The Complainant is Hizlipara Ödeme Hizmetleri ve Elektronik Para A.S., Turkey, represented internally.
The Respondent is Privacy Protected by Hostnet, Netherlands / Seber Holding B.V., Netherlands, represented by Intellectueel Eigendom Advocaten, Netherlands. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 10, 2020. On September 10, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 10, 2020, 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. The Center sent an email communication to the Complainant on September 11, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant did not submit an amendment to the Complaint. On September 14, 2020, the Respondent sent an informal email communication to the Center. 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 September 22, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 12, 2020. On October 12, 2020, the Respondent requested for an extension of time to submit a Response. The due date for submission of the Response was extended until October 16, 2020, pursuant to paragraph 5(b) of the Rules. The Response was filed with the Center on October 16, 2020. On October 21, 2020, the Complainant submitted an unsolicited supplemental filing. The Center appointed Jane Seager as the sole panelist in this matter on October 30, 2020. 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 company engaged in the provision of financial services, including electronic-payment services. The Complainant is the registrant of the following PAYPORTER trademarks: - Turkish Trademark Registration No. 2017/114325, PAYPORTER (and design), filed on December 14, 2017, and registered on August 26, 2019; - Turkish Trademark Registration No. 2017/114332, PAYPORTER, filed on December 14, 2017, and registered on August 29, 2019; and - European Union Trade Mark No. 018172653, PAYPORTER (and design), filed on December 27, 2019, and registered on May 29, 2020. Drawing upon the assertions of the Parties and the evidence produced with the Complaint, the Response, and the Complainant’s unsolicited supplemental filing, the Panel has been able to discern the following chronology of events leading up to the present dispute: Date: Description: January 26, 2016 The Complainant is incorporated in Turkey. May 9, 2016 The disputed domain name is registered. April 12, 2017 The company PayPorter B.V. is incorporated in the Netherlands. The sole shareholder of PayPorter B.V. is Seber Holding B.V. Mr. Ulu is the director of the company PayPorter B.V. June 2017 The disputed domain name is acquired by Seber Holding B.V., a company incorporated in the Netherlands. Mr. Erol Ulu is the sole director of Seber Holding B.V. December 2017 The Complainant commences active use of the PAYPORTER trademark. December 14, 2017 The Complainant files applications for the registration of the PAYPORTER trademark in Turkey. January 2018 Mr. Ulu commences work as an employee of the Complainant. February 2018 The Complainant begins using the disputed domain name in the course of its business operations. March 27, 2018 Mr. Ulu is appointed as a Board member and CEO of the Complainant. July 26, 2018 The company PayPorter B.V. obtains its payments license from the Dutch Central Bank (De Nederlandsche Bank NV – DNB). August 26, 2019 The Complainant’s PAYPORTER trademark is first registered in Turkey. August 29, 2019 The Complainant’s second PAYPORTER trademark is registered in Turkey. December 27, 2019 The Complainant files an application for the registration of the PAYPORTER trademark before the European Union Intellectual Property Office (“EUIPO”). This process appears to have been overseen by Mr. Ulu. January 1, 2020 The Complainant begins operating under the supervision of the Central Bank of Turkey. May 29, 2020 The Complainant’s PAYPORTER trademark is registered in the European Union. June 24, 2020 Mr. Ulu is dismissed from the Complainant. July 1, 2020 Mr. Ulu changes the DNS settings for the disputed domain name. As a result, the Complainant loses access to its website and email servers. August 21, 2020 The Complainant sends a cease-and-desist letter to PayPorter B.V. and Seber Holding B.V., requesting the voluntary transfer of the disputed domain name. August 28, 2020 PayPorter B.V. sends a reply to the Complainant’s cease-and-desist letter, asserting rights and legitimate interests in the disputed domain name, claiming some USD 2 million on behalf of Mr. Ulu as compensation for his 20 percent share as a partner of the Complainant. September 2, 2020 PayPorter B.V. files an application before the EUIPO for cancellation of the Complainant’s PAYPORTER trademark. September 10, 2020 The Complainant submits the present UDRP Complaint. At the time of this decision, the disputed domain name resolves to a website that appears to offer financial services, including money-transfer services (the “Respondent’s website”). The Respondent’s website makes use of the Complainant’s PAYPORTER trademark and logo. The footer of the Respondent’s website states “© 2020 PayPorter B.V. – All Rights Reserved”. The Respondent’s website contains comprehensive company and contact information. 