WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Beșiktaș Jimnastik Kulübü Derneǧi v. Contact Privacy Inc. / SADECEHOSTING.COM Internet Hizmetleri San Tic Ltd Sti

Case No. D2014-2273

1. The Parties

The Complainant is Beșiktaș Jimnastik Kulübü Derneǧi of Istanbul, Turkey, represented by Özyıldırım Hukuk Bürosu, Turkey.

The Respondent is Contact Privacy Inc. of Toronoto, Canada / SADECEHOSTING.COM Internet Hizmetleri San Tic Ltd Sti of Istanbul, Turkey.

2. The Domain Name and Registrar

The disputed domain name <kartalinyuvasi.com> is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 26, 2014. On December 29, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 30, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 5, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to amend the Complaint. The Complainant filed an amended Complaint on January 9, 2015.

The Center verified that 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 proceeding commenced on January 12, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 1, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 3, 2015.

The Center appointed Selma Ünlü as the sole panelist in this matter on February 16, 2015. 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

(1) The Complainant, Beşiktaş Jimnastik Kulubü Derneği, is an association managing one of the oldest sports clubs, Beşiktaş JK, in Turkey.

(2) Beşiktaş JK, founded in 1903, is one of the most popular sports clubs, especially in football, in Turkey.

(3) The Complainant’s sports club is known as “eagles” or “black eagles” among sports fans in Turkey and also the Complainant has numerous trademarks including phrases BEŞİKTAŞ, BJK, KARTAL and KARA KARTAL.

(4) The Complainant has website under the domain name <kartalyuvasi.com.tr> which was registered on April 16, 2008.

(5) The disputed domain name was registered on November 18, 2014 nearly seven years after the trademark KARTAL YUVASI BJK 1903 numbered 2007/14715 which was registered on March 23, 2007. The website at the disputed domain name is in Turkish language.

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

(1) The disputed domain name is currently inactive and the search engine gave an error regarding connection to the website on February 25, 2015.

(2) The contact details of the Respondent provided by the Registrar indicate that the Respondent is located in Turkey.

(3) The website “www.kartalyuvasi.com.tr” is well-known website in Turkey for the sale of official licensed products of the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant requests the Panel to issue a decision transferring the disputed domain name to the Complainant on the following grounds:

i. The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

ii. The Respondent has no rights or legitimate interests in respect of the disputed domain name;

iii. The disputed domain name was registered and is being used in bad faith.

(i) Identity or Confusingly Similarity

The Complainant states that “Kartal Yuvası” means “eagle nest” in Turkish and since the Complainant’s sports club symbol is Kartal meaning “eagle”, the disputed domain name is taking unfair advantage from this name. In accordance with the Complainant, “eagle nest” is the name of the official store of the Complainant’s sports club.

The Complainant also explains that “Kartalın Yuvası” which constitutes the disputed domain name means “eagle’s nest” in Turkish and the “Kartal Yuvası” also can be translated as “eagle’s nest”.

Furthermore, the Complainant claims that the Respondent is using the disputed domain name in order to confuse the consumers into believing that the Respondent’s website is the official website of the Complainant or the Respondent is a reseller of the licensed products of the Complainant. The Complainant also argues its ownership of the trademark KARTAL YUVASI and its domain name <kartalyuvasi.com.tr> which links to the official website of the club selling official products of the sports club.

(ii) Rights or Legitimate Interests

The Complainant claims that the Respondent has no rights or legitimate interest in respect of the disputed domain name. The Complainant also states that statements on the website such as “Beşiktaş JK Yeni Sezon 2014 Lisanslı Forması” meaning “Beşiktaş JK’s new season 2014 Licensed Uniforms” proves the awareness of the Respondent on the Complainant and its fame, however the Respondent does not have any authorization to sell any of the products belonging to the Complainant.

Also, the Respondent is using the phrase “BJK Shop” with the Complainant’s name and logo without any license or legitimate interest and indeed BJK STORE is another registered trademark of the Complainant.

(iii) Registered and Used in Bad Faith

The Complainant argues that, the Respondent is well aware of the Complainant’s notoriety and reputation and sells infringing goods to its supporters. Also, the Complainant states that, the Respondent was selling the “Beşiktaş JK New Season 2014 Licensed Uniform” at the website linked to the disputed domain name for TRY 69, while the original new season uniforms were sold for TRY 129 in the official stores of Kartal Yuvası and the official website of the Beşiktaş JK, “kartalyuvasi.com.tr”.

Accordingly the Complainant argues that the Respondent is misleading the Complainant’s supporters by claiming the goods sold on the website at the disputed domain name are licensed by the Complainant which does not reflect reality. Therefore, the Complainant claims that the Respondent misleads the consumers by creating likelihood of confusion with the Complainant’s trademarks to gain unfair benefit.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1. Language of the Proceeding

The Complainant requests the language of the proceeding to be Turkish. According to paragraph 11 of the Rules, in the absence of agreement between the parties, the language of the proceeding shall be the language of the registration agreement. As the Registrar has confirmed English to be the language of the registration agreement and the Respondent has not submitted any reply, the Panel will proceed to a decision in English.

6.2. Substantive Elements of the Policy

According to paragraph 15(a) of the Rules, the Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

In accordance with paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:

(i) The disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has 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 Complainant has the burden of proving that all of these requirements are fulfilled.

A. Identical or Confusingly Similar

The first element under the paragraph 4(a)(i) of the Policy requires the Complainant to establish that the disputed domain name is identical or confusingly similar to a trademark or service mark in which it has rights.

