WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Komili Teknik Hizmetler San. A.Ş. v. Muhammet Özşahin

Case No. D2016-1592

1. The Parties

The Complainant is Komili Teknik Hizmetler San. A.Ş. of Istanbul, Turkey, represented by Hande Şenyer, Turkey.

The Respondent is Muhammet Özşahin of Istanbul, Turkey, self-represented.

2. The Domain Name and Registrar

The disputed domain name <komilibebekbezi.com> 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 4, 2016. On August 4, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 4, 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 and confirming that the language of the registration agreement is English. The Center sent a compliant deficiency notification to the Complainant on August 23, 2016. The Complainant filed an amended Complaint on August 26, 2016.

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”).

On August 29, 2016, the Respondent requested that Turkish be used in communications. On August 30, 2016, the Center notified the Parties that the language of the registration agreement is English, and that the Rules specify that the language of the proceeding would typically be the language of the registration agreement, unless otherwise agreed by the Parties or determined otherwise by the Panel. There was no reply confirming any such Party agreement.

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 30, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 19, 2016. The Response was filed with the Center on September 19, 2016.

The Center appointed Uğur G. Yalçıner as the sole panelist in this matter on September 21, 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.

4. Factual Background

The Complainant provides goods in different classes including baby-care products and is the owner of various trademarks which contain KOMİLİ as the main element (including in relation to, inter alia, olive oil). According to the evidence submitted by the Complainant, its trademark KOMİLİ was first registered in Turkey on December 31, 1986 with registration number 91971. The Complainant also owns the trademark KOMİLİ BEBE, which was first registered in Turkey on July 7, 2010 with the application and registration number 2009/39893. The Complainant is the owner of the domain names <komili.com.tr> and <komilibebe.com.tr>.

The Respondent is a Turkish individual who is located in Istanbul, Turkey.

The disputed domain name <komilibebekbezi.com> was registered on May 14, 2016. It resolves to an active website, through which the Respondent offers the Complainant’s products for sale.

5. Parties’ Contentions

A. Complainant

The Complainant’s assertions may be summarized as follows:

The Complainant alleges that the disputed domain name <komilibebekbezi.com> is identical with or confusingly similar to the trademarks of the Complainant. The Complainant owns the well-known trademark KOMİLİ and has been using it for more than 25 years in the classes 03 and 05. The Complaint explains that its trademark KOMİLİ is the main element and the descriptive term “bebek bezi” (meaning “baby diaper” in Turkish) is the secondary element in the disputed domain name.

The Complainant states that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent neither has a registered right to use the term “Komili Bebek Bezi” nor used it before the Complainant.

The Complainant alleges that the disputed domain name has been registered and is being used in bad faith. The Complainant notes that the disputed domain name was registered shortly after the launch of a new diaper product. The Complainant states that it contacted the Respondent via email and requested the transfer of the disputed domain to itself. However, the Respondent refused to transfer the disputed domain name to the Complainant, stating that “he will not sale this domain name since the domain name is more valuable”.

On the basis of the above, the Complainant requests the disputed domain name to be transferred to the Complainant.

B. Respondent

The Respondent submitted its Response in Turkish, despite the Center confirming that the language of the registration agreement is English and in the absence of any agreement between the Parties. The Panel, in accordance with its powers under paragraph 10 of the Rules, finds that the Response can be evaluated. The Respondent’s assertions may be summarized as follows:

The Respondent states that the trademark KOMİLİ is not a well-known trademark in relation with the Complainant’s diaper products, but is a well-known trademark in relation with the olive oil products under the name “Komili Zeytinyağı”, which are produced and marketed by the company “Ana Gıda İhtiyaç Maddeleri Sanayi ve Ticaret Anonim Şirketi”.

The Respondent also states that the Complainant registered the trademark KOMİLİ BEBE in the class 03 and alleges that it is not registered in the class 05, which includes baby diapers. The Respondent also claims that “bebek” and “bebe” are terms that might have different meanings in Turkish and therefore, the disputed domain name is not identical to the Complainant’s trademark KOMİLİ BEBE.

