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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
(1) Galatasaray Spor Kulubu Dernegi (2) Galatasaray Pazarlama A.S. (3) Galatasaray Sportif Sinai Ve Ticari Yatirimlar A.S. v. Maksimum Iletisim A.S.
Case No. D2002-0726
(1)GALATASARAY SPOR KULUBU DERNEGI
Hasnun Galip Sok.No:7
(2)GALATASARAY PAZARLAMA A.S.
Galatasaray Lisesi Binasi
İstiklal Cad. No:263 Beyoglu/ISTANBUL/TURKEY
(3)GALATASARAY SPORTIF SINAI VE TICARI
Hasnun Galip Sok.No:7/11
Respondent:MAKSIMUM ILETISIM A.S.
2. The Domain Name and Registrar
3. Procedural History
The Complaint was received by WIPO via email on August 1, 2002, and in hard copy form on August 13, 2002. WIPO has verified that the Complaint satisfies the formal requirements of the Policy, the Rules and the Supplemental Rules and that payment was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case.
Bulkregister.com, Inc has confirmed that the domain name <galatasaray.com> ("the Domain Name") was registered through Bulkregister.com and that Maksimum Iletisim A.S. is the current registrant. Bulkregister.com, Inc has further confirmed that the Policy is applicable to the Domain Name.
On August 14, 2002, WIPO notified the Respondent of the Complaint in the usual manner and informed the Respondent inter alia that the last day for sending its Response to the Complainant and to WIPO was September 3, 2002.
WIPO received the Response by email on September 1, 2002, and in hard copy form on September 6, 2002.
The Panel was properly constituted. The undersigned Panelists submitted Statements of Acceptance and Declarations of Impartiality and Independence.
No further submissions were received by WIPO or the Panel, as a consequence of which the date scheduled for the issuance of the Panel’s Decision is October 16, 2002.
4. Factual Background
The complainants are three associated companies, which between them own and operate a famous Turkish football club, based in the geographical area of Galatasaray and founded in about 1905 by some pupils at the Galatasaray High School. The full name of the club is "Galatasaray Spor Kulubu" (in English "Galatasaray Sports Club"), commonly abbreviated to "Galatasaray SK". In the football context it is and has for many years been widely known simply as "Galatasaray". In the papers before the Panel it is clear that both parties frequently refer to the club simply as "Galatasaray" (see for example the terms of the Respondent’s website disclaimer reproduced below).
Henceforth in this decision the Panel uses the term "Complainant" to mean the football club and its constituent legal entities, the three complainant companies.
The Complainant is the registered proprietor of several Turkish trademark /service mark registrations, all of them being device marks and two of them featuring as a prominent element of the mark the name "Galatasaray Spor Kulubu". Those two device marks date back to May 1999.
The main website of the Complainant is to be found at "www.galatasaray.org.tr". The domain name <galatasaray.org.tr> was registered by the Complainant in 1997. In 1996 it had registered the domain name <galatasaray.org>.
The Respondent is an Internet service provider based in Turkey. It registered the Domain Name in June 1998 and, according to the Respondent, set up the "www.galatasaray.com" website shortly afterwards. It has also registered domain names featuring the names of other well-known Turkish clubs e.g. <fenerbahce.com> (November 1997) and <karakartal.com> (December 1999). Websites connected to those domain names were developed in mid-2000 by which time the Respondent had entered into commercial agreements with the two clubs concerned.
The Respondent’s website, to which the Domain Name is connected, is a website directed to fans of the Complainant’s football team devoted exclusively to matters involving the football team. One of the pages of the website contains a disclaimer, which in translation reads:
"The content in this website is for information only. This site is not the official website of the Galatasaray Sports Club. "GALATASARAY.COM" IS A FAN-SITE OFFERED FOR THE PLEASURE OF THE SUPPORTERS. Our site, which is non-commercial, is in the service of Galatasaray and Galatasaray supporters."
