WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kaan Tekstil Etiket Turizm Sanayi Ve Dis Ticaret Ltd.Sti. , Sinerji Moda Tasarim A.S. v. Zetkom Yazilim ve Donanim Hiz.Ltd.St
Case No. D2007-0835
1. The Parties
The Complainants are Kaan Tekstil Etiket Turizm Sanayi Ve Dis Ticaret Ltd.Sti. and Sinerji Moda Tasarim A.S., Istanbul, Turkey, represented by Istanbul Patent & Trademark Consultancy Ltd., Turkey.
The Respondent is Zetkom Yazilim ve Donanim Hiz.Ltd.St, Istanbul, Turkey.
2. The Domain Names and Registrar
The disputed domain names and are registered with Tucows Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 7, 2007. On June 8, 2007, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain names at issue. On June 8, 2007, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 July 12, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 1, 2007. The Response was filed with the Center on July 30, 2007.
The Center appointed Nasser A. Khasawneh as the sole panelist in this matter on August 24, 2007. 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 first Complainant, Kaan Tekstil Etiket Turizm Sanayi Ve Dis Ticaret Ltd.Sti, owns the trademark and service mark CHILLCLO, registered on April 19, 2006, in classes 25 and 43. The Complainant uses the trademark CHILLCLO in connection with clothing and has submitted advertisement material showing such use of the trademark. It has further registered the domain name on May 9, 2007.
The second Complainant, Sinerji Moda Tasarim A.S. presented an extract of the Commercial Chamber of Commerce of Istanbul. The document shows that “sinerji moda” is part of the trade name of the second Complainant which is registered in March 2006.
The Respondent has registered the disputed domain names with the register Tucows Inc. The domain name was registered on January 26, 2006, and the domain name was created on December 19, 2006.
5. Parties’ Contentions
A. Complainant
The Complainants contend that:
The first Complainant is the owner of the mark CHILLCLO and has used it in Turkey in connection with clothing and accessories and in connection with the provision of food and beverage.
The second Complainant is the owner of the trademark/trade-name “sinerji moda” which is not registered as a trademark. It is used in connection with store services featuring clothing and accessories.
The disputed domain names are identical to the marks in which the Complainants have rights. These marks include: 1) CHILLCLO, which is registered in the name of the first Complainant, 2) the words “sinerji moda”, which form part of the trade-name of the second Complainant and are an unregistered trademark. The disputed domain name is identical to the trade-name/trademark of the second Complainant.
The Respondent has no rights or legitimate interests in respect of the disputed domain names for the following reasons:
a) The Respondent is not known under the names CHILLCLO or “sinerji moda” as the Respondent never made a commercial use of the mark or sold goods or services under these marks, nor is it known under the disputed domain names.
b) The Respondent is not making a legitimate non-commercial or fair use of the domain names.
c) The Respondent is claiming use of the domain names in connection with a bona fide offering of goods or services since the Complainant has not licensed or permitted the use of the marks CHILLCLO or “sinerji moda” by the Respondent and the Respondent is aware of the Complainant’s goodwill and reputation in the trademark/trade-name mentioned.
The Respondent registered and used the domain names in bad faith. This conclusion is supported by various factors:
a) The Complainant had requested the Respondent to register the disputed domain names on behalf of the Complainant and to run the websites of the Complainant. But the Complainant later on discovered that the Respondent had registered the disputed domain names under its own name and refused to transfer them to the Complainant unless a very high price was paid. The Complainant was paying the Respondent for the costs of registration and renewal of the domain names and the Complainant thought these domain names were registered in its name.
b) The Respondent had informed the Complainants that it would not transfer the domain names easily.
c) The Respondent is using information provided by the users when logging to the website and taking advantage of the confusion created in the names through the use of the trademark of the Complainants.
d) The word CHILLCLO is a made-up and unusual word which can’t be adopted by the Respondent by coincidence and would only have been adopted because of the Respondent’s awareness of the trademark of the Complainant and for the purpose of creating confusion in the mind of the consumer.
e) The Respondent was aware of the Complainant’s plans to launch a website for its consumers and wanted to pressure the Complainant into buying the domain names. The Respondent has previously registered other domain names which belong to third parties and this indicates that the Respondent is engaged in this pattern of conduct and confirms its bad faith.
