1.1 The Complainant is Tupraş Turkiye Petrol Rafinerileri A.S. (TUPRAS) of Kocaeli, Turkey, represented by Istanbul Patent & Trademark Consultancy Ltd., of Turkey.
1.2 The Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, United States of America / “,”. 2. The Domain Name and Registrar
2.1 The disputed domain name (the “Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 10, 2013. On July 11, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 12, 2013, the Registrar transmitted its verification response to the Center by email. The email identified no intelligible registrant of the Domain Name (the entry for the registration name field being given as simply “,”). The Administrative Contact revealed took the form of an email only. That email was “mehmetkahveci@[].com”.
3.2 The Center sent an email communication to the Complainant on July 17, 2013 providing the registrant and contact information disclosed by the Registrar and notified the Complainant of administrative deficiencies in the Complaint. The Complainant filed an amended Complaint on July 22, 2013.
3.3 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”).
3.4 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 July 24, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 13, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 14, 2013.
3.5 The Center appointed Matthew S. Harris as the sole panelist in this matter on August 19, 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. 4. Factual Background
4.1 The Complainant is an oil company based in Turkey. The business operated by the Complainant can trace its roots back to the 1950s. The Complainant took its current form in November 1983. It is Turkey’s largest industrial enterprise, operating four oil refineries with a total of 28.1 million tons annual crude oil processing capacity. It also is the majority shareholder in the DİTAŞ shipping company and has a 40% stake in petrol retailer Opet. Since November 2006, the Complainant has been part of the Koç Holding industrial and service group.
4.2 The Complainant is the owner of various registered trade marks that incorporate the term “Tüpraş” in some form of other. They include:
(i) Turkish registered trade mark no. 2000/21164 dated October 4, 2000 in classes 1, 4 and 19 and which takes the following form:
(ii) Turkish registered trade mark no. 2006/46803 dated September 27, 2006 in all classes and which takes the following form:
(iii) Turkish registered trade mark no. 2012/93954 dated November 11, 2012 in classes 16 and 41 which takes the following form
4.3 The Complainant owns the domain name , which it registered on February 18, 1997. It uses this domain name for a website promoting and advertising its activities.
4.4 The Domain Name was registered on February 6, 1996. As at the date of the Complainant it was, and it remains, registered in the name of a “privacy service”. The Domain Name is currently being used to display a webpage that displays the following text:
“This site is currently being developed
is a domain name with great search engine adaptibility. Our goal is to make it a truly unique website with features tailored for users like you.
Hyperlink Web LLC, owner of more than 300 unique domain names since 1996, helps businesses increase exposure through our network advertising services.
T is undergoing a facelift, and is not available in the meantime. However, you can still contact us by using the contact form below:
…
Boston's Web Development Company
Hyperlink Web Team.”
It also displays a banner for “Hyperlink Web LLC”, which describes that company’s activities as “Web Development, Domain Leasing and Advertising”.
4.5 The text “Hyperlink Web LLC” contains a link to a web page operating from the domain name . That website describes Hyperlink Web LLC as a company founded by Dr Mehmet Kahveci. The registrant of that domain name is also recorded as “Kahveci, Mehmet” of Boston in the United States. 5. Parties’ Contentions A. Complainant
5.1 The Complainant contends that it is apparent that the underlying registrant in this case is in fact Mr Mehmet Kahveci, which it describes as “a famous collector of Turkish companies’ domain names”.
5.2 The Complainant claims that the business operated by the Complainant has used the “Tüpraş” name since 1950 and that this has been the “trade name of the Complainant since 1983”. It maintains that the Domain Name is identical to the Complainant’s mark.
5.3 The Complainant asserts that the Respondent is neither using the Domain Name in connection with a bona fide offering of goods and services nor is the Domain Name a mark by which the Respondent is commonly known.