The Respondent indicates that the disputed domain name has been used by the Respondent to sell the Complaint’s products and alleges that this commercial activity does not constitute an illegal action.

The Respondent claims that the Complaint has no right to take the disputed domain name since the domain name is different from the Complaint’s trademark, and in any event the Complainant had an opportunity to register the disputed domain name but chose not to.

The Respondent also accuses the Complainant of reverse domain name hijacking.

The Respondent also confirms that the parties negotiated for the sale of the disputed domain name from the Respondent to the Complainant, however the parties could not reach an agreement through these negotiations.

6. Discussion and Findings

6.1. Language of the Proceeding

Pursuant to the Rules, paragraph 11(a), in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

According to information received from the Registrar, the language of the registration agreement for the disputed domain name is English and the Complaint has submitted the Complaint in English. The Respondent has submitted his response in Turkish and requested the language of the administrative proceeding to be in Turkish. The Complainant did not make any request for the language of the proceedings to be in Turkish. The Panel considers that the Respondent understands the Complaint and submits its Response to the Complaint. In consideration of these circumstances, the Panel agrees to hold the proceeding in English in accordance with paragraph 11(a) of the Rules.

Additionally, the Panel is familiar with both English and Turkish and given the circumstances of this case, has decided to consider the communications submitted by the Respondent in rendering its decision. The Panel has considered whether it is necessary or appropriate to require the Respondent to translate the Response into English. However, since the Panel is familiar with Turkish and sees nothing exceptional in the Response which the Complainant could not reasonably have anticipated at the time of filing, the Panel sees no compelling reason to further delay the proceedings. For this reason, the Panel believes that it is fair here to consider the Respondent’s Response submitted in Turkish (See LouenHide Pty Ltd. v. Jiang Kang, Yongkang Jiang, WIPO Case No. D2011-1461, where the Response submitted other than the proceeding language was considered by the Panel).

6.2. Substantive Issues

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

(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.

A. Identical or Confusingly Similar

The Panel agrees that the disputed domain name <komilibebekbezi.com> is confusingly similar to the Complainant’s trademarks, since the term “bebek bezi” means “baby diaper” in Turkish and it does not help to avoid the confusing similarity between the Complaint’s trademark and the disputed domain name. The Panel notes that the main element of the disputed domain name is KOMİLİ and the Complaint has registered trademarks KOMİLİ and KOMİLİ BEBE.

As numerous prior UDRP panels have held, the fact that a domain name wholly incorporates a complainant's registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks, such as here the non-distinctive, descriptive term “bebek bezi” (e.g., EAuto, L.L.C. v. EAuto Parts, WIPO Case No. D2000-0096, Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493, and Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046).

As a conclusion, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademarks and that the requirements in paragraph 4(a)(i) of the Policy are fulfilled.

B. Rights or Legitimate Interests

The Panel notes that the Complainant did not grant any license, permission or authorization to the Respondent to use the subject mark in the disputed domain name.

The Panel also notes that the Respondent appears to have neither a trademark application nor a trademark registration for the term “komili bebek bezi”.

The Panel notes that the disputed domain name is being used in connection with an unauthorized website apparently offering for sale the Complainant’s goods, and in this regard the discussion at paragraph 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) is relevant. Applying the consensus view, normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site's accurately and prominently disclosing the registrant's relationship with the trademark holder. The respondent must also not try to "corner the market" in domain names that reflect the trademark.

When comparing the Parties’ respective websites, the Panel notes that the Respondent’s website bears some similarities to the Complainant’s website. Especially the look and feel of the Respondent’s website is designed to resemble that of the Complainant and that the Respondent has copied the Complainant’s color scheme, layout, images, and also some content. At this point, since there is no disclaimer included in the disputed domain name, the Panel concludes that Internet users are likely to be misled into supposing that the website at the disputed domain name indicates a site belonging to, or authorized by, the Complainant. Continued use of the disputed domain name in this manner could lead consumers to mistakenly believe that the products featured are offered, sponsored, and endorsed by Complainant.

Therefore, in all the circumstances of this case the Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Complainant asserts that the Respondent registered the disputed domain name in bad faith. The Complainant and the Respondent both agree that the products for sale under the disputed domain name are the Complainant’s products.

