WIPO Domain Name Decision D2009-1338 for fenerbahce.com

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Fenerbahce Spor Kulubu Dernegi v. Maksimum Iletisim A. S. Case No. D2009-1338 1. The Parties

The Complainant is Fenerbahce Spor Kulubu Dernegi of Istanbul, Turkey, represented by Istanbul Patent & Trademark Consultancy Ltd., Turkey.

The Respondent is Maksimum Iletisim A. S. of Istanbul, Turkey. 2. The Domain Name and Registrar

The disputed domain name is registered with eNom. 3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 9, 2009. On October 9, 2009, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On October 9, 2009, eNom 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 October 26, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 15, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 17, 2009.

The Center appointed Nasser A. Khasawneh as the sole panelist in this matter on November 25, 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. 4. Factual Background

The Complainant in this case is Fenerbahce Spor Kulubu Dernegi (Association of Fenerbahce Sports Club) which was established in 1907 in Istanbul, Turkey. A number of activities are carried out within the club, including both professional and amateur football, basketball, volleyball, swimming and other athletics. However, football is the Complainant's most noteworthy and recognized activity.

In accordance with Annex 8, the Complainant has registered a number of trade and service marks within Turkey for different derivatives of “FENERBAHCE” beginning as early as 1992. The Complainant has also registered the “FENERBAHCE” trademark in Germany as well in 1997. Additionally in April of 1996, the Complainant became the legal owner of the domain name as well as and in 1999 and 2004 respectively.

As evidenced by eNom's WhoIs database search, the record for the disputed domain name of was created on November 4, 1997. 5. Parties' Contentions A. Complainant

The Complainant is Fenerbahce Spor Kulubu Dernegi, a well-known sports club that has been operating within Turkey for over a century. The Complainant derives substantial revenue from sales of seasonal tickets and gate receipts from Sukru Saracoglu Stadium, media and advertising rights, as well as other fees and contributions. The Fenerbahce football club has been the principal sports activity of the club since its founding, and is well-known within Turkey and around the world as well. The Complainant notes that the Fenerbahce football club has derived revenues of approximately 111.3 million euros as a result of its performance in the UEFA Champions League.

The Complainant begins its case by evidencing through Annexes 8-10 that it holds a number of rights to the trade and service mark FENERBAHCE both within Turkey and in Germany beginning as early as 1992. The Complainant also notes that the trademark FENERBAHCE SPOR KLÜBÜ has been officially accepted as a well-known trademark in Turkey by the Turkish Patent Institute in 1997. The Complainant has also been the legal owner of the domain name since 1996 as well as and since 1999 and 2004 respectively.

In response to the Respondent's domain name registration, the Complainant argues that the only difference between its company name and the disputed domain name is the words “Spor Kulubu” which means “sports club” in English. As a result the Complainant avers that the domain name is identical to its trademark since the term referring to the sports club plays only an accessory role and does not seek to eliminate or diminish the confusion. The Complainant notes that the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant's registered trademark. In addition, inclusion of other terms as well as the “.com” suffix does not alter the likelihood of confusion either and shall be disregarded.

The Complainant thereafter argues that the Respondent has no rights or legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy. The Complainant cites a previous UDRP panel decision (1) Galatasaray Spor Kulubu Dernegi (2) Galatasaray Pazarlama A.S. (3) Galatasaray Sportif Sinai Ve Ticari Yatirimlar A.S. v. Maksimum Iletisim A.S.,WIPO Case No. D2002-0726, where the panel found that when an individual registers the trademark of another knowing that another party had rights and that the trademark would be recognized, the obligation of the complainant to provide a prima facie case under paragraph 4(a)(ii) of the Policy has been met and it is the respondent's duty to rebut the contention under paragraph 4(c)(i) of the Policy.

In responding to the various defenses available to the Respondent, the Complainant in this instance avers that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. The Complainant notes that the Respondent has no relationship with the Complainant and has not otherwise been permitted to use the “FENERBAHCE” trademark.

The Complainant further argues that in addition to its registered trademark for “FENERBAHCE”, the Complainant also has obtained prior common law rights to the “Fenerbahce” name due to its long history and association with the Complainant dating back nearly a century. The disputed domain name was registered on November 4, 1997, well after the common law rights of the Complainant had been acquired. Additionally the registration of the disputed domain name also followed the declaration by the Turkish Patent Institute on July 22, 1997 of its official recognition of the association between the “FENERBAHCE” trademark and the Complainant. Due to the Complainant's extensive goodwill and reputation, the Complainant argues that the Respondent was certainly aware of the Complainant's rights in the “FENERBAHCE” trademark when it registered the disputed domain name.

