WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Detur International B.V., Tatil Seyahat Turizm Anonim Şirketi v. Vertical Axis Inc.
Case No. D2012-0919
1. The Parties
Complainant is Detur International B.V. (“Complainant1”) of Amsterdam, Netherlands and Tatil Seyahat Turizm Anonim Şirketi (“Complainant2”) of Istanbul, Turkey, represented by Istanbul Patent & Trademark Consultancy Ltd., Turkey.
Respondent is Vertical Axis Inc. of Christ Church, Barbados, represented by ESQwire.com Law Firm, United States of America.
2. The Domain Name and Registrar
The disputed domain name is <detur.com> which is registered with Fabulous.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 30, 2012. On May 1, 2012, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the disputed domain name. On May 1, 2012, Fabulous.com 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 Complainants on May 7, 2012 providing the registrant and contact information disclosed by Fabulous.com, and inviting Complainants to submit an amendment to the Complaint. Complainants filed an amendment to the Complaint on May 11, 2012. The Center verified that the Complaint, as amended, 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 Respondent of the Complaint, and the proceedings commenced on May 15, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 4, 2012. The Response was filed with the Center on June 4, 2012.
On June 25, 2012, the Center received a supplemental filing from Complainants. On June 27, 2012, the Center sent a communication to the parties informing the parties that said supplemental filing would be forwarded to the Panel for determination pursuant to its discretion.
The Center appointed Gerardo Saavedra, Ugur G. Yalçiner and The Hon Neil Brown Q.C. as panelists in this matter on July 2, 2012. This Panel finds that it was properly constituted. Each member of this 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
Complainant1 is a company established in Netherlands since 1976, holding of a group of companies established in Norway, Finland, Sweden, Malta and Denmark which are engaged in tourism and travel related activities.
Complainant2 is a company established in Turkey, engaged in tourism and travel related activities, and which has operated a travel agency in Turkey under the name of Detur Turizm Seyahat Acentasi (i.e. Detur Tourism Travel Agency) since at least 1993.
Complainant2 has rights over the nominative DETUR trademark for which it holds several trademark registrations, such as: registration No. 2004 29154 with the Turkish Patent Institute, application date September 13, 2004, registration date January 5, 2006, in classes 35, 37, 38, 39, 41, 42 and 43; registration IR No. 856523 with the World Intellectual Property Organization, registered on November 3, 2004 in classes 35, 39, 41 and 43.
Complainant2 also has rights over several device trademarks incorporating the term “detur” and for which it holds several trademark registrations, such as: registration No. 2003 03832 with the Turkish Patent Institute, application date February 25, 2003, registration date July 7, 2004, in class 43; registration No. 856522 with the World Intellectual Property Organization, registered on November 3, 2004 in classes 35, 39, 41 and 43; registration No. 213236 with the National Board of Patents and Registration of Finland, application date April 1, 1998, registration date March 15, 1999, in class 39; registration No. 2005 18452 with the Turkish Patent Institute, application date May 11, 2005, registration date June 19, 2006, in classes 35, 37, 38, 39, 41, 42 and 43. Further, Complainant had a trademark registration covering DETUR and device, registration No 96 006027 with the Turkish Patent Institute, application date May 3, 1996, registration date December 5, 2000, in classes 35, 37, 38, 39, 41 and 42.
In addition to those referred above, Complainant2 produced a list of similar trademarks registered since 2004 in Egypt, Tunisia, Morocco and Malta.
Respondent is a company engaged in the registration of domain names.
The disputed domain name was created on May 19, 2001.
5. Parties’ Contentions
A. Complainants
Complainants’ assertions may be summarized as follows:
First founded in 1976, Complainant1 began its operations in Turkey in 1993 as a travel agency in Turkey and became a leader in the tourism industry by 2000 and from 1998 onwards, it expanded its activities from Turkey to various regions of Europe, and gained a reputable global identity as Detur International.
Complainant1 incorporates all the group of companies of different countries under its umbrella:
Detur Finland OY began its operations in Finland in 1998 and established itself in the Finnish market via charter destinations to Turkey. Currently, it offers trips to Turkey and also organizes charter travel packages to Tunisia, Egypt and Thailand. In terms of market share, 30.000 Finnish people chose Detur for their vacations in 2009, which means 4% of travel packages in the Finnish market were organized by Detur Finland, with the following breakdown by destination: approximately 30% of Finnish tourists traveling to Turkey and around 40% traveling to Tunisia chose Detur. Detur Finland made a TV show, named “Matkaoppaat/Travel Guide” which was broadcast for two seasons (two years) on Finland TV and the previous episodes of which are still on air on the Finland TV4 channel.
Detur Norway AS began its operations in Norway in 1999 by organizing trips to Turkey. Shortly after, it added charter tours to Egypt and Tunisia. So far, 275.000 Norwegians have chosen Detur Norway for their holiday trips. As a result, Detur Norway now organizes more than 45% of Norwegians' holidays to Tunisia, and approximately 30% to Turkey every year.
Detur Sweden AB launched its local operations in 2000 with departures from six cities to Turkey and Tunisia and afterwards by organizing trips to Egypt as well. In 2010 Detur Sewden organized vacations for approximately 80,000 people. Detur Sweden was awarded the “Gazelle of the Year” title two years in a row by Dagens Industri, the leading business magazine in Sweden.
Detur Operations and Trade Limited and Detur Charter and Trade Limited officially began operating in Malta in 2009 and have sponsored several sport teams, sport organizations and awards which all broadcasted live on Malta TV channels.
Detur Denmark ApS was established in 2011 due to the success and steady growth of operations in the Scandinavian market over the last decade.
Complainant2 was founded by one of the founder partners of Complainant1, as a tourism company in Turkey, in 2004, having its origin in Detur Tourism Travel Agency since 1993 and operates as Detur Turkey since then.
Complainant1 is the registrant of the following domain names: <deturgroup.com> created in 2009, <detur.dk> created in 2005, <detur.fi> created in 2005, <detur.no> created in 1999, <detur.se> created in 1999 and <detur.com.tr> created in 1998.
