The Petitioner is DSM Grup Danismanlik lletisim ve Satis Ticaret A.S.of Turkey, represented by Tellioğlu Kaşlioğlu Law Office Law Office, Turkey. 2. Domain Holder
The Domain Holder is S. Z., of Sweden. 3. Domain Name and Procedural History
This Alternative Dispute Resolution proceeding relates to the disputed domain name .
This Petition was filed under the Terms and Conditions of registration (the “.se Policy”) and the Instructions governing Alternative Dispute Resolution proceeding for domain names in the top-level domain .se (the “.se Rules”).
The WIPO Arbitration and Mediation Center the “Center") verified that the Petition satisfied the formal requirements of the .se Policy and the .se Rules. In accordance with Section 13 of the .se Rules, the Center formally notified the Domain Holder of the Petition on September 28, 2018. The Domain Holder submitted a response on October 25, 2018.
The Center appointed Johan Sjöbeck as the sole Arbitrator in this matter on November 13, 2018. The Arbitrator has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with Section 1 of the .se Rules. 4. Factual Background
The Petitioner has demonstrated that it owns a number of trademarks including the following international trademarks that designate the European Union:
MILLA BY TRENDYOL with registration number 1241352 and registration date August 12, 2014 for clothing in class 25.
TRENDYOL.COM ALISVERISIN YENI YOLU with registration number 1241532 and registration date August 12, 2014 covering goods and services in class 35.
TRENDYOL.COM with registration number 1392848 and registration date September 12, 2017 covering goods and services in class 35.
TRENDYOL with registration number 1408341 and registration date September 14, 2017 covering goods and services in class 14, 18, 24, 25 and 35.
The Domain Holder registered the disputed domain name on June 29, 2018. 5. Claim
The Petitioner requests that the disputed domain name shall be transferred from the Domain Holder to the Petitioner. 6. Parties’ Contentions A. Petitioner
The Petitioner is one of the largest e-commerce companies in Turkey. The Petitioner has been using the disputed domain name since October 7, 2009 and it has registered TRENDYOL with the Turkish Patent and trademark Office since October 20, 2009. Currently, the Petitioner is the owner of 49 Turkish trademarks containing the word “trendyol”. In addition, the Petitioner is the owner of four international trademarks that designate the European Union and consequently are protected in Sweden.
The Domain Holder has no right or legitimate interest in the word “Trendyol”. The Petitioner has not authorized or licensed the Domain Holder to use the trademark in any way.
The term “trendyol” is not a common word or a generic name that is commonly used by others in regards to any goods or services. B. Domain Holder
The Domain Holder maintains that the registration of the disputed domain name was made in good faith. The Domain Holder’s goal is to create his own brand on the Swedish market. 2015 was the start of the Domain Holder’s strategy to start a business. The Domain Holder’s idea was to find a niche product for the Swedish market. It was important to find a product that would not take time to manufacture and would give some meaning to the customers in the Swedish market. Towels, underwear, socks etc. would be the Domain Holder’s niche products. In 2016, the Domain Holder travelled to Turkey to find out how he should act on the Turkish market. The Domain Holder took all his ideas back to Sweden and started working on his design. The letters “TY”, standing for TurkeY would be the Domain Holder’s brand. In 2017, the Domain Holder returned to Turkey to continue working on his brand “TY”. The Domain Holder asked three factories for their prices of towels.
In 2018, the Domain Holder was trying to find a domain name for his brand and he came up with an idea. The Turkish companies do not operate on the Swedish market so why not use a domain name like as it would be something unique and innovative on the Swedish market and it would suit the Domain Holder’s brand “TY”. The meaning of “trendyol” in English is “trendy way” or “new way” and this suited the Domain Holder’s brand perfect. The disputed domain name was free to register. The Domain Holder travelled to Turkey two more times in order to do more research. In October 2018, the Domain Holder opened a bank account in Turkey for future needs.
The Domain Holder’s argues that the Petitioner has no interest in any domain name in the Swedish Top-Level Domain (“TDL”) and no interest in entering the Swedish market. The disputed domain name would never be a threat to the Petitioner’s domain name . “Trendyol” is not a unique name founded by the Petitioner as it is a word used by Turkish people daily. The Petitioner’s website “www.” is a marketplace where many brands are selling their goods, similar to websites like Zalando, except that the Petitioner has chosen a non-unique name. The Domain Holder maintains that daily used words such as “trendyol” can be used by different companies in different TLDs depending upon which market they are active in. For example, the term “zoo” is registered as domain names by different companies in different markets.
