The Complainant is Sarten Ambalaj San. ve Tic. A.Ş. of Istanbul, Turkey, represented by Grup Ofis Marka Patent Inc., Turkey.
The Respondent is Stanley Pace of Flower Mound, Texas, United States of America (“USA”), represented by Law Office of Howard M. Neu, P.A., USA. 2. The Domain Name and Registrar
The disputed domain name is registered with F (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 7, 2015. On October 8, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 9, 2015, 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.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 29, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 18, 2015. The Response was filed with the Center November 18, 2015.
On November 24, 2015, the Complainant submitted an unsolicited Supplemental Filing to the Center. This was included as a part of the document with the Complainant’s panel nominees, see Rules, paragraph 6(d).
The Center appointed Christopher J. Pibus, Ugur G. Yalçiner, and Richard G. Lyon as panelists in this matter on December 4, 2015. 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. 4. Factual Background
The Complainant is a Turkish company that has been in operation since 1972. It specializes in the manufacture of plastic and metal packaging for a variety of industries and for a variety of uses, including food, agricultural chemicals, motor oil, and paint.
The Complainant owns several subsisting registrations for the SARTEN trademark in Turkey, including the following:
SARTEN – Turkish Registration No. 209869, July 22, 1999;
SARTEN – Turkish Registration No. 2000 13283, June 30, 2000;
SARTEN – Turkish Registration No. 2011 86010, October 28, 1999;
SARTEN – Turkish Registration No. 2011 103693, February 12, 2011.
An earlier Turkish registration (No. 124282), dating from December 19, 1950, was not renewed. The Complainant has also filed an international trademark registration for the SARTEN trademark under International Trademark Registration No. 1124324 dated November 18, 2011.
The Complainant owns the following domain name registrations: , , , and . The oldest of these, , was registered on January 6, 1999.
The Respondent registered the disputed domain name on January 27, 1998. 5. Parties’ Contentions A. Complainant (a) Identical or Confusingly Similar
The Complaint contends that the disputed domain name is identical to the Complainant’s registered trademark SARTEN, as the disputed domain name replicates the trademark in its entirety. (b) Rights or Legitimate Interests
The Complainant contends that its rights in the trademark SARTEN pre-date the registration of the disputed domain name by the Respondent. The Complainant contends that its common law rights to the SARTEN trade name date back to 1972, and that its rights to the SARTEN trademark date back to 1990, when it first registered the SARTEN mark with the Turkish Patent Institute, whereas the Respondent cannot prove any earlier right to the mark. Accordingly, the Complainant submits that the Respondent lacks rights or legitimate interests in the disputed domain name. (c) Registered and Used in Bad Faith
The Complainant contends that the disputed domain name has been registered and is being used by the Respondent in bad faith based on the following factors: (i) the Respondent is a sophisticated domainer who knew or should have known that his use of the disputed domain name may violate trademark rights so his failure to conduct adequate searching gives rise to an inference of knowledge; (ii) the Respondent registered the disputed domain name solely for the purpose of re-selling it to the general public at an inflated price; (iii) the Respondent is using the disputed domain name to intentionally attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant’s mark; (iv) the Respondent is using the disputed domain name as a parked page with links to various other websites, including links to products related to the Complainant’s business, which is not a bona fide and/or legitimate use of the disputed domain name; and (v) the Respondent has engaged in a pattern of conduct of registering domain names which infringe well known trademarks of third parties. B. Respondent
In response to the Complainant’s allegations of bad faith registration of the disputed domain name, the Respondent submits that he registered the disputed domain name before the Complainant registered any of its subsisting trademarks in Turkey. The Respondent submits that he lives in the State of Texas, USA, while the Complainant is a Turkish company, so he had no knowledge of the use of the SARTEN mark by the Complainant before or after his registration of the disputed domain name. The Respondent submits that the Complainant has not provided evidence that its trademark was well known outside of Turkey at the time the Respondent registered the disputed domain name.
The Respondent further submits that he is in the business of acquiring and using, for business purposes, generic domain names when they become available. He notes that “sarten” means “pan” or “frying pan” in Spanish. He submits that he is fluent in Spanish, spends roughly half of his time in Spanish-speaking countries, and has registered over 10,000 generic Spanish registrations.
