WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Doğan Gazetecilik Anonim Sirketi v. Mehmet Baygut Case No. D2009-0223 1. The Parties
The Complainant is Doğan Gazetecilik Anonim Sirketi, Istanbul, Turkey, represented by Ankara Patent Bureau Ltd., Ankara, Turkey.
The Respondent is Mehmet Baygut, Istanbul, Turkey. 2. The Domain Name and Registrar
The disputed domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 19, 2009. On February 20, 2009, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR a request for registrar verification in connection with the disputed domain name. On February 23, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR 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” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, Paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 27, 2009. In accordance with the Rules, Paragraph 5(a), the due date for Response was March 19, 2009. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on March 20, 2009.
The Center appointed Gökhan Gökçe as the sole panelist in this matter on March 31, 2009. 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.
No further submissions were received by the Center or the Panel. The date scheduled for the issuance of the Panel's decision is April 14, 2009.
Finally, in accordance with Paragraph 11 of the Policy, the language of the administrative proceeding will be the language of the registration agreement (i.e. English) since the Parties have not agreed otherwise and since the registration agreement, which the present dispute is based upon, does not provide otherwise. 4. Factual Background
The Complainant is one of the largest media companies under Doğan Sirketler Grubu A.S. which is Turkey's leading media group. The Complainant is primarily active in newspaper and magazine publishing and releases seven daily newspapers namely, Hurriyet, Milliyet, Radikal, Fanatik, Referans, Turkish Daily News and Posta.
The Complainant offers a broad selection of newspapers appealing to a wide audience and enjoys 40% market share of circulation in Turkish newspaper media with an average circulation of 4.1 million of newspapers daily. The Complainant is well known by the general public, its newspapers are recognised to be the Complainant's product and provide an attractive platform for advertisers.
Posta is one of the Complainant's dailies and is a mass market newspaper that has achieved its own loyal readership in the past ten years and is the highest selling newspaper in Turkey.
The Complainant has registered and uses the trademark POSTA for a comprehensive list of good and services. The trademark POSTA was registered at the Turkish Patent Institute on May 31, 1995 and renewed in 2005, and DUNDEN BUGUNE POSTA on January 31, 2003.
The Respondent is an individual and he registered the disputed domain name . The Respondent registered the disputed domain name on December 10, 2007. 5. Parties' Contentions A. Complainant
In accordance with Paragraph 4 of the Policy, the Complainant requests that the domain name should be transferred to the Complainant.
The Complainant submits the grounds for these proceedings are listed in Paragraph 4(a) of the Policy. Identical or Confusingly Similar
The Complainant registered its trademark POSTA with Turkish Patent Institute on May 31, 1995, and renewed it in 2005. Furthermore, the Complainant submits that its trademark POSTA is a well known trademark and Posta is a daily newspaper commonly known by the public.
The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant's trademark POSTA as the distinctive part of the domain name is identical to the Complainant's trademark. Rights or Legitimate Interests
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant contends the Respondent is not using the domain name in connection with a bona fide offering of goods or services, is not commonly known by the disputed domain name and is not using the domain name for legitimate non-commercial or fair use.
The Complainant asserts that significant sums of money have been invested in the promotion and achieving distinctiveness of “Posta Gazetesi” establishing a reputation. As “Posta Gazetesi” is one of the best selling dailies, it is common knowledge that Posta is a newspaper published by Doğan Gazetecilik which is part of Doğan Sirketler Grubu A.S. and therefore the public identify and associate “Posta Gazetesi” with the Complainant. The Complainant has achieved recognition and the use of the term Posta Gazetesi is recognised by the public as indicating association with the Complainant.
