Tamek Gida ve Konsantre Sanayii ve Ticaret Anonim Şirketi v. Josef Tamek
Case No. D2010-0785
1. The Parties
The Complainant is Tamek Gida ve Konsantre Sanayii ve Ticaret Anonim Şirketi of Istanbul, Turkey, represented by Başalan Patent & Trade Mark Industrial Property Services Consultancy Limited Company, Turkey.
The Respondent is Josef Tamek of Wien, Austria.
2. The Domain Name and Registrar
The disputed domain name <tamek.com> is registered with Hebei Guoji Maoyi (Shanghai) LTD aka HEBEI INTERNATIONAL TRADING (SHANGHAI) CO., LTD dba HebeiDomains.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 18, 2010, specifying “Privacy” of 1200 Pudong Avenue in Shanghai, the People's Republic of China as the respondent. On May 18, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name.
On May 18, 2010, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint and stating that:
(a) the domain name registration was created on July 7, 2002; and
(b) the language of the registration agreement was English.
The Registrar also objected to the service of the Complaint on it on the grounds of:
“such egoistic companies crippling our important email box with at least 35 MB of rubbish (their invoices scanned into pdf to pretend they have big case)[…]”
and expressing concerns that “China has insufficient overseas connectivity and it's really slow.”
The Center sent an email communication to the Complainant on May 20, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint if the Complainant so wished. The Complainant filed an amended Complaint on May 21, 2010. 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”).
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 May 25, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 14, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 15, 2010.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on June 17, 2010. 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 commenced operating in 1955. Since that date, it has grown to produce a wide range of food products under the Tamek brand, including fruit juice, paste, tomato products, peas, canned vegetables, stewed pulses, ready [to eat] dishes, stuffed, leaves, ketchup, mayonnaise, jams, marmalades, pickles, sauces and frozen foods. Its total food and fruit juice production is about 30,000 tons a day. Some of its food products, in addition to the Tamek brand, feature Looney Tunes characters such as Tweety Bird, Bugs Bunny and Taz, under license from Warner Brothers. While initially it sold its products in Turkey, it claims that its products are currently distributed in 54 countries around the world including (identified as its stronger markets) Germany, the United Kingdom of Great Britain and Northern Ireland, France, Russia Federation, the United States of America, Canada, New Zealand and Nigeria.
The Complaint includes evidence that the Complainant has registered in Turkey some 30 trademarks for TAMEK or TAMEK and some descriptive term such as FRUITY, bibercik or plus. For the most part, these trademarks are registered in one or more of International Classes 29, 30 and 32. The Complaint states that the term TAMEK is coined from the initials comprising the Complainant's original corporate name.
In July 2005, the Turkish Patent Institute certified that the Complainant's trademark, TAMEK, had become a well-known trademark in Turkey for the purposes of Decree #556, Law Pertaining to the Protection of Trademarks and Paris Convention resolutions.
In addition, the Complaint includes evidence that the Complainant has registered TAMEK as a trademark in those same three International Classes in a wide range of countries throughout the world. Amongst others, these countries include Austria, Australia, Benelux, Switzerland, China, Germany, Denmark, France, the United Kingdom, Japan and the United States as well as many others.
Some of the Complainant's trademarks for TAMEK alone registered in Turkey date from June 2002. The earliest of the international registrations dates August 28, 2003.
In addition to these registrations, the Complainant is also the owner of registered trademarks for TURTAMEK in Germany, the United Kingdom and the United States. These trademarks are registered in International Class 29 and date from 1975 to 1979.
A WhoIs search of the disputed domain name via “www.domaintools.com” returns a result emblazoned with a notice “This website is for sale. The owner of the domain you are researching has it listed for sale.”
Following the link to “Buy TamEk.com now”, takes one to a page stating “<tamek.com> (TAMEK.COM) is for sale” and shows the seller's listing price as “Make offer”.
When the Complaint was filed, the disputed domain name resolved to a website which appeared to be a fairly generic and rudimentary pay-per-click “search” portal. Enclosure 36 to the Complaint was a print out of the page submitted by the Complainant. It set out a number of sponsored listings and “related searches” in Turkish and which the Complainant asserts are competitors of the Complainant including 3M Gida, TAT Gida, Penguen Konserve, TAT Konserver, Ülker Alpella.
5. Discussion and Findings
Although no Response has been received, the Cener has ensured that the Complaint has been served on the Respondent by email and courier at the addresses which the Registrar has confirmed are correct. The Panel finds therefore that the Complaint has been duly served on the Respondent and he has been afforded a fair opportunity within the Policy and the Rules to present his case.
In these circumstances, paragraph 5(e) of the Rules requires the Panel, in the absence of exceptional circumstances, to decide the dispute on the basis of the Complaint. This is not a simple rubber stamping, however, as paragraph 15(a) of the Rules requires the Panel to decide a complaint “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Accordingly, under paragraph 4(a) of the Policy, the Complainant has the burden of proof in respect of the following three elements:
(i) The disputed 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 disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
There are two parts to this inquiry: the Complainant must demonstrate that it has trademark rights in a sign and, if so, the disputed domain name must be shown to be identical or confusingly similar to those trademark rights.
As set out above, the Complainant has provided clear evidence that it owns registered trademarks in Turkey and many other countries for TAMEK for goods in International Classes 29, 30 and 32.
The Complainant has also provided evidence supporting its claim that its trademark is well-known in Turkey and, through sales invoices and the like, possibly other countries. The exhibits enclosed with the Complaint are voluminous. However, the Complaint does not draw attention specifically to the scope of that reputation, if any, in Austria where the Respondent is apparently located.