From May 2000 to June 2002 the parties were in communication with each other from time to time concerning the Domain Name and the Respondent’s website. That correspondence is of potential significance in this case and the Panel now sets it out in full. In certain respects the meaning of the communications is not very clear, the quality of the English translation being poor. Nonetheless the general flavour of the correspondence comes through.
On May 18, 2000, the Secretary General of the Complainant wrote to the Respondent seeking transfer of the Domain Name. According to the Complainant the Respondent did not respond to that letter.
The nature and extent of the subsequent communications between the parties are relied upon by the Respondent in its defence of this Complaint. The Panel therefore sets them out below. The translations from the original Turkish were supplied by the Respondent.
On May 31, 2000, the Complainant wrote to the Respondent:
"Please be advised your intention to place a free link from your website "www.galatasaray.com" to Galatasaray Megastore included within virtual market of "www.kangurum.com.tr" where products of Galatasaray Sports Club are sold officially has been given approval by ourselves."
On May 31, 2000, the Respondent wrote to the Complainant:
"Further to your writing on May, 31, 2000, please be advised that a link has been provided from our website "www.galatasaray.com" to Galatasaray Megastore included within "www.kangurum.com.tr" where products of Galatasaray Sports Club are being sold officially"
On September 20, 2000, the Complainant wrote to the Respondent:
"Please be advised, it is our intention to make use of website address "www.galatasaray.com" directed and updated by you for our ultimate purpose of providing income to our club, introduction of poster project as well as marketing such. Looking forward to your sympathy and support in this respect."
On September 26, 2000, the Complainant wrote to the Respondent in the following terms:
"Having reference made to your letter dated September 22, 2000, we kindly call your attention to your website "www.galatasaray.com". I hereby confirm it happens to be an Internet site given approval and made effective starting from July 11, 2000, date of our agreement with [GES] called for by Article 2"b". I hereby further ask you kindly to place this in your main page as it happens to be a significantly important project started for mutual earnings to our club and create database."
The reference to Article 2"b" in the above quote is a reference to a provision in the Complainant’s agreement with GES to the effect that GES is licensed to sell club posters and create a database by way of Internet pages approved by the Complainant
On November 7, 2000, the Complainant wrote to the Respondent:
"You are kindly asked to remove gsmegastore link which is directed to our shop under Kungurum included in the web page "www.galatasaray.com" and to supply a free of charge link to "www.gsmegastore.com" registered to the name of Galatasaray Sportif Sinai ve Ticari Yatirimlar A.S. where sale of our official products have started."
On November 9, 2000, the Respondent wrote to the Complainant:
"Further to your letter dated November 7, 2000, we hereby take the pleasure to advise you that we complied with your request on website "www.galatasaray.com" and further diverted at site "www.gsmegastore.com" in terms of November 7, 2000, banning traffic diverted at your Kangurum Store present starting from June 6, 2000.
This service which took place at our websites again has been performed free of charge by [the Complainant] at your request."
On November 9, 2000, the Complainant wrote to the Respondent:
"In regard to your request of permission to take pictures in the match between Galatasaray and Rizespor ……. , please be advised that you will have to provide a written contract to meaning that all pictures taken would be used solely on your Internet website and that none of such pictures will be disclosed to no third party, whatsoever."
On December 4, 2000, the Complainant wrote to the Respondent:
"Further to personal request by President of [the Complainant] …. We hereby ask you kindly to include in our (sic) website "www.galatasaray.com" the slandering campaign published by newspaper Milliyet in November 28, 2000, edition."
On December 13, 2000, the Complainant wrote to the Respondent:
"This is to certify that [the Respondent] is authorised to market official Galatasaray 2001 calendars made by Galatasaray Sportif Sinai ve Ticari Yatirimlar A.S. from website "www.galatasaray.com.""
On September 24, 2001, the parties entered into an agreement whereby the Respondent agreed to assist the Complainant by collecting money via the website for the benefit of the Complainant. It appears from the correspondence between the parties that the Respondent collected in excess of 6,000,000,000 Turkish Lire for the Complainant under this arrangement.
