WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Çelik Motor Ticaret A.S. v. ONUNO L.L.C

Case No. D2015-0369

1. The Parties

1.1 The Complainant is Çelik Motor Ticaret A.S., of Istanbul, Turkey, represented by Gün Avukatlik Bürosu Mehmet Gün & Partners, Turkey.

1.2 The Respondent is ONUNO L.L.C, of Delaware, United States of America, self-represented.

2. The Domain Name and Registrar

2.1 The disputed domain name is the internationalized domain name <çelikmotorfilo.com> - i.e. <xn--elikmotorfilo-hgb.com> - (the “Domain Name”) and is registered with Dynadot, LLC (the “Registrar”).

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 3, 2015. On March 4, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 10, 2015, 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.

3.2 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”).

3.3 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 March 12, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 1, 2015. The Response was filed with the Center on March 31, 2015.

3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on April 14, 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

4.1 The Complainant is a company that appears to be located in Turkey and is an affiliate company of Anadolu Endustri Holding. It has operated in the automotive sector for over 50 years.

4.2 The Complainant is also the owner of various registered trade marks in Turkey that either incorporate or comprise the terms “Çelik Motor” or “Çelik Motor Filo”. In particular, it is the owner of the following marks:

(i) Turkish registered trade mark no 178848 with an application date of September 11, 1996 (and with a registration date of November 19, 1997) in class 12, which takes the following form:

The class 12 specification (according to the Complainant) covers “Land vehicles and motors and parts and accessories for these vehicles except for the ones manually operated and railed.”

(ii) Turkish registered trade mark No. 2013/46509 with an application date of May 23, 2013 (and with a registration date of May 29, 2014) in class 39, which takes the following form:

The class 39 specification (according to the Complainant) covers “Land, sea and air transporting services, and services of leasing land, sea and air vehicles (including tour arranging services, booking of sears for travel, courier services)”.

(iii) Turkish registered trade mark No. 2014/58416 with an application date of July 11, 2014 (and with a registration date of March 5, 2015) in class 39, which takes the following form:

The class 39 specification (according to the Complainant) covers “Land, sea and air transporting services, and services of leasing land, sea and air vehicles (including tour arranging services, booking of sears for travel, courier services)”.

4.3 The Complainant also uses the following domain names, registered on the following dates in respect of its business:

- <celikmotor.com> registered on January 29, 2009

- <celikmotorfilo.com> registered on January 29, 2009

4.4 The Domain Name was registered on April 29, 2011.

4.5 The Respondent appears to be a U.S. entity.

4.6 Since registration the Domain Name has been used to display a webpage with a banner (in Turkish) offering the Domain Name for sale for EUR 9,500. Below that banner was to be found text and photographs that promote the lingerie products of a Turkish company operating from a website that uses the domain name <gecegiyim.com>.

4.7 More recently, the page operating from the Domain Name has changed, being replaced with text arguing that certain of the words incorporated in the Domain Name are descriptive and that any trade mark comprising those terms should be “cancelled and deleted immediately”.

5. Parties’ Contentions

A. Complainant

5.1 The Complainant refers to its various trade marks and asserts that the length of time that it has used these marks has resulted in the marks becoming famous throughout Turkey.

5.2 The Complainant contends that the Domain Name comprises the three components: “Çelik” “Motor” and “Filo”. It claims that the first two components are identical to what it describes as its “ÇELİK MOTOR trade[ ]mark” (presumably No. 2013/46509) and the Domain Name as a whole is identical to what it describes as its “ÇELİK MOTOR FİLO” trade mark application (presumably registered trade mark No. 2014/58416 ). In this respect, it asserts that “filo” means fleet in Turkish and is “not a distinctive term for [the] automotive industry”.

5.3 The Complainant further contends that the use that the Respondent has made of the Domain Name in promoting a website for the sale of women’s lingerie does not provide a right or legitimate interest for the purposes of the Policy.

5.4 The Complainant contends that the fame of its marks are such that it “is very unlikely that traders would legitimately choose to use it” and that “it is more likely that the purpose [of the registration of the Domain Name] is to sell the [D]omain [N]ame at a high price”.

B. Respondent

5.5 The Respondent contends that “Çelik Motor” are Turkish words that translate into English as “Steel Motor” or “Steel Engine”. These are claimed to be descriptive terms that should not as a matter of law be registered as trade marks. In this respect it appears to rely upon a WIPO document titled “Standing Committee On The Law Of Trademarks, Industrial Designs And Geographical Indications: Twenty-Third Session”.

