WIPO Domain Name Decision: D2007-1146

WIPO

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Adilna Ilac Sanayi Ve Ticaret A.S. v. Serhat Karadag

Case No. D2007-1146

1. The Parties

The Complainant is ADİLNA İLAÇ SANAYİ VE TİCARET A.Ş., represented by ARAZ ÜNLÜESER UZUN of Istanbul, Turkey.

The Respondent is Serhat Karadag of Denizli, Turkey.

2. The Domain Name and Registrar

The disputed domain name <adilna.com> is registered with Register.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 2, 2007. On August 7, 2007, the Center transmitted by email to Register.com, Inc. a request for registrar verification in connection with the domain name at issue. On August 7, 2007, Register.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. On August 13, 2007, 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 August 13, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was September 2, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 4, 2007.

The Center appointed Dilek Ustun as sole panelist in this matter on September 12, 2007. The Panel finds that it was properly constituted and 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.

4. Factual Background

The Complainant and the Turkish Company Sanovel İlaç Sanayi ve Ticaret A. Ş. (“Sanovel”) are two joint stock companies duly established in the Republic of Turkey engaged in business in, inter alia, the pharmaceutical industry. The Complainant and Sanovel are sister companies, wholly owned by the same group of individuals.

The Domain Name, which was dormant since its registration by the Respondent in October 23, 2006, became one of the central instruments for public assaults on Sanovel and the Complainant.

The Complainant ADİLNA İLAÇ SANAYİ VE TİCARET A.Ş. has the following trademarks registered by the Turkish Patent Institute and the United States Patent and Trademark Office.

adilna – Registered in the Republic of Turkey in 1993 by the Turkish Patent Institute, Trademark No. 146703.

adilna – Registered in the Republic of Turkey in 1993 by the Turkish Patent Institute, Trademark No. 146740.

adilna – Registered in the Republic of Turkey in 2005 by the Turkish Patent Institute, Trademark No. 2005-54387.

adilna – Registered in the United States of America in January 30, 2007 by the U.S. Patent and Trademark Office, Reg. No. 3,204,166.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

1. The disputed domain name <adina.com> is identical to the Complainant’s ADILNA trademark.

2. The Respondent has no rights or legitimate interests in respect of the <adilna.com> domain name. 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 Complainant’s ADILNA trademark, nor did it apply for such permission, and that it has no relationship with the Complainant, who has prior established rights to the trademark and company name ADILNA, 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 trademark 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 ADILNA trademark will necessarily infringe on the rights of the Complainant and that the Complainant cannot make use of its trademark 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 <adilna.com> in connection with a forum site (“http://www.aboutus.org/Adilna.com”), 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, and further that it defames Complainant and dilutes its business. The Complainant also argues that the Respondent registered this domain name to prevent the Complainant from reflecting its trademark in a corresponding domain name.

4. The Respondent registered the domain name in October 2006, primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant for valuable consideration.

5. The Complainant contends that the Respondent had knowledge of the ownership rights of the Complainant in the trademark at time of registration of the domain name.

B. Respondent

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

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “A panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) [that the] domain name [registered by the Respondent] is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights; and

(ii) [that the Respondent has] no rights or legitimate interests in respect of the domain name; and

(iii) [that the] domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has trademark and trade name rights in the name “ADILNA”. Since the domain name comprises the Complainant’s trademark and the generic “.com” TLD suffix, the Panel finds that the domain name is identical to a trademark/service mark and a trade name in which the Complainant has rights.

The Panel concludes that the domain name <adilna.com> is identical to Complainant’s trademark and tradename and as a consequence, the action brought by Complainant meets the requirement of paragraph 4(a)(i) 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 trademark of the Complainant. The Complainant also contends that the Respondent’s use of the domain name for the purposes of a forum site aimed at criticizing the Complainant is in bad faith and does not give the Respondent rights or legitimate interest to use the trademark.

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 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 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, e.g., 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 is entitled to express its views regarding the Complainant, however this right does not extend to the use of a domain name that completely incorporates the Complainant’s trademark , 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 goods and services on the Internet through the registration of a domain name that incorporates its trademark in connection with particular goods and services it offers. An additional element in this case is the fact that the Respondent did not qualify his use of the trademark 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; 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 each case.

In this case, the Panel finds that the Respondent was clearly aware of the goodwill and fame of the ADILNA trademark. 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 goods and services, not only on the Internet, but also through disseminating information that disparages the Complainant and the services it provides.

Furthermore, in reaching its decision under this element, the Panel notes 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.

The Panel, in accordance with previous decisions issued under the Policy, is of the opinion that actual knowledge of Complainant’s trademark at the time of the registration of the disputed domain name may be considered an inference of bad faith (see Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).

It is clear that Respondent has not demonstrated any bona fide offering of goods and services using the disputed domain names. Nor has Respondent shown that it has been known by the disputed domain name.

Clearly, too, the Respondent has registered this domain name with the primary goal of frustrating the efforts of the Complainant in promoting its goods and services, not only on the Internet, but also through disseminating information that disparages the Complainant and the services it provides.

In view of the above, the Panel finds that the Respondent has registered and used the domain name in bad faith, in accordance with paragraph 4(a)(iii) 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 <adilna.com> be transferred to the Complainant.

Dilek Ustun
Sole Panelist

Dated: October 5, 2007