WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Doğan Gazetecilik İnternet Hizmetleri ve Ticaret A.S v. NA VeliNA (Enes Oğuş)

Case No. D2013-1369

1. The Parties

The Complainant is Doğan Gazetecilik İnternet Hizmetleri ve Ticaret A.S of Istanbul, Turkey, represented by Dericioğlu & Yaşar Law Office, Turkey.

The Respondent is NA VeliNA (Enes Oğuş) of Istanbul, Turkey, represented by Salih Bulut, Turkey.

2. The Domain Name and Registrar

The disputed domain name <arabam.net> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 1, 2013. On August 2, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 5, 2013, 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.

On August 9, 2013, the Center sent an email communication to the Complainant inviting it to amend the Complaint, namely the name of the Respondent in the present proceeding. The Complainant filed an amended Complaint on August 14, 2013.

The Center verified that the Complaint together with the amended 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 August 15, 2013. On August 15, 2013, the Center received an email communication from the Complainant requesting suspension of the administrative proceedings in order to explore a possible settlement between the parties. On August 26, 2013, the Center notified the suspension of the proceeding. On September 24, 2013, the Complainant requested the reinstitution of the proceeding. On September 24, 2013, the Center acknowledged receipt of Complainant’s email communication of September 24, 2013 and set the new due date for Response for October 14, 2013. The Response was filed with the Center on October 14, 2013.

On October 22, 2013, the Complainant sent a Supplemental Filing to the Respondent and to the Center, to which the Respondent replied on November 21, 2013. The Center sent this exchange of correspondence to the Panel with the case file.

The Center appointed Clive Trotman, Selma Ünlü and Luca Barbero as panelists in this matter on November 27, 2013. The Panel finds that it was properly constituted. Each member of 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 December 4, 2013, the Center received another Supplemental Filing from the Complainant entitled “Additional Complaint”. On December 8, 2013, the Respondent sent another Supplemental Filing through the Center to the Panel, and on the same date the Complainant responded with another Supplemental Filing. The Respondent sent another Supplemental Filing on December 9, 2013. The Complainant sent another Supplemental Filing on December 10, 2013, described as a correction of the one sent the previous day, followed later by a signed version of the same. All Supplemental Filings and their annexes were forwarded promptly by the Center to the Panel. On December 10, 2013, the Center informed the parties that the Panel instructed the Center to inform the Parties not to submit any further communications and/or supplemental filings and that the decision due date was extended until December 18, 2013.

Finally, in accordance with Paragraph 11 of the Policy, the language of the administrative proceeding will be the language of the registration agreement (i.e. English) since the Parties have not agreed otherwise and since the registration agreement, which the present dispute is based upon, does not provide otherwise.

4. Factual Background

The facts stated in the Complaint are as follows:

(1) The Complainant is the leading media corporation in Turkey and operates in TV and radio broadcasting and print and online media.

(2) The Complainant stated that it has a wide spectrum of portal groups within Doğan Online, which is Turkey’s largest Internet Company.

(3) The Complainant is the owner of the following trademarks before the Turkish Patent Institute:

(i) ARABAM trademark numbered 2000 14229, application date July 12, 2000, registration date November 9, 2001, for the goods and services in classes 09, 35, 38, 42;

(ii) WWW.ARABAM.COM trademark numbered 2008 16498, application date March 21, 2008, registration date April 27, 2009, for the services in classes 35 and 41;

(iii) ARABAMCOM trademark numbered 2008 16499, application date March 21, 2008, registration date June 2, 2009, for the services in classes 35 and 41;

(iv) ARABAM (device) trademark numbered 2006 02038, application date January 24, 2006, registration date January 31, 2007, for the services in class 37.

(4) The Complainant is the registrant of the <arabam.com> domain name with the creation date of January 25, 2000, and <arabam.com.tr> domain name with the creation date of January 26, 2006.

The facts stated by the Respondent are as follows:

(1) The Respondent has been the owner of several companies which provide car sale and authorized repair and maintenance service and insurance service for more than twenty years.

(2) The Respondent’s company carries out more than 1,000 car sale transactions and repair and maintenance of more than 5,500 cars in a year.

