Kitapyurdu Yayincilik ve Iletisim Limited Sirketi v. Kivilcim Istanbulluoglu
Case No. D2007-1266
1. The Parties
The Complainant is Kitapyurdu Yayincilik ve Iletisim Limited Sirketi, Istanbul, Turkey, (the Complainant) represented by Sahin Samur, Turkey.
The Respondent is Kivilcim Istanbulluoglu, Cankaya, Ankara, Turkey (the Respondent).
2. The Domain Name and Registrar
The disputed domain name <kitapkurdu.com> is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 27, 2007. On August 29, 2007, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On August 30, 2007, Moniker Online Services, LLC 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 September 6, 2007. 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”), 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 proceedings commenced on September 11, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was October 1, 2007. The Response was filed with the Center on October 1, 2007.
The Center appointed Dilek Ustun as the sole panelist in this matter on October 8, 2007. 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 has a trademark registration for the mark KITAP YURDU under International Class 35 before the Turkish Patent Office. The trademark KITAP YURDU is also in part the Complainant’s company name.
The trademark registration for the mark KITAP KURDU is in the name of Repar Tanitim ve Matbaacilik Hizmetleri Ltd.Sti. The registration date is: July 9, 2001.
The disputed domain name <kitapkurdu.com> was registered by the Respondent on June 12, 2001.
5. Parties’ Contentions
A. Complainant
The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights
The Complainant asserts that the Respondent’s domain name <kitapkurdu.com> is confusingly similar and identical to its registered service mark mentioned above.
The Respondent has no rights or legitimate interests in respect of the domain name
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The domain name was registered and is being used in bad faith
The Complainant states that the domain name <kitapkurdu.com> was registered and is being used in bad faith.
Additionally, the Complainant states that the Respondent registered the Domain Name with the intention of disrupting the Complainant’s business.
B. Respondent
The Respondent says that it has been engaged in the business of operating a worldwide Internet portal of books sites offering one-stop shopping in virtually all areas of commerce to the general public.
Generally, the Respondent says that it has made actual use of the domain name in connection with a bona fide offering of goods or services, and has not sought to divert or confuse customers of the Complainant.
The Respondent contends that the name “kitapkurdu” is a common dictionary term and the Complainant has no rights on this name.
The Respondent also asserts that Repar Tanitim ve Matbaacilik Hizmetleri Ltd.Sti. is another legal entity and not a party to the case as a Complainant.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant carries the burden of proving:
(i) That the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) That the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) That the domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) circumstances indicating that [the respondent has] registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name 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 domain name; or
(ii) [the respondent has] registered the 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 domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web 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 or service on [the respondent’s] website or location.
Paragraph 4(c) of the Policy sets out a number of circumstances, again without limitation, which may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in the disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] 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) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) Where [the respondent is] 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.
Paragraph 15(a) of the Rules requires the Panel to:
“… decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable”
A. Domain name identical or confusingly similar to trademark or service mark in which Complainant has rights
The question under paragraph 4(a)(i) of the Policy is whether the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant’s mark is KITAP YURDU. The disputed domain name is <kitapkurdu.com>.
The Complainant mentions that the mark KITAP KURDU is in the name of Repar Tanitim ve Matbaacilik Hizmetleri Ltd.Sti., which is stated to be a sister company of the Complainant.
Although the Complainant has submitted only limited evidence of this, the Panel accepts that the provided evidence is at least relevant to and consistent with such claim. The Complainant has also submitted evidence concerning its mark which indicates that it has been the subject of advertising and unsolicited media attention, and has provided information sufficient to show that the few receipts it submitted may have resulted in the creation of secondary meaning.
The Panel finds that the domain name at issue <kitapkurdu.com> is identical to the trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
Common words and descriptive terms are legitimately subject to registration as domain names on a “first come, first served” basis. Zero International Holding GmbH & Co. Kommanditgesellschaft v. Beyonet Services and Stephen Urich,
WIPO Case No. D2000-0161; EAuto, L.L.C. v. EAuto Parts,
WIPO Case No. D2000-0096.
