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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Yapi-Endustri Merkezi A.S. v. R Jordan / ACS (DOMAINS FOR SALE)

Case No. D2006-1489

 

1. The Parties

The Complainant is Yapi-Endustri Merkezi A.S., Istanbul, Turkey, represented by Istanbul Patent & Trademark Consultancy Ltd., Turkey.

The Respondent is R Jordan / ACS (DOMAINS FOR SALE), Groveport, Ohio, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <yemkitabevi.com> is registered with Communigal Communications Ltd.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 21, 2006. On November 24, 2006, the Center transmitted by email to Communigal Communications Ltd. a request for registrar verification in connection with the domain name at issue. On November 26, 2006, Communigal Communications Ltd. 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. The Center verified that 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”).

On December 6, 2006, the Center received an e-mail communication from the Respondent requesting an extension to file its Response. The same day the Center replied that upon Notification of the Complaint, the Respondent will have 20 days to submit its Response.

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 December 21, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was January 10, 2007. The Respondent did not submit a formal response. Accordingly, the Center notified the Respondent’s default on January 11, 2007.

The Center appointed Nasser A. Khasawneh as the sole panelist in this matter on January 22, 2007. 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 YAPI-ENDUSTRI MERKEZI A.S (YEM), an information center providing services to all users of building and construction materials, including companies engaged in the production of related products, professionals, executives, architects, engineers and contractors. The Complainant serves as an intermediary between the producers and providers of such services and their customers. Its activities include organization of exhibitions, professional trips, meetings, publication of technical journals and periodicals and provision of related information.

The Complainant registered the trademark YEM KITABEVI” and logo with the Turkish Patent Office on August 31, 1999, as it appears in the enclosed trademark certificate No. 99014123.

The official website of the Complainant uses the trademark YEM KITABEVI to designate one of the services it offers. The Complainant uses the domain name <yemkitabevi.com.tr> as the official website of the “YEM Kitabevi” service.

YEM Kitabevi (“Kitabevi” means bookstore in Turkish) specializes in titles on construction, offering a wide variety of specialized technical books and publications on the subject (hereinafter referred to as YEM Kitabevi service).

The Respondent has registered the domain name <yemkitabevi.com> on October 24, 2004, with the Registrar GAL Communication LTD.

When the Panel reviewed the website of the Respondent’s domain name, the website contained a number of “sponsored links” as alledged by the Complainant. The website also contained a search engine and sponsored links to other service providers apparently classified according to their sector of activity under “Popular Categories”.

 

5. Parties’ Contentions

A. Complainant

The Complainant has based its allegations on the following grounds:

1. The domain name is identical to the trademark in which the Complainant has rights:

The Complainant affirms that the domain name <yemkitabevi.com> is identical to the trademark YEM KITABEVI, registered and used by the Complainant for its products and services.

2. The Respondent has no rights or legitimate interests in the disputed domain name:

The Complainant asserts that it has established its rights (use and registration) in the trademark prior to the registration of the domain name by the Respondent and that the Respondent is aware of the Complainant’s extensive goodwill and reputation in the trademark.

The Complainant confirms that it has not licensed or otherwise permitted the use of the trademark YEM KITABEVI by the Respondent.

The Complainant further contends that the domain name in question is not a trademark by which the Respondent is commonly known. Except for the current use of the disputed domain name, the Respondent has not made any commercial use of the trademark nor has it sold any goods or services under the trademark YEM KITABEVI.

3. The Respondent registered and used the domain name in bad faith:

In order to establish the bad faith of the Respondent, the Complainant argued as follows:

a. The Respondent’s name as it appears in the Registrar records is R Jordan ACS (Domains for Sale). This reveals that though the Complainant has not received a direct offer to buy the domain name the disputed domain name was registered primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of the trademark for valuable consideration in excess of the domain name registrant’s out-of-pockets costs.

There is no commercial or business activity conducted via the disputed domain name. The meaningless content displayed in the website aims to tarnish the Complainant’s good name and reputation due to the confusion of the customers.

b. Prior to October 2004, the Complainant owned the disputed domain name which was hosted by the Internet Service Provider Superonline Ulusalarasi. The registration expired and the Respondent was able consequently to register the domain name in its own name. The Respondent is using the domain name <yemkitabevi.com> to attract, for commercial gain, Internet users to its website.

c. The Respondent has provided false contact information in the domain name registration which constitutes as established by various UDRP decisions an indication of bad faith.

d. The pattern of registering the corporate or trade names of third parties with which the Respondent has no connection may also be considered as a circumstance establishing bad faith.

B. Respondent

The Respondent did not submit a formal Response. The only communication forwarded by the Respondent was the before mentioned request for extension.

 

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has established its rights in the trademark YEM KITABEVI with logo, in Turkey, by enclosing the trademark certificate issued by the Turkish Patent Office and providing proof of its use in association with its products and services.

The Panel has noted that the word “Kitabevi” means bookshop in the Turkish language and thus has decided to study the generic nature of the trademark.

