WIPO Domain Name Decision: D2007-0614

WIPO

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Turkcell Iletisim Hizmetleri A.S. v. GWT

Case No. D2007-0614

1. The Parties

The Complainant is Turkcell Iletisim Hizmetleri A.S., Istanbul, Turkey, represented by Istanbul Patent & Trademark Consultancy Ltd., Turkey.

The Respondent is GWT, Istanbul, Turkey.

2. The Domain Name and Registrar

The disputed domain name <turkcell-ditomito.com> is registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 23, 2007. On April 25, 2007, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On April 25, 2007, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 June 1, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was June 21, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 22, 2007.

The Center appointed Nasser A. Khasawneh as the sole panelist in this matter on July 5, 2007. 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 language of the proceeding is English.

4. Factual Background

The Complainant is a leading GSM Operator in Turkey and third in Europe with 30.8 million subscribers. Turkcell is listed on both the Turkish and New York Stock Exchanges and enjoys a world wide reputation. Turkcell has several trademark and service mark registrations in Turkey consisting of the word TURKCELL and others with device; the earliest registration has an application date of September 9, 1996. Turkcell also has a Community Trademark registration for the word mark TURKCELL with application date of January 4, 2002, as well as a United States Trademark registration with registration date of January 20, 2004. Turkcell is also the Trade Name of the Complainant and the Complainant owns the domain names <turkcell.com> and <turkcell.com.tr>.

The Complainant has a capital share frame agreement with TeleUnit, SPA to provide the “ditomito” service, which comprises melodies, ring tones and wallpapers via SMS Messages; TeleUnit is the owner of the “Ditomito” trademark.

The domain name <turkcell-ditomito.com> was registered on February 21, 2007, and points to a website which consists of a blog dedicated to criticizing the Complainant and declaring that “The purpose of this blog is to stop the usurpation of people’s money with Turkcell’s Dito-Mito and other logo melody services” and includes statements such as “Turkcell’s way of money pilfering”. The site includes other critical statements aimed at the Complainant and its business, at one point stating that the Complainant sends “stupid” and “junk” messages to the users of its service.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

1. The disputed domain name <turkcell-ditomito.com> is identical to the Complainant’s trademark TURKCELL, and to the third-party trademark “Ditomito”. The Complainant argues that although the domain name incorporates a third-party trademark, it is still confusing to the customers, who are likely to associate the domain name and the website with the Complainant, especially given that the third-party trademark is used by the Complainant in association with offering one of its services, the Ditomito service, to its customers under a capital share frame agreement with the owner of the “Ditomito” trademark. The Complainant also argues that the addition of the hyphen between the two trademarks does not eliminate the visual impression that the disputed domain name is associated with Complainant’s trademark.

2. The Respondent has no rights or legitimate interests in respect of the domain name <turkcell-ditomito.com>. The Complainant argues inter alia that the Respondent is not using the domain name in connection with a bona fide offering of goods and services. The Complainant also contends that the Respondent was never granted a license or a permission to use the service mark of the Complainant TURKCELL, nor did it apply to get such a permission, and that it has no relationship with the Complainant, who has prior established rights to the service mark TURKCELL, which the Complainant is entitled to protect and control its use on the Internet. Moreover, the Complainant contends that the domain name in question is not a mark by which the Respondent is commonly known, and that the Respondent must be aware of the reputation and goodwill of the Complainant and that any use of its service mark TURKCELL will necessarily infringe on the rights of the Complainant and that the Complainant cannot make use of its service mark in connection with the “ditomito” service it is offering, due to the unavailability of the domain name, which is registered by the Respondent.

3. The Complainant contends that the use of the disputed domain name <turkcell-ditomito.com> in connection with the blog, which is dedicated to criticizing the Complainant and its services is in bad faith and that it tarnishes the reputation of the Complainant and diverts potential customers of the Complainant to the Respondent’s website, to defame and dilute the Complainant and its business. The Complainant also argues that the Respondent registered this domain name to prevent the Complainant from reflecting its service mark in a corresponding domain name.

4. The Complainant contends that the Respondent had knowledge of the ownership rights of the Complainant in the service mark at time of registration of the domain name, and the fact that the Respondent provides false contact information on the website is an indication of bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name is confusingly similar to the trademarks and service marks in which the Complainant has rights. The disputed domain name <turkcell-ditomito.com> fully incorporates the word “Turkcell”, of which the Complainant holds various trademark and service mark registrations, whether as a word mark or accompanied with a device.

