WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Mr. Cinar Orge Saylan and Mr. Caglayan Orge Saylan v. GKG.NET Domain Proxy Service/The Fact Co., Winston Smith Case No. D2010-0248 1. The Parties
The Complainants are Mr. Cinar Orge Saylan and Mr. Caglayan Orge Saylan of Levent-Istanbul, Turkey represented by Istanbul Patent & Trademark Consultancy Ltd., Turkey.
The Respondent is GKG.NET Domain Proxy Service/The Fact Co. of Eurasia, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Names and Registrar
The disputed domain names and are registered with GKG.net, Inc (formerly GK Group LLC) 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 18, 2010. On February 19, 2010, the Center transmitted by email to GKG.net, Inc. a request for registrar verification in connection with the disputed domain names. On February 19, 2010, GKG.net, Inc, INC transmitted by email 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 Complainants on February 22, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on February 23, 2010. The Center verified that the Complaint together with the 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 24, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 16, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 17, 2010.
The Center appointed Nasser A. Khasawneh as the sole panelist in this matter on March 23, 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. On April 6, 2010 the date for decision was extended. 4. Factual Background
The Complainants are, in accordance with their statements, the heirs of the late Dr. Turkan Saylan, a university professor, doctor and founder of the Association for the Support of Contemporary Living in Turkey. Dr. Saylan was the recipient of a number of social and humanitarian awards. During her lifetime, Dr. Saylan published a number of books and other scholarly works.
The Respondent in this instance is GKG.NET Domain Proxy Service/The Fact Co., Winston Smith. The disputed domain names of , and were created on July 3, 2007 by the Respondent. 5. Parties' Contentions A. Complainant
The Complainants are representing the interests of Dr. Turkan Saylan, a well-known professor, doctor and humanitarian in Turkey. Dr. Saylan was the founder of the Association for the Support of Contemporary Living, a well-known NGO in Turkey. The Complainants contend that Dr. Saylan assisted with the eradication of Leprosy in Turkey and founded the Society for the Struggle against Leprosy in Turkey in 1976. The Complainants argue that Dr. Saylan has an international reputation for her medical, social and educational work in this field. In 1986 Dr. Saylan received the International Gandhi Prize in India. Dr. Saylan has also won numerous peace awards and other accolades in Turkey. In addition to the above accomplishments, the Complainants note that Dr. Saylan has also published numerous books, articles and other scholarly works.
In the Complaint, the Complainants are not alleging that they, through Dr. Saylan, possess any registered trade or service marks for TURKAN SAYLAN. Instead the Complainants argue that through Dr. Saylan's scholarly work, humanitarian efforts, personality and history, some protection should be bestowed upon the trademark, TURKAN SAYLAN. Therefore for the majority of its Complaint, the Complainant's are alleging that TURKAN SAYLAN has become an unregistered, common law trademark to which they are entitled to benefit from. The Complainants argue that this notion is both consistent with the UDRP as well as with the laws and customs in Turkey.
In meeting its obligations under the Policy, the Complainants first argue that the disputed domain names are identical to a trademark in which the Complainants have rights. In evidencing that the Complainants have obtained common law trademark rights to TURKAN SAYLAN, the Complainants go into a lengthy discussion of the policies and intent behind personal name protection both within the Policy and around the world. The primary sources are the Report of the Second WIPO Internet Domain Process as well as numerous past panel decisions with an emphasis on personal name protection.
Thereafter with respect to the second element of the Policy, the Complainants argue that neither they, nor Dr. Saylan, have given the Respondent the right to use TURKAN SAYLAN. The Complainants note that due to Dr. Saylan's work and reputation, a prior right to TURKAN SAYLAN existed before the Respondent's registration of the three disputed domain names in 2007. Furthermore, the Complainants allege that the Respondent has not acquired any right to the TURKAN SAYLAN trademark, and is not commonly known or associated with TURKAN SAYLAN. As a result, the Respondent had no rights or a legitimate interest in TURKAN SAYLAN or the disputed domain names.