The second part of this inquiry requires a comparison between the proved trademark rights and the disputed domain name. On this part of the inquiry what is required is simply a comparison and assessment of the domain name itself to the Complainant's proved trademarks: see for example, Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol,
WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin,
WIPO Case No. D2002-0420.
The disputed domain name consists of the same term as the Complainant's proved trademark rights with the addition of the “.com” gTLD. The gTLD may be discounted for the purposes of this inquiry: see for example Telstra Corporation Limited v. Ozurls,
WIPO Case No. D2001-0046; Ticketmaster Corporation v. DiscoverNet, Inc.,
WIPO Case No. D2001-0252; Microsoft Corporation v. J. Holiday Co.,
WIPO Case No. D2000-1493.
Accordingly, the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant's trademark.
B. Rights or Legitimate Interests
The second requirement that the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name. In view of the difficulty in proving a negative, the Complainant must adduce sufficient material to raise a prima facie case under this factor and then an evidential burden shifts to the Respondent to rebut that prima facie case. For convenience the Panel refers only to WIPO Overview of WIPO Panel Views on Selected UDRP Questionsparagraph 2.1.
Paragraph 4(c) sets out three examples of rights or legitimate interests for the purposes of the Policy. They are:
“(i) before any notice to you of the dispute, your use 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.”
These are examples only and not an exhaustive enumeration of the ways in which rights or legitimate interests can be shown. They do provide, however, a guide to what is contemplated as permissible under the Policy.
It is clear from the Complaint that the Respondent is not associated with the Complainant nor licensed by it. The Complainant has also conducted an international trademark search which did not disclose any trademarks registered by the Respondent for TAMEK.
The Complainant questions whether the Respondent does in fact bear his name and further contends that the Respondent cannot have legitimate rights under the Policy to register and use just his surname but, if the Respondent has any rights, must use his full name. Finally, the Complainant contends that the Respondent has not used the disputed domain name in good faith but rather is using it for cybersquatting purposes as demonstrated by the offer to sell the disputed domain name and its use for a pay-per-click portal directing users to what the Complainant contends are its competitors.
Contrary to the Complainant's submission, it is clearly established that an individual may have a right or legitimate interest for the purposes of the Policy to register his or her own surname as a domain name: see for example GA Modafine S.A. v. Mani.ComWIPO Case No. D2001-0388 and Jewson Limited v. Doug JewsonWIPO Case No. D2008-0676. Generally, however, where panels have found a prima facie case in a complainant's favour on this ground they have required the respondent to come forward and provide some substantiating evidence to support a claim that the particular respondent is in fact commonly known by the name in question. Moreover, typically the panels also examine the nature of the use shown by the particular respondent to consider whether or not there has been an attempt to take advantage of the trademark significance of the domain name. Thus, in the Mani.com case, for example, the very distinguished panel had before it evidence from the respondent that Mani was in fact his surname and he had been endeavouring to use the domain name in connection with a website or communications means for people of that name with origins from the Indian sub-continent.
In this case, the Respondent has not come forward at all to assert his claim. Amongst other things and noting that the Respondent's address is “poste restante” at a post office on a street in central Vienna and the Respondent has used the services of a registrar based in Shanghai which itself complains about inadequate infrastructure to service the Internet, the Respondent has not sought to rebut the Complainant's challenge that he is even known by that name. Nor has the Respondent made any attempt to assert some entitlement or interest in the disputed domain name under Austrian law. Moreover, there is no evidence at all that he is using the domain name in good faith. Rather, the domain name is being used as a pay-per-click site which can and does redirect users to competitors of the Complainant. See also Kraft Foods North America Inc. v. The Pez Kiosk,WIPO Case No. D2001-1191.
In these circumstances, the Panel considers that the Complainant has established a prima facie case against the Respondent and the Respondent has not even taken the most rudimentary of steps to assert rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds that the Complainant has satisfied the second requirement under the Policy.
C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent.
As noted above, the Respondent has not attempted to explain or justify his motives in either registering or using the domain name. The Respondent is of course under no onus to do so. However, that leaves the Panel in the position of having to form an assessment based solely on the objective factors that have been established in the record.
Here the objective factors are that:
(a) the Respondent appears to have registered the disputed domain name shortly after the date the Complainant registered the TAMEK trademark in Turkey and many years after the Complainant began using the TAMEK trademark;
(b) the Respondent is not associated in any way with the Complainant;
(c) the Respondent uses, and so far as the record shows, has only ever used the disputed domain name to resolve to a generic pay-per-click “search portal”;
(d) the Respondent's search portal, at least in the example submitted by the Complainant, directs users to competitors of the Complainant;
(e) the Respondent is offering the disputed domain name for sale to the highest bidder.
Further, as discussed above, the Respondent has been found on the record in this case not to have rights or legitimate interests in the disputed domain name.
The use of the disputed domain name for a pay-per-click search portal presenting links to websites of firms competing with the Complainant demonstrates use of the disputed domain name in bad faith. The Panel also infers from these factors that the disputed domain name was registered in bad faith in light of the reasons why the Panel has found that the Respondent does not have rights or legitimate interests in the disputed domain name and there is no evidence to show that the disputed domain name has been used in any other way.
6. 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 disputed domain name, <tamek.com>, be transferred to the Complainant.
Warwick A. Rothnie Sole Panelist
Dated: June 30, 2010
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