The Complainant is Omsan Lojistik Anonim Sirketi of Istanbul, Turkey, represented by Ofo Ventura, Turkey.
The Respondent is Zehra Donmez of Istanbul, self-represented. 2. The Domain Name and Registrar
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 April 30, 2014. On April 30, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 2, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On May 21, 2014, the Center received an informal communication from the Respondent.
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 May 22, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 11, 2014. The Response was filed with the Center on June 11, 2014.
The Center appointed Gökhan Gökçe as the sole panelist in this matter on June 24, 2014. 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.
On July 8, 2014, the Panel issued a Procedural Order requesting the Complainant to submit further evidence. The Complainant submitted the requested evidence within the required time. Both the Complainant and the Respondent further sent multiple unsolicited communications to the Center. 4. Factual Background
The Complainant, Omsan Lojistik Anonim Sirketi, is one of the subsidiaries of Ordu Yardımlaşma Kurumu (“OYAK”) which is a well-known company in Turkey. The Complainant is headquartered in Istanbul, Turkey having offices in other cities, both within and outside Turkey and engaged in business in the logistic industry. According to the Istanbul Trade Registry records the Complainant was established on February 13, 1978.
The Complainant’s parent company OYAK owns the trademark OMSAN and has registered a number of trademarks incorporating the word “omsan”, which were licensed to the Complainant as evidenced by the Complaint. The Complainant has used Omsan as a trade name since its foundation in 1978 and there is evidence in the case record that the OSMAN trademark was registered with the Turkish Patent Institute on November 21, 2003 (application date: September 24, 2002).
The registrant of the disputed domain name is Zehra Donmez. According to the Registrar, the disputed domain name was created on March 7, 2000 and was transferred to the Registrar in the name of Zehra Donmez on June 19, 2010. The disputed domain name does not appear to have been used in connection with an active website since its registration. 5. Parties’ Contentions A. Complainant
In accordance with paragraph 4(b)(i) of the Policy, the Complainant requests that the disputed domain name be transferred to the Complainant. The Complainant submits the grounds for these proceedings listed in paragraph 4(a) of the Policy.
Identical or Confusingly Similar
The Complainant submits OMSAN as the trademark of its parent company OYAK which it is licensed to use, and has been used since 1978. The trademark OMSAN is registered with the Turkish Patent Institute and has been protected since September 24, 2002. The Complainant contends that it has created the trademark and has been using it well before its registration, since 1978, the date it was established and has made the trademark well-known in the market.
The Complainant further submits evidence of awards given to the Complainant, including having been ranked 198th according to Fortune Turkey 500 research and 61st according to Turkey’s Most Valuable Brands survey by Brand Finance in 2013.
The Complainant contends that there is a high possibility of Internet users being confused as the disputed domain name fully incorporates the word “Omsan” and is identical to its trademark.
Rights or Legitimate Interests
The Complainant submits there is no evidence that the Respondent used the disputed domain name in connection with a bona fide offering of goods or services, the Respondent is not commonly known by the disputed domain name, and the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
The Complainant asserts that the Respondent has no trademark registrations or applications before the Turkish Patent Institute and that the Complainant has no relationship with the Respondent nor has it authorized the Respondent to use OMSAN.
Registered and Used in Bad Faith
The Complainant contends that it has been using the OMSAN trademark since 1978, well before the registration of the disputed domain name. The Complainant contends that the fact that the disputed domain name is confusingly similar to its well-known trademark and that there is no relationship between the Respondent and the Complainant is in itself sufficient evidence of bad faith registration and use.
The Complainant further states that the Complainant has tried to resolve the dispute amicably by approaching the Respondent by phone, however, the Respondent did not return the Complainant’s calls. The Complainant also asserts that they have offered paying USD 5,000 in return for the transfer of the disputed domain name, to which the Respondent stated that she would call them back, however, has not responded. The Complainant avers that the Respondent did not respond to the Complainant’s offer because she wanted to sell the disputed domain name for a higher price. B. Respondent
Identical or Confusingly Similar
The Respondent contends that there are many companies using the term “Omsan” both in Turkey and in Germany and therefore “Omsan” is not a distinguished brand name in Turkey. The Respondent claims that the Complainant is trying to mislead the Panel by creating a picture as if they have the sole right to use “Omsan”.