5.4 The Complainant contends that Mr Mehmet Kahveci, has a history of registering Domain Names that incorporate the marks names of Turkish companies in order to prevent the owners of those marks from registering a domain name corresponding to that mark. It refers in this respect to the following decisions under the Policy, in which that individual was either the named respondent or the real underlying registrant:
- Vestel Elektronik Sanayi ve Ticaret AS v. Mehmet KahveciWIPO Case No. D2000-1244 ()
- Akbank Turk A.S. v. DR. Mehmet KahveciWIPO Case No. D2001-1488 ()
- Ülker Gida Sanayi Ve Ticaret A.Ş. Yildiz Holding A.Ş.v. Dr. Mehmet KahveciWIPO Case No. D2002-1141 ()
- Alarko Holding A.S. v. “,”WIPO Case No. D2007-0909 ()
- Merko Gida Sanayi Ve Ticaret Anonim Şirketi v. Dr.Mehmet KahveciWIPO Case No. D2010-1124 ()
- Kibar Dış Ticaret A.Ş.and Kibar Holding A.Ş. v. Dr. Mehmet KahveciWIPO Case No. D2012-1417 ()
5.5 Given this, the Complainant maintains that the Respondent was fully aware of the Complainant’s rights in the “TUPRAS marks” at the time the Domain Name was registered. It claims that the Respondent hoped to “derive benefits from the Complainants for huge consideration in excess of the domain name’s out-of-pocket registration costs”. It accepts that there is, and had been, no explicit offer to sales the Domain Name to the Complainant, but claims that this is the real intention of the Respondent in this case. In addition to the cases under the Policy set out above, it also refers to a large number of other domain names (which include for example, , and ) which are registered in the name of the Respondent but which are said to correspond to well-known Turkish trademarks. It also notes that in the Vestel Elektronik Sanayi case supra the Respondent attempted to sell the relevant domain name for US$200,000.
5.6 The Complainant further contends that the passive holding of the Domain Name by the Respondent in the circumstances of this case involves bad faith use. In this respect it asserts that it is not possible to imagine any plausible future active use of the domain name by the Respondent that would not be illegitimate. B. Respondent
5.7 The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
6.1 There are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the present dispute based upon the Complaint, notwithstanding the failure of any person to lodge a Response.
6.2 Notwithstanding this default, it remains incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
6.3 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”.
6.4 Before addressing each of these points it is convenient first to address the question of the identity of the Respondent, given that as matters stand no entity is properly recorded as the registrant of the Domain Name.
6.5 The Complainant contends that the real Registrant in this case is Mr (or perhaps Dr.) Mehmet Kahveci. The Panel is persuaded that this is correct by reason of the fact that the Domain Name is being used by a company that was founded by Mehmet Kahveci and the fact that when the privacy shield was lifted by the Registrar in this case the administrative contact email incorporated that name (i.e., “mehmetkahveci@[].com”).1
6.6 The Panel however, cannot help but record the fact that it is troubled by the fact that there was no proper registration record for this Domain Name behind the privacy shield. Paragraph 3.7.8 of the Registrar Accreditation Agreement (“RAA”) between registrars and ICANN places the following obligation of registrars:
“Registrar shall abide by any specifications or policies established according to Section 4 requiring reasonable and commercially practicable (a) verification, at the time of registration, of contact information associated with a Registered Name sponsored by Registrar or (b) periodic re-verification of such information. Registrar shall, upon notification by any person of an inaccuracy in the contact information associated with a Registered Name sponsored by Registrar, take reasonable steps to investigate that claimed inaccuracy. In the event Registrar learns of inaccurate contact information associated with a Registered Name it sponsors, it shall take reasonable steps to correct that inaccuracy.”
6.7 Domain Name registration processes are frequently automatic and involve no human intervention. Nevertheless it is obvious that the term “,” is not a proper entry for a registrant. Indeed, it is difficult to see how any registrant entry that comprises only a single character (with or without spaces) could ever be a proper registrant entry. Given this it is difficult to understand how the Registrar’s systems could have permitted such a registration to take place. It also raises a question as to whether this is a one off issue or a more fundamental problem with those systems. The Panel notes in this respect that in Alarko Holding A.S. v. “,”,WIPO Case No. D2007-0909 (one of the cases relied upon by the Complainant as set out above), the name of the registrant was also recorded as “,” and that the registrar in that case was also GoD, LLC.
6.8 Given this, the Panel invites the Center, when notifying the Registrar of the Panel’s decision in these proceedings, expressly to bring paragraphs 6.4 to 6.8 of this Decision to the attention of the Registrar pursuant to Paragraph 3.7.8 of the RAA with a view to the Registrar carrying out the required investigation into the inaccuracy in this case. A. Identical or Confusingly Similar
6.9 The Panel accepts that the Domain Name is confusingly similar to the Complainant’s various registered trade marks relied upon in this case.
6.10 The Panel does not accept that the Domain Name is identical to the marks relied upon that take the form of stylised text with or without a device element. The Panel is aware that other panelists have held that when considering whether a mark and domain name are identical or confusingly similar, the non-textual elements can be disregarded because non-textual elements cannot be represented in a domain name; see the discussion in paragraph 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). It is an approach with which this Panel disagrees. The mark is what is registered. Non-textual elements are as much a part of the mark as the textual elements. Indeed, sometimes the non-textual elements may be the only reason why the mark was registered in the first place. Accordingly, the mark as a whole must be considered when conducting the necessary comparison.