On June 20, 2002, the Complainant’s attorney issued an official cease and desist letter by way of the Beyoglu 9th Notary Public referring to the website at "www.galatasaray.com", alleging infringement of the Complainant’s various trademark rights, demanding transfer of the Domain Name and threatening legal action if the demand is not met.
On June 26, 2002, the Respondent replied to that letter denying infringement and relying heavily on the previous dealings between the parties as set out above to demonstrate that all along it has had the approval of the Complainant insofar as the website is concerned. The Respondent stresses that the website is a non-commercial website for the fans. It draws attention to the fact that the website features a notice confirming that the website is not an official website.
5. Parties’ Contentions
The Complainant contends that it has registered and unregistered trademark and service mark rights in its name (abbreviated as well as unabbreviated) and that the Domain Name, which comprises its name in the abbreviated form "Galatasaray" together with the generic ‘.com’ suffix, is identical or confusingly similar to its trademark and service mark.
In support of this contention the Complainant points to its device mark registrations and to its fame as a football club, commonly known as "Galatasaray SK" and "Galatasaray".
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant contends that the Respondent registered the Domain Name not because it is the name of the Respondent, which it is not, but precisely because it is the name of the Complainant. The Complainant acknowledges that it has since May 31, 2000, (when it first drew to the Respondent’s attention its objection to the Domain Name registration by the Respondent) from time to time encouraged and approved the Respondent’s use of the Respondent’s website, "www.galatasaray.com", for the benefit of the Complainant (e.g. assisting in the collection of money in an appeal and selling official club merchandise). The Complainant states that it only did this because it was unaware that it could take action in respect of the Domain Name. Accordingly, and in light of the Respondent’s motive for registering the Domain Name (see below), the Complainant contends that none of the ‘approved’ uses of the Domain Name by the Respondent should qualify as a bona fide use within the meaning of Paragraph 4(c) of the Policy. The Complainant contends that notwithstanding its dealings with the Respondent it did not give permission to the Respondent to use the Domain Name and in any event throughout those dealings it made requests from time to time that the Respondent transfer the Domain Name to it.
The Complainant contends that using the Domain Name for a fan-site is not a legitimate fair use unless it can be done without infringing the Complainant’s intellectual property rights. The Complainant asserts that this use of the Domain Name infringes the Complainant’s rights as does the Respondent’s unauthorised use of the Complainant’s logo on the fan-site.
Finally, the Complainant contends that the Respondent’s motive for registering the Domain Name was mala fide. The Complainant contends that the Respondent, which is in business to provide website services, registered the Domain Name and the domain names,<fenerbahce.com> and <karakartal.com>, primarily with a view to pressurising the football clubs in question to enter into commercial contracts with the Respondent for the latter’s website services. In other words, the Respondent registered the Domain Name in bad faith and is using it in bad faith within the meaning of paragraph 4(b)(i) of the Policy. Additionally, the Respondent registered the Domain Name with a view to preventing the Complainant reflecting its trademark or service mark in the ‘.com’ domain within the meaning of paragraph 4(b)(ii) of the Policy and with a view to attracting, for commercial gain, Internet users to its website by creating confusion with the Complainant’s trade marks within the meaning of paragraph 4(b)(iv) of the Policy.
The Respondent contends that the name "Galatasaray", being as it is the name of a geographical region in Turkey, is incapable of trademark or service mark protection, absent proof of a secondary meaning. The Respondent produces a wealth of information on various other users/uses of the "Galatasaray" name. The Respondent points out that the Complainant’s trademark and service mark registrations are not for the name "Galatasaray", but for device marks of which the name is merely a part. The Respondent contends that the Complainant has not produced sufficient evidence to establish that the name has acquired a secondary meaning.
The Respondent contends that insofar as the Policy is concerned geographical indicators are outside its scope.
