WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Kucukbay Yag Ve Deterjan Sanayii A.S. v. Nokta Internet Technologies Case No. D2009-1275 1. The Parties
The Complainant is Kucukbay Yag Ve Deterjan Sanayii A.S. of Bornova, Izmir, Turkey, represented by Istanbul Patent & Trademark Consultancy Ltd., Turkey.
The Respondent is Nokta Internet Technologies of Berkeley, California, United States of America, represented by Renova, Ltd., Spain. 2. The Domain Name and Registrar
The disputed domain name is registered with Moniker Online Services, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 25, 2009. On September 25, 2009, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On September 26, 2009, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that:
(a) the disputed domain name is registered with it;
(b) the Respondent is listed as the registrant of the disputed domain name;
(c) the contact details for the Respondent in the Registrar's records were those set out in the Complaint;
(d) the disputed domain name was registered with it by the Respondent on June 11, 2003;
(e) English is the language of the registration agreement;
(f) that the UDRP Applied to the domain name; and
(g) that the domain name was on registrant lock pursuant to paragraph 8 of the UDRP.
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 October 2, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response October 22, 2009.
Prior to the filing of the Response, the Complainant filed with the Center and served on the Respondent:
(a) on October 7, 2009, a copy of the proposed Annex 7 to the Complaint in electronic format;
(b) on October 9, 2009, a copy of Annex 7 in a different format; and
(c) on October 9, 2009, a proposed Supplemental Filing dealing with an email exchange which took place on September 28, 2009 – that is, after the Complaint was filed – between a person acting on behalf of the Complainant and an employee of the Respondent.
The Response was filed with the Center October 22, 2009.
The Center appointed Warwick A. Rothnie, Gökhan Gökçe and Diane Cabell as panelists in this matter on November 19, 2009. The Panel finds that it was properly constituted. Each member of 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.
On November 25, 2009, the Complainant purported to file and serve a second Supplemental Filing.
On December 1, 2009, the Panel issued Procedural Order No. 1 allowing the Respondent until December 3, 2009 to submit such further Response, if any, addressing matters raised in the purported second Supplemental Filing and adjusting the projected date for decision as a consequence.
On December 3, 2009, the Respondent filed and served a further Response. 4. Factual Background
The Complainant was founded in Turkey in 1978, initially producing detergent, soap and cooking oil. In about 1979, it commenced producing and marketing cooking oil under the name “Orkide”. Over time, its business has expanded both within Turkey and the export trade so that its ORKIDE brand products are exported to some 76 countries. It has been ranked among Turkey's top 500 companies for the last 10 years; in 2007, it was ranked 236 risking to 122 in 2008.
In 2003, it extended its ORKIDE brand into margarine production. Also in 2003, a public primary school in the Complainant's home town was opened under the “Orkide” name. A shopping mall was also opened in the Complainant's home town that year under the name “Orkide Shopping Center”.
The Complainant registered the trademark ORKIDE in Turkey in respect of goods in classes 3 and 29 in January 1979. Since that date it has secured numerous trademarks for ORKIDE or stylized or figurative marks containing that term in Turkey and many countries throughout the world. In Turkey, amongst others, these include Trademark No. 2000 19281 for a stylized version of “ORKIDE” registered for goods and services in all the (then) 42 classes of the Nice International Classification.
In April 2004, the Complainant secured International Registration for its stylized version of ORKIDE in class 29 designating Austria, Benelux, Switzerland, People's Republic of China, Czech Republic, Germany, Denmark, United Kingdom of Great Britain and Northern Ireland, Spain, France, Georgia, Italy, Kenya, Morocco, Norway, Russia, Sweden, Turkmenistan, and the United States of America (“United States” or “US”).
Although the United States was designated in the International Registration, the evidence in the case shows that the first and only trademark actually registered in the United States currently is the trade mark No. 3206447 in class 29 which was filed on July 28, 2005.
For completeness, the Panel notes that the Complainant has made a number of national applications in 2008/2009 in Libya, Saudi Arabia, Egypt, Iraq and Yemen.
In 2007, following an application made by the Complainant in 2006, the Turkish Patent Institute registered the Complainant's ORKIDE trademark as a well-known mark.
The Respondent is the US arm of business operations taking place in both Turkey and the United States. Both arms were apparently set up in 2002. According to the declaration of Mr. Gunes, one of the Respondent's founders, the main object of the business is to collect generic/descriptive domain names for use as websites or what he describes as the direct navigation industry or PPC – pay per click – industry.
As noted above, the Respondent registered the disputed domain name on June 11, 2003 when it became available for sale for the price of USD60.00. Prior to that, the disputed domain name had apparently not resolved to any website.
