WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dinarsu İmalat ve Ticaret Türk Anonim Şirketi v. Enver Toklu
Case No. D2013-1341
1. The Parties
The Complainant is Dinarsu İmalat ve Ticaret Türk Anonim Şirketi of Tekirdağ, Turkey, represented by Salih Bulut, Turkey.
The Respondent is Enver Toklu of Denizli, Turkey, self-represented.
2. The Domain Name and Registrar
The disputed domain name <dinarsu.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 23, 2013. On July 25, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 26, 2013, 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 Complainant filed an amended Complaint on August 8, 2013 (“First Amended Complaint”).
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 First Amended Complaint, and the proceedings commenced on August 8, 2013. Right after the notification of the Complainant, second amended Complaint was sent by the Complainant to the Center (“Second Amended Complaint”). The Center forwarded the said amended Complaint to the Respondent on August 8, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 28, 2013. The Response was filed with the Center on August 28, 2013.
The Center appointed Gökhan Gökçe as the sole panelist in this matter on September 9, 2013. 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 September 4, 2013, the Complainant filed a Supplemental Filing. On September 6, 2013, the Respondent requested to respond to the said Supplemental Filing. The Center acknowledged receipt of the parties’ communications on September 6 and 9, 2013, respectively, and informed the parties they would be brought to the Panel’s attention for its consideration.
4. Factual Background
The Complainant, Dinarsu İmalat ve Ticaret Türk Anonim Şirketi, was established in 1955 and it manufactures carpets and similar products.
The Complainant owns and uses the trademark DINARSU, which is also its trade name, and has registered DINARSU before the Turkish Patent Institute on July 17, 1992, with the file number 92/003380 as evidenced in the annexes to the Complaint. The Complainant is also the owner of <dinarsu.com.tr> registered on December 19, 1996, which incorporates its trademark.
The registrant of the disputed domain name has been identified by the concerned Registrar as Enver Toklu. The disputed domain name was created on March 6, 1999. According to the Registrar, the disputed domain name was registered to this registrant on April 2, 2011. The Panel visited the disputed domain name on September 23, 2013, and observed that the disputed domain name resolves to a webpage which states in English “From Dinar Mountains, Pure Water - Web site is Under Construction, coming soon....”
The WayBack Machine shows that the disputed domain name resolved to a website linking to other websites such as “www.camurunleri.com” offering carpets and furniture for sale between June 9, 2011, and July 23, 2013, through links such as “HALI ONLINE” which means “carpet online” in English. The Respondent also appears to be the registrant of <camurunleri.com>. On August 8, 2013, the disputed domain name resolved to a page which stated that it was for sale.
The Respondent has filed a trademark registration before the Turkish Patent Institute on July 25, 2013, for DINAR-SU (Annex 4 to the Response). The application is currently pending.
5. Parties’ Contentions
A. Complainant
Identical or Confusingly Similar
The Complainant states that it is a manufacturer of carpets and carpet products established in 1955 in Istanbul and it has been using the trademark DINARSU for more than 21 years. The Complainant also states that it is the owner of <dinarsu.com.tr> registered on December 19, 1996.
The Complainant contends that the disputed domain name constitutes indistinguishable similarity with its trademark DINARSU and extensions such as “.com” are not taken into consideration for the evaluation of confusing similarity.
Rights or Legitimate Interests
The Complainant asserts that the Respondent does not have any rights or legitimate interests in the disputed domain name as the Respondent has no registered trademarks for “Dinarsu”.
The Complainant submits that it has never granted the Respondent a license or permission to use the mark DINARSU.
The Complainant submits that the website associated with the disputed domain name is entirely in Turkish and therefore the Respondent must have been aware of the Complainant’s trademark at the time of registration. The Complainant further submits that the disputed domain name is used for providing links to online sale websites.
Registered and Used in Bad Faith
The Complainant contends its trademark DINARSU was registered since at least in 1992 and that it is impossible for the Respondent not to have knowledge of the Complainant’s domain name <dinarsu.com.tr> registered in 1996 and its DINARSU trademark.
The Complainant states that the disputed domain name was transferred to the Respondent on 2009 (Annex 4 to the Complaint) and since 2010 the disputed domain name has been used to gain benefit from the Complainant’s trademark and reputation in the sale of competing carpet brands.
The Complainant submits screenshots from “www.archive.org” showing that the disputed domain name resolved to a website which contained a link to “www.camurunleri.com” selling carpets through links such as “HALI ONLINE” which means “carpet online” in English. The Complainant further states that <camurunleri.com> is also registered under the name of the Respondent.