Firstly, it is clear that the Respondent has actual and constructive knowledge of the Complainant’s trademarks, and besides that, his domicile is in Turkey where the Complainant’s trademark is well known. Therefore, the Panel finds that the Respondent had the Complainant’s trademark in mind when he registered the disputed domain name. The Respondent registered the disputed domain name right after a new product line (diapers) was launched by the Complainant (See the examples where the respondent’s knowledge of the complainant’s mark at the time of registration of the domain name suggests bad faith: Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137; Document Technologies v. International Electronic Communications, Inc., WIPO Case No. D2000-0270).

Secondly, the Panel concluded that the disputed domain name is confusingly similar to the Complainant’s trademarks. Previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (See Edmunds.com, Inc v. Triple E Holdings Limited, WIPO Case No. D2006-1095). There is a clear intention by the Respondent to benefit from the Complainant’s reputation and products, by creating confusion with the Complainant’s trademarks and products as to the source, sponsorship, affiliation or endorsement of the Respondent’s website (See Natura Cosméticos S/A, Indústria e Comércio de Cosméticos Natura Ltda.v. Hector Soto, WIPO Case No. D2012-0002). To this end, prior UDRP panels have established that attracting Internet traffic for commercial gain by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.

The Complainant also contends that the disputed domain name was registered and used in bad faith because the Respondent requested the Complainant to propose an offer for the transfer of the disputed domain name. The question turns on whether the Respondent obtained the domain name for the purpose of selling it for profit knowing that it was identical or confusingly similar to a mark owned by the Complainant. At this point, the Panel takes into consideration the e-mail communication sent by the Respondent to the Complainant, dated May 23, 2016 and provided by the Complainant in its submissions, where the Respondent gives an example of a domain name, which provided its owner with a monthly revenue of around 1 million Turkish Liras through the sale of its products, and the Respondent alluded that the Complainant should make his proposal by considering this example. According to this information, the Panel concludes that the amount of the Respondent has mentioned in the above-mentioned e-mail is much more than the out-of-pocket costs (including the costs of obtaining, registering and maintaining the disputed domain name). This issue of “excessive” out-of-pocket costs is considered on a case-by-case basis and in the Panel’s opinion, the amount mentioned would greatly exceed the Respondent’s out-of-pocket costs. Therefore, the Panel considers the Respondent’s request to support a finding of the registration and use of the disputed domain name in bad faith, as per paragraph 4(b)(i) of the Policy.

Additionally, as mentioned previously, the Panel finds that the Respondent’s website improperly misrepresents itself as the Complainant and causes Internet confusion for commercial gain, as per paragraph 4(b)(iv) of the Policy.

Finally, when the Panel visited the disputed domain name, he noticed irrelevant content in the bottom left corner of the website called “Krep Tarifleri” (meaning “Crepe Recipes” in Turkish). Once Internet users click on this link, they are directed to a blogger website called “www.mutfaktayemektarifleri.com” (meaning “recipes in the kitchen”). This website has advertisement links that redirect Internet users to a website called “www.kapicin.com” (meaning your “janitor” in Turkish) that is an online retail store selling products, some of which directly compete with the Complainant’s products. Such conduct has supported findings of bad faith registration and use under paragraph 4(b)(iv) in previous UDRP cases, including Pfizer Inc. v. Juan Gonzales, WIPO Case No. D2004-0589 and F. Hoffmann-La Roche AG v. Web Marketing Limited, WIPO Case No. D2006-0005. Even though the above-mentioned irrelevant content is barely noticeable, the Panel has to consider his finding as further evidence of registration and use of the disputed domain name in bad faith.

Having considered all the facts in this case, the Panel holds that the Respondent registered and is using the disputed domain name in bad faith.

Reverse domain name hijacking

The Respondent alleges that the Complainant has acted in bad faith and is engaging in reverse domain name hijacking by initiating this dispute. In this case, there is insufficient evidence to support a finding of reverse domain name hijacking.

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 <komilibebekbezi.com> be transferred to the Complainant.

Uğur G. Yalçıner
Sole Panelist
Date: October 10, 2016