WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Turgut Can Elgiz v. Elif Öner

Case No. D2012-1299

1. The Parties

The Complainant is Turgut Can Elgiz of Istanbul, Turkey, represented by Canda Elgiz, Turkey.

The Respondent is Elif Öner of Istanbul, Turkey, represented by Yarsuvat & Yarsuvat Law Firm, Turkey.

2. The Domain Names and Registrars

The disputed domain names <elgizmuseum.com> and <proje4l.com> are registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 26, 2012. On June 26, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 29, 2012, 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” 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 July 2, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 22, 2012. The Response was filed with the Center on July 20, 2012.

The Center appointed Gökhan Gökçe as the sole panelist in this matter on July 26, 2012. 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 is Turgut Can Elgiz who founded Elgiz Museum of Contemporary Art (Proje4L/Elgiz Çağdaş Sanat Müzesi) which is a private collection museum that opened in 2001.

The Complainant has registered its design trademark, PROJE4L ELGIZ ÇAĞDAŞ SANAT MÜZESI ELGIZ MUSEUM OF CONTEMPORARY ART with the Turkish Patent Institute (“TPI”) on August 3, 2010.

The Respondent, Elif Öner, is a contemporary artist who has exhibited her works at national and international galleries and museums. On January 22, 2012 the Respondent was invited to take part an exhibition titled “Museum inside Museum” which took place at Elgiz Museum between April 5, 2012 and May 20, 2012.

The Respondent registered the disputed domain names <elgizmuseum.org> and <proje4L.org> on March 17, 2012.

5. Parties’ Contentions

A. Complainant

In accordance with paragraph 4 of the Policy, the Complainant requests that the disputed domain names be transferred to the Complainant.

The Complainant submits the grounds for these proceedings are listed in paragraph 4(a) of the Policy.

Identical or Confusingly Similar

The Complainant exhibits its PROJE4L ELGIZ ÇAĞDAŞ SANAT MÜZESI ELGIZ MUSEUM OF CONTEMPORARY ART design trademark registered with TPI on August 3, 2010 as evidenced in Annex 5 of the Complaint. The Complainant is also the registered owner of <elgizmuseum.org> and <proje4l.org> since July 1, 2005 and May 1, 2001 respectively as exhibited at Annex 3 and Annex 4 of the Complaint.

The Complainant submits the disputed domain names are identical or confusingly similar to its trademark PROJE 4L ELGIZ ÇAĞDAŞ SANAT MÜZESI ELGIZ MUSEUM OF CONTEMPORARY ART registered in 2010. The Complainant further submits that the disputed domain names are identical to its domain names <elgizmuseum.org> and <proje4l.org> registered in 2001 and 2005 respectively.

The Complainant contends that the Respondent registered the disputed domain names with the intention of disrupting the educational services provided by the Complainant’s museum and of damaging its reputation.

Rights or Legitimate Interests

The Complainant asserts the Respondent has no rights or legitimate interests in the disputed domain names. The Complainant submits the registration of the disputed domain names is in bad faith and the sole purpose for registration is to disrupt the Complainant’s operations and services. The Complainant notes that the Respondent has placed an advertisement which promotes penis enlargement on the webpage to which both disputed domain names resolve.

The Complainant submits that Internet users searching for its website would be confused due to the content of the websites to which the disputed domain names resolve and further contends that this is both disrespectful to the Complainant’s reputation and image, and also tarnishes the Complainant’s family name.

The Complainant contends that there is no evidence of the Respondent’s use of the disputed domain names in connection with a bona fide offering of goods or services and that the Respondent has never been commonly known by the disputed domain names.

Registered and Used in Bad Faith

The Complainant repeats its submission made in relation to the Respondent lacking rights and legitimate interests in the disputed domain names, notes that there are no circumstances whereby the disputed domain names could have been registered in good faith and states that they are being used in bad faith.

B. Respondent

The Respondent filed a Response to the allegations in the Complaint and requests the Panel to deny the remedy requested, namely transfer of the disputed domain names to the Complainant.

Identical or Confusingly Similar

The Respondent notes that the Complainant owns a design trademark though disputes its trademark and ownership rights claimed over the disputed domain names. The Respondent claims that the disputed domains are not identical to the Complainant’s trademarks and therefore cannot obstruct use of the disputed domain names.