DETUR is a registered mark of Complainant2 and an unregistered mark and registered trade names of Complainant1 and all its group of companies. Complainants have been using the mark DETUR since 1993. Complainant2 registered the mark with the Turkish Patent Institute in 1996 and also has registered several marks related to DETUR since then.
The disputed domain name fully incorporates Complainant’s distinctive trademarks and trade names, and is identical and confusingly similar to the trademarks in which Complainant2 has rights.
Respondent has no rights or legitimate interests in respect of the disputed domain name.
Respondent has made no claim that it is using the disputed domain name in connection with a bona fide offering of goods and services. Respondent has no relationship with Complainants and Complainants have not licensed or otherwise permitted Respondent to use the DETUR mark or to apply for or use any domain name incorporating that mark. Complainants have prior rights in that mark, which precede Respondent’s registration of the disputed domain name. The disputed domain name is not a mark by which Respondent is commonly known.
The Internet is an alternative public medium as are television, newspapers and the radio. It is inconceivable that Respondent, without license or permission, would be able to use the famous mark of a well-known tourism company like Complainants on the television, in the newspapers, or on the radio. This would infringe the famous tourism company’s mark. This same reasoning is valid for Internet domain names in general, and for the disputed domain name in this particular case.
The web site under the disputed domain name advertises and links to an erotic web page which aims to direct the visitors to its somehow connected web site and is offered for sale at the top of the web page, with the purpose of forcing Complainants to buy the disputed domain name to protect their reputation (printout of the web page attached to the Complaint).
Respondent registered the disputed domain name and because of its unavailability Complainants could not register the disputed domain name.
DETUR is neither a dictionary word nor a common word, rather it is a created trademark with no meaning in Turkish. The argument that “detur” is typographical variation of the dictionary word “detour” is not persuasive and Respondent cannot claim descriptiveness based on its typo variations. If that were the case, most of the trademarks could be counted as dictionary words or their typo variations and none of the complainants could prove the second and third elements of the Policy paragraph 4(a) and Rules paragraph 3(b). Even if it is assumed for a second that DETUR is a typo creation of a descriptive term and thus descriptive, “detour” is not such a common/popular word as to attract third parties to create its typo variations as domain names to gain commercial benefit in bono fide purposes and thus said claim is not persuasive. Besides, since the disputed domain name is not being used related to its descriptive term, Respondent cannot claim that its use is legitimate due to the original word’s generic nature. Further, in Turkish “De Tour” does not mean “The Tour”, it has no meaning in Turkish.
Respondent registered and used the disputed domain name in bad faith. Paragraph 4(b) of the Policy lists four examples of acts, which prima facie constitute evidence of bad faith. However, this list is not exhaustive, but merely illustrative.
The disputed domain name was registered primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the owner of the trademark for valuable consideration in excess of the registrant’s out-of-pocket costs, and by using the disputed domain name until it is sold Respondent has intentionally attempted to attract, for commercial gain, Internet users to a web site, by creating a likelihood of confusion with Complainant’s mark as to the source or affiliation of the web site or of a product or service on the web site.
The disputed domain name is offered for sale through the WhoIs search results page <domainbrokers.com> and a note on the top of said web page under the disputed domain name.
The disputed domain name used to display obscene photos, which would tarnish Complainants’ reputation and goodwill. Respondent put an erotic based web page link and advertisement to attract the visitors of the Complainants’ to its web site, while forcing Complainants to buy the disputed domain name to prevent their trademark and trade name along with their reputation to be tarnished.
Other than claiming it used for a brief period time in non-US and Canada countries and that “www.snog.com” is a social web site, Respondent could not have explained why the web site was displaying contents from “www.snog.com” which consist of partly naked and/or sexy photos of some ”www.snog.com” users. Respondent is responsible of the content of the web site and this kind of use could not justify any kind of good faith use claim.
It is clear that Respondent has registered the disputed domain name to derive benefits from Complainants in excess of the dispute domain name’s out-of-pocket registration costs. Numerous panels deciding cases under the Policy have held that pornographic content on a respondent’s web site may constitute a significant indicator of bad faith.
Respondent cannot have ignored the fact that DETUR is a registered and protected trademark and trade name of Complainants. This can be deducted from the following facts: (i) DETUR is a well-known mark which has been operating in many countries for many years (since 1993 in Turkey, 1998 in Finland, 1999 in Norway and 2000 in Sweden, well before the creation of the disputed domain name) and it is difficult to imagine that Respondent would not have been aware of that mark when it registered the disputed domain name; (ii) “Detur” is highly distinctive and a created word by Complainants, thus it is not a word that any person would legitimately choose unless seeking to create an impression of association with Complainants. Actual knowledge of Complainant’s trademark at the time of the registration of the disputed domain name is to be considered an inference of bad faith.
Respondent’s bad faith is shown by its use of the disputed domain name or lack thereof. Respondent has placed no content on the web site of the disputed domain name that relates to a business or has been created by Respondent. Respondent does not actively use the disputed domain name. Instead, it directs the visitors to an erotic web page “www.snog.com”.
Even directing to pay-per-click landing pages is not deemed as a legitimate use in good faith. The web site associated to the disputed domain name contains advertisements and links to travel routes that are Complainant’s main target, such as Alanya and Tunisia, which would cause confusion to the Internet users who seek information on DETUR and divert them away from Complainant’s web sites for Respondent’s commercial gain. Most of the UDRP panel decisions have agreed on the existence of bad faith and responsibility of the registrant, even where the advertisement links were chosen and displayed without registrant’s control.
As prior UDRP panels have held, the incorporation of a famous mark into a domain name, coupled with an inactive web site, may be evidence of bad faith registration and use. Respondent’s passive holding of domain names suggests that it registered the disputed domain name for the purpose of selling it to Complainants for profit.
Complainants assert that bad faith is indicated by Respondent’s use of “privacy services” to hide its identity to be unreachable by Complainants. While not an express ground of bad faith under paragraph 4(b) of the Policy, using domain privacy services is widely recognized as an indication of bad faith in domain name registration. The conclusion of other UDRP panel decisions confirm the aforesaid.
