The Complainant is Viko Elektrik Ve Elektronik Endüstrisi Sanayi Ve Ticaret Anonim Şirketi of Istanbul, Turkey, represented by Başalan Patent & Trademark Industrial Property Services Consultancy Limited Company, Turkey.
The Respondent is UniqueBrandNames of New York City, United States of America.
The disputed domain name, <viko.com> (the “Domain Name”), is registered with pair Networks, Inc. d/b/a pairNIC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 2, 2010. On November 3, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 4, 2010, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing contact information for the registrant for the Domain Name, which differed from the contact information in the Complaint. The Center sent an email communication to the Complainant on November 10, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 11, 2010.
The Center verified that the Complaint together with the amended 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 26, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 16, 2010 and subsequently revised to December 19, 2010 in light of an inadvertent omission of an amended exhibit. The Respondent has not submitted any official Response, but in the course of correspondence with the Center has sent to the Center emails dated November 12, 2010 and December 16, 2010, which set out the Respondent’s response to the Complaint.
The Center appointed Tony Willoughby as the sole panelist in this matter on January 12, 2011. 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.
The Panel has read the two emails from the Respondent which are referred to above and proposes to accept them in lieu of a formal Response. Additionally, on November 29, 2010 the Center received an unsolicited email communication from the Complainant referring to the Respondent’s email of November 12, 2010. The Panel has also read that email and noted the contents.
The Panel found the Complaint and certain of the exhibits to the Complaint extremely difficult to untangle. For example while the Complaint (supported by some of the trade mark registration certificates) states that the Complainant has been using its corporate/trade name since 1995, exhibits 1 and 7 (which appear to be duplicates) indicate that the Complainant only adopted its corporate name by way of a change of name in 1999. Additionally, the Panel was unable to find one of the trade mark registration certificates said to be in exhibit 51. However, for the purposes of this decision the Panel is prepared to accept the following as fact.
The Complainant is one of the largest industrial companies in Turkey. It was the 366th largest Turkish company in 2008. It has a substantial international business with many countries including the United States of America.
The Complainant is the registered proprietor of a large number of Turkish trade mark registrations of or including the marks “vi-ko” and “viko”, the earliest of which is a device mark registration dating back to 1995 in which “VI-KO” is a prominent (but not the only) textual element. The earliest word mark registration for VI-KO is number 99/013199 filed August 11, 1999 and registered March 20, 2001 for goods and services in classes 9, 11 and 35. Subsequently the Complainant applied for and obtained word mark registrations for VIKO.
The Complainant is also the registered proprietor of a large number of international registrations of the same marks, but none of them pre-dates the above-mentioned Turkish registrations.
It appears from Exhibit 12 to the Complaint (comprising 97 pages of international invoices dating from February 24, 2000 to May 6, 2010) that the Complainant re-branded its products from VI-KO to VIKO on a date somewhere between March 2005 and June 2006, but for the purposes of this decision the Panel does not propose to distinguish between VI-KO and VIKO and proceeds on the basis that the Complainant has used VIKO in one shape or form continuously since 1995.
The Complainant’s official website is to be found connected to its domain name, <viko.com.tr>, a domain name which it registered on August 25, 2003.
The Domain Name was registered on November 13, 1998 and has never been used.
The Complainant contends that the Domain Name is identical or confusingly similar to its VI-KO/VIKO trade mark first registered in August 19992. It also contends that the Domain Name is identical to its trade name, VIKO, which it has used since 1995.
The Complainant has been unable to find any registrations of VIKO in the name of the Respondent, contends that the name “Viko” has no meaning in any language and notes that the Respondent is not making any use of the Domain Name. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name.
Finally, the Complainant asserts that the Domain Name was registered and is being used in bad faith. The Complainant refers to the fact that the Respondent has been sitting on the Domain Name for a long time without using it and contends that this is indicative that the Respondent does not have any legitimate interest in the Domain Name, but is aware of the Complainant and is holding on to the Domain Name to prevent the Complainant using it. The Complainant contends that the Respondent’s non-use of the Domain Name is a passive use which is an abusive use along the lines of the passive use described in the well-known Telstra decision (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
Following receipt of the Respondent’s email to the Center dated November 12, 2010, which drew attention to the fact that the Respondent had received offers to purchase the Domain Name, the Complainant submitted that it was clear from that email that the Respondent had no real interest in respect of the Domain Name other than to sell it for a large sum.
The Respondent did not reply formally to the Complainant’s contentions, but as indicated above the Panel has accepted the Respondent’s emails to the Center dated November 12, 2010 and December 16, 2010 in lieu of a formal Response.
The Respondent denies the Complainant’s contentions and contends that it registered the Domain Name as a desirable four-character domain name, its desirability residing in the fact of its four-character composition. The Domain Name was selected along with hundreds of others by way of an online name generator, which randomly generates names, preferably with only a small number of characters, and with many variants. The Respondent registered these domain names (including the Domain Name) as investments, recognizing that they would be likely to appreciate in value given their small size. The Respondent points out that short names such as <beer.com> and <fund.com> have changed hands for USD 7 million and almost USD 10 million respectively.
The Respondent denies that it was aware of the Complainant when it registered the Domain Name and contends that it registered the Domain Name before the Complainant adopted its “Viko” name and even before the Complainant’s earlier “Vi-ko” name. In other words it could not have had the Complainant in mind at the time. The Respondent notes that the Complainant has a website connected to the domain name, <vi-ko.com>, a domain name which was not registered until July 16, 2001.
The Respondent has produced evidence of several other users of “viko” names, thereby establishing that the name is not unique to the Complainant. The Respondent states that several companies have approached it to purchase the Domain Name, some being prepared to pay a six-figure sum for the name.