In satisfying the third element of the Policy, the Complainants argue that the Respondent clearly targeted Dr. Saylan's goodwill and reputation when the disputed domain names were registered. The Complainants argue that the uniqueness of the TURKAN SAYLAN trademark clearly evidences that the domain names targeted the Complainants' trademark. As a result, the registration of the disputed domain names was in bad faith.
In addition, upon receipt of a cease and desist letter, the Complainants note that the Respondent offered to sell the disputed domain names for approximately USD 5,000 for each domain name. This was clearly in excess of the Respondent's out-of-pocket costs. The Complainants also allege that the Respondent has not used the disputed domain names in a bona fide manner or in good faith. The disputed domain names revert to either blank landing pages or to a page referencing Dr. Saylan. The Complainants argue that these uses and the surrounding facts evidence a bad faith use. B. Respondent
The Respondent did not reply to the Complainants' 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)). The Complainants note the Panel's discretion in this regard.
Additionally, a complainant must establish each element of paragraph 4(a) of the Policy, which is 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 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
Under the first element of the Policy, the Complainants must evidence that the disputed domain names are either identical or confusingly similar to a trademark or service mark in which the Complainants have rights. In this case the Complainants are arguing that the Respondent's disputed domain names are identical to their trademark TURKAN SAYLAN. In accordance with the Policy, the Complainants must of course evidence that they have obtained rights to TURKAN SAYLAN.
The issue of whether legal protection is afforded to personal names under the UDRP is by no means a simple matter, and is contingent on a number of elements. The Agreement on Trade-Related Aspects of Intellectual Property (“the TRIPS Agreement”) recognized that personal names were eligible for trademark registration. This is emphasized in the Report of the Second WIPO Internet Domain Name Process and is cited by the Complainants. On a national level, in various jurisdictions around the world, there are protections against the improper use of personal names which are grounded in various areas of law. The Complainants emphasize this fact in their Complaint and cites a number of provisions under Turkish law.
In this case the Complainants acknowledge that there is no registration of the TURKAN SAYLAN trademark. Instead, what is being alleged is that over time and in light of the extent of her work, Dr. Saylan acquired unregistered common law trademarks. This contention forms the backbone of the Complainants' case.
The Panel is of the opinion based on the current record that TURKAN SAYLAN could possibly qualify for registration as a trademark. The Panel also recognizes that, under certain circumstances, TURKAN SAYLAN is capable of acquiring common law trademark rights. The issue is whether Dr. Saylan's likeness, work and reputation has gained inter alia sufficient notoriety in commerce to qualify for the status of a common law trademark. Ultimately, the Panel is of the view that it is unable to determine this issue based on the evidence provided by the Complainants. Additionally, there are a number of other jurisdictional issues that complicate this matter as well.
The initial factor in coming to this conclusion hinges on the sufficiency of the evidence provided by the Complainants. With respect to unregistered trademarks, the Report of the Second WIPO Internet Domain Name Process states that numerous past panel decisions have determined that “common law or unregistered trademark rights may be asserted by a complainant and will satisfy the first condition of the UDRP.” It is the complainants' burden to demonstrate these common law rights.
How this burden is met under the UDRP is an issue that is rather contentious, with past UDRP panel decisions reaching a number of conclusions. The consensus viewpoint under paragraph 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions is that “the complainant must show that the name has become a distinctive identifier associated with the complainant or its goods and services.”
In this case, the Complainants have stated that in certain cases, a personal name may constitute an unregistered trademark right under Turkish law. The Panel sees no need to contest this view per se as the Panel does agree with the notion that common law trademark rights may indeed arise under certain circumstances.
