WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AKPA Dayanikli Tüketim LPG Ve Akaryakit Ürünleri Pazarlama A.S. v. Mehmet Kahveci / Domains By Proxy, LLC
Case No. D2014-1202
1. The Parties
The Complainant is AKPA Dayanikli Tüketim LPG Ve Akaryakit Ürünleri Pazarlama A.S. of Istanbul, Turkey, represented by Istanbul Patent & Trademark Consultancy Ltd., Turkey.
The Respondent is Mehmet Kahveci of Boston, Massachusetts, United States of America / Domains By Proxy, LLC of Scottsdale, Arizona, United States of America.
2. The Domain Name and Registrar
The disputed domain name <akpa.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 10, 2014. On July 10, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 11, 2014, 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 July 14, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant transmitted emails to the Center on July 15 and 17, 2014, confirming that the Respondent in the present proceeding should also include the registrant of record as disclosed by the Registrar.
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 21, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was August 10, 2014. The Response was filed with the Center on August 8, 2014.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on August 20, 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 Turkish company which is engaged in liquefied petroleum gas (“LPG”) distribution in the Turkish provinces of Bursa, Eskişehir, Antalya, Ankara, Istanbul and Izmir. The Complainant concentrates on LPG distribution in Bursa, Eskişehir and Antalya and held 60% of the relevant market in 2006.
The Complainant’s present incorporation was formed from the merger of four companies in 2005 and various of the constituent entities have used the trade name AKPA continuously since as early as August 24, 1965. The Complainant is a subsidiary of Aygaz A.Ş., which itself is a member of Koç Holding Group. Aygaz A.Ş. was founded in 1961 and is the first and largest of the Koç Holding Group companies to operate in the LPG industry. Koç Holding group itself is Turkey’s largest industrial and services group in terms of revenues, exports, share in the Istanbul Stock Exchange and number of employees.
The Complainant is the owner of Turkish registered trademark No. 2011 68055 for the device and word mark AKPA, registered on August 19, 2011 in international classes 4, 6, 9, 11, 12, 21, 35, 37 and 39.
According to the publicly available WhoIs data, the disputed domain name was created on April 17, 1996. The data provided by the Registrar gives the creation date as April 16, 1996. The website associated with the disputed domain name reverted to different pages. At the time the Complaint was filed, the following statement was displayed on the website: “This site is currently being developed. Akpa.com is a domain name with great search engine adaptibility [sic]. Our goal is to make it a truly unique website with features tailored for users like you. Hyperlink Web LLC, owner of more than 300 unique domain names since 1996, helps businesses increase exposure through our network advertising services. Akpa.com is undergoing a facelift, and is not available in the meantime. However, you can still contact us by using the contact form below.” The page seen by the Panel on August 22, 2014 stated that Akpa is a popular family name and invites users to create a profile and communicate with people who share the same family name.
The Respondent is a citizen of the United States of America who makes investments and carries out projects online in addition to working in dentistry. The Respondent has been the respondent, or the panel has held that the Respondent can be treated as the controller of the disputed domain name or real underlying registrant, in eight proceedings under the Policy in which a finding of registration and use in bad faith was made. These are:
Diler Demir Çelik Endüstri Ve Ticaret Anonim Şirketi, Diler Yatirim Bankasi Anonim Şirketi v. Dr. Mehmet Kahveci,WIPO Case No. D2014-0060 (disputed domain name: <diler.com>, originally created in April 1996, transfer ordered);
Tupras Turkiye Petrol Rafinerileri A.S. (TUPRAS) v. Domains By Proxy, LLC / “,”, WIPO Case No. D2013-1247 (disputed domain name: <tupras.com>, originally created in February 1996, transfer ordered);
Kibar Holding A.Ş. and Kibar Diş Ticaret A.Ş. v. Dr. Mehmet Kahveci, WIPO Case No. D2012-1417 (disputed domain name: <kibar.com>, originally created on April 17, 1996, transfer ordered);
Merko Gida Sanayi Ve Ticaret Anonim Şirketi v. Dr.Mehmet Kahveci,WIPO Case No. D2010-1124 (disputed domain name: <merko.com>, originally created on April 17, 1996, transfer ordered);
Alarko Holding A.S. v. “,”,WIPO Case No. D2007-0909 (disputed domain name: <alarko.com>, originally created on January 23, 1996, transfer ordered);
Yildiz Holding A.S., Ülker Gida Sanayi Ve Ticaret A.S. v. Dr. Mehmet Kahveci, WIPO Case No. D2002-1141 (disputed domain name: <ulker.com>, originally created on April 17, 1996, transfer ordered);
Akbank v. Dr. Mehmet Kahveci,WIPO Case No. D2001-1488 (disputed domain name: <akbank.com>, originally created on September 12, 1999, transfer ordered);
Vestel Elektronik Sanayi ve Ticaret AS v. Mehmet Kahveci,WIPO Case No. D2000-1244 (disputed domain name: <vestel.com>, originally created on April 17, 1996, transfer ordered).