The Respondent contends that the Domain Name is not identical to the Complainant’s claimed trademarks since none of them are for the name "Galatasaray"on its own, which in any event is not protectable as a trademark because it is inherently non-distinctive, being a geographic term and in widespread use by a multitude of third parties. The Respondent contends that the Domain Name is not confusingly similar to any trademark or service mark of the Complainant, the only point of similarity being the unprotectable non-distinctive name "Galatasaray". The Respondent further points to the disclaimer on the Respondent’s website, which, it says, eliminates any possibility of confusion.
The Respondent further contends that it does indeed have rights and legitimate interests in respect of the Domain Name. It points to the fact that its non-commercial website has been up and running for 4 years. Over that period its use of the Domain Name has been legitimate, non-commercial and fair and without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Respondent also in this connection draws attention to the parties’ dealings referred to above including the benefit that the Complainant has derived from the site and its express approval of the site. It also refers to a draft agreement between the parties (never signed) one of the recitals of which includes an acknowledgment that the Respondent is the owner of the Domain Name. The Respondent states that this reflected an agreement entered into by the parties shortly before the launching of the Complaint, an agreement from which the Complainant has resiled.
As to the Complainant’s allegation of bad faith, the Respondent contends that it fails for a number of reasons. To succeed, the Complainant has to be able to establish that the Respondent’s mala fide intent was in place at time of registration. That intent cannot have been in place then, because the Complainant’s trademark and service mark registrations date from May 1999, nearly a year after the date of registration of the Domain Name. Moreover, none of the circumstances evidencing bad faith which are set out in paragraph 4(b) of the Policy are applicable here. There is no evidence that the Respondent ever intended to sell the Domain Name (4(b)(i)). It is not for sale and never has been for sale. The intention behind registration of the Domain Name cannot have been to block the Complainant (4(b)(ii)), because by then the Complainant already had the domain name registrations it desired, namely <galatasaray.org> and <galatasaray.org.tr>. Manifestly, paragraph 4(b)(iii) cannot apply because the Respondent is not a competitor of the Complainant and in any event, far from disrupting the Complainant’s business, the Respondent has co-operated with the Complainant to benefit the Complainant’s business. As to paragraph 4(b)(iv) the Respondent simply states that it has done nothing to create a likelihood of confusion and points to the disclaimer on the website.
The Respondent concludes by contending that the Complainant is guilty of Reverse Domain Name Hijacking. It claims that the launching of this Complaint constitutes an abuse of the Policy designed to deprive the Respondent of a lawfully held domain name registration. In support of the claim it points to the Complainant’s manifest lack of relevant rights, its knowledge of the Respondent’s lack of bad faith and the false and/or misleading presentation of the facts in the Complaint.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that
(i) The 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 interest in respect of the Domain Name; and
(iii) The Domain Name has been registered in bad faith and is being used in bad faith.
If the Complaint fails, the Panel has to have regard to paragraph 15(e) of the Rules and in particular the following sentence namely:
"If after considering the submissions the Panel finds that the Complaint was brought in bad faith, for example in an attempt at reverse domain name hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its Decision that the Complaint was brought in bad faith and constitutes and abuse of the Administrative Proceeding."
Reverse Domain Name Hijacking is defined in paragraph 1 of the Rules as meaning "using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name."
Identical or confusingly similar
First, the Panel has to decide whether or not the Complainant has relevant trademark or service mark rights. The Panel agrees with the Respondent that, in this case, given the geographical nature of the name "Galatasaray", for the Complainant to get off first base the Complainant has to demonstrate trademark or service mark rights in the name "Galatasaray". Of themselves, the registered device marks/logos are not enough.