5. Parties’ Contentions A. Complainant The Complainant asserts rights in the PAYPORTER trademark, which it submits is exactly the same as the disputed domain name. Under the second element of the Policy, the Complainant asserts: “The Complainant has been commonly known by the domain name associated with its registered service mark. The domain name’s initial usage was in payporter.com website which is designed and activated by the Company. The Respondent has no rights or legitimate interests in respect of the domain name or service mark.” In regard to bad faith, the Complainant asserts that the Respondent is using the disputed domain name in a way that creates confusion amongst Internet users. In this respect, the Complainant refers to an image on the Respondent’s website where Mr. Ulu and others appear at a FinTech trade show, in which the Complainant’s name, slogan, logo and accreditations are displayed. The Complainant asserts that the Respondent never made use of the disputed domain name until it was used by the Complainant. The Complainant argues that the Respondent gave unconditional consent to the Complainant’s use of the disputed domain name. The Complainant further asserts that the Respondent oversaw the registration of the Complainant’s trademarks. The Complainant submits that the Respondent blocked the Complainant’s access to the disputed domain name upon the dismissal of Mr. Ulu from the Complainant. The Complainant submits that the Respondent’s use of the disputed domain name, as well as the Complainant’s identity, trademark, and logo, cause misdirection, confusion, trademark infringement, and unfair competition. In light of the above, the Complainant submits that the disputed domain name was registered and is being used in bad faith. The Complainant requests transfer of the disputed domain name. B. Respondent The Respondent accepts that the disputed domain name is identical to the Complainant’s PAYPORTER trademark, but notes that the registration of the disputed domain name predates the Complainant’s use of the PAYPORTER trademark, and that the Respondent has initiated proceedings for cancellation of the Complainant’s European Union Trade Mark before the EUIPO. The Respondent claims that the PayPorter brand was created by the Respondent prior to Mr. Ulu joining the Complainant’s company. The Respondent submits that Mr. Ulu provided instructions to create the PayPorter logo as early as 2017, also predating the registration of the Complainant’s trademarks, long before he became a Board member and CEO of the Complainant. The Respondent asserts that PayPorter B.V. is a licensed payment institution. The Respondent explains that it did not make earlier active use of the disputed domain name, pending the issuance of a license from the Dutch Central Bank. The Respondent claims that the Parties were supposed to undergo a merger, and that the Complainant unilaterally decided to start making use of the PayPorter brand prior to Mr. Ulu’s appointment as a Board Member or as CEO of the Complainant. The Respondent asserts that there was no consent for the Complainant to register its PAYPORTER trademark in Turkey. In this regard, the Respondent further asserts that the registration of the Complainant’s European Union Trade Mark was made without the permission of PayPorter B.V. The Respondent claims that the above-referenced image of Mr. Ulu was taken in 2018, at which time the Complainant was a business partner of PayPorter B.V., and is therefore referenced on the pictured stand at the FinTech trade show. The Respondent asserts that the Complainant was not otherwise involved in the referenced event. The Respondent submits that in light of the planned merger between the Parties, PayPorter B.V. allowed the Complainant to make use of the PayPorter name and the disputed domain name. The Respondent denies having given unconditional consent to the Complainant to make use of the disputed domain name. The Respondent asserts that its current business activities are a continuation of its earlier business, as carried out before the Parties started negotiations for a merger. The Respondent requests that the remedy requested by the Complainant be denied. C. The Complainant’s Unsolicited Supplemental Filing Further to the submission of the Response, the Complainant submitted an unsolicited supplemental filing. With regard to the Respondent’s cancellation proceedings before the EUIPO, the Complainant asserts that it remains the lawful registrant of the PAYPORTER trademark, and that the Respondent’s attempt to cancel the Complainant’s trademark is not decisive for the purposes of the present UDRP proceeding. The Complainant further submits that the Respondent was in fact aware of the Complainant’s application for and registration of the PAYPORTER trademark in Turkey, and that Mr. Ulu personally oversaw the registration of the Complainant’s European Union Trade Mark. The Complainant also provides evidence that it paid for the Respondent’s attendance at the 2018 FinTech trade show. 6. Discussion and Findings 6.1. Procedural Questions A. Admissibility of the Complainant’s Supplemental Filing As a reflection of the time- and cost-efficient nature of UDRP proceedings, the Rules contemplate the submission of a single Complaint and Response. Paragraph 12 of the Rules states that the Panel may request, in its sole discretion, further statements or documents from either of the Parties. The admissibility of unsolicited supplemental filings is subject to the Panel’s discretion, provided under paragraph 10 of the Rules. In all such cases, UDRP