The term “trendyol” was free to register as domain names in many markets, such as “.eu” and “.se”. The Domain Holder claims that the Petitioner should have taken the time to protect the disputed domain name better and not be wise after the event. The Petitioner should know how important it is for a company to protect a domain name in any market it is entering or plans to enter. If the Petitioner has failed to protect a domain name, it is not bad faith by the Domain Holder to register it. On the contrary, it is the Petitioner acting in bad faith by requesting the disputed domain name through this proceeding. 7. Discussion and Findings
A domain name may be deregistered or transferred to the party requesting dispute resolution proceedings if the following three conditions in Section 7.2 of the .se Policy are fulfilled:
1. The domain name is identical or similar to
a. a trade symbol (trademark or service mark),
b. a trade name or secondary name,
c. a family name,
d. an artist’s name (if the name is not associated with someone who deceased a long time ago),
e. a title of another party’s copyrighted literary or artistic work,
f. a name that is protected by the Regulation concerning Certain Official Designations (1976:100), or
g. The name of a government authority that is listed in the registry that Statistics Sweden must maintain under the Swedish Code of Statutes SFS 2007:755 (Government Agencies Register Ordinance), or its generally accepted abbreviation,
which is legally recognized in Sweden and to which the party requesting dispute resolution can prove its rights, and
2. The domain name has been registered or used in bad faith, and
3. The Domain Holder has no rights or justified interest in the domain name A. The domain name is identical or similar to a name which is legally recognized in Sweden and to which the Petitioner can prove its rights
According to the submitted evidence in the case, the Petitioner is the owner of the registered trademarks MILLA BY TRENDYOL, TRENDYOL.COM ALISVERISIN YENI YOLU, TRENDYOL.COM and TRENDYOL.
The disputed domain name incorporates the TRENDYOL trademark with registration number 1408341 in its entirety. It is common practice to disregard the TLD “.se” when comparing a domain name and a trademark.
Having the above in mind, the Panel concludes that the disputed domain name is similar to the Petitioner’s trademark TRENDYOL and that the Petitioner has proven the first requirement under Section 7.2 of the .se Policy. B. The domain name has been registered or used in bad faith
The Petitioner’s trademark TRENDYOL predates the registration of the disputed domain name as the trademark was registered on September 14, 2017 and the disputed domain name was registered by the Domain Holder on June 29, 2018. The Petitioner has not licensed, approved or in any way consented to the Domain Holder’s registration of the trademark in the disputed domain name.
According to the Domain Holder, the Petitioner should have registered the necessary domain names in all markets where the Petitioner is active and all markets where the Petitioner plans to have business. Because the disputed domain name was available for registration, the Domain Holder presumed that the Petitioner had no interest in the Swedish market and consequently no interest in a Swedish domain name. However, the Domain Holder’s reasoning above does not eliminate the fact that the Petitioner is the owner of an older trademark registration for TRENDYOL which is valid in Sweden. From the Domain Holder’s Response and the circumstances in the case, it is apparent that the Domain Holder was aware of the Petitioner and the Petitioner’s business at the time when the disputed domain name was registered and that the registration was made with the Petitioner’s trademark in mind. This is further demonstrated by the circumstance that the Domain Holder plans to use the disputed domain name to sell the same type of goods that the Petitioner’s TRENDYOL trademark is registered for. The Domain Holder’s attempt to take advantage of the Petitioner’s trademark by registering the disputed domain name hinders the Petitioner from reflecting its trademark in a corresponding domain name in the Swedish TLD “.se”.
There is no evidence in the case file that successfully refutes the Petitioner’s submissions. Therefore, the Arbitrator concludes that the Petitioner has also proven the second requirement under Section 7.2 of the .se Policy and that the disputed domain name has been registered in bad faith. C. The Domain Holder has no rights or justified interest in the domain name.
The Petitioner maintains that the Domain Holder lacks rights or justified interest in the disputed domain name and that the Petitioner has not licensed or consented to the Domain Holder’s registration of the TRENDYOL trademark in the disputed domain name.
There is no evidence in this case demonstrating that the Domain Holder is the owner of a trademark, or any other right, similar to the disputed domain name or that the Domain Holder is commonly known by the disputed domain name. The Domain Holder argues that he is in the process of creating a brand named “TY”, which stands for Turkey and that the disputed domain name suits the letters “TY”. On the one hand, the Domain Holder claims that the disputed domain name is unique, different and innovative but on the other hand, the Domain Holder states that the term “trendyol” is a non-distinctive and common generic word available for anyone to use. However, the Domain Holder has not submitted any evidence to support his assertion.
Based upon the above, the Arbitrator finds that the Domain Holder has failed to invoke any circumstances, which could demonstrate pursuant to Section 7.2 of the .se Policy, any rights or justified interests in respect of the disputed domain name and the Arbitrator concludes that the Petitioner has also proven the third requirement under Section 7.2 of the .se Policy. 8. Decision
For the foregoing reasons, in accordance with Section 7.2 of the .se Policy, the Arbitrator orders that the disputed domain name shall be transferred to the Petitioner. 9. Summary
The Arbitrator concludes that the disputed domain name is similar to the Petitioner’s trademark TRENDYOL and that the Petitioner has proved the first requirement under Section 7.2 of the .se Policy. Furthermore, the Arbitrator concludes that the Petitioner has proved the second requirement under Section 7.2 of the .se Policy and that the disputed domain name has been registered in bad faith, and that the Domain Holder has failed to invoke any circumstances, which could demonstrate pursuant to Section 7.2 of the .se Policy, any rights or justified interests in respect of the disputed domain name.
Johan Sjöbeck
Date: December 3, 2018
Full & Egal Universal Law Academy