WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Doğan Internet Yayinciliği Ve Yatirim Anonim Şirketi v. Moniker Privacy Services / H A Lempka - Alpha Domains

Case No. D2013-2244

1. The Parties

The Complainant is Doğan Internet Yayinciliği Ve Yatirim Anonim Şirketi of Şişli, Turkey, represented by Dericioğlu & Yaşar Law Office, Turkey.

The Respondent is Moniker Privacy Services of Portland, Oregon, United States of America; and H A Lempka - Alpha Domains of London, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <nesıne.com> (xn--nesne-p4a.com) is registered with Moniker Online Services, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 27, 2013. On December 27, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 31, 2013, 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. The Center sent an email communication to the Complainant on January 3, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 3, 2014. The Center sent an email communication on January 3, 2014 requesting the Complainant to confirm the existence of any other legal proceedings. The Complainant sent an email communication to the Center on January 3, 2014 confirming that there are not any ongoing, pending or terminated court proceedings which are (or may be) of relevance to the present UDRP dispute.

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 January 6, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 26, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 27, 2014.

The Center appointed Harini Narayanswamy as the sole panelist in this matter on February 11, 2014. 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 a part of a Turkish media and entertainment conglomerate that does business in the area of television, radio broadcasting, print and online media. The Complainant and its group own the NESINE trademark and have several registered trademarks containing the term “nesine”. Details of some of these registered trademarks are:

NESINE trademark number 2006 27172 for classes 28, 38, 41;

NESINE IDDAAYA VARSAN NESINE trademark number 2006 27171 for classes 28, 38, 41;

NESINE trademark number 2006 27173 for classes 28, 38, 41;

NESINE.COM IDDAAYA VARSAN NESINE trademark number 2008 39743 for classes 28, 38, 41;

NESINE.COM trademark number 2008 39740 for classes 28, 38, 41;

NESINE.COM trademark number 2008 39741 for classes 28, 38, 41; and

NESINE.COM trademark number 2008 39742 for classes 28, 38, 41.

The Complainant’s group of companies own several domain names containing the NESINE mark. It has registered the domain name <nesine.com> on December 18, 2003; the domain name <nesine.net> was registered on July 20, 2004; <nesine.org> was registered on June 6, 2006 and <nesine.biz> was registered on August 14, 2006.

The Respondent registered the disputed domain name on April 10, 2013.

5. Parties’ Contentions

A. Complainant

The Complainant states its group is a leading Internet content provider and digital broadcasting group in Turkey. It states the NESINE trademarks are registered in the name of the Complainant whereas the domain name <nesine.com> is registered in the name of D Elektronik Şans Oyunları ve Yayıncılık A.Ş. which is its sister concern. Documentary evidence has been filed by the Complainant showing that D Elektronik Şans Oyunları ve Yayıncılık A.Ş handles technical issues for its group and that the domain name <nesine.com> is registered in the name of this company. The Complainant states the domain name <nesine.com.tr> is registered in the name of Medyanet İletişim Reklam Pazarlaa Hizmetleri ve Yayıncılık A.Ş. (in 2012 Medyanet İletişim Reklam Pazarlaa Hizmetleri ve Yayıncılık A.Ş. and Doğan İnternet merged with the Complainant). The Complainant states that the domain names <hepsiburada.com>, <ekolay.net>, <gayet.net>, <bigpara.com>, <gezisitesi.com>, <daybuyday.com>, <alisverissaati.com> and <altincicadde.com> belong to its sister companies along with their corresponding websites.

The Complainant states the term “nesine” is well-known by people of all ages and that its domain names <nesine.com> and <nesine.com.tr> are identical to the disputed domain name. Punycode domain names and translated Unicode domain names are equivalent argues the Complainant, and therefore the disputed domain name is confusingly similar to its trademark.

The Complainant states the Respondent has no rights or legitimate interests in the disputed domain name and it has not given permission or license to the Respondent to use its NESINE mark. There is no evidence that the Respondent has used the disputed domain name in connection with a bona fide offering of goods or services, or makes legitimate noncommercial or fair use of the disputed domain name. The Respondent has no personal rights in the term “nesıne” and is not commonly known by the disputed domain name.

Over the past years, the Complainant states it has become a symbol of online chance games due to its quality of services, its promotional activities and understanding in this sector. The Complainant states the disputed domain name was registered and used in bad faith to exploit its gaming reputation in the mark.

The Complainant argues that the Respondent undoubtedly knew the disputed domain name was identical to the Complainant’s mark, at the time of registration and therefore the disputed domain name is registered by the Respondent in bad faith. The disputed domain name is listed under “domains for sales” on Moniker’s website, and the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 web site.

The Complainant states that the disputed domain name is in a parking mode, therefore the Respondent is a passive holder and refers to the case Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The Complainant contends that according to the Alexa.com results, the domain name <nesine.com> is ranked as the 128th most visited website in Turkey. The Complainant argues that the disputed domain name, which is identical to its trademark, was registered to take unfair advantage of its mark and is being used in bad faith, and requests for the transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Policy under paragraph 4(a) stipulates that the Complainant must establish three elements in these proceedings in order to obtain the remedy of transfer of the disputed domain name.

(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 was registered and is being used in bad faith by the Respondent.

A. Identical or Confusingly Similar

The first requirement of paragraph 4(a) of the Policy stipulates the Complainant has to establish the disputed domain name is identical or confusingly similar to a trademark in which it has rights.

