hurriyet.net

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Hurriyet Gazetecilik Ve Matbaacilik A.S. v. INFOMED

Case No. D2008-0127

1. The Parties

The Complainant is Hurriyet Gazetecilik Ve Matbaacilik A.S., of Hurriyet Medya Towers, Gunesli, Istanbul, Turkey, represented by Istanbul Patent & Trademark Consultancy Ltd., Turkey.

The Respondent is INFOMED of Istanbul, Turkey.

2. The Domain Name and Registrar

The disputed domain name, <hurriyet.net> (the “Domain Name”), is registered with GoDaddy.com, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 28, 2008. On January 29, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day 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.

The Center verified that 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 February 6, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response February 26, 2008. The Response was filed with the Center on February 20, 2008.

The Center appointed Tony Willoughby, Nasser A. Khasawneh and Kristiina Harenko as panelists in this matter on March 10, 2008. The Panel finds that it was properly constituted. Each member of 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 Registrar’s Whois database identifies the Respondent as Infomed having an administrative and technical contact with the email address, “[email protected]”. In the Response Professor Doctor Atadan Tunaci of the Diagnus Medical Imaging Group, having the same email address, identifies himself as the Respondent. For the purposes of this decision the Panel is prepared to treat Infomed and Professor Atadan Tunaci as one and the same.

4. Factual Background

The Complainant is one of the leading newspaper publishers in Turkey. The business commenced in 1948. Hurriyet’ (a Turkish word meaning variously ‘Liberty’, ‘Freedom’, ‘Independence’) is the most distinctive element of the Complainant’s name, it is the title of the Complainant’s principal publication and is the name by which the Complainant is, and has for many years been, widely known throughout Turkey.

The Complainant is the registered proprietor of a large number of trademark registrations in Turkey, at OHIM and in the United States of America for marks featuring in one shape or form the word ‘Hurriyet’. The earliest registration is a 1988 Turkish registration no. 88/104880 for a device mark featuring the masthead of the Complainant’s Hurriyet newspaper, the dominant element of which is the word ‘Hurriyet’.

The Respondent is a distinguished scientist. He is professor of radiology at the Istanbul University Faculty of Medicine and has published many scientific articles in the field of radiology. He operates a cancer information website connected to the domain name <prostatkanseri.com> and a radiology site connected to the domain name, <radyoloji.net>.

The Respondent is also a medical historian and has participated in the production of an electronic presentation for the European Congress of Radiology at their meeting in Vienna in March, 2004 entitled ‘Origin of military radiology: First use of X-rays in Ottoman Empire’.

The Respondent is also a keen philatelist, being a member of the Turkish Philately Society. He is registered as an exhibitor at the forthcoming World Stamp Championship in Tel Aviv in May, his topic being Ottoman Railway Postal History. Moreover, the President of the Turkish Philatelist Society has certified that the Respondent’s application to exhibit at the National Stamp Exhibition to be held in Istanbul on May 26, 2008 under the title “Liberty Postal History” has been accepted.

The Domain Name was registered on May 12, 2005 and is connected to a parking page hosted by the Registrar and featuring sponsored advertising links.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is identical or confusingly similar to its name and principal trademark, HURRIYET.

The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant contends that none of the examples of rights and legitimate interests set out in paragraph 4(c) of the Policy is applicable and states that it has not granted any permission to the Respondent to use its trademark.

Finally, the Complainant contends that the Domain Name was registered and is being used in bad faith.

As to registration, the Complainant contends that the Complainant’s name is so well known that the Respondent must have registered the Domain Name with knowledge of the Complainant’s rights and that the Respondent’s reason for having done so must have been to “create an association with the Complainant’s trademark”. The Complainant cites various previous WIPO decisions to the effect that registration and use of a domain name in circumstances where the respondent knows that there is no use that he can make of that domain name without infringing the complainant’s rights must be bad faith registration and use for the purpose of paragraph 4(a)(iii) of the Policy.

