4(a)(i) of the Policy and paragraph 3(b)(viii), (b)(ix)(1) of the Rules, the Complainant contends the following.

The Complainant is Turkcell Iletisim Hizmetleri A.S., which is well known shortly as “Turkcell”, having been founded in 1994, does business not only in Turkey, but also internationally.

The Complainant’s service marks TURKCELL have been registered on September 9, 1996, with the Turkish Patent Institute (TPI), (Registration Nos. 173130 and 174691), for communication/telecommunication services via portable phones” in class 38, copies of the certificates of registration of these service marks are attached to the Complaint. The Complainant also owns various other trade/service marks which include the TURKCELL mark, registered in Turkey with Registration Nos. 200631, 2001 06686, 2001 06687 and 2001 06688.

The trade/service mark TURKCELL was registered well before the creation date of the disputed domain names <cepbizden.com>, <turkcelllife.com>, <turkcellmania.com>, <turkcellnfc.com>, <turkcellt20.com>, <turkcellworld.com> and <turkcell532.com> as Community Trademark (CTM) with the Office for Harmonization in the Internal Market (OHIM) and also registered as United States trademark with the United States Patent and Trademark Office.

The trademark TURKCELL was recognized as a “well-known mark” by the Turkish Patent Institute.

The Complainant has been using area code (0)532 since 1998 and the trademarks including this area code (inter alia the trademark 0532) were first registered before Turkish Patent Institute in 1996, that is 15 years before the Respondent registered the disputed domain name <turkcell532.com>.

The Complainant registered the trademark CEPBIZDEN in 2005 which is three years before the Respondent registered the disputed domain name <cepbizden.com>.

The Complainant has applied for trademark registrations for T20, TURKCELL T20 and TURKCELLT20 MAXIPHONE before the Turkish Patent Institute four months before the Respondent registered the disputed domain name <turkcellt20.com>.

Since November 10, 1996, the Complainant is the legal owner of the domain name <turkcell.com.tr> and is still using this domain name for its website.

TURKCELL is also the trade name of the Complainant.

The Complainant states that the disputed domain names <turkcell532.com>, <turkcellt20.com> and <cepbizden.com> wholy incorporate the Complainant’s TURKCELL, 0532, T20 and CEPBIZDEN trademarks. In addition, the Complainant avers that <turkcellmania.com>, <turkcelllife.com>, <turkcellworld.com> and <turkcellnfc.com> are combinations of two separate words namely TURKCELL and generic words next to the TURKCELL trademark. Therefore, the Respondent creates a likelihood of confusion in the minds of the consumers, who expect the disputed domain names to resolve to websites owned by, operated by or affiliated with the Complainant. As a conclusion the disputed domain names are confusingly similar to Complainant’s TURKCELL, 0532, T20 and CEPBIZDEN marks and its domain names.

Rights or Legitimate Interests

The Complainant alleges that it has not licensed or otherwise permitted the Respondent to use the mark TURKCELL or to apply for or use any domain names incorporating that service mark.

The Respondent is clearly aware of the Complainant’s extensive goodwill and reputation in its service and trademarks TURKCELL, T20, CEPBIZDEN and 0532.

The Respondent has acquired no trademark or service mark rights and the Respondent (as an individual, business, or other organization) is not known by the disputed domain names.

The Respondent was fully aware that the Complainant had established rights in the TURKCELL marks at the time it registered the disputed domain names.

Registered and Used in Bad Faith

With respect to paragraph 4(a)(iii) and 4(b) of the Policy and paragraph 3(b)(ix)(3) of the Rules the Complainant contends that:

The disputed domain names were registered for the purpose of selling, renting, or otherwise transferring to the Complainant. In this sense, the Complainant adduced an e-mail correspondence dated June 23, 2011, regarding the offer of the Respondent to sell all the disputed domain names for USD 100.000.

Furthermore, it is evidenced by the Complainant that the websites under the disputed domain names offer various domain names for sale.

In accordance with previous decisions issued under the Policy, the Complainant is of the opinion that actual knowledge of the Complainant’s trademark at the time of the registration of the disputed Domain Name is to be considered an inference of bad faith in many UDRP cases such as Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226.

And finally, the registration and use of a domain names incorporating a famous mark is necessarily in bad faith where a respondent knew at the time of the registration that it could not make any actual use of the registered domain names without infringing on the trademark owner’s rights.

B. Respondent

The Respondent sent an e-mail to the Center on September 7, 2011, by stating that he is writing a book regarding the life of Turk’s cell and Turk is the main character in the book. The Respondent also asserts that all the tribes and communities belonging to the Turkish race become a national name.

Additionally the Respondent states that CEPBIZDEN is a slogan like coffee and he has no common point with the Complainant.

In its Response of October 2, 2011, the Respondent claims that, according to his search results, which were conducted through the online database of the Turkish Patent Institute (TPI), the Complainant has registered only T20 and TURKCELLWORLD as trademarks before TPI, merely for three classes. Therefore the Respondent alleges that the Complainant does not have any trademark rights for the remaining trademarks in other classes.

The Respondent claims that he could not file a trademark application before TPI due to financial difficulties and he is only able to register the disputed domain names. Thereofe the Respondent argues that the Complainant’s request for transferring the disputed domain names without compensation is incompatible with human rights, since the disputed domain names are not similar to the Complainant’s trademarks and the registration fees for the disputed domain names were paid by the Respondent.

Additonally, the Respondent avers that the disputed domain names were not created by inserting additonal letters to the Complainant’s trademarks. The Respondent also claims since he is Turkish, any words can be added following the term “Turk” and be registered as a domain name by him.

