WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Mehmet Kahveci, HyperLink International LTD. v. Murat Karagülle Case No. D2010-0125 1. The Parties
The Complainant is Mehmet Kahveci, HyperLink International Ltd. of Boston Massachusetts, United States of America, represented by Ugur&Gög, Turkey.
The Respondent is Murat Karagülle of Antalya, Turkey, represented by Kartal Law Firm Attorney at Law, Turkey. 2. The Domain Names and Registrar
The disputed domain names and are registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 26, 2010. On January 28, 2010, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain names. On February 3, 2010, GoD, Inc. transmitted by e-mail to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 4, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed the amended Complaint on February 9, 2010. The Center verified that the Complaint and amended 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 10, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 2, 2010. The Response was filed with the Center on March 2, 2010.
The Center appointed Gökhan Gökçe as the sole panelist in this matter on March 10, 2010. 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, Mehmet Kahveci is the registered owner of HyperLink International Ltd.
Based on the evidence on record, it appears that the disputed domain name among others, was to be transferred to the Complainant through a transfer agreement on July 27, 2005, (Response, annex 1). According to the said agreement and other “internet addresses will continue to belonging (sic) to the Transfors [in this case being the Respondent].” 5. Parties' Contentions Preliminary Issues
The Complainant states that two years ago it attempted to have ICANN resolve the dispute between the two parties but was advised that ICANN “only evaluate[s] domains disputes which have a trademark”.
The Parties have indicated that there are ongoing legal proceedings regarding these domain names, as discussed in more detail below. A. Complainant
In accordance with paragraph 4 of the Policy, the Complainant requests that the domain names and 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 trademarks BORSA.COM and OTOMOBIL.COM with the United States Patent and Trademark Office on October 28, 2008 and October 21, 2008 respectively. Furthermore, the Complainant submits that it registered the disputed domain names in 1996 as evidenced in Annex 1 of the Complaint and that they were illegally acquired by the Respondent for which there are ongoing investigations both in Turkey and the United States of America.
The Complainant contends that the disputed domain names and are identical or confusingly similar to the Complainant's trademarks. Right or Legitimate Interest
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain names as the Respondent obtained access to the domain name account of the Complainant by illegal means in order to register the disputed domain names under his own name. Therefore the disputed domain names were hacked from the Complainant and registered with fake contact details.
Furthermore the Complainant draws attention to the fact the it has trademark rights, as evidenced in Annex 4 of the Complaint, and its trademarks are reflected in the disputed domain names. Registered and Used in Bad Faith
The Complainant submits that the disputed domain names that were hacked from the Complainant were registered under fake names, telephone numbers and addresses for a considerable amount of time, and that they are still registered under fake addresses.
The Complainant submits that it contacted all of the current registered owners of the disputed domain names but did not received any replies confirming that the disputed domain names were transferred illegally and in bad faith. B. Respondent
The Respondent filed a Response to the allegations in the Complaint and requests the Panel to deny the remedy requested, namely transfer of the disputed domain names to the Complainant. Identical or Confusingly Similar
The Respondent states that the Complainant's argument that he used illegal means to hack into the Complainant's e-mail and transfer the disputed domain names from Network Solutions Inc to OnlineNIC.com in his own name is beyond the scope of the Policy and these proceedings.
The Respondent states that the Complainant has never used the disputed domain names and the only purpose of the trademark registrations is to satisfy the first requirement of the Policy. The Respondent notes that the Complainant admits in the Complaint that it registered the trademark and service marks just to satisfy the conditions of the UDRP in order to file the Complaint with WIPO. Right or Legitimate Interest
The Respondent states that he has owned the disputed domain names since he was a student and that, although he indicates that “he has no intention of keeping the domain names within his assets”, he does intend to use the disputed domain names as part of a project that he has been working on for many years. Additionally, he states that the Complainant agreed to the Respondent's ownership of the disputed domain names by a signed agreement, dated July 27, 2005. Registered and Used in Bad Faith
The Respondent denies any allegation of bad faith. The Respondent draws the Panel's attention to the fact that although his address and telephone numbers have changed and not been updated in the WhoIs records for the registration of the domain names he has always been contactable via e-mail and purposefully kept the same e-mail address.
The Respondent states that there is no evidence of registration in bad faith and that the Complainant has failed to satisfy the burden of proof.
The Respondent states that he entered an agreement with the Complainant whereby it agreed that the domain names and would remain registered by the Respondent and submits a copy of such agreement at Annex 1 of the Response. The agreement stipulates that it was concluded and signed by both parties on July 27, 2005.
The Respondent contends that he has never attempted to sell, rent or transfer the disputed domain names. The Respondent alleges that, to the contrary, this is the reason the Complainant intially purchased and held these domain names, in addition to a larger domain name portfolio, and sites several previous WIPO decisions in which the Complainant had acted as a respondent.
