WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

DSM Grup Danışmanlık İletişim ve Satış Ticaret Anonim Şirketi v. Bülentrecep Esen

Case No. DAE2018-0002

1. The Parties

The Complainant is DSM Grup Danışmanlık İletişim ve Satış Ticaret Anonim Şirketi of Istanbul, Turkey, represented by Tellioğlu Kaşlioğlu Law Office, Turkey.

The Respondent is Bülentrecep Esen of Turkey, represented by Reza Shahzeydi of the United Kingdom of Great Britain and Northern Ireland (the “United Kingdom”).

2. The Domain Name and Registrar

The disputed domain name <trendyol.ae> is registered with AE Domain Administration (.aeDA).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 14, 2018. On March 15, 2018, the Center transmitted by email to AE Domain Administration (.aeDA) a request for registrar verification in connection with the disputed domain name. On March 18, 2018, AE Domain Administration (.aeDA) 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 UAE Domain Name Dispute Resolution Policy – UAE DRP approved by .aeDA (the “Policy”), the Rules for UAE Domain Name Dispute Resolution Policy – UAE DRP (the “Rules”), and the Supplemental Rules for UAE Domain Name Dispute Resolution Policy – UAE DRP (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 March 23, 2018. In accordance with the Rules, paragraph 5(a), the due date for Response was April 12, 2018. Upon the Complainant’s request, the proceeding was suspended by the Center on April 11, 2018. Following to the exchange of correspondence between the Complainant and the Respondent, the proceeding was reinitiated by the Center on May 11, 2018 upon Complainant’s request and the Parties were notified that the due date for Response was May 16, 2018. On May 14, 2018, the Response due date was extended until May 20, 2018 under paragraph 5(b) of the Rules upon request of the Respondent. The Respondent submitted his Response on May 21, 2018. Accordingly, the Center notified the Parties on May 22, 2018 that it would proceed to the Panel appointment.

The Center appointed Emre Kerim Yardimci as the sole panelist in this matter on June 4, 2018. 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 company established in Istanbul, Turkey, offering retail services through its website at “www.trendyol.com”.

The Complainant owns multiple trademarks for TRENDYOL registered before the Turkish Patent and Trademark Office among which the earliest one, TRENDYOL no. 2009 55631 is applied for on October 20, 2009 and registered on October 1, 2010.

The trademark TRENDYOL is accepted as a well-known trademark by the Turkish Patent and Trademark Office and recorded with the no. T/02568 within the database of the Turkish Patent and Trademark Office in the name of the Complainant. The Complainant is the right holder for the domain name <trendyol.com> registered on October 7, 2009. In the United Arab Emirates, the Complainant holds the trademark for TRENDYOL in a stylized form, registered on February 3, 2014.

The Respondent is a physical person domiciled in Turkey. The Respondent holds the disputed domain name <trendyol.ae> created and registered with AE Domain Administration (.aeDA) on February 2, 2018 and currently placed on the Registrar lock. At the time of filing of the Complaint, the disputed domain name resolved to a website in the Turkish language with only one page whereby a simple contact information was provided as “[email protected]”. Currently, it resolves to a website in Turkish with the statement “B.RECEP ESEN – Personal Blog”, an anonymous photograph and a few tabs which do not contain any content.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the disputed domain name is identical to its trademarks registered in Turkey and in the United Arab Emirates. The Complainant also brings forward its website at “www.trendyol.com”, which the Complainant claims to be identical to the disputed domain name. The Complainant further argues that the disputed domain name is being used in violation of the Complainant’s trademark rights.

The Complainant states the Respondent has no right or legitimate interests for the use of the word “Trendyol”. The Complainant further indicates that it has not given any authorization or license to use the trademark TRENDYOL to the Respondent. The Complainant further states that TRENDYOL is not a common word or a generic name.

The Complainant contends that TRENDYOL is a well-known trademark in Turkey and as a Turkish citizen, the Respondent must have necessarily been aware of its TRENDYOL trademarks. The Complainant also claims that the existence of a website accessible at the disputed domain name <trendyol.ae> would dilute the trademark TRENDYOL and be detrimental to the Complainant’s commercial standing and repute.

