WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Diler Demir Çelik Endüstri Ve Ticaret Anonim Şirketi, Diler Yatirim Bankasi Anonim Şirketi v. Dr. Mehmet Kahveci

Case No. D2014-0060

1. The Parties

The Complainant is Diler Demir Çelik Endüstri Ve Ticaret Anonim Şirketi, Diler Yatirim Bankasi Anonim Şirketi of Istanbul, Turkey, represented by Salih Bulut, Turkey.

The Respondent is Dr. Mehmet Kahveci of Drums, Pennsylvania, United States of America.

2. The Domain Name and Registrar

The disputed domain name <diler.com> is registered with Network Solutions, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 16, 2014. On January 16, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 17, 2014, 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 January 23, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was February 12, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 13, 2014.

The Center appointed James A. Barker as the sole panelist in this matter on February 17, 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 Complaint is filed in the name of two Complainants. The first Complainant Diler Demir Çelik Endüstri Ve Ticaret Anonim Şirketi (Diler Iron and Steel Company Inc) was founded in 1954 and which the Complainant says is Turkey’s largest steel manufacturer. The second Complainant is Diler Yatirim Bankasi Anonim Şirketi (Diler Investment Bank), founded in 1998. For convenience, and except where indicated below, references to “the Complainant” in this Decision are references to both the first and second Complainants.

Although not entirely clear from the Complaint, the Panel has inferred that the first and second Complainants are owned by the holding company, Diler Holding, which the Complainant says was founded in 1949. The Complaint also outlines the companies which operate within the structure of Diler Holding. In addition to the first and second Complainants, these companies include Diler Electricity Generation Inc. and Diler Port Inc, among others. Collectively, Diler Holding and its associated companies have over 10,000 employees.

The first and second Complainants are the owners of registered marks featuring the term “Diler”, registered in Turkey in various classes. The earliest of these marks appear to have been first filed in 2007. The first Complainant is also the registrant of a trademark for a stylized D, registered in 1989.

Diler Holding also registered the domain name <diler.com.tr> in July 1996.

The disputed domain name was created in April 1996. At the time the Complaint was notified, the disputed domain name reverted to a website which had a homepage headed “Welcome to Diler”. That page stated, among other things, that “Diler is a popular family name in Turkey. You can create a user profile here and share it with other people…If you know relatives or friends who also have the surname ‘Diler’, invite them to sign up here.” The Complainant provides evidence that, at earlier periods, the disputed domain name did not feature a webpage itself. This evidence indicates that between November 2002 and May 2004 the disputed domain name directed to a website featuring a list of other domain names. Between May 2004 and February 2005, the disputed domain name reverted to a page described as “a placeholder for the home page of your own website”. Between February 2005 and January 6, 2014 the Complainant’s evidence indicated that the disputed domain name did not have any content.

5. Parties’ Contentions

A. Complainant

The Complainant says that the disputed domain name is confusingly similar to its registered trademark for DİLER.

The Complainant, secondly, claims that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant says that the Respondent does not own any registered trademark for “diler”, and that the Complainant has never provided the Respondent with any permission or license regarding the use of its trademarks. By reference to evidence from “archive.org” of the Respondent’s website, the Complainant says that there has never been any active use of the Respondent’s website: that it has not published any kind of service and that the page has remained blank.

The Complainant says that the Respondent, Dr. Mehmet Kahveci, has a Turkish name and surname. The Complainant says that it is not possible for the Respondent to have been unaware of the Complainant’s trademark.

The Complainant points to a series of prior disputes under the Policy involving the Respondent. From this, the Complainant says that the Respondent is known for registering domain names associated with the most famous Turkish companies. Among other cases, the Complainant points to cases:

- Initiated by Vestel, one of the biggest electronics manufacturer of Turkey: Vestel Elektronik Sanayi ve Ticaret AS v. Mehmet Kahveci,WIPO Case No. D2000-1244 (<vestel.co>);

- Initiated by Akbank which owns one of the biggest network branches of Turkey: Akbank v. Dr. Mehmet Kahveci, WIPO Case No. D2001-1488 (<akbank.com>)

- Initiated by Ulker which is one of the largest food producer of Turkey: Yildiz Holding A.S.,Ülker Gida Sanayi Ve Ticaret A.Ş. Yildiz Holding A.Ş.v. Dr. Mehmet Kahveci,WIPO Case No. D2002-1141 (<ulker.com>)

- Initiated by Alarko, which operates in the manufacture of heating and cooling appliances: Alarko Holding A.S. v. “,”, WIPO Case No. D2007-0909 (<alarko.com>)¹.

