The Complainants are Dr. Mehmet Kahveci (the “First Complainant”) and HyperLink International LTD (the “Second Complainant”) of Boston, Massachusetts, United States of America represented by Ugur & Gog Attorneys at Law, Turkey.
The Respondents are Anil Soncu / Anil Oncu (the “First Respondent”), Profesyonel (the “Second Respondent”), and Mehmet Budak (the “Third Respondent”) of Besiktas Turkey, Istanbul Turkey and United Kingdom of Great Britain and Northern Ireland respectively.
The disputed domain name <marmaris.com> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 1, 2011. On March 1, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On March 1, 2011, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on March 14, 2011. 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 March 16, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 5, 2011. The Response was filed with the Center on April 5, 2011.
On April 8, 2011, the Complainant transmitted a further communication and on April 11, 2011 the Respondent transmitted an electronic communication in response.
The Center appointed John Swinson as the sole panelist in this matter on April 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.
Few facts are uncontentious in this case.
A trade mark was registered to the Second Complainant on April 1, 2008 in class 35 for providing an online directory information service featuring information regarding tourism, hotels, travel and airlines on the United States Patent and Trademark Office Supplemental Register.
The disputed domain name was registered to the Second Complainant in 1996 and transferred to the First Respondent in 2003 or 2004 by a third party.
The Complainants registered the disputed domain name in 1996 in the name of the Second Complainant.
Two individuals obtained the disputed domain name and 38 other domain names by illegal means from the Complainants. The Complainants’ initiated legal action in Turkey against these individuals. However, by this time, these two individuals had illegally sold several of the domain names, including the disputed domain name. The Complainants’ believe the Respondents purchased the disputed domain name from these two individuals. Thus, the disputed domain name was illegally transferred to the First Respondent in 2004. The domain names the two individuals did not sell were transferred back to the Complainants, and criminal investigations were initiated against them in Turkey and by the FBI in the United States.
The Complainants commenced legal action against the First Respondent in the United States of America after the disputed domain name was transferred to him. The Complainants also have been pursuing legal action against the two individuals and those who have acquired domain names from the two individuals since 2003.
The trade mark MARMARIS.COM is registered to the Second Complainant in the United States on the Supplemental Register. This trade mark was registered on April 1, 2008. The Second Complainant has trade mark rights in respect of the disputed domain name.
The Complainants have spent considerable resources to establish and maintain a network of websites for e-commerce in the United States and Turkey.
The Respondents do not have any rights or legitimate interests in the disputed domain name as the disputed domain name was hacked and was registered under fake names and telephone numbers and addresses for a considerable amount of time and it is still registered under a fake address.
The First Respondent hacked the email address of the Complainants illegally to register the disputed domain name under his own name.
The incorrect information under which the disputed domain name was registered is indicative of bad faith.
The Complainants’ legal representatives have attempted to contact the First Respondent, but contact information is incorrect. An agent of the First Respondent also offered to sell the disputed domain name to the Complainants for US$4,000.
The Complainants request that the disputed domain name be transferred to the Complainants.
The First Respondent purchased the disputed domain name in 2003 for $3,000 from one of the individuals whom the Complainants claim illegally obtained their domain names. (References below to the Respondent are references to the First Respondent.)
The Respondent is suspicious of the authenticity of documents referred to by the Complainant and annexed to the Complaint.
The Respondent transferred the disputed domain name to a new registrar in 2005 as he wanted to manage all his domain names through the same provider.
The trade mark registered to the Second Complainant was registered in 2008. This is irrelevant to these proceedings. Only registration of the disputed domain name in Turkey would be relevant.
The Respondent has been unable to change his relevant contact information and did not want to share accurate information originally as he had suffered abuses in the past from potential buyers for the disputed domain name.
The Respondent has a project for which he wishes to apply the disputed domain name. He has not been able to effect this as the disputed domain name is “on hold”.
The Respondent has been using the disputed domain name as a simple website for many years.
The legal representatives of the Complainants offered to purchase the disputed domain name from the Respondent.
The Second and Third Respondents did not file a Response.
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The onus of proving these elements is on the Complainant.
There are several procedural issues that require consideration.
The Complainants transmitted a Reply by email on April 8, 2011. The First Respondent submitted a response to the Reply on April 11, 2011 via email. There is no obligation on the Panel to consider this information and it is at the Panel’s discretion as to whether it wishes to consider these communications. The Panel finds that the information contained in these Supplemental Filings add nothing to the Complaint and Response and will not impact the finding of the case. As such, the Panel will not consider this information.
No information is known about the Second and Third Respondents. Their relevance to these proceedings is unclear. No submissions are made specifically in relation to these Respondents and they are not the current owners of the disputed domain name. The Second and Third Respondents did not file a Response. As such, the Panel does not make any finding against or in relation to the Second or Third Respondents.