B. Respondent

The Respondent submitted his Response one day after the expiry of the due date for submission of a Response. The content of the late Response may be summarized as follows: The Respondent alleges that he registered the disputed domain name to use it in relation with e-commerce business in the United Arab Emirates and that the Respondent was not aware of the Complainant’s registered trademark rights in that jurisdiction. The Respondent further claims that he was contacted by the Complainant’s representative with an offer to buy the disputed domain name but the Parties could not agree upon the price for such purchase. The Respondent states that the words from which the disputed domain name consists are descriptive words in Turkish: “trend” (same meaning as in English) and “yol” (“road” or “path”) and therefore it should be allowed to use these words in a domain name.

6. Discussion and Findings

The Panel finds that the Respondent failed to submit its Response until or on the Response due date and it is in the sole discretion of the Panel to hear the Response which was filed on May 21, 2018, one day after the Response due date which was May 20, 2018. The Panel notes that the Respondent had ample time to prepare a Response. In any event, the Panel notes that the Respondent had submissions and discusses them below as relevant.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has rights in the trademark TRENDYOL obtained through registration and use, which predate the date of registration of the disputed domain name by many years.

In particular, the Panel pays specific attention to the Complainant’s registration no. 176375 before United Arab Emirates, Ministry of Economy, Trademarks Department. The Panel is of the opinion that TRENDYOL constitutes the essential verbal component of many other registrations of the Complainant in Turkey and the disputed domain name exactly incorporates the mark TRENDYOL.

The Panel therefore finds that the disputed domain name is almost identical to the verbal elements of the registered trademarks of the Complainant in the United Arab Emirates and in Turkey exhibited by the Complainant and holds that the Complaint fulfills the first condition of paragraph 6(a)(i) of the Policy.

B. Rights or Legitimate Interests

Pursuant to paragraph 6(c) of the Policy, any of the following circumstances could serve to demonstrate the Respondent’s rights or legitimate interests to the disputed domain name for purposes of Section 6(a)(ii) on a

non-exhaustive basis:

(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without the intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel takes account of the Complainant’s assertion that it has not given any authorization/license to use the trademark TRENDYOL to Respondent and that TRENDYOL is not a common word or a generic name. Although the words, of which the mark TRENDYOL exists, are separately descriptive in Turkish (namely “trend” having the same meaning as in English, and “yol” meaning “road” or “path”), their combination is not commonly used in Turkish and the Complainant also submitted evidence that its trademark is recognized as a well-known trademark by the Turkish Patent and Trademark Office. The Panel finds that these submissions are sufficient to make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

In accordance with the established jurisprudence of the Policy, the burden of production on the Respondent’s rights or legitimate interests thus shifts to the Respondent to come forward with relevant evidence. Even considering the late Response, the Panel finds that the Respondent has not submitted evidence for having rights or legitimate interests in the disputed domain name.

The Panel therefore concludes that the second condition, posed by paragraph 6(a)(ii) of the Policy is fulfilled.

C. Registered or is Being Used in Bad Faith

Paragraph 6(b) of the Policy provides the following non-exhaustive list for instances of registration or use in bad faith:

(i) circumstances indicating that the Respondent has registered or has 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) 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 his/her/its 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 his/her/its web site or location or of a product or service on his/her/its web site or location.

Based on the evidence submitted with the Complaint, the extensive use as well as the well-known character of the trademark TRENDYOL, and based on the fact that the Respondent lives in Turkey, it is unconceivable to this Panel that the Respondent was not aware of the Complainant’s trademark and its activity. Considering the distinctiveness and originality of the denomination TRENDYOL, the Panel is convinced that the Respondent had the Complainant’s trademark in mind when registering the disputed domain name.

Based on the totality of circumstances and party submissions, the Panel comes to the conclusion that the Respondent has registered the trademark for the purpose of transferring the disputed domain name in excess of the documented out-of-pocket costs. As such, the Panel finds that the conditions posited under 6(b)(iv) and 6(a)(iii) are satisfied within the present case.

7. Decision

For the foregoing reasons, in accordance with paragraphs 6(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <trendyol.ae> be transferred to the Complainant.

Emre Kerim Yardimci
Panelist
Date: June 28, 2018