In all of these cases, the Complainant notes that the matter has been decided in favor of the Complainant.

The Complainant says that it is one of the most recognised companies in Turkey for 65 years. From this, the Complainant argues that the Respondent registered and is using the disputed domain name in bad faith, and that the Complainant has been subject to a serious loss of reputation from the disputed domain name being in the Respondent’s possession.

B. Respondent

The Respondent did not reply to the Complainant’s contentions, nor make any other communication in connection with this case.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:

(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.

In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable. These elements are discussed in turn below, immediately after consideration of a procedural issue in relation to the consolidation of the Complaint, and the delay in the filing of the Complaint.

A. Consolidation of the Complaint

The Complainant was filed by both the first and second Complainants. While the Complaint itself does not explicitly explain why it was filed by both Complainants, the Panel has assumed that the Complaint has been filed in this way because both Complainants are the owners of registered trademark rights relating to the term “Diler”. The issue is whether the consolidation of the Complaint should be permitted, on the basis that both Complainant’s are related entities and share a common grievance against the Respondent and because it would be equitable and procedurally efficient to permit the consolidation. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.16.

Although the Policy does not explicitly provide for multiple Complainants to be treated as one, neither does it explicitly preclude it. The majority of UDRP panels have accepted complaints filed by multiple complainants, particularly where they are related entities. (See e.g.,Starwood Hotels & Resorts Worldwide, Inc., Sheraton, LLC, and Sheraton International Inc. v. Jake Porter,WIPO Case No. D2007-1254. See also e.g.,Media West-CPI, Inc.,Media West-DMR, Inc., Media West-GMP, Inc., Media West-GSI, Inc., Media West-PNI, Inc., Media West-PNJ, Inc., Media West-SJC, Inc., Media West-NPP, Inc., Cape Publications, Inc., Des Moines Register and Tribune Co., Gannett Satellite Information Network, Inc., Multimedia Holdings Corp., Phoenix Newspapers, Inc., Gannett Co., Inc. v. Unasi, Inc., WIPO Case No. D2005-1336.) The Complainants in this case are clearly related. The first Complainant and second Complainant appear to be in a close commercial relationship with Diler Holding. The Panel does not consider that the Respondent would be disadvantaged by the consolidation of the Complaint. The overall interests of fairness and efficiency would appear to be advanced by allowing the consolidation of the Complainant in these circumstances. Accordingly, the Panel has allowed the Complaint to proceed in the name of both Complainants.

B. Delay in Bringing the Complaint (“Laches”)

As noted above, the disputed domain name was created in 1996. This means that the disputed domain name was registered around seventeen years before the Complainant filed the Complaint. The Complainant provides no explanation as to why it took so long to file the Complaint.

However, as discussed in previous UDRP cases, a delay in bringing a complaint does not provide a defense per se under the Policy: Chocolaterie Guylian, Naamloze Vennootschap (N.V.) v. Zeugma,WIPO Case No. D2010-2256. While a complainant’s delay may make it more difficult to prove its case, particularly under paragraphs 4(a)(ii) and 4(a)(iii) of the Policy, delay itself is not a matter that relates directly to any of the issues which a complainant must prove under paragraph 4(a) of the Policy. In these circumstances, the Panel has not drawn adverse implications against the Complainant on this issue alone.

The non-applicability of the defense of laches (i.e. undue delay) in UDRP proceedings has long been recognized by UDRP panels, over many years and a large body of jurisprudence. See e.g., in addition to the earlier-mentioned decision Chocolaterie Guylian, Naamloze Vennootschap (N.V.) v. Zeugma, supra, WIPO Overview 2.0, paragraph 4.10, and cases cited therein. While the Panel is aware that a small number of UDRP panelists have, on occasion, sought to put this question in issue (see e.g.,Laminex, Inc. v. Yan Smith, NAF Claim No. FA1470990), the Panel sees no compelling reason to disrupt or depart from years of well-settled UDRP jurisprudence on this point.

This does not mean that a delay may not be relevant in this proceeding, to the extent that it may relate particularly to the matters the Complainant must prove under paragraph 4(a)(ii) or 4(a)(iii) of the Policy. To the extent issue of delay is relevant in these respects, the Panel has addressed it below.

