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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Yildiz Holding A.S., Ülker Gida Sanayi Ve Ticaret A.S. v. Dr. Mehmet Kahveci
Case No. D2002-1141
1. The Parties
The Complainants are Yildiz Holding A.S., Davutpasa Cad. No: 10, Topkapi, Istanbul, Turkey, and Ülker Gida Sanayi Ve Ticaret A.S., Davutpasa Cad. No: 10, Topkapi, Istanbul, Turkey, represented by Dogan Cosgun of Turkey.
The Respondent is Dr. Mehmet Kahveci of Boston, Massachusetts, United States of America.
2. The Domain Name and Registrar
The disputed domain name <ulker.com> is registered with Network Solutions, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 16, 2002. On December 16, 2002, the Center transmitted by email to Network Solutions, Inc. a request for registrar verification in connection with the domain name at issue. On December 17, 2002, Network Solutions, Inc. transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January 6, 2003. 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"), 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 10, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was January 30, 2003. The Response was filed with the Center on February 3, 2003, (hardcopy only).
The Center appointed Gerd F. Kunze as the sole panelist in this matter on February 6, 2003. 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 first Complainant is the controlling parent company of the second Complainant, who used to be the holder of the group’s trademarks. After the foundation of the first Complainant in 1999, all trademarks registered in Turkey were transferred to the first Complainant, whilst in many other countries the trademarks are still registered in the name of the second Complainant. Since these details of the legal structure of the Complainants and of their interconnection do not influence the decision to be taken in the present case, the two Complainants are in the following referred to as "The Complainant".
The Complainant was founded in 1944 as a biscuit company and today is the leading company in the field of biscuits and chocolate products in Turkey with market shares since 1995 continuously between 55% and 63%. These facts are proven by evidence submitted as annexes 13 and 14 to the Complaint. The Complainant is also a leading company in other fields such as margarine and milk products. The Complainant exports its products to about 100 countries, including the United States.
The Complainant is the holder of many trademark registrations both in Turkey and in foreign countries for the word ÜLKER, standing alone or combined with product brands, such as ÜLKER Bego, ÜLKER Dido, ÜLKER Bar, ÜLKER Star, etc.
In particular the trademark ÜLKER has been registered in Turkey since 1978 under registration no. 105547 for biscuits and chocolate products in class 30 of the Nice International Classification (also applied in Turkey). Furthermore, a Community Trademark ÜLKER has been registered under no. 221861 in class 30 on April 27, 1998, with the priority date of April 1, 1996, (which is earlier than the registration date of the domain name registration). Also in the United States the trademark ÜLKER has been registered for goods in class 30 on December 28, 1999, (registration no. 2304879, applied for on July 15, 1998). These facts are proven by the respective registration certificates.
According to evidence submitted by the Complainant, the trademark ÜLKER is the best-known trademark in Turkey for chocolates (with an awareness of 47.5% of the population, followed by "Nestlé" with 21,7%). It is also the 5th best-known trademark of the country ("Coca Cola" being in the 7th place, together with OMO and "Levi’s"). These submissions of the Complainant are supported by evidence and have not been contested by the Respondent.
The reputation of the Complainant is also proven by the fact that it is the sponsor of the famous Turkish Basketball Team ÜLKERSPORT ISTANBUL, who was several times the Turkish Champion (in the seasons 1992-1993, 1996-1997 and 2000-2001) and has been participating in the European Champions Club Cup and in the Euroleague since 1992.
The Complainant is also the owner of the domain name <ulker.com.tr>, which it uses as access to its sophisticated website.
On April 17, 1996, the Respondent registered the domain name <ulker.com> and uses it to redirect visitors to his website "www.hyperlinklist.com".
5. Parties’ Contentions
The Complainant submits that (1) the domain name <ulker.com> is identical or confusingly similar to a trademark or service mark, in which the Complainant has rights; (2) the Respondent has no rights or legitimate interests in respect of the domain name; (3) the domain name was registered and is being used in bad faith.