A quick online search brought out that Respondent is famous with being a respondent in numerous domain name dispute cases as a company known for trying to make money by registering third parties' trademarks as domain names. Most of the domain names cases were decided in favor of complainants, except where the domain name consisted of a dictionary word. DETUR is neither a dictionary word nor a common word, rather it is a created trademark with no meaning in Turkish.
All registrants are responsible of not infringing any third parties’ intellectual property rights to the best of their knowledge in accordance with the registration agreement. The importance of this general rule becomes more important when the registrant is a professional domain name registration company and in domain name trading industry.
Complainant2’s DETUR mark is well-known in several countries and it is highly possible that Respondent has registered the disputed domain name in order to gain unfair commercial benefit from the reputation of Complainant2’s mark. Even if it is assumed that Respondent did not register the disputed domain name with Complainant2’s mark in mind, the willful blindness of Respondent should be accepted. Before registering domain names, the registrants should conduct at least a Google search to make sure that the domain name to be registered does not violate any third parties’ rights.
Respondent intentionally attempted to infringe Complainant2’s mark, or it closed its eyes to whether the disputed domain name was identical or confusingly similar to a mark in which Complainant2 has rights. A quick Google search shows that Respondent is not known by the disputed domain name, while proving that even a quick, basic search would reveal that Respondent would infringe a third party’s rights by registering and using the disputed domain name.
On the “doctrine of laches” Complainants adhere to and claim the consensus view stated in paragraph 4.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition1 (“WIPO Overview 2.0”). It would be unfair to expect unsophisticated companies all over the world that they would have known that they had a chance to be transferred infringing domain names even without reaching the registrant of the said domain names. The identity of Respondent has been hidden and so, unreachable. This fact worried Complainants’ even to find the registrant for a possible court action and to determine the jurisdiction. Therefore, expecting sophisticated knowledge from the companies and blaming them for not bringing complaints earlier would be clearly unfair.
Complainants requests that the disputed domain name be transferred to Complainant1.
B. Respondent
Respondent’s assertions may be summarized as follows:
The Complaint was filed over ten years after registration of the disputed domain name, a substantial delay by any measure and an eternity in Internet time. Complainants do not explain why they waited so long to initiate the Complaint. This long delay bars Complainant under the doctrine of laches, which has been recognized under the Policy. Complainants’ long delay particularly demonstrates that laches is appropriate because Complainants was likely aware of the disputed domain name since before 2004 when the vast majority of its own trademarks were registered by foreign trademark offices.
Complainants were certainly aware of the disputed domain name in 2005 when it registered the domain names <detur.fi> and <detur.dk>. Now, without explanation and after Respondent has owned the disputed domain name for eleven years, Complainants chose to file their Complaint. Accordingly, the Complaint should be denied on this basis alone.
Respondent registered the disputed domain name because “detour” is a common English dictionary word to which it believed no party could claim exclusive rights. Respondent obtained the disputed domain name because it contains the common typographical error of the word “detour” - missing the letter “o”.
Respondent registered the disputed domain name on February 1, 2002 after it expired, was deleted, and offered for registration again. Respondent did not register the disputed domain name with Complainants trademark and trade name in mind and had no knowledge of Complainants, their web site, their business name or trademark when it registered the disputed domain name over ten years ago.
The disputed domain name was also not registered to prevent Complainants from owning a domain name incorporating its trademark. Over the years, Respondent has registered hundreds of generic dictionary word domain names that incorporate typographical errors.
Respondent hosts the disputed domain name with Hitfarm.com, a service which places pay-per-click (“PPC”) advertising links based on a Google advertiser feed on hosted domain names, sharing the advertising revenue with the domain name owners. Links on the web page are naturally related to the word “tour,” as in “detour,” and are auto-generated by Google’s keyword advertising inventory and user search behavior, displaying PPC links related to the meaning and context of the word “detour”, i.e. travelling off of the main route.
Contrary to Complainants’ assertion, the disputed domain name did not resolve to an erotic or pornographic web site. Since the date the disputed domain name was registered until September 2011, all visitors to the disputed domain name viewed the PPC links related to the common meaning and travelling context of the word “detour”. While visitors to the disputed domain name originating from the United States of America and Canada have continually viewed the landing page with PPC links related to travel, for a brief period of time, between August 2011 until the present, certain international traffic was directed to the British social web site “www.snog.com” which is a social site popular with British teenagers and it is not an erotic or pornographic site as mischaracterized in the Complaint.
The disputed domain name is not identical or confusingly similar to a mark in which Complainants allege prior enforceable rights. At best, Complainants can show a Turkish and Finish trademark registration shortly before the disputed domain name was registered by Respondent.
Contrary to Complainants’ assertion that its mark is a distinctive, strong mark, Complainants are using the Turkish words “De Tour” meaning “The Tour” to promote a travel and tourism company. Such use is far from distinctive, and is, itself, quite descriptive.
Respondent has rights and legitimate interests to the disputed domain name based on its meaning as a typographical variation of a common English word. The registration of common dictionary words, like “detour,” establishes a respondent’s legitimate interest under the Policy, provided the domain name was not registered with a trademark in mind. There can be no doubt that the word “detour” is a common word in the English dictionary. Respondent registered the disputed domain name in good faith based on the inherent value of this common dictionary word and without having Complainants’ foreign trademark in mind.
Evidence that Respondent did not target Complainants are the hundreds of domain names that Respondent has registered which solely incorporate typographical variations of English dictionary words as well as other descriptive and common words correctly spelled. This pattern supports Respondent’s legitimate use of the disputed domain name. The only reasonable inference to be drawn is that Respondent does not target trademarks, rather it targets only common dictionary words. Several panels have agreed that other registrations can support a respondent’s claim that it engages in proper registration conduct as opposed to cybersquatting behavior. Accordingly, based on the significant number of common English words registered by Respondent, the conclusion should be reached that Respondent does not target trademarks.
There is no evidence that Respondent registered the disputed domain name with knowledge of Complainants’ trademark and trade name. Respondent has provided sworn testimony that it had no knowledge of Complainants’ or their trademark and did not register the disputed domain name to target Complainants.