In response to the Complainant’s allegations of bad faith use of the disputed domain name, the Respondent submits that he has continuously parked the disputed domain name with a “reputable aggregator”. The Respondent argues that the majority UDRP cases have held that “parking” domains with legitimate monetization companies is a legitimate business use. The Respondent further submits that none of the hyperlinks on his website links to the Complainant or any of its competitors. Respondent notes that no complaint has ever been raised over the 17 years during which he has owned the disputed domain name.
The Respondent admits that he has had a number of UDRP complaints filed against him; however, he notes the existence of decisions in his favor, in circumstances which are comparable to this fact situation. C. Supplemental Filing
Apart from further statements or documents requested by the Panel pursuant to paragraph 12 of the Rules, neither the Policy nor the Rules expressly provide for supplemental filings. Their admissibility is therefore at the discretion of the Panel, bearing in mind the requirements under paragraph 10 of the Rules to ensure that the proceeding is conducted with due expedition and both parties are treated equally, with each party being given a fair opportunity to present its case.
Where unsolicited supplemental filings are admitted, it is usually because the material corrects some error or addresses an issue raised in a Response which could not reasonably have been anticipated or which was not otherwise appropriate to deal with until a respondent’s position on a particular point was clear.
Here, the Complainant’s proposed Supplemental Filing does not contain any information that the Complainant could not reasonably have anticipated when it filed its Complaint. The contents of the Supplemental Filing merely seek to bolster and re-argue points made in the Complainant’s original pleadings and therefore could and should have been included in the original Complaint.
The Panel therefore declines to consider the Complainant’s Supplemental Filing. The Panel will not consider anything other than the Complaint, the Response, and each party’s evidence as originally submitted. The Panel also admonishes the Complainant for trying to take advantage of the opportunity to provide panel nominees with unrequested additional materials. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark 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 has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant has established trademark rights in the mark SARTEN by virtue of its multiple registrations in Turkey, as outlined above.
The Panel further finds that the disputed domain name is identical to the Complainant’s trademark SARTEN.
Accordingly, the Panel finds that the Complainant has satisfied this requirement under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
In light of the findings on bad faith, it is not necessary for the Panel to rule on rights or legitimate interests. C. Registered and Used in Bad Faith
On the basis of the evidence filed by the parties, the Panel finds that the Complainant has not satisfied the requirement under paragraph 4(a) of the Policy, that the disputed domain name was registered and used by the Respondent in bad faith.
The Complainant is a Turkish company; the Respondent resides in the USA. When the Respondent registered the disputed domain name in 1998, the Complainant only held a single Turkish trademark registration for SARTEN (which has since expired). The Complainant also claims trade name use since 1972, but has failed to bring forward probative evidence to the effect that its common law use ever resulted in a reputation outside Turkey itself. The Panel concludes that there is no reason to believe the Respondent knew about the Complainant’s rights in the SARTEN mark or trade name, when the Respondent registered the disputed domain name in 1998.
Even if the Panel were to accept the Complainant’s suggestion that as a “sophisticated domainer”, the Respondent should have conducted adequate searching to ensure that the disputed domain name did not violate any trademark rights, the Complainant has not provided any evidence to indicate that the Respondent would have found the Complainant’s Turkish mark had he searched for it in 1998. In fact, it is not clear if the Respondent, while residing in the USA, would have even been able to confirm the existence of the Complainant’s Turkish company in 1998, let alone find the Complainant’s Turkish mark. Based on the Complainant’s evidence, its oldest domain name, , (and its earliest Internet presence under that name) was registered on January 6, 1999, a year after the Respondent registered the disputed domain name.
On balance, the Panel accepts the Respondent’s evidence that he was not aware of the Complainant’s trademark rights when he registered the disputed domain name in 1998, nor, in the Panel’s assessment of the particular circumstances of this case, should he have been so aware.
The Panel has also carefully reviewed the Complainant’s argument that the links displayed on the Respondent’s website at “www.” constitute evidence of bad faith. The web page produced in the Complainant’s evidence does not actually contain any indicia that suggest any direct connection to the Complainant’s business. The majority of the webpage references are consistent with the Spanish meaning of “sarten” as a frying pan, and not with a packaging business.
In all the circumstances, based on the evidence as filed, the Panel finds that the Complainant has failed to meet its burden to prove that the disputed domain name was registered and used in bad faith. The Complainant’s failure to do so means that this Complaint must be dismissed. 7. Decision
For the foregoing reasons, the Complaint is denied.
Christopher J. Pibus
Presiding Panelist
Ugur G. Yalçiner
Panelist
Richard G. Lyon
Panelist
Date: December 18, 2015
Full & Egal Universal Law Academy