The Respondent contends that the Complainant is trying to deprive the Respondent of a lawfully acquired and valuable asset simply to satisfy the Complainant’s desire for the commercial advantage that such a domain name represents.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith.
The Domain Name comprises the Complainant’s registered trade mark, VIKO, and the generic “.com” domain suffix.
It being permissible to ignore the suffix when assessing identity and confusing similarity for the purpose of paragraph 4(a)(i) of the Policy, the Panel finds that the Domain Name is identical to a trade mark in which the Complainant has rights.
In light of the Panel’s finding under D below, it is unnecessary for the Panel to address this issue.
For this Complaint to succeed the Complainant must satisfy the Panel that when registering the Domain Name the Respondent had the Complainant in mind and that the Respondent’s purpose was to exploit the Complainant’s trade mark rights in some way or cause damage to the Complainant’s business.
The Respondent denies that it was aware of the Complainant when it acquired the Domain Name and contends that it could not have had the Complainant or its trade mark rights in mind at that time because the Complainant did not acquire any trade mark rights in respect of VI-KO until August 1999 and VIKO until September 2003. The Domain Name was registered in November 19983.
The Complainant asserts that it has been using “Viko” as the dominant element of its trading name (Viko Elektrik Ve Elektronik Endüstrisi Sanayi Ve Ticaret Anonim Şirketi) since 1995 and the Panel has indicated in section 4 above that he is prepared to accept that as a fact. Whether or not that use of “Viko” was sufficient to give rise to unregistered trade mark rights in respect of the name prior to registration of the Domain Name in November 1998, the Panel is unable to say, as there is no material before the Panel to enable the Panel to assess the nature and extent of the Complainant’s business prior to registration of the Domain Name. The significance of this is that if the Complainant’s use of the mark “VIKO” (or “VI-KO”) prior to registration of the Domain Name had not been such as to generate unregistered trade mark rights, it would be difficult to say that the Respondent, in registering the Domain Name, was seeking to take advantage of any such rights.
However, the Panel does not propose to decide the case on the narrow issue as to whether or not there were relevant trade mark rights in existence at that time. Even if, as may have been the case, VIKO was in use as a trade mark in Turkey in November 19984, why should it be that the Respondent, a business based in the United States of America, must have been aware of the Complainant at that time?
Sometimes it is the case that the mark in question is so famous internationally that it is inconceivable that a respondent could have been unaware of it; sometimes it is the case that the name in question is so fanciful and unique that it is inconceivable that the respondent’s adoption of it for the domain name in issue can have been coincidental; sometimes there is specific evidence sufficient to enable a panel to infer knowledge by a respondent. However, there is no evidence before the Panel to suggest that back in November 1998 the Complainant’s name was so well-known internationally that the Respondent must be taken to have heard of it. The name is not so unique that it can only refer to the Complainant. The Respondent has produced evidence to show that it is a mark used by several different entities around the world. Here there is nothing before the Panel to enable the Panel to say that the Respondent’s denial of all knowledge of the Complainant when it registered the Domain Name is not to be believed.
The Respondent states that the Domain Name was selected by an automated online name generator. The Panel sees no reason to disbelieve that explanation. The Respondent makes no secret of the fact that it acquired the Domain Name as part of an exercise in which it acquired hundreds of “short” domain names in the “.com” domain with a view to selling them at a later date. The Policy does not condemn that kind of behaviour provided that the registrant is not targeting the trade mark rights of third parties.
The Complainant prays in aid the apparent fact that the Respondent has never made any use of the Domain Name. So what? There is no obligation to make use of a domain name any more than one is required to take one’s car out of the garage or use one’s telephone. Certainly it is true that non-use can in certain circumstances constitute bad faith passive use, but non-use does not of itself constitute such use. The Complainant cites Telstra Corporation Limited v. Nuclear Marshmallows, supra, but in that case not only was the complainant’s trade mark very well-known when the domain name was registered, but also the registrant had sought to conceal its identity by providing false contact information and had failed to come up with any explanation as to why it had selected the name. The surrounding circumstances were such that the panel in that case was able to infer bad faith intent. That is not this case.
The Complainant also prays in aid Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574. Again, that case could not be more different from the case under consideration. In that case the learned panelist had this to say:
“In the present case the fact that Complainant's name and trade mark is so well and widely known, coupled with the fact that Respondent's mailing address is in the same district as Complainant's business, makes it inevitable that Respondent registered the domain names in full knowledge of Complainant's rights and interests. Certainly there could be no doubt as to Respondent's knowledge at the time of registration of the second domain name. Respondent has offered no explanation as to why the domain names were chosen and no legitimate reason is apparent. The inference may be drawn therefore that in some way Respondent hoped to capitalise on the reputation of Complainant. That conclusion is reinforced by Respondent's subsequent trade mark application in the United States for Complainant's name and trade mark in respect of services of the same description as those for which Complainant and its trade mark are well known.”
The Panel is not persuaded that the Domain Name was registered and is being used in bad faith.
For all the foregoing reasons, the Complaint is denied.
Tony Willoughby
Sole Panelist
Dated: January 26, 2011
1 ozel/01917 dated September 4, 2003 for VIKO
2 In the text of the Complaint the Complainant makes no reference to any of its “VI-KO”-related trade mark registrations predating registration of the Domain Name.
3 The Respondent does not appear to have noticed the Complainant’s 1995 device mark registration incorporating “VI-KO” and “TURKMALI”, which is in exhibit 5 to the Complaint, albeit not referred to in the text of the Complaint.
4 The Complainant has exhibited a certificate from the Turkish Patent Institute to the effect that the Complainant’s VIKO trade mark is a well-known trade mark, but that certificate is dated 2009.