Complainants’ mark was not well known to the general public outside of Turkey, if at all, when Respondent registered the disputed domain name over 10 years ago. Additionally, the Turkish trademark registry was not accessible online at the time the disputed domain name was registered. Respondents are not deemed to have constructive knowledge of foreign trademarks whose trademark registries are unable to be searched. A party cannot infer that just because they have a trademark in their home country the mark is well known in another country where the registrant resides.
Respondent’s legitimate interest is bolstered by the fact that it uses the disputed domain name in connection with the provision of related PPC advertising links appearing on the web site, for which it receives a share of the revenue. PPC links establish legitimacy where they are selected as a result of the generic or descriptive meaning of terms contained in a domain name, as opposed to being selected with a trademark in mind.
The evidence is that Respondent registered the disputed domain name because of its value as a variation of a single English dictionary word, and it has used it in connection with the bona fide offering of goods and services in the form of PPC ads. The indisputable facts coupled with the extensive third-party use of the word “detour,” support Respondent’s statements that it did not target Complainant and was only seeking to capitalize on a widely used common dictionary word.
The fact that Respondent has a link offering the disputed domain name for sale is not improper and it does not make its use illegitimate. To the contrary, a business based on reselling domain names satisfies the legitimate interest prong of the Policy, provided there is no evidence a trademark was targeted by the registrant. There is no proof that Respondent registered the disputed domain name to profit from Respondent’s trademark.
There is no evidence of bad faith registration or use. Respondent registered the disputed domain name because it incorporates a common dictionary word. The fact that Respondent registered the disputed domain name after it expired and was deleted further negates a finding of bad faith registration because the expiration of a domain name can be interpreted as a signal that any trademark claim to the domain name was abandoned and that the domain name could be registered in good faith.
Respondent certainly is not attempting to compete with Complainants, disrupt their business, or prey on their mark in any way. Respondent is simply using a typographical variation of a common English word for a descriptive purpose. Respondent has used the disputed domain name in a descriptive manner for its web site which displays auto-generated PPC ads related to a common understanding of the word detour: to make a travel diversion or to take a different trip.
Contrary to Complainant’s allegations, the advertising links appearing on Respondent’s site do not constitute bad faith use. The use of domain names to display ads related to the descriptive meaning of the terms contained in the domain name constitutes use in connection with a bona fide offering of goods and services.
It is notable that Complainants waited ten years from the date Respondent registered the disputed domain name to initiate this Complaint. Such a long delay in taking action, raises the inference that Complainants did not truly believe the disputed domain name was registered in bad faith.
Respondent requests the Complaint be denied.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to decide the Complaint on the grounds of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The burden for Complainants, under paragraph 4(a) of the Policy, is to show:2 (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainants have rights; (ii) that 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.
A. Unsolicited supplemental filing
The Center received an unsolicited supplemental filing from Complainants on June 25, 2012. The Rules do not explicitly provide for supplemental filings. Paragraph 10 of the Rules enjoins the panel to conduct the proceeding “with due expedition” and empowers the panel to “determine the admissibility, relevance, materiality and weight of the evidence”.
Although such supplemental filing is repetitive and does not really change the substance of the litis and material evidence already in the file, it addresses Respondent’s defense based on the doctrine of laches, besides that it does not result in a delay of this proceeding. Thus in this case this Panel has decided to take into account such supplemental filing. In any event, if this Panel had not taken into consideration such supplemental filing, that would not have changed the outcome of this proceeding.
B. Delay in Filing the Complaint
It is true that the Policy and the Rules do not set forth any period of time within which a complaint should be filed nor any express provision similar to the defense of laches. On the other hand, as set forth above, paragraph 15(a) of the Rules provides that a panel is to decide a complaint pursuant to the Policy, the Rules and any rules and principles of law that it deems applicable.
Accordingly, on one view there are no legal grounds under the Policy or the Rules to dismiss the Complaint based on the time lapsed between the date of registration of the disputed domain name and the date of filing of the Complaint. Many UDRP panel decisions support that view. However, there are also some decisions to the contrary, the most known of which perhaps is The New York Times Company v. Name Administration, Inc., NAF Claim No. 1349045. Further, in other decisions such as C. Brewer and Sons Ltd. v. Vertical Axis, Inc., WIPO Case D2009-1759, and Vanguard Trademark Holdings USA LLC v. Nett Corp., NAF Claim No. 1262162, observations have been made by panels to the effect that delay in instituting proceedings, along with other factors present in each case, may have an impact in the outcome of UDRP proceedings.
The WIPO Overview 2.03 has summarized the different existing views as follows: “Panels have recognized that the doctrine or defense of laches as such does not generally apply under the UDRP, and that delay (by reference to the time of the relevant registration of the disputed domain name) in bringing a complaint does not of itself prevent a complainant from filing under the UDRP, or from being able to succeed under the UDRP, where a complainant can establish a case on the merits under the requisite three elements. Panels have noted that the remedies under the UDRP are injunctive rather than compensatory in nature, and that a principal concern is to avoid ongoing or future confusion as to the source of communications, goods, or services. However: Panels have also noted that a delay in bringing a complaint under the UDRP may make it more difficult for a complainant to establish its case on the merits, particularly in relation to the second and third elements requiring the complainant to establish that the respondent lacks rights and legitimate interests and that the respondent registered and used the domain name in bad faith. A small number of panels have also begun to acknowledge the possible applicability, in appropriate and limited circumstances, of a defense of laches under the UDRP where the facts so warrant”.
In any event, this Panel is of the view that the present proceeding may be decided on the basis of the evidence adduced by each side and the conclusions that can be reached from that evidence.
C. Identical or Confusingly Similar
It is clear to this Panel that Complainants have rights in the DETUR mark.
The disputed domain name entirely incorporates the term “detur” without any other element.
This Panel considers that, for purposes of a finding under paragraph 4(a)(i) of the Policy, it is irrelevant (i) whether Complainant’s rights over a mark arose out before or after registration of the disputed domain name4 and (ii) Complainant2’s registered mark might seem descriptive or a common dictionary word since that issue, in any event, is a matter to be decided by courts of competent jurisdiction and not by this Panel5.
