The Complainant is Istanbul Kültür Üniversitesi Türkiye Cumhuriyeti of Istanbul, Turkey, represented by BTS & Partners, Turkey.
The Respondent is Burak Kilanc, Kilanc Family of Istanbul, Turkey, represented by Net Koruma Danismanlik Hizmetleri, Turkey. 2. The Domain Name and Registrar
The disputed domain names and are registered with NameSecure L.L.C. (the "Registrar"). 3. Procedural History
The (Turkish Language) Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 26, 2016. On February 26, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 4, 2016, 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, and stating that English was the language of the Registration Agreements for both disputed domain names. Further to the Center's language of proceedings communication, the Complainant submitted its translated English language Complaint on March 7, 2016. On March 9, 2016, the Center received an email 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 9, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 29, 2016. On March 29, 2016, the Respondent requested a four day extension to file its Response. This request was granted pursuant to the Rules, paragraph 5(b). The Response was filed with the Center on April 2, 2016.
The Center appointed Kaya Köklü as the sole panelist in this matter on April 18, 2016. 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
The Complainant is a university located in Istanbul, Turkey. It was founded in 1997 and has currently more than ten thousand students and around 600 teaching staff members.
The Complainant owns various Turkish trademark registrations comprising the term DOGRU TERCIH, which means "right decision" in the English language. Among its trademark registrations, it is the Panel's view that probably the most relevant for these administrative proceedings is the Turkish word and figurative mark DOGRU TERCIH (TPE no. 2007-44938), which was registered on August 20, 2007 and is still in force. This trademark registration inter alia claims protection for goods and services within the Nice trademark classes 9, 16, 35 and 38.
The Complainant has also owned and operated the domain name since 2003.
The Respondent is an individual from Turkey. He was employed by the Complainant from 1999 until 2014. He was part of a developing and organizing team of the Complainant for certain student services provided under the Complainant's trademark DOGRU TERCIH.
The disputed domain name was created on February 3, 2005 in the name of the Complainant and then registered on or about June 24, 2011 by the Respondent in his own name ( domain profile report supplied as annex 1 to the Complaint).
The disputed domain name was created on October 17, 2008. According to the undisputed allegation of the Complainant, it was subsequently registered by the Respondent in his own name in 2014 or after.
At the time of the decision, neither disputed domain name resolves to an active website. 5. Parties' Contentions A. Complainant
The Complainant requests the transfer of the disputed domain names.
The Complainant is of the opinion that the disputed domain names are confusingly similar to its DOGRU TERCIH trademarks.
Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain names. In particular, the Complainant alleges that it has never provided a license or any other consent to the Respondent to use the DOGRU TERCIH trademark outside the scope of the employment relationship.
Finally, it is argued that the Respondent has registered and is using the disputed domain names in bad faith. The Complainant particularly points out that the Respondent was a former employee of the Complainant, who transferred the disputed domain names to himself probably with an illicit intention, and at least without any consent provided by the Complainant. B. Respondent
The Respondent requests the denial of the Complaint.
Among others, the Respondent's main arguments are as follows:
The Respondent argues that he was the executive of the project carried out by the Complainant under the DOGRU TERCIH brand and that he never granted a license or a transfer of rights to the Complainant.
Further, the Respondent argues that the he has a right to use the disputed domain names as they consist of generic, dictionary terms.
Finally, the Respondent argues that the Complainant must have been aware of, but remained silent on, the transfer of the disputed domain names from the Complainant to the Respondent. In the view of the Respondent, the Complainant's allegation of bad faith registration and use is entirely baseless. 6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) the disputed domain names are identical or confusingly similar to the trademarks in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled. Stanworth Development Limited v. E Net Marketing Ltd.,WIPO Case No. D2007-1228.
However, concerning the uncontested information provided by the Complainant, the Panel may, where appropriate, accept the provided reasonable factual allegations in the Complaint as true. Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110.
The Panel has taken note of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") and, where appropriate, will decide consistent with the WIPO Overview 2.0. A. Identical or Confusingly Similar
The Panel finds that the Complainant has registered trademark rights in DOGRU TERCIH, particularly by virtue of Turkish trademark registration TPE no. 2007-44938 of August 20, 2007.
