The Complainant is SAHIBINDEN BILGI TEKNOLOJILERI PAZARLAMA VE TICARET ANONIM SIRKETI of Istanbul, Turkey, represented internally.
The Respondent is GKG.NET Domain Proxy Service, GKG.NET Domain Proxy Service Administrator/Halit, Halit KINCAL of Bryan, Texas, United States of America and Istanbul, Turkey, respectively. 2. The Domain Name and Registrar
The disputed domain name is registered with GKG.NET, INC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 18, 2011. On February 18, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 19, 2011, the Registrar 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 March 3, 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 March 9, 2011.
The Center verified that the Complaint together with the amendment to 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 March 10, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 30, 2011. The Response was filed with the Center on March 25, 2011.
The Center appointed Ugur G. Yalçiner as the sole panelist in this matter on April 8, 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 is a Turkish corporate entity, which runs a leading e-commerce web portal in Turkey since the year 2001. Its portal is a well-known online marketplace with more than 1 million registered users and nearly 500.000 daily visitors.
The Complainant states that it has a trademark registration for the mark SAHIBINDEN and for the mark SAHIBINDEN.COM in Turkey.
The Respondent, the registered owner of the disputed domain name , is a Turkish individual who is located in Istanbul, Turkey. The disputed domain name was registered on December 20, 2004. 5. Parties’ Contentions A. Complainant Identical or Confusingly Similar
With respect to paragraph 4(a)(i) of the Policy and paragraph 3(b)(viii), (b)(ix)(1) of the Rules, the Complainant contends that:
The Complainant owns and runs an e-commerce web portal at the domain name since 2001 which offers people stored and free of charge listings to communicate with the prospective buyers of their goods and services to its 1 million registered and nearly 500.000 daily visitors.
The Complainant also asserts that the SAHIBINDEN trademark was first registered at the Turkish Patent Institute in the year 2000 and the disputed domain name is confusingly similar to the Complainant’s registered trademark SAHIBINDEN as the Internet terms “www” and “.com” are irrelevant distinctions which do not eliminate the possibility of confusion. The Complainant also alleges that the term “ilan” (Turkish word meaning “listing”) describes the Complainant’s main business area and it does not differentiate the disputed domain name from the Complainant‘s marks.
The likelihood of confusion includes an obvious association with the trademark of the Complainant and there is also a considerable risk that the public will perceive the disputed domain name as a domain name created by the Complainant under the SAHIBINDEN mark umbrella. Rights or Legitimate Interests
With respect to paragraph 4(a)(ii) of the Policy and paragraph 3(b)(ix)(2) of the Rules, the Complainant contends that:
The Respondent has not used the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. In addition, the Respondent is not known by the disputed domain name as it is not the Respondent’s name, corporate name or a commonly known identifier.
The Complainant submits that the disputed domain name was registered in December 2004 when the Complainant’s use of and rights to its trademark were well established.
The Complainant further contends that the Respondent has not made a legitimate noncommercial or fair use of the disputed domain name; to the contrary, there are Google advertisements at the disputed website that direct Internet users to secondary webpages where the Respondent generates “pay-per-click” advertising revenue. Registered and Used in Bad Faith
With respect to paragraph 4(a)(iii), 4(b) of the Policy and paragraph 3(b)(ix)(3) of the Rules, the Complainant contends that:
The website at the disputed domain name was created to provide listing like services by using a similar domain name to the SAHIBINDEN trademarks in the same field of business in which the Complainant has very good reputation.
The Respondent is intentionally attempting to attract, for commercial gain, Internet users to the website at the disputed domain name by creating a likelihood of confusion with the Complainant’s mark. B. Respondent
The Respondent contends that there is no likelihood of confusion between the Complainant’s trademarks and the disputed domain name, since “sahibinden” is a generic word and commonly used in many newspaper advertisements.
The Respondent adduces Annex 7 to the Response as evidence that there are many trademarks which are registered including the term “sahibinden” in the Turkish Patent Institute and that it is unthinkable that one company alone could monopolize the right to use all variations and combinations around this generic and common term.
Besides, the Respondent contends that the term “sahibinden” is also being presently used in various websites. Rights or Legitimate Interests
The Respondent contends that the Respondent’s website presents free of charge activities and the website has some 1000 ads and over 4700 users.
