The Complainant is Doğan Gazetecilik Anonim Şirketi of Istanbul, Turkey, represented by Dericioğlu & Yaşar Law Office, Turkey.
The Respondent is Jason Statham of New Jersey, United States of America.
2. The Domain Name and Registrar
The disputed domain name <posta-gazetesi.net> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 4, 2010. On February 5, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On February 7, 2010, GoDaddy.com, Inc. 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” 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 9, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 1, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 2, 2010.
On March 4, 2010, the Center received an informal email communication from the email address of the Respondent.
On March 15, 2010, the Center appointed Kaya Köklü as the sole panelist in this matter 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.
On March 17, 2010, the Panel received an informal email sent by someone unknown but making clear reference to the present case. This email was forwarded to the Parties by the Center on March 18, 2010.
The date scheduled for the issuance of the Panel's decision was March 29, 2010.
In accordance with the Rules, paragraph 11, and since the Parties have not agreed otherwise, the language of the administrative proceedings is the language of the Registration Agreement (i.e. English).
4. Factual Background
The Complainant is a company under Dogan Sirketler Grubu A.S., which is Turkey's leading media and entertainment group. Among other fields of business, the Complainant is mainly active in the publishing and sale of inter alia Turkish daily newspapers and magazines, books by print and electronic media.
Its portfolio comprises several well-known newspapers and magazines in Turkey like Hürriyet, Radikal, Fanatik, Referans, Turkish Daily News and Posta.
Posta is a mass market daily newspaper that is commonly known within the Turkish population.
The Complainant is the registered owner of the (figurative) trademark POSTA. The trademark was registered on May 31, 1995 (renewed in 2005) for goods and services within class 16, in particular for newspapers and magazines. In addition, the Complainant is the registered owner of the (figurative) trademark “Dünden bugüne POSTA”. This trademark was registered on January 31, 2003 and claims protection for goods and services within class 16 and 41, also including newspapers and magazines.
Furthermore, the Complainant holds and operates various websites providing daily news. This includes a homepage providing daily news under the website “www.posta.com.tr”.
The disputed domain name was created on June 24, 2007. The Respondent is an individual who registered the disputed domain name <posta-gazetesi.net> on March 15, 2009.
When the Panel visited the Respondent's website on March 22, 2010, an online daily newspaper in Turkish language was provided under the disputed domain name.
By visiting the Internet site linked to the disputed domain name, the Panel also recognized that the Respondent uses the word “posta” (with an optically highlighted P) as a title in connection with the word “gazete”, which means nothing else than “newspaper” in the English language.
In addition, the Panel recognized a disclaimer at the bottom of the Internet site linked to the disputed domain name stating that there is no connection between the relevant Internet site and the Internet site of the Complainant.
Finally, the Panel recognized that the Respondent's news service linked to the disputed domain name appears as the first hit on Google when searching for the words “posta” and “gazete” (i.e. “newspaper” in the English language).
5. Parties' Contentions
A. Complainant
According to the provided information by the Complainant, Posta is the best-selling daily newspaper of its kind in Turkey with a circulation of more than 600,000. The Complainant sets forth that its newspaper Posta had a market share of 12 % in Turkey in 2007 and hence, is well recognized by the general public and especially by commercial advertisers.
The Complainant requests the Panel to transfer the domain name <posta-gazetesi.net> and argues that (i) the disputed domain name is clearly identical to the trademarks registered by the Complainant, (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name and (iii) the Respondent has registered the disputed domain name in bad faith.
In particular, the Complainant argues that it never granted any permission or license to the Respondent to use the trademark POSTA. In addition, the Complainant alleges that the Respondent's website trades on the goodwill associated with the POSTA mark to attract Internet users to its website where it provided “falsified” content.
B. Respondent
The Respondent did not reply to the Complainant's contentions within the due date for the Response on March 1, 2010.
After expiry of the due date for the response, the Center received an informal email communication on March 4, 2010 sent from the email address of the Respondent. However, the name of the sender, indicated as a Mr. Kuru, did not correspond to the name of the Respondent.
