WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Ni Insan Kaynaklari Personel ve Danismanlik Limited Sti v. Timothy Michael Bright Case No. D2009-0315 1. The Parties
Complainant is Ni Insan Kaynaklari Personel ve Danismanlik Limited Sti of Istanbul, Turkey, represented by Laytons Solicitors of, United Kingdom of Great Britain and Northern Ireland.
Respondent is Timothy Michael Bright of Slough, Berkshire, United Kingdom, represented by himself. 2. The Domain Names and Registrars
The disputed domain names and are registered with Melbourne IT Ltd. The disputed domain name is registered with R SpA 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 10, 2009. On March 11, 2009, the Center transmitted by email to Melbourne IT Ltd and R SpA a request for registrar verification in connection with the disputed domain names. On March 12, 2009 and March 13, 2009, Melbourne IT Ltd and R SpA respectively transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on March 16, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was April 5, 2009. The Response was filed with the Center on April 3, 2009.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on April 17, 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.
Complainant and Respondent each filed two supplemental filings subsequent to the Complaint and Response. Complainant's supplemental filings are dated April 8 and 22, 2009. Respondent's supplemental filings are dated April 10 and 27, 2009. Both parties were advised by the Center that acceptance of supplemental filings is at the discretion of the Panel. At the request of the Panel, the Center transmitted by email the following message to the parties on April 27, 2009:
“Based upon the timing and length of the supplemental filings by both parties and in accordance with paragraph 10(c) of the Rules for Uniform Domain Name Dispute Resolution Policy, the date by which the Administrative Panel is required to forward its decision to the Center has been extended to May 8, 2009. Further, on the Panel's behalf the Parties are advised that “without prejudice to whether the Panel will accept any or all of the already-filed supplemental submissions, the Panel will not accept any additional filings unless it specifically requests them. Therefore, the submission of supplemental filings on the parties' own initiative should cease.”
Complainant and Respondent each have included in their supplemental submissions evidence asserted to affirm or refute claims alleged not to have been foreseen by the other in previous submissions. Though the Panel does not consider the supplemental submissions to have contributed substantially to its assessment of the facts, the Panel nonetheless accepts those submissions as part of the record of the proceeding. 4. Factual Background
Complainant1 is owner of registration for the word and design mark NICHOLSON INTERNATIONAL on the trademark register of the Turkish Patent Institute, registration number 2008 04585, dated January 25, 2008, in international classes 35 and 41.
Complainant asserts that it was formed in Turkey in November 2002 and that it purchased by contract the liabilities and assets relating to Turkey of an insolvent predecessor business, Nicholson International Incorporated BV, a Netherlands entity, that did business in a number of countries (including Turkey) in the field of executive search and recruitment under the name “Nicholson International”. Complainant asserts that the assets it purchased from the predecessor enterprise included “all rights generated by the Predecessor to trade in Turkey under and by reference to the Complainant's Mark.” Complainant has not furnished a copy or other substantial evidence of the aforesaid purchase contract. Complainant has provided copies of correspondence transmitted within Turkey from Respondent and others using NICHOLSON INTERNATIONAL in its letterhead at least since March 1, 2004 (e.g., Complaint, Annex 5). Complainant has further provided a copy of external correspondence dated June 17, 2005, using the NICHOLSON INTERNATIONAL logo signed by Respondent as “Partner” (Complaint, Annex 4). Other documents, including a term employment contract dated October 1, 2005, refer to Respondent as an employee of NICHOLSON INTERNATIONAL (Complaint, Annex 6).
Complainant asserts that its predecessor company established a human resources consultancy in Istanbul, Turkey in 1991. Complainant has provided evidence that it provides recruitment and related services to a number of multinational corporations doing business in Turkey.
According to the Registrars' verification responses, Respondent is registrant of the disputed domain names. The record of registration for was created on June 11, 2004.
The record of registration for was created on June 12, 2004. The record of registration for was created on May 21, 2007.
