WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Koctas Yapi Marketleri Ticaret A.S. v. Murat Cabuk

Case No. D2015-0441

1. The Parties

The Complainant is Koctas Yapi Marketleri Ticaret A.S. of Istanbul, Turkey, represented by June Legal, Turkey.

The Respondent is Murat Cabuk of Turkey, self-represented.

2. The Domain Names and Registrar

The disputed domain names <koctasdekor.com> and <koctasdekor.net> are registered with IHS Telekom, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 12, 2015. On March 12, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name <koctasdekor.com>. On March 13, 2015, 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.

On March 19, 2015, the Center sent an email communication to the parties in both Turkish and English regarding the language of the proceedings. On March 23, 2015, the Complainant requested English to be the language of proceeding. On the same day, the Respondent requested Turkish to be the language of proceeding. On March 27, 2015, the Complainant requested suspension of the proceeding. On April 2, 2015, the Complainant requested continuation of the proceeding and added an additional domain name to the dispute. On April 8, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name <koctasdekor.net>. On April 8, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the domain name <koctasdekor.net> and providing the contact details.

The Center verified that the Complaint together with the amendment to 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 in both Turkish and English, and the proceedings commenced on April 13, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 3, 2015. The Center did not receive a formal response by the due date.

The Center appointed Emre Kerim Yardimci as the sole panelist in this matter on May 13, 2015. 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 May 14, 2015, the Center received a supplemental filing from the Respondent.

4. Factual Background

The Complainant was established in 1996 and owned by Koç Holding A.S., one of Turkey’s top industrial conglomerates. It is one of the leading companies in the Turkish “do-it-yourself” (DIY) field with a sales area of 160,000 square meters and 30 stores in 18 cities offering a wide variety of products focusing on the home renovation market.

The Complainant owns several KOÇTAŞ trademarks covering numerous classes including class 35 for retail services, the first one being protected as a registration as of April 02, 1998 in class 2 with Turkish registration number 197425.

The Complainant is also the owner of several domain names which incorporate its trademark. The Complainant registered <koctas.com>, <koctas.com.tr> in 1996 and <koçtaş.com> in 2006 and has been operating websites at the domain names since.

The Respondent registered the disputed domain names on April 16, 2014. The Panel visited the disputed domain names on May 26, 2015, and observed that the disputed domain name <koctasdekor.com> resolves to a website “www.orgudekor.com” where the KOÇTAŞ trademarks and KOÇTAŞ branded goods are displayed and apparently made available for purchase. The other disputed domain name <koctasdekor.net> does not resolve to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant submits that;

- It has numerous trademarks incorporating its trademark KOÇTAŞ registered in 1998 and that it is the owner of the domain names <koctas.com>, <koctas.com.tr> registered in 1996 and <koçtaş.com> in 2006. KOÇTAŞ is also the trade name of the Complainant. The domain names incorporate Complainant’s KOÇTAŞ mark in full, adding only the generic word “dekor,” the main sector where the Complainant operates since its establishment in 1996 and where it is well-known for a long time.

- Respondent has no rights or legitimate interest with respect to the disputed domain names. Complainant contends that Respondent does not own any trademark or other intellectual property rights in the mark KOÇTAŞ and that Respondent has never used the word KOÇTAŞ either as a legal or business name. Complainant further avers that it has never authorized, licensed or permitted Respondent to use its KOÇTAŞ mark.

- The disputed domain names were registered and are being used in bad faith based on (i) the knowledge of the Complainant’s long and continuous use of the KOÇTAŞ mark at the time of registration and knowledge that Respondent had no right, title or interest, whatsoever, in the mark or domain name; (ii) disrupting the business of a competitor by diverting traffic through confusion; (iii) diverting traffic through confusion for monetary gain by offering links to competing products.

B. Respondent

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

However, the Respondent replied to the Center’s email communication of March 23, 2015 by informing the Center that he informed the Representative of the Complainant that he had wished to transfer the disputed domain names to the Complainant and that if the Complainant withdraws its Compliant then he is willing to transfer the domain names as of August 1, 2015 without any monetary request. Within the same email, the Respondent expressed in an end note that “if the discussion is conducted in Turkish, he wishes to be part of the proceedings.” The Panel is of the opinion that this statement cannot be considered as a formally valid objection to language of the proceedings (also see Section 6.1).

On May 14, 2015, the Respondent submitted an additional communication which did not address any substantive issue under the Policy.

6. Discussion and Findings

6.1. Language of the Proceedings

Pursuant to paragraph 11(a) of the Rules, unless otherwise agreed by the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. The Registrar has confirmed that the registration agreement is in Turkish. The Complaint was filed in English. Accordingly, the Center sent out its language of proceedings notification both in Turkish and in English and requested from the Complainant the arguments and supporting documents as to why the proceedings should be conducted in English. The Complainant argued that if the Complaint is submitted in Turkish, it would incur substantial expenses for translation and that the Center has made a preliminary determination to accept the Complaint in English subject to a determination by the Panel. The Respondent did not formally object the request for the language of proceedings to be in English.

