WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Hürriyet Gazetecilik ve Matbaacılık Anonim Şirketi v. Moniker Privacy Services / Kemal Demircioglu

Case No. D2010-1941

1. The Parties

The Complainant is Hürriyet Gazetecilik ve Matbaacılık Anonim Şirketi of Istanbul, Turkey, represented by Dericioğlu & Yaşar Law Office, Turkey.

The Respondent is Moniker Privacy Services / Kemal Demircioglu of Istanbul, Turkey.

2. The Domain Names and Registrar

The disputed domain names <hürriyet.com>, <hürriyetemlak.com>, and <hürriyetoto.com> are registered with Moniker Online Services, LLC.

3. Procedural History

Complaints were filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 12, 2010 with regards to each of the disputed domain names, separately. On November 12, 2010, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain names. On November 12, 2010, Moniker Online Services, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in each respective Complaint. The Center sent an email communication to the Complainant on November 15, 2010 with respect to the disputed domain names <hürriyet.com> and <hürriyetoto.com> and on November 19, 2010 with respect to the disputed domain name <hürriyetemlak.com> providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint in respect of the newly provided registrant information. The Complainant filed an amendment to the Complaint with regards to each of the disputed domain names on November 24, 2010. The Complainant further submitted a request to consolidate the proceedings into the instant proceeding on November 30, 2010.

The Center verified that the Complaint together with the amendments to the 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 December 2, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 22, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 23, 2010.

The Center appointed Gökhan Gökçe as the sole panelist in this matter on January 10, 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.

4. Factual Background

The Complainant, Hürriyet Gazetecilik ve Matbaacılık Anonim Şirketi, is one of the biggest group companies of Doğan Sirketler Grubu A.S. Doğan Group's investment portfolio and the Group's traditional core business and media assets have been organized under the Doğan Yayın Holding A.S. (DYH) umbrella since 1997. It operates in print and online media. DYH, Hürriyet, Doğan Gazetecilik and Doğan Burda are publicly traded companies.

DYH publishes eight dailies (Hürriyet, Milliyet, Radikal, Posta, Vatan, Fanatik, Referans and Hürriyet Daily News), 25 periodicals, children and teen magazines, and books.

Operating in Europe from its editorial office and printing center in Mörfelden Walldorf, near Frankfurt, Germany, Hürriyet is the only Turkish newspaper with global access. Hürriyet reached its first readers in Europe in the 1960s and is also a widely-known Turkish newspaper brand in Europe.

The Complainant owns and uses the trademark HURRIYET and has registered a number of trademarks incorporating the word “Hürriyet” as evidenced in the annexes to the Complaint. The Complainant has used its trademark HURRIYET since 1948 and registered it with the Turkish Patent Institute on July 13, 1988. The Complainant registered its trademark HURRIYET with the United States Patent and Trademark Office on November 1, 2005, with Madrid system on December 28, 1994 and as a community trademark with the OHIM on June 25, 1999.

The Complainant is the owner of several domain names which incorporate its trademark. The Complainant registered the domain name <hurriyet.com.tr> on October 31,1996, <hürriyet.com.tr> on December 4, 2006, <hurriyetoto.com.tr> on September 4, 2006, <hurriyetemlak.com.tr> on February 10, 2006, <hürriyetemlak.com.tr> on December 4, 2006, <hurriyetoto.com> on September 2, 2006, <hurriyetemlak.com> on April 12, 2005, and <hurriyet.com> on August 15, 2001 and has been actively using each since their registration.

The registrant of the disputed domain names has been identified by the concerned Registrar, Moniker Online Services, LLC, as being Kemal Demircioglu. The Respondent registered the disputed domain names <hürriyet.com> on July 3, 2003, <hürriyetemlak.com> on April 27, 2006 and <hürriyetoto.com> on April 11, 2007.

5. Parties’ Contentions

A. Complainant

In accordance with paragraph 4(b)(i) of the Policy, the Complainant requests that the disputed domain names <hürriyet.com>, <hürriyetemlak.com> and <hürriyetoto.com> be transferred to the Complainant. The Complainant submits the grounds for these proceedings are listed in paragraph 4(a) of the Policy.

Identical or Confusingly Similar

The Complainant submits HURRIYET is its trademark which has been used since 1948 and has reached a level of recognition so that the public recognises that this Trademark indicates goods or services provided by the Complainant. The Complainant registered its trademark HURRIYET with the Turkish Patent Institute on July 13, 1988. Furthermore, the Complainant registered its trademark HURRIYET with the United States Patent and Trademark Office on November 1, 2005, with WIPO Madrid system on December 28, 1994 and as a community trademark with the OHIM on June 25, 1999 as evidenced in the annexes to the Complaint.

