The Complainants are Turkcell Iletisim Hizmetleri A.S. and Turktell Bilisim Servisleri A.S of Istanbul, Turkey, represented by Istanbul Patent & Trademark Consultancy Ltd., Turkey.
The Respondent is Turkcell Fizy of Istanbul, Turkey.
The disputed domain name <turkcellfizy.com> is registered with GoDaddy.com, Inc (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 12, 2011. On July 12, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 14, 2011, the Registrar 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” 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 July 15, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 4, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 9, 2011.
The Center appointed Selma Ünlü as the sole panelist in this matter on August 22, 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.
The facts stated in the Complaint are as follows:
(1) The First Complainant, Turkcell Iletisim Hizmetleri A.S. (“Turkcell”) is the leading GSM based mobile operator company in Turkey and the third biggest GSM operator in Europe established in 1994 and having agreements with 541 operators in 193 countries as of March 23, 2007.
(2) The service marks containing TURKCELL numbered 173130 and 174691 were registered on September 9, 1996 before the Turkish Patent Institute by the First Complainant (“TPI”). Apart from this, the First Complainant has various trade and service marks before the TPI containing TURKCELL.
(3) The First Complainant is also the registered owner of Community Trademark No. 002525194 for TURKCELL ILETIŞIM HIZMETLERI A.S, registered on June 6, 2003 before the Office for Harmonization in the Internal Market (OHIM).
(4) “Turkcell” is the core element of the tradename of the First Complainant.
(5) The TPI declared the TURKCELL trademark as a “well-known mark” in 2008.
(6) The First Complainant has a registered domain name as <turkcell.com.tr> since on November 10, 1996 and is still using it.
(7) The Second Complainant, Turktell Bilisim Servisleri A.S. (“Turktell”) is the subsidiary company of the First Complainant established in 2000 for providing cyber and digital services and a venture capital company for new projects for the First Complainant’s group companies.
(8) Fizy is a recognized international online music database platform created under <fizy.com> domain name by three Turkish entrepreneurs. The domain name has been used continuously since 2008 and it gained Mashable Award in the category of “Best Music Discovery Service”. It has more than one million subscripted users, while subscription is not necessary to use the website.
(9) Fizy, all with the domain names, trademarks, patent and copyrights, etc., was bought by the First Complainant through its group company Turktell (the Second Complainant) on January 28, 2011.
(10) The trademark FIZY was registered in the name of a third party, Fizy Medya Internet ve Bilişim Teknolojileri Limited Şirketi on March 20, 2009; however, it was assigned to the Complainants by the assignment agreement dated January 28, 2011.
(11) The disputed domain name <turkcellfizy.com> was created on January 28, 2011, nearly 10 years after the domain name <fizy.com> was registered on November 27, 2001.
Panel’s observation of the case file reveals the following:
(1) The disputed domain name is inactive and there was no content provided, when the Panel visited the Respondent’s website on September 5, 2011.
(2) The Complainants are the new owner of the FIZY trademark and the domain names containing the term “fizy” such as <fizy.com>, <fizy.net>, <fizy.org> and <fizy.com.tr>.
(3) The web site at “www.fizy.com” is a well-recognized and preferred web page to discover music.
(4) The disputed domain name was registered under a false identity and the given contact details do not refer to a real address and telephone number. However, as it is understood from the emails sent to the First Complainant regarding the transfer of the disputed domain name, the owner of the disputed domain name is Cuneyt Korkmaz who appears to be located in Turkey.
(5) Cuneyt Korkmaz who appears the real owner of the domain name, sent an e-mail to the First Complainant and demanded 5.000 Turkish Liras for the assignment of the disputed domain name.
The Complainants request the Panel to issue a decision transferring the disputed domain name to the First Complainant on the following grounds:
(i) The disputed domain name is identical to the trade and service marks in which the Complainants have rights;
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name was registered and is being used in bad faith.
The Complainants allege that the disputed domain name is identical to the trade/service marks in which the Complainants have rights.
The Complainants state that the disputed domain name <turkcellfizy.com> is the combination of Complainants’ two different trademarks FIZY and TURKCELL. The Complainants argue that the combination of its different trademarks fails to preclude the confusion and creates a likelihood of confusion in the minds of the consumers as the website operated or affiliated by the Complainants.
