The Complainant is Turkuvaz Yeni Asir Televizyon, Prodüksiyon A.Ş of Istanbul, Turkey, represented by Burak İsa Altin, Turkey.
The Respondent is Domain Privacy Service FBO Registrant of Burlington, Massachusetts, United States of America (“United States”) / of Vancouver, Washington, United States represented by Revision Legal, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with D, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 10, 2016. On November 10, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on November 20, 2016. The Center sent an email communication to the Complainant on November 22, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed a second amended Complaint on November 27, 2016.
The Center verified that the Complaint [together with the amended Complaints 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 28, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 18, 2016. On December 16, 2016, the Respondent requested the extension of the Response due date, which was subsequently extended until December 22, 2016 in accordance with paragraph 5(b) of the Rules. The Response was filed with the Center on December 21, 2016.
The Center appointed Luca Barbero as the sole panelist in this matter on January 4, 2017. 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 Turkish media company. It owns the Turkish trademark registration No. 2010/38445, filed on June 11, 2010 and granted on July 27, 2012, for A HABER (figurative mark), in classes 16, 38 and 41, and the Turkish trademark application No. 2016/69009 for A HABER (word mark) filed on August 25, 2016, in classes 16, 35, 38 and 41.
The Complainant operates its website at the domain name , registered on August 12, 2010.
The disputed domain name was originally registered on September 22, 2003 and is currently pointed to a website under construction. However, the Respondent acquired the disputed domain name in 2013 and pointed it in the past to a website in Turkish language publishing news and reproducing live news streams taken from the Complainant’s website.
According to the records and as further detailed in the following paragraphs, although the disputed domain name is registered in the name of a privacy service and the Registrar does not appear to have the name of the actual underlying registrant, the Panel determines from the communications received in this case that the underlying registrant and actual owner of the disputed domain name is a Turkish resident, Mr. Artun. References to “Respondent” in the following sections may be intended as referred to the actual owner of the disputed domain name. 5. Parties’ Contentions A. Complainant
This Complainant submits that the disputed domain name is confusingly similar to its registered and well-known trademark A HABER.
The Complainant claims that its trademark A HABER is well-known in Europe and Turkey, being one of the top news channels in Turkey, and one of the “A” based trademark series of the Complainant and its subsidiaries like “Atv”, “Aspor” (meaning “A Sport” in English), “minikA” (a channel for kids which means “tiny A” in English), and “Aktuel”. The Complainant also states that its “A” series channel “Atv” is one of the three biggest channels in Turkey and that it is also broadcasting famous programs on” Atv Avrupa” for Europe.
The Complainant states that the disputed domain name is not being used actively since the Respondent has only 25 news items on its website and all of them have been added from other news sites between August 18 and August 23, 2016, after the Complainant contacted the Respondent.
The Complainant also states that the Respondent has no rights or legitimate interests in the disputed domain name since it did not have any registered trademark or service mark corresponding to the disputed domain name, it is not affiliated with the Complainant in any manner and has not licensed or otherwise permitted the Respondent to use its trademark or to apply for use any domain name incorporating the trademark.
The Complainant informs the Panel that it issued a notice that the Respondent had violated its trademark rights in relation to the trademark AHABER and that the Respondent responded that it was at the Turkey-Syria border for news and it will decide the price of the disputed domain name. The Complainant also states that a few days later the Respondent changed its website logo.
The Complainant also indicates that it was proven by the Turkish Courts that the Complainant is the only rights owner and the Respondent has no rights, since the Complainant filed a case before the Istanbul Courts, based on the Complainant’s trademark rights, and the Court banned the website “www.” within Turkey.
The Complainant also informs the Panel that the Respondent filed a trademark application in Germany for AHABER but it excludes that it could justify a Respondent’s claim for a legitimate interest since the Respondent is a Turkish resident, as shown in the correspondence exchanged with the Complainant and in that trademark records, and the trademark application was filed on August 26, 2016, after the registration of the disputed domain name and the Complainant’s notification of the infringement to the Respondent. Therefore, the Complainant concludes that the Respondent has no rights or legitimate interest in the disputed domain name and that it tried to file a trademark application in an unrelated country to circumvent the application of the Policy.
The Complainant also contends that the Respondent was aware of the Complainant’s trademark because it claimed in its emails that it is a journalist and it linked a popup window from the Complainant’s live news stream.