The Complainant notes that the disputed domain name re-directs users to an online newspaper that contains false information. It is submitted that the Respondent does not express any grounds for legitimate or fair use, and that the disputed domain name redirects the user to a website containing information criticising the Complainant. The Complainant states this clearly demonstrates the Respondent's intention and lack of rights. Registered and Used in Bad Faith
The Complainant notes that it registered its trademark POSTA long before the disputed domain name which was registered in 2007. The Complainant submits that the disputed domain name has been registered in bad faith as the Respondent had knowledge of the Complainant's ownership rights in the trademark POSTA at the time of registration of the domain name. The Complainant relies on this fact and asserts that the Respondent knew that the disputed domain name was identical to the Complainant's trademark which is an indication of registration in bad faith.
The Complainant notes the Respondent does not use the domain name rather it uses a re-direct service forwarding Internet users to a site that resolves in an online newspaper website which contains false information. The Complainant registered its trademark POSTA long before the disputed domain name which was registered in 2007. The Complainant contends that the Respondent must have known of the Complainant's trademark at the time of registration as Posta is a successful and well known newspaper in Turkey. Furthermore, the Complainant states that Respondent's use of the domain name implies that the Respondent must have known of the Complainant's well known newspaper Posta as the website resolves in an online newspaper that clearly displays the words “Posta Gazetesi”.
The Complainant suggests that the Respondent knew that the disputed domain name was identical or confusingly similar to the Complainant and it is with that purpose that the registration was made. The Complainant refers to several cases that support the notion that evidence that the Respondent had knowledge that the disputed domain name was identical to the Complainant's trademark is sufficient to establish bad faith registration.
The Complainant submits that the Respondent registered the domain name for the purpose of confusing Internet users and to divert them to a website displaying an online newspaper. The Complainant points to the fact that the disputed domain name will cause the Complainant's customers confusion as they would expect the disputed domain name to resolve in the Complainant's well known newspaper but the disputed domain name resolves in an online newspaper that is not published by the Complainant. The online paper clearly displays the words “Posta Gazetesi”, the Complainant submits this causes further confusion and the Internet users are likely to conclude that the online newspaper which contains false information is hosted by the Complainant, which is not the case.
The Complainant states that there is nothing to suggest good faith and the disputed domain name was registered and is being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. Pursuant to Paragraph 5(e) of the Rules, if a Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint.
However, failure to respond in a Policy proceeding does not constitute an admission of any pleaded matter. The Panel will proceed to evaluate Complainant's evidence and his own examination of Respondent's website against the requirements of Paragraph 4(a) of the Policy, Stanworth Development Limited v. E Net Marketing Ltd.,WIPO Case No. D2007-1228. 6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three elements which the Complainant must prove, during the administrative proceedings, to merit a finding that the domain name of the Respondent be transferred to the Complainant:
(a) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(b) The Respondent has no rights or legitimate interests in respect of the domain name; and,
(c) The domain name has been registered and is being used in bad faith.
Pursuant to Paragraph 15(a) of the Rules, the Panel shall 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.
In the absence of a reply from the Respondent the Complainant must still establish the elements of Paragraph 4(a) of the Policy, however the Panel may accept as true factual allegations in the complaint, Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110. A. Identical or Confusingly Similar
The Policy requires the Complainant to demonstrate that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
The Complainant registered its trademark POSTA with Turkish Patent Institute on May 31, 1995 and renewed it in 2005. POSTA is a trademark with figurative elements with the most dominant element being the word POSTA. The Complainant at Annex 3 has provided evidence of ownership of trademark registrations consisting of or including the word POSTA. The Panel therefore accepts that the Complainant is the owner and has exclusive rights in the trademark POSTA, T. Rowe Price Associates, Inc. v. J A Rich, WIPO Case No. D2001-1044.
Before registering a trademark the Turkish Patent Institute carries out an examination and determination that there are no obstacles to registration, the fact that the trademark has been registered demonstrates that there were no absolute grounds for refusal, prior rights and no objections were filed.