The Complainant also contends that the disputed domain name was not available to the Complainant in the past and the Respondent essentially coerced the Complainant to agree on the terms of an agreement executed between the Parties concerning the disputed domain name. The Complainant argues that nothing in the text suggests that any licensing or the transfer of any rights had occurred. The Complaint even argues that the inference to be drawn from this agreement, which is included as Annex 13, is that the Respondent was implicitly accepting the fact that its Internet activities were on the Complainant's behalf and involved rights associated with the Complainant.

The agreement between the Parties however was terminated as of October 22, 2001 and as such the Complainant argues that the Respondent no longer has any bona fide interest in the disputed domain name. The Complainant goes into a discussion of franchise rights upon termination where a number of previous UDRP panel decisions were cited essentially standing for the point that a party's right to use a trademark terminates upon the termination of the relevant franchise agreement. Therefore in this case, as the previous agreement executed between the two Parties was terminated, the Respondent would only have a right to use the “FENERBAHCE” trademark if the Complainant had specifically granted the Respondent that right.

In arguing that the Respondent has not made a legitimate noncommercial or fair use of the disputed domain name, the Complainant notes that the Respondent has used the disputed domain name without a disclaimer and has used the “Fenerbahce” logo as well. Essentially the Complainant is arguing that when a dispute over a domain name exists, the Respondent must evidence that no reasonable alternative existed for the Respondent to exercise its rights of free speech apart from the use of the disputed domain name. The Complainant also notes citing Nintendo of America Inc. v. Alex Jones,WIPO Case No. D2000-0998 that a complainant has the right to decide how its trademark will be utilized in the context of a fan site.

The Complainant contends that when the Respondent registered the disputed domain name the Respondent was well aware of the Complainant's rights in the “FENERBAHCE” trademark and knew that they did not have rights to use the trademark. The Complainant cites Football Club des Girondins de Bordeaux v. Annie Arr,WIPO Case No. D2000-0149 where the panel determined that a respondent had registered a certain domain name to prevent the complainant from registering its trademark in a corresponding domain name based on the fact that there was a pattern of such conduct. In that particular case, the respondent had registered domain names pertaining to a number of well-known football clubs whom the respondent had no relationship or association with. The panel in that case determined that the domain name had been registered and was being used in bad faith.

In satisfying its burden under paragraph 4(a)(iii) of the Policy, the Complainant avers that the disputed domain name was registered primarily for the purpose of reselling and transferring it. The Complainant has evidenced that the Respondent has registered and operates a number of similar domain names for similar football clubs such as and which are other well-known sports clubs. The Complainant has also included other instances of this pattern as well aside from the instances noted above. Additionally, it is noted that the and domain names utilize the same web page design and format as the disputed domain name of .

The Complainant alleges that the Respondent originally designed the above domain names to appear as fan sites then entered into commercial agreements with the actual trademark holders to operate the websites. A similar agreement with Besiktas sports club was concluded in the same fashion as the one between the Complainant and the Respondent. The Complainant also provides an alleged example of an instance involving the domain name of where the Respondent was involved in a previous UDRP panel decision and was ordered to transfer the domain name that it had registered. The Complainant alleges that this pattern of use clearly indicates that the Respondent has registered the disputed domain name with the intent to profit commercially.

The Complainant argues that its willingness to enter into the previous agreement with the Respondent was based on a mistaken belief that the only way to obtain control over the administration of the domain name was to have the domain name transferred by the Respondent under his own volition. Even when faced with the Complainant's cease and desist letters, the Respondent still argued that the agreement was valid and that they had a right to use the trademark. The Complainant also notes that they have orally asked the Respondent to transfer the disputed domain name a number of times.

As far as bad faith use, the Complainant argues that the registration and use of a domain name incorporating a famous well-known trademark is necessarily in bad faith when the Respondent knew at the time of registration that they could not make any actual use of the registered domain name without infringing upon the trademark owner's rights.

Here the disputed domain name is currently linked to the Respondent's other domain names as shown by Annex 21, and the disputed domain name also contains a number of commercial advertisements. As such, the Complainant alleges that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the domain name and to take advantage of the fame and reputation associated with the “FENERBAHCE” trademark.