Following the issuance of the Report of the Second WIPO Internet Domain Name Process, a number of panels argued that it was clear that the Policy was not intended to apply to personal names that had not been used “commercially and acquired secondary meaning as the source of goods and/or services.” Dr. Michael Crichton v. In Stealth Mode,WIPO Case No. D2002-0874; See also Israel Harold Asper v. Communication X Inc.,WIPO Case No. D2001-0540; Kathleen Kennedy Townsend v. B.G. Birt,WIPO Case No. D2002-0030. The notion was that the policy and intent behind the UDRP was not to protect personal names that had not been commercially exploited against “parasitic registration”. Id. The Complainants highlight a number of these elements in their complaint, and in a number of instances link the protection of a personal name to commerce and trade.
The Panel is not necessarily of the opinion that commercial exploitation is the only mechanism by which an aggrieved party can successfully assert common law trademark rights under the Policy. In this case however, the Complainants have not sufficiently evidenced any alternative. With that in mind, the Complainants point out that Dr. Saylan was an author and produce links to a number of her works. What has not been evidenced, is how widespread and recognized Dr. Saylan's works were and whether any consequent reputation has been associated with Dr. Saylan's use of TURKAN SAYLAN in commerce. Based on the above, the Panel does not find that the Complainants have made an appropriate case with respect to evidencing that a secondary meaning has been associated to Dr. Saylan's personal name that rises to the level of common law trademark.
There may be various protections in Turkey to protect the Complainants in these circumstances or other protections based on pure notoriety alone. It seems that Dr. Saylan's work itself may well have been valuable and had a level of fame around Turkey. The Panel does not believe that this fame and eminence alone warrants a remedy under the Policy as regards Dr. Saylan's name per se. In reviewing the evidence, the Panel does not find that a sufficient connection between Dr. Saylan's notoriety and the notion of a common law trademark has been made. As past panel decisions have held, a distinction must be made between an eminent individual and individual names that may be protectable as trademarks under the Policy. As was stated in the Jerry Falwell case, the fact that “the complainant has acquired a certain fame in the United States is without question. However, this kind of fame is not cognizable under the Policy”. The Reverend Dr. Jerry Falwell and the Liberty Alliance v. Gary Cohen, P and God.Info,WIPO Case No. D2002-0184. The Panel is of the opinion that a similar logic applies here.
A final issue concerns a basic premise of the Complainants' case. Even if it was found that Dr. Saylan achieved common law rights to TURKAN SAYAN, the Complainants have not evidenced that they are the sole and appropriate beneficiaries of these rights. The Complaint notes that the Complainants are “sons and heirs” of Dr. Turkan Saylan. While this may be true, their sole right to Dr. Saylan's estate has not been substantiated by the evidence. At present, it is unclear whether the Complainants are entitled to enforce these rights of the late Dr. Saylan. There is no clear proof that the Complainants are the sole beneficiaries of the estate of Dr. Saylan.
There is at least a possibility that the Complainants are not entitled to enforce these rights or, at least, that there are other beneficiaries that should be accounted for in a dispute such as the one that this Panel is considering. There may well be more parties that need to be added to the Complaint. Taken as a whole, the Panel is very reluctant to proceed in adjudicating a matter that may be subject to considerations of inheritance and estate law within Turkey that are well and truly beyond the objectives of the UDRP process.
Without more evidence and with these considerations in mind, the Panel is of the opinion that the spirit and intent of the UDRP was not ultimately to resolve disputes of this nature. If anything is clear from the numerous past panel decisions focusing on personal names, it is that the UDRP policy was not intended to provide comprehensive protection to personal names. In many jurisdictions there are other legal avenues and principles that may be better suited to resolve disputes where aspects of the local law may predominate. These might embody defamation or reputational suits, as well as other tort or intellectual property remedies afforded by the local law. Such considerations may very well be applicable in Turkey. Therefore, the Panel's view is that this dispute is better served by being adjudicated by the appropriate authority under Turkish law.
As a result the Panel finds that the Complainants have failed to meet their burden under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
In light of the Panel's finding under the first element above, the Panel need not make a finding under the second element. C. Registered and Used in Bad Faith
Following from the above, the Panel need not make a finding under the third element. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Nasser A. Khasawneh
Sole Panelist
Dated: Dated: April 9, 2010
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