The Complainant is Db Danışmanlık Hizmetleri Limited Şirketi of Istanbul, Turkey, represented by Net Koruma Danışmanlık Hizmetleri, Turkey.
The Respondent is Piko Danışmanlık Hizmetleri Ltd. şti. of Istanbul, Turkey, represented by Istanbul Patent & Trademark Consultancy Ltd., Turkey.
The disputed domain name <elemanonline.com> is registered with GoDaddy.com, LLC and the disputed domain name <elemanonline.net> is registered with Moniker Online Services, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 17, 2014. On February 17, 2014, the Center transmitted by email to GoDaddy.com, LLC and Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain names. On February 17 and February 18, 2014, GoDaddy.com, LLC and Moniker Online Services, LLC respectively transmitted by email to the Center their verification responses disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 18, 2014 providing the registrant and contact information disclosed by the concerned Registrars and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 19, 2014.
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 amended Complaint, and the proceedings commenced February 21, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was March 13, 2014. The Response was filed with the Center on March 13, 2014. On March 18, 2014, the Respondent submitted an unsolicited Supplemental Filing and the Center informed that it would be in the sole discretion of the Panel to determine whether to consider and/or admit the Supplemental Filing in rendering its decision.
The Center appointed Flip Jan Claude Petillion, Kaya Köklü and Gökhan Gökçe as panelists in this matter on April 1, 2014. 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 April 2, 2014, the Center received an unsolicited Supplemental Filing from the Complainant responding to the observations submitted by the Respondent in its Response.
On April 15, 2014, the Center received an email communication from the Complainant referring to another Supplemental Filing that according to the Complainant had been sent to the Center on April 11, 2014. On April 15, 2014 the Center informed the Complainant that it was not able to locate the alleged second Supplemental Filing of April 11, 2014 and invited the Complainant to kindly forward it again so that the Center may bring it to the attention of the Panel, who would have the sole discretion to decide whether to consider or not in rendering its decision. No further email or submission was received from the Complainant in this regard.
The Complainant is a company providing services in the field of human resources in Turkey since the year 2006. The Complainant is the holder of the figurative trademark including the word “elemanonine”, registered with the Turkish Patent Institute under number 2011/08697 since February 3, 2011. Further, the Complainant is the holder of the domain name <elemanonline.com.tr> since February 3, 2011.
The Respondent is also a company providing services in the field of human resources in Turkey, though established more recently, i.e in 2013. The Respondent is the holder of the Community Trademark ELEMANONLINE, registered with the OHIM under number 012174512 since September 26, 2013.
It appears from the parties’ submissions that the disputed domain names <elemanonline.com> and <elemanonline.net> were registered by the Respondent’s founder, Ibrahim Soylu, on September 9, 2004 and December 10, 2004, respectively.
The Complainant claims the disputed domain names to be identical or confusingly similar to the trademarks and service marks in which it claims to have rights. The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the disputed domain names. Finally, the Complainant claims that the disputed domain names were registered and are being used in bad faith.
The Respondent replies that the present case is subject of multiple court proceedings between the parties before several Turkish courts. More specifically, the Respondent claims that the Complainant’s 2011/08697 numbered trademark has been subject to an invalidation action before the Istanbul Anadolu 2nd Civil Court of Intellectual and Industrial Property in Turkey.
The Respondent also claims to have rights in the name “elemanonline”, which it has used ever since the registration of the disputed domain names in 2004.
Finally, the Respondent argues that the disputed domain names have not been registered and used in bad faith. They were registered in 2004 prior to the establishment of the Complainant.
The Panel notes that the Center received additional submissions by the Respondent and the Complainant respectively on March 18, 2014 and on April 2, 2014.
Paragraph 12 of the Rules unambiguously provides that the Panel may request, in its sole discretion, further statements or documents from either of the parties. There is no provision in the Rules for a party to file an additional submission without leave of the Panel. This is because, under the expedited process provided under the Policy and Rules, each party is given one opportunity to put forward all the material on which it wishes to rely and is expected to do so.
The Panel follows the reasoning of the panel in Viz Communications, Inc. v. Redsun dba www.animerica.com and David Penava, WIPO Case No. D2000-0905 that it is appropriate to consider the circumstances of each case before deciding whether or not to admit unsolicited additional submissions.