5.6 The Respondent’s Reply also contains the following statement

“If we assume trademark as combined words as ‘Çelik Motor Filo’ as three components is valid; maybe it would be acceptable as trademark but [its] protection/registration date is after Respondent’s domain purchase date.”

5.7 This statement appears to be a reference to the fact that two of the marks relied upon by the Complainant that contain the term “Çelik Motor Filo”, were applied for after the Domain Name was registered.

6. Discussion and Findings

6.1 It is incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy. The Complainant must prove that:

(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and

(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).

6.2 The Panel will separately address each of these requirements of the Policy.

A. Identical or Confusingly Similar

6.3 The present case is one where the complainant relies upon a mark that is a device mark that contains text and where the complainant claims that the Domain Name is identical or confusingly similar to the textual element of the mark, but the respondent contends that the textual element is descriptive or generic.

6.4 The Panel recently considered the sort of issues that such cases raise in Pullmantur, S.A. v. Domain Asset Holdings, LLC, Domain Administrator, WIPO Case No. D2015-0053. In the Panel’s opinion it is not possible to simply disregard the non-textual elements of a mark when it comes to the comparison and assessment required by the first limb of the Policy. As this Panel stated in Philip Morris USA Inc. v. Marlboro Beverages / Vivek Singh, WIPO Case No. D2014-1398:

“In this Panel’s view when comparing a domain name and the trade mark for the purposes of the Policy, it is always the mark as a whole and the domain name as a whole that should be compared. There is nothing in the wording of the Policy that suggests that the exercise should be a comparison of some sub-set of either and if as a matter of course certain parts of a mark or a domain name are ignored, there is a danger that the elements of the mark or name that remain will be considered out of context and given undue weight.”

6.5 On this view, the Domain Name and the trade marks relied upon by the Complainant cannot be identical for the purposes of the Policy. The question is whether they are confusingly similar.

6.6 In most cases such as this, whether the test is whether mark and domain name are identical or confusingly similar does not make any practical difference. This is because (as is, for example, discussed in paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)), the issue of confusing similarity is merely a “threshold test”, and not a particularly high threshold at that (see the discussion in Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227).

6.7 However, matters become more problematic where it is credibly alleged that the textual part of the mark relied upon is generic or descriptive of the goods and services in respect of which it has been registered and used. In such a case it may be contended that were it not for the non-textual elements of the mark, the mark would not have proceeded to grant and that it would be unfair to allow a complainant to essentially claim rights for the purposes of the Policy in the descriptive textual element alone.

6.8 This was essentially the problem that was faced by the panel in Jobs on the Net Limited, Andrew Middleton v. International New Media Limited, WIPO Case No. D2011-1531. The disputed domain name in that case was <nannyjob.com> and the marks relied upon were the word marks NJ NANNY JOB and NJ NANNYJOB. This was not a device mark case, but the respondent contended that the term “Nanny Job” was descriptive and that any distinctiveness in the marks relied upon by the complainant arose solely out of the “NJ” addition to those marks.

6.9 In considering what was the right approach to take, the panel considered various previous cases under the Policy and in particular the decision in Meat and Livestock Commission v. David Pearce aka OTC / The Recipe for BSE, WIPO Case No. D2003-0645 (the British Meat case). Having done so, it then commented as follows (starting at para 6.7):

“[...] At its heart the reasoning in the British Meat case addresses a concern that many registered trade marks may only be able to proceed to registration because a non-distinctive element that could not have been registered alone (for example the words ‘British Meat’) has been combined with some distinctive feature (for example, a distinctive font or logo). If this is so, there is an understandable reservation amongst panelists that such a mark can be relied upon under the UDRP in circumstances where only the ‘non-registrable’ element is relied upon. It [is] a point that the Respondent itself makes when it asserts in the Response

‘The Respondent would not be surprised to learn that the Complainant opted to apply for this trade mark, and to use the ‘nj’ prefix in its name, because it had been advised that the term ‘nanny job’ alone was unregistrable and unprotectable.’

