WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Kibar Holding A.Ş. and Kibar Diş Ticaret A.Ş. v. Dr. Mehmet Kahveci

Case No. D2012-1417

1. The Parties

The Complainants are Kibar Holding A.Ş. and Kibar Dış Ticaret A.Ş. from Istanbul, Turkey, represented by Gür Law & IP Firm, Turkey.

The Respondent is Dr. Mehmet Kahveci of Boston, Massachusetts, United States of America, represented by Ugur & Gog Attorneys at Law, Turkey.

2. The Domain Name and Registrar

The disputed domain name <kibar.com> is registered with Network Solutions, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 12, 2012. On July 12, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 12, 2012, 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 16, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 5, 2012. The Response was filed with the Center on August 5, 2012.

The Center appointed Warwick A. Rothnie as the sole panelist in this matter on August 14, 2012. 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.

On August 17, 2012, the Complainant filed an unsolicited supplemental filing. On August 18, 2012, the Respondent objected to the admissibility of the unsolicited supplemental filing, but indicated he required additional time to provide a report on why <kibar.com> and <koc.com> are not similar. In view of the passage of time between the filing of the Response and the submission of the unsolicited supplemental filing, the Panel by Procedural Order No. 1 allowed the Respondent until August 28, 2012 to file the further report foreshadowed in the Respondent’s email dated August 18, 2012. The Panel also requested clarification of the registration status of 12 trademarks identified in Annex 1 to the Response. The time for submission of the Panel’s decision was also extended to September 4, 2012.

The Respondent submitted a supplemental filing on August 27, 2012.

4. Factual Background

The Complainants are part of the Kibar industrial trading group headquartered in Turkey. According to the Complaint, the First Complainant was established in 1972. Since then, the group’s operations have expanded from primarily iron and steel trading to include some 24 companies operating in a range of fields. The First Complainant, for example, is the Turkish “partner” of Hyundai Motor Company. The First Complainant claims to have (presumably) USD 2 billion in annual turnover and some 3,000 employees.

The Second Complainant was founded in 1985 to promote the foreign trade activities of the Kibar group. It now claims to have an annual trade volume of USD 750 million. In addition to trading in iron and steel scrap metal, it also operates in, amongst other things, food, forestry products and building materials.

The Second Complainant owns the trademark KİBAR DIŞ TİCARET A.Ş. No. 103418, registered in Turkey on February 11, 1988 and renewed for ten years on February 11, 2008 for a wide range of goods in International Classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33 and 34. The registered trademark has a number of components: a diamond device which is bisected by a crescent shaped arc, the word “kibar” and the words “dış ticaret a.ş.”; the word “kibar” is in much larger letters than the other words, roughly three times as large.

According to the Response, the Respondent is engaged in dentistry and makes investments and carries out projects online. The Complainant asserts that he is a Turkish national; the Response states that he is a citizen of the United States of America. Whether these two statuses are mutually incompatible is not clear.

The Respondent registered the disputed domain name on April 17, 1996. It does not appear to have been in use, or resolved to an active website, since that date although, as discussed below, the Respondent has identified a planned use for the disputed domain name.

5. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainants must demonstrate each of the following:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark 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 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.

A. Identical or Confusingly Similar

There are two parts to this inquiry: the Complainants must demonstrate rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.

As noted in section 4 above, the Second Complainant has proven ownership of the registered trademark KİBAR DIŞ TİCARET A.Ş. No. 103418 in Turkey.

Contrary to the Complainant’s submission, the disputed domain name is not identical to this trademark since, as the Respondent pointed out in his Supplemental Filing, the trademark contains a device and the additional words “dış ticaret a.ş.”.

Nonetheless, KIBAR is the most prominent and striking feature of the Second Complainant’s trademark so that, disregarding the “.com” suffix of the disputed domain name as a functional aspect of the domain name system, the disputed domain name is confusingly similar to the second Complainant’s trademark.

The Respondent contends that there is no confusing similarity because the word “kibar” in Turkish means gentle or polite. He also relies on the registration of a number of trademarks for the word “kibar” in Turkey by a number of people other than the Complainants.

This, however, mistakes the nature of the inquiry under the Policy. The inquiry under the Policy at this stage is different to the inquiry which arises under trademark law. Under trademark law, matters such as the scope of the registration, the nature of the goods and services in question, the geographical locations of the rights and the impugned use and the timings of both may be highly relevant. Under the Policy, however, what is involved is simply a comparison of the trademark to the disputed domain name.

Given the significance of the word “kibar” in the Second Complainant’s trademark, the Panel considers it highly likely that a notional Internet user who encountered the disputed domain name would (at least) wonder whether the disputed domain name was associated with, or in some way related to, the owner of the trademark.

Accordingly, the Complainants have established this requirement under the Policy.

B. Rights or Legitimate Interests

The second requirement the Complainants must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which a respondent has rights or legitimate interests in a disputed domain name:

(i) before any notice to you 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 (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 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.

These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.

The onus of proving this requirement, like each element, falls on the complainant. Panels have recognized the difficulties inherent in disproving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.

The Complaint is rather tersely and succinctly worded. It contends that the Respondent does not have any registered trademarks for the term “kibar” or any other legitimate interest. It contends that none of the circumstances identified in paragraph 4(c) of the Policy is satisfied. It may also be inferred, and the Respondent does not contend to the contrary, that the Complainants have not licensed the Respondent to use the term “kibar” and he is not in any other way associated with them or their group.

It is plain that the disputed domain name is not derived from the Respondent’s name.