The Complainant contends also that the Respondent registered the Domain Name in order to prevent the Complainant reflecting the mark in corresponding domain names

As to use, the Complainant points to the fact that the Domain Name is connected to a parking page featuring sponsored advertising links and contends that the Respondent will be earning pay per click revenue via that site. The Complainant observes that none of the links appear to have any obvious relationship with the Domain Name and contends that the Respondent’s intention must have been to capitalize on the fame of the Complainant’s trademark.

The Complainant contends that the Respondent’s use of the Domain Name falls squarely within the meaning of paragraph 4(b)(iv) of the Policy.

The Complainant categorizes connection of a domain name to a parking page as ‘passive use’ and cites various well-known decisions confirming that passive use may well amount to bad faith use.

The substantive part of the Complaint ends with the following paragraph:

“c) The circumstances of a nature to demonstrate bad faith according to paragraph 4 (b) (ii) of the Policy are listed without limitation. Thus, although this provision only mentions trademarks or service marks, a pattern of registering the corporate or trade names of third parties with which a respondent has no connection whatsoever may also be considered as a circumstance demonstrating bad faith”.

B. Respondent

The Respondent denies that the Domain Name is identical or confusingly similar to the Complainant’s trademark, but does not challenge the existence of the Complainant’s trademark rights. In this section of the Response the Respondent devotes most of his effort to showing that “hurriyet’, in addition to being the Complainant’s trademark is also an ordinary Turkish word meaning ‘liberty’, a word which is capable of being used and has been used in a wide variety of contexts having nothing whatever to do with the Complainant. The relevant exhibit is worded entirely in Turkish, but the Panel has been able to determine that examples include a district of that name, a school and a monument. The Respondent’s argument is that the Complainant does not have a monopoly on all uses of the word.

The Respondent asserts that he has rights and legitimate interests in respect of the Domain Name. He says that he acquired the Domain Name in the short-term to use it in connection with his Liberty Postal History exhibit, an exhibit which he will be displaying at the National Stamp Exhibition due to take place in Istanbul towards the end of May this year. His longer-term plan is to use it for a website devoted to human rights and related issues.

The Respondent has drawn the Panel’s attention to several domain names, which he owns. There are three relating to his Ottoman Railway Postal History exhibit for the forthcoming World Stamp Championship in Tel Aviv (<hedjazrailway.com>, <hejazrailway.com> and <ottomanrailway.com>) and three others relating to his area of medical expertise (<radyoloji.net>, <prostat.org> and <prostatkanseri.com>). The three ‘medical’ domain names are connected to active sites providing information on radiology and prostate cancer. The three ‘railway philately’ domain names, like the Domain Name, are all connected to free parking pages hosted by the Registrar and featuring sponsored links to other sites. The Respondent explains that the delay in getting active sites up and running is as a result of the time it takes to assemble an appropriate collection of stamps for exhibition, which may be several years.

As to the allegation of bad faith registration and use, the Respondent recites the four examples of bad faith registration and use set out in paragraph 4(b) of the Policy and contends that none of them is applicable in this case. He reiterates that he registered the Domain Name without any bad faith intention and solely for the purposes identified above i.e. in the short-term for a website associated with his Liberty Postal History exhibit for the forthcoming National Stamp Exhibition and in the longer-term for a non-commercial website devoted to human rights and related issues.

6. Discussion and Findings

A. General

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove that:

(i) The Domain Name 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 Domain Name; and

(iii) The Domain Name has been registered in bad faith and is being used in bad faith.

B. Identical or Confusingly Similar

The Complainant has established to the satisfaction of the Panel that it has well-established trademark rights in respect of the word mark HURRIYET, which is (a) the distinctive part of its name, (b) the name by which it has been commonly known in Turkey and elsewhere for many years and the title of its principal publication.

The Respondent’s arguments on this score do not amount to a challenge to the existence of those rights, but a contention, which the Panel also accepts, that the word “hurriyet” is an ordinary dictionary word meaning ‘liberty’, ‘freedom’ and ‘independence’ and that the Complainant’s trademark rights do not amount to an exclusive right to use the word in all contexts.