Moreover, neither mere registration, nor general offers to sell, domain names which consist of generic, common, or descriptive terms can in the absence of other factors themselves be considered per se acts of bad faith. Shirmax Retail Ltd./Détaillants Shirmax Ltée v. CES Marketing Group, Inc.,
WIPO Case No. AF-0104; Allocation Network GmbH v. Steve Gregory,
WIPO Case No. D2000-0016.
According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions “If a respondent is using a generic word to describe his product/business or to profit from the generic value of the word without intending to take advantage of complainant’s rights in that word, then it has a legitimate interest”.
The Panel notes in this regard that the Turkish word “kitapkurdu” is a common dictionary term, roughly equivalent to the English word "bookworm". The Panel also notes that while the Respondent contends that it has used the domain name in connection with a bona fide offering of goods and services, and in particular a worldwide Internet portal of books sites offering one-stop shopping, the website at the disputed domain currently appears to merely contain a search engine which does not function, and a number of book-related "popular links" which do not connect to any other sites. Such use appears to have more in common with a typical landing page arrangement, and even if it were functional, it is not clear that such use is and of itself sufficient to create a right or legitimate interest in a domain name, even where comprised of a common dictionary term. On the other hand, the Panel notes that the Respondent's assertions of a legitimate interest in the use of this particular domain name are not inherently implausible, and that the disputed domain name was registered before the Complainant's trademark.
However, in view of the Panel's subsequent finding on bad faith, it is not necessary for the Panel to determine here whether the Respondent has rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Complaint fails on the ground that, in the Panel’s view, the Complainant has failed to prove that the domain name was registered and has been used in bad faith.
There is no evidence of any of the examples of bad faith registration and use described in paragraph 4(b) of the Policy. First, it is not proven that the domain name was registered in order to prevent the Complainant from reflecting its marks in a corresponding domain name.
Secondly, there is no evidence that the Respondent is a competitor of the Complainant within the meaning of paragraph 4(b)(iii) of the Policy, nor (for the reasons already mentioned) any proof that the domain name was registered in order to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark, and there is no proof that the Respondent registered the domain name for the purpose of selling it to the Complainant or to a competitor of the Complainant.
Thirdly, a significant difficulty for the Complainant in the present case is that the disputed domain name was apparently registered by the Respondent several weeks prior to the registration of the relevant trademark by the Complainant. In this regard, it has been well-established by previous panels that normally, when a domain name is registered before a trademark right is established, the registration of the domain name will not be in bad faith because the registrant could not have contemplated the complainant's non-existent right. See e.g. paragraph 3.1, and cases cited therein, of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions. While previous panels have recognized that there may be certain situations in which this does not apply, for example where the respondent was clearly aware of the complainant and aimed to take advantage of confusion with potential complainant trademark rights, it is incumbent on a complainant particularly in such cases to persuasively establish its case, which the Complainant in the present proceeding has not done.
There is accordingly no apparent basis on which the Panel could find that the domain name has been registered, and is being used, in bad faith. As the Complainant must prove all of the three grounds set out in paragraph 4(a) of the Policy, the Complaint must therefore fail.
7. Reverse Domain Name Hijacking
Paragraph 1 defines reverse domain name hijacking as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”. See also paragraph 15(e). To prevail on such a claim, the Respondent must show that the Complainant knew of the Respondent’s unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the Complaint in bad faith. See e.g., Sydney Opera House Trust v. Trilynx Pty. Limited.,
WIPO Case No. D2000-1224.
In the circumstances the Panel declines to make a finding of Reverse Domain Name Hijacking.
8. Decision
For all of the foregoing reasons, the Panel decides that while the domain name registered by the Respondent is identical to a trademark in which the Complainant has rights, and the Respondent may or may not have rights or legitimate interests in respect of the domain name at issue, the Respondent’s domain name has not been registered, nor is it being used in bad faith. Accordingly, the Panel denies the relief requested in the Complaint.
Dilek Ustun Sole Panelist
Dated: October 23, 2007
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