It furthermore submits that its trademark ÜLKER is a well-known mark in Turkey and that the Respondent, who is a citizen of Turkey, had knowledge of the mark, when in 1996, he registered the domain name <ulker.com>, which he never used for a corresponding website.
The Respondent submits in a late filed Response that he had a legitimate interest in registering the domain name in order to list it in a directory of Turkish names, including various well-known Turkish companies with the idea to provide links to the respective companies. He denies to have registered and to use the domain name in bad faith. The Panelist accepts to consider the late filed Response of the Respondent.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the domain name of the Respondent be transferred to the Complainant:
1) The domain name is identical or confusingly similar to a trademark or service mark ("mark") in which the Complainant has rights; and
2) the Respondent has no rights or legitimate interests in respect of the domain name; and
3) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The domain name <ulker.com> is at least confusingly similar if not identical to the trademark ÜLKER of the Complainant, registered and well-known for the Complainant in Turkey at the time when the domain name was registered. At that time the letter "ü" could not be part of a domain name and still today Internet users are accustomed to using letters without dots instead of the respective letters with dots (umlaut) that are used in many countries, including Turkey, in real life. The Complainant itself still uses the domain name <ulker.com.tr> for its website and not domain names like <ülker.com.tr> or <ülker.com>. Furthermore, the gtld ".com" cannot be taken into consideration when judging identity or confusingly similarity. Internet users, seeking to reach the website of the Complainant and expecting to find it in the ".com" domain, are likely to try the name "ulker". They will be redirected to the website "www.hyperlinkslist.com" of the Respondent, where amongst others a reference to "companies listed under ulker" is made. When trying to create a link to the Complainant by pushing that reference to the companies listed under "ulker" they will be informed that the page is "under construction". They may therefore even believe that the Complainant does not yet have a website.
B. Rights or Legitimate Interests
The Respondent does not have a right of his own in the name "ulker" and has no connection or affiliation with the Complainant, who has not consented to the Respondent's use of the domain name. Furthermore, the domain name in dispute does not resolve to a website where the Respondent would make a non-commercial use of the domain name and it is not used in connection with a bona fide offering of goods or services. The Respondent admits himself that he is not commonly known under the term "ulker".
However, the Respondent believes to have a legitimate interest in registering the name <ulker.com> in order to be able to redirect its visitors to his website "www.hyperlinklist.com", where he lists names of various well known Turkish companies. In that context he submits that "Ülker" is a common Turkish surname (as evidenced by copies of the Istanbul telephone directory) and that his directory would allow (on request of the Complainant) to provide for a hyperlink to the Complainant enabling persons looking for the Complainant to be redirected to it as opposed to persons or entities with similar names. The Respondent also submits that at the time of his registration of the domain name <ulker.com> the name "ulker" was not registered for the Complainant or anybody else in the United States.
First of all, under the Policy, the Complainant need not have rights in a mark in the country where the Respondent is having his place of business. It is sufficient that the Complainant has rights in a mark to which the domain name is identical or confusingly similar. The Complainant clearly has earlier rights in the well-known trademark ÜLKER in Turkey and in the European Community and it even succeeded to have its mark registered in the USA. That registration was applied for after the registration of the domain name of the Respondent, but it shows that only the Complainant has rights in that mark in the USA.