There being no relevant registered rights, the issue is as to whether or not the Complainant has unregistered or so-called ‘common law’ rights in the name "Galatasaray". The test is straightforward. If a third party set up in business under the name "Galatasaray", could the Complainant succeed in a legal action to restrain the third party trading under that name? If the answer is "yes", then "Galatasaray" is a common law trademark or service mark of the Complainant. The fact that the name in question is a geographical name is of no consequence so long as the Complainant can demonstrate that the name has acquired secondary meaning
In the trademark context, it is normal to assess such issues by reference to the categories of goods/services involved. Accordingly, the fact that there may be an educational establishment for example which uses the name, does not prevent the Complainant having relevant rights in another field of activity. Here, the relevant business activity is football. Galatasaray (as such) is very well-known worldwide as one of Europe’s leading football clubs. It has been in operation at the top level for many years. The Panel is in no doubt that in the context of international football "Galatasaray" is recognised primarily as the name of the football club and not as the name of the region. The Panel has no hesitation in finding that on the balance of probabilities the Complainant could succeed in restraining another professional football club from setting up in business under the name "Galatasaray" in Turkey. Were it otherwise confusion and deception would be the inevitable result.
The Panel finds that the Complainant has trademark and/or service mark rights in the name "Galatasaray". Since the Domain Name comprises the Complainant’s trademark and/or service mark and the generic ‘.com’ suffix, the Panel finds that the Domain Name is identical to a trademark or service mark in which the Complainant has rights.
The Panel notes that despite the extensive arguments set out in the Response to the effect that the Complainant has no trademark rights in the name "Galatasaray", the Respondent’s website makes liberal use of the name "Galatasaray" and always to indicate the Complainant, not the region.
Respondent’s Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a non-exhaustive list of circumstances, which, if shown by the Respondent to be present, shall be evidence of the Respondent’s rights or legitimate interests in respect of the Domain Name. However, the primary burden is on the Complainant to show that the Respondent has no such rights or legitimate interests. Once the Complainant has made out a prima facie case, paragraph 4(c) kicks in.
When the Respondent registered the Domain Name it knew that "Galatasaray" was the name of the Complainant. It did not register the Domain Name because the name is also the name of the region and forms the part of the names of a whole host of other institutions in that region. It registered the name because it was the name of the Complainant and would be recognised as such. On its own admission it registered the Domain Name for a fan-site. For that purpose the name of the Complainant for the Domain Name was ideal. A substantial proportion of visitors would expect it to be a site belonging to or at any rate approved by the Complainant.
In the view of the Panel a registrant, who registers the trademark of another (without adornment), knowing it to be the trademark of that other and specifically as a reference to that other, effectively presents the Complainant with a prima facie case on a plate. It is there for all to see and the Respondent has a case to answer.
A complicating factor here is the fact that following the setting up of the website, the Complainant co-operated with the Respondent in relation to the website and on at least one occasion expressly ‘approved’ the website. Nonetheless, the Panel accepts the Complainant’s evidence that it did so simply because it was under the mistaken impression that it had no alternative. Throughout the period in question the Respondent knew perfectly well that the Complainant objected to the Respondent’s ownership of the Domain Name and was calling for its transfer. The opening letter in the correspondence between the parties is clear. Furthermore, the last communication between them, the draft agreement referred to by the Respondent, contains in the very recital relied upon by the Respondent the words "by signing this Agreement [the Complainant] is conceding that [the Respondent] is the owner of the "www.galatasaray.com" Domain Name and [the Complainant] has no outstanding claims regarding this Domain Name ….". That is not language one would expect to find in an agreement between the parties in circumstances where the ownership of the Domain Name was not in dispute. Quite the contrary. It appears to the Panel that there was still a live dispute over the ownership of the Domain Name and no acquiescence on the part of the Complainant. That being the case, notwithstanding the co-operation between the parties, the Respondent still has a case to answer.
Here the Respondent relies upon paragraph 4(c)(iii) of the Policy on the basis that throughout the last 4 years the Respondent has been making a fair, legitimate, non-commercial use of the Domain Name to connect to a not-for-profit fan-site without any intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark "Galatasaray".