panels have repeatedly affirmed that the party submitting or requesting to submit an unsolicited supplemental filing should clearly show its relevance to the case and why it was unable to provide the information contained therein in its Complaint or Response (e.g., owing to some “exceptional” circumstance); see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.6. In the present case, the Complainant’s supplemental filing primarily seeks to clarify or correct factual representations made in the Response, with which the Complainant does not agree. In the interests of fairness, and for the decision to reflect a complete record of the Parties’ submissions, the Panel has determined to admit the Complainant’s unsolicited supplemental filing to the record. The Panel notes, in this regard, that its exclusion from the record would not have substantially altered the outcome of the present case. B. Effect of Pending Cancellation Proceedings before the EUIPO The Panel notes that the Respondent’s affiliated company, PayPorter B.V. has initiated proceedings before the EUIPO for cancellation of the Complainant’s European Union Trade Mark No. 018172653. Paragraph 18(a) of the Rules states that in the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the Complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision. As noted in WIPO Overview 3.0, section 4.14.2, UDRP panels generally issue a UDRP decision on the merits even in an overlapping court-UDRP proceeding scenario where, notwithstanding the fact that a UDRP decision would not be binding on the court, the relative expediency of the UDRP versus courts is seen as a benefit to the parties. Panel reluctance to terminate a UDRP case on this basis often also takes account of, and respects, the potential for a court action to address causes of action separate from that being addressed in the UDRP proceeding. While the pending cancellation proceedings do not involve the disputed domain name, the Panel will nevertheless address these insofar as they relate to the present proceeding. In this respect, it is not incumbent on the Panel to determine the validity of the Complainant’s trademark rights, nor does the Panel have jurisdiction to do so, that being the role of the EUIPO or any other intellectual property offices where the Complainant may have applied for or registered trademark rights. Notwithstanding the pending cancellation proceedings before the EUIPO, the Complainant is (at the time of this decision) the registered trademark holder of the PAYPORTER trademark, registered in the European Union and Turkey, the registration details of which are provided in the factual background section above. In the circumstances, the Panel does not consider it necessary to suspend or terminate the present UDRP proceeding, and finds it appropriate to proceed to issue a decision on the merits. However, the Panel’s decision is without prejudice to the outcome of any other legal proceedings concerning the PAYPORTER trademark, including the Respondent’s pending cancellation proceedings before the EUIPO. 6.2. Substantive Matters In order to prevail, the Complainant must demonstrate, on the balance of probabilities, that it has satisfied the requirements of paragraph 4(a) of the Policy, namely: (i) the disputed domain name is identical or confusingly similar to a 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 was registered and is being used in bad faith. A. Identical or Confusingly Similar The Panel finds that the Complainant has established rights in the PAYPORTER trademark. The fact that a domain name may have been registered before a complainant has acquired trademark rights does not by itself preclude a complainant’s standing to file a UDRP case, nor a panel’s finding of identity or confusing similarity under the first element; see WIPO Overview 3.0, section 1.1.3. The disputed domain name reproduces the textual elements of the Complainant’s PAYPORTER trademark in their entirety, without addition or alteration. The generic Top-Level Domain “.com” may be disregarded for the purposes of comparison under the first element of the Policy; see WIPO Overview 3.0, section 1.11.1. The Panel finds the disputed domain name to be identical or confusingly similar to the Complainant’s trademark. The Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests According to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name. While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element; see WIPO Overview 3.0, section 2.1. The Complainant’s case under the second element consists of assertions that the Complainant itself is commonly known under the disputed domain name, and that the Complainant was first to make active use of the disputed domain name in connection with a website. The Complainant states that it first started using the PAYPORTER trademark in December of 2017, whereas the Respondent’s affiliated company, PayPorter B.V., was incorporated in the Netherlands some eight months earlier on April 12, 2017. The exact nature of the prior relationship between the Parties is not entirely clear, although it appears that at some point in early 2018, the Complainant began using the disputed domain name, having been granted consent to do so from the Respondent. That consent appears to have been revoked by the Respondent in July 2020, following the dismissal of