Secondly it does not play any role that "Ülker" is a common surname in Turkey. The Respondent has not submitted that there are other persons than the Complainant having rights in a mark "ülker". On the contrary, the fact that a famous Turkish Baseball Team is bearing the name of the Complainant shows that in commerce and with the public in Turkey the name and mark ÜLKER is clearly linked to the Complainant. If the surname of the Respondent were "Ülker" he might have a right or legitimate interest in nevertheless registering the domain name <ulker.com> for legitimate commercial or non-commercial use of his own surname outside the field of activities of the Complainant. However, the Respondent cannot claim a legitimate interest in registering the domain name <ulker.com> as a kind of self-appointed representative of persons bearing that name or the name "Ülker", including the Complainant. The following considerations confirm that the Respondent does not have a legitimate interest and does not intend to use the domain name <ulker> in exercising such legitimate interest. Despite the fact that the Respondent registered the domain name <ulker.com> in 1996 already and no doubt has listed the name "Ulker" already for some time as "URL" on his website, that name does not lead to any person having that surname or a similar surname such as "Ülker". If one tries to reach the site referred to by the term "companies listed under the name Ulker", one is informed that the site is "under construction". This shows that the Complainant is not interested in establishing on his own initiative a directory for the names listed on the website, rather he is waiting for companies bearing that or a similar name to contact him and to ask for a link to their website (or simply to be listed with their address). This is confirmed by the submissions of the Respondent and by the heading on his website "www.hyperlinklist.com", which reads: "If your entity name is similar with on of the URLs below, you can list your entity free of charge. Please fill out the form". Of course the Respondent is not interested in simply providing for such free of charge entries. In fact, the Respondent himself submits that his website "allows companies to advertise at a fee, which is the commercial purpose of the hyperlink."
The Panelist accepts that the Respondent could have a legitimate interest in establishing a directory in which (Turkish) companies can advertise, if they wish. However, such interest does not justify the registration in his own name of a domain name that is identical or similar to the mark of the Complainant and to redirect visitors of that domain name, who believe that it would allow to establish a connection to a website of the Complainant, to his own website. Actually, the system, as established by the Respondent, only works if he registers in his own name famous marks as domain names and redirects visitors of these domain names to his website. Otherwise nobody would expect to find a directory of well-known (Turkish) names on a website named "hyperlinklist.com". In conclusion the Respondent has an interest in registering these domain names, including the domain name <ulker.com>, however this interest is clearly not legitimate.
C. Registered and Used in Bad Faith
For a Complaint to succeed, the Panel must be satisfied that a domain name has been registered and is being used in bad faith.
No doubt the Respondent, who is a national of Turkey, was aware of the Complainant’s trademark ÜLKER when he registered the domain name <ulker.com>. The Respondent does not contest the corresponding submission of the Complainant and he admits himself to have registered various Turkish names for the purpose of providing a directory and a link for redirection and thus providing Internet access for Turkish companies.
No doubt, Turkish companies do not need the services of the Respondent if they wish to be represented on the Internet, and it cannot be the task of the Respondent to act as a self-appointed representative of (Turkish) companies by registering without their consent their marks as domain names and to redirect visitors to his website. This conduct is therefore already in itself an indication of bad faith. In the case of "companies listed under ulker" clearly the only company that could be interested in being mentioned under the respective link is the Complainant, since there apparently exists no other commercially active company that could be interested in such listing. Consequently, the Panelist is satisfied that the only reason for the Respondent to have registered the domain name <ulker.com> was to try and achieve some commercial gain with this registration.
The Respondent refuses the submission of the Complainant to have registered 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 a mark or to a competitor of that Complainant for valuable consideration in excess of out-of-pocket costs directly related to the domain name (paragraph 4b(i) of the Policy), and it is true that in the present case he did not ask the Complainant for such consideration. There is some indication that nevertheless this was originally the purpose or at least one of the purposes for his registration of the domain name <ulker.com> in 1996. That domain name is only one of a great number of other domain names relating to the names and marks of Turkish companies and the Complainant has submitted evidence that at least in the case of the domain name <vestel.com> the Respondent requested US$200.000 for the transfer of that domain name to Vestel Electronic Sanayi (see Vestel Elektronik Sanayi ve Ticaret AS v. Mehmet Kahveci, WIPO Case No. D2000-1244). Since the domain name <vestel.com> in that case was transferred to the Complainant mainly because the Panelist considered that the Respondent had acted in bad faith in having asked for that amount of money, the Respondent has apparently learnt from that case that he should not on his own initiative request an amount in excess of his out-of-pocket expenses, if he wants to avoid a decision against him in a possible proceeding under the Policy. Also the Complainant did not offer any amount to the Respondent and did not test whether the Respondent would accept such offer. As a consequence, the Complainant cannot prove that the Respondent has registered the domain name <ulker.com> for that purpose.