With reference to the circumstances evidencing the Respondent’s bad faith, the Complainant claims that its trademark A HABER is well-known in Turkey and the trademark was registered long before the Respondent’s registration of the disputed domain name. The Complainant highlights that, as seen from the emails sent by the Respondent to the Complainant, the Respondent is a Turkish citizen residing in Turkey and, therefore, it is impossible that the Respondent was unaware of the Complainant’s well-known trademark at the time of the registration of the disputed domain name.
As further circumstances evidencing the Respondent’s bad faith, the Complainant asserts that the Respondent changed its website motto with “A Haber for Europeans” after receipt of the Complainant’s emails and that the Respondent’s replies to the Complainant’s emails do not show any bona fide intention of the Respondent and demonstrate the Respondent’s knowledge of the Complainant’s trademark. In addition, the Complainant states that the Respondent sent an email to the Complainant in which it asked USD 200,000 for transferring the disputed domain name to the Complainant, and that, also after the filing of the original Complaint, the Respondent proposed to sell the disputed domain name to the Complainant. Therefore, the Complainant alleges that the Respondent’s aim is to increase the price for the disputed domain name by filing a trademark application in an unrelated country.
As to the use of the disputed domain name, the Complainant points out that the Respondent used the corresponding website for pay-per-click links by creating confusion with the Complainant, since, as shown in the source codes of the Respondent’s website submitted by the Complainant, there is a link named “Watch Live Ahaber” which opens a pop-up to the Complainant’s “www..tr” live news feed, causing visitors think that the Respondent’s website is controlled by the Complainant.
In addition, the Complainant states that the Respondent engages in the registration of domain names corresponding to popular trademarks and in selling them to others. For example, the Complainant informs the Panel that the Respondent registered additional domain names corresponding to the names of well-known newspapers and trademarks in Turkey, such as , , and , corresponding to the trademarks HURRIYET, MILLIYET and TURKISH DAILY, respectively. B. Respondent
The Respondent asserts that the Complainant’s complaint is an attempt to use its questionable trademark rights to hijack a generic and/or descriptive domain name from the Respondent that has been used in a legitimate, bona fide manner.
The Respondent states that it purchased the disputed domain name in furtherance of a legitimate business model because it contains generic and/or descriptive terms that can be utilized in the news and journalism industry.
Further, the Respondent claims that it registered and has used the disputed domain name in good faith to broadcast Turkish news outside of Turkey. Finally, it concludes that the equitable doctrine of laches should bar the Complainant’s arguments because the registration of the disputed domain name happened seven years prior to the Complainant’s trademark filing, the Respondent’s subsequent purchase came at a time where the Complainant had been aware of the registration of the disputed domain name and not brought action for a period of ten years, and Complainant had every right and ability to purchase the disputed domain name at the time that the Respondent did. For these reasons, the Respondent concludes that the Complainant’s Complaint must be denied.
The Respondent further states that, at the time of the registration of the disputed domain name by the Respondent, in 2013, the Complainant had only a design plus words trademark, that limits the scope of its protection to the use of the term “a haber” to its display in a logo format, and highlights that the term “haber” is a Turkish translation of the generic term “news,” and that, combined together, “a haber” means “a news”.
The Respondent asserts to have rights and legitimate interests in the disputed domain name because, before notice to the Respondent of this dispute, the Respondent used the disputed domain name in connection with a bona fide offering of news services, and the Respondent acquired the disputed domain name through a domain name auction website for USD 1,200, after which it invested roughly USD 10,000 in its operation.
The Respondent contends that it purchased the disputed domain name because it contains the term “a news”, which is a generic or descriptive term that could be applied to news media offerings, and that the Respondent has sought to build the website located at the disputed domain name to serve as a means for European and Turkish people to access news emanating from Turkey. The Respondent also claims that its purchase of the disputed domain name, containing a generic or descriptive term, for the delivery of the very services that those generic or descriptive terms denote is a legitimate and bona fide use.
The Respondent concludes that, since the Respondent purchased and registered the disputed domain name for use as a media news outlet directed at persons who would recognize the generic word “news” merely as a source from which news would likely emanate, the Respondent has rights and legitimate interests in the disputed domain name.