C. Identical or Confusingly Similar

The Complainant has provided evidence that it has registered rights in its DILER mark. In deciding whether the disputed domain name is identical or confusingly similar to this mark, it is well established that the generic Top-Level Domain (gTLD) extension, “.com” may be disregarded. Beyond this, the overall test for determining whether a domain name is identical or confusingly similar to a mark is outlined in the paragraph 1.2 of the WIPO Overview 2.0, relevantly as follows:

“The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name... Application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name.”

While some of the Complainant’s marks include the term “Diler” with a design, the Complainant also has registrations which feature the term “Diler” alone. For these marks, the Panel also notes that the registration is for a term evidently in Turkish, which is accented as DİLER.

Notwithstanding these elements of the Complainant’s mark, the Panel considers that, on an overall impression, the disputed domain name is clearly confusingly similar to it. The disputed domain name wholly incorporates the dominant textual feature of the Complainant’s mark, without any relevant difference or supplementation. In numerous UDRP cases, it has been held that a domain name that wholly incorporates a complainant’s registered mark may be sufficient to establish confusing similarity for purposes of the Policy. See e.g., BHP Billiton Innovation Pty Ltd, BMA Alliance Coal Operations Pty Ltd v. Cameron Jackson, WIPO Case No. D2008-1338.

For these reasons, the Panel considers that the disputed domain name is, at least, confusingly similar to the Complainant’s registered mark, DILER.

The Complainant additionally has a registered mark for D. This mark was registered to the first Complainant in 1989. The Panel has also considered whether this mark is identical or confusingly similar to the disputed domain name because, had the Complainant been able to establish confusing similarity with this mark, its case would have been substantially stronger on the grounds which follow. Having considered the Complainant’s D mark, the Panel does not consider that it is identical or confusingly similar to the disputed domain name. Essentially, this mark is comprised of a single and common letter. Phonetically and visually, there is very little similarity between this trademark and the disputed domain name. Neither did the Complainant explicitly argue that there is such a confusing similarity. The disputed domain name is obviously comprised of a much longer term. As such, the Panel finds that the disputed domain name is not confusingly similar to the Complainant’s registered mark for D.

The Complainant did not further argue that it has unregistered rights in the DILER mark. Evidence of the Respondent’s website, which states that “Diler” is a Turkish surname, also mitigates against the Panel considering potential unregistered rights in the absence of evidence being provided on this issue. In the absence of such evidence, the Panel has proceeded on the basis that the Complainant did not have unregistered trademark rights, arising before its trademark registrations.

D. Rights or Legitimate Interests

The Complainant has established a prima facie case against the Respondent that it does not have rights or legitimate interests in the disputed domain name. The Respondent has a history of registering domain names corresponding to the names of well-known Turkish companies. Paragraph 4(c) of the Policy sets out circumstances which may demonstrate a right or legitimate interest. The Respondent provided no evidence of having such rights or legitimate interests in the disputed domain name. Neither was there evidence in the case file to suggest such a right or legitimate interest. For these reasons, the Panel finds that the Complainant has established its case under this element of the Policy.

E. Registered and Used in Bad Faith

Bad faith may be demonstrated where the evidence indicates that the Respondent registered and used the disputed domain name primarily with a view to taking unfair advantage of the Complainant’s registered trademark rights and reputation. See e.g., SingTel Optus Pty v. Xnet, WIPO Case No. D2004-0734.

At this point, the Complaint faces a difficulty. The nature of this difficulty is relevantly described in the WIPO Overview 2.0, paragraph 3.1 as follows:

“Generally speaking, although a trademark can form a basis for a UDRP action under the first element irrespective of its date [see further paragraph 1.4 above], when a domain name is registered by the respondent before the complainant’s relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant’s then non-existent right.”

What this means is that, normally speaking, bad faith cannot be found where a domain name is registered before a mark. But, as further indicated in the WIPO Overview 2.0, paragraph 3.1, this rule is subject to an exception:

“However: In certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found. This has been found to occur: shortly before or after a publicized merger between companies, but before any new trademark rights in the combined entity have arisen; or when the respondent (e.g., as a former employee or business partner, or other informed source) seeks to take advantage of any rights that may arise from the complainant’s enterprises; or where the potential mark in question is the subject of substantial media attention.” (underlined emphasis added by the Panel)

The Respondent appears to have registered the disputed domain name on April 17, 1996. This was well before the registration of the Complainant’s trademarks with which the disputed domain name is confusingly similar. The earliest of these marks was registered in 2007 in Turkey. This raises the question about whether the Respondent can have registered the disputed domain name in bad faith because, at the time of registration, the Complainant did not have a relevant trademark.