Paragraph 18(a) of the Policy states:
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.
From the party’s submissions, there are legal proceedings between the parties but it is unclear whether there are pending legal proceedings in respect of the disputed domain name. Accordingly, the Panel decides to proceed to a decision.
The Second Complainant is currently the registered owner of a trade mark, MARMARIS.COM on the United States Patent and Trademark Office Supplemental Register.
The United States Trademark Act provides for the registration of trademarks on either the Principal or Supplemental Registers. “Descriptive” marks, those that immediately convey information about a quality or characteristic of a product or service, are registrable on the Supplemental Register. TMEP § 202.02(b). The Principal Register is designed for arbitrary and suggestive terms, and for “descriptive” marks that have acquired distinctiveness. The Supplemental Register is reserved for marks “capable of distinguishing applicant’s goods or services not registrable on the principal register . . .” 15 U.S.C. § 1091(a).
Registration on the Principal Register creates a presumption of validity under United States law (see Uniroyal Engineered Products, Inc. v. Nauga Network Services, WIPO Case No. D2000-0503). However, unlike Principal Register registrations, Supplemental Register registrations do not enjoy any prima facie or conclusive presumptions of validity or exclusive right to use the mark. 15 U.S.C. § 1115(a). Registration of a mark on the Supplemental Register has been held to constitute an admission that the mark is merely descriptive (e.g., Clairol Inc. v. Gillette Co., 389 F2d 264 (2d Cir. 1968)). However, registration of a mark on the Supplemental Register does not constitute an admission that the mark has not acquired distinctiveness (15 U.S.C. § 1095; see America’s Community Bankers Corporation v. Charles R. Wing and Wing Broadcasting, Inc., WIPO Case No. D2000-1780).
The Complainants may well have common law trade mark rights that predate the transfer of the disputed domain name. However, the Complainants do not specifically claim such rights. The registrations and the Complaint both suggest potential commercial use dating from the 1996. Unfortunately, there is no specific evidence of such use or the date that such a mark may have become distinctive and acquired the status of a common law trade mark.
Although the rights conferred by registration on the Supplemental Register are not as robust as those conferred by other forms of trade mark registration, the Panel finds that such registration is sufficient to satisfy the requirement of a trade mark under the Policy. As such, the disputed domain name is identical to the trade mark and thus this element is satisfied.
Marmaris is a place in Turkey. There have been a number of prior decisions under the Policy regarding place names. Because the Complainants have a registered trade mark, the Panel does not need to consider the difficult issues raised in such decisions.
It is worth noting that in any event, the registration of the trade mark occurred subsequent to the transfer of the disputed domain name to the Respondent and although not relevant to this element, is relevant to the element of bad faith (see e.g., Reckitt Benckiser Plc v. Eunsook Wi, WIPO Case No. D2009-0239).
Pursuant to paragraph 4(c) of the Policy, there are a number of ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name. The complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent is using the website to offer information and services related to the common meaning of the disputed domain name, that is, information about Marmaris in Turkey.
Accordingly, paragraph 4(c)(i) of the Policy applies. This provides that a respondent may demonstrate rights or legitimate interests in a domain name by use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services, before any notice to it of the dispute. That is the situation here.
Accordingly, the Complainant has failed in relation to this element.
There is no evidence of bad faith by the Respondent.
The disputed domain name was transferred to the Respondent prior to the Complainant’s trade mark registration being filed. In the circumstances here, where there is no other evidence of trade mark rights, this is indicative of a lack of bad faith by the Respondent.
Generally, when a domain name is transferred to a respondent before a complainant’s trade mark right is established, the transfer would not have been in bad faith because the respondent necessarily could not have contemplated the complainant’s rights given they did not exist at the time (see e.g., meeza QSTP-LLC v. Torsten Frank / medisite Systemhaus GmbH, WIPO Case No. D2009-0943). This general presumption can be applied here to indicate an absence of bad faith on the part of the Respondent. Because Marmaris is a place name, this general presumption has further strength in this case.
Further, there is nothing indicating that the Respondent had knowledge of the means by which the vendor of the disputed domain name came into possession of it. Allegations were made that the person from whom the Respondent purchased the disputed domain name had stolen the disputed domain name from the Second Complainant. There is no evidence before the Panel to show that the Respondent knew or should have suspected that the disputed domain name may have been stolen (if that in fact was the case) or that the Complainant had a claim over the disputed domain name.
No instances of bad faith set out in paragraph 4(b) of the Policy are satisfied and there are no other circumstances sufficient to warrant a finding of bad faith on the part of the Respondent.
The Panel notes that there appears to be a larger issue of illegal hacking and other legal disputes between the parties. But this is not the appropriate forum to deal with such issues.
For all the foregoing reasons, the Complaint is denied.
John Swinson
Sole Panelist
Dated: April 27, 2011