Currently, the disputed domain name resolves to a website which provides what can only be described as very rudimentary links to florist related activities. On some screens, there are also links to other business activities. There is no evidence, however, that any of these activities compete with the Complainant's activities. According to the Response, the links are automatically generated by Google.
After the Complaint was filed, a lawyer acting for the Complainant emailed the Respondent to inquire about purchasing the disputed domain name. An employee of the Respondent replied, offering to sell the disputed domain name for the price of USD12,500. 5. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant has the burden of proof in respect of the following three elements:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) The respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Before the Panel addresses each in turn, the Respondent has objected to the admissibility of the Complainant's Supplemental Filings.
Apart from documents requested by the Panel pursuant to paragraph 12 of the Rules, neither the Policy nor the Rules expressly provide for supplemental filings. Their admissibility is therefore in the discretion of the Panel bearing in mind the requirements under paragraph 10 of the Rules to ensure that the proceeding is conducted with due expedition and both parties are treated equally with each party being given a fair opportunity to present its case.
The Panel notes that the Supplemental Filing on October 9, 2009 relates to events that occurred after the Complaint had been filed – the offer to sell the disputed domain name for USD12,500, a matter which Panels have frequently held to be highly material to the issue of bad faith as evidenced by paragraph 4(b)(i) of the Policy. In addition, the Respondent has also dealt with the substance of this Supplemental Filing in the Response. Accordingly, the Panel admits this Supplemental Filing into the Record.
The second Supplemental Filing is more troubling. It primarily deals with the Complainant's allegation that the Respondent is located or based in Turkey. It was filed after the Panel was appointed. There is considerable force in the Respondent's objection that the material is not “new” information and should properly have been dealt with in the Complaint. On the other hand, while the Complainant did make the central allegation broadly in the Complaint, the Response in turn makes a fairly detailed rebuttal of the allegation and the material submitted in the second Supplemental Filing provides a concrete basis for the allegation. In all the circumstances, therefore, the Panel considered it appropriate to admit the second Supplemental Filing and in the interests of fairness to permit the Respondent an opportunity to address the further material. A. Identical or Confusingly Similar
There are two parts to this inquiry: does the Complainant have trademark rights in a sign and, if so, is the disputed domain name identical or confusingly similar to that mark?
As set out above in section 4, the Complainant has clearly demonstrated ownership of a number of registered trademarks for ORKIDE in both plain type and stylized forms and in a number countries. Moreover, in Turkey, the trademark has been registered by the relevant body as a well-known trademark.
The second part of this inquiry requires a comparison between the proved trademark rights and the disputed domain name. On this part of the inquiry what is required is simply a comparison and assessment of the domain name itself to the Complainant's proved trademarks: see for example, Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol,WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin,WIPO Case No. D2002-0420. At this stage, it is not relevant what goods and/or services the trademark is registered for or what jurisdiction(s). It is simply a comparison of trademark to disputed domain name. On the other hand, the goods and services for which registration has been secured (or the trademark used in “use” cases) and the relevant jurisdiction(s) may well be relevant on the second and third limbs of the inquiry.
It is well established that the gTLD “.com”, being a functional requirement of the domain name system, can be disregarded for the purposes of this inquiry. See for example Telstra Corporation Limited v. Ozurls,WIPO Case No. D2001-0046; Ticketmaster Corporation vs. DiscoverNet, Inc.,WIPO Case No. D2001-0252; Microsoft Corporation v. J. Holiday Co.,WIPO Case No. D2000-1493.
Accordingly, the Panel finds that the disputed domain name is identical to the Complainant's proved trademark rights. B. Rights or Legitimate Interests
The second requirement that the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name. In view of the difficulty in proving a negative, the Complainant must adduce sufficient material to raise a prima facie case under this factor and then an evidential burden shifts to the Respondent to rebut that prima facie case. For convenience the Panel refers only to WIPO Overview of WIPO Panel Views on Selected UDRP Questions paragraph 2.1.
Paragraph 4(c) sets out three examples of rights or legitimate interests for the purposes of the Policy. They are:
“(i) before any notice to you 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.”
These are examples only and not an exhaustive enumeration of the ways in which rights or legitimate interests can be shown. They do provide, however, a guide to what is contemplated as permissible under the Policy.
The Complainant states that it has not licensed or otherwise permitted the Respondent to register or use any domain name incorporating the Complainant's trademarks. It is not disputed between the parties that there is no relationship between them.
The Complainant also points out that the Respondent has not been commonly known by the distinctive part of the disputed domain name. Again, this is not contentious between the parties.