The Complainants mentions Société des Produits Nestlé SA v. Stuart Cook, WIPO Case No. D2002-0118 which sets forth that “[a]lthough the combination of the two signs is not registered or used as a trademark, the contested domain names must nevertheless be considered confusingly similar to the marks in which the Complainant has rights. This is in particular true as far as the mark NESTLE is concerned since this mark is included in its entirety as the first and dominant part of the domain names.” As a result the Complainants would like to emphasize that although FIZY and TURKCELL trademarks are not registered in combination as a trademark, the disputed domain name should be accepted as similar.
The Complainants allege that the Respondent has no prior rights or legitimate interests in respect of the disputed domain name since the Respondent is not licensed or permitted to use the Complainants’ service mark. Also, the Complainants argue that the disputed domain name has been registered following the Complainants’ acquisition of FIZY.
They further maintain that the Respondent has not used the disputed domain name in connection with a bona fide offering of goods and services. The Complainants also allege that the disputed domain name has been directed to the Complainants’ “www.fizy.com” website.
The Complainants further allege that the disputed domain name is not a mark by which the Respondent is commonly known. The Complainants refer to the Compagnie de Saint Gobain v. Com- Union Corp., WIPO Case No. D2000-0020 and states that the Respondent is not an institution and has never been licensed and granted permission by the Complainants to use its marks.
The Complainants allege that the disputed domain name was registered primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of the trademark for valuable consideration in excess of the domain name registrant’s out-of-pocket costs. The Complainants state that the Respondent sent an e-mail to the CEO of the Complainants to transfer the disputed domain name. Following this e-mail the Complainants asked his demand and the Respondent replied that he could sell the disputed domain name to TURKCELL in return for 5.000 Turkish Liras.
The Complainants mention several WIPO UDRP Cases where the panel considered these kinds of conduct as “opportunistic bad faith” indications: Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230; Ticketmaster Corporation v. Spider Web Design, Inc., WIPO Case No. D2000-1551. Also the Complainants refer to Research In Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492 where it was noted that “when a domain name is so obviously connected with a complainant, the very use of the domain name by a registrant with no connection to the Complainant suggests ‘opportunistic bad faith’”.
Additionally, the Complainants refer to the panel finding regarding to bad faith in the Kastaş Kaucuk Sanayi Ve Ticaret A.S v. Kwon-Rye Kim, WIPO Case No. D2009-1190: “Further, the Respondent offered a price of 12,100 euros to sell the disputed domain name, which is clearly in excess of reasonable costs and expenses and an amount intended for profiteering. While the Respondent notes that the offer was made in response to an inquiry from the Complainant, it is not relevant who commenced the contact and negotiations.”
Also the Complainants state that the Respondent cannot ignore the fact that the First Complainant is a well-recognized company in Turkey and its trade and service marks are commonly known; that <fizy.com> is a well-known domain name; and that the Respondent was aware of that marks when it registered the disputed domain name.
Consequently the Complainants mention Parfums Christian Dior S.A. v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226 and states that the awareness at the time of the registration of the disputed domain name is to be considered an inference of bad faith.
The Respondent did not reply to the Complainant’s contentions.
In relation to the multiplicity of the Complainants, it is accepted by UDRP panels that multiple complainants who are the part of a single entity and have an interest in a trademark may submit a unitary complaint against the Respondent. See, e.g., Media West-CPI, Inc., Media West-DMR, Inc., Media West-GMP, Inc., Media West-GSI, Inc., Media West-PNI, Inc., Media West-PNJ, Inc., Media West-SJC, Inc., Media West-NPP, Inc., Cape Publications, Inc., Des Moines Register and Tribune Co., Gannett Satellite Information Network, Inc., Multimedia Holdings Corp., Phoenix Newspapers, Inc., Gannett Co., Inc. v. Unasi, Inc., WIPO Case No. D2005-1336.
Therefore, the Panel believes that, due to the common grievance of the Complainants it is procedurally efficient and equitable to allow the multiplicity of the Complainants in this proceeding.
According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint where no Response has been submitted.
In accordance with paragraph 4(a) of the Policy, the Complainants must prove that each of the three following elements is satisfied:
(i) The disputed domain name is identical or confusingly similar to the trademark in which the Complainants have rights; and
(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.
Paragraph 4(a) of the Policy states that the Complainants have the burden of proving that all these requirements are fulfilled.
