The Complainant is K Elektronik Yayincilik ve İletisim Hizmetleri A.S of Istanbul, Turkey, represented by Salih Bulut, Turkey.
The Respondent is Yenibiris Insan Kaynaklari Hizmetleri Danismanlik ve Yayincilik A.S of Istanbul, Turkey, represented by Dericioğlu & Yaşar Law Office, Turkey. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”), is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 30, 2012. On October 30, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 31, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent (in the shortened form of Yenibiris insan Kaynaklari Hiz) is listed as the registrant and providing the contact details.
On November 7, 2012, the Center sent an email communication to the Complainant requesting it to amend the Complaint, namely paragraph 9, relating to the identification of the correct Registrar with which the Domain Name is registered. The Complainant filed an amended Complaint on November 9, 2012.
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 amended Complaint, and the proceedings commenced November 15, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response December 5, 2012.
On December 1, 2012 the Respondent’s representative sought from the Center an extension of time for the filing of the Response. On the Complainant’s representative objecting to the extension request, the Center declined the request by email on December 5, 2012. The Response was nonetheless filed with the Center in timely fashion on December 5, 2012.
The Respondent originally agreed to the appointment of a single panelist, but on filing the Response sought permission from the Center to select instead a three-member panel. The Complainant objected, but the Center, in agreeing to the Respondent’s request for the appointment of a three-member panel, pointed out that no panel had yet been appointed and no time had been lost.
The Center appointed Tony Willoughby, David Perkins and The Hon Neil Brown Q.C. as panelists in this matter on January 15, 2013. The Panel finds that it was properly constituted. Each member of 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 December 7, 2012 the Complainant submitted a Supplemental Filing to the Center primarily directed to rectifying what it claimed to be factual errors in the Response relating to the scope of the Complainant’s trade mark rights. On December 25, 2012 the Respondent submitted a Supplemental Filing to the Center reiterating its original contentions as set out in the Response and providing further information in relation to its acquisition of the Domain Name in 2008.
The parties’ Supplemental Filings are short, were submitted in advance of the appointment of the Panel and have given no cause for delay. Those factors, combined with the fact that the Panel has found them helpful in coming to its decision, have led the Panel to admit them into this administrative proceeding.
By way of a procedural order dated January 18, 2013 the Panel sought further information from the parties relating mainly to previous usage of the Domain Name. Both parties responded to the order in timely fashion.
Thereafter, on January 23, 2013 the Complainant’s representative emailed the Center asserting that the Panel should ignore a communication from the Respondent’s representative simply because it was sent from an email address which called into question the authority of the author of the email to represent the Respondent and that it and/or the accompanying documents were unsigned. The Panel rejects the point. In the view of the Panel there is nothing about the email raising any doubt as to its authenticity and the status of the sender.
The same email also makes a point about handwritten comments inserted into a word document rendering the document undeserving of consideration by the Panel. The document in question is not identified and the Panel does not understand the point. Finally, the Complainant’s representative seems to be requesting that the Panel relies upon a “consent to transfer” forming part of a blank online Response form sent to the Center by the Respondent in error. It being plain to everyone (including the Complainant) that the Respondent does not consent to transfer, the Panel declines to accede to the Complainant’s request. 4. Factual Background
The Complainant describes itself as “Turkey’s first interactive firm that gathers companies and candidates seeking for jobs during their job seeking and recruitment processes through the use of new generation technologies and is also Turkey’s leading employment brokerage firm”. It is a leading player in the Turkish recruitment industry. The Complainant commenced business having registered with Turkey’s Trade Registry on July 27, 1999.
The Complainant operates online through a website connected to its domain name, , which it registered on July 23, 1998.
The Complainant is the proprietor of the following Turkish trade mark registrations:
No. 2005/58301 KARİYER (device in the form of a stylised script above an arrow) in classes 9, 35 and 42. The application was filed on December 30, 2005 and the registration came through on February 22, 2007.
No. 2005/58645 KARİYERNET (device in the form of a stylised script) in classes 9, 16, 35 and 42. The application was filed on December 30, 2005 and the registration came through on May 12, 2008.
No. 2006/10572 KARİYER.NET(device in the form of a stylised script) in classes 9, 16, 35 and 42. The application was filed on March 17, 2006 and the registration came through on January 12, 2009.
No. 2008/01021 KARİYER (word) in classes 9, 16, 35 and 42. The application was filed on January 9, 2008 and the registration came through on June 22, 2010.
“Kariyer” is the Turkish for “career”.
The Respondent is a competitor of the Complainant, also operating in the recruitment field in Turkey. It is a substantial company claiming to be “one of the best and preferred job seeking and employment firms in Turkey”.