The Complainant further contends that the Respondent does not use the disputed domain name commercially or noncommercially. In addition, central to the Complainant's argument, is its allegation that the Respondent knew about the Complainant's trademarks when it registered the disputed domain name and has deliberately set out to take advantage of the Complainant's goodwill in the trademark. The Complainant contends that there could be no other reason for the Respondent to have registered the disputed domain name. All of these points are disputed by the Respondent.
In support of its allegation that the Respondent knew of the Complainant's trademarks, the Complainant points to a number of factors:
(1) the Respondent has, or is connected to, a business of the same name in Turkey,
(2) the disputed domain name is a word in the Turkish language (translated in English as “orchid”),
(3) the longevity and widespread extent of the Complainant's use of its trademark including its registration in Turkey as a well-known mark, and
(4) the apparent Turkish ethnicity of the Respondent's employee who sent the email offering to sell the disputed domain name for USD12,500.
Taken together and unrebutted, these factors raise a prima facie case in the Complainant's favour.
As noted above, the Respondent admits an avowedly commercial purpose in registering the disputed domain name. It is also in fact using the disputed domain name, albeit in the Panel's view in a rather rudimentary fashion. It disputes that the Complainant's trademark was well-known when it registered the disputed domain name, pointing to its registration as a well-known trademark in Turkey only in 2007.
It does appear from the evidence that the Complainant's business is, or has been, rapidly growing; rising from number 236 in terms of the top 500 ranking of Turkey's companies in 2007 to number 122 in 2008. Accepting that and also that its trademark was not registered as well-known in Turkey until 2007, however, the evidence filed by the Complainant includes at least 5 folders of press clippings in around 2003 of articles in the Turkish press featuring the Complainant's trademark. The term “orkide” is just included in the written text of many of the articles included in the press clippings. But, in a significant number, it is presented in an advertising or sponsorship type setting quite prominently. More importantly, the volume of press clippings itself is quite impressive; any brand that could point to that sort of coverage in the press appears to have excellent market penetration. The references just in the text of the articles reinforces the expectation of the journalists (or editors) that their readers would recognise it as a brand name.
If the Respondent were located in Turkey, this evidence would raise a very strong inference that the Respondent must have known about the Complainant's trade mark when it registered the disputed domain name.
While the evidence is not entirely clear about the precise relationship between the Turkish business and the Respondent, the evidence does establish that they are two different companies; one (the Respondent) incorporated in the United States, the other in Turkey. In its second Response, the Respondent claims that the Turkish company is the parent of the US company.
Secondly, exhibit RE-11 to the Response is a declaration of a Mr. Gunes, apparently made “under penalty of perjury”. Mr. Gunes states that he is a founder of the Respondent and the person who, in 2003, was responsible for deciding which domain names to buy. Mr. Gunes declares positively that when he registered the disputed domain name for the Respondent he was completely unaware of the Complainant or its trademark.
The Panel is not bound by Mr. Gunes declaration. It falls to be assessed in light of all the evidence and circumstances.
One circumstance is that the Complainant does have a US subsidiary, based in New York or on the east coast. The Complainant has submitted evidence of substantial sales of its products under its trademark in the United States. The evidence submitted, however, relates to sales in 2007 and 2008 and demonstrates a dramatic increase in quantities, particularly in 2008. In addition, as noted above, the Complainant's US trademark was not actually applied for or registered until after the Respondent registered the disputed domain name in 2003. That registration is specifically limited to International Class 29 goods. Thus, when the Respondent registered the disputed domain name and commenced using it in the way it continues to do, it does not on the record in this case appear that it would have been infringing any rights of the Complainant in the United States.