... In the case of some trade mark registries the issue is addressed by the registry requiring the non-distinctive element of the mark to be expressly disclaimed. If the only similarity between the mark and domain name in issue is the disclaimed element, then there can be no similarity and a claim under the Policy will fail (see, for example, Minibar North America Inc. v. Ian Musk & GEMS Global Electronic Minibar Systems AS, WIPO Case No. D2005-0035). However, the approach to disclaimers varies from registry to registry. For example, in the U.K. Intellectual Property Office (the relevant registry so far as the Complainant’s registered marks are concerned), while it may sometimes be in the interest of the registrant to disclaim certain words, the inclusion of a disclaimer is voluntary (see paragraph 62 in Chapter 6 of the Trade Marks Work Manual).

... That said, the approach in the British Meat case if taken too far can involve a panel embarking upon an assessment of the exact extent of a complainant’s trade mark rights that a panel under the Policy may be ill equipped to address. There are also plenty of cases under the UDRP where panels appear to have taken a somewhat more permissive approach. Further, and in any event, the less distinctive the element relied upon by the complainant, the harder it will be for the complainant to satisfy the other requirements of the Policy. In the circumstances, and if the first element of the Policy sets up a standing requirement, then these issues may be better addressed under those elements of the Policy.

... With this in mind, the Panel respectfully declines to follow the reasoning in the British Meat case insofar as that case is said to be authority for the proposition that a complainant must show that a part of the mark relied upon has acquired secondary meaning in the sense that it has become exclusively associated with the complainant’s goods and service. Instead, the Panel is of the view that the dismissal of a complaint under the first heading of the Policy on the ground that only a non-distinctive element of a registered trade mark has been taken, should be restricted to those cases where it is clear that the element of the trade mark relied upon is so completely devoid of distinctive character that it is incapable of distinguishing the goods and services in respect of which the mark is registered.”

6.10 The Panel adopts that reasoning in the case now before it. The Respondent refers to a working paper of the WIPO Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications. However, there is nothing in the paper that suggests that the reasoning and approach set out in the Jobs on the Net Limited case supra is a wrong one in proceedings under the Policy. The passage that the Respondent cites from this document gives as an example of the sort of trade mark that should not be registered as “the word ‘sweet’ as a mark for candies or confectionary”. “Sweet” is a good example of a term that would be incapable of distinguishing candies or confectionary and therefore were it to appear in a mark for such products might be ignored for the purposes of the domain name and trade mark comparison under the Policy.

6.11 Accordingly, the question the Panel needs to address is whether the terms “Çelik Motor” and “Çelik Motor Filo” that appear in the marks relied upon by the Complainant and in the Domain Name are so completely devoid of distinctive character that they are clearly incapable of distinguishing the goods and services in respect of which the Complainant’s mark are registered.

6.12 In addressing that question, the Panel faces the difficulty that it does not speak Turkish. The Panel will therefore proceed on the assumption that the Respondent is correct that “Çelik Motor” translates as “Steel Motor” or “Steel Engine” and that (as the Complainant contends and the Respondent does not appear to contest) the word “Filo” translates as “Fleet”.

6.13 As a matter of English the terms “Steel Motor” and “Steel Engine” are not obviously descriptive of vehicles; which appear to be covered by the earliest of the three trade marks that the Complainant relies upon (even if they might be descriptive of the engines that may be found in such vehicles, and which are also covered by this mark). Similarly, they are not obviously descriptive of “Land sea and air transport services” in respect of which the other two trade marks have been registered.

6.14 In the circumstances, the Panel concludes that these terms are not incapable of distinguishing the goods and services in respect of which they have been registered and given the prominence of the terms “Çelik Motor” and/or “Çelik Motor Filo” in those marks, that the Domain Name is for the purposes of the Policy confusingly similar to each of the Complaint’s marks.

6.15 Indeed, as far as the Panel can tell the Respondent appears to accept that the Domain Name might well be confusingly similar to the two trade marks relied upon by the Complainant that contain the words “Çelik Motor Filo”. Although the latest of these two marks appears to have taken the form of an application at the time that the Complainant was filed, it does appear to have proceeded to formal registration prior to the formal commencement date of these proceedings on March 12, 2015. Instead the Respondent appears to contend that these two marks can and should be disregarded because the protection and registration date of these marks post date the date upon which the Domain Name was registered. However, so far as paragraph 4(a)(i) is concerned, this is not the right approach. The fact that the relevant mark was registered when the proceedings commenced is sufficient (see paragraph 1.4 of the WIPO Overview 2.0). The timing of the registration of a mark may be important but this is relevant not to the assessment under 4(a)(i) of the Policy, but to the separate assessments to be conducted under paragraphs 4(a)(ii) and 4(a)(iii) of the Policy.