Therefore, this Panel finds that the disputed domain name is identical to Complainant’s mark.
D. Rights or Legitimate Interests
This Panel considers that Complainants have established prima facie that Respondent has no rights or legitimate interests in respect of the disputed domain name6.
Respondent asserts that it is engaged in the registration of domain names consisting of common dictionary words or typographical variations of such common dictionary words. Respondent contends that the disputed domain name is comprised of a typographical error of the English common word “detour”7. Respondent alleges that the PPC ads appearing at the web site associated to the disputed domain name are related to the word “tour”8 and are in the context of the word “detour” meaning “travelling off of the main route”. Complainants assert that DETUR has no meaning in Turkish, that it is an invented word.
It is uncontested that the disputed domain name redirected Internet users to the web page of “www.snog.com”. This Panel considers that the printout of such web page attached to the Complaint shows no pornographic or erotic materials but rather it conveys the impression of a social meeting or dating place in the web. Respondent contends that such redirection took place from August 2011, and that before that and at the present the disputed domain name shows PPC ads relating to the common meaning of the word “detour”: travelling, a diversion, deviating from the common path. Respondent supplied printouts of the web page associated to the disputed domain name showing its content in November 2006, February 2009 and June 2012, all displaying travel-related content.
In any event, this Panel considers that Respondent is responsible of any content in the disputed domain name, even if it is selected by a third party and/or auto-generated through the use of automated systems or software.
Although Respondent’s explanation on the use of the term “detur” (as a misspelling of “detour” in English) and its alleged relationship with the English word “tour” might seem reasonable on its face, it is not fully persuasive in light of the content of the disputed domain name web site which, according to Respondent’s supplied evidence, simply shows travel-related ads generally, nothing to do with the allleged specific intention of traveling off of the main route. The aforesaid, coupled with the fact that the disputed domain name was redirected to another web site totally unrelated to such alleged specific intention gives rise to a valid inference that the disputed domain name is not used strictly within the alleged meaning of the allegedly misspelled English word “detour”.
This case presents the particularity that what seems to be a misspelling of a common dictionary word in English is an invented meaningless term in Turkish, country where the DETUR mark was firstly used and registered. Respondent asserts that in registering domain names it does not target third-party’s trademarks and although that seems to be true, the fact before this Panel is that DETUR is a mark registered by Complainant and that such term has no meaning in Turkish.
Notwithstanding the aforesaid, due to this Panel’s finding under the bad faith requirement, this Panel considers it unnecessary to determine whether Respondent might have rights or legitimate interests in the disputed domain name.
E. Registered and Used in Bad Faith
Complainants assert that Respondent registered and used the disputed domain name in bad faith.
The issue of bad faith has to be clearly supported by appropriate evidence9 and, as will be apparent from the remainder of this decision, the Panel has reached the conclusion on the evidence that Complainants have not established this element. That conclusion has been reached from the following analysis of the evidence.
The evidence adduced by Complainants shows that before the registration date of the disputed domain name (2001) and even before the date on which Respondent claims it acquired the disputed domain name (February 2002)10:
1. Complainants operated in Turkey, Netherlands, Finland, Norway and Sweden with local companies whose corporate names include the term “detur”.
2. Complainant2 had obtained registrations for the DETUR and device mark in Turkey and Finland.
3. Complainant1 had registered 3 domain names with the word “detur” under the TLDs corresponding to “.com.tr”, “.se” and “.no”.
4. The DETUR and device mark was used in Turkish brochures relating to hotel destinations in 1997, 1998 and 1999.
5. Complainant (and its parent holding Dedeman) were the subject matter of a brief note in a Turkish newspaper in 2000.
There is no evidence showing that in 2001-2002, the time when the disputed domain name was registered and subsequently obtained by Respondent, the trade marks on which this Complaint is based were famous or at least well known in Turkey and in the other countries in which Complainants already had operations. Likewise there is no evidence showing that Respondent was, or should have been, aware of Complainants or Complainants’ marks at that time, which is a requisite for a finding of bad faith registration.
Moreover, the fact alone that there were 5 companies with the term “detur” incorporated in their corporate names does not mean that such term was well known as a mark or that such companies were well known in their jurisdictions and elsewhere.
Complainants also provided figures relating to the number of passengers and operating revenue obtained, but only for the years 2006-2010 and not for the relevant period 2001-2002. Further, Complainants contend that they made a TV show which was broadcast for 2 years in Finland TV and it invited this Panel to verify this as well as other materials appearing at certain Internet sites. This Panel did so and found that such materials are dated and/or were uploaded onto the corresponding Internet sites in different dates between January 2010 and October 2011. Accordingly, none of this material supports Complainant’s contention that the disputed domain name was registered in bad faith.
Complainants further contend that because Respondent registered the disputed domain name and because of its unavailability Complainants could not register the disputed domain name. However, such bare assertion is not supported by any explanation as to why Complainants did not register the disputed domain name before their creation date (2001) while, on the other hand, then did obtain the registration of 3 domain names under the above mentioned TLDs in 1998 and 1999.
Complainants also rely on several UDRP panel decisions to support its allegations of bad faith registration. However, after reviewing those decisions, this Panel finds that they are not applicable to the present case. For instance:
1. Complainants contended that bad faith is established because of Respondent’s use of a privacy service to hide its identity and consequently make itself unreachable by Complainants. In support of that contention, Complainants submitted that the use of domain privacy services was widely recognized as an indication of bad faith in domain name registration, and cited Advance Magazine Publishers Inc. d/b/a Condé Nast Publications v. MSA, Inc. and Moniker Privacy Services, WIPO Case No. D2007-1743. However, that case relied on communications that Complainant sent to the registrant and to which it did not receive a reply, perhaps because of the use of a domain privacy service provided by a third party. In the present case, however, there is no evidence that Complainants tried to contact Respondent at any time. Further, and most importantly, in that case the registrant did not “deny prior knowledge of the Complainant’s WIRED trademarks”, quite apart from the fact that the website associated with the domain name “specifically and prominently mention(ed) [complainant’s] Wired magazine”.
