The Complainant is TTNET Anonim Şirketi of Istanbul, Turkey, represented by Derıs Patents & Trademarks Agency A.Ş., Turkey.
The Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, United States of America (“US”) / Domain Admin of Mumbai, India. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed 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 January 24, 2013. On January 24, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 25, 2013, 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 February 1, 2013 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 amended Complaint on February 4, 2013.
The Center verified that the Complaint and 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 5, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 25, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 26, 2013.
The Center appointed Nicholas Weston as the sole panelist in this matter on March 6, 2013. 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.
The language of the proceeding is English as the language of the Registration Agreement is English. 4. Factual Background
The Complainant is a subsidiary of communications business Türk Telekom and operates one of the largest Internet service provider business in Turkey with over 6 million subscribers and has more than 3.5 million monthly logins to its “ttnetmuzik” service. The Complainant holds several registrations for the trademarks TTNET and TTNET MÜZIK including the following examples:
Trademark Countries Status Reg. No. Application Date Reg. Date Class(es)
TTNET (word)
Turkey
Registered
2007/19161
May 22, 2007
March 17, 2008
38
TTNET (device)
Turkey
Registered
2008/24027
April 24, 2008
April 9, 2009
09, 16, 35, 38, 41, 42
TTNET MÜZIK (word)
Turkey
Registered
2007/59100
November 7, 2007
February 25, 2009
09, 35, 38, 42
TTNET MÜZIK (device)
Turkey
Registered
2008/05053
January 29, 2008
September 16, 2009
09, 35, 38, 42
TTNET (device)
WIPO (CTM, Azerbaijan)
Registered
1031040
May 22, 2008
November 26, 2009
09, 35, 38, 42
TTNET (device)
Saudi Arabia
Registered
1209/81
December 5, 2009
November 30, 2010
09
TTNET (device)
Saudi Arabia
Registered
1209/80
December 5, 2009
November 30, 2010
35
TTNET (device)
Saudi Arabia
Registered
1209/79
December 5, 2009
November 30, 2010
38
TTNET (device)
Saudi Arabia
Registered
1209/82
December 5, 2009
November 30, 2010
42
TTNET (word)
India
Registered
1911934
January 21, 2010
N/A
09, 35, 38, 42
TTNET (device)
Iraq
Registered
55585
December 22, 2009
N/A
09, 35, 38, 42
The Complainant owns numerous domain names incorporating the TTNET trademark, including the Disputed Domain Name registered in 2007 until its expiration in November 2012, and operates a website relating to its products and services at the domain name .
The Respondent registered the Disputed Domain Name on November 5, 2012.
Until recently, the Respondent used the Disputed Domain Name for click-through or pay-per-click (“PPC”) landing pages. PPC advertisements display a link when a keyword query with a search engine matches an advertiser’s keyword list. PPC advertising is a search engine marketing technique for directing traffic to a landing page containing sponsored links or sponsored advertisements. In this case, when the Disputed Domain Name was typed in, it redirected traffic to a PPC landing page containing links for job listings, discount shopping, education degrees, work at home opportunities, affordable housing, business lists, online gaming and so on. 5. Identification of Respondent
Having regard to the remedy sought in the Complaint, and having regard to paragraph 10(b) of the Rules, the Panel must be satisfied that any orders made will address the appropriate Respondent.
Paragraph 1 of the Rules defines “Respondent” as “the holder of a domain name registration against which a complaint is initiated”. The Complainant has named and proceeded against a domain name registration privacy service listed as the registrant of the Disputed Domain Name in the WhoIs prior to the filing of the Complaint.
The use of a privacy service raises three issues for determination by the Panel. First, the Panel must identify the appropriate Respondent. Second, the Panel must determine the applicable mutual jurisdiction. Third, the Panel must determine whether the Center has adequately discharged its responsibility to contact the Respondent by reasonable means.