As noted above, the Respondent has a history of registering domain names corresponding to the names of well-known Turkish companies. On the Complainant’s evidence, the Respondent also has a Turkish name. From this evidence, the Panel considers that there is very strong inference that the Respondent was well aware of the Complainant when he registered and subsequently used the disputed domain name. There is no evidence that the Respondent has used the disputed domain name for any legitimate purpose since its registration in 1996. This evidence strongly suggests that the Respondent was motivated to take some advantage of confusion between the disputed domain name and the Complainant’s potential rights in a mark corresponding to its company name.

The Respondent does not appear to have actively used the disputed domain name since it was first registered. This also suggests a plausible lack of a good faith reason for the Respondent’s registration. The Panel further notes that at the time the Complaint was notified to the Respondent the website under the disputed domain name indicated the following: “Diler is a popular family name in Turkey. You can create a user profile here and share it with other people…If you know relatives or friends who also have the surname ‘Diler’, invite them to sign up here”. However this change occurred only after the Complaint was filed.

The circumstances of a bad faith registration arising before the registration of a trademark, as cited in the WIPO Overview 2.0, paragraph 3.1 have arisen e.g. in cases where there is an particular event which attracted substantial media attention to a particular company, or where the respondent had some inside knowledge of a potentially arising trademark right. There was no evidence of such circumstances presented in this case. But the Panel does not consider that the lack of such circumstances is a bar to a finding of bad faith registration in other appropriate circumstances. Essentially, the circumstances mentioned in the WIPO Overview 2.0, paragraph 3.1 may provide evidence that a respondent is seeking to pre-emptively take advantage of a complainant’s trademark rights. In this case, the Panel has little doubt that the Respondent was aware of the Complainant when he registered the disputed domain name. The Respondent’s history of bad faith registration of domain names corresponding to the names of well-known Turkish companies is strongly suggestive of that the Respondent’s intentions were also abusive in this case. The Respondent has submitted no reply to provide evidence to the contrary.

A notable aspect of this case is that the Complainant’s relevant trademark rights did not arise for almost ten (10) years after the registration of the disputed domain name in 1996. (A number of cases of pre-emptive domain name registrations, as cited in the WIPO Overview 2.0, paragraph 3.1, feature domain names registered shortly before the registration of relevant trademarks. See e.g., 537397 Ontario Inc. operating as Tech Sales Co. v. EXAIR Corporation, WIPO Case No. D2009-0567; General Growth Properties, Inc., Provo Mall L.L.C. v. Steven Rasmussen/Provo Towne Centre Online, WIPO Case No. D2003-0845). The Panel does not consider this to affect the question of bad faith. The timing of a complainant’s trademark registrations is ultimately beyond a respondent’s control or anticipation. What matters is the respondent’s intent at the time the domain name is registered. That intent cannot be affected retroactively by the timing of the actual registration of a complainant’s mark, even if that registration occurred some time after registration of the domain name. In this case, the first Complainant claims to be Turkey’s largest steel manufacturer founded in 1954 and the Complainant’s holding company Diler Holding has been operating since 1949. The evidence strongly suggests that the Respondent was motivated by a bad faith intent to exploit the reputation of the Complainant as it relates to the term “Diler”, when the disputed domain name was first registered. Further, it is well established under the Policy that a bad faith use of a domain name can arise from passive holding, where there are other circumstances indicating bad faith.

For these reasons and under the circumstances, the Panel finds on balance that the disputed domain name was registered and is being used in bad faith.

F. Relevant Complainant for Transfer

Section VII of the Complaint seeks the disputed domain name to be transferred to “the Complainants”. It is not practical for one domain name to be transferred to two entities. As such, the Panel has ordered, below, that the disputed domain name be transferred to the first Complainant. This is because the first Complainant is the predominant registrant of the relevant trademarks.

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 <diler.com> be transferred to the first Complainant, Diler Demir Çelik Endüstri Ve Ticaret Anonim Şirketi.

James A. Barker
Sole Panelist
Date: March 3, 2014

¹ The Panel notes from this decision that while the WhoIs details for the domain name had only a comma in the registrant field, the administrative contact details indicated an email address with username “mehmetkahveci.”