The Panel understands that the distinctiveness of the trademark can be contested when targeting Turkish public. However, the Panel believes that the addition of the word YEM, the acronym of the Complainant, to the word Kitabevi renders the trademark distinctive as the combination is unusual. Further, the Panel considers that the registration of the trademark by the Turkish Patent Office constitutes sufficient proof in this regard. The Panel was guided by previous WIPO decisions particularly eMedicine.com, Inc. v. Noble Scientific, WIPO Case No. D2001-0416 (“the Policy only requires that the Complainant meet the test of showing it has trademark or service mark rights in the disputed domain name. The Complainant’s ownership of a still-valid United States principal registry trademark is sufficient for the Panel under 4(a)(i) of the Policy).

The Panel noted that the Respondent has used the trademark YEM KITABEVIwith no other additions other than the suffix .com. It is the Panel’s view, which reflects that of various other Panels in previous WIPO UDRP Decisions, that the addition of such suffixes does not add any distinguishing feature to the disputed domain names. The Generic Top Level Domains (gTLDs) only serve to identify the nature of the domain name address and do not affect a finding of confusing similarity under this test of the Policy.

Accordingly, the Panel finds that the disputed domain name is identical to the registered and used trademark of the Complainant in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

It is established that the Complainant has no relationship with the Respondent, and the Complainant has not licensed or permitted in any way the use of the trademark by the Respondent. As the Respondent is in default, the Panel has studied thoroughly the circumstances of the case to find whether there are indications of any evidence of the Respondent’s rights of legitimate interests in the trademark.

In accordance with Paragraph 4(c) of the Policy, the Respondent can demonstrate its rights or legitimate interest in the disputed domain names by proving one of the following elements:

(i) that the Respondent used or presented demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services;

(ii) that the Respondent has been commonly known by the domain name;

(iii) that the Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark of the Complainant.

For this purpose, the Panel has reviewed the content of the website of the disputed domain name. The content only includes links to other allegedly related websites which lead in their majority to sponsored links and advertisements. The Respondent does not refer in its website to any products or services offered under the trademark YEM KITABEVI. It is thus not established in the instances of this case that the Respondent is using the domain name in connection with a bona fide offering of goods and services.

The name of the Respondent and the content of the website do not reveal any connection or association with the term “YEM Kitabevi” that can constitute evidence of the Respondent being commonly known by the disputed domain name.

The Panel noted that the website contains only sponsored links and advertisements. This leaves the Panel to believe that the Respondent is obtaining commercial gain from displaying and directing consumers to other commercial websites. Consequently, the current use of the disputed domain name cannot constitute a legitimate non-commercial or fair use establishing the rights or legitimate interests of the Respondent.

Furthermore, the failure of the Respondent to demonstrate its rights and legitimate interests, though not conclusive per se, leads the Panel to confirm its belief in the absence of any rights or legitimate interests of the Respondent in the disputed domain name. See Sociйtй Air France v. Domain Active Pty.Ltd, WIPO Case No. D2004-0993 (“A Respondent is not obliged to participate in a domain name dispute proceeding, but its failure to do so can lead to an Administrative Panel accepting as true the assertions of a Complainant which are not unreasonable and leaves the Respondent open to legitimate inferences which flow from the information provided by a Complainant”), also Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse, WIPO Case No. D2000-1221.

Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel examined the circumstances of the registration of the domain name by the Respondent, in the context of the guidance provided by the Policy in this regard.

First of all, the trade name of the Respondent as it appears on the Registrar records includes the expression “Domains for Sale”. The Panel could not but conclude that the trade name of the Respondent suggests that at least one of its activities is to sell domain names. While this fact cannot be conclusive per se in establishing the bad faith of the Respondent, the Panel noted other factors that provided further indications of bad faith:

The registration of the domain name by the Respondent took place in 2004. The Complainant has established that it has registered and used the trademark at least since 1999. The distinctiveness of the trademark YEM KITABEVI (c.f Paragraph a) leads the Panel to believe that the Respondent is likely to have been aware of that trademark and its use by the Complainant on it’s various products and services.

Paragraph 4(b) of the Policy, which enumerates instances establishing bad faith registration and use, states that: “(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.” On the basis of available evidence, the Panel finds that this circumstance is highly likely, on a balance of probabilities, to apply to the case at hand.

The disputed domain name contains sponsored links and advertisements all displayed under the following sentence: “here are some related websites for ‘yemkitabevi.com’”.

These links, when checked by the Panel, were found to be links to commercial services offered by various independent companies. The Panel is thus left to believe that the Respondent is most likely obtaining financial gains from the owners of these websites.

Consequently, the Panel concludes that the Respondent is extremely likely to be using the disputed domain name to attract, for commercial gain, internet users to other online locations by creating a likelihood of confusion with the protected trademark of the Complainant.

Based on the above, the Panel finds bad faith of the Respondent in the registration and use of the domain name within the meaning of the Policy.

 

7. Decision

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 <yemkitabevi.com> be transferred to the Complainant.

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Nasser A. Khasawneh
Sole Panelist

Dated: February 5, 2007