The Domain Name was first registered on December 3, 1999 by or for the Istanbul arm of the international accounting and consultancy giant, Arthur Andersen. The same registrant also registered at the same time the domain name (“insankaynaklari” being the Turkish for “human resources”). There is no evidence before the Panel as to how either of those domain names was used by Arthur Andersen, but it seems probable that the use was akin to the use made of it by Arthur Andersen’s successor, the Turkish arm of the international accounting and consultancy giant, Ernst & Young, into which the Turkish arm of Arthur Andersen merged at the time of the Enron affair. The Complainant asserts (and the Panel accepts) that the domain name was first used for employment services in 1998.
Ernst & Young took over both those domain names on September 16, 2003 and used the Domain Name to link to its employment site connected to its domain name, which it had acquired along with the Domain Name.
In early 2005 Ernst & Young transferred the Domain Name and the domain name to Birey Seçme Ve Degerlendirme Danismanlik Ltd. Sti (“Birey”) a member company of the Dogan group of companies. The Respondent is also a member of the Dogan group of companies. Birey continued to use the Domain Name to link to the “” website.
On October 31, 2008 the Domain Name was transferred by Birey to its associated company, the Respondent, another major employment services company in Turkey. There is no independent website connected to the Domain Name. Instead it resolves to the Respondent’s trading website which is connected to its domain name . 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is identical or confusingly similar to its registered trade marks (see section 4 above), that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered and is being used in bad faith.
The Complainant contends that the Respondent registered the Domain Name with the objective of diverting Internet users away from the Complainant and that the Complainant is losing business as a result. B. Respondent
The Respondent does not dispute the existence of the Complainant’s trade mark registrations, merely their scope.
The Respondent contends that it has a legitimate interest in respect of the Domain Name in that: (a) it acquired the Domain Name from the original owner together with the associated database and all rights of usage; (b) thus, its rights in respect of the Domain Name date back to the date the original owner registered the Domain Name on December 3, 1999; (c) “kariyer” means “career” and is a very descriptive word for use in relation to employment services, the field in which the Respondent operates; (d) the Respondent uses the Domain Name in relation to its employment services: (e) contrary to the claims of the Complainant, the Complainant’s trade mark rights in relation to “kariyer” are very limited. The Complainant’s word mark does not cover employment services and the other three registrations are all for stylised devices.
The Respondent denies that the Domain Name was registered and is being used in bad faith. It contends that one has to look back to the position in 1999 when the Respondent’s predecessor registered the Domain Name and the Complainant has produced no evidence to demonstrate its reputation and goodwill at that time. The Respondent reiterates that the word “kariyer” is a descriptive word apt for use in relation to employment services, the very use that the Respondent is making of it. 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith. B. Identical or Confusingly Similar
The Domain Name comprises the Complainant’s KARİYER trade mark registered in Turkey under number 2008.01021 and the generic top-level domain (gTLD) “.com”.
It being permissible for the Panel to ignore the gTLD identifier when assessing identity and confusing similarity under this element of the Policy, the Panel finds that the Domain Name is identical to a trade mark in which the Complainant has rights. C. Rights or Legitimate Interests
This is one of those cases where it is convenient to deal with the second and third elements of the Policy together.
In the view of the Panel it is unfortunate that none of the members of the Panel is Turkish or familiar with the Turkish language, let alone Turkish trade mark law. While the language of the proceeding is English many of the annexes put forward by both the Complainant and the Respondent are in the Turkish language1.
On its face, the Complainant’s case is straightforward. It is the proprietor of registered trade marks for KARİYER, KARİYERNET and KARİYER.NET in various forms. The filing dates for all those registrations all pre-date the Respondent’s acquisition of the Domain Name. Moreover when the Respondent acquired the Domain Name it was aware of the Complainant and its leading position as an employment services company operating under the names “Kariyer” and “k” and will have known and hoped and anticipated that by acquiring the Domain Name and linking it to its employment services website connected to its domain name it would be diverting business away from the Complainant. On its face that use cannot give rise to a bona fide offering of services under paragraph 4(c)(i) of the Policy, but constitutes a clear case of abusive registration and use within the meaning of paragraph 4(b)(iv) of the Policy. The Panel agrees that that, on its face, is a strong prima facie case. To adopt a domain name, such as the Domain Name, in the knowledge that it is in substance virtually identical to the name under which a leading competitor trades is provocative, to say the least, and notwithstanding that the name in question is highly suggestive of the trading activity in question.
The Respondent contends that the case is far from straightforward:
1. “Kariyer”, the Turkish for “Career”, is a descriptive term apt for descriptive use in relation to employment services, the services for which the Respondent and its predecessors have used the term since 1999 along with the parallel use of the similarly descriptive domain name (“insankaynaklari” being the Turkish for “human resources”).