The Respondent refers to legal proceedings initiated against her by the Complainant and notes that the expert report determined that the disputed domain names are not identical to the Complainant’s registered trademarks.

Rights or Legitimate Interests

The Respondent states the Complainant’s museum had invited it to take part in “Museum in Museum” exhibition held at its museum and that the disputed domain names were registered as background to her web-based art. The Respondent further submits that the disputed domain names are also part of her work.

The Respondent submits that her work was displayed at the exhibition for 40 days and due to the legal proceedings initiated against the Respondent by the Complainant the matter has attracted substantial media coverage as evidenced at Annex 1 and Annex 2 of the Response. The Respondent further submits that she has become well-known for her work and for her stance against dominance.

Registered and Used in Bad Faith

The Respondent denies any allegation that use of the disputed domain names is an attempt to interfere with the Complainant’s business and states that she uses the disputed domain names to display her artwork that expresses the position of artists in today’s contemporary art scene in Turkey.

The Respondent states that contrary to the Complainant’s allegations the disputed domain names do not resolve to a website that contains advertisements and that no commercial activity is carried out through the websites.

The Respondent states she did not register the disputed domain names in order to prevent the Complainant from reflecting its trademark in a corresponding domain name. The Respondent further contends that as an artist she did not acquire the disputed domain names for the purpose of selling, renting or otherwise transferring the registrations to the Complainant.

The Respondent further claims that the Complainant is a business man whereas the Respondent is a contemporary artist and therefore they are not competitors. Consequently, the Respondent claims that it is clear that she did not register the disputed domain names to disrupt the Complainant’s business.

6. Discussion and Findings

Paragraph 4(a) of the Policy sets forth the following three elements which the Complainant must prove, during the administrative proceedings, to merit a finding that the disputed domain names be transferred to the Complainant.

Pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainant is the owner of the design trademark PROJE4L ELGIZ ÇAĞDAŞ SANAT MÜZESI ELGIZ MUSEUM OF CONTEMPORARY ART as evidenced at Annex 6 of the Complaint. Although the Complainant’s trademark is not a word trademark and is displayed with a design it is obvious that an image cannot be reproduced in a domain name. The Panel has therefore taken into consideration the dominant textual elements of the Complainant’s trademark, which are in this case the words “Proje4L”, “Elgiz Museum of Contemporary Art” and “Elgiz Çağdaş Sanat Müzesi”. With reference to the words “Elgiz Museum of Contemporary Art” the latter part namely “of Contemporary Art” can be disregarded as such words are purely descriptive of the Complainant’s services and therefore have little influence on the overall impression of the design trademark. Therefore, the Panel considers the words “Proje4L” and “Elgiz Museum” predominantly featured in the Complainant’s design trademark.

For the purpose of assessing the similarity between the Complainant’s design trademark and the disputed domain names, it is appropriate to compare the words predominantly featured in the design trademark to the disputed domain names, Islamic Bank of Britain Plc v. Ifena Consulting, Charles Shrimpton, WIPO Case No. D2010-0509.

The Panel is satisfied that the disputed domain names reproduce the prominent word elements of the Complainant’s design trademark and in this Panel’s assessment are identical or confusingly similar to the Complainant’s registered design trademark. Additionally, although not a consideration under the Policy, the Panel notes the Complainant is the registered owner and user of <proje4l.org> and <elgizmuseum.org> domain names which are identical to the disputed domain names <proje4l.com> and <elgizmuseum.com>, and which also increases the likelihood of confusion.

The Policy simply requires the Complainant to demonstrate that a domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Panel recognises the Complainant’s trademark rights and concludes that the disputed domain names are at the very least confusingly similar with the Complainant’s design trademark. The Panel finds that the requirements in paragraph 4(a)(i) of the Policy are fulfilled. Consequently, the Panel finds for the Complainant on the first element of the Policy.

B. Rights or Legitimate Interests

In accordance with paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Although the Policy states that the Complainant must prove each of the elements in paragraph 4(a) of the Policy, it is often observed that it is difficult for a complainant to prove a negative and it is therefore generally accepted under the Policy that, once a complainant has presented a prima facie case of a respondent’s lack of rights or legitimate interests in a domain name, the burden of production shifts to the respondent. The Policy at paragraph 4(c) provides various ways in which a respondent may demonstrate rights or legitimate interests in the domain name.