2. Complainants also contended that Respondent’s passive holding of domain names suggests that it registered the disputed domain name for the purpose of selling it to Complainant for profit and relied on Florists’ Transworld Delivery, Inc. v. DomainSource.com a/k/a Domain Source, Inc., NAF Claim No. 0203000105882. However, that decision concerned a registrant which had not made any use at all of the domain name at issue and had not filed a reply.
3. Complainants also contended that actual knowledge of their trademark at the time of registration of the disputed domain name should be considered as giving rise to an inference of bad faith and it relied in that regard on Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226. However, first, in the present case there is no evidence that Respondent had actual knowledge of Complainants’ marks at the time of registration of the disputed domain name. Secondly, that case does not refer to indubitable actual knowledge but rather to an inference drawn by the panel whose finding was that “Respondents knew of or should have known of the Complainant’s trademark and services at the time Respondents registered the Domain Names given the widespread use and fame of the Complainant’s CHRISTIAN DIOR mark” (emphasis added). In contrast, in the present case, Complainants did not provide any evidence on the “widespread use and fame” of their marks at the time of registration of the disputed domain name; thus, this Panel cannot draw an inference similar to that drawn in the Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, (supra). Complainants also referred to Nova Banka v. Iris, WIPO Case No. D2003-0366, where actual knowledge was inferred from the panel’s finding that: “Respondent has registered the Domain names after a meeting with representatives of the Complainant in the summer of 1999 when Respondent apparently overheard that such registration was planned. The Respondent was aware of the company name and the business of the Complainant when registering the Domain Names on October 18, 1999. The fact that the Complainant received an invoice for the registration of the Domain Names from the Respondent supports the assumption that the registration was originally meant to be not for the Respondent's own purposes but for those of the Complainant”.
4. Complainants contend that the sale of the disputed domain name offered on the WhoIs information section is strong evidence of bad faith and in support of that contention relies on several cases. In most of those cases the registrant did not file any reply and accordingly they were undefended proceedings, and several of those cases involved very well-known trademarks (Vgr. BENETTON, DIOR, MICROSOFT, CRATE & BARREL, GOOGLE) which cannot be said of the present case. Most of those UDRP decisions referred to in the Complaint make clear that sufficient evidence was provided to the panel (“Complainant has submitted an extensive and amply documented Complaint” in Benetton Group SpA v Domain for Sale, WIPO Case No. D2001-1498; “Complainant presented sufficient evidence” in Gruner + Jahr Printing & Publishing Co. v. Global Media Consulting, WIPO Case No. D2000-1395; “There is also abundant evidence to support a determination of "bad faith" registration and use” in Google, Inc. v. wwwgoogle.com and Jimmy Siavesh Behain, WIPO Case No. D2000-1240). On the other hand, although the mere offering of a domain name for sale does not necessarily by itself constitute bad faith registration and use, it is a factor that must be weighed along with other elements. Complainant referred to the decision in Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230. This Panel therefore notes the statement contained in that decision: “The registration of and offer to sell a domain name does not constitute bad faith unless the seller is attempting to capitalize on the trademark or service mark value inherent in the name by registering the name primarily for the purpose of selling it to the mark owner or its competitors”. There is no evidence in the present record that suggests that Respondent’s primary purpose in acquiring the disputed domain name in 2001-2002 was to sell, rent or otherwise transfer the disputed domain name to Complainant or the latter’s competitors. Respondent has denied that factor and asserted that it has held the disputed domain name since 2002 and used it with PPC ads.
5. Complainants contend that Respondent intentionally attempted to infringe Complainant’s trademark, or that, to avoid infringement, it closed its eyes to whether the disputed domain name was identical or confusingly similar to a trademark in which Complainants have rights. Moreover, it contended that, even if Respondent did not register the disputed domain name with Complainants’ trademark in mind, the willful blindness of Respondent should be accepted to show bad faith registration since it should have performed at least a Google search to make sure it did not violate any rights of third parties. Complainants rely in support of that proposition on Compart AG v. Compart.com / Vertical Axis, Inc., WIPO Case No. D2009-0462, where the panel’s finding was that “if the Respondent had carried out even basic Google searches in respect of “COMPART” or searched for other top-level domain registrations using “compart”, then these would have yielded obvious references to the Complainant and its use of the name as a trade mark [...] the very strong inference in this case is that either the Respondent in fact closed its eyes to whether the Domain Name was identical or confusingly similar to a trademark in which a third party had rights, or the Respondent did make some enquiries and as a result had knowledge of the Complainant at the time of registration. Without deciding whether either of these inferences standing alone would support a finding of bad faith registration, the Panel concludes that such a finding is appropriate in this case”. However, in the present case it is not so clear that,10 years ago, such an Internet search would have produced references to Complainant and its marks in order to make an inference similar to the one drawn in that case11.
The Complaint includes in its evidence the results of an Internet search conducted at “www.google.com.tr”. That search, however, shows the result obtained at present and there is no evidence that an Internet search conducted in 2001-2002 would have displayed results showing Complainants’ group of companies and Complainants’ trademarks. To assume that an Internet search performed today would show the same results as a search performed more than 10 years ago is unpersuasive. In this respect, it is noteworthy that Complainants did not supply this Panel at least with evidence that the 3 domain names already registered by Complainants before 2002 were operational or with evidence of their content. Complainants could have supplied printouts of the content of its web sites in 2000 or 2001 to support its allegations but did not do so.
Complainants contend that the disputed domain name has been registered and used for (i) selling, renting, or otherwise transferring it to the owner of the trademark for valuable consideration in excess of the domain name registrant’s out-of-pocket costs, (ii) commercial gain, intentionally attract internet users to its web site by creating likelihood of confusion with Complainant’s trademarks and reputation, (iii) tarnishing Complainant’s trademarks and reputation, all of which are proof of bad faith. However, those bare assertions are unsupported by evidence.