6.16 Accordingly, the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

6.17 The Panel finds that the Respondent has no rights or legitimate interests in the Domain Name. The Respondent claims that the Domain Name was registered for some project. However, that project is not described or explained. Also the Domain Name has not been used for any project consistent with the meaning of the text in the Domain Name since its registration four years ago. The Respondent has also failed to provide evidence that would constitute “demonstrable preparations to use” the Domain Name for such a project. Accordingly, the Respondent has not shown “demonstrable preparations to use” the Domain Name in connection with a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy.

6.18 Further, for the reasons that are described under the heading “Registered and Used in Bad Faith” below, the Panel concludes that the Domain Name was registered and has been held with knowledge of the Complainant’s use of “Çelik Motor Filo” as the name of part of its business and with the intention of taking advantage of this fact and any trade mark rights that the Complainant might subsequently obtain in that term. Such activity does not provide a right or legitimate interest under the Policy,

6.19 In the circumstances the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

6.20 The Panel has little hesitation in concluding that the Domain Name was registered with knowledge of the Complainant’s use of “Çelik Motor Filo” as the name of part of its business. There are a number of reasons for this. First, there is the Complainant’s use of the <celikmotorfilo.com> domain name for a website since 2009. At that time internationalized domain names were not formally recognized by ICANN in the “.com” TLD and this domain name was obviously the closest approximation to <çelikmotorfilo.com> then possible. Second, although the Complainant has filed very little evidence to support its contention that the terms “Çelik Motor” and “Çelik Motor Filo” are famous in Turkey, these claims do not appear to be disputed by the Respondent. Third, the Complainant expressly contends that the Respondent would have been aware of the Complainant’s use of those terms, and once again this does not appear to be disputed.

6.21 Given this, the only reasonable conclusion it is possible to reach is that the Domain Name was registered with the intention of taking unfair advantage in one way or another of the fame and reputation that the Complainant had built up in the terms “Çelik Motor” and “Çelik Motor Filo”. The Respondent protests that the Domain Name was registered for use in some project that would take advantage of the descriptive meaning of the words in the Domain Name. However, as has already been addressed under the heading “Rights or Legitimate Interests” above, this project is neither explained nor evidenced. Further the claim is inherently incredible. Even if one accepts that “Çelik Motor” might be used in some descriptive sense, the addition of the word “Filo” in the Domain Name is revealing. Although (as the Complainant accepts) this word, translating as “fleet”, is an ordinary Turkish word, it is an odd word to use in conjunction with “Çelik Motor”. In the absence of any explanation as to how these words might be sensibly used in combination in a descriptive sense, the obvious conclusion is that they were chosen by the Respondent to take advantage of the Domain Name’s association with the Complainant.

6.22 This is a conclusion that is also reinforced by the fact that the Domain Name was also offered for sale for EUR 9,500. Further, the actual use made of the Domain Name (i.e. to promote a Turkish lingerie business) has no obvious connection with the words in the Domain Name.

6.23 There remains the fact that two of the three trade marks relied upon by the Complainant post date the registration of the Domain Name. However, (even if one were to ignore the first of the three marks relied upon by the Complainant) this fact provides no answer to the Complaint in this case. The reason is that as section 3.1 of the WIPO Overview 2.0 records:

“In certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found. This has been found to occur: shortly before or after a publicized merger between companies, but before any new trademark rights in the combined entity have arisen; or when the respondent (e.g., as a former employee or business partner, or other informed source) seeks to take advantage of any rights that may arise from the complainant’s enterprises; or where the potential mark in question is the subject of substantial media attention (e.g., in connection with a widely anticipated product or service launch) of which the respondent is aware, and before the complainant is able to obtain registration of an applied-for trademark, the respondent registers the domain name in order to take advantage of the complainant’s likely rights in that mark […].”

6.24 Therefore where a complainant has used the relevant sign in a trade mark sense prior to the domain name’s registration and the domain name has been registered with the intention of taking advantage of any trade mark rights that may subsequently arise, there may be bad faith registration and use. The Panel finds that this has occurred in this case.

6.25 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy.

7. Decision

7.1 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, <çelikmotorfilo.com> (<xn--elikmotorfilo-hgb.com>) be transferred to the Complainant.

Matthew S. Harris
Sole Panelist
Date: April 17, 2015