The Panel notes that the Complainant has established wide recognition of its Posta newspaper. It is common knowledge in Turkey that the Posta newspaper is published by Complainant and the use of that newspaper name has come to be recognised by the general public as indicating an association with products produced exclusively by the Complainant. The Complainant at Annex 3 has provided evidence that Posta newspaper has been circulated since 1995 and has since enjoyed steady growth and recognition.
Furthermore, the Complainant refers to the following decisions in relation to identity or confusing similarity, Patek Phillippe v. Kupfer Jewelry Inc., WIPO Case No. D2008-1193; Akbank v. Mr. Arda Alpar, WIPO Case No. D2008-0574; Gianni Versace v. Nicolino Colonnelli and Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-0570. The Panel follows the two stage test to be applied under this first element of the UDRP, 1) does the Complainant have rights in the trademark; and 2) is the domain name identical or confusingly similar to the Complainant's trademark. Therefore once ownership is established the Complainant should establish that the domain name is identical or confusingly similar to a trademark in which the Complainant has rights. There is no doubt that the Complainant owns the trademark POSTA and therefore the first stage of the test is satisfied. Whether the disputed domain name is identical or confusingly similar to a trademark is based on an objective test. It has been stated in several decisions by other UDRP administrative panels that incorporating a trademark in its entirety into a domain name may be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark, Bayerische Motoren Werke AG, Sauber Motorsport AG v. Petaluma Auto Works,WIPO Case No. D2005-0941.
Although the disputed domain name consists of two words “Posta” and “Gazetesi”, Gazetesi means newspaper in Turkish and therefore the addition of a second word does not remove the confusion, in fact here it increases the probability of confusion as a user would expect the disputed domain name to resolve to a site related with the Complainant or the Complainant's Posta newspaper. Furthermore, the addition of a gTLD suffix is irrelevant when determining whether a disputed domain name is confusingly similar to the Complainant's trademark, PRL USA Holdings, Inc. v. Spiral Matrix,WIPO Case No. D2008-0575.
The Panel recognises the Complainant's rights and concludes that the domain name in issue is identical or confusingly similar to the Complainant's trademark. The Panel finds that the addition of a generic word after the Complainant's registered trademark does not adequately distinguish the disputed domain name and that it is likely to increase the likelihood of confusion. The requirements in Paragraph 4(a)(i) of the Policy are fulfilled, consequently, the Panel finds for the Complainant on the first element of the Policy. B. Rights or Legitimate Interests
The Panel visited on April 1, 2009, and it resolved to an online newspaper and therefore there appears to be no re-direction to a criticism site hosted by the Respondent as the Complainant alleges. The Respondent's online newspaper offers the user a varied range of material including advertisement and is populated with links to dating sites, although there were serious news articles the website had a predominantly sexual content and information pertaining to sexual techniques.
It is submitted that the Respondent does not any have any grounds for legitimate or fair use, and that the disputed domain name redirects the user to an online newspaper. The Panel finds the above circumstances clearly demonstrate the Respondent's intention to divert the Complainant's customers and Internet users to the Respondent's own site.
In order to satisfy the Policy the Complainant must show a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455. The Complainant submits the Respondent has no rights or legitimate interests and has failed to demonstrate legitimate or fair use, that the Respondent is not using the domain name in connection with a bona fide offering of goods or services, that the Respondent is not commonly known by the disputed domain name and is not using the domain name for legitimate non-commercial or fair use.
The Respondent is using the disputed domain name to misleadingly directing Internet users to its own site which contains commercial links offering services and the Respondent is thereby attempting to achieve commercial gain by diverting the Complainant's customers. This use is not consistent with a bona fide offering of goods or services, Fox News Network, LLC v. Warren Reid,WIPO Case No. D2002-1085. Furthermore, the user would rightly expect the disputed domain name to resolve to the Complainant's website or at the very least to a website connected to the Complainant, which is not the case.