The Panel visited the disputed domain names which resolve to the same website whereby there is an advertisement for natural supplements for penis enlargement. Although when any part of the page is clicked it resolves to a page where the Respondent has posted text titled “Hysteria” which she states is her artwork. Whilst the Panel agrees that the page does not contain a classic pay per click advertisement, the natural supplements for penis enlargement are advertised and therefore the disputed domain names initially resolve to an advertisement and not to the Respondents artwork. Furthermore, in the event the page is not clicked the artwork is not revealed. Such use by the Respondent clearly harms the Complainant’s business, violates its trademark rights and does not establish Respondent’s rights or legitimate interests in the disputed domain names in the sense of paragraph 4(a)(ii) of the Policy.

It is clear that the Respondent was fully aware of the Complainant’s established reputation and design trademark and there is no evidence that the Respondent has made any effort or has any intention to use the disputed domain names for any purpose or legitimate activity consistent with having rights or legitimate interests. Furthermore, the Respondent has failed to establish why she has chosen to register domain names confusingly similar to the Complainant’s design trademark instead of registering a domain name descriptive of the content of the website, namely, the Respondent’s artwork. Therefore, the Panel finds that the Respondent has failed to submit any evidence that she intended to use or uses the disputed domain names in connection with the meaning of the words they incorporate, Samsung Electronics Co., Ltd. v. Gestion Integral Inovages,WIPO Case No. D2012-0570, Teva Pharmaceutical Industries Ltd. v. Protected Domain Services / Dworld c/o Basil Administrator,WIPO Case No. D2010-0532.

The Respondent failed to provide evidence of having rights in the disputed domain names or in any relevant trademark, or that the Complainant has given the Respondent permission to use the Complainant’s trademark in any domain name, or that the Respondent is known by the disputed domain names or of any association between the Complainant and the Respondent. The Respondent simply states that the disputed domain names have become well-known due to media coverage of the dispute between the Complainant and the Respondent. However, in the Panel’s opinion this is not the test and whether the Respondent is known through use of such domain names should be considered. It is to be inferred from all the circumstances of the case that the Respondent registered the disputed domain names with the primary intention of taking unfair advantage of the Complainant’s trademark, therefore, while the Respondent is using the disputed domain names to display her artwork such offering is not bona fide in the circumstances. In this respect the Panel has no evidence of any bona fide legitimate use of the domain names as such use infringes the Complainant’s trademark, Calvin Klein Trademark Trust and Calvin Klein, Inc. v. Jonathan Dardashti, WIPO Case No. D2001-1158.

The Respondent was unable to demonstrate its rights or legitimate interests in the disputed domain names and there is nothing before the Panel to support the existence of the Respondent’s rights in the disputed domain name or that any of the circumstances listed in paragraph 4(c) of the Policy would apply. The Panel finds that the Complainant has succeeded in making out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. Therefore, the Panel finds that Complainant meets the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant must show that the Respondent registered and is using the disputed domain names in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may be evidence of bad faith under paragraph 4(a)(iii) of the Policy.

The Complainant’s registered its design trademark before the Respondent registered the disputed domain names. The Respondent accepts that she was aware of the Complainant, its domain names and design trademark prior to registering the disputed domain names. The Panel finds that the Respondent’s knowledge of the Complainant and its trademark at the time of registration of the disputed domain names suggests bad faith, LEGO Juris A/S v. Reiner Stotte, WIPO Case No. D2010-0494. It therefore follows that the Respondent, at the time of registration, has been aware that use of the disputed domain names would result in a violation of the Complainant’s trademark rights, Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.

As in Ladbroke Group Plc v. Sonnoma International LDC, WIPO Case No. D2002-0131, after examining all circumstances surrounding the registration and use of the disputed domain names, the Panel finds that the Respondent registered and is using the disputed domain names in bad faith. Accordingly the Panel finds in favour of the Complainant on the third element 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 names <elgizmuseum.com> and <proje4l.com> be transferred to the Complainant.

Gökhan Gökçe
Sole Panelist
Dated: August 10, 2012