On March 17, 2010, the Panel received a second informal email communication, this time in the Turkish language sent from the email address “[ ]@gmail.com”. This email did not contain any reference to the Respondent in person. This second email did not even indicate the identity (name and surname) of the sender. It was simply undersigned with “posta-gazetesi.NET”. By this, however, a clear reference to the present case was made.
With regard to the content of both emails, it is in particular alleged that the trademarks of the Complainant consist of generic terms only and hence are not distinctive enough to prevent the use of domain names comprising the word “posta”.
Furthermore, it is alleged that the use of the domain name is conducted in good faith only. In this regard, the sender of the second email alleged that it ensures its income with its Internet site and supports its family by operating the Turkish news service linked to the disputed domain name.
6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide the Complainant in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint where no Response has been submitted.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements are satisfied:
(i) The domain name is identical or confusingly similar to the trademark 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 and is being used in bad faith.
Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled. At the same time, in accordance with the Rules, paragraph 14(b), if a party in the absence of exceptional circumstances, does not comply with any provision of or requirement under the Rules or any request of the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.
To begin with, the Panel finds that the informal email communications received by the Center on March 4, 2010 and by the Panel on March 17, 2010 shall not be considered as formal replies by the Respondent in the present proceedings due to the following reasons:
First, both emails were provided to the Center and/or to the Panel after the due date for the Response, which was March 1, 2010.
Second, the authorship of both emails remains unclear. The email sent to the Center on March 4, 2010 indicates a person named Mr. Kuru as the author. The email sent to the Panel on March 17, 2010 does not indicate any author with name and surname. It was simply undersigned with “posta-gazetesi.NET”. Hence, the Panel cannot assess for sure whether the allegations raised in both emails are authorized by the Respondent.
Third, the email of March 17, 2010 was sent directly to the Panel under a breach of the Rules, paragraph 8.
All these facts lead the Panel to the conclusion that the provided email communications should not be considered in the present case. Further, the Panel notes that the information provided in either email would not affect the outcome of the case.
Hence, the Panel may – as appropriate – accept the reasonable provided factual allegations in the Complaint as true, Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
The Panel further notes that it has performed independent research by visiting the Internet site linked to the disputed domain name. The competence of the Panel to perform this independent research is in line with previous panel decisions, e.g.Hesco Bastion Limited v. The Trading Force Limited, WIPO Case No. D2002-1038.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name <posta-gazetesi.net> is confusingly similar to the Complainant's trademarks.
First, the Panel confirms that the Complainant has satisfied the threshold requirement of having trademark rights regarding the mark POSTA. It is not contested that the Complainant owns two figurative trademarks with the sign POSTA as the distinctive part within these trademarks.
The disputed domain name comprises the word “posta” which is identical to the distinctive part of the Complainant's trademarks. The additional word “gazetesi” used in the disputed domain name is, in the Turkish language, only a generic term and means “newspaper”. The Panel finds that simply adding a generic term like “gazetesi” does not ameliorate the likelihood of confusion and does not make the disputed domain name distinctive as compared to the Complainant's trademarks. The Panel is even of the opinion that by using the additional word “gazetesi” in the disputed domain name, the likelihood of confusion with the Complainant's trademarks is increased as the word “gazetesi” clearly refers to the goods and services protected by the Complainant's trademarks.
This is in particular the case as the Panel assesses the Complainant's trademarks to be well-known among the Turkish community.
Hence, the Panel finds that the first requirement under paragraph 4(a) of the Policy is fulfilled.
B. Rights or Legitimate Interests
While the burden of proof concerning possibly existing rights or legitimate interests of the Respondent in principle rests with the Complainant, previous UDRP panels have recognized that this would result in the often impossible task of proving a negative, in particular as evidence concerning the Respondent's lack of rights or legitimate interests is primarily within the knowledge of the Respondent. Therefore, the Panel believes that the Complainant is thus required to make out a prima facie case in order to meet the requirements in paragraph 4(a)(ii) of the Policy, at which point the burden shifts to the Respondent to come forward with rebuttal evidence. Croatia Airlines d.d. v. Modern Empire Internet Ltd.,
WIPO Case No. D2003-0455.