5. Parties’ Contentions
A. Complainant
The Complainant contends that the disputed domain name is identical to a trademark in which it has rights, that the Respondent has no rights or legitimate interests in the disputed domain name and that the disputed domain name was registered and is being used in bad faith.
The Complainant relies both on its registered trademark described above and claims unregistered trademark rights in the mark AKPA on the basis that it has operated under this name for more than 50 years. The Complainant asserts that incorporating a trademark in its entirety into a domain name can be sufficient to establish that the domain name concerned is identical or confusingly similar thereto.
The Complainant asserts that it has not licensed or otherwise permitted the Respondent to use the AKPA mark or to apply for or use any domain name incorporating such mark. The Complainant submits that it has prior rights in such mark which precede the Respondent’s registration of the disputed domain name. The Complainant contends that the only interest that could be imagined for a person without a particular connection to the AKPA trademark is to create a connection with the Complainant and its trademark. The Complainant states that the Respondent does not use the disputed domain name for commercial or noncommercial purposes and has not been commonly known by the disputed domain name. The Complainant asserts that the Respondent is aware of the Complainant’s goodwill and reputation in its mark and that the Respondent would only have a right in such mark if the Complainant had granted such right.
The Complainant states that the Respondent is a famous cybersquatter, and apparently a Turkish individual, who registers domain names that correspond to the names of well-known Turkish companies. The Complainant submits that it is not likely that the Respondent would not have known the AKPA mark in Turkey. The Complainant lists the various cases brought by third parties against the Respondent under the Policy and submits that all the complainant companies are top-tier companies in Turkey and that their trademarks are well-known in Turkey and elsewhere. The Complainant also notes that the complainant Tupras Turkiye Petrol Rafinerileri A.S. (TUPRAS) is a Koç Holding group company as is the Complainant in the present case.
The Complainant notes that in the previous cases involving the Respondent, panels under the Policy have found that the Respondent has engaged in a pattern of registering domain names corresponding to well-known marks of Turkish companies and that even where the complainant’s registered trademark rights post-dated the creation of the domain name concerned by some ten years the evidence suggested that the Respondent was motivated by bad faith intent to exploit the reputation of that complainant. The Complainant notes that the Respondent registered four of the eight domain names in the previous cases under the Policy on the same date as the disputed domain name, namely April 17, 1996. The Complainant adds that the Respondent is the registrant of multiple Turkish trademarks in the domain name space including by way of example <uki.com>, <tupras.com>, <cebitas.com>, <santeks.com>, <bilkont.com>, <tarmak.com>, <orsa.com>, <ulusoy.com>, <ziraat.com>, <transturk.com> and <yasar.com>.