There are several UDRP panel decisions where the lack of appropriate evidence on this issue has been a detrimental factor resulting in a finding against complainants. For instance, see 2Advanced Studios LLC v. Dreamrack, Inc., WIPO Case No. D2003-0923: “Mere allegations of bad faith registration and use are not enough to warrant a finding for the Complainant. Despite the suspicious circumstances surrounding the registration of a known trademark and the failure of the Respondent to file a Response, because the Complainant has put forward no tangible evidence supporting its accusation of the Respondent’s bad faith registration and use of the Domain Name, the Panel has no choice but to find that the element of bad faith has not been proven”; Enrique Bernat F., SA v. Marrodan, WIPO Case No. D2000-0966: “The burden of proof lies with the Complainant in all cases to establish actual bad faith by the Respondent. There is no obligation whatsoever on the Respondent to prove good faith”; Builder’s Best, Inc. v. Yoshiki Okada, WIPO Case No. D2004-0748: “The Complainant alleges bad faith registration based on knowledge by the Respondent that NNN was its mark. The Complainant’s’ evidence on this point is rather weak and it is flatly denied by the Respondent. Indeed, there is no evidence that the Complainant’s mark was known or even used in the Respondent’s country of residence [...] Respondent’s general intent is to register domain names that could be of interest to someone else. He argues that NNN is the abbreviated name of a type of commercial lease. The Panel is not convinced. In this Panel’s view, however, to warrant a finding of bad faith under the Policy, in general, there must be some evidence of knowledge that the Respondent knew the domain name was identical or similar to the Complainant’s mark [...] because the Respondent did not know that NNN corresponded to the specific trademark of the Complainant and was essentially “just shooting in the dark,” the Panel finds that the Complainant has not proven the third part of the test of the Policy”. Further, see Jet Marques v. Vertical Axis, Inc, WIPO Case No. D2006-0250, with elements very similar to those presented in this case.
Further, in their supplemental filing, where Complainants addressed Respondent’s arguments, they relied on Mile, Inc. v. Michael Burg, WIPO Case No. D2010-2011 and cited the observation of the panel that “the Panel observes that lengthy delays in seeking legal or administrative remedies can often have the effect of eroding or undermining the complainant’s arguments with respect to the respondent’s rights or legitimate interests in the disputed domain name, or the respondent's alleged bad faith in registering and using the domain name”. Complainant went on and submitted that “no facts in the record here indicate any basis for altering the Panel’s analysis simply because of the time that elapsed between registration of the disputed domain name and commencement of this proceeding”. Complainant’s assertion in that regard proves to be wrong, as it did not take into account Respondent’s reliance on C Brewer and Sons Limited v. Vertical Axis Inc. / wallpaperdirect.com/ c/o Nameview Inc. Whois IDentity Shield, WIPO Case No. D2009-1759 and the following remarks of the panel in that decision, which this Panel cites with approval: “on the basis of the evidence filed by both parties in this proceeding, the Panel would note that the Complainant has not been assisted by its delay in filing the Complaint. The delay, together with the lack of evidence of goodwill and reputation in the Trade Mark when the disputed domain name was registered, and the Respondent's assertion that it had never heard of the Complainant when it registered and commenced use of the disputed domain name, gives rise to the inference that the disputed domain name has not been registered and used in bad faith”..
Given the aforesaid, this Panel finds that Complainant has failed to establish, pursuant to paragraph 4(a)(iii) of the Policy, that the disputed domain name was registered in bad faith.
7. Decision
For all the foregoing reasons, the Complaint is denied.
Gerardo Saavedra
Presiding Panelist
The Hon Neil Brown Q.C.
Panelist
Dated: July 16, 2012
DISSENTING OPINION
The Dissenting Panelist agrees with the majority of the Panel on the question of confusing similarity. However, the Dissenting Panelist cannot agree with the majority of the Panel on the questions of rights or legitimate interests in the disputed domain name and bad faith registration and use.
Rights or Legitimate Interest
According to paragraph 4(a)(ii) of Policy, any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate Respondent’s rights or legitimate interests to the domain name;
(i) before any notice to the Respondent of the dispute, his use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business, or other organization) have been commonly known by the domain name, even if he has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
In this second element of the Policy, one of the important points is whether the disputed domain name is misspelled or mistyped word or not. In Turkish language the word “Tour” is translated into “tur”.is not a dictionary word. It is also not a generic or descriptive or common word. The word “tur” in Turkish is used for “tourism” in short and it means “a travel starting from a point, continuing according to a program and ending at the same point”. So the word “tur” is directly related with the tourism and travel services.
In this second element of the Policy, one of the important points is also whether Respondent’s use of the disputed domain name is noncommercial or fair use or not.
The business area of Complainants is “travelling and tourism services”. Respondent is using or used the disputed domain name either to direct to the website “www.snog.com” or to direct to the web sites of the companies dealing with travelling and tourism services which are competitors of Complainants. Directing the disputed domain name to the website “www.snog.com” has no relation with the word mistyped “detur” or the correct typing “detour” or “the tour”.
In fact pay-per-click (“PPC”) is accepted as fair use but not all PPC usages. In this case the Dissenting Panelist is of the opinion that the usage of disputed domain name by Respondent is for obtaining commercial gain and tarnishing the trademark of Complainants. Because Respondent is either directing the users to irrelevant website “www.snog.com” or to the web sites of competitors of Complainants.
Additionally Respondent is a domain name trader and owns numerous domain names. So Respondent is not known by the disputed domain name.
In the opinion of the Dissenting Panelist, Respondent has not demonstrated the conditions in paragraph 4(c) of Policy. So, the Dissenting Panelist recognizes that Respondent has no rights and legitimate interests in the disputed domain name.
Bad Faith Registration and Use
In the third element of the Policy, one of the most important point is whether Respondent has acted in bad faith during the registration of the disputed domain name or not.
First of all, it should be considered that, during the domain name registration stage, the person who registers the domain name declares that “the registration of the Domain Name will not infringe upon or otherwise violate the rights of any third party…”It is the responsibility of the person who registers the domain name to determine whether the domain name infringes or violates someone else’s rights”.