Although, the Panel is not entirely convinced of the Complainant’s arguments on the language of the proceedings, in the absence of any formal Response from the Respondent to the language of proceedings as well as to the Complaint itself, the Panel considers that the appropriate language of proceedings is English.

6.2. Effect of the Default

Paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.

As there are no exceptional circumstances for the failure of the Respondent to submit a formal Response, the Panel infers that the Respondent does not deny the facts asserted and contentions made by the Complainant. Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441.

6.3. Effect of the unilateral consent to transfer by the Respondent

The Panel must decide whether to grant a “unilateral transfer” in this case. Several prior decisions show that it is in the Panel’s discretion to choose “unilateral transfer” if consent has been given by the Respondent or to address the conditions for transfer under paragraph 4(a) of the Policy. See, e.g. Vienna Beef Ltd. v. Texas International Property Associates, WIPO Case No. D2007-1133(where there is a finding that a full discussion of the merits was appropriate despite Respondent’s alleged willingness to unilaterally transfer the domain name).

The Respondent proposes to transfer the disputed domain names as of August 1, 2015 with the condition that the Compliant is withdrawn. The Panel does not interpret the proposition of Respondent as an act of “unilateral transfer” since it imposes some conditions which may have serious implications for the Complainant. Therefore, the Panel has decided to address the merit of the Complaint.

6.4. Analysis of the Complaint

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant owns numerous Turkish trademark registrations which predate the registration of the disputed domain names for almost two decades.

The disputed domain names are identical to the Complainant’s mark, KOÇTAŞ, written in Latin characters with only the addition of the generic word, “dekor” which is Turkish word for “decoration”. In fact, the Complainant does offer a wide variety of products focusing on home renovation and the home decoration market.

UDRP panels have repeatedly held that the addition of a generic word to a recognized mark creates a confusing similarity between the domain name and the mark of the Complainant. See, e.g., DaimlerChrysler A.G. v. Donald Drummonds,WIPO Case No. D2001-0160 (June 18, 2001) (<mercedesshop.com>); Microsoft Corp. v. StepWeb, WIPO Case No. D2000-1500 (January 19, 2001) (<microsofthome.com>). The Panel finds that the addition of the “.com” and “.net” extensions is irrelevant when determining whether the disputed domain names are confusingly similar to the Complainant’s trademark.

The Panel therefore finds that Complainant has satisfied the first requirement under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The onus is upon the Complainant to make out at least a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names and it is then for the Respondent to rebut this case.

The Panel accepts the Complainant's submissions that the Respondent does not appear to have been known by the disputed domain names, has not made demonstrable preparations to use the second disputed domain name and is not making a legitimate noncommercial use of the disputed domain names.

The Respondent has not filed a Response. It has no consent from the Complainant to use its trademark, has not used the disputed domain names for a bona fide offering of goods and services given the confusing use, as discussed below, and is not commonly known by the disputed domain names. Nor is it making noncommercial fair use of it.

More specifically, the use of the Complainant’s trademark to direct customers to the products and services of the Complainant’s competitors is not bona fide use. (See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Abbott Laboratories v. United Worldwide Express Co., Ltd., WIPO Case No. D2004-0088).

Therefore, the Panel considers that the Respondent’s such use cannot be considered use of the disputed domain names in connection with “a bona fide offering of goods or services”.

In the Panel's view the Complainant has made out its prima facie case under this element of the Policy and the Respondent has failed to file a response. Accordingly the Complaint succeeds in relation to the second element of the Policy.

C. Registered and Used in Bad Faith

At the time of registration of the disputed domain names the Complainant’s trademark KOÇTAŞ was well-known trademark for a very long time. As the Complainant submits, it is inconceivable that the Respondent would not have known of the Complainant’s mark.

It appears from the screenshots of the underlying web pages submitted within the Complaint that one of the disputed domain names (<koctasdekor.com>) resolves to a website which offers products and services in relation to home decoration and home renovation including the Complainant’s competitors’ products/services and links to competitors’ websites. Panel also noted that at the date of this decision, the disputed domain name <koctasdekor.com> resolves to a webpage “www.orgudekor.com” where the KOÇTAŞ trademarks and KOÇTAŞ branded goods and services are offered for sale along with the Complainant’s competitors’ products and services.

The Panel is persuaded that Respondent’s registration and use of the disputed domain names for redirecting Internet users, particularly customers and potential customers of the Complainant to companies which directly competes with Complainants and for diverting traffic through confusion for monetary gain, constitutes bad faith registration and use.

Furthermore, under the totality of the circumstances, the Panel finds the Respondent’s registration and use of <koctasdekor.net> to be in bad faith.

Therefore, in the view of cumulative circumstances, the Panel finds that the requirement of registration and use in bad faith is satisfied, according to the Policy, paragraph 4(a)(iii).

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 names, <koctasdekor.com> and <koctasdekor.net> be transferred to the Complainant.

Emre Kerim Yardimci
Sole Panelist
Date: May 28, 2015