(3) The Respondent is also the owner of the <otomaxi.com> and <sigortamburda.net> domain names in order to conduct abovementioned business.

(4) The Respondent states that it registered the disputed domain name on March 30, 2001.

Panel’s observation of the case file reveals the following:

(1) “Arabam” means “my car” in Turkish.

(2) When the Panel visited the Respondent’s website on December 4, 2013, subject website under the disputed domain name was active and used for gathering various car sale advertisements.

(3) The Complainant’s website at “www.arabam.com” is recognized and commonly used to see the secondhand car advertisements given by the car owner or their agents.

(4) Both the Respondent and the Complainant reside in Turkey.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it is the owner of the trademarks listed in section 4 above and has produced copies of relevant Turkish Patent Institute online documentation. The date from which the Complainant asserts rights in trademark registration number 2000 14229 is the application date of July 12, 2000, and in respect of the remaining trademarks the date associated with them is also the respective date of application for the trademark.

The Complainant contends that the disputed domain name is confusingly similar or identical to trademarks in which the Complainant has rights. The top level directory designation “.net” within the disputed domain name does not obviate confusing similarity.

The Complainant further contends that the Respondent does not have rights or legitimate interests in the disputed domain name. The disputed domain name has not been used prior to notice of the dispute in connection with a bona fide offering of goods or services; there is no indication that the registrant has been commonly known by the disputed domain name; and there has been no legitimate noncommercial or fair use of the disputed domain name without intent to divert consumers or without intent to tarnish the Complainant’s trademark. The Respondent does not have any trademark or application in respect of ARABAM or ARABAM.COM.

The Complainant contends that for its part it has been actively using the trademarks ARABAM and ARABAM.COM since 2000 and that the trademarks are original, distinctive and have been identified with the Complainant in that time.

The Complainant further contends that the disputed domain name was registered and is being used in bad faith. The Complainant’s trademark is associated with quality in car sales in Turkey. The Respondent is attempting to benefit from the Complainant’s reputation. According to the website “www.alexa.com”, the Complainant’s own website “www.arabam.com” is the 143rd most visited website in Turkey and the 8,883rd most visited website in the world. The Complainant says that it is clearly obvious that the Respondent, especially being in Turkey, knew of the Complainant’s trademark when the disputed domain name was registered.

The Complainant contends that the Respondent has intentionally attempted to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with the Complainant’s trademark as to the source or endorsement of the website or of the products or services it provides.

The Complainant cites a number of previous cases under the UDRP that it wishes the Panel to consider as having precedent value.

The Complainant requests the transfer to itself of the disputed domain name.

B. Respondent

The Respondent denies the Complaint.

The Respondent contends in effect that the disputed domain name is not identical or confusingly similar to the Complainant’s trademark. Part of the Respondent’s reasoning is based upon the asserted generic nature of the Turkish language word “arabam”, meaning “mycar” in English.

The Respondent contends that its business in car sales, service and associated products such as insurance is of substance and is of more than 20 years duration. The Respondent says it has owned companies such as Oğuşlar Otomotiv San. ve Tic. Ltd. Şti., and has dealt in Kia and Suzuki cars in Turkey since 2005. It has a genuine Internet presence related to the car business through the disputed domain name and through <otomaxi.com> and <sigortamburda.net>.

The Respondent contends that further information should have been provided by the Complainant about its trademarks, and states as follows:

“The trademark “ARABAM” numbered 2000/14229 registration of which is submitted by the Complainant is not a trademark related to car sales or publication of the same, it is related to classes and services such as computers, printers, news reporting, digital tapes, magnetic cards etc. which are very different from cars and car sales as can be seen in Annex-5.

The trademark “ARABAM.COM” numbered 2008/16498 also registered by the Complainant is not registered in class of cars and car sales. This trademark pertains film and TV programs, radio programs, employment services, rent of audio and video tapes etc. which are also areas not related with cars and car sales.”

The Respondent contends that the Complainant does not have any trademark for ARABAM in the classes related to car sales and related publications.

