The Complainant is Belbim Istanbul Belediyeleri Bilgi Islem Enerji Sanayi ve Ticaret Anonim Sirketi of Istanbul, Turkey, represented by Yusuf Bardak, Turkey.
The Respondent is Murat Arslan, PRESTIJ.COM (INTERNET HIZMETLERI) of Istanbul, Turkey, represented by Net Koruma Danismanlik Hizmetleri, Turkey.
The disputed domain name <istanbulkart.com> is registered with GoDaddy.com, LLC (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 7, 2016. On March 7, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 7, 2016, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on March 15, 2016.
On March 10, 2016, the Center notified the Parties in both Turkish and English that the language of the registration agreement for the disputed domain name was English. On March 15, 2016, the Complainant requested for Turkish to be the language of the proceeding, to which the Respondent did not reply.
The Center verified that the Complaint together with the amendment to 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 and 4, the Center formally notified the Respondent of the Complaint in both Turkish and English, and the proceedings commenced on March 23, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 12, 2016. Further to the Respondent's request, the due date for Response has been extended by the Center to April 16, 2016. The Response was filed with the Center on April 16, 2016.
The Center appointed Emre Kerim Yardimci as the sole panelist in this matter on April 29, 2016. 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.
The Complainant is an Information Technology company which provides, IT services to the municipality of Istanbul in the area of payment systems, public transportation, energy management, traffic controlling, public transportation among others.
The Complainant provided payment services under ISTANBULKART trademark for Municipality's public transportation services since 2007. The Complainant obtained two Turkish trademarks in classes 9 and 45;
- Turkish Trademark registration ISTANBULKART no. 2007/46086 filed on August 27, 2007 in class 9;
- Turkish Trademark registration ISTANBULKART no. 2009/22754 filed on May 06, 2009 in class 45.
The disputed domain name is registered on March 8, 2009. The registrant of the disputed domain name is Murat Arslan residing in Istanbul, Turkey.
The Complainant has filed criminal complaint on March 18, 2009 where the public prosecutor instituted a criminal action on March 24, 2010 against the Respondent before the 1st Istanbul Criminal Court of Intellectual and Industrial Property Rights for trademark infringement. The Court sentenced the Respondent for imprisonment up to 10 months and the payment of monetary fine equivalent of 4 days.
The announcement of the verdict has been deferred with the condition that the Respondent does not commit another crime within a period of 5 years. The judge rejected the request of the Complainant with respect to blocking of the access to the website "www.istanbulkart.com" however allowing the Complainant to follow the matter through civil action.
The disputed domain name <istanbulkart.com> is currently a non-active website.
The Complainant contends that the disputed domain name is identical to its ISTANBULKART trademark.
The Complainant considers that the Respondent has no rights or legitimate interests in respect of the disputed domain name, mainly because the Respondent is not commonly known by the disputed domain name and the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. The Complainant further argues that the Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services.
Finally, in addressing the question of registration and use of the disputed domain name in bad faith, the Complainant observes that the Respondent could not ignore the Complainant's trademark as the Respondent promoted payment services of the Complainant in its website "www.istanbulkart.com". Furthermore, the Complainant contends that the Respondent by using the disputed domain name intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's trademark mark as to the source, sponsorship, affiliation, or endorsement of the website.
The Complainant contends that this registration is clear case of an abusive registration within the meaning of paragraphs 4(b)(iii) and (iv) of the Policy.
The Respondent states that the disputed domain name is composed of a geographical term "Istanbul" and a dictionary word "kart" which means "card" in Turkish.
The Respondent alleges that it is not displaying information relating to ISTANBULKART payment services in their website "www.istanbulkart.com". The Respondent asserts that he is selling picture postcards, electronic postcards and photographs in its website.
The Respondent states that the website at the disputed domain name does not offer services directly competing with the Complainant's services and that the Respondent is not referring to any products or services of the Complainant on the website.
The Respondent contends that he did not register and use the disputed domain name in bad faith and that there is no court decision blocking the access to the website "www.istanbulkard.com". The Respondent contends the allegations of the Complainant that the Respondent offered to sell the disputed domain name to the Complainant for valuable consideration in excess of out-of-pocket costs is not true and there is no evidence in this respect.
Pursuant to paragraph 4(a) of the Policy, the Complainant is required to prove the presence of each of the following three elements to obtain the remedy it has requested:
(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; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Pursuant to paragraph 11(a) of the Rules, unless otherwise agreed by the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. The Registrar has confirmed that the registration agreement is in English in this case.