Taking into account the above questions as also set out in Accor and SoLuxury HMC v. Domains by Proxy, Inc. and Therese Kerr,WIPO Case No. D2009-0243, and in view that most UDRP panels in cases involving privacy or proxy services in which disclosure of an underlying registrant has occurred, appear to have found it appropriate to record in their issued decision both the name of the privacy or proxy registration service appearing in the WhoIs at the time the complaint was filed, and of any disclosed underlying registrant, this Panel finds that in light of the record the named Respondent Domains By Proxy, LLC of Scottsdale, Arizona, US / Domain Admin of Mumbai, India is the proper respondent (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.9).
As noted having regard to the Complainant’s submissions and the location of the principal office of the Registrar, it appears that the applicable mutual jurisdiction1 is Scottsdale, Arizona, US.
Finally, the Panel has reviewed the record and finds that the Center has adequately discharged its responsibility to contact the Respondent by reasonable means as required under paragraph 2 of the Rules. 6. Parties’ Contentions A. Complainant
The Complainant cites its trademark registrations of the trademark TTNET MÜZIK in various countries as prima facie evidence of ownership.
The Complainant submits that the mark TTNET MÜZIK is well-known and that its rights in that mark predate the Respondent’s registration of the Disputed Domain Names. It submits that the Disputed Domain Name is confusingly similar to its trademark, because the Disputed Domain Name incorporates in its entirety the TTNET MÜZIK trademark or, in the alternative, incorporates the TTNET trademarks and that the similarity is not removed by the addition of the descriptive term “müzik” which is the Turkish word for “music”.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because the Respondent has no trademark rights in or license to use the Complainant’s trademark. The Complainant also has made a submission to the effect that use which intentionally trades on the fame of another can not constitute a bona fide offering of goods or services.
Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to paragraphs 4(a)(iii) and 4(b) of the Policy, and paragraph 3(b)(ix)(3) of the Rules, as by using the Complainant’s TTNET MÜZIK mark in the Disputed Domain Name, “the Respondent is clearly attempting to attract for commercial gain, consumers to the Respondent’s parking service by creating a likelihood of confusion with the Complainant’s well-known marks and the Complainant’s other domain names”. The Complainant further contends that the Panel should draw an inference of bad faith from the use of a privacy service by the registrant of the Disputed Domain Name. B. Respondent
The Respondent did not formally reply to the Complainant’s contentions. However, the Panel notes that the Complainant’s authorized representative received an email communication dated January 26, 2013 from the administrative contact of the Disputed Domain Name which stated “We can settle this without going through WIPO” (see Annex 13 to the Complaint). 7. Discussion and Findings
Under paragraph 4(a) of the Policy, the complainant has the burden of proving the following:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the marks TTNET and TTNET MÜZIK in Turkey and in many other countries throughout the world. In any event, under the first element of the Policy, the propriety of a domain name registration may be questioned by comparing it to a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree,WIPO Case No. D2002-0358). The Panel finds that the Complainant has rights in the marks TTNET and TTNET MÜZIK.
Turning to whether the Disputed Domain Name is identical or confusingly similar to the TTNET and TTNET MÜZIK trademarks, the Panel observes that the Disputed Domain Name comprises (a) an exact reproduction of the Complainant’s TTNET MÜZIK trademark (without the umlaut) (b) followed by the generic top-level domain (gTLD) “.com”.
It is well established that the top-level designation used as part of a domain name may be disregarded: (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com,WIPO Case No. D2001-0374). The relevant comparison to be made is with the second level portion of the Disputed Domain Name: “ttnetmuzik”.
It is also well established that where a domain name incorporates a complainant’s distinctive trademark in its entirety (even where other words have been added to such mark) it is identical or confusingly similar to that mark. This Panel notes that the Disputed Domain Name also incorporates the TTNET trademark and that the confusing similarity is not removed by the addition of the descriptive term “müzik” which is the Turkish word for “music” (see Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; Wal Mart Stores, Inc. v. Kuchora, Kal,WIPO Case No. D2006-0033).
In Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-1698, the panel held that “[t]he use to which the site is put has no bearing upon the issue whether the domain name is confusingly similar to the trademark, because by the time Internet users arrive at the Website, they have already been confused by the similarity between the domain name and the Complainant’s mark into thinking they are on their way to the Complainant’s Website”. The Disputed Domain Name is therefore, at a minimum, confusingly similar to the Complainant’s TTNET trademark and nearly identical to the Complainant’s TTNET MÜZIK trademark.
Accordingly, the Panel finds that the Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or legitimate interests in the disputed domain name:
(i) before any notice of the dispute, respondent’s use 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) the respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) 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 trademark or service mark at issue.
The Policy places the burden on the complainant to establish the absence of respondent’s rights or legitimate interests in the disputed domain name. Because of the inherent difficulties in proving a negative, the consensus view is that the complainant need only put forward a prima facie case that the respondent lacks rights or legitimate interests. The evidential burden then shifts to the respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles,WIPO Case No. D2000-1306; WIPO Overview 2.0, paragraph 2.1).
It is well established that a respondent has a right to register and use a domain name to attract Internet traffic based solely on the appeal of a commonly used descriptive phrase, even where the domain name is confusingly similar to the registered mark of a complainant (see National Trust for Historic Preservation v. Barry Preston,WIPO Case No. D2005-0424; Private Media Group, Inc., Cinecraft Ltd. v. DHL Virtual Networks Inc.,WIPO Case No. D2004-0843; T. Rowe Price Associates, Inc. v. J A Rich,WIPO Case No. D2001-1044; Sweeps Vacuum & Repair Center, Inc. v. Nett Corp.,WIPO Case No. D2001-0031; EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047). However, this business model is legitimate only if the domain name was registered because of its attraction as a descriptive phrase comprising dictionary words, and not because of its value as a trademark and that website is then used to post links that are relevant only to the common meaning of the phrase comprising dictionary words (see National Trust for Historic Preservation v. Barry Preston,WIPO Case No. D2005-0424; The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340; WIPO Overview 2.0, paragraph 2.2).
However, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it is misleadingly directing Internet users to a fraudulent web page advertising or offering for sale products in connection and competition with the Complainant’s mark and thereby illegitimately making commercial use by directing “the high hit rates of domain name” to a “parking site forwarding sponsored links including hyperlinks to Complainant’s potential competitors, for gaining profit of this high traffic”. The Complainant also has not licensed, permitted or authorized the Respondent to use the Complainant’s trademark.
On any objective view, the Respondent is not a reseller with a legitimate interest in the Disputed Domain Name such that it could meet the tests set out in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. Nor, alternatively, is the Respondent commonly known by the Disputed Domain Name.
This Panel finds that the Respondent is making an illegitimate commercial use of the Disputed Domain Name. By misleadingly diverting consumers, it can be inferred that the Respondent is opportunistically using the Complainant’s well-known mark in order to attract Internet users to its website and has been using the Disputed Domain Name to divert Internet traffic to its web page.
The Panel finds for the Complainant on the second element of the Policy. C. Registered and Used in Bad Faith
The third element of the Policy provides that the Complainant must also demonstrate that the Disputed Domain Name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both.
“b. Evidence of Registration and Use in Bad Faith. For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
i. (i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
ii you have 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 you have engaged in a pattern of such conduct; or
iii. you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
iv. by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The examples of bad faith registration and use in paragraph 4(b) of the Policy are not exhaustive of all circumstances from which such bad faith may be found (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). The objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another (see M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230).
The evidence supports the Complainant’s contention that the Respondent registered and has used the Disputed Domain Name in bad faith. The onus is on the Respondent to make the appropriate enquiries. Paragraph 2 of the Policy clearly states: “It is your [domain-name holder’s] responsibility to determine whether your domain name registration infringes or violates someone else’s rights”. The apparent lack of any good faith attempt to ascertain whether or not the Respondent was registering and using someone else’s trademarks, such as by conducting trademarks searches or search engine searches, supports a finding of bad faith (see Mobile Communication Service Inc. v. WebReg, RN,WIPO Case No. D2005-1304; L’Oréal v. Domain Park Limited,WIPO Case No. D2008-0072; BOUYGUES v. Chengzhang, Lu Ciagao,WIPO Case No. D2007-1325; Media General Communications, Inc. v. Rarenames, WebReg,WIPO Case No. D2006-0964; mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc.,WIPO Case No. D2007-1141).