The Respondent further contends that the words “araba” and “arabam” are generic and are used commonly in website of car sales and publications. <araba.com> is the 341st most visited website in Turkey, according to the website “www.alexa.com”, and is well known in Turkey. Other examples involving generic words include <arabamicokseviyorum.com> (“ilovemycar”) and <arabam.gen.tr>.

The Respondent has cited previous UDRP cases involving the generic words “kariyer” (Turkish for “career”), “etatil” (Turkish for “holiday” with the prefix “e”), and “post”, which were decided in favour of the respective respondents on various grounds.

The Respondent further contends that it has rights or legitimate interests in the disputed domain name. Its contentions under this heading repeat some of the foregoing and reiterate that the Respondent does not provide content related to film and TV shows, radio shows, employment and employment agency, or rental of audio and video tapes in connection with the disputed domain name. The website of the disputed domain name has 2,547 members and has started to contain more than 1,500 different publications of cars for sale.

The Respondent states that it registered the disputed domain name in 2001 and owns a company in the business of car sales and related matters. Its use of the website in connection with this business is legitimate and in good faith. The Respondent states that the case of <sahibindentekne.com> (Taner Aksoy v. Mesut Laçin, WIPO Case No. D2010-0560), which is in Turkish, supports its position.

The Respondent further contends that the disputed domain name was not registered and in not being used in bad faith. Some of the foregoing is reiterated. The Respondent also states that use of the corresponding website is free for persons wishing to publish their cars for sale and that Internet users of the website benefit from the quoted views of experts. There is no similarity to the Complainant’s website “www.arabam.com”.

The Respondent contends that the Complainant is itself acting in bad faith and aims to take over the disputed domain name that has been registered for 12 years. The Complainant does not have a trademark related to car sales.

The Respondent denies that the disputed domain name has been for sale and states that an 11 year old screenshot supplied by the Complainant was automatically inserted on the website by the registrar from which the disputed domain name was purchased. The Respondent states that the Complainant has not been able to submit any ground of bad faith or contacted the Respondent in order to reach a settlement.

The Respondent asks for a finding of Reverse Domain Name Hijacking and states that the Complainant is attempting to acquire the disputed domain name unjustly.

The Respondent cites a number of previous cases under the UDRP that it wishes the Panel to consider as having precedent value.

6. Discussion and Findings

A. Procedural Matters

Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable provider, in compliance with the Rules, that:

“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name; and

(iii) your domain name has been registered and is being used in bad faith.”

The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.

Paragraph 12 of the Rules provides that the Panel, in its sole discretion, may request further statements or documents from either of the Parties if deemed necessary. The Complainant's communications to the Center of October 22, 2013, December 4, 9 and 10, 2013, and the Respondent’s communications of November 21, 2013, and December 8 and 9, 2013, which were forwarded by the Center to the Panel, were unsolicited Supplemental Filings. They were not requested, were not necessary, and will not be admitted to this proceeding in accordance with paragraphs 10 and 12 of the Rules. The Parties are referred to the stricture of the respected panelist in Grove Broadcasting Co. Ltd v. Telesystems Communications Limited, WIPO Case No. D2000-0703:

“A Complainant should “get it right” the first time and should have provided all the information necessary to prove its case from the material contained in the Complaint and its annexes alone. There is no right of reply under the Rules.”

The Parties are also reminded of the need for all documentation to be submitted in the language of the proceeding, in this case English. It is not the function of any member of any panel to provide a certified translation of material for the benefit of other panelists, and in any case a panel, which is appointed after submission of the complaint and response, need not necessarily include speakers of any other language than that of the proceeding.

B. Identical or Confusingly Similar

The Complainant is required to prove that it has rights in a trademark, whether registered or otherwise, and that the disputed domain name is confusingly similar to that trademark. It is not necessary for the trademark and the disputed domain name to be in the same classes of business and the respective dates of their registrations are not relevant to the question of confusing similarity.

The Panel is satisfied that the Complainant is the holder of the trademarks ARABAM, WWW.ARABAM.COM, ARABAMCOM and ARABAM (device). The Panel finds that the operative component of the disputed domain name <arabam.net> is “arabam” and that the disputed domain name is confusingly similar or identical to the Complainant’s trademarks within the requirements of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

The Complainant has the onus of proving that the Respondent does not have rights or legitimate interests in the disputed domain name. The Complainant asserts prima facie that it has not permitted or licensed the Respondent to use the Complainant’s trademarks.

