WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Galatasaray Spor Kulübü Dernegi, Galatasaray Pazarlama A.S.,Galatasaray Sportif Sinai Ve Ticari Yatirimlar A.S. v. Metkom Iletisim A.S.

Case No: D2002-0917

The Complainants are Galatasaray Spor Kulübü Dernegi, Galatasaray Pazarlama A.S. and Galatasaray Sportif Sinai Ve Ticari Yatirimlar A.S. of Turkey.

The Complainants are represented by Ms. Dilek Ustun of the Istanbul Patent & Trademark Consultancy Ltd., Istanbul, Turkey.

The Respondent is Metkom Iletisim A.S. of Istanbul, Turkey.

The disputed domain name is <galatasaray.net> ("Domain Name").

The Registrar is Network Solutions, Inc., of Virginia, United States of America.

This administrative proceeding was brought in accordance with the Uniform Name Dispute Resolution Policy (the "Policy") and the Rules for Uniform Domain Name Dispute Resolution Policy ("Rules") by a Complaint filed with the WIPO Arbitration and Mediation Center (the "Center") on October 4, 2002, by e-mail and October 15, 2002, by hard copy. The Center acknowledged receipt of the electronic copy of the Complaint and requested registrar verification as to the identity of the current registrant of the Domain Name and undertook certain related correspondence with the Complainant concerning the same.

The Center ultimately determined that the Complaint met all the formal requirements of the Policy, and the Rules and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules"), on October 16, 2002, and on the same day, the Center formally notified the Respondent of the Complaint, and the proceedings commenced in accordance with the Rules, paragraphs 2(a) and 4(a). In accordance with the Rules, paragraph 5(a), the due date for Response was November 5, 2002. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on November 6, 2002.

On November 8, 2002, the undersigned was appointed as a Sole Panelist in accordance with paragraphs 6 and 7 of the Rules.

In the view of the Panelist, the proper procedures under the Rules and the Policy were followed, and the following decision is rendered based on the record submitted.

The three Complainants (collectively "Complainants") are Turkish entities associated through common control and contract. Between them they own or operate the famous Turkish football club commonly known as "Galatasaray", including its marks and commercial activities. The full name of the club is Galatasaray Spor Kulübü, which in English means Galatasaray Sports Club. The club was founded in 1905, by pupils at Galatasaray High School. While the club has other activities it is famous for its professional football team which, inter alia, won the UEFA cup for the 1999-2000 season, and is widely known as one of the top football teams in Europe and internationally.

Complainants have registered several trade and service marks in Turkey from May 1999, several of which contain the words "Galatasaray Spor Kulübü", or a variation thereof. Complainants also maintain that the name, along with figurative devices, was "officially accepted as a well-known trademark in Turkey by the Turkish Patent Institute" ("TPE") by publication in the Official Trademark Gazette, Special Edition July 22, 1997, and a TPE decision in 1985. The evidence submitted for this latter proposition (Complainants’ Annex 15) does not permit it to be verified with certainty.

Respondent is apparently a Turkish Company involved in Internet business, and the provision of internet-related business services. Respondent registered the Domain Name in October 1996. On March 12, 1997, Complainants signed an IT Services Agreement with Respondent. Complainants state that they were "forced" to enter into such an agreement with Respondent, or else pay Respondent for running a website under the Domain Name. Respondent terminated the Services Agreement, apparently due to non-payment of the service fee, as of December 1997.

The Domain Name currently resolves to the official website of Complainants, "www.galatasaray.org.tr".

Complainants allege that they have both registered and common law rights in the name "Galatasaray", and that it has achieved such sufficient secondary meaning and association with Complainants that it may not be used by Respondent, even passively, in the Domain Name. Complainants further maintain that Respondent has no legitimate rights in the Domain Name through the terminated IT Services Agreement or otherwise. Complainants conclude that Respondent’s registration and use of the Domain Name was in order to prevent Complainants’ use of the same, was for improper commercial purposes and is otherwise in violation of the Policy.

Respondent has defaulted in this proceeding, and the Panelist is entitled to draw appropriate inferences from this fact and the evidence submitted by Complainants.

The facts and contentions in this case will be further discussed, to the extent necessary or pertinent, in the findings below.

The Policy, in its paragraph 4(a), provides that the Complainants must prove each of the following:

i. The Respondent’s Domain Name is identical or confusingly similar to a trade or service mark in which Complainants have rights; and

ii. The Respondent has no rights or legitimate interests in respect of the Domain Name; and

iii. The Domain Name has been registered and used in bad faith.

It appears that Complainants only clearly registered their marks 3 years after the Domain Name was registered by Respondent. The issue thus arises as to whether Complainants have relevant prior common law rights in the name "Galatasaray" such that Respondent should or could be restrained from using the same in the Domain Name.