Rights or Legitimate Interests
The Respondent claims that she has registered the disputed domain name as a present to her brother whose name is Osman and who was a mechanical engineer. She chose “Omsan” as short for “Osman Makina San A.S.” which means “Osman Machinery Industries Inc.”. The Respondent further claims that they are planning to use the disputed domain in the future by establishing a company with her brother, something they have not been able to do so far due to economical reasons.
Registered and Used in Bad Faith
The Respondent denies any claim that the disputed domain name is used in bad faith. The Respondent contends that she did not use the disputed domain name as her priority was to establish a company first.
The Respondent accepts the allegations of the Complainant with respect to the phone calls, however claims that the reason she did not respond to the Complainant was because she had no intentions of transferring the disputed domain name.
The Respondent also states that she is not planning to establish a company to be a competitor of the companies using “Osman” in their names, including the Complainant, and that she has no intention to create any disruption for the Complainant’s business. 6. Discussion and Findings
With respect to the Complainant’s and the Respondent's unsolicited supplemental filings, the Panel has sole discretion to decide whether or not to consider supplemental filings under the Rules, paragraph 10(d). The Panel has, therefore, decided not to accept the supplemental filing of the parties.1
The Panel turns to the merits of the case, paragraph 4(a) of the Policy sets forth the following three elements which the Complainant must prove, during the administrative proceedings, to merit a finding that the disputed domain name be transferred to the Complainant:
(a) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(b) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(c) the disputed domain name has been registered and is being used in bad faith.
Pursuant to paragraph 15(a) of the Rules, the Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. A. Identical or Confusingly Similar
The Policy simply requires the Complainant to demonstrate that the disputed domain name is identical or confusingly similar to a trademark in which it has rights. The Panel is satisfied that the Complainant is the licensed to use the trademark OMSAN as evidenced in the annexes to the Complaint and that the Complainant has been using the trademark OMSAN since its foundation in 1978, which predates the registration of the disputed domain name on March 7, 2000.
In relation to the disputed domain name , the Panel finds the addition of the “.com” extension may be disregarded when determining whether the disputed domain name is confusingly similar to the Complainant’s trademark, see e.g PRL USA Holdings, Inc. v. Spiral Matrix,WIPO Case No. D2006-0189. It has been stated in several decisions by other UDRP panels that the incorporation of a trademark in its entirety into a domain name may be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark, Hürriyet Gazetecilik ve Matbaacılık Anonim Şirketi v. Moniker Privacy Services / Kemal Demircioglu, WIPO Case No. D2010-1941; Bayerische Motoren Werke AG, Sauber Motorsport AG v. Petaluma Auto Works,WIPO Case No. D2005-0941. The Panel recognizes the Complainant’s rights and concludes that the disputed domain name is identical and confusingly similar with the OMSAN trademark to which the Complainant is licensed to use.
The Panel finds that the requirements in paragraph 4(a)(i) of the Policy are fulfilled; consequently, the Panel finds for the Complainant on the first element of the Policy. B. Rights or Legitimate Interests
In accordance with paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It is established in numerous UDRP decisions that it is difficult for a complainant to prove a negative and for that reason the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110. Once the Complainant makes a prima facie case, the burden of demonstrating rights or legitimate interests in the disputed domain name shifts to the Respondent. The Policy at paragraph 4(c) provides various ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
Pursuant to paragraph 4(c) of the Policy, the Respondent may exhibit that it has rights or legitimate interests in the domain name by showing one or more of the following circumstances:
(i) before any notice to the Respondent of the dispute, the Respondent’s 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) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is 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.
Thus, if a respondent demonstrates to the satisfaction of the panel any of these elements or indeed anything else that shows it has a right or legitimate interest in the disputed domain name, the complainant will have failed to discharge its onus and the complaint will be dismissed.