The Complainant avers that the Respondent is using the disputed domain name for the purpose of directing Internet users that intend to visit the Complainant’s website for its own commercial benefit and that taking into consideration the contents of the website “www.dinarsu.com”, it can be said that the Respondent was aware of the Complainant’s trademark DINARSU which constitutes bad faith.
B. Respondent
Identical or Confusingly Similar
The Respondent states that, in 2009, it established a company, Bahamas Tekstil San. ve Tic. Ltd. Sti., dealing with several sectors, and buying domain names in advance in related sectors. The Respondent states that it has around 100 domain names associated with the electric, furniture and glassware sectors.
The Respondent contends that it purchased the disputed domain name to honor his parents who are from the town "“Dinar” and that it is not fair for the Complainant to try to take the disputed domain name which has been registered for 18 years.
Rights or Legitimate Interests
The Respondent contends that it intends to get involved in the water distribution and bottling business and it applied to the Turkish Patent Institute for the registration of DINAR-SU trademark which means “Dinar-water” in English. The Respondent further contends that Dinar is subsidized and given incentives by the government and that it intends to get support from the government in order to do something for its hometown.
Registered and Used in Bad Faith
The Respondent states that it purchases carpets from the Complainant and that it has verbal permission from the Complainant to sell DINARSU branded carpets. The Respondent states that it has other websites under construction for the sale of carpets and that the disputed domain name has not been used to sell carpets in order not to harm the Complainant.
The Respondent denies to have registered the disputed domain name in bad faith and states that they have not received any orders from websites associated with the disputed domain name. The Respondent states that “we gave link to our <camurunleri.com> web site to keep the domain sensitive to the keyword “hali in Turkish” – “carpet in English” because we were thinking to use the domain for “mutual benefit” with Complainant at the future. We wanted keyword “hali” on the top rank when it is searched at the search engines. That was the idea to broadcast hali keyword as content on the [disputed domain name]”.
The Respondent contends that the Complainant is acting in bad faith and that it has registered DINARSU trademark under all International Classes, however has not been using the trademark in other sectors in the past 21 years. The Respondent further contends that through its trademark filing, the Complainant is not allowing the Respondent to operate a water distribution business under DINARSU.
6. Discussion and Findings
The Complainant filed a Supplemental Filing. The Panel has sole discretion to decide whether or not to consider supplemental filings under the Rules, paragraph 10(d). The Respondent sent an email communication asking whether it can file a response to the Complainant’s Supplemental Filing. The Panel has decided not to accept the Supplemental Filing of the Complainant and not to take it into consideration when rendering its Decision. Therefore, there is no need for the Respondent to file its response to the Complainant’s Supplemental Filing in this case.
The Panel turns to the merits of the case. Paragraph 4(a) of the Policy sets forth the following three elements which the Complainant must prove to merit a finding that the disputed domain name be transferred to the Complainant:
(a) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(b) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(c) the disputed domain name has been registered and is being used in bad faith.
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 Policy requires the Complainant to demonstrate that the disputed domain name is identical or confusingly similar to a trademark in which it has rights. The Panel is satisfied that the Complainant is the owner of the registered trademark DINARSU, as evidenced in the annexes to the Complaint since July 17, 1992.
While not dispositive under the first element, the Panel notes the Complainant has registered the domain name <dinarsu.com.tr> incorporating its trademark DINARSU on December 19, 1996.
In relation to the disputed domain name, the Panel finds the addition of the “.com” extension is irrelevant when determining whether the disputed domain name is confusingly similar to the Complainant's trademark, PRL USA Holdings, Inc. v. Spiral Matrix,
WIPO Case No. D2006-0189. It has been stated in several decisions by other UDRP panels that the incorporation of a trademark in its entirety into a domain name may be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark, Hürriyet Gazetecilik ve Matbaacılık Anonim Şirketi v. Moniker Privacy Services / Kemal Demircioglu,
WIPO Case No. D2010-1941; Bayerische Motoren Werke AG, Sauber Motorsport AG v. Petaluma Auto Works,
WIPO Case No. D2005-0941. The Panel recognizes the Complainant’s rights and concludes that the disputed domain name is identical with the Complainant’s DINARSU trademark.