The Respondent also points out that the non-functional part of the disputed domain name, “orkide”, is a plain or ordinary Turkish word for the flower known in English as an orchid and also a female given name. Consistently with the word's character as an ordinary word in the Turkish language, the Respondent submits evidence of extensive usage, unrelated to the Complainant, on the Internet. These include:
Villas: Villa Orchid Veliko
Villa Orchid Veliko, Veliko Turnovo. No reservation costs. Great rates! B/VillaOrchidVeliko
Travel: OrkidéEkspressen - langreisespesialisten - kvalitet til riktig pris
31 Jan 2001 - OrkidéEkspressen tilbyr eksotiske reisemål som Thailand, Malaysia, Vietnam, Kambodsja, Australia, Jorda Rundt, Cuba, Brasil, Peru står på menyen. / - Cached – Similar
Hotels: Orkide Hotel, Marmaris, Turkey
30 Sep 2002 - Orkide Hotel, a family run hotel offering B&B accommodation and situated 50m from the main Marmaris beach. / - Cached – Similar
Cosmetics: Orkide Flower Blush-On Manufacturer exporting direct from Turkey 14 Jan 2009 - Product information for Orkide Flower Blush-On from Orkide Cosmetics. Source what you need here! /.../orkidecosmetics.../Orkide_Flower_Blush_On.html - Cached - Similar
Flowers: orkide pictures from art photos on webshots
28 Jun 2007 - orkide pictures published by bozdikici. ... This album is filed in entertainment and art. Find more albums about orkide. ... /album/559618861RWFjXR - Cached – Similar
OrkidéEkspressen - langreisespesialisten - kvalitet til riktig pris
31 Jan 2001 - OrkidéEkspressen tilbyr eksotiske reisemål som Thailand, Malaysia, Vietnam, Kambodsja, Australia, Jorda Rundt, Cuba, Brasil, Peru står på menyen. / - Cached – Similar
Lingerie: Orkide Lingerie
10 Aug 2003 - 2009 Orkide Lingerie. All rights reserved. Web tasarım Grimor. / - Cached – Similar
Clothing: Orkidé
31 Jan 2002 - Skindtøj, reparationer og specialopgaver. Syning efter personlige mål og ønsker. Desuden renovering af markiser, syning og reparationer af tøj samt .../ - Cached – Similar
Printing: ORKIDE
30 Sep 2002 - ORKİDE is serving for 30 years with its experienced and proffessional staff both in the nation and internationally through the world. ... /home.htm - Cached - Similar
ORKIDE
30 Sep 2002 - ORKIDE printing company has various rich materials for travel brochures and cataloques, picture archives ,high- technology computers and machines, .../cataloque.htm - Cached - Similar
The evidence submitted by the Respondent in the Response, which has not been contested by the Complainant, indicates that many of those businesses were established and operating before 2003.
As noted above, the Respondent uses the disputed domain name to resolve to a website which is a fairly rudimentary search portal, using search results automatically generated by a third party provider with the object of deriving pay-per-click revenues.
The Complainant contends that panels have found that persons who wish to use domain names in this way face an onus to undertake searches to ensure that they are not infringing others' trademarks.
This issue was considered carefully by a panel in Balglow Finance S.A., Fortuna Comércio e Franquias Ltda. v. Name Administration Inc. (BVI),WIPO Case No. D2008-1216 (), one of the leading cases relied on by the Complainant. There, the learned three-member panel considered:
A number of panels have concluded that a respondent may have a right to register and use a domain name to attract Internet traffic based on the appeal of a commonly used descriptive phrase, even where the domain name is confusingly similar to the registered mark of a complainant. See 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; T. Rowe Price Associates, Inc. v. J A Rich,WIPO Case No. D2001-1044; Sweeps Vacuum & Repair Center, Inc. v. Nett Corp.,WIPO Case No. D2001-0031; EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047. Where a respondent registers a domain name consisting of dictionary terms because the respondent has a good faith belief that the domain name's value derives from its generic or descriptive qualities, the use of the domain name consistent with such good faith belief may establish a legitimate interest. See, Mobile Communication Service Inc. v. WebReg, RN,WIPO Case No. D2005-1304. But the domain name must have been registered because of, and any use consistent with, its attraction as a dictionary word or descriptive term, and not because of any value corresponding to a trademark. Media General Communications, Inc. v. Rarenames, WebReg,WIPO Case No. D2006-0964. See also Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415; HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager,WIPO Case No. D2007-0062.
The Panel notes that paragraph 2 of the Policy implicitly requires some good faith effort to avoid registering and using domain names corresponding to trademarks in violation of the Policy. See Media General Communications, Inc. v. Rarenames, WebReg, supra. In this case, the Respondent has not indicated that it explored the possibility of third-party rights in any way before registering and using the disputed domain name. Although the Respondent does not so acknowledge, it is evident from the record that even a cursory search of the OHIM trademark database prior to the Respondent's registration of the disputed domain name would have disclosed the existence of two Community trademark registrations for CHILLI BEANS. And a cursory search of the USPTO trademark database would have disclosed the existence of a pending application to register the CHILLI BEANS mark. See, e.g., HSBC Finance Corporation, supra.