The Complainant notes that in Vestel Elektronik Sanayi ve Ticaret AS v. Mehmet Kahveci, supra, the Respondent had sought USD 200,000 from the complainant for the domain name at issue in that case. The Complainant adds that in Yildiz Holding A.S., Ülker Gida Sanayi Ve Ticaret A.S. v. Dr. Mehmet Kahveci, supra, the panel held that there were some indications that the Respondent had registered the domain name concerned for the purpose of selling it to the complainant or to a competitor for an amount in excess of its out-of-pocket costs however that the Respondent had apparently learnt from the Vestel case that it should not request such an amount if it wished to avoid a decision against it in a possible proceeding under the Policy.
The Complainant notes with reference to Merko Gida Sanayi Ve Ticaret Anonim Şirketi v. Dr.Mehmet Kahveci, supra, that the panel identified that in two previous decisions under the Policy the domain names in question had been registered on the same date, namely April 17, 1996, and found that it was reasonable to suppose that the domain name at issue in Merko had been registered for the same purpose as the others. The Respondent notes that in both Vestel Elektronik Sanayi ve Ticaret AS v. Mehmet Kahveci, supra and Yildiz Holding A.S., Ülker Gida Sanayi Ve Ticaret A.S. v. Dr. Mehmet Kahveci, supra, the respective panels found that the Respondent had engaged in a pattern of registering domain names corresponding to well-known marks of Turkish companies, in order to prevent the owners of the marks from reflecting such marks in a corresponding domain name.
On the subject of registration in bad faith, the Complainant submits that the Respondent targets well-known companies before the corresponding trademarks are registered and “before the trademark and domain name consciousness of the Turkish companies”. The Complainant makes reference to the panel’s analysis in Tupras Turkiye Petrol Rafinerileri A.S. (TUPRAS) v. Domains By Proxy, LLC/“,”, supra as authority for the following propositions: (1) a delay in bringing the Complaint should not matter, as the doctrine or defense of laches should not apply in a case brought under the Policy; (2) the fact that the disputed domain name pre-dates the Complainant’s registered trademark should not be fatal to the Complaint; and (3) there can be bad faith registration if a respondent is clearly aware of a complainant at the time of registration of the domain name concerned and the aim of such registration is to take advantage of the confusion between such domain name and potential rights of the Complainant in a mark. This includes where the Complainant has used such mark in a trademark sense before obtaining a corresponding registered trademark.
On the subject of use in bad faith, the Complainant submits that the Respondent does not use the disputed domain name and has placed no content on the associated website relating to a business. The Complainant submits that the incorporation of a famous mark into a domain name, coupled with an inactive website may be evidence of bad faith registration and use, citing inter aliaTelstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The Complainant asserts that it is not possible to imagine any plausible future active use of the disputed domain name by the Respondent that would not be illegitimate.
The Complainant contends that, with reference to the previous cases under the Policy involving the Respondent, the pattern of the Respondent’s domain name registration practice suggests more than a coincidence in the names selected and indicates deliberate targeting of the rights of Turkish businesses with a view to commercial gain through the sale of the relative domain names. The Complainant adds that bad faith is also indicated by the Respondent’s use of a privacy service to hide its identity and notes that this factor was relied upon for a finding of bad faith registration and use by the panel in Alarko Holding A.S. v. “,”,supra.
B. Respondent
The Respondent acknowledges that it registered the disputed domain name but asks the Panel to deny the remedies requested by the Complainant. The Respondent states that it registered and has continuously owned the disputed domain name and used it in good faith since 1996 and asserts that it is used for establishing contact between individuals with identical surnames. The Respondent points out that the disputed domain name was registered some 15 years before the Complainant obtained its registered trademark and submits that it possesses “all kinds of related intellectual property rights in the ongoing period”.
The Respondent submits that a Google search in Turkey reveals many “deep established and different” companies bearing the name “Akpa” which have no concern with the Complainant and cites several examples. The Respondent contends that the Complainant is trying to ascribe “an abstract legitimacy” to the Complaint by pointing to the past cases brought against the Respondent and submits that each case should be judicially evaluated with its own dynamics. The Respondent adds that the fact that a case was decided against it would not render every complaint justifiable.