In the present case, it is clear that, before the date of registration of the disputed domain name, that Complainants;
- operated in Turkey, Netherlands, Finland, Norway and Sweden with local companies,
- had corporate names include the term “detur” as main element,
- had obtained trademark registrations in Turkey and Finland for DETUR,
- registered 3 domain names with the word “detur” as <detur.com.tr>, <detur.se> and <detur.no>.
- have used DETUR and device mark in Turkey on the brochures relating to hotel destinations in 1997, 1998 and 1999.
It is also clear that Respondent is not an ordinary domain name owner. Respondent is a domain name trader. At the moment it should be stated that being domain name trader does not mean that the trader is in bad faith. But it is important that the domain name trader must be very careful in registering the domain name. In the opinion of the Dissenting Panelist acting can be otherwise considered as wilful blindness.
Additionally, as it is stated above, the business area of Complainants is the “travelling and tourism services”. The disputed domain name has either been directing to the site “www.snog.com” or directing to the web sites of the companies dealing with travelling and tourism services which are competitors of Complainants. This shows that Respondent is using the disputed domain name in bad faith.
Respondent has stated in its response that it has registered and owns hundreds of domain names which solely incorporate typographical variations of English dictionary words, such as: <aircondioners.com>; <airelines.com>; <alibama.com>; <ambassy.com>; <andriods.com>; <arilines.com>; <asthama.com>; <asume.com>; <attoreys.com>; <attornie.com>; <batterys.com>; <benifets.com>; <bibile.com>; <calandar.com>; <catolic.com>; <classifields.com>; <colllege.net>; <cometology.com>; <convertion.com>; <copuons.com; <coupoons.com>; <creidtcards.com> ... etc.”. Those are really generic or descriptive words. But in the present case the situation is different. “Detur” is not generic or descriptive word.
According to the opinion of the Dissenting Panelist, the decision in Compart AG v. Compart.com / Vertical Axis, Inc., WIPO Case No. D2009-0462 is important and applicable for the present case. This decision has also been discussed in the majority decision. The Dissenting Panelist considers that;
- in the present case, Complainants have registered trademarks outside of the country of Complainants (Finland other than Turkey), at the date of the registration of the disputed domain name, contrary to the Compart AG v. Compart.com / Vertical Axis, Inc., Supra in which the complainant had registered his trademark only in his own country at the registration date,
- in the present case, Complainants have also registered domain names outside of the country of the Complainants (Sweden and Norway other than Turkey), at the date of the registration of the disputed domain name, contrary to the Compart AG v. Compart.com / Vertical Axis, Inc., Supra in which the complainant had no domain name registrations outside of its country at the registration date,
- if Respondent has performed at least a Google search to make sure it did not violate any rights of third parties, it could determine either the domain names or corporate names of Complainants.
So, differing from the majority of the Panel, the Dissenting Panelist recognizes that Respondent has acted in bad faith at the registration stage of the disputed domain name and is using the disputed domain name in bad faith.
Accordingly, in the view of the Dissenting Panelist Respondent has no rights or legitimate interests in the disputed domain name which has been registered and used in bad faith and the domain name <detur.com> should be transferred to the Complainant1.
Ugur G. Yalçiner
Panelist (Dissenting)
Dated: July 16, 2012
1 Available at “www.wipo.int/amc/en/domains/search/overview2.0/index.html”
2 See Koninklijke Philips Electronics N.V. v. Relson Limited, WIPO Case No. DWS2001-0003: “Each of the three stated elements are made up of a number of facts, each of which has to be proven in order for the Complainants to succeed [...] Facts are proven through evidence [...] Mere “assertions” are nothing more than argument and must in each case be based on facts proved through evidence”.
3 See footnote 1 above.
4 See Valve Corporation v. ValveNET, Inc., ValveNET, Inc., Charles Morrin, WIPO Case No. D2005-0038.
5 See The Ritz Hotel, Limited v. Damir Kruzicevic, WIPO Case No. D2005-1137: “Complainant has proved that it is the registered proprietor of the mark RITZ [...] It is not for the Panel in an administrative proceeding such as this to question the validity of those registrations”.
6 See Intocast AG v. Lee Daeyoon, WIPO Case No. D2000-1467: “For methodical reasons it is very hard for the Complainant to actually prove that Respondent does not have rights or legitimate interests in respect of the domain name, since there is no strict logical means of verifying that a fact is not given [...]. Many legal systems therefore rely on the principle negativa non sunt probanda. If a rule contains a negative element it is generally understood to be sufficient that the complainant, by asserting that the negative element is not given, provides prima facie evidence for this negative fact. The burden of proof then shifts to the respondent to rebut the complainant’s assertion”.
7 Which commonly means deviation or roundabout way or course.
8 Which commonly means travel, excursion.
9 See Enrique Bernat F., SA v. Marrodan, WIPO Case No. D2000-0966: “The burden of proof lies with the Complainant in all cases to establish actual bad faith by the Respondent. There is no obligation whatsoever on the Respondent to prove good faith, and in any event it is equally important to note that the absence of good faith does not constitute bad faith”.
10 See The Skin Store, Inc. v. eSkinStore.com, WIPO Case No. D2004-0661: “The [p]anel suspects [...] that further evidence could have been produced, but it is not the job of the [p]anel to hunt it out”.
11 Of particular interest is the following statement of the dissenting panelist in Red Nacional De Los Ferrocarriles Españoles v Ox90, WIPO Case No. D 2001-0981: “If a concept of constructive knowledge (i.e. "he must have guessed and had he made the simplest of searches he would have known; he ought to have made the search, therefore he is to be taken as having known") is introduced into the UDRP, there is no knowing where this will all lead. The “Cautionary Comments” of the majority of the Panel acknowledge the risk. Had the name in issue been a global brand, which the Respondent could have been expected to know, I might have disbelieved his story, but in this case the name is not one that he could have been expected to have known [...] If, as may be the case, the modus operandi of the Respondent is to be condemned, the proper course is to amend the Policy, not to "stretch" the Policy to deal with an activity that it was not designed to cover”.