Paragraph 4(c) of the Policy provides for the Respondent to establish rights or legitimate interests in a disputed domain name by demonstrating:

“(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.”

The above circumstances are illustrative and rights or legitimate interests may be established alternatively by the Respondent to the satisfaction of the Panel.

Paragraphs 4(a)(ii) and 4(c) of the Policy are decisive in this dispute, and paragraph 4(c)(i) of the Policy is pertinent.

The Complainant says there is no evidence that the Respondent used the disputed domain name in connection with a bona fide offering of goods or services. The Respondent replies that the disputed domain name is in use to provide the service of an online location where people may notify cars for sale, and the Respondent contributes expert information relating to cars.

In the exercise of its power to undertake limited factual research into matters of public record (paragraph 4.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0")), the Panel has visited the website of the disputed domain name and, notwithstanding that it is not in the language of the proceedings, did not receive the impression that it was other than bona fide. The website would not qualify as bona fide, however, if found to have been trading intentionally on the goodwill embodied in the Complainant’s trademark.

Key dates are that the Complainant applied for registration of the trademark ARABAM, registration number 200014229, on July 12, 2000; registration was granted on November 9, 2001; and the Respondent registered the disputed domain name on March 30, 2001. This trademark, being the earliest, shall form the basis of further discussion. Other trademarks incorporating “arabam”, namely ARABAM (stylised), WWW.ARABAM.COM and ARABAMCOM (stylised) were registered in 2006 or 2008, after the disputed domain name. It is noted that the Complainant claimed to have been actively using the trademark ARABAM.COM since 2000.

Prima facie, it was after the Complainant’s first application to register the trademark ARABAM, but before the grant of registration, that the Respondent registered the disputed domain name. The answer to the question of whether the Respondent could or should have been aware of the Complainant’s incipient trademark is therefore less than certain. It is noted that the Complainant registered its own domain name <arabam.com> on January 25, 2000, earlier even than its application for the trademark ARABAM.

It does not follow automatically that the Respondent’s website is trading on the Complainant’s trademark. The Respondent argues that the disputed domain name does not conflict with the Complainant’s trademark ARABAM, number 2000 14229, that the trademark is registered in classes related to computers, printers, news reporting, digital tapes, magnetic cards, etc., and that the Complainant does not have any trademark in classes related directly to car sales and the publication of information about them. In the Panel’s enquiries of public records as permitted, however, class 35, in which this trademark is registered, includes (translated):

“[...] information and advertisement services in regard to computer and telecommunication; organization of research and ordering services, sales and delivery, global computer network entrance services (data entrance services), gathering goods and services on internet and to provide them in order for the third parties to buy, online advertisement services by electronic telecommunication,[…]”

The Respondent also argues that the trademark ARABAM, being derived from the Turkish word “araba” for “car”, and meaning “mycar”, is generic.

The less specific and more descriptive a trademark, the more its field of application should be clearly defined and the more likely it is that similar words will occur in other trademarks. Words as generic as “apple”, “book” and “warehouse” may appear in multiple trademarks that coexist. “Araba” standing alone as the Turkish language word for “car” would surely be very difficult, if not impossible, to protect as a trademark. “Arabam”, meaning “mycar”, is minimally different from “araba” and may be almost as difficult to protect as a trademark. Given the expression of commitment by the Complainant over many years to its website “www.arabam.com” and the car sales activity it presents, it is surprising that the

Complainant’s trademarks do not embrace any class related directly to cars or car sales.

The Complainant says that its own website “www.arabam.com”, embodying its trademark ARABAM, is “the most well-known car sales website in Turkey”. The Panel has no reason to doubt this, except that the present public awareness and usage of a website is not evidence as to how well known it may have been when the disputed domain name was registered 12 years ago.