The Complainant also points out that the Respondent's pattern of registering trade names associated with third parties which the Respondent has no connection with may also be demonstrative of bad faith. The Respondent registered a number of domain names associated with well-known football clubs and did so without any type of authorization from the relevant trademark holders. This pattern suggests that the Respondent sought to take advantage of the goodwill and reputation associated with these trademarks and to profit commercially from it in Turkey.

As such, the Complainant believes that the circumstances surrounding clearly evidence that the Respondent has intentionally tried to attract Internet users to the disputed domain name by creating confusion or presenting the illusion of an affiliation with the Complainant's endorsement of the disputed domain name. In essence the Complainant alleges that the Respondent is seeking to gain a “free ride” on the goodwill of its “FENERBAHCE” trademark. It is unlikely that the Respondent was unaware of the Complainant's interest in “FENERBAHCE” and as such the current actions of the Respondent demonstrate bad faith. B. Respondent

The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings

Under the Rules, a panel is required to render its decision 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)).

Additionally, in each case a complainant must establish each element of paragraph 4(a) of the Policy, which are as follows:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

The complainant must establish these elements regardless of whether the respondent replies to the complaint. The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064. A. Identical or Confusingly Similar

In order to meet its initial obligation under paragraph 4(a)(i), the Complainant in this instance has noted that the Complainant was first established in Turkey in 1907 and, as a sports club, is involved in a number of activities including football, swimming and basketball. The Complainant's notoriety and largest revenues are derived from football, which the Complainant has evidenced in Annex 5 to be over 111.3 million Euro between 2006-2007. The Complainant contends that the fact that the Complainant has been in existence in Turkey since 1907, as well as this notoriety from the football team, has led to the acquisition of common law trademark rights in the word “FENERBAHCE”.

The Panel accepts the notion that common law trademark rights may be obtained without registration under certain circumstances. Previous UDRP panel decisions have supported the idea that trademark rights can be obtained through use and not simply registration. See Imperial College v. Christophe Dessimoz,WIPO Case No. D2004-0322. The consensus view regarding these common law trademark rights is that the Complainant must show that “FENERBAHCE” has become distinctly associated with the Complainant. Evidence of this can include the length of time the Complainant was operating under the trade or service name, the amount of sales or revenue derived from the mark, as well as the nature and extent of advertising and media recognition. See WIPO Overview of WIPO Panel Views on Selected UDRP Decisions at 1.7, and also Skattedirektoratet v. Eivind Nag,WIPO Case No. D2000-1314.

In this case, the Complainant has evidenced that they have used the “FENERBAHCE” mark in Turkey since 1907. Additionally, as evidenced by a report compiled by Deloitte, the football team within the Complainant's business generated over 111.3 million Euros in revenue between the years 2006-2007 and is associated with the likes of many well-known European football clubs. The Panel does conclude that based on the lengthy extent of the Complainant's business in Turkey, the substantial revenues generated from the “FENERBAHCE” trademark, and the recognition of the Complainant both within Turkey and around the world that the Complainant has obtained common law trademark rights to the “FENERBAHE” mark prior to its registration. The Panel also notes that this same common law trademark recognition principle has also been applied to a sports club by a previous UDRP panel which actually involved the Respondent. See (1) Galatasaray Spor Kulubu Dernegi (2) Galatasaray Pazarlama A.S. (3) Galatasaray Sportif Sinai Ve Ticari Yatirimlar A.S., supra.

As far as registered trademark rights, the Complainant has evidenced in its Annex 7 that the Turkish Patent Institute officially accepted “FENERBAHCE SPOR KLÜBÜ” as a well-known trademark in Turkey on July 22, 1997. The Complainant has also evidenced that they hold rights to a number of trade and service marks incorporating the “FENERBAHCE” trademark, which have been registered as early as 1992.

The records reflect that the disputed domain name of was registered on November 4, 1997. Presupposing the unlikely case that the Complainant had obtained no common law trademark rights to the “FENERBAHCE” mark, Annex 7 demonstrates that the Complainant's rights and interest in the “FENERBAHCE” mark had been officially accepted in Turkey before the Respondent's registration of the disputed domain name. The Complainant in this case has also demonstrated that they hold a number of registered service and trade marks associated with “FENERBAHCE” that were registered as early as 1992. The Complainant also registered the domain names of , and between 1996 and 2004.

