The Complainant is Çiçek Marketçilik Çiçek ve Bilişim Teknolojileri Dış Tic. Ltd. Şti. of Istanbul, Turkey, represented by Istanbul Patent & Trademark Consultancy Ltd., Turkey.
The Respondent is Arma Bilişim Reklam Tur. Inş. San. Tic. Ltd. Şti., ARM Bilişim, Arma Bilişim Reklam Tur. İnş. San. Tic. Ltd. Sti., ARM Bilişim, Sancaktepe of Sultanbeyli, Istanbul, Turkey. 2. The Domain Name and Registrar
The disputed domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 24, 2010. On December 28, 2010, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR a request for registrar verification in connection with the disputed domain name(s). On December 29, 2010, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 4, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on January 4, 2011.
The Center verified that the Complaint together with the amendment to the Complaint 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 January 12, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 1, 2011. The Response was filed with the Center on January 25, 2011.
The Center appointed Gökhan Gökçe as the sole panelist in this matter on February 3, 2011. 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 has been providing floriculture goods and services online since 1999. The Complainant works with florists nationwide to deliver flowers across the country offering a same day service. In 2006 it registered the domain name from which it provides its services. The Complainant introduced an innovative service of flower delivery with video messages from the senders which became very popular, promoting the company on a wide scale.
The Complainant owns and uses the trademark CICEK MARKET was registered with the Turkish Patent Institute on August 14, 2009. The Complainant is the owner of several domain names which incorporates its trademark. The Complainant registered the domain name on August 3, 2006.
The Respondent has been active in floricultural business for more than 10 years and started to provide its services online in 2009. The Respondent registered the disputed domain name on February 26, 2010. 5. Parties’ Contentions A. Complainant
In accordance with Paragraph 4(b)(i) of the Policy, the Complainant requests that the domain name 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 submits it is the registered owner of its trademark CICEK SEPETI, furthermore, the Complainant has been using the domain name since 2006 for online florist services. The Complainant contends that the public has come to perceive goods that are offered under its mark as emanating from, being endorsed by or affiliated with Complainant.
The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s registered trademark. Furthermore the disputed domain name consists solely of the words “cicek marketi” which although slightly different to the Complainant’s trademark has the same meaning in Turkish. Nonetheless, the disputed domain name wholly incorporates the Complainant’s trademark. The Complainant sites several URDP panel decisions which addition of a non distinctive suffix does not serve to distinguish the disputed domain name from the trademark, especially if the predominant part of the disputed domain name is identical to the trademark. Rights or Legitimate Interests
The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name as it has not registered a corresponding trademark and the Respondent is not known by that name. The Complainant submits that it has not licensed, or otherwise permitted the Respondent to use its trademark or to apply for or use any domain name incorporating it.
The Complainant notes it has registered rights in the trademark CICEK MARKET preceding the Respondent’s registration of the domain name and that the Complainant has the right to exercise control on how its trademark is used by the third parties.
Furthermore the Complainant points to the fact that it registered and has been using its domain name since August 3, 2006, whereas, the Respondent registered the disputed domain name much later on February 26, 2010. Registered and Used in Bad Faith
The Complainant contends that the Respondent registered the disputed domain name in order to prevent the Complainant as the owner of the trademark or service mark from reflecting the mark in a corresponding domain name. The Complainant asserts that by using the disputed domain name the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website 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 offered on web site, primarily for the purpose of disrupting the Complainant’s business.
The Complainant notes the disputed domain name resolves in a website that contains material that is in direct competition with the Complainant, namely, offering online services in the floricultural sector and sending flowers with messages. The Complainant contends that there is no bona fide use of the deputed domain name and that the Respondent is using the disputed domain name to divert internet users searching for the Complainant to another competitor’s website offering similar goods and to create an association with the Complainant’s well established trademark and goodwill. The Complainant submits there is no legitimate noncommercial or fair use of the domain name and the use being made is, in effect, illegitimate and unfair. The Complainant contends by registering the domain name, the Respondent has been not only preventing the Complainant from reflecting its trademark in the corresponding domain name, but also gaining commercial benefit by attracting the Internet users to his website, by using Complainant’s trademark.
The Complainant notes that the Respondent is in offering services in the same sector and general design of the website is confusingly similar with the Complainant’s website. It further submits that in consideration of these facts and that the Respondent appears to be a Turkish citizen, it is difficult to imagine that the Respondent would not have been aware of the Complainants rights in its mark, it therefore follows, it would have been impossible for the Respondent to use the disputed domain name as the name of any business or service for which it would be commercially useful without violating the Complainant’ rights in its service mark. 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 name to the Complainant. Identical or Confusingly Similar
The Respondent submits that it has been active in providing floriculture services since 2000 and that in 2009 it decided to provide its services on the Internet. It is contended that in early 2009 the Respondent carried out research and development and started to use the disputed domain name . The Respondent claims that the disputed domain name was chosen as it reflects the services it provides and that he had the right to register the disputed domain name as it was not registered by the Complainant and was available for the Respondent to register. Rights or Legitimate Interest
The Respondent submits that it has not attempted to sell the disputed domain name and that the Complainant offered to purchase the disputed domain name from the Respondent, however, such offer was refused as the Respondent sole intention is to use the disputed domain name for legitimate business.