Nonetheless for the purpose of paragraph 4(a)(i) of the Policy the Panel is satisfied that the Domain Name, which comprises the word “hurriyet” and the generic domain suffix “.net” is identical or confusingly similar to the Complainant’s trademark.

C. Rights or Legitimate Interests

The Complainant points to its name and trademark, which is very well known in Turkey, and contends that the Respondent must have registered the Domain Name with knowledge of the Complainant’s rights. The Panel accepts that contention and notes that the Respondent does not deny that he was aware of the Complainant’s rights when registering the Domain Name.

The Complainant points to the three examples of what shall constitute rights or legitimate interests as set out in paragraph 4(c) of the Policy and contends that none of them is applicable. The Respondent is making no bona fide or fair use of the Domain Name. The Domain Name is simply connected to a parking page hosted by the Registrar. Nor is the Respondent known by the Domain Name or any name corresponding to the Domain Name. Furthermore the Complainant asserts that it has not granted the Respondent any permission to use its trademark.

The Panel finds that the Complainant has made out a prima facie case under this head of the Complaint and that an answer is required of the Respondent.

In answer the Respondent points to what he claims he intended to use the Domain Name for, namely in the short-term for a website associated with his Liberty Postal History exhibit for the forthcoming National Stamp Exhibition and in the longer-term for a non-commercial website devoted to human rights and related issues.

However, the Respondent has produced no evidence of any substance to support his claims. He has produced excerpts from his Liberty Postal History exhibit, which feature material relevant to that topic and he has produced a certificate from the President of the Turkish Philately Society confirming that his application for the forthcoming National Stamp Exhibition in Istanbul has been accepted. However, he has produced nothing to tie those matters in with the Domain Name. His purposes may be as he claims them to be, but all that the Panel has before it is bare unsupported assertion, which is not a sufficient answer.

The Panel finds for the purpose of the present Policy proceedings that the Respondent has no rights or legitimate interests in respect of the Domain Name.

D. Registered and Used in Bad Faith

The Complainant contends that the Domain Name was registered and is being used in bad faith on a number of different bases, namely:

1. The Respondent registered the Domain Name with the intention of selling it to the Complainant at a profit. The Complainant makes this claim on the back of what it characterizes as the Respondent’s ‘passive use’ of the Domain Name and cites in support Florists Transworld Delivery v. DomainSource.com, NAF Case No. 0203000105882. [Paragraph 4(b)(i) of the Policy].

2. Passive use of a domain name comprising a famous mark may be evidence of bad faith registration and use. [ WIPO Case No. D2000-0003Telstra Corporation Limited v. Nuclear Marshmallows].

3. Registration and use of a domain name incorporating a famous mark is necessarily in bad faith where the registrant knew at time of registration that he could not make any actual use of the domain name without infringing on the trademark owner’s rights. [Cellular One Group v. Paul Brien,WIPO Case No. D2000-0028; Telstra Corporation v. Nuclear Marshmallows,WIPO Case No. D2000-0003].

4. The Respondent registered the Domain Name with a view to blocking the Complainant and has engaged in a pattern of such conduct. [Paragraph 4(b)(ii) of the Policy].

5. The Respondent registered the Domain Name with the intention of exploiting the Complainant’s reputation and goodwill for his own commercial gain by diverting Internet users to his website who will have assumed that the site connected to the Domain Name is a site of the Complainant. [Paragraph 4(b)(iv) of the Policy].

The Panel is not satisfied on the evidence before it that the Respondent registered the Domain Name with the intention of selling it to the Complainant at a profit (paragraph 4(b)(i) of the Policy); nor is the Panel satisfied that the Respondent registered the Domain Name with the intention of blocking the Complainant within the meaning of paragraph 4(b)(ii) of the Policy. There is no evidence to support either of these contentions. Specifically in relation to the latter, there is no evidence of any pattern of abusive registrations on the part of the Respondent.