The Complaint was filed in Turkish and the Complainant has requested Turkish to be the language of the proceeding. The Respondent has not objected to the Complainant's request on language of the proceeding and submitted its Response in Turkish.
The Panel is familiar with both Turkish and English. Having assessed parties' communications in Turkish, the Panel however decided in accordance with paragraph 11 of the Rules, the language of proceeding as English in accordance with the language of the registration agreement.
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A trademark registration provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. As indicated above, the Complainant holds two trademark registrations for ISTANBULKART trademark.
The disputed domain name comprises the Complainant's trademark ISTANBULKART and the generic Top-Level Domain (gTLD) suffix ".com". As regards to the gTLD ".com", it is typically disregarded under the confusing similarity test.
The disputed domain name is identical to a trademark in which the Complainant has rights.
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
The onus is on the Complainant to make out at least a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and it is then for the Respondent to rebut this case.
The Panel accepts the Complainant's submissions that the Respondent does not appear to be known by the disputed domain name, has not used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, is not making a legitimate noncommercial or fair use of the disputed domain name, and has no consent from the Complainant to use its trademark.
The Respondent states that the disputed domain name is composed of geographical term "Istanbul" and a dictionary word "kart" which means "card" in Turkish and contends that he is using the website "www.istanbulkart.com" for selling picture postcards, electronic postcards and photographs in its website.
Although the Panel admit that the Respondent may have also been using the website for selling picture postcards, electronic postcards and photographs in its website which may indeed be a legitimate use, the Panel notes that the Respondent has been sentenced for the trademark infringement because of the content of the website "www.istanbulkart.com" referring to the Complainant's payment services and especially inauguration of ISTANBULKART branded services by the Mayor of Istanbul city.
In the Panel's view, the Respondent's such use of the disputed domain name cannot be considered as a bona fide offering of goods or services.
The Complainant has made out its prima facie case under this element of the Policy and the Respondent has failed to rebut it. Accordingly, the Complaint succeeds in relation to the second element of the Policy.
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith, namely:
(i) circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that the 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 the Respondent's website or other on-line 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.
After careful consideration of the parties' contentions and the evidences submitted before the Panel, the Panel concludes that the circumstances of paragraph 4(b)(iv) of the Policy are applicable to the present case.
According to the evidence submitted before Panel, the Panel finds that the Complainant's trademark ISTANBULKART enjoys a certain reputation for payment services regarding public transportation and that the Respondent is domiciled in Istanbul.
The Panel notes that the Complainant submitted evidences showing the content of the website "www.istanbulkart.com" referring to the Complainant's payment services as well as public transportation services in Istanbul.
Therefore, the Panel finds that the Respondent had actual knowledge of the Complainant's trademark rights at the time of the registration of the disputed domain name. Certainly, the decision of criminal court sentencing the Respondent to imprisonment for trademark infringement are very strong indication of usage of the disputed domain name in bad faith. In the absence of any evidence submitted by the Respondent, the Panel notes that the Respondent did not appeal to the decision of 1st Istanbul Criminal Court of Intellectual and Industrial Property Rights and that the decision has become final and definitive. See Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Internet Billions Domains Inc, WIPO Case No. D2003-0985, "With reference to the bad faith at the time of registration, it is certain that the Respondent was well aware of the ownership of such domain as another WIPO decision on the very same domain names was issued on January 8, 2001. Furthermore, the Respondent had already to transfer the very same domain names pursuant to the decision by United States Court of Appeals for the Fourth Circuit which confirmed, on May 19, 2003, the United States District Court for the Eastern District of Virginia's judgment rendered on March 25, 2002; in the latter procedure, the Judge has held in favor of the Complainant on its infringement and cybersquatting claims against the then registrants of the disputed domain names, awarding the Complainant also statutory damages."
The Panel finds that the Respondent registered the disputed domain name in bad faith and is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's trademark.
Therefore, in the view of cumulative circumstances, the Panel finds that this requirement is satisfied, according to the Policy.
The Respondent accuses the Complainant of an attempt of RDNH, when asking for the transfer of the disputed domain name. The Panel thinks that the arguments put forward by the Respondent for a supposed attempt of RDNH by the Complainant are far from being convincing in the view of the fact that criminal court action was finalized and became definitive in the absence of an appeal by the Respondent before the Supreme Court.
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, <istanbulkart.com>, be transferred to the Complainant.
Emre Kerim Yardimci
Sole Panelist
Date: May 19, 2016