The Complainant is Turkcell Iletisim Hizmetleri A.S. of Istanbul, Turkey, represented by Istanbul Patent & Trademark Consultancy Ltd., Turkey.
The Respondent is Mr. Kurt of Izmir, Turkey. 2. The Domain Name and Registrar
The disputed domain name is registered with Melbourne IT Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 18, 2011. On November 18, 2011, the Center transmitted by email to Melbourne IT Ltd. a request for registrar verification in connection with the disputed domain name. On November 21, 2011, Melbourne IT Ltd. 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 November 24, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 14, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 15, 2011.
The Center appointed Selma Ünlü as the sole panelist in this matter on January 12, 2012. 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 facts stated in the Complaint are as follows:
(1) The Complainant, Turkcell Iletisim Hizmetleri A.S. (“Turkcell”) is the leading GSM based mobile operator in Turkey established in 1994 and having agreements with 541 operators in 193 countries as of March 23, 2007.
(2) The Complainant registered TURKCELL service marks number 173130 and 174691 before the Turkish Patent Institute on September 9, 1996. Apart from this, the Complainant has registered other TURKCELL trade and service marks before the TPI.
(3) The Complainant owns TURKCELL ILETIŞIM HIZMETLERI A.S Community Trademark No. 002525194, registered on June 6, 2003.
(4) The Turkish Patent Institute recognized the “TURKCELL Logo” as a well-known trademark in 2008.
(5) “Turkcell” is the trade name of the Complainant.
(6) The Complainant owns domain name since November 10, 1996.
Panel’s observation of the submitted evidence reveals the following:
(1) The disputed domain name was inactive and the website showed an error page, when the Panel visited it on January 21, 2011.
(2) The Complainant’s “www.” website is well-known, containing information about various offers and campaigns as well as links to its other online services, such as top-up.
(3) The disputed domain name is apparently registered under a false identity and address, since the postal code refers to Istanbul, though the city indicated in the available contact information is İzmir. 5. Parties’ Contentions A. Complainant
The Complainant requests the Panel to issue a decision transferring the disputed domain name to the Complainant on the following grounds:
(i) The disputed domain name is identical to the trade and service marks 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 was registered and is being used in bad faith. (i) Identical or Confusingly Similarity
The Complainant alleges that the disputed domain name is confusingly similar to the TURKCELL trademarks of the Complainant. The Complainant also alleges that the disputed domain name contains its well-known TURKCELL trademark as a whole and a descriptive and generic word “shop”. In other words, the Complainant argues that its distinctive phrase “Turkcell” is exactly and entirely incorporated into the disputed domain name.
The Complainant refers to Guccio Gucci S.p.A. v. Zhou Guodong,WIPO Case No. 2010-1695 where the panel stated that “the inclusion of … prefixes and suffixes [such as “store” and “shop”] do not successfully distinguish the Disputed Domain Names from the trade mark ….”
The Complainant also refers to SABEL/PUMA case (C-251/95 of November 11, 1997), where the European Court of Justice held that “[i]n determining the existence of likelihood of confusion, trademarks have to be compared by making an overall assessment of the visual phonetic and conceptual similarities between the marks. The Comparison must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components”.
Moreover, the Complainant refers to Turkcell Iletisim Hizmetleri A.S. v. Celile Gun, WIPO Case No. D2008-0128, where the panel came to the following conclusion: “[t]he use of a generic term (i.e. “technology”) or the translated version of the Complainant’s mark does not, by itself, remove the element of confusing similarity in the context of this proceeding. Although the word “technology” on its own is a generic word, the use of the Complainant’s TURKCELL mark in combination therewith renders the domain name confusingly similar to the Complainant’s TURKCELL and TURKCELLTEKNOLOJI marks.”