The Panel finds that the Complainant has satisfied this requirement, while the Respondent has failed to demonstrate any right or legitimate interest in the disputed domain name according to the Policy, paragraph 4(a)(ii) and 4(c).
With its Complaint, the Complainant has provided non-contested prima facie evidence that the Respondent has no trademark, license or any other similar right to use the disputed domain name.
When the Panel visited the disputed domain name on March 22, 2010, the Internet site linked to the disputed domain name was in use as what appeared to be a daily news site in the Turkish language. When visited, this news site linked to the disputed domain name contained the word “posta” in the title at the top of the Respondent's Internet site.
Nevertheless, the Respondent has failed to demonstrate one of the three circumstances under the Policy, paragraph 4(c) or any other evidence of a right or legitimate interest in the domain name. In particular, the Respondent has failed to show that it uses the Internet site linked to the disputed domain name in connection with a bona fide offering of goods and services.
To the contrary, the Panel finds that the Respondent must have been well aware of the Complainant's trademarks when establishing its Turkish news site. This is in particular the case as the mark POSTA is highlighted as a title on the Respondent's Internet site and, in the Panel's view, the website content is confusingly similar to the Complainant's Internet site “www.posta.com.tr”. In addition, the disclaimer at the bottom of the Internet site of the Respondent linked to the disputed domain name shows that the Respondent must have been well aware that users would be mislead by the Respondent's news site under the disputed domain name.
Hence, there is no indication that the disputed domain name is used by the Respondent in connection with a bona fide offering of goods and services.
There is also no indication that the Respondent has been commonly known by the domain name.
Finally, the Respondent failed to demonstrate that it 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 at issue. To the contrary, the Panel believes that the Respondent earns income from commercial advertisements via click-through revenue to the links displayed on his Internet site by misleading consumers.
As a conclusion, the Panel clearly finds that the Complainant has satisfied the requirements of 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that the Respondent has registered and used the disputed domain name in bad faith.
The Panel is well aware of the reputation of the Complainant's newspaper Posta in Turkey. The Panel also recognizes the notoriety of the Complainant's trademarks and it believes that the Respondent must have known of the Complainant's newspaper and trademarks when registering the disputed domain name. This is particularly likely as the Respondent apparently operates a confusingly similar Turkish news service under the disputed domain name as the Complainant.
It appears that the Respondent has registered the disputed domain name solely for the purpose of creating an association with the Complainant's well-known Posta newspaper and website “www.posta.com.tr”. The Panel finds that the Respondent intentionally registered the disputed domain name for use with its Turkish news service in order to mislead consumers who try to visit the official Internet site of the Posta newspaper published by the Complainant. This assessment is supported by the fact that the Respondent's Internet site appears as the first hit on a Google Search when searching for the words “posta” and “gazete”.
The Respondent's knowledge of the Complainant and its mark is also indicated by the fact that it uses a disclaimer on its Internet site linked to the disputed domain name stating that its news service is not provided by the Complainant. This clearly shows that the Respondent had prior knowledge of the Complainant's trademarks and its Turkish newspaper, and was well aware that users would likely be mislead. In addition, the disclaimer cannot be effective as it comes after a full page of marketing where the mark POSTA appears many times. In line with previous decisions, the Panel finds that the existence of such a disclaimer does not cure the bad faith of the Respondent, Pliva, Inc. v. Eric Kaiser, WIPO Case No. D2003-0316; Estée Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna,
WIPO Case No. D2000-0869; Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-1698.
The Panel further notes that the two emails received by the Center and the Panel after the due date for the Response did not sufficiently reveal the author of the emails. The Panel rather believes that this has been done intentionally in order to keep in hiding and to place the domain name out of reach of the Complainant.
The Panel finally cannot conceive of any good faith use of the domain name by the Respondent and finds that the Respondent's failure to respond within the deadline supports the conclusion that it has registered the disputed domain name in bad faith to mislead consumers.
In the light of the findings above, the Panel is convinced that the disputed domain name was registered and is being used in bad faith and that the Complainant has satisfied paragraph 4(a)(iii) of the Policy.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <posta-gazetesi.net> be transferred to the Complainant.
Kaya Köklü Sole Panelist
Dated: March 27, 2010
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