The Complainant notes that it has also registered a number of domain names incorporating its trademark HURRIYET. The Complainant registered the domain name <hurriyet.com.tr> on October 31, 1996, <hürriyet.com.tr> on December 4, 2006, <hurriyetoto.com.tr> on September 4, 2006, <hurriyetemlak.com.tr> on February 10, 2006, <hürriyetemlak.com.tr> on December 4, 2006, <hurriyetoto.com> on September 2, 2006, <hurriyetemlak.com> on April 12, 2005, and <hurriyet.com> on August 15, 2001 and has been actively using each since their registration.

The Complainant notes that while the disputed domain names are automatically diverted to punycode domain names this has no effect as in previous UDRP panels have found that translated punycode and unicode domain names may be equivalent.

The Complainant avers that the disputed domain names were registered well after the Complainant’s trademarks and after the Complainant’s registration of its domain names. The Complainant contends it is inevitable that there is a high possibility of Internet users being confused as the disputed domain names are almost identical to the Complainant’s registered domain names, furthermore, the disputed domain names incorporate its trademark which is recognised as an indicator of goods and services to be offered by the Complainant and have become to be a symbol of quality in the minds of the consumers.

Rights or Legitimate Interests

The Complainant submits that it has actively been using its trademark in domain names and the Respondent’s use of the Complainant’s trademark in the disputed domain names, namely, <hürriyet.com>, <hürriyetemlak.com> and <hürriyetoto.com> takes unfair advantage of the marks, since the Complainant’s trademark registration is previous to the Respondent’s registration of the disputed domain names.

The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain names as the Respondent has no trademark registration to support the disputed domain names and has no personal rights in the name “Hurriyet”.

The Complainant submits it has never granted the Respondent a licence or permission to use the mark HURRIYET or to apply for or use a domain name incorporating that mark. The Respondent has no association with or permission from the Complainant to use its mark in which it had rights prior to the Respondent’s domain name registrations.

The Complainant contends the only conceivable interest and reason for registering the disputed domain names was to create a connection to the Complainant and to take unfair advantage of its trademark HURRIYET.

The Complainant submits there is no evidence that the Respondent used the disputed domain names in connection with a bona fide offering of goods or services, the Respondent is not commonly known by the disputed domain names, and the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names. The Complainant further contends that these factors all indicate the Respondent’s motive in registering the disputed domain names is merely to take unfair advantage of the Complainant.

Registered and Used in Bad Faith

The Complainant contends its trademark HURRIYET has become a symbol of quality and it has become well known and recognised throughout Turkey and Europe. It is clear that the disputed domain names, which are almost identical with the Complainant’s registered domain names and trademark have been registered by the Respondent to gain improper benefit from the Complainant’s trademark’s reputation. Furthermore, the Complainant submits that the Respondent undoubtedly knew the disputed domain names were identical to the Complainant’s trademark at the time of registration.

The Complainant notes that the disputed domain names use Sedo’s Domain Parking System, which has been explained at “www.sedo.com” and states “1) Our system displays relevant ads on your domains 2) Visitors click on advertisements 3) You earn money.” The Complainant contends that the Respondent has placed no content on its website and has registered the domain names to earn “per-click” revenue from passive holding of the disputed domain names.

The Complainant avers that the Respondent registered the disputed domain names primarily for the purpose of disrupting the Complainant’s business by intentionally attempting to attract, for commercial gain, Internet users, searching for the Complainant’s website and by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service offered on the Respondent’s website or location.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. Pursuant to paragraph 5(e) of the Rules, if a respondent does not submit a response, in the absence of exceptional circumstances, the panel shall decide the dispute based upon the complaint.

However, failure to respond in a Policy proceeding does not constitute an admission of any pleaded matter. The Panel will proceed to evaluate the Complainant’s evidence and his own examination of the Respondent’s website against the requirements of paragraph 4(a) of the Policy, Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.

6. Discussion and Findings

In accordance with paragraph 4 of the Policy, the Complainant requests that the disputed domain names be transferred to the Complainant.

The Complainant submits the grounds for these proceedings are listed in paragraph 4(a) of the Policy.