The test for identity or confusing similarity under the Policy, paragraph 4(a) (i) is typically limited in scope to a direct comparison between a complainant’s trademark and the textual string which comprises the disputed domain name. In this case, the Complainants have demonstrated their earlier rights in the marks TURKCELL and FIZY.
The disputed domain name <turkcellfizy.com> is the combination of TURKCELL and FIZY trade and service marks of the Complainants. It is clear that the use of the combination of well-known trademarks of the Complainants creates a likelihood of confusion in the minds of Internet users. See, e.g. Credit Industriel et Commercial S.A. v. Richard J., WIPO Case No. D2005-0569 and Société des Produits Nestlé SA v. Stuart Cook, WIPO Case No. D2002-0118. Also see, Mittal Steel Technologies Limited, Mittal Steel Company NV and Arcelor SA v. Jean Frederic Serete, WIPO Case No. D2006-1353 where the panel concluded that “[t]he contested domain name <mittal-arcelor.info> incorporates a combination of the Complainants’ registered trademarks MITTAL and ARCELOR. The Panel finds that for the purpose of these proceedings the domain name is confusingly similar to trademarks in which the Complainants have rights.”
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainants’ marks TURKCELL and FIZY and thus, the first requirement under paragraph 4(a) of the Policy is satisfied.
Paragraph 4(c) of the Policy states that, a respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The burden of proof lays on the Complainants who must demonstrate a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. Once the Complainants have made out a prima facie case, then the Respondent may, by, inter alia, showing one of the above elements, prove rights or legitimate interests in the disputed domain name.
The Panel finds that the Complainants have proved rights in the TURKCELL and FIZY marks. Also, the Panel believes that the Complainants sufficiently demonstrate the fact that the Respondent does not have rights or legitimate interests in the disputed domain name for the purpose of the Policy. The Complainants have not granted the Respondent any right or license to use the Turkcell and Turktell’s mentioned trade and service marks.
The Panel also finds that the Respondent has not provided evidence of the circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name. Thus, the Panel finds that the Respondent has failed to furnish evidence to show that it has rights or legitimate interests in the disputed domain name.
In this sense, based on the case record, the Panel holds that the use of the TURKCELL and FIZY marks has not been authorized or licensed to the Respondent, the disputed domain name does not obviously correspond to the Respondent’s name or a trade name by which it has become commonly known, and that the Respondent cannot be regarded as using the disputed domain name in connection with a bona fide offering of goods or services. Although the Respondent’s name appears as “Turkcell Fizy” on the registration information it is clear that the name is a fake name. Additionally, in the Panel’s view the Respondent has made no legitimate noncommercial or fair use of the disputed domain name.
Hence, as the rights or legitimate interests of the Respondent have not been duly proven inter alia under paragraph 4(c) of the Policy, the Panel concludes that the Complainants have satisfied the requirement of paragraph 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy sets out four, non-inclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) The respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other 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 location or of a product or service on respondent’s website or location.
According to the evidence filed in this case, it is understood that the Respondent contacted the Complainants and offered to transfer the disputed domain name in return for payment by the Complainants of 5,000 Turkish Liras. The said offer made by the Respondent five months after the creation of the disputed domain name by the Respondent. During this period, the Respondent has not used the domain name <turkcellfizy.com> in connection with a bona fide offering of goods or services.
Based on this submission and the facts, the Panel considers that the disputed domain name was registered primarily for the purpose of transferring the domain name registration to the owner of the trademarks for valuable consideration in excess of the domain name registrant’s out-of-pocket costs. See e.g., Telefonaktiebolaget L.M Ericsson v. iNuntius Inc., WIPO Case No. D2005-0732.
Additionally, by consideration of the foregoing, the Panel is of the opinion that due to the extensive and intensive usage of such marks, as well as the above mentioned domain names, the Respondent, who appears to be located in Turkey, cannot be taken to be unaware of their existence. See e.g., Ebay Inc. v. Wangming, WIPO Case No. D2006-1107; General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087.
Considering the above, the Panel finds that the disputed domain name was registered and used in bad faith. Therefore, the Complainants have established the third element under paragraph 4(a) (iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <turkcellfizy.com> be transferred to the First Complainant Turkcell Iletisim Hizmetleri A.S.
Selma Ünlü
Sole Panelist
Dated: September 5, 2011