In this case, the disputed domain name of wholly incorporates the Complainant's trademark “FENERBAHCE”. As such, the Panel finds that the disputed domain name is identical to a trademark in which the Complainant holds rights.

The Panel also agrees with the Complainant's argument that the use of the “.com” suffix is an irrelevant distinction that does not alter the likelihood of confusion between the disputed domain name and the “FENERBAHCE” trademark. Rolls-Royce PLC v. Hallofpain, WIPO Case No. D2000-1709; VAT Holding AG v. V, WIPO Case No. D2000-0607.

As a result the Panel finds that the disputed domain name of is identical to a trademark in which the Complainant has rights and as a result the Complainant has met the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests

The Complainant's next burden falls under paragraph 4(a)(ii) of the Policy. In this instance the Complainant is required to make a prima facie showing that the Respondent lacks rights or a legitimate interest in the disputed domain name. In these cases, once the complainant has presented its case in this regard, the respondent thereafter has the burden of evidencing to the respective panel that they have rights to or a legitimate interest in the disputed domain name. See Julian Barnes v. Old Barn Studios Limited, WIPO Case No. D2001-0121; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.

The Panel would also like to note that paragraph 4(c) of the Policy provides a non-exhaustive list of circumstances that the respondent can use to demonstrate that it possesses rights or a legitimate interest in respect of the disputed domain name. Additionally in these cases the absence of rights or legitimate interests can also be established if a complainant makes out a prima facie case and the respondent enters no response. De Agostini S.p.A. v. Marco Cialone,WIPO Case No. DTV2002-0005.

The Complainant has stated that the Respondent has not evidenced that they have any association with or rights to the “FENERBAHCE” trademark themselves and additionally they have not licensed or otherwise permitted the Respondent to utilize the “FENERBAHCE” trademark or any domain names incorporating the trademark. The Panel agrees with the Complainant that even though a commercial agreement was executed between the Complainant and the Respondent in June of 2000, the terms do not give the Respondent any ownership rights to the “FENERBAHCE” trademark. The terms of the agreement provided as Annex 13 indicate that the Complainant maintained a certain degree of control and oversight over the disputed domain name . Notwithstanding this fact, the agreement was terminated by the Complainant in 2001 and a cease and desist letter was sent to the Respondent enjoining them from utilizing the “FENERBAHCE” trademark.

Aside from the fact that the Respondent had no rights to the “FENERBAHCE” trademark, the Panel finds that such an agreement and the act of its execution by itself infers knowledge on the part of the Respondent that the rights to the “FENERBAHCE” trademark were held by the Complainant. When a registrant registers a domain name wholly incorporating the trademark of another party, knowing it to be the trademark of the other party, the prima facie burden of the complainant has been met. See (1) Galatasaray Spor Kulubu Dernegi (2) Galatasaray Pazarlama A.S. (3) Galatasaray Sportif Sinai Ve Ticari Yatirimlar A.S., supra. In this case the “FENERBAHCE” trademark and the Complainant's associated rights to it, in the form of both common law and registered trademarks as well as domain name registrations, were well-known in Turkey and around the region. Aside from registration of the disputed domain name, the act of entering into the agreement with the Complainant clearly evidences the Respondent's knowledge and acknowledgement of the Complainant's rights to the “FENERBAHCE” trademark.

Presently the Respondent has not responded to the Complainant's contentions. As a result the Respondent has failed to present a single circumstance under paragraph 4(c) of the Policy or otherwise that the Respondent had any sort of rights or a legitimate interest in respect of the disputed domain name . Notwithstanding this fact however, the Panel finds it unlikely that the Respondent would have been able to support its burden.

When accessed, the disputed domain name resolves to a fairly detailed website where a large amount of multimedia and information is available concerning the “Fenerbahce” football team. While in the past the Respondent's use of the disputed domain name may have been bona fide, presently the Complainant has demonstrated that the agreement granting the Respondent that right was terminated and that the Respondent did not have permission to utilize the “FENERBAHCE” trademark anymore. Additionally the Respondent has not evidenced that they were associated or commonly known by the domain name.