The Respondent asserts that it has a social networking site on the disputed domain name which contains nothing interfering with the Complainant’s trademark rights. The Respondent submits that the Complainant’s claim is unacceptable “pursuant to ICANN rules”.
The Respondent points out that it has paid a registration fee and renewal fees for the disputed domain name since 1996 and states that it has a website design with an ongoing publication. The Respondent asserts that it has spent USD 5,500 on this to date. The Respondent states that it has over one hundred websites in the fields of science, dentistry, finance, tourism and social networking. The Respondent submits that the websites concerned have hundreds of thousands of visitors annually and that they have been in existence since 1996.
The Respondent states that it neither registered the disputed domain name primarily to sell it to the Complainant, nor has it attempted to sell it and notes that it denies any allegation of bad faith. The Respondent asserts that the Complainant has failed to satisfy the burden of proof. The Respondent also denies registering the disputed domain name in an intentional attempt to attract Internet users to the associated website for commercial gain by creating a likelihood of confusion with the Complainant’s mark.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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 the inquiry under paragraph 4(a)(i) of the Policy. First, the Panel must determine whether the Complainant has rights in a trademark. Secondly, the Panel must reach a view as to whether such trademark is identical or confusingly similar to the disputed domain name. For the purposes of this element of the Policy it is not necessary for the registration date of the trademark relied upon by the Complainant to pre-date the creation date of the disputed domain name (see paragraph 1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)).
The Response focuses on the 15 year time delay between the creation of the disputed domain name and the registration of the Complainant’s trademark. The Panel will examine that matter under the topic of registration and use in bad faith below.
In the present case, the Complainant has cited its Turkish registered trademark No. 2011 68055 for the device and word mark AKPA, registered on August 19, 2011 in international classes 4, 6, 9, 11, 12, 21, 35, 37 and 39. The Panel finds that the Complainant has rights in this trademark. Accordingly, the first part of the inquiry under this element is satisfied. The Panel considers that the stylized or figurative element of this mark may be disregarded for the purpose of comparison with the disputed domain name (on this topic, see paragraph 1.11 of the WIPO Overview 2.0). This leaves the alpha-numeric element of the mark to be compared with the disputed domain name and the Panel finds this to be identical thereto.
In these circumstances, the Panel finds that the disputed domain name is identical to a trademark in which the Complainant has rights and thus that the Complainant has established the first element under the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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.”
The consensus view of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case not rebutted by the respondent that the respondent has no rights or legitimate interests in the disputed domain name. In the present dispute, the Panel is satisfied that the Complainant has made out a prima facie case that the Respondent has no such rights or legitimate interests based upon its submissions that it has not licensed or otherwise permitted the Respondent to use its AKPA mark, that the Respondent does not use the disputed domain name for commercial or noncommercial purposes and that the Respondent has not been commonly known by the disputed domain name. The Complainant also provides evidence, based on previous cases under the Policy, that the Respondent is a serial cybersquatter who has registered the trade names of various Turkish corporations within domain names in the past, an activity that could not confer rights or legitimate interests upon the Respondent in the case of such a domain name. Accordingly, the burden of production shifts to the Respondent to bring forward evidence of its rights and legitimate interests.
The essence of the Respondent’s case is that it uses the disputed domain name for a social networking site which establishes contact between individuals with identical surnames. The first problem with this approach is that the Respondent has provided no evidence whatsoever that the name “Akpa” is a surname. Secondly, while the website associated with the disputed domain name was changed to refer to such a social network, this change likely took place at some point after the submission of the Complaint. In these circumstances, the Panel cannot accord much weight to this website as evidence of the Respondent having used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods and services. The publication of the website at such a late stage also begs the question as to what the Respondent was doing with the disputed domain name, or intended to do with it, over the 18 years of its existence. The only evidence available to the Panel is the screenshot taken prior to the recent change, which shows a generic statement that the site is being developed into “a truly unique website with features tailored for users like you”. This does not constitute evidence of use in connection with a bona fide offering of goods and services either, nor in the Panel’s view does it constitute evidence, on its own, of any demonstrable preparations for such use.