A. Respondent Identity and Consolidation

The Panel notes that in this case the Complainant requested consolidation of the disputed domain names on the basis of identity of the registrant in light of paragraph 3(a) of the Rules. Taking into consideration the identity of the contact details given for the Respondent, the similarity in the composition of the domain names, and proximity of registration dates, the Panel finds that consolidation in this case was appropriate, as were the procedural steps taken by the Center in this regard. See Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281 and Blue Cross and Blue Shield Association, Empire HealthChoice Assurance, Inc. dba Empire Blue Cross Blue Shield and also dba Empire Blue Cross v. Private Whois Service / Search and Find LLC. / Michigan Insurance Associates / 4 Letter Domains Inc. / New York Health Ins., WIPO Case No. D2010-1699.

B. Identical or Confusingly Similar

The Policy simply requires the Complainant to demonstrate that the disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights. The Panel is satisfied that the Complainant is the owner of the trademark HURRIYET as evidenced in the annexes to the Complaint. Although the Complainant contends that its trademark has been used since 1948, as its registration with the Turkish Patent Institute on July 13, 1988 predates the registration of the disputed domain names, the Complainant has established registered trademark rights and there is no need for the Panel to considered earlier pre-registration use of its trademark HURRIYET.

While not dispositive under the first element, the Panel notes the Complainant has registered a number of domain names incorporating its trademark HURRIYET. The Complainant registered the domain name <hurriyet.com.tr> on October 31, 1996, <hürriyet.com.tr> on December 4, 2006, <hurriyetoto.com.tr> on September 4, 2006, <hurriyetemlak.com.tr> on February 10, 2006, <hürriyetemlak.com.tr> on December 4, 2006, <hurriyetoto.com> on September 2, 2006, <hurriyetemlak.com> on April 12, 2005, and <hurriyet.com> on August 15, 2001 and has been actively using each since their registration. It is clear that the only difference between the disputed domain names and the Complainant’s registered domain names is the extension “.com.tr” or alternatively the use of the Turkish “ü” character in place of “u”.

The Panel also notes that the Complainant has registered its domain names with the Turkish Patent Institute. The Turkish Patent Institute states that “.com.tr” is a domain used by persons and legal entities for commercial purposes and official documentation is required which must certify that the domain name applied for is the applicants registered trademark or corporate name. Therefore the procedure is quite stringent and demonstrates that as the Complainant is the registered owner of the referenced “com.tr” domain names it correspondingly lends support to the strength of the mark.

Although the disputed domain names may have at one time resolved to punycode sites, other panels have found that the punycode domain names and the translated unicode domain names may be functionally equivalent, FUJITSU Limited v. tete and Lianqiu Li, WIPO Case No. D2006-0885. In any case, the Panel will look to the unicode form of the disputed domain names to asses confusing similarity.

Following Oki Data Americas Inc. v. ASD Inc., WIPO Case No. D2001-0903, a domain name that reproduces the trademark in its entirety is confusingly similar to the mark. It has been stated in several decisions by other UDRP administrative panels that incorporating a trademark in its entirety into a domain name can be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark. The panel recognises the Complainant’s rights and concludes that the disputed domain names are identical and confusingly similar with the Complainant’s HURRIYET trademark.

The Panel finds that the requirements in paragraph 4(a)(i) of the Policy are fulfilled, consequently, the Panel finds for the Complainant on the first element of the Policy.

C. Rights or Legitimate Interests

In accordance with paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the disputed domain names. Although the Policy states that the Complainant must prove each of the elements in paragraph 4(a), it is often observed that it is difficult for a complainant to prove a negative and it has therefore generally accepted under the Policy that, once a complainant has presented a prima facie case of a respondent’s lack of rights or legitimate interests in a domain name, the burden shifts to the respondent.

The Complainant contends that the Respondent has no right or legitimate interest in the disputed domain names; it has no supporting trademark registration and has neither association to the Complainant, nor a connection to the disputed domain names and is not commonly known by the disputed domain names. The Complainant has not granted the Respondent a licence or permission to use the mark HURRIYET or to apply for or use a domain name incorporating that mark. The Complainant alleges the Respondent’s reason for registering the disputed domain names is to confuse Internet users and to create a connection to the Complainant to take unfair advantage of its trademark HURRIYET.

Furthermore, the Complainant contends that the Respondent is not using the disputed domain names for legitimate noncommercial or fair use of the domain name, without intent for commercial gain or to misleadingly divert consumers as the disputed domain names all resolve in a pay-per-click parking page.