In these circumstances, the Panel is willing to find that the Complainants have made out a prima facie case against the Respondent.

The Respondent points out that “kibar” is, as already noted, a common word in Turkish. He notes that the Second Complainant’s trademark is not for the term “kibar” alone and does not extend to all goods and services. He also points out that a number of other parties have registered trademarks for, or containing, the term “kibar” in Turkey. This, he contends, indicates that the Complainants have no unique rights to “kibar” in Turkey. The Respondent further contends that he registered the disputed domain name to take advantage of its descriptive meaning, gentle or polite, for a social networking website for marriage minded people (which the Panel interprets as some kind of online community for people looking to find potential marriage partners). The Respondent denies registering the disputed domain name to resell it for a high price or, it may be inferred, to take advantage of the Complainants’ trademark.

The fact that the disputed domain name is not identical to the Second Complainant’s trademark is a point in the Respondent’s favour. However, as noted in section A above, the disputed domain name does contain and, apart from the functional “.com” ending, consists solely of the distinguishing component of the Second Complainant’s trademark.

Secondly, in the Response, the Respondent claimed there were at 12 registered trademarks in Turkey for the terms “kibar”. The Complainants contested this in their Supplemental Filing and, in his Supplemental Filing, the Respondent identified five trademarks (other than the Second Complainant’s trademark) as being still in force. The Respondent added that others may still be in force as well.

Most importantly for present purposes, the Respondent does not claim any right or title from any of these other trademark owners.

The Respondent admitted that the disputed domain name has only ever resolved to a parking page. He says “institutionalization studies” for the project started in 2010. Negotiations to fund the website’s development and launch “are in final stages”. He expects, the beta version of the project could be produced within six months of the project becoming fully funded. In support of his claim that he registered the disputed domain name for a social networking website for marriage minded people, the Respondent submitted some sample layouts for website pages and a letter evidencing the appointment of a named individual to, it would appear, run the project. The letter of appointment was dated November 1, 2011. The Respondent refers to a number of other websites he has launched including <turkish.com>, <turizm.com>, <antalya.com> and <bostondentist.com> to illustrate his bona fides in developing website projects.

As the Complainants point out in their Supplemental Filing, the Respondent provides no explanation for why the Respondent’s social network project has effectively lain dormant since the registration of the disputed domain name in April 1996. The Respondent has not submitted any materials which objectively demonstrate commencement of the project in 2010. The screenshots of the proposed site are undated and no materials have been provided verifying the date of their creation. The only apparently objective piece of evidence is the letter of appointment for the project’s manager in November 2011.

While they are particularly relevant to the bad faith stage of the inquiry, the Complainants point out some peculiarities in the WhoIs information for the disputed domain name:

(a) the postal address for the administrative contact is “sipidik sipidik yuzen balik” which the Complainants contend translates into English as “scuff scuff swimming fish”;

(b) the email address given for the administrative contact is “sacmasapan_6@ email address” which the Complainants contend translates into English as “bullshit_6@ email address”; and

The Complainants contend these matters show that the claimed project is purely a pretext.

Given the positive claim of intended use advanced by the Respondent, the long and unexplained period of dormancy and the Respondent’s failure either to explain adequately that very long period of dormancy or to provide objective evidence of demonstrable preparations to use the disputed domain name before notice of this dispute, the Panel is not prepared to find that the Respondent has rebutted the prima facie case established against him.

The Respondent also invokes his unsuccessful complaint in Mehmet Kahveci, HyperLink International LTD. v. Murat Karagülle, WIPO Case No. D2010-0125 to support his retention of the disputed domain name. In that case, the Respondent relied on trademark registrations of BORSA.COM and OTOMOBIL.COM in the United States of America against two domain names identical to one or the other of those registrations. Contrary to the Respondent’s contentions in this dispute, however, the Respondent was unsuccessful in that case because both of his trademarks were registered after the domain names in question. The learned panel also noted that there appeared to have been some agreement or association between the parties about the domain names which were the subject of pending court proceedings. Neither of those factors is present in this case. Accordingly, it does not assist the Respondent in this proceeding.

The Panel finds, therefore, that the Complainants have made out the second requirement under the Policy.

C. Registered and Used in Bad Faith

Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent.

Whether the Respondent has Turkish nationality as well as US citizenship is not clear on the record in this case. It is clear, however, that the Respondent is of Turkish background and has strong associations and connections with Turkey.

It seems highly likely, therefore, that the Respondent was very familiar with the Complainants and their corporate group when he registered the disputed domain name.

The Respondent denies any bad faith or intention to take advantage of the Complainants’ trademark and reputation in doing so. While it is not always the case that a respondent’s failure to establish rights or a legitimate interests in a domain name means the respondent must also be found to have registered and used the domain name in bad faith, the Panel considers that this is a case where that result follows.

The failure (on the record in this case) of the Respondent’s claim that he registered the disputed domain name for the purpose of developing a social networking site leaves his purpose in doing so unexplained in circumstances where it seems highly likely that he was very aware of the Complainants’ trademark. Given the size and scale of the Complainants’ operations in Turkey in particular, and the Respondent’s clear connections with Turkey, in the absence of explanation the inference is open that the Respondent registered the disputed domain name to take advantage of the Complainants’ rights. That finding also infects the Respondent’s continued, passive holding of the disputed domain name.

Accordingly, the Panel finds that the Complainants have established on the record in this case that the Respondent registered and is using the disputed domain name in bad faith.

6. 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 <kibar.com> be transferred to the Second Complainant.

Warwick A. Rothnie
Sole Panelist
Dated: September 6, 2012