In previous UDRP panel decisions, for a fan site to be an acceptable expression of rights, the registrant must evidence that they are making a legitimate, noncommercial or fair use of the disputed domain name. See Estate of Gary Jennings and Joyce O. Servis v. Submachine and Joe Ross,WIPO Case No. D2001-1042. Here, based on the weight of the evidence, the Panel finds that the conduct of the Respondent indicates that a commercial use was intended. The Respondent had previously entered into a commercial agreement with the Complainant where they derived revenue from the operation of the domain name. The Panel also finds support in the Complainant's contention that the Respondent engaged in a pattern of registering, building up and transferring this as well as similar domain names for valuable consideration. This element is examined more below. Additionally, Annex 16 which was provided by the Complainant demonstrates that commercial advertisements exist on the web page at the disputed domain name. Therefore, any claim that the use was noncommercial would very likely fail. Furthermore, the disputed domain name does not contain a disclaimer noting that the Respondent is not affiliated with or sponsored by the Complainant.

Therefore, the Panel finds, based on the totality of the circumstances, that the Respondent's use of the disputed domain name is commercial in nature and that no legitimate or bona fide use of the disputed domain name exists under the circumstances. As a result the Panel finds that the Complainant has satisfied the requirements under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith

The final element under paragraph 4(a)(iii) of the Policy requires the Complainant to show that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy provides a number of instances that constitute bad faith registration, but in the same manner as paragraph 4(c), this list is not exhaustive. In addition to the instances under paragraph 4(b), a panel is also able to draw inferences about bad faith registration in light of the facts and circumstances of the case in determining whether the complainant has met its burden. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.

The Complainant's primary arguments in its Complaint fall under paragraph 4(b)(i) and 4(b)(iv) of the Policy. Under 4(b)(i) the Complainant must show that the Respondent registered the disputed domain name of for the primary purpose of selling, renting, or otherwise transferring the domain name to the Complainant for valuable consideration in excess of the Respondent's out-of-pocket costs.

The Panel finds support in the Complainant's argument that the Respondent has engaged in a pattern of conduct where a number of domain names were registered with the ultimate intention of transferring those domains back to the trademark holder for valuable consideration. While certainly a difficult burden to evidence, the Panel has found support for this claim based on the available evidence provided by the Complainant and the limited fact finding that the Panel undertook.

As the Complainant has evidenced via Annex 15, a WhoIs database search revealed that the Respondent holds a number of other domain names, including , , as well as a number of other domains. By visiting the websites at the domain names and , the Panel verified the Complainant's contention that the domain names resolved to two fan pages for two different football clubs, with virtually the same content and layout as the disputed domain name.

The Panel also noted the Complainant's reference to a previous WIPO UDRP panel decision involving the Respondent. In that case, (1) Galatasaray Spor Kulubu Dernegi (2) Galatasaray Pazarlama A.S. (3) Galatasaray Sportif Sinai Ve Ticari Yatirimlar A.S., supra, the Respondent was operating the domain name , a domain name incorporating the trademark of another famous Turkish football club. The facts of the aforementioned case virtually mirror those of the present case with the Respondent setting up a website pertaining to a well-known football club and entering into an agreement with the trademark holder to operate the domain name for valuable consideration.

While fans sites are certainly acceptable under certain facts, the Panel finds that there is sufficient evidence to find that the Respondent engaged in a pattern of conduct where the objective was to register domain names incorporating a well-known trademark in the hopes that the Respondent would eventually be able to sell or otherwise profit from the registration at the expense of the true trademark holder.

In this case, at least four similar fan sites were established in virtually the same fashion, layout and with the same content for four distinct, well-known football teams by the same registrant. These facts, as well as the fact that the Respondent entered into two similar commercial agreements leads the Panel to conclude, on a balance of the probabilities, that the Respondent registered and is using the disputed domain name in bad faith under paragraph 4(b)(i) of the Policy.

In a similar fashion as the panel concluded in (1) Galatasaray Spor Kulubu Dernegi (2) Galatasaray Pazarlama A.S. (3) Galatasaray Sportif Sinai Ve Ticari Yatirimlar A.S., supra, the Panel here finds, on a balance of probabilities, that the Respondent was aware of the “FENERBAHCE” trademark when it registered the disputed domain name, was aware that the domain name referred to the Complainant and its primary purpose was to conduct commercial business with the Complainant by establishing a website relating to the Complainant in anticipation that the Complainant would pay valuable consideration to the Respondent. Id.

As the Panel believes that evidence of bad faith registration and use can be supported under paragraph 4(b)(i) of the Policy, the Panel does not need to address the Complainant's other contention under paragraph 4(b)(iv).

Accordingly the Panel finds that the Complainant has met the requirements of paragraph 4(a)(iii) 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.

Nasser A. Khasawneh
Sole Panelist

Dated: December 11, 2009

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