Respondent has provided evidence that Nicholson International Incorporated Limited (“Nicholson UK”) was established in the United Kingdom in 1989 and operated as a human resources consultancy in a number of countries around the world, including China and the United States. In 2001, Nicholson UK went into receivership. In November 2001, a group of its senior managers established a new UK company, Saxonford Ltd., that acquired certain assets from the receiver, including trademark assets of Nicholson UK. Respondent (Timothy Bright) and the sole shareholder of Complainant, Atiye Gokmen, each held a significant equity share in Saxonford Ltd. Both Respondent and Atiye Gokmen served as directors of Saxonford Ltd. (Nicholson International Information Memorandum, Response, Annex 6; Agreement between Receivers, Nicholson UK and Saxonford Ltd. of Nov. 2001, Response, Annex 5).
Respondent served for a substantial period of time as a consultant, country manager (Turkey), area manager (Turkey and Israel), regional director (Hong Kong SAR of China, Turkey, Israel) and member of the Management Board (United States) of Nicholson UK, commencing in 1995 (Response, Annex 6).
Respondent has challenged Complainant's claim that it acquired the assets and liabilities of Nicholson International Incorporated BV, asserted by Complainant to be its predecessor in Turkey, and has provided evidence of Complainant's interest in legally distinguishing itself from its alleged predecessor. Respondent has provided an email from the owner of Complainant to Respondent and others of December 4, 2003, stating, inter alia:
“The old company was owned by NI BV, a company which went into liquidation almost two years ago now.
We have every moral and legal reason to distance ourselves from the old company.
We have no choice and to pay its tax debt because there is no limited [sic] liability when it comes to tax and Hakki has signed a personal statement for it.
We cannot take on any other debt.” (Response, Annex 1)
Respondent has provided evidence that he registered the disputed domain names using his personal credit card (Response, Annex 8). Promptly after registering disputed domain names in June 2004, Respondent sent an email to the owner of Complainant stating, “Purchase confirmed. Setting up some email addresses and the web forwarding now” (id.).
Complainant has on several occasions demanded that Respondent transfer the disputed domain names to it. Complainant has also requested that Respondent provide the password needed to modify content on a website regarding Complainant that is operated at . That website may not be updated without access to the password held by Respondent. Respondent indicated on at least one occasion that he would not provide the password until amounts owed to his wife as commissions from Complainant were paid. (Complaint, Annex 9)
Complainant stated in its Complaint:
“The Complainant company made a request of the Turkish Attorney General under investigation number 2008/4632, alleging that the Respondent, in registering the domain names, had committed offences under clauses 155 and 106 of the Turkish Penal Code and had acted unlawfully under clauses 57 and 64 of the Turkish Commercial Code. The request invited the Attorney General to commence proceedings against the Respondent to investigate those allegations. To date, no proceedings have been commenced.”
Respondent has provided documents which indicate that the request made by Complainant to the Turkish Public Prosecutor's Office was formally rejected by the Prosecutor's Office on 2/07/08 for lack of sufficient evidence, and that an appeal of this decision was formally rejected by the First Criminal Court of Turkey on 02/01/09. (Response, Annexes 3 & 4)
The Registration Agreements in effect between Respondent, on one side, and Melbourne IT Ltd and R SpA, on the other, subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)). 5. Parties' Contentions A. Complainant
Complainant contends that it has rights in the trademark NICHOLSON INTERNATIONAL and that the disputed domain names are confusingly similar to its trademark.
Complainant argues that Respondent does not have rights or legitimate interests in the disputed domain names. Complainant alleges that Respondent was not authorized to use its trademark, that Respondent has not been commonly known by the disputed domain names, that Respondent did not make or prepare to make a bona fide offer of goods or services under the disputed domain names prior to notice of a dispute, and that Respondent is not using the disputed domain names for a legitimate noncommercial purpose or as fair use. Complainant argues that Respondent was acting as an employee, partner or agent of Complainant when he registered the disputed domain names and did not thereby acquire any legitimate interests in them. Complainant further argues that Respondent's history of association with predecessors of Complainant did not entitle him to register the disputed domain names.
Complainant alleges that Respondent registered and used the disputed domain names in bad faith. Complainant argues that Respondent registered the disputed domain names to prevent Complainant from registering domain names that incorporated its trademark, as part of a pattern. Complainant alleges that Respondent registered the disputed domain names in order to disrupt Complainant's business. Complainant alleges that Respondent registered the disputed domain names for the purpose of coercing Complainant to pay amounts allegedly due to Respondent's wife. Complainant further alleges that Respondent registered the disputed domain names and has used them to redirect Internet users to Respondent's new business, OneWorld Consulting, which operates in competition with Complainant. Complaint contends this is done intentionally for commercial gain.
