WIPO Domain Name Decision: D2008-1074

WIPO

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Avm Mfi Ortaklari Proje Yonetimi A.S. v. Yusuf Esenkal

Case No. D2008-1074

1. The Parties

The Complainant is Avm Mfi Ortaklari Proje Yonetimi A.S., Istambul, Turkey, represented by Ozden Law office, Turkey.

The Respondent is Yusuf Esenkal, , Virginia, United States of America.

2. The Domain Name and Registrar

The Disputed Domain Name <avmmfipartners.com> is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 15, 2008. On July 15, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Disputed Domain Name. On July 15, 2008, 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. 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 July 18, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 7, 2008. On July 21, 2008, the Complainant supplemented his Complaint with providing updated Trademark Registrations. On July 21, 2008, the Respondent communicated his response to the Center via e-mail, and on July 22, 2008, the Complainant responded to the e-mail received by the Respondent.

The Center appointed Nasser A. Khasawneh as the sole panelist in this matter on August 20, 2008. 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.

4. Factual Background

The Complainant, Avm Mfi Ortaklari Proje Yonetimi A.S (Avm Mfi Partners Project Management Joint Stock Co.), is a joint stock company incorporated under the laws of the Republic of Turkey, and is specialized in the organized retail market. The Complainant holds several trademark/ service marks registrations in Turkey for “avm” and “avmpartners” as of April 20, 2007 and have filed applications for the service marks AVMMFI and AVMMFIPARTNERS on March 6, 2008, after some of the Complainant’s shares were acquired by mfi arcaden Beteiligungusgesellschaft mbH and mfi Grundstick GmbH (together “mfi”). The Complainant operates under the trade name Avm Mfi Ortaklari Proje Yonetimi A.S (Avm Mfi Partners Project Management Joint Stock Co.) and owns the domain name <avmmfipartners.com.tr> as of February 15, 2008.

The Disputed Domain Name <avmmfipartners.com> was created on February 21, 2008 by the Respondent and resolves to a website of another Turkish company called “Alkas Consulting” specialized in providing consultancy for clients regarding shopping centers projects.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

- Although the application for the trademark that is identical to the Disputed Domain Name “avmmfipartners” has been filed for registration after the date of creating the Disputed Domain Name, the Disputed Domain Name still is identical to the trade name of the Complainant, and the clientele of the Complainant will definitely associate the Disputed Domain Name with the Complainant, considering that the Domain Name or the trademark under registration, stem from the previous trademarks held by the Complainant “avm” and “avmpartners”, which have been widely used in Turkey since 2006, and also considering the recent acquisition of the Complainant’s shares by mfi. Moreover, the Disputed Domain Name fully incorporates the Complainant’s trademarks “avm” and “avmpartners”, and as such is confusingly similar to the Complainant’s trademarks/ service marks.

- The Respondent has no rights or legitimate interest in the Disputed Domain Name, considering the fact that the Respondent is not a member or licensee of the Complainant and has not received any permission or consent to use the service marks of the Complainant. Moreover, the Respondent is not commonly known by the name “avmmfipartners”. Also, there is no evidence of the Respondent’s use, or demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services. In fact the Disputed Domain Name resolves to the website of one of the biggest competitors of the Complainant in Turkey “Alkas Alışveriş Merkezleri Danışmanlık Ltd.Şti.” at “www.alkas.com.tr”. The Respondent is not only attempting to attract and divert the clientele of the Complainant to the competing company, but such illegitimate use would tarnish the marks that are held and protected by the Complainant so as to create an impression of association with the Complainant and risks the Complainant compromising its goodwill; It is inconceivable that the Respondent could make any active use of the Disputed Domain Name without creating a false impression of association with the Complainant.

- The Respondent has registered and is using the Disputed Domain Name in bad faith, as the Respondent has obviously registered the Disputed Domain Name to take advantage of the confusion between the Domain Name and any potential Complainant’s right that would inevitably arise as a result from the acquisition that occurred January 30, 2008, as the Respondent must have been aware of such acquisition and registered the Disputed Domain Name to commercially gain undue advantage and income. Moreover, the Respondent had approached the Complainant through a third party with an offer for the sale of the Disputed Domain Name on March 18, 2003; the Complainant is confident that the Respondent was behind the offer as no one else will have access to the Disputed Domain Name in order to effect the transfer.

B. Respondent

The Respondent contends the following:

- The word “avm” stands for “shopping center” in Turkish language and cannot be a trade mark.

- the Respondent has legitimate business associated with the word “avm” as explained above, as he professionally works in shopping center management business and has several domain names / websites starting with the word “avm” (i.e. http://www.avmy.org)

- The Respondent has intended to use the Disputed Domain Name <avmmfipartners.com> as a blog, informing people how to manage a shopping centre.