As a summary, the Complainant argues that the addition of the generic term “shop” does not avoid the confusion in the mind of the public; on the contrary, it gives the impression to consumers as if it sells the Complainant’s products. (ii) Rights or Legitimate Interests
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name since (i) the Respondent does not have earlier rights for the “Turkcell” phrase, (ii) is not a licensee of the Complainant, and (iii) does not have the Complainant’s authorisation to use the TURKCELL trade and service mark.
The Complainant further alleges that the disputed domain name is not a mark by which the Respondent is commonly known. On this point, the Complainant refers to Compangnie de Saint Gobain v. Com-Union
Corp.,WIPO Case No. D2000-0020 where the panel found no rights or legitimate interests of the respondent in the domain name by stating that: “… it appears that Respondent has not registered nor used the name "Saint-Gobain" as a trademark, nor has it ever been known by this name. Respondent alleges in substance that the name Saint-Gobain belongs to the whole world, but does not, however, show its own right or legitimate interest in the Domain Name.”
The Complainant also argues that the Respondent was fully aware of the Complainant’s TURKCELL marks at the time it registered the disputed domain name. TURKCELL is well-known company and trademark and since the Respondent is a Turkish citizen and resides in Turkey, it is not possible for it to be unaware of the Complainant and its TURKCELL trademarks. (iii) Registered and Used in Bad Faith
The Complainant refers to several WIPO cases and indicates that the disputed domain name was registered for the purpose of selling, renting or other transferring the domain name registration to the trademark owner for valuable consideration in excess of the registrant’s out-of-pocket costs since the Respondent put a sale note to the address section in the publicly available WhoIs.
Further, the Complainant argues that, since TURKCELL is a well-known mark, it is difficult to imagine that when the Respondent registered the disputed domain name it was not aware of the Complainant’s TURKCELL mark.
The Complainant refers to Parfums Christian Dior v. Javier Garcia Quintas and C,WIPO Case No. D2000-0226 where the panel found that “actual knowledge of Complainant’s trademark at the time of the registration of the disputed domain name is to be considered an inference of bad faith.”
Finally, the Complainant states that the Respondent’s passive holding of the disputed domain name indicates that the Respondent registered the disputed domain name for the purpose of selling it to the Complainant. Therefore, the Complainant argues that the incorporation of a famous mark into a domain name, coupled with an inactive website, may be evidence of bad faith registration and use (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 and CBS Broadcasting, Inc. v. Dennis Toeppen, WIPO Case No. D2000-0400). B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint where no Response has been submitted.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements:
(i) The disputed domain name is identical or confusingly similar to the trademark in which the Complainant has rights; and
(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.
Paragraph 4(a) of the Policy states that the Complainant has the burden of proving that all these requirements are fulfilled. A. Identical or Confusingly Similar
The test for identical or confusing similarity under paragraph 4(a)(i) of the Policy is limited in scope to a direct comparison between the Complainant’s trademark and the textual string which comprises the disputed domain name. In this case, the Complainant has demonstrated registered rights in the TURKCELL trademark.
Considering that (i) the disputed domain name was registered on September 11, 2010, (ii) the Complainant’s trademarks, which date back to 1996, contain “Turkcell” phrase, (iii) the Complainant well proved its well-known status and rights in TURKCELL, the Panel evaluates this matter by examining the similarity between the Complainant’s TURKCELL trademarks and the disputed domain name. The disputed domain name contains the TURKCELL trademark and a descriptive word “shop”.
In similar cases, the panels have found that adding descriptive words does not avoid the likelihood of confusion between a trademark and a domain name incorporating said trademark. See e.g. Sanofi-Aventis v. Gideon Kimbrell,WIPO Case No. D2010-1559, Turkcell Iletisim Hizmetleri A.S. v. Vural Kavak,WIPO Case No. D2010-0010, Greenbrier IA, Inc. v. Moniker Privacy Services/Jim Lyons,WIPO Case No. D2010-0017 and Zodiac Marine & Pool, Avon Inflatables Ltd and Zodiac of North America Inc. v. Mr. Tim Green,WIPO Case No. D2010-0024.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s TURKCELL trademark and, thus, the first requirement under paragraph 4(a) of the Policy is fulfilled. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that, a respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) You [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The burden of proof lays on the Complainant who must demonstrate a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. Once the Complainant has made out a prima facie case, then the Respondent may, inter alia, by showing one of the above elements, prove rights or legitimate interests in the disputed domain name.