Complainant requests the Panel to direct the Registrars to transfer the disputed domain names to Complainant. B. Respondent
Respondent alleges that Complainant did not acquire rights in NICHOLSON INTERNATIONAL from a predecessor business in Turkey, and did not hold trademark rights in Nicholson International in Turkey prior to registration of that term as a mark in 2008.
Respondent contends that the disputed domain names are not confusingly similar to the NICHOLSON INTERNATIONAL mark because “.com” is not specific to Turkey where Complainant does business.
Respondent argues that Complainant does not have exclusive rights in the term NICHOLSON INTERNATIONAL because a number of enterprises in various countries with prior associations with Nicholson UK continue to use NICHOLSON INTERNATIONAL as their business name.
Respondent argues that he has rights or legitimate interests in the disputed domain names because he was long involved as an employee of Nicholson UK, and subsequently as a shareholder and director of an enterprise that acquired assets of Nicholson UK. Respondent further argues that he acted independently on his own behalf to register the disputed domain names while a partner in Complainant, and did not do so as an employee or agent of Complainant. Respondent argues that because he had a reasonable expectation that Complainant might cease to do business in Turkey, he had a legitimate interest in registering the disputed domain names because he might subsequently wish to do business under those names.
Respondent contends that he did not register or use the disputed domain names in bad faith. Respondent argues that when he registered the disputed domain names Complainant did not have trademark rights in NICHOLSON INTERNATIONAL Respondent states that he did not intend to interfere with the business or opportunities of Complainant, and that he has not used the disputed domain names to redirect Internet users to his proprietary website. Respondent argues that he made a reasonable request on behalf of his wife to obtain payment for money due from Complainant in exchange for providing a password to allow Complainant to modify a website which he allows Complainant to continue using. Respondent argues that a legitimate demand for money owed does not evidence bad faith.
Respondent requests the Panel to reject Complainant's request for an order to transfer the disputed domain names. 6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
Respondent received notice of the Complaint and commencement of the administrative proceeding from the Center and filed its Response in a timely manner. Respondent received adequate notice of these proceedings and had reasonable opportunity to respond.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:
(i) respondent's domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) respondent's domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief. A. Identical or Confusingly Similar
Complainant has provided evidence of registration of the trademark NICHOLSON INTERNATIONAL on the register of the Turkish Patent Institute with effect from January 25, 2008 (see Factual Background, supra). Respondent has not challenged the validity of this trademark registration. The Panel determines that Complainant has rights in the NICHOLSON INTERNATIONAL trademark arising as of January 25, 2008.
Complainant has further asserted rights in the NICHOLSON INTERNATIONAL trademark based upon the activities from 1991 onward in Turkey of an alleged “predecessor” enterprise based in the Netherlands, Nicholson International Incorporated BV. Respondent has challenged Complainant's assertion that it acquired the intellectual property and other assets of the alleged predecessor, and has provided some evidence implying that Complainant did not hold itself out as legal successor of the alleged predecessor. Complainant has not provided a copy of a contract of purchase of the assets of the alleged predecessor.
Whether (or not) the public may perceive continuity between the Netherlands entity that operated in Turkey prior to Complainant, and whether (or not) Complainant may have held itself out as a continuous enterprise in Turkey, Complainant has not provided sufficient evidence to establish a legal continuity of ownership of rights in intellectual property (including any trademark rights) as between itself and the Netherlands entity.
There remains, regardless of the succession issue, the issue of the time at which trademark rights may have arisen in favor of Complainant. Complainant has asserted that it was established as a business in Turkey in November 2002, and Respondent has not challenged that particular assertion. Conceptually, Complainant might have trademark rights in NICHOLSON INTERNATIONAL that predate its January 2008 trademark registration (e.g., from November 2002 onward) and that are not dependent upon an association with a predecessor enterprise. Complainant has not, however, provided any evidence in the form of statute, legal decision or learned commentary that “unregistered” and/or “common law” trademark rights are recognized in Turkey. Whether or not Complainant is the successor to a predecessor Netherlands enterprise, it has not provided the Panel with a legal basis for concluding that it acquired trademark rights prior to registration of the NICHOLSON INTERNATIONAL trademark in January 2008.