B. Respondent
The Respondent contends that:
It registered the domain name as it was planning to use the name “” in connection with its business. As “chillclone” is too long, the Respondent chose the shorter version “”.
The first Complainant approached the Respondent with the problem of not being able to register “” to use in connection with its business and the Respondent agreed to allow them to use the domain name . The Complainant wanted to obtain the domain name without making any payments to the Respondent, to which the latter could not agree.
The Respondent is the owner of the domain name and had never sold it. It has owned the concerned trademark before the Complainant even created its business.
The Complainants had financial problems and never made serious attempts to own the domain names by making the necessary payments.
The Respondent had created the domain names to use them in connection with its business. When it feels that it is no longer necessary to keep a certain domain name, it tries to sell it. It is under no obligation to simultaneously start a business when it registers a specific domain name.
The Respondent had registered the domain name prior to the registration of the trademark CHILLCLO by the Complainant. There was no way for the Respondent to know about the Complainant’s reputation.
The domain name has been bought and registered by the Respondent at the request of the Complainant and then sold to it. The Complainant didn’t pay the Respondent for the transfer of the domain name. The Complainant and the Respondent were not able to agree on a selling price. The Complainant had paid the Respondent for hosting, SSL and web design. The Respondent had a maintenance agreement with the Complainant and maintained the domain names for them.
The majority of the users of the website are from Turkey and therefore the claim that foreign customers of the Complainants can’t access the website is not true.
The Complainant is able to make the necessary updates to the website since the Respondent had granted them the necessary admin control.
The Respondent had allowed the Complainant to use the domain name in good faith initially.
When the Respondent registered the domain name , the Complainant was not aware of the matter.
The Respondent confirms that it was never the owner of the domain name .
The Respondent has no plans to sell the domain names to a third party.
The Respondent had invented the name CHILLCLO because it is relevant to the IT business in connection with which it wanted to start a business.
The website of the domain name CHILLCLO is active and is used in connection with ordering products on line.
It is not true that the Respondent has previously registered a domain name to sell it to a third party as no payments for that are proved.
Supplemental Filing
The Panel took note of the fact that the Complainants made an additional submission and the Respondent submitted a further response. There is no explicit provision under the Rules for supplemental filings. Therefore, it is at the discretion of the panel to consider it, in accordance with ICANN Rules, paragraph 10(d). The Panel did not consider the additional submissions as “the Panel is persuaded that documents, whether designated “replies” or “rebuttals,” are not called for in the Rules. Paragraph 12 of the Rules provides for additional submissions only at the Panel’s request, in its sole discretion” (See J.P. Morgan & Co., Incorporated and Morgan Guaranty Trust Company of New York v. Resource Marketing, WIPO Case No. D2000-0035).
6. Discussion and Findings
A. Identical or Confusingly Similar
The first Complainant is the owner of the trademark CHILLCLO as established from the trademark registration. The Respondent has admitted that it allowed the use of the domain name by the Complainant and the Panel notes that the Respondent did not object or challenge the registration of the trademark CHILLCLO by the Complainant at any point in time. Accordingly, the Panel is satisfied that the first Complainant has rights in the trademark CHILLCLO.
The second Complainant uses the trademark SINERJI MODA as part of its corporate name. The Respondent states that it has registered the domain name upon the request of the Complainant. Therefore, the ownership of the words “sinerji moda” by the second Complainant is not in dispute.
The difference between the Complainants’ trademarks and the disputed domain names only consists in the addition of the suffix “.com”. This does not create any distinctiveness that helps eliminate the possibility of confusion. In similar cases, the addition of the suffix “.com” was considered not to add any element of distinctiveness (see Nokia Corporation v. Firdaus Adinegoro/Beli Hosting, WIPO Case No. D2004-0814).
Consequently, the Panel finds that the Complainants have met the requirements of the first test under the Policy.