The Respondent adduces Annex 6 to the Response as evidence that the Google income from the website is not enough to cover the production cost of single page. Registered and Used in Bad Faith
The Respondent contends that the website at the disputed domain name was found in 2004 and it has been actively used for seven years. Additionally, the Respondent indicates that he has no intention of selling or leasing the disputed domain name.
The Respondent asserts that the Complainant has registered its trademark for the first time in 2007, the trademark SAHIBINDEN in 2008 and the domain name in 2008 whereas the disputed domain name was registered well before in 2004.
The Respondent also denies the Complainant’s bad faith claims and assertions that there is no evidence to prove the Complainant’s bad faith claim. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The term “sahibinden” is a Turkish word that means “from the owner” (or “by owner”) in the English language. It is a descriptive term for selling goods by their owners. Nevertheless, the Complainant owns registered trademarks for the term “sahibinden”. So, the Panel finds that the Complainant has satisfied the requirement of having trademark rights regarding the term “sahibinden”.
The Panel finds that the insertion of the word “ilan” does not differentiate the disputed domain name from the Complainant’s mark SAHIBINDEN. The Panel concludes that the minor differences between the disputed domain name and the Complainant’s mark are not sufficient to negate the confusing similarity for the purposes of the Policy.
According to the aforementioned considerations, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark SAHIBINDEN and therefore the Complainant has met the requirements of the first element under the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Panel notes that the Complainant has registered its domain name in 1999 and the Respondent has registered the disputed domain name in 2004.
The Complainant has stated that it has trademark registrations in respect of “sahibinden” since 2000. The Panel has conducted independent trademark research through the Turkish Patent Institution website for the trademarks including the word “sahibinden” and found the trademark applications (TR 2000/23233, TR 2000/23234, TR 2000/27710 and TR 2001/22892) which were filed by the company “Sahibinden Turizm Iletisim Pazarlama Ve Ticaret Limited Sirketi”. These four applications (TR 2000/23233, TR 2000/23234, TR 2000/27710 and TR 2001/22892) have been refused by Turkish Patent Institute on apparently absolute grounds in 2000 and 2001. The Panel notes that the name of the applicant of these 4 applications appears to be different from that of the Complainant. The Panel then performed a further search has been conducted at the Turkish Company Registry which indicates that the company name of “Sahibinden Turizm Iletisim Pazarlama Ve Ticaret Limited Sirketi” has been changed to the Complainant’s name “Sahibinden Bilgi Teknolojileri Pazarlama Ve Ticaret Anonim Sirketi” on May 10, 2006. As such, this Panel finds that the Complainant’s contentions regarding the registration year of the aforementioned trademark does not appear accurate. Based on the Panel’s determination on the current file and in light of the Panel’s assessment of the publicly accessible information, the Panel finds that the Complainant is indeed the owner of several word and figurative marks related to “sahibinden” but only since 2007.
(As regards the Respondent’s assertion that “sahibinden” is a term used by several third parties as trademarks, the Panel notes the trademark applications (TR 2009/34812, TR 2009/60292) which are evidenced by the Respondent in Annex 7 of the Response (as third-party trademarks which incorporate “sahibinden”), are not applications that have matured to a trademark registration. Those applications appear to have apparently been refused on absolute grounds by the Turkish Patent Institute.)
Viewing this situation in light of paragraph 4(c) of the Policy, and in the light of the above mentioned information, the Panel finds that;
The Complainant registered the domain name in 1999.
The Complainant (or Complainant’s predecessor-interest) attempted in the year 2000 and subsequently to register the word “sahibinden” as a trademark but all the above mentioned four applications have apparently been refused on absolute grounds.
The Respondent registered the disputed domain name in 2004.
The Complainant registered its SAHIBINDEN.COM trademark in 2007.
The Complainant did not take any action against the Respondent for 7 years (extensively leaving him to use the website at the disputed domain name starting from 2004 until the present proceedings).
This Panel finds that the Respondent has used the disputed domain name for the last 7 years in connection with a bona fide offering of services. During this period the Complainant would appear to have taken no action to prevent the Respondent’s use of the disputed domain name. This situation demonstrates the Respondent’s rights and legitimate interests in the disputed domain name.