Nor is the Panel satisfied that this case falls within that category of case exemplified by the Cellular One and Telstra cases cited by the Complainant. The respondents in those two cases failed to respond to the complaints and in both those cases the trademarks in question were distinctive and made up words or combinations of words. In this case the trademark in question is an ordinary dictionary word and, manifestly, there are many number of ways in which a third party could reasonably and justifiably make use of that word without infringing the Complainant’s rights. For example, a non-commercial website dealing with issues relating to the liberty of the subject would be most unlikely to constitute an infringing use of the word in most jurisdictions.

The substantive issue remaining to be determined by the Panel is whether, as the Complainant alleges, the Respondent registered the Domain Name, not for the purposes he claims, but in order to earn pay-per-click revenue relying upon the undoubted fame of the Complainant’s trademark to generate substantial traffic through his website.

There is no direct evidence against the Respondent, so, for the Complaint to succeed, inferences adverse to the Respondent have to be drawn. It has to be inferred, for example that at the end of the Response he has put his signature to an untrue certificate as to the accuracy of his Response. It has to be inferred that he is not telling the truth when he says that he intends to use the Domain Name in the short-term for a non-commercial philatelic purpose and in the longer-term for a non-commercial website devoted to human rights and related issues.

For much of its deliberations, the Panel was divided on this issue. The factors, which weigh in favour of the Complainant are:

a) The undeniable fame of the Complainant’s trademark in Turkey. The fact that the Respondent will have registered the Domain Name with knowledge of the Complainant’s trademark.

b) The fact that the current use of the Domain Name bears no relation to the Respondent’s claimed intended uses of the Domain Name.

c) The Complainant’s contention, unchallenged by the Respondent, that the Respondent will be earning pay-per-click revenue from the sponsored links on the website connected to the Domain Name.

Factors weighing in favour of the Respondent are:

a) The fact that the Complainant’s trademark is an ordinary Turkish dictionary word meaning ‘Liberty’, ‘Freedom’ and ‘Independence’.

b) The fact that the Respondent does not have the profile of a cybersquatter; he is a distinguished professor of radiology with proven active interests in other fields, such as medical history and philately.

c) The fact that the Respondent has a track record of using his domain names in connection with his interests (e.g. <prostatkanseri.com> to connect to an information website relating to prostate cancer and <radyoloji.net> to connect to a radiology information website) and that ‘hurriyet’ (meaning ‘liberty’) is relevant to one of his interests. The President of the Turkish Philately Society has certified that the title of the Respondent’s exhibit at a forthcoming philately exhibition in Turkey is “Liberty Postal History” and the Respondent produced to the Panel an extract from that exhibit.

d) The fact that it is for the Complainant to prove bad faith registration and use, not for the Respondent to prove the contrary.

Taking into account all the evidence that the Panel has before it and weighing the above factors in mind, the Panel finds that it is more likely than not that the Respondent registered the Domain Name for the purposes that he has indicated. The Panel accepts his explanation that it can take several years to collate the necessary material for a website and the Panel notes that it is the Respondent’s practice to park his domain names on a free parking page hosted by the Registrar pending launch of his websites. It is to be noted, for example, that some domain names associated with his interest in railway philately (<hedjazrailway.com>, <hejazrailway.com> and <ottomanrailway.com>) are all similarly parked.

Accordingly, the Panel’s conclusion is that the connection of the Domain Name to the Registrar’s free parking page was not, as contended for by the Complainant, the motivation behind the registration of the Domain Name, but simply a convenient and readily available method of storing it, pending realization of the Respondent’s plans for it. Furthermore, it is worth noting that some members of the Panel were far from satisfied, notwithstanding the failure of the Respondent to challenge the contention, that the Respondent was in fact earning pay-per-click revenue from the parking page, which appears to be one of the Registrar’s Free Parking Pages, not one of its Cash Parking Pages.

The Complainant has not satisfied the Panel that the Domain Name was registered and is being used in bad faith.

7. Decision

For all the foregoing reasons, the Complaint is denied.