B. Rights or Legitimate Interests
The Respondent can demonstrate its rights or legitimate interest in the disputed domain names in accordance with paragraph 4(c) of the Policy. Examples of such demonstration include the following:
i) that the Respondent used or presented demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services;
ii) that the Respondent has been commonly known by the domain name;
iii) that the Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark of the Complainant.
In light of the statements of the Respondent and the facts of this case, the Panel had to consider whether it can be concluded that the Respondent is using, or preparing to use, the disputed domain names in connection with a bona fide offering of goods or services.
In connection with the domain name , the Respondent stated that it allowed the Complainant to use the domain name. It also stated that even though initially it was planning to use the domain name in connection with IT business, it eventually decided not to do so. Therefore, even though the domain name is currently used by the Respondent to offer clothing and accessories, this does not constitute in the view of the Panel a bona fide offering of goods or services. The products offered are confusing with the products of the Complainant and the Respondent admitted that its initial intention for use was not ultimately applied. The Respondent further confirmed that it lost interest in the IT business it wanted to launch. Therefore, the Panel is not convinced that the Respondent has any plans to use the domain name for a bona fide offering of goods or services.
In connection with the domain name , the Respondent has not asserted ownership of the domain name and hence did not try to prove any plans for use. In this context, the Panel was guided with previous WIPO Decisions that dealt with similar questions such as J.P. Morgan & Co., Incorporated and Morgan Guaranty Trust Company of New York v. Resource Marketing, WIPO Case No. D2000-0035 where the “Respondent …. provided no annexes, exhibits or other evidence of preparation to use the domain name as an active website or of expenses in such preparation.”
Furthermore, the Panel does not find any association between the Respondent’s name and the disputed domain names. The Panel also found that the Respondent cannot argue that the disputed domain names were being used for “legitimate non-commercial or fair use” purposes. In fact, the Respondent tried to receive commercial gain from selling the domain names to the Complainant.
Consequently, the Panel finds that the Complainants have met the requirements of the second test under the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out a number of circumstances, each of which shall provide evidence of registration and use in bad faith. Paragraph 4(b)(i) sets out the following such element: “(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name”. The Panel is convinced that the Respondent’s actions fall within this element as the Respondent has offered the domain names for sale and has not made any other bona fide use thereof since their registration.
The Complainant has submitted copies of invoices issued by the Respondent addressed to the second Complainant. The invoices are in connection with the disputed domain name . They are issued in June 2006, September 2006, December 2006, and January through May, 2007. In the Panel’s view, this confirms that the registration of the domain name by the Respondent was on behalf of the Complainant as stated by the latter. Furthermore, the Respondent explained that it has allowed the use of the domain name by the Complainant. These facts lead the Panel to conclude that the registration of the domain name, even if not initially done in bad faith, did result in bad faith use. The maintenance of the registration of the domain name by the Respondent under such circumstances must also have been, on a balance of probabilities, in bad faith. (see e.g. a similar approach in Exel Oyj v. KM Trading, Inc. WIPO Case No. D2004-0433)
The Complainant also submitted a copy of an invoice issued by the Respondent addressed to the second Complainant which refers to the disputed domain name . This is issued on December 20, 2006. This is further indication of the Respondent having acted in bad faith within the parameters of the Policy.
Furthermore, the Respondent has created confusion with the trademark of the first Party by using the domain name for the sale of clothing through the website. The Panel noted previous WIPO Decisions that grappled with similar issues such as Supre Pty Ltd v. Paul King, WIPO Case No. DAU2004-0006, where it was determined that “The Respondent also created confusion between the websites referred to and the Complainant’s name and mark as to the sponsorship of those sites and the products and services promoted on them. The confusion created was to give the impression that those sites were approved or sponsored by the Complainant or even that they were part of the Complainant’s operation.”
In the particular circumstances of this case, the Panel finds that the Complainants have met the requirements of the third test under the Policy.
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 domain names, and be transferred to the Complainant.
Nasser A. Khasawneh
Sole Panelist
Dated: September 7, 2007
Full & Egal Universal Law Academy