The Panel further finds that the disputed domain names are identical to the Complainant's registered trademark DOGRU TERCIH, as they fully incorporate the Complainant's trademark without any additions or amendments.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
While the burden of proof on this element remains with the Complainant, panels have recognized that this would result in the often impossible task of proving a negative, in particular as the evidence in this regard is often primarily within the knowledge of the Respondent. Therefore, the Panel agrees with prior UDRP panels that the complainant is required to make out a prima facie case before the burden of production of evidence shifts to the respondent to show that it has rights or legitimate interests in the disputed domain names in order to meet the requirements of paragraph 4(a)(ii) of the Policy. Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455.
The Panel finds that the Complainant has satisfied this requirement, while the Respondent has failed to file sufficient evidence or make convincing arguments to demonstrate rights or legitimate interests in the disputed domain names according to the Policy, paragraphs 4(a)(ii) and 4(c).
In its Complaint, the Complainant has provided prima facie evidence that the Respondent has no rights or legitimate interests in the disputed domain names. In return, the Respondent has failed to demonstrate any of the non-exclusive circumstances evidencing rights or legitimate interests under the Policy, paragraph 4(c), or other evidence of rights or legitimate interests in the disputed domain names.
Particularly, there is no indication in the case file that the Complainant provided an implied license to the Respondent to register, in his own name, domain names comprising the Complainant's mark. The Complainant's silence on the transfer of the disputed domain names from the Complainant to the Respondent does not indicate the presence of such a license, particularly as there is no indication in the case file that the Complainant was at the relevant times even aware of the transfers.
Additionally, the Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names, as they are both passively held.
Quite to the contrary, the Panel rather believes it possible that the Respondent is intentionally trying to impair his former employer by hijacking the disputed domain names, which were previously registered in the Complainant's name (or in the name of the Complainant's Research and Development Center).
The Respondent's argument that he has a right or legitimate interest in the disputed domain names because they consist of generic terms is in view of the Panel only a self-serving allegation. The Respondent disregards that the Complainant is the owner of a long standing trademark registration for DOGRU TERCIH in Turkey. Furthermore, the Respondent did not even provide an allegation that he has used or at least plans to use the disputed domain names in a possibly legitimate, descriptive way. In this regard the Panel notes paragraph 2.2 of the WIPO Overview 2.0: "Factors a panel tends to look for when assessing whether there may be rights or legitimate interests [in a generic term domain name] would include…whether the domain name is used in connection with a purpose relating to its generic or descriptive meaning."
The Respondent's allegation that he was the "executive" of the project carried out by the Complainant under the DOGRU TERCIH brand is also not relevant. Even if true, simply being an employee of a rights-holder does not, as such, justify the use of the employer's trademark without its consent, particularly not after the employment relationship ends.
The Respondent's counter argument that he himself has not granted any license to the Complainant with regard to the disputed domain names is in view of the Panel entirely unfounded, as the Respondent failed to demonstrate ownership of any right which would be eligible to be the subject of such a "license". The Respondent did not provide any indication that it owns e.g. copyrights or similar absolute rights that would entitle him to require a licence himself for the use of the disputed domain names. Being a former project manager in the Complainant's employ is not sufficient to establish a right to use the Complainant's trademark without its consent.
All in all, the Panel finds that the Complainant has also satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel is further convinced that the Respondent has registered and is using the disputed domain names in bad faith.
As a former employee of the Complainant, the Respondent was obviously fully aware of the Complainant's DOGRU TERCIH trademark rights when registering and transferring the disputed domain names to his own name.
Although the Respondent's motives for transferring the disputed domain names from the Complainant to himself without authorization are less than clear, in any event there is in the view of the Panel no conceivable good faith reason for this transfer.
The fact that the disputed domain names do not resolve to an active website at the time of the decision does not change the Panel's overall assessment.
Taking all facts and legal arguments into account, the Panel concludes that the disputed domain names were registered and used in bad faith and that the Complainant has also satisfied the third element of the Policy, namely, paragraph 4(a)(iii). 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 names, and be transferred to the Complainant.
Kaya Köklü
Sole Panelist
Date: May 2, 2016
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