- the Complainant’s Trademark / Service marks are only registered in Turkey, and the domain name that the Complainant owns, is therefore, with the ccTLD suffix “.tr”, <avmmfipartners.com.tr> and that the Complainant’s previous domain name was also registered only with the ccTLD suffix “.tr”, <avmpartners.com.tr>, and the more general domain name <avmpartners.com> was owned by another person.

6. Discussion and Findings

According to the Policy, the Complainant must prove each of the three elements referred to in paragraph 4(a) of the Policy in order to have a favorable order, namely that: (i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; (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.

A. Identical or Confusingly Similar

The Panel finds that the Disputed Domain Name is confusingly similar to the trademarks/ service marks to which the Complainant has rights that predate the registration of the said Disputed Domain Name. Moreover, the Panel finds that the Disputed Domain Name is identical to the Complainant’s trade name and the more recent trademarks, for which registration has not yet been completed.

The Respondent’s arguments that the word “avm” may not be registered as part of a trademark does not stand considering that the Complainant did provide certificates of registration for trademarks with the word “avm” incorporated therein (AVM and AVMPARTNERS) the provided records suggests that.

Moreover, the Respondent’s argument that the Complainant only hold trademark/ service mark registrations in Turkey, is irrelevant for the purposes of the UDRP; for the purpose of establishing rights in a trademark, the Policy requires that the Complainant demonstrates that it has rights to a trademark or a service mark, without reference to the fame of said mark, or the number of trademark registrations, or the geographic arera in which the mark registration is obtained.

Therefore, the Panel finds that the Complainant has satisfied the first element of the Policy.

B. Rights or Legitimate Interests

Based on the available facts, the Respondent failed to show that he has been commonly known by the Disputed Domain Name, nor that the Respondent holds any trademark or service mark rights in the name. The fact that the Respondent operates a separate website under the domain name <avmy.org>, which resolved to an informative website is not of relevance to the analysis of this element, in so far as it concerns the Disputed Domain Name. Apart from the other website, the Respondent has not provided any evidence giving rise to a right or legitimate interest in the Disputed Domain Name. The Complainant showed that the Respondent has neither a license nor any other permission to use the Disputed Domain Name. It is clear to the Panel that the Respondent has not demonstrated any bona fide offering of goods and services by its using the Disputed Domain Name, particularly in light of the fact that the Disputed Domain Name currently resolves to the website of a major competitor of the Complainant’s.

Moreover, the Panel is convinced, on a balance of probabilities, that the Respondent, at the time of registering the Disputed Domain Name, must have had knowledge of the acquisition of the Complainant’s shares by mfi, and registered the Disputed Domain Name in order to capitalize on such acquisition.

In light of all of these factors, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

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, on a balance of probabilities, that the Respondent must have been aware of the goodwill and reputation of the Complainant’s service marks and of the acquisition that took place, as well as the likelihood that such acquisition would result in a combined trademark/ service mark, and that the Disputed Domain Name was registered by the Respondent with this in mind.

The Panel, in accordance with previous decisions issued under the Policy, is of the opinion that actual and constructive knowledge of the Complainants’ trademark at the time of the registration of the Disputed Domain Name may be considered as an inference of bad faith (see Madrid 2012, S.A. v. Scott Martin-MadridMan Websites, WIPO Case No. D2003-0598).

The Panel is of the view that the Respondent has registered this Disputed Domain Name primarily for the purpose of preventing the Complainant from using its corresponding service mark in the Disputed Domain Name and for diverting business from the Complainant to its primary competitor by having the Disputed Domain Name resolve to the website of such competitor. Such fact supports a finding of registration and use in bad faith. (see Go Daddy Software, Inc. v. Daniel Hadani, WIPO Case No. D2002-0568, and Airbus Deutschland Gmbh v. DOMAIN-NAME-4-SALE, WIPO Case No. D2005-0092, and Adecco S.A. v. William Vaughan, SMTM Investments Ltd, WIPO Case No. D2008-0095, and others).

Moreover, the fact that the Complainant has received an offer to it to purchase the Disputed Domain Name may further support a finding of bad faith registration and use, in so far as it suggests that the Respondent may also have registered the Disputed Domain Name with the hope to gain valuable consideration in excess of its out-of-pocket costs directly related to the Disputed Domain Name.

In view of the above, and on a balance of probabilities, 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, <avmmfipartners.com> be transferred to the Complainant.

Nasser A. Khasawneh
Sole Panelist

Date: September 8, 2008