WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Ceritler Bilgi Hizmetleri Ltd.Sti., Mr.Ali Nabi Cerit v. Arif Cerit, Ceritler Konfeksiyon San. Ve Tic.Ltd.Sti Case No. D2008-1339 1. The Parties
Complainants are Ceritler Bilgi Hizmetleri Ltd.Sti. and Mr. Ali Nabi Cerit of Istanbul, Turkey, represented by Istanbul Patent & Trademark Consultancy Ltd., Istanbul, Turkey.
Respondent is Arif Cerit, Ceritler Konfeksiyon San. Ve Tic.Ltd.Sti, of Istanbul, Turkey. 2. The Domain Names and Registrars
The disputed domain names , , and are registered with Spot Domain LLC dba D. The disputed domain name is registered with Key-Systems GmbH dba . 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 1, 2008. On September 2, 2008, the Center transmitted by email to Spot Domain LLC dba D and Key-Systems GmbH dba requests for registrar verification in connection with the disputed domain names. On September 2, 2008, Spot Domain LLC dba D transmitted by email to the Center its verification response confirming that Respondent Arif Ceritler is listed as the registrant of the domain names , , and , and providing the contact details. Spot Domain LLC dba D also noted that another domain name included in the Complaint was not subject to the (“Policy” or “UDRP”). On September 4, 2008 Key-Systems GmbH dba transmitted by email to the Center its verification response confirming that Respondent Ceritler Konfeksiyon San. Ve Tic.Ltd.Sti is listed as the registrant of the domain name and providing the contact details. Through its reseller Cizgi Telekomunukasyon Hizmetleri San. Tic. Ltd. Sti., Key-Systems GmbH dba also informed the Center that the registration agreement for is in Turkish.
The Center sent an email communication to Complainants on September 17, 2008 respecting the following three issues which required possible amendment, modification or withdrawal of the Complaint: (1) the fact that according to the relevant registrar, the domain name was not subject to the Policy; (2) that the registration agreement for the domain name was, according to the relevant registrar, in Turkish and not in the English language in which Complainants had submitted their Complaint, and (3) that the Complaint was, exceptionally, brought against multiple respondents. The Center notified Complainants that new submissions and/or replies respecting the above issues were required no later than September 22, 2008.
In response to point (1) above, on September 25, 2008, Complainants withdrew their Complaint as to the domain name .
On September 17, 2008, the Center also separately and formally notified Complainants regarding point (2), the language of proceedings. The Center noted that the registration agreement was in Turkish while the Rules for uniform Domain Name Dispute Resolution Policy (the “Rules”), paragraph 11, require the language of the proceeding to be that of the registration agreement in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, subject to the authority of the Administrative Panel to determine otherwise. In its language of proceeding notification, the Center stated that the Complaint would normally be deemed withdrawn without prejudice if by September 22, 2008 Complainants did not provide at least one of the following: (1) satisfactory evidence of an agreement between Complainants and Respondent to the effect that the proceedings should be in English; (2) the Complaint translated into Turkish; or (3) a request for English to be the language of the proceedings, including arguments and supporting material.
In response to these notifications by the Center, Complainants on September 25, 2008 wrote separately to the Center that Complainants chose not to file a remedied Complaint in Turkish because the language of the registration agreements for the other three disputed domain names other than that for were in English; therefore, the Complainants concluded that Respondent must have English knowledge.
In response to point (3) above, on September 25, 2008, Complainants submitted a separate letter to the Center stating that Complainants chose not to submit a “remedied” Complaint respecting multiple respondents on the basis that “the second respondent Mr. Arif CERIT is a partner and authorized manager of the first respondent CERITLER KONFEKSIYON SANAYI VE TIC. LTD. STI. at the same address.”1
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 Respondent of the Complaint, and the proceedings commenced on September 29, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was October 19, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on October 21, 2008.
The Center appointed Nasser A. Khasawneh as the sole panelist in this matter on November 4, 2008. 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 mark CERITLER is registered as of July 1, 1999 with the Turkish Patent Office in classes 23, 24 and 25, registration number 99/010592.
The domain names were registered on the following dates: , and , July 08, 2008. All these domain names resolve to parking pages with search engines and a mix of advertising links. The domain name was registered January 10, 2008, and presently resolves to a parking page without advertising links. 5. Parties' Contentions A. Complainant
Complainants provide no information about the nature of their business except links to Turkish language websites and a piece of Turkish literature annexed to the Complaint, despite insisting on bringing the present administrative proceeding in English.