The Panel finds that the Complainant has rights in the KARTAL YUVASI trademark. The Complainant has many other related trademarks as well such as KARTAL and, KARA KARTAL before Turkish Patent Institute (“TPI”).

Based on the evidences submitted by the Complainant concerning the trademark registrations of KARTAL YUVASI, the Panel finds that the Complainant has had a trademark registration for KARTAL YUVASI since 2007, well before the registration date of the disputed domain name.

The possessive suffix “ın” which is added at the end of the word “Kartal” does not establish a distinctive character to the disputed domain name from the Complainant’s trademark. Also, considering that the meaning of the “Kartal Yuvası” and “Kartalın Yuvası” is same, the similarity and likelihood of confusion between these two phrases is established in this case.

It is also well established with numerous UDRP decisions that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it is confusingly similar to that mark despite the addition of a word or, possessive suffix (see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; and Wal-Mart Stores, Inc. v. Kuchora, Kal, WIPO Case No. D2006-0033).

This Panel agrees with the reasoning set out in Sony Kabushiki Kaisha also trading as Sony Corporation v. Sin, Eonmok, WIPO Case No. D2000-1007, which held that the addition of the word “my” is not sufficient to avoid confusion. The relevant comparison to be made is with the “ın” possessive suffix which means “ ’s”. Likewise, the Panel refers to Société Des Eaux De Volvic v. Yasushi Okabayashi / Kikakusha, WIPO Case No. D2004-0304 where the panel of that case stated that “The extra ‘s’, denoting the plural or possessive form, does not materially distinguish these two domain names from the trade mark.”

In the light of above the Panel is of the opinion that the disputed domain name is confusingly similar to the Complainant’s registered trademark.

Accordingly, the Panel finds that the Complainant has established the first element of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy states that a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [the 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 [the 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 [the 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 is on the complainant to demonstrate a prima facie case that the respondent does not have rights or legitimate interests in the disputed domain name. Once the complainant has made out a prima facie case, then the respondent may, by, inter alia, showing one of the above circumstances, demonstrative rights or legitimate interests in the disputed domain name.

Based on the content of the case file, the Panel holds that the use of the KARTAL YUVASI mark has not been authorized or licensed to the Respondent, and the disputed domain name does not obviously correspond to the Respondent’s name or a trade name by which it has become commonly known. Rather, the website gives the appearance that it is the official website of the Complainant or its sporting club or that the Respondent is endorsed by or affiliated with the Complainant.

Also it is not possible to consider the website at the disputed domain name as a fan site, since the UDRP requires the noncommercial intent for fan sites. On the contrary, in this case the mentioned website sells products of the Complainant’s sports club by saying that they are original products. At this point the Panel refers to the Helen Fielding v. Anthony Corbert aka Anthony Corbett, WIPO Case No. D2000-1000.

Consequently, in the absence of a response, the Panel accepts the Complainant’s allegations as true that the Respondent has no authorization to use the KARTAL YUVASI trademark even with the possessive suffix “ın” at the end of the word “Kartal”.

Hence, as the Complainant has made out its prima facie case, and as the Respondent has not demonstrated any rights or legitimate interests as illustrated under paragraph 4(c) of the Policy, nor has the Panel found any other basis for finding any rights or legitimate interests of the Respondent in the disputed domain name, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

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 the disputed domain name in bad faith:

(i) circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name’s 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 disputed domain name; or

(ii) the Respondent has registered the disputed 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed 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 the Respondent’s website or location.

By consideration of the foregoing, the Panel is of the opinion that due to the earlier trademark rights of the Complainant and also as evidenced by the website at the disputed domain name selling goods purported to be licensed products of the Complainant, the Respondent was clearly well aware of the Complainant’s trademarks and its reputation when it registered the disputed domain name. As a matter of fact, this website is being used to mislead the customers which are supporters of Beşiktaş JK. Although the Panel cannot be sure whether the goods sold through the website at the disputed domain name are original or licensed products of the Complainant, this Panel finds that even if the Respondent sells the original products this activity does not give the Respondent the right of registering a domain name consisting of the Complainant’s trademark. In any event, on the website there is no disclaimer disclosing the relationship between the Respondent and the Complainant.

Also, when the Panel visited the website at the disputed domain name it was not active and no content was received. However, when the Panel visited the captured main page of the disputed domain name dated December 6, 2014 through “www.archive.org” and as it is seen by the evidences submitted by the Complainant, usage of the Complainant’s name and logo with “BJK Shop” phrase indicates the bad faith of the Respondent.

Moreover, selling products at the disputed domain name by giving the impression of the official website of the Complainant should be considered as bad faith use. The customers of the Respondent’s website will probably have the misled idea that the Respondent is somehow endorsed by or associated with the Complainant.

By consideration of the foregoing, the Panel is of the opinion that due to the earlier trademark rights of the Complainant in KARTAL YUVASI and its extensive and exclusive usage, the Respondent, who appears to be located in Turkey, was most likely aware of the Complainant and its trademark rights. 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.

Consequently, the Panel is of the opinion that:

(i) the Respondent did not offer any response and remained in default;

(ii) the Complainant’s trademark has a strong reputation and is well-known all around Turkey where the Respondent is located;

(iii) the Respondent has not provided any evidence or offered any reason for registration and use of the disputed domain name.

Therefore, in light of the above-mentioned conditions of the present case, the Panel is convinced that the disputed domain name has been registered and is being used in bad faith and that the Complainant has established the third element under paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <kartalinyuvasi.com> be transferred to the Complainant.

Selma Ünlü
Sole Panelist
Date: March 6, 2015