The Complainant has filed documents showing its registered trademark rights in the NESINE mark. Trademark registration is considered prima facie evidence of rights in a mark. The Complainant has alleged that the disputed domain name is the identical Punycode version of its domain name. It is further alleged by the Complainant that Punycode domain names and translated Unicode domain names are equivalent.

The Panel finds the Complainant has used the NESINE mark in commerce and the domain name <nesine.com> since 2003 and has shown well-established rights in the mark. The Panel accepts the Complainant’s submission that the disputed domain name is confusingly similar or virtually identical to the Complainant’s trademark, and is the ACE encoded version, or the Punycode equivalent of the domain name <nesine.com> bearing its trademark.

The Panel finds that the Complainant has established that the disputed domain name is confusingly similar to a trademark in which it has rights. The Complainant has successfully established the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The second element under paragraph 4 (a) of the Policy requires the Complainant to make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Policy provides under paragraph 4(c) some circumstances by which a respondent may demonstrate rights or legitimate interests, these 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 tarnish the trademark or service mark at issue.

The Panel finds there is no evidence on record that shows the Respondent has used the disputed domain name in connection with a bona fide offering of goods or services. Further, it is clear to this Panel that the Respondent is clearly not commonly known by the disputed domain name, and the Respondent does not appear to be using the disputed domain name in connection with any legitimate noncommercial or fair use purposes. Further, the Respondent has no permission or license to use the Complainant’s trademark NESINE.

As argued by the Complainant, the Respondent’s registration of the disputed domain name seems to be with the objective of taking unfair advantage of the Complainant mark. The Panel finds the disputed domain name is not being put to use and given the circumstances of the case, non-use or mere idle parking of the domain name has been considered as not bona-fide or legitimate use under the Policy. See, for instance, BEI Industrial Encoders v. Jonathan Phillips, WIPO Case No. D2007-0702 (a respondent’s use of the domain name in connection with a domain parking program cannot be considered legitimate use). The Panel is of the view that the Respondent’s present passive use under the circumstances of the case shows the Respondent lacks rights or legitimate interests in the disputed domain name.

The Respondent has not replied or participated in these proceedings. The Complainant’s submissions are not rebutted or challenged. Based on the unchallenged assertions, the Panel finds the Complainant has accordingly satisfied the second requirement of paragraph 4(a) of the Policy, that prima facie, the Respondent lacks rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The third element under paragraph 4(a) of the Policy requires the Complainant to establish that the disputed domain name was registered in bad faith and is being used in bad faith.

The Complainant has urged that the disputed domain name was registered and is being used in bad faith on the grounds that: (i) The disputed domain name is identical with its trademark and its domain name and it is being used in the same field of activity for improper benefit from the Complainant’s reputation; (ii) The disputed domain name was registered and is being used in bad faith to exploit the Complainant’s gaming reputation in the mark; (iii) The Respondent undoubtedly knew the disputed domain name is identical to the Complainant’s mark, at the time of registration; (iv) The disputed domain name is listed as “domains for sales” on Moniker’s website; and (v) The Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site 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 web site or location which is evidence of bad faith under the Policy.

The Panel finds the Complainant has established that its trademark and its domain names are well-known in Turkey and has put forward convincing evidence of the popularity of its website. The Complainant has shown its ranking on Alexa.com for its domain name <nesine.com>, which is the 128th most visited website in Turkey. The Panel is of the view that the Respondent in all probability registered the disputed domain name for the trademark value of the Complainant’s mark and the web traffic generated by the Complainant’s domain name. The facts and circumstances in the case are therefore indicative of the Respondent’s knowledge of the mark at the time of registration of the disputed domain name, which suggests bad faith. See Caixa D’Estalvis I Pensions de Barcelona (“La Caixa”) v. Eric Adam, WIPO Case No. D2006-0464 (knowledge of a corresponding mark at the time of registration of the domain name suggests bad faith).

The Respondent has parked the disputed domain name and has not actively used it. Based on this fact, the Complainant has referred to the case Telstra Corporation Limited v. Nuclear Marshmallows, supra. In the Telstra case, it was discussed that passive use of the domain name can be found to be in bad faith if there are circumstances or additional facts that point to the Respondent’s bad faith motives as identified or as described under paragraphs 4(b)(i), (ii) and (iii) of the Policy. For instance, if the respondent did not actively use of the domain name and in addition there are circumstances showing an intention to sell or transfer the domain name bad faith passive use can be found. The facts in the present dispute show that the disputed domain name is listed or advertised for sale on Moniker’s website. Considering the circumstances in the present case, the Panel finds these facts constitute evidence of bad faith registration and bad faith use of the disputed domain name.

The Panel further notes that the registration of a domain name that is the ACE encoded equivalent of the trademark of a complainant is considered registration in bad faith. See Jesus Encinar v. Registrant [1116922], Moniker Privacy Services / Michael Doson, WIPO Case No. D2008-0568, where the ACE encoded equivalent domain name was found to be registered and used in bad faith. It is therefore reasonable to infer under the circumstances, that the intention of the Respondent in registering the disputed domain name was to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant’s mark, and such circumstances are indicative of bad faith registration and bad faith use. The Panel also notes that the Respondent had initially used the Privacy Service offered by the Registrar to hide the registrant’s identity and this constitute further evidence of bad faith registration and use of the disputed domain name under the circumstances of the present case.

The Complainant has satisfied the third requirement of paragraph 4(a) of the Policy that the Respondent has registered and is using the disputed domain name in bad faith.

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 <nesıne.com> (xn--nesne-p4a.com) be transferred to the Complainant.

Harini Narayanswamy
Sole Panelist
Date: February 25, 2014