Complainants contend that:
Mr. Ali Nabi CERIT is legal owner of the trademarks “Ceritler” and “Ceritler Stylized” and has been using these marks since 1971. Ceritler Bilgi Hizmetleri Ltd.Sti. is the licensee of the trademarks and is using the trademarks as the name for its entity.
On June 10, 2008 Complainants received an e-mail from the address “gulizar@” and realized that Respondent had registered the domain name “” “illegally.” On July 7, 2008, Mr. Ali Nabi CERIT contacted Respondent and requested transfer of the domain name but Respondent refused.
After these communications, on July 08, 2008, Respondent registered the other disputed domain names. On August 07, 2008, Complainants sent a cease and desist letter to Respondent and again requested transfer of the disputed domain names but Respondent did not reply.
Complainants argue the following legal grounds:
1. The disputed domain names are identical to a trademark or service mark in which the Complainants have rights. Noting its trademark registrations in Turkey, Complainants state that “The public has come to associate the name CERITLER exclusively with the Complainants and that the Complainants have rights in the designation CERITLER. That is why the domain name ‘CERITLER' has been chosen by the respondents for registration.”
2. Respondents have no rights or legitimate interests in respect of the disputed domain names, that Complainants had trademark rights prior to Respondents' registrations and that Respondent could not possibly use the mark in a domain name without permission from Complainants, which Complainants have not given. Complainants aver that in 1998, Respondent and Complainants “demerged” companies, and that in subsequent proceedings before the Turkish trademarks office, Respondent ultimately withdrew his appeal of the denial of Respondent's opposition to Complainants' trademark registrations. Consequently, Complainants contend any use of the term “CERITLER” for goods and services is subject to their exclusive control, including uses on the Internet. Complainants continue by noting that Respondents are making only a “parking page” use of the disputed domain names and that such use would obviously be intended to capitalize on Complainants' business names and therefore would not be legitimate use under the Policy.
3. The disputed domain names were registered and are being used in bad faith by Respondents. Complainants contend that Respondent registered the disputed domain names in bad faith, because it had knowledge of a successful competitor specifically using that name already, intended to disrupt the business of Complainants, and intentionally attempted to attract, for commercial gain, online users to its web site by creating a likelihood of confusion with Complainants' mark. Complainants recite further allegations respecting bad faith which draw upon the matters cited above, adding that making use of the domain names to direct traffic to parking pages that have nothing to do with Complainants is itself evidence of use in bad faith.
On this basis, Complainants seek transfer of the disputed domain names (without specifying which Complainant they wish to receive the names). B. Respondent
Respondent did not reply to Complainants' contentions. 6. Discussion and Findings A. Threshold Matters A. 1. Procedural Issues
Several procedural issues exist in this case. Although Complainants failed to respond by the September 22, 2008 deadline stated in the Center's notices and communication about language of proceeding, the Panel has reviewed the issues and accepts each of Complainants' three petitions. In light of the Panel's rulings on the merits of the Complaint, the Panel finds that none of these threshold rulings cause prejudice to Respondent.
In the first instance, Complainants of course may withdraw their Complaint respecting the domain name since the Policy does not govern that registration by Respondents. Second, the Panel is persuaded that although Complainants did not follow the letter of paragraph 11 of the Rules, in this case, Respondents have made several other registrations in which the registration agreements are in English, and that therefore it will be expeditious and not prejudicial Respondent for these proceedings to continue in English.
With respect to the multiple respondents issue, it should be noted that strictly speaking the registrant listed differs in the case of the . However, the Panel accepts Complainants' present representation that Arif Cerit is a responsible party involved in the business of Respondent CERITLER KONFEKSIYON SANAYI VE TIC. LTD. STI. The business name is also used as “organization” for contact information in each of Arif Cerit's disputed domain name registrations. Therefore this proceeding may continue including both Respondents, treating them as a single party. A. 2. Substance of the Complaint and Applicable Standards
The Rules require the Panel to decide a complaint on the basis 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. Rules, paragraph 15(a). Complainants must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainants have rights;
(ii) 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.
Complainants must establish these elements even if Respondent does not file a Response.
The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064. In the absence of a Response, the Panel may also accept as true the factual allegations in the Complaint. E.g., ThyssenKrupp USA, Inc. v. Richard Giardini,WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009). B. Identical or Confusingly Similar
The Panel agrees with Complainants that Respondent's domain names , , and are identical to Complainant's trademark.
Panels disregard the top-level domain name suffix in evaluating whether a respondent's domain name is identical or confusingly similar to a complainant's marks. E.g., VAT Holding AG v. VAT.com,WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc.,WIPO Case No. D2006-13l5.