Finally, the Respondent claims that he agrees to a compromise if his rights are not infringed and the disputed domain names should not be transferred to the Complainant since the Complainant does not have any trademark rights for the disputed domain names.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements to obtain an order for the disputed domain names to be cancelled or transferred to it:

(i) the disputed domain names registered by the Respondent are 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 names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has rights to the TURKCELL, 532, T20 and CEPBIZDEN trademarks. This is supported by the evidence of goodwill and use submitted by the Complainant and the relevant certificates of registration and trademark applications.

The Panel also notes that adding English terms like “mania”, “life”, “world” or “nfc” do not avoid the risk of confusion with the Complainant’s marks. In this regard, the Panel refers to previous UDRP decisions, e.g., Yahoo! Inc. and Overture Services, Inc. v. Registrant (187640), a/k/a Gary Lam, a/k/a Birgit Klosterman, a/k/a XC2, a/k/a Robert Chua, a/k/a Registrant, WIPO Case No. D2004-0896.

The Panel recognizes the Complainant’s reputation in its field of activities (and is satisfied with the fact that it is not likely for the Respondent to be unaware of the existence of the trademarks TURKCELL, 532, T20 and CEPBIZDEN). The Complainant established satisfactory evidence that TURKCELL is the Complainant’s main trademark which has been granted protection both in national and international jurisdictions.

Therefore, the Panel is not satisfied with the Respondent’s claims concerning the similarity of the disputed domain names with regard to the Complainant’s trademarks and the claim that the Complainant has no trademark rights. As a conclusion, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s registered trademarks and that the requirements in paragraph 4(a)(i) of the Policy are fulfilled.

B. Rights or Legitimate Interests

According to paragraph 4(a)(ii) of the Policy, the second element that the Complainant must prove is that the Respondent has no rights or legitimate interests in respect of the disputed domain names. Paragraph 4(c) of the Policy sets out various ways in which a respondent may demonstrate rights or legitimate interests in its domain names.

The Panel is satisfied that the Complainant has made a prima facie case that it has not licensed or otherwise permitted the Respondent to use the marks TURKCELL, 532, T20 and CEPBIZDEN or to apply for or use any domain names incorporating to those marks. The Panel also notes that the Complainant has prior rights in these marks, which precede the Respondent’s registration of the disputed domain names.

On the other hand, the Respondent failed to demonstrate any circumstance that could be brought forward to support a legitimate noncommercial or fair use of the disputed domain names without the intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks at issue.

The Panel finds that there is no indication that the disputed domain names are used in connection with a bona fide offering of goods or services. In addition, there is no indication that the Respondent has been commonly known by the disputed domain names.

Therefore on the contrary of Respondent’s claims, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain names and the Complainant has established the second element of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

According to paragraph 4(a)(iii) and 4(b) of the Policy, the Complainant may show one of the following circumstances, in particular but without limitation, in order to demonstrate the Respondent’s bad faith in registration and use of the disputed domain names:

(i) circumstances indicating that the Respondent has registered or acquired the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the disputed domain names registration to the Complainant who is the owner of the trademark or service mark 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 names; or

(ii) the Respondent has registered the disputed domain names 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 disputed domain names primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s websites or other online location, by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites or location or of a product or service on the Respondent’s website or location.

The Panel confirms the reputation and recognition of the Complainant’s trademarks TURKCELL, 532, T20 and CEPBIZDEN and is convinced that the Respondent must have known of these trademarks when the disputed domain names were registered.

The Panel notes that the Respondent sent an e-mail to the Complainant on June 20, 2011, informing the Complainant that he owns the disputed domain names (not including <turkcellnfc.com> - this domain has been registered after the e-mail exchange) and he would like to offer them for sale to the Complainant. Later, the Complainant asked for the amount the Respondent had in mind for the disputed domain names, and following that on June 23, 2011, the Respondent replied to the Complainant’s e-mail and asked for USD 100.000 for all the disputed domain names.

Additionally, no evidence was produced by the Respondent to establish that the actual cost of registration of the disputed domain names could approach USD 100.000. It is obvious from the provisions of paragraph 4(b)(i) of the Policy that an offer to sell the domain name for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name is not only evidence of, but can conclusively establish that, the domain name has been registered and is being used in bad faith. It has also been decided in many UDRP cases that the excess of any reasonable cost incurred in acquiring the domain names could be view as a bad faith, see 1-800 Contacts, Inc. v. Imagemakers1, WIPO Case No. DTV2004-0003, CBS Broadcasting, Inc. v. Gaddoor Saidi, WIPO Case No. D2000-0243.

Furthermore, as it is evidenced by the Complainant and confirmed by the Panel, the Respondent has a website named “www.teklifshop.com”, which means “shop of offerings” in English and under this website, the disputed domain names are offered for sale.

Furthermore, the Panel is not satisfied with the Respondant’s claim that he is writing a book and Turk is the main character in that book, since the Respondent has registered the disputed domain name <cepbizden.com> which cannot be the subject of the said book.

Accordingly, the Panel is also satisfied that the third element of paragraph 4(a) of the Policy has been proven by the Complainant.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <cepbizden.com>, <turkcelllife.com>, <turkcellmania.com>, <turkcellnfc.com>, <turkcellt20.com>, <turkcellworld.com> and <turkcell532.com> be transferred to the Complainant.

Ugur G. Yalçiner
Sole Panelist
Dated: November 11, 2011