The Panel is convinced that the full incorporation of the trademark in the domain name is sufficient to make a finding of confusion between the trademark and the domain name. Moreover, the use of the service mark in this incident in connection with a third-party mark, with whom the Complainant has a contractual relationship to provide a particular service under that party’s trademark, increases the likelihood of confusion, irrespective of whether that third party is party to this proceeding. Previous WIPO UDRP decisions support this view, including the decision in Chevron Corporation v. Young Wook Kim, WIPO Case No. D2001-1142, <chevron-texaco.com>.

Consequently, the Panel finds for the Complainant on the first element of the Policy.

B. Rights or Legitimate Interests

The Complainant contends that the Respondent is not making any commercial use in connection with a bona fide offering of goods and services of the domain name, and that the Respondent was never granted a license or a permission to use the service mark of the Complainant. The Complainant also contends that the Respondent’s use of the domain name for the purposes of a blog aimed at criticizing the Complainant and its services is in bad faith and does not give the Respondent rights or legitimate interest to use the service mark.

The use of a trademark or a service mark in a domain name for the purpose of criticism has in some cases been found by WIPO UDRP panels to constitute a legitimate interest, particularly when such use is not providing any commercial gain to the domain name registrant; such decisions include Bridgestone Firestone, Inc., Bridgestone/Firestone Research, Inc., and Bridgestone Corporation v. Jack Myers, WIPO Case No. D2000-0190, <bridgestone-firestone.net>; TMP Worldwide Inc. v. Jennifer L. Potter, WIPO Case No. D2000-0536, <tmpworldwide.net>; and Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, WIPO Case No. D2000-0477, <walmartuksucks.com> (and other domain names).

However, other WIPO UDRP panels have found that the right to criticize does not extend to registering a domain name that is identical or confusingly similar to the owner’s registered trademark or conveys an association with the mark; see Skattedirektoratet v. Eivind Nag, WIPO Case No. D2000-1314, <skatteetaten.com>; Triodos Bank NV v. Ashley Dobbs, WIPO Case No. D2002-0776, <triodos-bank.com>; and The Royal Bank of Scotland Group plc, National Westminster Bank plc A/K/A NatWest Bank v. Personal and Pedro Lopez, WIPO Case No. D2003-0166, <natwestbanksucks.com>.

In this case, the Panel finds that the Respondent, while it is entitled to express its views regarding the Complainant, this right does not extend to the use of a domain name that completely incorporates the Complainant’s trademark as well as the mark of a business partner of the Complainant, in circumstances in which the Respondent appears to be misrepresenting itself on the website (at least initially) as being the Complainant. In addition, the Respondent, by doing so, prevented the Complainant from exercising its rights to promote its service on the Internet through the registration of a domain name that incorporates both service marks in connection of a particular service it offers. An additional important element in this case is the fact that the Respondent did not qualify his use of the mark with any word or words that clearly identified the domain name as one aimed at criticizing the business of the Complainant. The Respondent simply took the trademark of the Complainant and coupled it with that of a third party with whom the Complainant has a business relationship; such direct appropriation of the Complainant’s mark cannot in the circumstances of this case be seen as creating a right or legitimate interest in the domain name.

Consequently, the Panel finds for the Complainant on the second element of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides a list of indicative circumstances that suggest bad faith registration, however, such list is not exhaustive and a finding of bad faith depends on the circumstances of the case.

In this case, the Panel finds that the Respondent was clearly aware of the goodwill and fame of the service mark TURKCELL and was aware of the use of such mark in connection with the “Ditomito” services. It is also apparent to the Panel that the Respondent has registered this domain name with the primary goal of frustrating the efforts of the Complainant in promoting its services, not only on the Internet, but also through disseminating information that disparages the Complainant and the services it provides.

Moreover, several WIPO UDRP panels have found that the registration of a domain name which incorporates a famous trademark is necessarily in bad faith; such decisions include Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163, <veuveclicquot.org>; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, <telstra.org>; and AT&T Corp. v. John Zuccarini d/b/a Music Wave and RaveClub Berlin, WIPO Case No. D2002-0440, <attwirelesss.com> (and other domain names). The Complainant has demonstrated that its service mark TURKCELL is a widely known mark.

Furthermore, in reaching its decision under this element, the Panel noted the lack of response by the Respondent. While lack of response is not in any way conclusive of bad faith, it is an additional element that adds to the overall case in support of the Complainant’s contentions in this regard.

Consequently, the Panel finds for the Complainant on the third element of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <turkcell-ditomito.com> be transferred to the Complainant.

Nasser A. Khasawneh
Sole Panelist

Dated: July 19, 2007