The Panel finds that the disputed domain names are identical to the registered “CERITLER” trademark of Complainants and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled. C. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy, a respondent may prove that it has a right or legitimate interest in a disputed domain name if:
“(i) before any notice to you [Respondent] of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.”
Complainants fail to address the fundamental question in this case, which appears to be whether Respondent has a right or legitimate interest under paragraph 4(c)(ii) because he has been “commonly known” by the disputed domain name. Submissions by Complainants in multiple places suggest that he has.
“Ceritler” appears in both parties' company names and also is a derivation of the surnames of both parties: Cerit. It appears that Complainants and Respondent were in business together before 1998, and that after going their separate ways, there was a later dispute over trademark rights between the parties involving the derived name “Ceritler.”
From the materials submitted by Complainants, it appears that both parties continue to use the name “Ceritler” as a part of their respective business names.2
Typically, in a UDRP proceeding, it will be sufficient for a complainant to make a prima facie case that a respondent lacks rights or legitimate interests in order for the burden of rebuttal to pass to the respondent. However, this case is somewhat unusual in that the record including materials provided by Complainant does tend to establish that Respondent is in fact called Arif Cerit, and who has been associated with a business incorporating the term “Ceritler”. In such case the burden on a complainant for establishing that a respondent lacks rights or legitimate interests in a domain name is inevitably going to be higher. Respondent is of course not assisted here by its failure to submit a Response and it is certainly not this Panels obligation to formulate arguments for a Respondent who seemingly cannot be bothered to file a Response. But given the not implausible connection between Respondents name and the domain names in dispute, and if Complainant had cleared the bar under the second element, given the evidence of record it may have been difficult indeed for them and have established bad faith registration and use in the particular circumstances of this case.
The Panel has also undertaken limited factual research by viewing online references to the company name of Respondent CERITLER KONFEKSIYON SANAYI VE TIC. LTD. STI. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions. The Panel has thereby confirmed Complainants' representations that Respondent Arif Cerit is a partner and authorized manager in CERITLER KONFEKSIYON SANAYI VE TIC. LTD. STI., and that the latter is an active company. See Merrell Pharmaceuticals Inc. and Aventis Pharma SA v. Russel Allegra,WIPO Case No. D2005-0464 (in absence of Response, panelist examined lawyers' rolls to determine that respondent was commonly known by disputed domain name, transfer denied).
It is not highly unusual for a UDRP panel to deny transfer on the basis that a disputed domain name contains some or all of a family name, even where a complainant has trademark rights respecting the name. Compare Perfetti Van Melle S.p.A. v. Pi-Effe S.a.s., WIPO Case No. D2003-0067; W. & G. Foyle Limited v. Robert G. Foyle,WIPO Case No. D2002-0039. The Panel finds that this is not a case in which Respondent conveniently has sought to use his name unfairly to trade on the name of a well-known business.
Complainants appear to believe that the existence of a trademark registration proves their right to prevail under the Policy. The Panel disagrees. The Policy was not intended to fit all circumstances in which there is a dispute over trademark rights involving the Internet, even if complainants may more appropriately find remedies elsewhere. See e.g., Car Advisory Network, Inc. v. Journal Community Publishing Group, Inc., WIPO Case No. D2008-0717.
Instead, the Policy is narrowly drawn, and provides specifically that transfer is not appropriate in this summary administrative proceeding because Respondent has been commonly known by the disputed domain names.
The Panel therefore concludes that Complainants fail to meet their burden under paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
In light of the Panel's conclusion that Complainants fail on the record in this particular case to meet their burden of proving that Respondent has no legitimate interest, it is unnecessary to consider whether the Respondent registered and is using the disputed domain names in bad faith. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Nasser A. Khasawneh
Sole Panelist
Date: November 18, 2008
1 The registrations for the first three disputed domain names are in the names of Arif Ceritler, listing the registrant's organization as “CERITLER KONFEKSIYON SANAYI VE TIC.LTD.STI,” while is listed in the name of CERITLER KONFEKSIYON SANAYI VE TIC.LTD.STI alone, without reference to Arif Ceritler.
2 In Annex 9 to the Complaint, Complainants submitted correspondence and resolutions dated October and September 2001 from the Turkish Patent Institute evidencing use by Respondent of his company name “CERITLER KONFEKSIYON SANAYI VE TIC.LTD.STI.” Further, in response to the Center's notice respecting the issue of multiple respondents, Complainants confirmed that Arif Cerit is a “partner and authorized manager” in CERITLER KONFEKSIYON SANAYI VE TIC. LTD. STI.
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