6.11 However, the test of confusing similarity is a “threshold test” and a low threshold test at that (see, for example Jobs on the Net Limited, Andrew Middleton v. International New Media Limited, WIPO Case No. D2011-1531). Given this, in most cases where the only difference between a mark and a domain name is that the mark has non-textual elements and the domain name comprises a TLD such as “.com”, the domain name will still be confusingly similar with the mark, and so in practical terms this makes no difference. But, each case must be considered on its own merits rather than by the adoption of a formulaic rule.
6.12 Conducting that assessment in this case the Panel notes that, Turkish registered trade marks No. 2000/21164 and No. 2006/46803 comprise the word “Tüpraş” in a highly stylised design. The disputed domain name is comprised of the term “tupras”, i.e. the letters “ü” and “ş” have been replaced with “u” and “s” respectively. There is no allegation that the word “Tüpraş” has no independent or descriptive meaning in respect of the goods and services for which it has been registered (and in the case of mark No. 2006/46803, the registration is in all classes) and there is no reason to ignoring that text. Given this, the Panel considers that the Domain Name is confusingly similar with the Complainant’s trade marks and the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
6.13 For reasons that are explained in detail under the heading of “Registered and Used in Bad Faith” below, the Panel accepts the Complainant’s claim that the real reason why the Domain Name was registered and is being held is with a view to taking advantage of the Complainant’s marks. Given this, it is clear that the Respondent does not have a right or legitimate interest in the Domain Name and the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
6.14 The Panel accepts the Complainant’s contention that the Domain Name was registered and is being held by the Respondent in bad faith. The evidence brought forward that Mehmet Kahveci (who the Panel has already held can be treated as the real underlying registrant or Respondent in this case) has a long history of registering domain names that correspond to the name of well known Turkish companies, is compelling. The size of the Complainant is such that the Panel is persuaded that (at least in Turkey) the term “Tüpraş” is a well known one that is associated with the Complainant. The obvious inference is that the Domain Name was both registered and is being used with a view to take unfair advantage in some form of other (whether that be by way of sale or otherwise) of the reputation and goodwill developed by the Complainant in that term.
6.15 One remarkable feature of this case is that the Domain Name was registered as long ago as 1996. This was not only many years prior to these proceedings but several years before any of the registered trade marks relied upon by the Complainant were filed. Nevertheless, the Panel does not think that this matters. First, (although there are some panelists that disagree), most panels have not recognised that any doctrine or defence of laches apples under the Policy; see paragraph 4.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"). Further, even if such a doctrine were allowed, it is highly questionable that it would apply on the particular facts of this case.
6.16 Second, so far as the respective timing of the registrations of the Domain Name and the relevant registered trade marks are concerned, the fact that the Domain Name pre-dates the marks is not fatal in this particular case. It is sometimes argued that it must be fatal because it is not possible for the respondent to have been aware of the complainant’s marks at the time of registration of the Domain Name if at the time of registration of the domain name those marks did not yet exist. However, things are not quite that simple.
6.17 Paragraph 3.1 of the WIPO Overview 2.0 discusses and gives examples of a number of situations where there can be bad faith registration if the respondent at that time is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights. In the view of this Panel that situation might arise whenever a term is being used in a trade mark sense by a complainant before registration of the mark (particularly if the use is of a nature that had it taken place in a common law country is likely to have given risen to the existence of “unregistered trade mark rights”). See in this respect, for example, St Andrews Links Ltd v. Refresh Design,WIPO Case No. D2009-0601; Marden Group B.V. v. T,WIPO Case No. D2011-1061 and footnote 5 to the decision in that case.
6.18 Even though there appears to have been a four year gap between the registration of the Domain Name and the registration of the first trade mark that is relied upon by the Complainant in this case, the test is satisfied in this case. This is so given that the term “Tüpraş” had been extensively used by the Complainant’s business possibly as long ago as the 1950s and in any event at least since 1983.
6.19 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(iii). 7. Decision
7.1 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.
Matthew S. Harris
Sole Panelist
Date: August 24, 2013
1 Although this does not form part of the Complainant’s case in these proceedings and therefore the Panel does not rely on this in coming to its decision in this matter, it also would appear from historic WhoIs domain name records that the Domain Name was registered in up to mid 2006 in the name of Mehmet Kahveci, at which point the registration details changed to that of “Domain by Proxy, Inc.”
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