The Respondent's position appears to be that – without regard to any knowledge of the Complainant's rights in the CHILLI BEANS mark – it enjoys an absolute right to operate a pay-per-click landing page keyed to the commonly understood or primary meaning of chilli beans. If that is the Respondent's position, it is at variance with Panel decisions holding that those who register domain names in large numbers for targeted advertising, often using automated programs and processes, cannot simply turn a blind eye to the possibility that the names they are registering will infringe or violate third-party trademark rights. See, e.g., Grundfos A/S v. Texas International Property Associates,WIPO Case No. D2007-1448; mVisible Technologies Inc. v. Navigation Catalyst Systems, Inc.,WIPO Case No. D2007-1141; Mobile Communication Service Inc., supra.
The learned panel concluded:
These Panel decisions are firmly grounded in an appreciation that paragraph 2 of the Policy requires registrants to make reasonable efforts to ensure they are not infringing upon third-party rights. See, e.g., Terroni Inc. v. Gioacchino Zerbo,WIPO Case No. D2008-0666. Moreover, as has been recognized in both Asian World of Martial Arts Inc., supra, and mVisible Technologies Inc., supra, many domain names have both dictionary word meanings and trademark-related meanings. The disputed domain name at issue here falls into this category. Bringing to bear the force of these Panel decisions in the context of this case, where the Respondent has not indicated that it explored the possibility of third-party rights before registering the disputed domain name, the Panel concludes that to establish rights or legitimate interests in the domain name the Respondent must come forward with credible evidence that the disputed domain name was registered because of its attraction as a generic or descriptive term, and not because of its value corresponding to a trademark, and credible evidence that there has been no use of the domain name inconsistent therewith. See, Media General Communications, Inc. v. Rarenames, WebReg, supra.
Simply stated, to demonstrate rights or legitimate interests under paragraph 4(c) of the Policy, it is not sufficient for the Respondent merely to show that the domain name has a commonly understood or descriptive meaning, while turning a blind eye to the use of the domain name with a pay-per-click landing page containing links to ads that relate at least in part to a trademark (as opposed to merely the generic or descriptive meaning of the domain name).
In this case, however, the products that are advertised are not in any way connected with, or competitive with, the Complainant's products. Mr. Gunes declares, and the Complainant does not dispute, that this has always been the case. In addition, the Respondent has submitted evidence that it has registered many other domain names which are plain or ordinary Turkish words for flowers or florists. Many of those were registered by the Respondent before it registered the disputed domain name or, in any event, well before the Respondent received notice of this dispute.
The Complainant also relies on the dissenting opinion in Horoz Lojistik ve Kargo Hizmetleri Tic. A.S. v. Murat Yikilmaz,WIPO Case No. D2009-0767 (). The Panel, however, agrees with the Respondent that the record in the present case is more in line with the majority opinion in that earlier case.
In these circumstances, the Respondent's specific denial of knowledge of the Complainant is not inherently implausible and not overborne by the inferences the Complainant seeks to raise. Accordingly, the case of Owens Corning v. NA,WIPO Case No. D2007-1143 is moot. Having regard to all these matters, therefore, the prima facie case raised by the Complainant has been rebutted.
Accordingly, by a majority the Panel finds that the Complainant has not established that the Respondent has no rights or legitimate interests in the disputed domain name as required under the second limb of the Policy. C. Registered and Used in Bad Faith
In light of the conclusion under the second limb of the Policy, it is not strictly necessary to address this requirement. In light of the reasons why the Panel has found that the Complainant has failed to establish that the Respondent does not have rights or legitimate interests in the disputed domain name, however, it must follow that the Respondent did not register the disputed domain name in bad faith.
As a Complainant must establish both that the disputed domain name has been registered and is also being used in bad faith, therefore, the Complainant must also fail on this limb.
The Panel does note that the Respondent seeks to disown the actions of its employee who sent the email offering to sell the disputed domain name for USD12,500. However, dealing with and responding to such inquiries was specifically part of the employee's duties within the Respondent. If it had been appropriate otherwise to find that the Respondent's actions were in bad faith, the Panel notes that the Respondent could not have avoided liability on the grounds that the actions were the actions of a junior unsupervised employee as the employee's conduct was part of the duties assigned to him by the Respondent. D. Reverse Domain Name Hijacking
The Respondent requests a finding of reverse domain name hijacking.
As discussed above, the Panel has not found that the Complaint was not patently lacking in merit or obviously doomed to fail. In particular, on tests regularly applied by Panels under the Policy, the Complainant was able to establish a prima facie case that the Respondent did not have rights or legitimate interests in the disputed domain name. In the particular circumstances of this case, however, the Respondent has successfully rebutted that inference.
Accordingly, the Panel declines to make such a ruling. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Warwick A. Rothnie
Presiding Panelist
Gökhan Gökçe
Panelist (Dissenting)
Diane Cabell
Panelist
Dated: December 11, 2009
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