The Respondent appears to contend that as the disputed domain names' registrations predate the Complainant's trademarks its intention in registering the domain names was not to infringe the trademark owner's rights. Further, the Respondent indicates that the words “otomobile” and “borsa” have generic meanings, namely “car” and “stock market”, respectively, in the Turkish language.
The Respondent alledges that since he acquired the disputed domain names, he never attempted to use the disputed domain names for commercial gain. 6. Discussion and Findings Ongoing Court Proceedings
There is a procedural matter, namely that there are ongoing proceedings pertaining to the material facts of this case.
The Complainant states that there are already court proceedings ongoing in relation to the disputed domain names and their alleged illegal acquisition.
Paragraph 18(a) of the Rules states “In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.”
Paragraph 18(b) provides discretion to the Panel to terminate, stay or continue the proceedings under the Policy depending upon the individual circumstances of the case. Following Axelion GmbH v. Eric H. Schunk, WIPO Case No. D2008-1701, the Panel has decided not to dismiss the present case on the grounds of the discretion granted in paragraph 18 of the Rules.
The Panel thus turns to the merits of the case. 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 names of the Respondent be transferred to the Complainant:
(a) the domain names are 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 names; and,
(c) the domain names have been registered and are being used in bad faith.
Pursuant to Paragraph 15(a) of the Rules, the Panel shall decide the 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. A. Identical or Confusingly Similar
The Complainant has established its rights in the trademarks BORSA.COM and OTOMOBIL.COM as evidenced at Annex 4 of the Complaint. The Respondent's registration of the disputed domain names predates the Complainant's trademark registrations. Although the Respondent registered the disputed domain names prior to the Complainant's trademark registrations this does not prevent a finding of identity and/or confusingly similarity. The Panel follows the consensus view of the Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 1.4, that registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity. The UDRP makes no specific reference to the date on which the owner of the trade or service mark acquired rights.
Accordingly, the Panel finds that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights, and therefore, the Complainant has succeeded on this first element under the Policy. B. Right or Legitimate Interest
In accordance with Paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the disputed domain names. Although the Policy states that the Complainant must prove each of the elements in paragraph 4(a), it is often observed that it is difficult for a complainant to prove a negative and it has therefore generally accepted under the Policy that, once a complainant has presented a prima facie case of a respondent's lack of rights or legitimate interests in a domain name, the burden shifts to the respondent. The Policy at paragraph 4(c) provides various ways in which a Respondent may demonstrate rights or legitimate interests in the domain name.
The Complainant contends that the Respondent is not using the disputed domain names for legitimate noncommercial or fair use. The Panel visited the disputed domain names and found that both were connected to pay-per-click landing pages. The Respondent contends that he intends to use the disputed domain names for a project but has failed to provide any evidence of previous use or preparations for intended use of them. Aside from his statement, there is no supporting evidence and the Panel does not accept that this alone provides sufficient evidence to draw the conclusion that the domain names will in fact be used for a bona fide offering of goods or services as the Respondent apparently claims. The Respondent has failed to establish “demonstrable preparations” to use the disputed domain names for a bona fide offering of goods or services, Helen Fielding v. Anthony Corbert aka Anthony Corbett,WIPO Case No. D2000-1000.
Based on the Panel's findings below, however, there is no need for the Panel to make a determination on this element of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Finally, the Complainant must show that the domain names have been registered and are being used in bad faith under paragraph 4(a)(iii) of the Policy.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or acquired the domain names primarily for the purpose of selling, renting, or otherwise transferring the domain names registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the domain names; or
(ii) the Respondent has registered the domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) The Respondent registered the domain names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's web site or location or of a product or service on the Respondent's web site or location.
The Complainant relies on rights which are established in its registered trademarks. However the registration of the disputed domain names precedes registration of the Complainant's trademarks.
While the Panel is convinced, based on this fact, that the domain names were not registered in bad faith as the Respondent could not reasonably be said to have targeted the Complainant's subsequently-registered marks, the Panel further notes that the Respondent appears to have had some agreement or permission from the Complainant to retain the registration of these domain names. As it is unclear from the record precicely how such permission was granted or intended to operate, particularly in light of the parties' apparent ongoing court proceedings, the Panel makes no finding as to the weight of this argument.
The Complainant has therefore failed to prove any of the elements listed under paragraph 4(b) of the Policy. Furthermore, the Panel notes that the disputed domain names comprise dictionary words. In this Panel's view, a dispute regarding the registration of a domain name comprising a common term that also corresponds to a trademark requires an additional showing of bad faith by a complainant. In this case, no such evidence has been submitted by the Complainant. Due to the lack of any such evidence, the Panel concludes that the Complainant has not established that the domain names were registered in bad faith.
The Panel notes finally that the present finding does not in any way limit the parties' recourse in another forum.
In examining all the circumstances of the case to determine whether the Respondent is acting in bad faith, the Panel finds that the Complainant has failed to establish the third element of the Policy. Accordingly the Panel finds in favour of the Respondent on the third element of the Policy. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Gökhan Gökçe
Sole Panelist
Dated: March 29, 2010
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