The Panel visited all three of the disputed domain names which resolved in websites offering a number of links including links offering various services. The Panel finds registering a domain name incorporating a well-known trademark and using it to misdirect Internet users to websites with the apparent intention of earning click through revenue does not by itself give rise to a legitimate interest and constitutes commercial use of the domain name. Furthermore, the Panel is of the opinion that the Respondent was fully aware of the Complainant’s established reputation and contends the only conceivable interest and reason for registering the disputed domain names was to create a connection to the Complainant and its design service mark to ensure high volumes of traffic which would generate further income. Although other panels have accepted such use as legitimate, provided the respondent does not use the disputed domain name in order to disrupt the complainant’s business or to mislead Internet users for commercial gain (see Cloer Elektrogeräte GmbH v. Motohisa Ohno, WIPO Case No. D2006-0026; Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912), in this dispute it is clear that the Respondent relies on the fame of the mark and is collecting financial revenue by misleadingly diverting Internet users. Furthermore the Panel notes that as well as links offering goods and services there are also links to websites offering sexual and erotic content, this is discussed in more detail below under the heading of “Registered and Used in Bad Faith”.

The Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to an online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or other location. There is evidence that the Respondent enjoys revenue from click-through adverts on the website to which the disputed domain names resolve as Sedo’s Domain Parking System has been explained at “www.sedo.com” stating “1) Our system displays relevant ads on your domains 2) Visitors click on advertisements 3) You earn money.” In the absence of a Response, the Respondent was unable to demonstrate a right or legitimate interest in the disputed domain names and there is no evidence to suggest that the Respondent, or any business operated by him, is commonly known by the disputed domain names. The Panel is of the opinion that the Respondent’s use of the disputed domain names cannot be considered a bona fide use, or fair or noncommercial use.

Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the disputed domain name. The Complainant has established a prima facie case that the Respondent lacks a right or legitimate interest in the disputed domain names. The Respondent was unable to demonstrate a right or legitimate interest in the disputed domain names. The Panel therefore concludes that the Respondent has not satisfied paragraph 4(c) of the Policy and concludes that the Respondent has no rights or legitimate interests in all three disputed domain names.

The Panel finds that the requirements of paragraph 4(a)(ii) of the Policy are fulfilled and consequently the finds in favour of the Complainant on the second element of the Policy.

D. Registered and Used in Bad Faith

Finally, the Complainant must show that the disputed domain names have been registered and are being used in bad faith under paragraph 4(a)(iii) of the Policy.

The Complainant’s trademark HURRIYET was registered and being used long before the Respondent’s registration of the disputed domain names. Furthermore, as discussed above the Complainant has registered domain names that are almost identical to the disputed domain names.

The Panel finds that before registering the disputed domain names the Respondent was more than likely aware of the Complainant’s trademark. Therefore at the time of registration the Respondent must have been aware that any abusive and commercial use of the domain name would likely result in a violation of the Complainant’s trademark rights, suggesting that there was never an intention of good faith use, Telstra Corporation Limited. v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

There is no reply from the Respondent; while this not conclusive of bad faith it is a consideration to be taken into account to support the Complainants contentions of bad faith. The Respondent opted for a privacy registration and initially tried to conceal his identity and contact details which is also an indication of bad faith.

The Panel visited the disputed domain names which resolve in websites offering a number of links for goods and services as well as links to websites with erotic and/or sexual content. The Panel is of the opinion that the majority of users would assume that the disputed domain names resolve in a site affiliated with the Complainant and misdirection of Internet traffic to other websites suggests bad faith, General Electric Company v. Fisher Zvieli, a/k/a Zvieli Fisher, WIPO Case No. D2000-0377; The Sportman’s Guide, Inc. v. John Zuccarini, WIPO Case No. D2001-0617. Furthermore, the Panel is of the opinion that use of a domain name that is confusingly similar to another’s trademark to display sponsored links to third parties has been regarded to indicate bad faith, McDonald’s Corporation v. ZusCom, WIPO Case No. D2007-1353. Moreover, diverting potential customers looking for the Complainant’s site to a site containing sexual content with the intention to profit further indicates the Respondent’s bad faith, Giampaolo Matteucci v. Webmaster, AWG, WIPO Case No. D2001-1135.

As in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131 after examining all circumstances surrounding the registration and use of the disputed domain names, the Panel finds that the Respondent registered and is using the disputed domain names in bad faith. Accordingly the Panel finds in favour of 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 disputed domain names, <hürriyet.com>, <hürriyetemlak.com> and <hürriyetoto.com> be transferred to the Complainant.

Gökhan Gökçe
Sole Panelist
Dated: January 28, 2011