Complainant has submitted abundant evidence of the fame and public awareness of the Galatasaray Football Club, and there is no question that "Galatasaray" has an overwhelming secondary association with that Football Club (Galatasaray is also a geographical and high school name). It is not plausible that Respondent registered the Domain Name without awareness of Complainants’ rights in the same, or of its association with Complainants and their football business.

The fact that Complainants’ subsequently registered marks include, inter alia, words such as "sports club" does not diminish the above finding, and the ".net" suffix is to be disregarded for purposes of this finding. This Panel is, here and below, further comforted by the recently published detailed decision of a three-member Panel in the matter of Galatasaray Spor Kulübü Dernegi, Galatasaray Pazarlama A.S., Galatasaray Sportif Sinai Ve Ticari Yatirimlar A.S. v. Maksimum Iletisim A.S., WIPO Case No. D2002-0726 (which transferred the domain name <galatsaray.com>), and follows its legal reasoning to the extent pertinent on the slightly different facts here. See also Cem Yilmaz v. Roman Club International, WIPO Case No. D2000-1541.

Thus the first leg of Complainants’ burden under the Policy is established.

Complainants strongly maintain that Respondent has no bona fide interest in the Domain Name within the meaning of the Policy, and could only have registered it with awareness of Complainants’ rights, and in the hope of improperly profiting therefrom. There is no evidence or inference from the facts or file to suggest that Complainants are incorrect in these assertions.

The only point here worth further mention is that Complainant and Respondent were, apparently, in 1997, bound by an IT Service Agreement which, Complainants indicate, may have involved administering the Domain Name website. The contract submitted does not, at least in its English translation, refer to the Domain Name directly, although Respondent’s offer did quote a fee for each web page they developed for Complainants, and the Contract speaks of Respondent’s providing "a guiding role" in the "establishment of systems that ensure the conduct of club activities". There is nothing in those texts which is suggestive of a licensing or transfer of any marks or rights of Complainants (and Complainants emphatically deny that they even considered the same). Indeed if there is any inference to be drawn from the Contract it is an implicit recognition by Respondent that its internet activities were on Complainants’ behalf, and in application of Complainants’ rights. There is, moreover, no reason or evidence to deny Complainants’ assertion that it was pressured to enter into this, now long-terminated, arrangement or otherwise pay Respondent for running a website under the Domain Name.

It follows that Respondent has no rights or legitimate interest in the Domain Name.

The facts and assertions in the file, together with an intelligent balance of probabilities, all indicate that Respondent registered the Domain Name in bad faith. Again, it is not plausible, or even conceivable, that the Turkish Respondent registered such domain name without knowledge of Complainants’ rights and immensely well-known football business. It could only have been done with, as Complainants assert, an intent to deprive Complainants of the same and/or to profit therefrom commercially. Complainants furthermore assert, without contradiction, that this is precisely what has happened. Specifically, they certify that, due to Respondent’s prior registration of the Domain Name, they were forced to enter into a now abrogated commercial contract with Respondent, and that Respondent has wrongfully failed to transfer such name to them on the pretext that his account with the Registrar was ‘hacked’ and a transfer would therefore be impossible as he was no longer the administrative contact. Such behaviour falls afoul of paragraph 4(b)(i) of the Policy. It is not clear if Respondent has also violated paragraph 4(b)(ii) of the Policy as well, since there is no clear evidence that Respondent has "engaged in a pattern" of such registrations. Complainants also point out that Respondent’s domain name registration address is "N. Rodeo Drive, Istanbul", an obviously phoney Turkish address. While this fact is not dispositive, it is further indicia of bad faith.

Respondents continuing bad faith use of the Domain Name is also established by the above. In particular, the Panelist here agrees with Complainants’ contention that the fact the Domain Name is currently linked to Complainants’ official website does not demonstrate good faith, or palliate Respondent’s continuing bad faith use. It is now widely accepted, through Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case D2000-0003, and its progeny, that even a passive holding of name in which one has no rights may constitute bad faith. Respondents’ holding is more than passive and if the Domain Name is not transferred, Respondent could in the future make other use of it.

The Panel therefore concludes that the Domain Name: (1) is identical or confusingly similar to trademarks in which Complainants have rights; (2) that Respondent has no rights of legitimate interests in the Domain Name; and (3) that Respondent registered and has used the Domain Name in bad faith.

The Registrar is accordingly directed to transfer the Domain Name <galatasaray.net> to the first Complainant, Galatasaray Spor Kulübü Dernegi, or to such other of the Complainant companies as the first Complainant may specify.