From the Response it is clear that the Respondent is particularly keen that the Panel should take no account of the past cases brought against the Respondent under the Policy on the basis that “each case should be judicially evaluated with its own dynamics”. Considering the cases themselves, it is hardly surprising that the Respondent should wish to exclude these as a factor that might influence the Panel’s thinking in the present matter, given that in the Panel’s view they build a consistent and comprehensive picture of the Respondent as someone who targets the trading names of Turkish companies through the registration of identical or confusingly similar domain names.
While the Respondent is correct that each case must be examined on its own merits, it is not right that the past cases under the Policy involving the same Respondent must necessarily be excluded from consideration. The facts in these cases are capable of forming part of the factual matrix in the present matter and are specifically and relevantly referred to in the Complaint for that purpose. Furthermore, the approach of previous UDRP panels to similar factual circumstances, whether or not those cases involve or relate to the Respondent, may be of assistance to the Panel in the present matter. Even though the Policy does not operate on a strict doctrine of precedent, panels consider it desirable that their decisions are consistent with prior panel decisions dealing with similar fact situations (see paragraph 4.1 of the WIPO Overview 2.0).
If the Respondent had made a case that the disputed domain name was different from those in the past cases and had been registered for some convincing alternative reason, this would have constituted a different factual basis for the present Response and the Panel would have given full consideration to such a case. However, the Respondent has not done this. On the contrary, the argument that the website associated with the disputed domain name is being used to connect people with the same surname is one that the Respondent has made before in Yildiz Holding A.S., Ülker Gida Sanayi Ve Ticaret A.S. v. Dr. Mehmet Kahveci, supra. In that case, even when accompanied by evidence that the name concerned was a Turkish surname which is lacking in the present case, that argument was disposed of by the panel on the grounds that the Respondent could not claim a legitimate interest in registering the disputed domain name as a kind of self-appointed representative of persons, including the complainant, who bear that name. Similarly, in Diler Demir Çelik Endüstri Ve Ticaret Anonim Şirketi, Diler Yatirim Bankasi Anonim Şirketi v. Dr. Mehmet Kahveci, supra, the factual background shows that the Respondent had set up a similar surname page. The panel in that case noted that there was no evidence before it of the Respondent having any rights or legitimate interests in the domain name at issue.
Unlike in Yildiz Holding A.S., Ülker Gida Sanayi Ve Ticaret A.S. v. Dr. Mehmet Kahveci, supra, the Respondent does attempt to show in the present matter that there are “deep established and different” companies bearing the name “Akpa” which it says have no concern with the Complainant. However, the issue for the Respondent remains that there is nothing on the present record to show why the Respondent should be entitled to represent any of these companies or other persons bearing that name. In the Panel’s view, the Respondent’s submission is only relevant to the question of registration in bad faith, in that the Complainant must show under that element of the Policy that the Respondent registered the disputed domain name with the Complainant’s rights in mind, as opposed to the rights of any third parties. This will be considered further below.
In all of these circumstances, the Panel finds that that the Respondent has no rights or legitimate interests in the disputed domain name and accordingly that the second element of the Policy has been established.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have 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 your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
As noted above, it is incumbent upon a complainant to demonstrate in connection with this element of the Policy that the respondent is targeting the complainant’s rights in some manner through the registration and use of the domain name at issue. This involves a complainant showing that the respondent had knowledge of the complainant’s mark at the point of registration. As paragraph 1.4 of the WIPO Overview 2.0 notes, this can be difficult if, as here, the relied upon trademark post-dates the creation date of the disputed domain name. In the present case, however, the Complainant asserts that its AKPA mark has been used by it and its predecessors as a trading name since 1965, under reference to official documentation which is produced, and the Respondent does not appear to take issue with that submission. When this is coupled with the fact that, on the basis of the previous cases under the Policy, the Respondent has been found to have targeted similar unregistered marks used as trading names by Turkish companies in the past, it creates a compelling case in the Panel’s mind that this was the purpose behind the Respondent’s registration of the disputed domain name. The Respondent has put nothing forward which demonstrates to the Panel that this case is different, or should be treated differently, from the others cited in the Complaint.