A respondent has a right to register and use a domain name to attract users consisting of commonly used generic words, National Trust for Historic Preservation v. Barry Preston,WIPO Case No. D2005-0424; Private Media Group, Inc., Cinecraft Ltd. v. DHL Virtual Networks Inc.,WIPO Case No. D2004-0843. However, this only applies if the domain name was registered because of its own attraction and not solely to benefit from notoriety of a trademark, National Trust for Historic Preservation v. Barry Preston,WIPO Case No. D2005-0424; The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340; WIPO Overview of WIPO Panel Decisions, Paragraph 2.2. However, it is obvious to the Panel in this case that the Respondent's intention is to benefit from the reputation of the Complainant and the purpose of the disputed domain name is to misleadingly divert Internet traffic to the Respondent's website.
The Panel recognises the Complainant's reputation in its field of activities and, as the Respondent is located in Turkey, is satisfied that it is unlikely that the Respondent would not have known about the Complainant's trademark. Furthermore the disputed domain name translates to Posta Newspaper and the Panel is satisfied that the Respondent must have known of the Complainant's daily Posta newspaper. The Panel finds that this suggests that the Respondent registered the domain name in order to create an association with the Complainant.
The Panel notes that the Respondent has not indicated any circumstances as enumerated in Paragraph 4(c) of the Policy. The Respondent did not file a Response and there is nothing before the Panel to support the existence of the Respondent's rights in the disputed domain name or that any of the circumstances listed in Paragraph 4(c) of the Policy would apply.
The Complainant has satisfied the requirements of 4(a)(ii) of the Policy and consequently the Panel finds in favour of the Complainant on the second element of the Policy. C. Registered and Used in Bad Faith
As discussed above, the Respondent's domain name is confusingly similar to the Complainant's POSTA trademark which was registered long before the registration of the disputed domain name. As the Respondent appears to be resident in Turkey it is unlikely that he was not aware of the Complainant's rights in its trademark. The Panel is of the opinion that actual knowledge of the Complainant's trademark at the time of registration of the disputed domain name suggests bad faith, Parfums Christian Dior v. Javier Garcia Quintas and C,WIPO Case No. D2000-0226.
The Panel is of the opinion that the majority of users would assume that the disputed domain name resolves in a site affiliated with the Complainant, misdirection of traffic to other websites suggests bad faith, General Electric Co. v. Fisher Zvieli, a/k/a Zvieli Fisher,WIPO Case No. D2000-0377; The Sportman's Guide, Inc. v. John Zuccarini,WIPO Case No. D2001-0617.
Use of a domain name that is confusingly similar to another's trademark to display sponsored links to third parties has been regarded to indicate bad faith, McDonald's Corporation v. ZusCom,WIPO Case No. D2007-1353. Moreover, diverting potential customers looking for Complainant's site to a site containing sexual content with the intention to profit further indicates Respondent's bad faith, Giampaolo Matteucci v. Webmaster, AWG,WIPO Case No. D2001-1135. Furthermore it is obvious to the Panel that the Respondent's use of the domain name will tarnish Complainant's trademark.
The Panel concludes that the Respondent is using the domain name intentionally to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant's trademark. This is evidence that the domain name at issue was registered and is being used in bad faith according to Paragraph 4(b)(iv) of the Policy. Furthermore, the Panel finds that the Respondent's lack of Response also suggests bad faith, Awesome Kids LLC and/or Awesome Kids LLC v. Selvay Communications,WIPO Case No. D2001-0210.
The Panel is of the opinion that the Respondent registered and is using the disputed domain name in bad faith. It is apparent that the Respondent registered and is using the domain name to cause confusion with the Complainant's marks for Respondent's financial gain by offering a collection of click through sites.
The Complainant has satisfied the requirements of 4(a)(iii) of the Policy and consequently the Panel finds in favour of the Complainant on the third element of 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 name be transferred to the Complainant.
Gökhan Gökçe
Sole Panelist
Dated: April 14, 2009
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