In coming to its finding under this head, the Panel has taken the following factors into account:
a.The Respondent is in business in the Internet community
b.The website at "www.galatasaray.com" is a sophisticated site with many features. It could very readily be turned to a commercial purpose.
c.Through the website the Respondent has been able to establish a substantial network of fans (over 200,000 of them) by giving them email addresses featuring the Domain Name. For a business to provide this facility and on such a scale for any purpose other than a commercial purpose would in the view of the Panel be most unusual.
d.The Respondent is using the domain names <fenerbahce.com> and <karakartal.com>, to connect to commercial fan-sites relating to those clubs and the Panel believes it to be most unlikely that the Respondent did not have similar plans for the "www.galatasaray.com" website.
e.The fact that the Respondent has felt it necessary to include in the website the disclaimer quoted above indicates to the Panel that the Respondent was well aware when it created the website and connected it to the Domain Name that a substantial proportion of visitors would assume it to be the Complainant’s official site in the absence of the disclaimer. By then of course the Respondent has benefited from that initial interest confusion, whether the benefit be commercial or non-commercial. The visitor is at the Respondent’s website. He might not have been there if the website had been connected to a different domain name.
f.Contrary to what the Respondent says in one part of the Response, the disclaimer is not where one would expect it to be i.e. on the home page. To reach the disclaimer one has to click on a button labelled ‘Hakkimizda’ meaning "About us". Many visitors could visit the website and never see the disclaimer.
Taking all the above factors into account, the Panel concludes that the Respondent cannot rely upon its disputed use of the Domain Name to establish rights or legitimate interests in respect of the Domain Name. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances which if the Panel finds them to be present shall constitute evidence of bad faith registration and use of the Domain Name within the meaning of paragraph 4(a)(iii) of the Policy.
Paragraph 4(b)(i) of the Policy reads:
"circumstances indicating that you have registered … the Domain Name primarily for the purpose of selling, renting or otherwise transferring the Domain Name registration to the Complainant … for valuable consideration in excess of your out-of-pocket costs directly related to the Domain Name"
On the basis of the same reasoning as set out above in relation to paragraph 4(a)(ii) of the Policy the Panel finds that the Respondent falls foul of paragraph 4(b)(i) of the Policy. The Panel finds on the balance of probabilities that:
a.When the Respondent registered the Domain Name it knew that the name was the name of the Complainant.
b.When the Respondent registered the Domain Name it intended the Domain Name to refer to the Complainant
c.When the Respondent registered the Domain Name it intended to connect the Domain Name to a website relating to the Complainant
d.When the Respondent registered the Domain Name, it, an Internet website service provider, had primarily in mind the commercial possibilities of doing business with the Complainant. Contrary to what is said on its behalf, its intentions were not non-commercial.
e.In registering the Domain Name the Respondent hoped and anticipated that the Complainant would pay to the Respondent substantial sums of money (way beyond the Respondent’s out-of-pocket costs directly related to the Domain Name) to create and operate for the Complainant a commercial website connected to the Domain Name. Whether the arrangement would have involved sale or transfer of the Domain Name is of no consequence. In the absence of sale or transfer of the Domain Name, the arrangement would at the very least have involved (whether directly or indirectly) payment for the use of the Domain Name
On the basis of that finding, it is not necessary for the Panel to consider the other allegations as to bad faith registration and use put forward by the Complainant.
The Panel finds that the Domain Name was registered in bad faith and is being used in bad faith within the meaning of paragraphs 4(a)(iii) and 4(b)(i) of the Policy.
In light of the foregoing findings, namely that the Domain Name is identical to a trademark or service mark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered in bad faith and is being used in bad faith, the Panel directs that the Registrar transfers the Domain Name, <galatasaray.com>, to the first complainant or such other of the complainant companies as the first complainant nominates for the purpose.
The Panel dismisses the allegation of Reverse Domain Name Hijacking.
M. Scott Donahey
Alberto de Elzaburu
Dated: October 15, 2002