The Respondent argues that there are other companies in existence using the name AKPA. This does not satisfy the Panel that the Respondent did not intend to target the Complainant’s rights in that name or mark. In particular, the Panel notes that the previous cases under the Policy involving the Respondent relate to Turkish companies which are very similar to the Complainant and in at least one case the complainant was a member of the same corporate group as the Complainant in the present case. Furthermore, the date of creation of the disputed domain name is exactly the same date as that on which at least four or five of the Respondent’s other domain names, which were found to have targeted similar companies to the Complainant, were also created (note that one case does not provide the full date of creation and only refers to the date as “April 1996”).
It seems to the Panel that following Vestel Elektronik Sanayi ve Ticaret AS v. Mehmet Kahveci, supra, in which the Respondent was found to have demanded the sum of USD 200,000 from the complainant in respect of the domain name <vestel.com>, the Respondent changed its approach to one of a more passive nature whereby it ceased to approach rights holders directly with a view to selling its domain names at a value in excess of its out-of-pocket costs. It also seems to the Panel that in due course, the Respondent came up with the notion that its domain names could be described as social networking sites relative to people sharing the same surname. Indeed, the panel in Yildiz Holding A.S., Ülker Gida Sanayi Ve Ticaret A.S. v. Dr. Mehmet Kahveci, supra, indicated its belief that the Respondent had “learnt from [the Vestel] case” that it should not on its own initiative demand a purchase price from a rights holder.
The Panel considers that, on the balance of probabilities, a future sale to the targeted rights owner at considerable profit is the most likely reason why the Respondent selected the disputed domain name for registration in the present case, based on the fact that it was at the time of registration the longstanding trading name of a significant Turkish company. Furthermore, it was registered on the same date as so many other similar domain names relating to Turkish companies which the Respondent has since been found to have registered and used in bad faith. The past cases cited in the Complaint, taken together with the present case, also create a compelling pattern of conduct on the part of the Respondent of the registration of domain names in order to prevent the owner of a trademark reflecting such mark in a corresponding domain name. In these circumstances, the Panel finds that the disputed domain name was registered and is being used in bad faith within the meaning of both paragraphs 4(b)(i) and 4(b)(ii) of the Policy.
In concluding the discussion on this element, the Panel must also deal with the Respondent’s submission that it had held the disputed domain name for many years before the present Complaint was brought. The Respondent submits, without providing further details, that it possesses “all kinds of related intellectual property rights in the ongoing period”. There is no evidence of any such intellectual property rights having vested in the Respondent on the basis of the record before the Panel and the Panel does not accept that such rights necessarily arise sui generis from a lengthy period of holding a domain name. Indeed, given that the Panel has found that the motivation for the Respondent’s registration and use of the disputed domain name is on balance likely to be the same as that of the other domain names mentioned in the past cases, in the Panel’s view this irrevocably taints the Respondent’s holding of the disputed domain name. In other words, in such circumstances it matters not how long the Respondent has held the disputed domain name without challenge. As was noted in particular by the Panel in Tupras Turkiye Petrol Rafinerileri A.S. (TUPRAS) v. Domains By Proxy, LLC/“,”, supra, most panels under the Policy do not consider that the doctrine or defense of laches applies under the Policy (on this topic, also see paragraph 4.10 of the WIPO Overview 2.0). This Panel shares that view and considers that provided, as here, a complainant can establish a case on the merits under the requisite three elements of the Policy, the delay in bringing a complaint does not of itself prevent a complainant from filing under the UDRP.
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 <akpa.com> be transferred to the Complainant.
Andrew D. S. Lothian
Sole Panelist
Date: September 3, 2014