The Complainant’s trademarks TTNET and TTNET MÜZIK are so well-known in Turkey that the Panel finds it inconceivable that the Respondent might have registered a domain name wholly incorporating the said marks without knowing of them. Even a cursory Internet search by the Respondent would have revealed the marks enjoy wide recognition. The Complainant has been using its TTNET MÜZIK trademark on its products and services continuously since December 2007 and, despite inadvertently allowing the registration of the Disputed Domain Name to lapse that presented the Respondent with the opportunity to register that domain name, the Complainant continues to do so via several other domain names that resolve to a website operating the TTNET MÜZIK business. This Panel therefore accepts the Complainant’s submission that “the Respondent is well aware of the high hit rates of domain name and has put same to parking site forwarding sponsored links including hyperlinks to Complainant’s potential competitors, for gaining profit of this high traffic, which is not a fact to be ignored. The heavy traffic (more than 140 million users of ttnetmuzik services provided by .tr website) signifies the bad faith of the Respondent.”
The Respondent’s use of the Disputed Domain Name is apparently for domain name monetization unconnected with any bona fide supply of goods or services by the Respondent. This conclusion can be drawn about the Respondent from its use of the Disputed Domain Name resolving to a PPC web page, copies of which were provided at Annex 10 and Annex 11 of the evidence supporting the Complainant’s Complaint, containing offerings that directly compete with the offerings of the music download business operated by the Complainant. The business model in this case is that the Respondent passively collects click-through revenue generated solely from the Complainant’s goodwill and Internet users’ inaccurate guessing of the correct domain name currently associated with the Complainant’s business. Exploitation of the reputation of a trademark to obtain click-through revenues from the diversion of Internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous UDRP decisions (see: L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc,WIPO Case No. D2005-0623; Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; and Hoffmann-La Roche Inc. v.. Samuel Teodorek,WIPO Case No. D2007-1814).
Moreover, the Panel has considered whether it should draw an adverse inference from the Respondent’s use of a privacy shield. The Disputed Domain Name did not resolve to a website critical of, or satirising, the Complainant’s business which may warrant the use of a privacy service as protection from retribution. In the circumstances it seems reasonable to infer that the main purpose the Respondent has used a privacy service is to cause the Complainant difficulty in identifying other domain names registered by the same Respondent, which can be considered as another indication of bad faith use (see Medco Health Solutions, Inc. v. Whois Privacy Protection Service, Inc.,WIPO Case No. D2004-0453; Microsoft Corporation v. Whois Privacy Protection Service / Lee Xongwei,WIPO Case No. D2005-0642; CCM IP S.A. v. Traverito Traverito,WIPO Case No. D2007-0542; Ustream.TV, Inc v. Vertical Axis, Inc.,WIPO Case No. D2008-0598; Sermo, Inc. v. CatalystMD, LLC,WIPO Case No. D2008-0647).
This Panel finds that the Respondent has taken the Complainant’s trademarks TTNET and TTNET MÜZIK and incorporated them in the Disputed Domain Name without the Complainant’s consent or authorization, for the very purpose of capitalizing on the reputation of the trademarks by diverting Internet users to its web page for commercial gain.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 8. 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.
Nicholas Weston
Sole Panelist
Date: March 19, 2013
1 In general, having regard to the definition of “mutual jurisdiction” in the Rules, it would either be that of the registrant’s address as identified in the Registrar’s WhoIs at the time of the filing of the complaint with the provider or the principal office of the Registrar, see Research In Motion Limited v. Privacy Locked LLC/Nat Collicot,WIPO Case No. D2009-0320. In this case, the Complainant has elected the jurisdiction of the courts at the location of the principal registered office (i.e. Scottsdale, Arizona, US).
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