The Panel also notes that a later trademark registration does not necessarily mean an earlier registration of a corresponding domain name could not be considered to have been in good faith. See: Taner Aksoy v. Hasan Bozkurt, WIPO Case No. D2009-0101, Taner Aksoy v.Turisitk Tic. Ltd. Şti. WIPO Case No. D2010-0556, Sahibinden Bilgi Teknolojileri Pazarlama ve Ticaret Anonim Şirketi vs. Mehmet Bozkuş,WIPO Case No. D2010-0944, Sahibinden Bilgi Teknolojileri Pazarlama ve Ticaret Anonim Şirketi vs. NA NA,WIPO Case No. D2008-1819.
In all these cases the disputed domain names have been registered after the trademark registration of the complainant and the complainant has taken action in a reasonable time period after the registration of the disputed domain names.
However in the present case the disputed domain name was registered by the Respondent in 2004 well before the Complainant obtained a trademark registration for the term “sahibinden” in 2007 or 2008 and again well before the date of the present Complaint.
Accordingly, the Panel finds that the Respondent has rights and legitimate interests to the disputed domain name. C. Registered and Used in Bad Faith
According to paragraph 4(a) (iii) of the Policy, in order to decide the Respondent’s bad faith in registration and use of the disputed domain name, the Complainant must prove one of the following circumstances, in particular but without limitation:
(i) circumstances indicating that the Respondent has registered or 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 the Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent has 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, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s web site or other online 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 Panel takes note that the disputed domain name is confusingly similar to the Complainant’s registered trademarks. However, the Panel also takes note that the term “sahibinden” is not an inventive or coined word but also a descriptive term that means “by owner” or “from the owner” and has been widely used by many third parties in newspaper advertisements or as a banner on the window/balcony of the houses/cars. In other words, this term is being used by the owners of cars, houses and etc. who would like to rent or sell their properties/goods and the majority of owners whom do not belong to or are associated with the Complainant and its business. As such the term “sahibinden” may be used as a descriptive term (without reference to the Complainant’s trademarks).
The Panel also asserts that, it is important to consider that the Respondent has been actively using the disputed domain name since 2004 and the website has currently 5059 members. Additionally there is no proof in the record that the Respondent has had an intention of selling or leasing the disputed domain name.
Further, as stated in the above, the Panel found that the trademark applications filed by the Complainant in 2000 in respect of “SAHIBINDEN” were apparently refused by the Turkish Patent Institute.
As the Respondent is located in Turkey, the Panel is not convinced that the Respondent did not know of the Complainant’s business when registering the disputed domain name. It is also likely that the Complainant was aware of the Respondent’s disputed domain name as of 2004 because it is also located in Turkey. The Panel notes that the contents and design of the website of the disputed domain name and those of the website at the Complainant’s domain name are different from each other.
Therefore, taking into account the above considerations, the Panel does not find sufficient grounds to conclude, given the current record, the descriptive nature of the disputed domain name and the corresponding use by the Respondent, that the Respondent’s choice of the disputed domain name was most probably motivated by an intention to target the Complainant’s marks.
See, EMAP USA, Inc. v. Dick Jurgens d/b/a Mobile Dick’s Cycle Clinic,WIPO Case No. D2001-0311 (notice of the complaint filed by the complainant, even where the respondent knew of the complainant’s MOTORCYCLIST mark, was not enough to establish bad faith where there was no pattern of abusive registrations and the respondent had a legitimate reason for selecting the generic name);
Ultrafem Inc. v. Warren R. Royal, NAF Claim No. 97682 ( employs a commonly used word to which the complainant cannot claim exclusive rights; “the first to register a domain name containing a generic or descriptive mark should prevail absent bad faith and a lack of legitimate interest”);
Energy Source Inc. v. Your Energy Source, NAF Claim No 96364 (respondent entitled to use a domain name comprising generic or descriptive terms that was not exclusively associated with the complainant’s business).
In view of the above, the Panel is persuaded that Complainant has not satisfied its burden of proof as far as registration of the domain name in bad faith is concerned, noting also the Respondent has contested such allegations of bad faith registration and since it appears more likely than not that the Respondent indeed registered and used the disputed domain name in good faith. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Ugur G. Yalçiner
Sole Panelist
Dated: April 22, 2011
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