The Panel finds that the requirements of 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. It is established in numerous UDRP decisions that it is difficult for a complainant to prove a negative and for that reason the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110. Once the Complainant makes a prima facie case, the burden of demonstrating rights or legitimate interests in the disputed domain name shifts to the Respondent. The Policy at paragraph 4(c) provides various ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Complainant contends that the Respondent does not have any rights or legitimate interests in the disputed domain name as the Respondent has no registered trademarks for “Dinarsu”. Moreover, the Complainant has not granted the Respondent a license or permission to use the mark DINARSU or to apply for or use a domain name incorporating that mark. Furthermore, the Complainant alleges that the Respondent was aware of the Complainant and its trademark at the time of registration as the disputed domain name resolved to a website in Turkish which contained links to websites selling carpets.
The Respondent contends that it intends to get involved in the water distribution and bottling business and it applied to the Turkish Patent Institute for the registration of DINAR-SU which means “Dinar-water”. Although the Respondent has a pending trademark application and has changed the content of “www.dinarsu.com”, the Respondent does not have a registered trademark. The trademark application for DINAR-SU was filed on July 25, 2013, two days after the filing of the Complaint.
The Respondent further contends that Dinar is subsidized and given incentives by the government and that it intends to get support from the government in order to do something for its hometown. However, the Respondent has failed to provide sufficient evidence of preparations such as applications to government authorities.
Furthermore, the disputed domain name currently resolves to a website which states in English “From Dinar Mountains, Pure Water - Web site is Under Construction, coming soon....” The Panel finds that it is extremely unlikely for a Turkish company with the intention of starting a water distribution business in Turkey to have an English website for the promotion of its business.
The Respondent has failed to provide evidence of “demonstrable preparations” to use the disputed domain name for a bona fide offering of goods or services, which suggests there is no such intention, Helen Fielding v. Anthony Corbert aka Anthony Corbett,WIPO Case No. D2000-1000. Aside from the Respondent’s statement and a recent pending trademark application there is no evidence of such intended use and the Panel does not accept that this alone provides sufficient evidence to draw the conclusion that the disputed domain name will in fact be used for a bona fide offering of goods or services as the Respondent claims.
On August 8, 2013, the disputed domain name resolved to a page stating that it was offered for sale and previously it resolved to a website which contained links to websites selling competing products. The Panel finds that this provides concrete evidence that the disputed domain name was registered and is being used in bad faith and for commercial gain, not for any legitimate reason.
As discussed, there is no evidence that the Respondent has made any effort or has any intention to use the disputed domain name for any purpose or legitimate activity consistent with having rights or legitimate interests. Therefore, the Panel infers that there is no intention of legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain or to misleadingly divert consumers.
Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has established a prima facie case that the Respondent lacks a right or legitimate interest in the disputed domain name. The Respondent has not provided evidence of its rights or legitimate interests in the disputed domain name. The Panel, therefore, concludes that the Respondent has not satisfied paragraph 4(a)(ii) of the Policy and concludes that the Respondent has no rights or legitimate interests in the disputed domain name.
The requirements of paragraph 4(a)(ii) of the Policy are fulfilled and, consequently, the Panel finds in favor of the Complainant on the second element of the Policy.
C. Registered and Used in Bad Faith
Finally, the Complainant must show that the disputed domain name has been registered and is being used in bad faith under paragraph 4(a)(iii) of the Policy.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that, if found by a panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(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 website or other online 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.
The Complainant’s trademark DINARSU was registered and used long before the Respondent’s registration of the disputed domain name. Furthermore, as discussed above, the Complainant has registered a domain name that is almost identical to the disputed domain name. The Respondent has not denied knowledge of the Complainant’s trademark, to the contrary the Respondent has admitted to have commercial relations with the Complainant. The Panel, in accordance with previous decisions issued under the Policy, is of the opinion that actual knowledge of the Complainant’s trademark at the time of registration of the disputed domain name, in certain circumstances, is to be considered as an inference of bad faith. Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net,WIPO Case No. D2000-0226.
Despite the fact that the Respondent has stated it has intentions to use the disputed domain name in connection with a water distribution business, there is no evidence to support its contentions.
Further, the WayBack Machine shows that the disputed domain name resolved to a website linking to the Respondent’s other website “www.camurunleri.com” offering competing products for sale between June 9, 2011 and July 23, 2013. The fact that the Respondent’s website used the Complainant’s trademark DINARSU to provide links to other websites offering competing products suggests that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website and other online 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.
After examining all circumstances surrounding the registration and use of the disputed domain name, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith. Accordingly, the Panel finds in favor of the Complainant on the third element of the Policy.
7. Decision
For 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 <dinarsu.com> be transferred to the Complainant.
Gökhan Gökçe
Sole Panelist
Date: September 23, 2013