Mr. Ulu as CEO of the Complainant. In the subsequent months, the disputed domain name appears to have resolved to a website operated by the Respondent, offering money-transfer services, making prominent use of the Complainant’s PAYPORTER trademark and logo. It is clear that the Respondent has not received consent from the Complainant to make use of its PAYPORTER trademark and logo. Typically, such unauthorized use of a domain name that is identical to a complainant’s trademark would create carry a high risk of implied affiliation, effectively impersonating or suggesting endorsement or sponsorship by the trademark owner; see WIPO Overview 3.0, section 2.5.1. The Panel notes, however, that the Respondent appears to have carried out a degree of business formation-related activity utilizing the PayPorter name, including the incorporation of a company bearing the same name, as well as credible investment in website development. The Complainant has not at any point suggested that the services offered via the Respondent’s website are fraudulent or otherwise illegitimate in nature. Indeed, it appears that the Respondent is operating under a licence granted by the Dutch Central Bank. Moreover, it is clear from the “Company Information” page of the Respondent’s website that the entity operating the website is PayPorter B.V. of the Netherlands, and not the Complainant. Against the above background, having considered the evidence on record, the Panel finds that the Complainant has failed, on the balance of probabilities, to prove that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel’s finding under this element ought not to be interpreted as a positive finding that the Respondent does in fact have rights or legitimate interests in the disputed domain name, but rather that the Complainant’s assertions and evidence have failed to establish the contrary within the meaning of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith As noted in WIPO Overview 3.0, section 3.8, where a respondent registers a domain name before the complainant’s trademark rights accrue, UDRP panels will not normally find bad faith on the part of the respondent. In certain limited circumstances where the facts of the case establish that the respondent’s intent in registering the domain name was to unfairly capitalize on the complainant’s nascent trademark rights, panels have been prepared to find that the respondent has acted in bad faith. Such scenarios include registration of a domain name: (i) shortly before or after announcement of a corporate merger, (ii) further to the respondent’s insider knowledge (e.g., a former employee), (iii) further to significant media attention (e.g., in connection with a product launch or prominent event), or (iv) following the complainant’s filing of a trademark application. It is not disputed that from around June 2017 to June 2020, Mr. Ulu, i.e., the director of the Respondent, was engaged by the Complainant, including as CEO of the Complainant. During this time, Mr. Ulu appears to have overseen the application for and registration of the Complainant’s European Union Trade Mark. The Respondent also claims that the Parties intended to merge their business operations. Notwithstanding the above, the Complainant clearly states that it commenced use of the PAYPORTER trademark in December 2017, at which time the Complainant applied for trademark registrations for the same in Turkey, whereas the disputed domain name appears to have been acquired by the Respondent in June 2017. The Complainant has failed to produce evidence to support the conclusion that the Respondent registered the disputed domain name with knowledge of any then-nascent trademark rights that the Complainant may have had, some six months prior to the Complainant’s first use of the PAYPORTER trademark. Indeed, the origins of the PayPorter name are disputed by both Parties. In light of the above, the Panel finds that the Complainant has failed to establish that the disputed domain name was registered in bad faith pursuant to paragraph 4(a)(iii) of the Policy. Accordingly, the Complaint fails. In its analysis, the Panel has come to the conclusion that the dispute between the Parties goes well beyond the disputed domain name, and that it would not end with the transfer of the disputed domain name to the Complainant. The present case raises broader issues of trademark infringement and unfair competition. The Panel is of the view that the Parties’ dispute would be more suitably resolved in a court of competent jurisdiction, which would be better equipped through the benefit of discovery, interrogatories and witness testimony to determine the present dispute. As noted above, the Panel’s findings are without prejudice to the outcome of any future legal proceedings between the Parties, including the pending cancellation proceedings concerning the Complainant’s European Union Trade Mark before the EUIPO. 7. Decision For the foregoing reasons, the Complaint is denied. Jane Seager
It is around this time that Mr. Ulu begins his involvement with the Complainant. While the capacity in which Mr. Ulu was engaged by the Complainant is not clearly defined, his involvement with the Complainant is noted by the Respondent in pre-Complaint correspondence.
Sole Panelist
Date: November 13, 2020
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