The Complainant submits there is no evidence that the Respondent used the disputed domain name in connection with a bona fide offering of goods or services, the Respondent is not commonly known by the disputed domain name, and the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, the Respondent has no trademark registrations or applications before the Turkish Patent Institute and that the Complainant has no relationship with the Respondent nor has it authorized the Respondent to use the OMSAN trademark in any way.
Furthermore, the Respondent is not making use of the disputed domain name in connection with a bona fide offering of goods or services. The disputed domain name was created approximately fourteen years ago. The Respondent has not made active use of the disputed domain name. The Respondent claims that she is planning to establish a company with her brother and intends to use the disputed domain name in connection with this company in the future. However, she has failed to provide any evidence of preparations for intended use. The Respondent has failed to provide evidence of “demonstrable preparations” to use the disputed domain name for a bona fide offering of goods or services, which suggests there is no such intention, Helen Fielding v. Anthony Corbert aka Anthony Corbett,WIPO Case No. D2000-1000. Aside from the Respondent’s statement there is no evidence of such intended use and the Panel does not accept that this alone provides sufficient evidence to draw the conclusion that the disputed domain name will in fact be used for a bona fide offering of goods or services as the Respondent claims.
In the Panel’s view, the Complainant has established a prima facie case that the Respondent lacks of rights or legitimate interests in the disputed domain name. The Respondent has not provided evidence of its alleged rights or legitimate interests in the disputed domain name. The Panel, therefore, concludes that paragraph 4(a)(ii) of the Policy is satisfied and concludes that the Respondent has no rights or legitimate interests in the disputed domain name.
The requirements of paragraph 4(a)(ii) of the Policy are fulfilled and, consequently, the Panel finds in favor of the Complainant on the second element of the Policy. C. Registered and Used in Bad Faith
Finally, the Complainant must show that the disputed domain name has been registered and is being used in bad faith under paragraph 4(a)(iii) of the Policy.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that, if found by a 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 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) 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 on-line 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 Complainant has been using the trademark OMSAN long before the Respondent’s registration of the disputed domain name. Additionally, the parent company of the Complainant, OYAK, is one of the most well-known institutions in Turkey and as evidenced by the annexes of the Complainant. The Complainant is also a well-known logistics company having been listed as one of the most valuable brands in Turkey. Further, while pointing out that there are other companies using the expression “Omsan”, the Respondent has not denied knowledge of the Complainant’s trademark. The Panel, in accordance with previous decisions issued under the Policy, is of the opinion that actual knowledge of the Complainant’s trademark at the time of registration of the disputed domain name is to be considered in appropriate cases as an inference of bad faith. Parfums Christian Dior v. Javier Garcia Quintas and C,WIPO Case No. D2000-0226.
As discussed above, despite the fact that the Respondent has stated she has intentions to use the disputed domain name in the future in connection with a company she is planning to establish with her brother, there is no evidence to support these contentions. Furthermore, the fact that the disputed domain name has been created in 2000 and appears not to have been used since then has been taken into consideration in determining whether inactive use by a registrant amounts to bad faith use, Advance Magazine Publishers Inc. and Les Publications Condé Nast S.A. v. ChinaV,WIPO Case No. D2005-0615.
In Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, the panel decided that “passive holding” in certain circumstances may amount to use in bad faith. The Panel has identified the following circumstances as material to the issue in the present case:
(i) the Complainant’s trademark has a strong reputation and it has been listed as one of the most valuable brands in Turkey; in addition, it is registered in the jurisdiction where the Respondent is based;
(ii) the Complainant’s trademark is not a generic word but an arbitrary term;
(iii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by her of the disputed domain name, nor can the Panel conceive of any such good faith use;
(iv) the disputed domain name was created in 2000, and seams not to have been used ever since:
(v) the Respondent did not respond to the Complainant’s reasonable attempts to correspond with her over her registration and use of the disputed domain name.
After examining all circumstances surrounding the registration and use of the disputed domain name, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith. Accordingly, the Panel finds in favor of the Complainant on the third element 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.
Gökhan Gökçe
Sole Panelist
Date: July 27, 2014
1 In any event, the Panel notes that even if he had considered such supplemental filings, it would not have changed the outcome of this proceeding.
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