The disputed domain names are , and . The disputed domain name is identical to Complainant's trademark for purposes of the Policy. The disputed domain name adds a geographical identifier that Internet users would expect to be associated with Complainant in Turkey. This disputed domain name is confusingly similar to Complainant's trademark. The term NICHOLSON is the distinctive part of Complainant's trademark.2 Internet users in Turkey or familiar with Complainant's business in Turkey would likely be confused by the combination of the distinctive part of Complainant's trademark and the geographical identifier for Turkey. The disputed domain name is confusingly similar to Complainant's trademark.
Complainant has established rights in the NICHOLSON INTERNATIONAL trademark arising as of January 25, 2008, and that the disputed domain names are identical or confusingly similar to that trademark. B. Rights or Legitimate Interests
The parties have submitted a significant amount of evidence relevant to the question whether Respondent has rights or legitimate interests in the disputed domain names. Administrative proceedings under the Policy are not the ideal forum for weighing a large volume of evidentiary material covering a long period of time when, as here, the meaning and relevance of much of that evidence are disputed by the parties. Because the outcome of this proceeding can be resolved under the element of bad faith registration and use, the Panel need not and does not further address the question of rights or legitimate interests. C. Registered and Used in Bad Faith
Pursuant to Paragraph 4(a)(iii) of the Policy, Complainant must demonstrate that Respondent registered and used the disputed domain names in bad faith. Paragraph 4(b) enumerates a nonexhaustive list of factors that the Panel may consider in assessing whether Respondent acted in bad faith.
Respondent could not have sought to take unfair advantage of Complainant's trademark in Turkey (or elsewhere) prior to the time at which Complainant acquired trademark rights. Administrative panels have consistently determined under the Policy that a complainant's ownership of trademark rights is a predicate to a finding of bad faith registration, absent exceptional circumstances that have been recognized by some panels (and which are not present here) (see, e.g., Foundation Source Philanthropic Services, Inc. v. Arlene B Gibson/Foundations That Make a Difference/Domain Discreet,WIPO Case No. D2007-0875; Super-Krete International, Inc. v. Concrete Solutions, Inc., WIPO Case No. D2008-1333; Symbility Solutions, Inc. v. Darren Ritchie / Symbility,WIPO Case No. D2007-0471; John Ode d/ba ODE and ODE - Optimum Digital Enterprises v. Intership Limited,WIPO Case No. D2001-0074. Complainant has demonstrated rights in a trademark arising in Turkey in January 2008. Complainant has not demonstrated that it held any “unregistered” and/or “common law” trademark rights in Turkey prior to that date. The disputed domain names were registered by Respondent in 2004 and 2007. Complainant has not on the present record established trademark rights as of those dates. Accordingly, this Panel finds that Respondent could not have sought to take unfair advantage of rights that had not (on the available record) been established.
The Panel determines that Complainant has failed in the current proceedings to prove that Respondent registered and used the disputed domain names in bad faith.
An administrative proceeding under the Policy is not a proceeding in “equity” in which a panel seeks to generally determine whether one party or another has acted more or less fairly toward the other, thereafter fashioning a “just” remedy. A proceeding under the Policy is not an assessment of civil trademark infringement. It is possible for a respondent to be infringing the trademark rights of a complainant, yet be found not to have acted in bad faith.
It is also worth pointing out that Complainant previously sought to initiate criminal proceedings against Respondent in Turkey based on essentially the same course of conduct as complained of here, without doubt a serious pursuit of redress. Complainant's effort was rejected for lack of evidence, and that rejection was confirmed on appeal to the criminal court. Complainant's counsel portrayed that chain of events in its Complaint as criminal prosecution not yet initiated, implying that decisions were not yet taken. Greater candor might have served Complainant's interest better. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Frederick M. Abbott
Sole Panelist
Dated: May 7, 2009
Full & Egal Universal Law Academy