The Respondent relies on the fact that it is using the disputed domain name for a legitimate interest and business before the notification of domain name dispute and that the domain name properly represents the goods or services. Registered and Used in Bad Faith
The Respondent denies any allegation of bad faith and submits that there is no evidence of the registration and use of a domain name in bad faith. The Respondent contends that there is no evidence of any circumstances indicating that he has registered or you acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name 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 out-of-pocket costs directly related to the domain name. The Respondent further notes, that upon visiting the website the Panel will appreciate that a considerable sum has been invested by the Respondent.
The Respondent avers that it has not registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name. There has been no attempt to infringe the Complainant’s rights in its Trademark and it is used to provide its own services. The Respondent further denies any similarity between the websites.
The Respondent notes that several domain names contain the word “market” as it accurately reflects the services provided by the website. The Respondent submits the disputed domain name consists solely of generic terms which it is entitled use in a domain name. The Respondent claims legitimate noncommercial use of the domain name, without intent for commercial gain or to misleadingly divert consumers to tarnish the trademark or service mark at issue. 6. Discussion and Findings A. Identical or Confusingly Similar
The Policy simply requires the Complainant to demonstrate that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
The Panel is satisfied that the Complainant is the registered owner of the trademark CICEK MARKET. The Panel finds that the disputed domain name is virtually the same as the Complainant’s trademark as the disputed domain name wholly incorporates the Complainant’s trademark which is sufficient to establish identity or confusing similarity, Magnum Piering, Inc. v. The Mudjackers, WIPO Case No. D2000-1525, “when a domain name wholly incorporates a complainant’s registered mark, which is sufficient to establish identity or confusing similarity for the purposes of the Policy”.
The Panel finds that the addition of the generic letter “i” does not distinguish the Respondent’s domain name from Complainant’s trademark, Sanofi-aventis v. Nevis Domains LLC,WIPO Case No. D2006-0303. Use of the trademark in the domain name is likely to create confusion amongst Internet users and create an impression that the disputed domain name resolves in a website which is endorsed by or affiliated in some way with the Complainant.
In view of the foregoing, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights, and therefore, the Complainants have succeeded on this first element under the Policy. B. Rights or Legitimate Interests
In accordance with Paragraph 4(a)(ii), the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name. 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 name for legitimate noncommercial or fair use of the domain name, without intent for commercial gain or to misleadingly divert consumers. The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name. It is obvious that the Respondent enjoys commercial gain from use of the website and the Panel finds registering a domain name incorporating a trademark and using it to misdirect Internet users to websites offering competing products and services cannot be considered a bona fide use, or fair or noncommercial use.
The Respondent claims that it has been active in the same business in excess of 10 years but fails to provide any evidence similarly it relies on preparation for use of the domain name approximately a year before registration, however once again has not submitted any supporting evidence. Also, while Respondent claims that teh word “market” relates to its business, it does not explain why it uses “marketi” (with the extra “i”) in this domain name. In the absence of evidence there is nothing suggest the Respondent has rights or legitimate interest in the disputed domain name. The Panel finds that the fact the Respondent is active in the same commercial activity strongly suggests that the Respondent knew of the Complainants activity in the same sector and that it may be reasonably concluded that by registering disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users, specifically, by creating a likelihood of confusion with the Complainant’s Trademark, Pfizer Inc. v. Phillip Pizzurro,WIPO Case No. D2004-0600.
Paragraph 4(a)(ii) requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the disputed domain name. The Complainant has established a prima facie case that the Respondent lacks a legitimate right or interest in the disputed domain name. The requirements of 4(a)(ii) are fulfilled and consequently the Panel finds in favour of the Complainants on the second element of the Policy. C. Registered and Used in Bad Faith
According to Paragraph 4(a)(iii) of the Policy, the Complainant must prove is that the disputed domain name has been registered and are being used in bad faith.
The Complainant’s trademark was registered long before the Respondent’s registration of the disputed domain name. Furthermore the Complainant has submitted evidence at Annex 6 of the media attention its company has enjoyed, suggesting, that it both the Complainant and its rights in its trademark would have been known to the Respondent at the time of registering the disputed domain name.
The Panel finds that in all likelihood the Respondent was aware of the Complainant’s trademark, which reflects the Complainant’s commercial name, before registering the disputed domain name. Therefore the Respondent, at the time of registration, must have been aware that any legitimate commercial use of the domain name would result in a violation of the Complainant’s trademark rights, suggesting that there was never an intention of good faith use, Parfums Christian Dior v. Javier Garcia Quintas and C, WIPO Case No. D2000-0226.
The Respondent claims that there is no evidence of bad faith registration and that it chose the disputed domain name as it consists of generic words and accurately reflects the content of the website. However, the Panel finds that the Respondent is not using a generic word to describe a product/business or to profit from the generic value of the word without intending to take advantage of complainant’s rights in its trademark.
Furthermore as detailed above the Panel is of the opinion that the Respondent must have been aware of the Complainant's trademark rights. Bearing this in mind, the Panel finds the Respondent's bad faith is illustrated as the disputed domain name resolves to a website offering services in direct competition with the Complainant's services. The Panel is prepared to infer that the Respondent is taking advantage of the goodwill and reputation of the Complainant's trademark for commercial gain and it well-established that such use is evidence of bad faith, Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Universal Spheres Inc.WIPO Case No. D2010-0822. Such use clearly threatens to divert actual clients away from the Complainant and disrupt the Complainant's business.
As in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 and Ladbroke Group Plc v. Sonnoma International LDC,WIPO Case No. D2002-0131 after examining all circumstances surrounding the registration and use of the domain name, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith. Accordingly the Panel finds in favour of the Complainant on the third element 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.
Gökhan Gökçe
Sole Panelist
Dated: March 1, 2011
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