The Complainant is Akçansa Çimento Sanayi ve Ticaret Anonim Şirketi of Istanbul, Turkey, represented by BTS & Partners, Turkey.
The Respondent is Timur Büyük, Buka Bilgisayar San. ve Dış Tic. Ltd. Şti. of Istanbul, Turkey, 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 October 28, 2016. On October 28, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 28, 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.
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 November 10, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 30, 2016. The Respondent submitted its Response on November 30, 2016.
The Center appointed Emre Kerim Yardımcı as the sole panelist in this matter on December 2, 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 well-known Turkish company, active in the cement industry, based in Istanbul, Turkey.
The Complainant owns the trademark registrations BETONSA Registration No. 157566, registered on May 30, 1995 and BETONSA Registration No. 2000 17301, registered on November 5, 2001, both covering the class 19 in Turkey.
The disputed domain name was registered on May 20, 2004 in the name of the Respondent. The Respondent is a company offering services for the management of Internet domain names.
According to the agreement signed on May 21, 2004 between the Respondent and a third party named Paşa Sağlam who is a physical person domiciled in Istanbul, Turkey, the beneficial owner of the domain name is Paşa Sağlam who owns the trademark registration BETONSA Registration No. 2013 87949, registered on August 18, 2015, covering the classes 37 and 42.
The Panel visited the disputed domain name on December 16, 2016, and observed that the disputed domain name does not resolve to an active website.
The Complainant tried to contact the Respondent on September 5, 2016, through a cease-and-desist letter by email, whereby it requested a voluntary transfer of the disputed domain name. Despite two reminders sent on September 7, 2016, and September 22, 2016, the Respondent did not reply to the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant requests the transfer of the disputed domain name.
The Complainant asserts that the disputed domain name is identical to the Complainant’s recognized and reputable registered BETONSA trademarks.
The Complainant claims that the Respondent has no rights or legitimate interests in respect of the disputed domain name considering that the Respondent is not affiliated with the Complainant in any manner. The Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for use any domain name incorporating the trademark and lastly there is no evidence suggesting that any other person than the Complainant is commonly known by the trademark BETONSA.
The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant claims that the Respondent had the Complainant’s trademark in mind when registering the disputed domain name and that the Respondent is passively holding the disputed domain name.
Finally, the Complainant states that it has sent a notification via e-mail to the Respondent stating that the BETONSA trademark belongs to it and necessary legal action would be taken against the disputed domain name unless the Respondent ceased its use of the disputed domain name. The Complainant states that the Respondent has failed to provide a positive or negative answer to the Complainant’s request and continues to use the disputed domain name. The Complainant concludes that the Respondent knew the Complainant’s BETONSA trademark by the time of the registration of the disputed domain name and his continuous passive use of the disputed domain name shows that the Respondent has registered and used the disputed domain name in bad faith. B. Respondent
The Respondent did not formally reply to the Complainant’s contentions.
However, in his Turkish e-mail communication of November 30, 2016, the Respondent asserts that the disputed domain name has been registered on behalf of Paşa Sağlam in 2004 and Paşa Sağlam who is the owner of Betonsa Prefabrik İnşaat ve Sağlam Prefabrik İnşaat Şirketleri is also the owner of the registered trademark BETONSA Registration No. 2013 87949, registered on August 18, 2015, covering the classes 37 and 42.
The Respondent requests the rejection of the Complainant’s Complaint. 6. Discussion and Findings 6.1. Language of the Proceedings
Pursuant to paragraph 11(a) of the Rules, unless otherwise agreed by the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. The Complaint was filed in English. The Respondent did not formally object to English as the language of the proceeding however has responded to the Complaint in Turkish.
The Center has made a preliminary determination to accept the Response in Turkish subject to a determination by the Panel.
In the absence of any comment from the Respondent regarding the language of the proceeding, the Panel considers that the appropriate language of the proceeding shall be English, but will consider the Respondent’s Turkish language submission. 6.2. Substantive Issues A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. As indicated above, the Complainant holds several registrations for BETONSA trademark since 1995.
The disputed domain name integrates the Complainant’s BETONSA trademark in its entirety. The disputed domain name differs from the registered BETONSA trademark by the generic Top-Level Domain (“gTLD”) “.com”.
Previous UDRP panels have ruled that gTLDs are typically disregarded under the confusing similarity test.
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is identical to a trademark in which the Complainant has rights and satisfied the first requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The onus is on the Complainant to make out at least a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and it is then for the Respondent to rebut this case.
The Panel accepts the Complainant’s submissions that the Respondent does not appear to be known by the disputed domain name, has not used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, is not making a legitimate noncommercial or fair use of the disputed domain name, and has no consent from the Complainant to use its trademark.
The Panel is convinced on balance by the documents submitted in its informal response (including the provision of trademark registration BETONSA Registration No. 2013 87949 in the name of Paşa Sağlam and an agreement between the Respondent and Mr. Sağlam to register the disputed domain name) that the Respondent is acting on behalf of Paşa Sağlam and that the Respondent registered the disputed domain name in 2004 on behalf of Paşa Sağlam.
According to the facts of the case, approximately 11 years later, Paşa Sağlam obtained a trademark registration for BETONSA for the classes 37 and 42 which includes “constructions services” before the Turkish Patent Institute (“TPI”) in 2015. Moreover, Paşa Sağlam seems to be the owner of the companies “Betonsa Prefabrik İnşaat” and “Sağlam Prefabrik İnşaat” as all these persons are located at the same address.
In the present case, the Complainant does not address the delay in bringing this UDRP proceeding and why it has not filed any opposition against the trademark application BETONSA for the similar services (i.e. construction services) in the class 37 back in 2013 (although for purposes of this proceeding the Complainant would not have known prior to the Complaint that the disputed domain name was associated with Paşa Sağlam and his trademark registration).
As a matter of fact, prior to registration of a trademark, the TPI publishes the applicant’s proposed trademark and interested persons may oppose against the grant of registration. Moreover, a party may contest the validity of a trademark in the course of an infringement proceeding before the Turkish courts, and such courts have authority to direct the cancellation of the registration of a trademark.
The registration of a trademark with the TPI confers a presumption of validity in Turkey and on this basis that such validity had not been contested by the Complainant, the Panel determines that it must find that the Respondent has rights in the disputed domain name within the meaning of paragraph 4(a)(ii) of the Policy.
The Panel notes that in effect the Complainant is requesting the Panel to rule that a registered right owner has no legitimate interest in its registered trademark under the Policy, based on balance from the evidence available to the Panel. The Panel further expresses some hesitancy as to the Respondent’s evidence – notably the lack of evidence of use of Mr. Sağlam’s trademark or the related businesses, the gap between the application and grant of said trademark, the long period between the registration of the disputed domain name and the trademark application, and the fact that the contract between Mr. Sağlam and the Respondent post-dates the registration of the disputed domain name. It is commonly agreed that “UDRP panels are not equipped to resolve complex disputes – such disputes are better dealt with by the courts” (Levantur, S.A. v. Media Insight,WIPO Case No. D2009-0608). The Panel concurs and finds that this present matter is better suited to the appropriate court with the requisite powers to undertake factual and legal assessment not available to this Panel under the Policy.
The Panel finds that the Complainant has failed to satisfy its burden of proving that Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Complainant having failed under paragraph 4(a)(ii) of the Policy, the Panel is not required to further consider the issue of bad faith under paragraph 4(a)(iii). 7. Decision
For the foregoing reasons, the Complaint is denied.
Emre Kerim Yardimci
Sole Panelist
Date: December 20, 2016
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