In this case, given the fact that both parties filed Supplemental Filings and after consideration of them, the Panel decided to take both Complainant’s and Respondent’s Supplemental Filings into account.
With regard to the second Supplemental Filing allegedly sent by the Complainant on April 11, 2014, the Panel deems it unnecessary in the circumstances to take it into account in rendering its decision.
Paragraph 15 of the Rules provides that the Panel is to decide on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The onus is on a complainant to make out its case and it is apparent, both from the terms of the Policy and the previous UDRP decisions, that the complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer or cancel a domain name. The standard of proof is the balance of probabilities.
Thus for the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:
1. The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
2. The Respondent has no rights or legitimate interests in respect of the disputed domain names; and
3. The disputed domain names have been registered and are being used in bad faith.
The Complainant must first establish that there is a trademark or service mark in which it has rights. Although the Complainant appears to be the holder of a figurative trademark including the word “elemanonline”, which is identical to the disputed domain names, the Respondent claims that the validity and ownership of this trademark are challenged in judicial proceedings between the parties before the Istanbul Anadolu 2nd Civil Court of Intellectual and Industrial Property.
In the Panel’s view, this is a matter that the Complainant should have addressed in its Supplemental Filing. However, the Panel notes that the Complainant did not contest this and that several proceedings are pending between the parties relating to the disputed domain names, which the Complainant failed to specifically identify in the Complaint. The Complaint merely states that the “Complainant has made all kinds of legal applications in Turkey. The legal proceedings are still pending.”
In accordance with paragraph 18(a) of the Rules, “in the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel has the discretion to decide whether or not to suspend or terminate the administrative proceeding, or to proceed to a decision.”
The Panel is of the opinion that there can be reasons to suspend the administrative proceeding until the question about the validity and ownership of the ELEMANONLINE trademark have been clarified. However, in the present case and in view of the other cumulative requirements of paragraph 4(a) of the Policy examined below, the Panel considers that it can proceed to a decision. Moreover, given the Panel’s findings in relation to the second element of the Policy, it is not necessary to make a final determination on whether the first element has been met in this case.
Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
Paragraph 4(c) of the Policy identifies circumstances which, in particular, but without limitation, if found by the Panel to be proved based on its evaluation of all the evidence presented, shall demonstrate the Respondent’s rights or legitimate interests for the purpose of paragraph 4(a)(ii). Those circumstances are that:
(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use the disputed domain names or domain names corresponding to the disputed domain names, in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organisation) has been commonly known by the disputed domain names, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain names without intent for commercial gain to misleading divert customers or to tarnish the trademark or service mark at issue.
In the circumstances of this case, in order to assess whether the Respondent has rights or legitimate interests in respect of the disputed domain names, the Panel considers that the validity and ownership of the rights of both parties with regard to the disputed domain names have to be clarified.
The Respondent claims that it has been using “elemanonline” as a trademark in association with an online platform for the recruitment services through the disputed domain names since 2004. According to Turkish trademark law, an exclusive right in a trademark can be acquired without registration when the mark has been established on the market. The Complainant for its part claims that it has acquired the rights on the disputed domain names through a transfer agreement in 2008.
This issue is the subject of several court proceedings between the parties before Turkish courts. The Panel notes that an answer to this issue would require intensive fact finding and interpretation of national law, for which the UDRP system was not designed (see e.g. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230, referring to the objective of the UDRP to address disputes arising from the abusive registration of domain names in a time and cost effective manner).
In this Panel’s view, it is unclear and impossible at this point to determine within the framework of these UDRP proceedings whether the rights in the disputed domain names have been transferred to the Complainant or remained with the Respondent. As a result, there are at present too many unresolved questions for the Panel to be able to conclude that the Respondent has no rights or legitimate interests in respect of the disputed domain names. Therefore, the Panel is of the opinion that the Complainant has failed to establish on the balance of probabilities that the Respondent has no rights or legitimate interests in the disputed domain names.
Given the Panel’s findings regarding the second element of the Policy, there is no need for the Panel to decide on the issue of bad faith registration and use of the disputed domain names, as all three elements must be proven to obtain an order to have the disputed domain names transferred as requested by the Complainant.
For the foregoing reasons, the Complaint is denied.
Flip Jan Claude Petillion
Presiding Panelist
Kaya Köklü
Panelist
Gökhan Gökçe
Panelist
Date: April 15, 2014