The Respondent notes that, at the time the Respondent registered the disputed domain name, the Complainant’s only claim to the purported A HABER trademark was a design plus words mark that obtained registration only because the generic term “a haber” was combined with distinctive subject matter, namely, a logo. In fact, at the time of the registration of the disputed domain name, the Complainant was not using A HABER as a trademark at all, as “A” records show that the Complainant was instead using a stylized logo containing “A HBR” as its mark at that time. Thus, the Respondent concludes that it cannot be reasonably said that the Respondent registered the disputed domain name in bad faith because the Respondent had no prior knowledge of the Complainant’s alleged trademark rights in a term that is clearly generic or descriptive.
In order to demonstrate its lack of bad faith at the time of registration, the Respondent states that it reasonably assumed, based on the fact that the disputed domain name had been registered since 2003 and had been available for purchase for several months at the time of the Respondent’s purchase, that no entity had rights to the “a haber” term reflected in the disputed domain name because it is generic and/or descriptive.
The Respondent rebuts the Complainant’s additional allegation supporting its bad faith claim, that the Respondent has failed to voluntarily hand over the disputed domain name and has offered it for sale, stating that it was under no obligation or compulsion to hand over a generic or descriptive domain name that it had purchased and developed, and that there is nothing wrong with offering to sell a generic or descriptive domain name at a high price, which is a common business practice.
The Respondent concludes that the Complainant is overreaching, as it has obtained a limited trademark registration for the use of traditionally generic and/or descriptive terms and, in this case, it has attempted to use those terms to hijack the disputed domain name, which was purchased at auction and has been used by the Respondent in a generic and/or descriptive manner and in furtherance of a legitimate business model to provide the very news services denoted by the disputed domain name. The Respondent contends that the Respondent has done so in good faith and without any attempt to trade off the Complainant’s rights. 6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has provided evidence of ownership of a trademark registration valid in Turkey for A HABER (figurative mark).
As stated in paragraph 1.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), ownership of a trademark generally satisfies the threshold requirement of having trademark rights. The location of the trademark, its date of registration, and the goods and/or services for which it is registered, is irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP.
In addition, as indicated in paragraph 1.11 of the WIPO Overview 2.0, figurative, stylized or design elements in a trademark are typically disregarded for the purpose of assessing identity or confusing similarity, being generally incapable of representation in a domain name.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark A HABER since the figurative elements contained in the Complainant’s trademark can be disregarded for the purpose of the test of identity or confusing similarity pursuant to paragraph 4(a)(i) of the Policy and the same applies to the generic Top-Level Domain (“gTLD”) “.com”, which is a mere technical requirement of registration.
Therefore, the Panel finds that the Complainant has proven the requirement prescribed by paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant is required to make a prima facie case that the Respondent lacks rights or legitimate interests and, once such prima facie case is made, the burden of production shifts to the Respondent to submit appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393; Accor v. Eren Atesmen,WIPO Case No. D2009-0701; and WIPO Overview 2.0, paragraph 2.1.
The Panel finds that the Complainant has made a prima facie case and that the Respondent has failed to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy.
According to the evidence on records, there is no relation between the Respondent and the Complainant and the Respondent has not obtained any authorization to use the Complainant’s trademark and to register and use the disputed domain name.
In addition, there is also no indication before the Panel that the Respondent might be commonly known by the disputed domain name. The fact that the Respondent filed a trademark application for A HABER in Germany after receiving notice of the dispute by the Complainant is not sufficient, in the Panel’s view, to establish trademark rights in the disputed domain name, as the circumstances of the case suggest that this trademark was filed to circumvent the application of the Policy. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “M”,WIPO Case No. D2000-0847; Chemical Works of Gedeon Richter Plc v. Covex Farma S.L.,WIPO Case No. D2008-1379.
The Panel also finds that, according to the evidence on record, the Respondent has not used, or made preparation to use, the disputed domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use before any notice of the dispute for the following reasons.
The Panel acknowledges that the expression resulting from the combination of the terms encompassed in the disputed domain name, i.e. “a haber”, has a meaning in Turkish language, which corresponds to “a news” in English.
With reference to domain names constituted of generic or descriptive term only, paragraph 2.2 of the WIPO Overview 2.0 states that: “Panels have recognized that mere registration of a domain name, even one that is comprised of a confirmed dictionary word or phrase (which may be generic with respect to certain goods or services), may not of itself confer rights or legitimate interests in the domain name. Normally, in order to find rights or legitimate interests in a domain name based on the generic or dictionary meaning of a word or phrase contained therein, the domain name would need to be genuinely used or at least demonstrably intended for such use in connection with the relied-upon meaning (and not, for example, to trade off third-party rights in such word or phrase)”.