The Panel finds that the Complainant has proved its rights in the TURKCELL mark, the earliest registration of which dates back to 1996. The Panel also finds that the Complainant sufficiently demonstrated the fact that the Respondent does not have rights or legitimate interests in the disputed domain name for the purpose of the Policy. The Complainant has not granted the Respondent any right or license to use the TURKCELL trade/service mark.
The Panel notes that the Respondent has not provided evidence of the circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right or legitimate interest in the disputed domain name. Thus, the Panel finds that the Respondent failed to show that it has rights or legitimate interests in the disputed domain name.
In this sense, based on the content of the submitted evidence, the Panel holds that the use of the TURKCELL mark has not been authorized or licensed to the Respondent, the disputed domain name does not obviously correspond to the Respondent’s name or a trade name by which it has become commonly known and the Respondent cannot be regarded as using the disputed domain name in connection with a bona fide offering of goods or services.
Hence, as there is not indication of the existence of any rights or legitimate interests of the Respondent to the disputed domain name, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy enumerates four, non-exclusive, 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 has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the Respondent has registered the disputed 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 website or location or of a product or service on the Respondent’s web site or location.
The Panel notes that the Respondent’s website “www.” appears to be inactive since it loads an error page. In light of the submitted evidence, the Panel is convinced that the Respondent has passively held the disputed domain name and is engaging in no activity. “Passive holding” has been accepted as a sufficient bad faith indicator in a number of cases. As it is well reasoned in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, “inaction […] can, in certain circumstances, constitute a domain name being used in bad faith.” Also, the panel refers to Compaq Computer Corporation v. Boris Beric,WIPO Case No. D2000-0042 and VEDA GmbH v. Mr. Nicholas Silverstone, WIPO Case No. D2002-1040. More clearly, the Panel decided not to challenge these UDRP decisions since:
(i) the Respondent did not offer any counter-argument and remained in default,
(ii) the Respondent has not proven any good faith use; instead, he has actively provided an incomplete identity and contact detail which constitutes a breach of the registration agreement as well.
In relation to the contact details of the Respondent, the Panel is of the opinion that the Respondent tries to hide its true identity by providing an incomplete name and false contact address since the mail delivery company could not deliver the post to the address indicated in the WhoIs. Therefore, the post could not be delivered to the Respondent due to the absence of correct contact information. Therefore, the Panel refers to Ticketmaster Corporation v. Dmitri Prem,WIPO Case No. D2000-1550 where the panel held that “[i]n the absence of explanation, the omission of significant information may be taken to amount to bad faith in securing a domain name registration.” As it has been held in various UDRP decisions, incomplete contact information provided by the Respondent and attempts to hide true identity can constitute bad faith. See also Miss Universe L.P., LLLP v. Domainsrin,WIPO Case No. D2010-1643 and Park Place Entertainment Corporation v. Bowno, WIPO Case No. D2001-1410.
By consideration of the foregoing and in view of the content of the evidence, the Panel is of the opinion that, due to the extensive and intensive usage of TURKCELL marks by the Complainant, the Respondent, who appears to be located in Turkey, cannot be unaware of the existence of the Complaint and its TURKCELL trademark. See, e.g., Ebay Inc. v. Wangming,WIPO Case No. D2006-1107; General Electric Company v. CPIC NET and Hussain Syed,WIPO Case No. D2001-0087.
The Panel is therefore convinced that the disputed domain name has been registered and is being used in bad faith and that the Complainant has fulfilled the third element under paragraph 4(a) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Selma Ünlü
Sole Panelist
Dated: January 26, 2012
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