The Respondent states in its Response, certified to be complete and accurate, that its companies have dealt in car sales, repairs, maintenance and insurance for over 20 years. One of its companies averages more than 1,000 car sales and 5,500 car repairs annually. The Respondent has supported its claims of genuine involvement in the car industry by reference to its websites “www.otomaxi.com” and “www.sigortamburda.net” that feature used cars and insurance respectively. The Panel has visited these websites and they appear to be authentic.

As matters stand, the Complainant and the Respondent each operate websites relating to cars in Turkey. The websites are each clearly intended to attract viewers on the basis of the word “arabam”. Whilst the Complainant has a trademark for the word ARABAM, it has produced no evidence that protection extends to the arena of car sales. The Complainant has not produced evidence of a relevant secondary meaning that might have been acquired for the trademark ARABAM. If the Complainant were to assert that the translated excerpt from class 35 quoted above can be interpreted so broadly as to cover all Internet sales relating to cars, that would be a trademark dispute beyond the scope of the UDRP and best heard with tested evidence in another forum.

The Respondent claims to have been in business related to car sales for 20 years and has acquired the disputed domain name on the basis of “first come, first served”. It is of no relevance that the Respondent does not have a similar trademark. The word “arabam” is generic, in the Panel’s finding, to the extent that nothing precluded the Respondent from choosing and using the disputed domain name in a field that may have been similar to the Complainant’s. Domain names have other uses than as Internet shop windows, such as for discussion or for email. It would be unreasonable for one entity to assume a veto over the use of a word or phrase as generic as “arabam” on the Internet in the very area of its meaning. As expressed in 2000 by the three member panel in Rollerblade, Inc. v. CBNO and Ray Redican Jr., WIPO Case No. D2000-0427: “Indeed, genericness, if established, will defeat a claim of trademark rights, even in a mark which is the subject of an incontestable registration”.

The Panel is concerned at some aspects of the way the Complainant has progressed its dispute over the disputed domain name. The Complainant portrays itself as part of “Turkey’s leading media and entertainment conglomerate”, and its website as “the most well-known car sales website in Turkey”. As such the Complainant could be expected to display impressive vigilance over its intellectual property, yet it has taken 12 years to act against the disputed domain name, irrespective of its early usage or ownership. According to the WayBack Machine (“www.archive.org”), at least as early as April 2002 the disputed domain name resolved to a website offering links that included the Complainant’s field of entertainment, and by January 2003 it carried rudimentary references to cars. There is no evidence that the Complainant, prior to lodging the Complaint, made any attempt to notify purported rights in its trademark directly to the Respondent.

Whilst no statute of limitations or doctrine of laches is embodied in the Policy or Rules, the Panel is nevertheless empowered by Rule 15(a) to decide the Complaint on the basis of “... any rules and principles of law that it deems applicable”. Having regard to all the evidence, the Panel is concerned that the Complainant may very belatedly have set out to gain control of a domain name that it had every opportunity to acquire before the Respondent did so, but did not. In terms of natural justice the Respondent, if deprived now of its business website, may suffer incalculably more discomfiture than if the Complainant had not slept on its purported rights (which is not to say that any earlier Complaint would necessarily have succeeded).

The Panel is not persuaded that the Complainant, which retains the burden of proof, has demonstrated on the evidence and on the balance of probabilities that the Respondent does not have rights or legitimate interests in the disputed domain name. The Complainant has failed to prove its case in the terms of paragraph 4(a)(ii) of the Policy and the Panel’s decision is for the Respondent.

D. Registered and Used in Bad Faith

It is optional in this instance for the Panel to consider the question of registration and use of the disputed domain name in bad faith. Since this dispute has been argued strenuously by the Parties, and the Panel has the impression that further matters might be argued in another forum, the Panel will not extend the discussion into questions of bad faith.

E. Reverse Domain Name Hijacking

Partly for the same reason of not wishing to expand the dispute prior to possible future proceedings, the Panel will observe only that a failure by the Complainant to prove its case does not, without considerably more, equate with a finding of Reverse Domain Name Hijacking.

7. Decision

For the foregoing reasons, the Complaint is denied.

Clive Trotman
Presiding Panelist

Selma Ünlü
Panelist

Luca Barbero
Panelist

Date: December 11, 2013