2. The Respondent is entitled to the benefit of all rights to the use of the Domain Name developed by the Respondent and its predecessors dating back to first registration of the Domain Name in 1999, some 6 years before the first of the Complainant’s device mark applications in December 2005.
3. The Complainant’s trade mark rights in respect of marks comprising or including the word “Kariyer” all post-date the date of first registration of the Domain Name. They also all post-date the date when the Respondent’s associated company, Birey, acquired the Domain Name.
4. Descriptive marks are only afforded a narrow band of protection and small differences may suffice to obviate infringement.
5. The only trade marks of the Complainant, which achieved registration prior to the Respondent’s acquisition of the Domain Name were a device mark in script form combined with the shape of an arrow and another device mark featuring the name “kariyernet” in script form. The Respondent contends that those differences from the plain word “kariyer” are sufficient to render mere use of the word “kariyer” (and a fortiori the Domain Name) non-infringing.
6. The only registration of the unadorned word, “kariyer”, is the word mark registration, which only came through to registration on June 22, 2010, well after the date when the Respondent acquired the Domain Name. Moreover, that registration, unlike all the other registrations, makes no reference to employment services in the specification. The Respondent contends that this has to be the case because the word, on its own, is not registerable for employment services.
The Panel recognizes the apparent strength of the Complainant’s case and is aware that strongly descriptive words are capable of forming satisfactory distinctive trade marks. “Manpower”, for example, is a well-known brand in the employment field in Europe. However, the Panel is conscious that it is not competent to assess the strength of the Respondent’s argument that under Turkish law the Respondent is entitled to benefit from the prior use of the Domain Name by its predecessors; nor is it competent to assess the significance under Turkish law of the apparent fact that unlike the trade mark registrations for the device marks, the specification of the plain word mark omits employment services. The Respondent’s arguments in this regard appear plausible. The Panel reiterates that it has not helped that many of the parties’ supporting documents are in Turkish and have not been translated into English, the language of these proceedings. The Panel has in mind, in particular, the specifications for the Complainant’s trade mark registrations, which are worded entirely in Turkish.
Another aspect of the case, which has concerned the Panel, is that if the Complainant’s case under Turkish trade mark law is as strong as the Complainant asserts and if the damaging diversion of business has been as serious as one might expect with two such similar domain names operating in the same area of business and based in the same city (Istanbul), why has it taken the Complainant so long to raise complaint? The Complainant states that it was only recently that it became aware of the possibility that there was the scope for a complaint under the UDRP. That explanation surprises the Panel, given the Complainant’s long experience of online trading, but in any event it does not explain why the Complainant does not even appear to have gone so far as to have written a letter of complaint to any of the Respondent’s predecessors, even though the Complainant asserts that all of them were during their periods of ownership (and like the Respondent) making abusive, infringing and damaging use of the Domain Name.
Finally, notwithstanding this extensive period of allegedly unlawful, damaging use of the Domain Name, not only has the Complainant produced no evidence of having taken the matter up with any of the various registrants of the Domain Name prior to the filing of this Complaint, the Complainant has produced no evidence of confusion. The absence of any evidence of confusion, while surprising to the Panel, is not of itself fatal to the Complainant’s case, but in combination with the other factors leads the Panel to conclude that the Respondent’s arguments may be well-founded. The Panel simply does not know.
In administrative proceedings under the Policy the burden of proof is on the Complainant, with the consequence that if there is doubt, the Respondent has to be given the benefit of the doubt.
On the evidence before it, the Panel is unable to conclude with confidence that the Respondent does not have a legitimate interest in using the Turkish word for “career” as a domain name in relation to its employment services business.
If the Respondent does have a legitimate interest in respect of the Domain Name, as the Panel believes possible, the Respondent’s acquisition and use of the Domain Name will not have been in bad faith.
If the Respondent does not have a legitimate interest in respect of the Domain Name, the evidence before the Panel has not been sufficient to establish that fact to the satisfaction of the Panel and the Panel believes that this is a matter much better left to the jurisdiction of the Turkish courts where the issues and evidence can be ventilated and tested in full. D. Registered and Used in Bad Faith
In light of the Panel’s finding under C. above, it is unnecessary for the Panel to address this topic further. 7. Decision
For the foregoing reasons, the Complaint is denied.
Tony Willoughby
Presiding Panelist
David Perkins
Panelist
The Hon Neil Brown Q.C.
Panelist
Date: January 29, 2013
1 The Panel notes that the Center gave the opportunity to the parties to elect a Turkish presiding panelist or someone familiar with the Turkish language and trade mark law but that the parties’ combined preference resulted in the appointment of a non-Turkish presiding panelist.
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