However, there are other elements showing to the satisfaction of the Panelist that the Respondent has registered and is using the domain name in bad faith:
He has registered the domain name more than six years ago and does not use it for an active website. Instead the domain name is redirecting visitors to his website "www.hyperlinklist.com", where amongst many other companies also "companies listed under the name ulker" are referred to. However, as already said, this link leads to a site "under construction". Under the circumstances, the Panelist is satisfied that the sole purpose of such mentioning of "companies listed under ulker" on the Respondent’s website is to invite the Complainant as owner of the well-known Turkish mark ÜLKER to ask for the establishment of a hyperlink to its own website (or for the transfer of the domain name for an amount in excess of his out of pocket expenses). Of course, such link is not intended to be provided for free, but for an advertising fee, as the Respondent himself admits. This pattern of the Respondent’s strategy can easily be confirmed if one visits the Respondent’s website and tries the links provided for the over 50 companies listed. With a small number of exceptions all these links lead to a site "under construction".
One of the rare exceptions is "companies listed under the name of Akbank", where a number of addresses in different countries (however with one exception without providing any Internet access) of an AK Bank, the abbreviation standing for Alaska Bank, are listed. No doubt the background for this attempt of the Respondent to provide some information in that case is the fact that with decision of March 6, 2002, (Akbank v. Dr. Mehmet Kahveci, WIPO Case No.D2001-1488), the domain name <akbank.com>, registered in 1999 by the Respondent, was transferred to Akbank Turk A.S., one of the largest banks of Turkey (and now is used by that bank as access to its website).
It is interesting to note in that context that in all the (small number of) exceptions where the Respondent on his website in fact provides a link to the addresses of certain companies or private persons, only rarely a domain name or website address is given. This shows that the real purpose of the Respondent’s behavior is not to provide Internet access to the companies listed on his website, rather to gain advertising fees for listings of companies or to expect companies, whose mark is listed on the website, to pay an excessive amount for the transfer of the domain name (as evidenced by Akbank v. Dr. Mehmet Kahveci, WIPO Case No. D2001-1488).
In conclusion the Panelist is satisfied that the Respondent has 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 it in a corresponding domain name in the important ".com" domain (paragraph 4b(ii) of the Policy; see also Akbank v. Dr. Mehmet Kahveci, WIPO Case No. D2001-1488).
Furthermore, the Respondent, by using the domain name <ulker> for redirecting it to his website, has intentionally attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his website by the Complainant (paragraph 4b(iv) of the Policy). Even if in the case of the domain name <ulker> the Respondent has not succeeded in achieving a commercial gain, because the Complainant was not prepared to advertise in the Respondent’s directory or to buy the domain name, he acted in bad faith, since under the Policy it is sufficient that he attempted to achieve a commercial gain. Clearly, Internet users, trying to contact the Complainant under the domain name <ulker.com> are confused when being directed to the Respondent’s website, and when trying the link to the "ulker" companies, to be redirected to a website "under construction". They may believe that the Complainant has not yet established a website and may cease the attempt to access the Complainant’s website. This is particularly likely for Internet users in one of the many countries outside Turkey, where the products of the Complainant are available and where users would expect the internationally active Complainant to be found in the ".com" domain rather than in the cctld ".tr".
The Panelist is therefore satisfied that the Respondent has registered and is using the domain name <ulker.com> in bad faith.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <ulker.com> be transferred to the Complainant.
Gerd F. Kunze
Date: February 19, 2003