Based on the evidence on records, the disputed domain name has been used in connection with a website in Turkish language providing news and publishing content including that taken from the Complainant’s website “www..tr”. In view of the above and considering that the Complainant’s trademark appears to have acquired a certain degree of notoriety in Turkey, this Panel finds that users visiting the Respondent’s website may be confused as to the source or affiliation of the Respondent’s website and might believe that there is an association with the Complainant which does not exist. Moreover, the Complainant has obtained a court order which restrains the Respondent’s use of the disputed domain name in Turkey.
In light of the above, the Panel is not persuaded that the disputed domain name has been genuinely used by the Respondent in connection with the relied-upon meaning and not to trade off the Complainant’s rights in the correspondent phrase by diverting users intended for the Complainant to the Respondent’s website at the disputed domain name. The Panel reaches this conclusion also considering the additional elements brought to its attention by the Complainant as detailed in the following paragraphs, which suggest that the Respondent registered and used the disputed domain name in bad faith.
Therefore, the Panel finds that also the requirement prescribed by paragraph 4(a)(ii) of the Policy has been met. C. Registered and Used in Bad Faith
As highlighted in the paragraphs above, although the disputed domain name was registered in 2003, the Respondent acquired it in January 2013, three years after the filing of the Complainant’s registered trademark for A HABER (figurative mark) in Turkey and the registration of the Complainant’s domain name , which was already used by the Complainant at that time (as shown by the historical screenshots of the corresponding website “www..tr” submitted by the Respondent).
Moreover, the Respondent is a Turkish resident, exercises the profession of journalist and registered – using the same email address as the one indicated as contact email address in the Response – other domain names constituted of the names of well-known Turkish newspapers and corresponding online editions.
In view of the above, the Panel finds that the Respondent was or should have been aware of the Complainant’s website and its trademark at the time of registration of the disputed domain name.
The Panel also notes that other domain names registered by the Respondent include the term “haber” in addition to suffixes consisting of generic terms, although none of them appears to be actively used for news websites. In the Panel’s view, in the circumstances where the Respondent registered and actively used the disputed domain name, which exactly reproduces the denominative element of the Complainant’s trademark A HABER, suggests that the Respondent was indeed aware of, and intended to target, the Complainant and its trademark at the time of registration.
As to the use of the disputed domain name, the evidence on record shows that the Respondent pointed the disputed domain name to a website publishing news and a pop-up reproducing the Complainant’s live news stream. The Complainant has submitted a copy of the source code of the Respondent’s website clearly showing that the Respondent copied content from the Complainant’s website “www..tr”. The Complainant also obtained a court order which restrained the visibility of the Respondent’s website in Turkey.
Therefore, the Panel also finds that the Respondent has used the disputed domain name in bad faith to divert traffic intended for the Complainant to its own website and causing a likelihood of confusion with the Complainant and its trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.
At the time of the drafting of the Decision, the disputed domain name is pointed to a website under construction displaying only contact information, namely an email address based on the disputed domain name which was used by the Respondent to reply to the Complainant’s email communications, and a telephone number. However, the removal of the contents previously available on the website at the disputed domain name apparently occurred only after the Respondent’s receipt of notice of this proceeding. Therefore, and in view of the circumstances of the case detailed above, the Panel finds that also the current use of the disputed domain name amounts to bad faith.
The Panel also finds that the Respondent’s request for USD 200,000 for transferring the disputed domain name to the Complainant and its reiterated offer to sell the disputed domain name to the Complainant also after the filing of the original Complaint are additional elements demonstrative of the Respondent’s bad faith.
As to the doctrine of laches invoked as a defense by the Respondent, the Panel notes that, as indicated in paragraph 4.10 of the WIPO Overview 2.0, said defense as such does not generally apply under the UDRP, and that delay in bringing a complaint does not of itself prevent a complainant from filing under the UDRP, or from being able to succeed under the UDRP, where a complainant - like in the present case - can establish a case on the merits under the requisite three elements.
Therefore, the Panel finds that the disputed domain name was registered and is being used in bad faith. 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.
Luca Barbero
Sole Panelist
Date: January 18, 2017
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