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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

DOGAN GAZETECILIK A.S. v. OOO WWWServer

Case No. D2008-0500

1. The Parties

Complainant is DOGAN GAZETECILIK A.S., Istanbul, Turkey, represented by Istanbul Patent & Trademark Consultancy, Ltd, Istanbul, Turkey.

Respondent is OOO WWWServer, Oktyabrskaya nab. 98-1, St. Petersburg, Russian Federation, represented by Mr. Alexander Serov, St. Petersburg, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <fanatik.com> (the “Domain Name”) is registered with DomReg Ltd. d/b/a LIBRIS.com, Russian Federation (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 1, 2008. On April 2, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 4, 2008, the Registrar transmitted by email to the Center its verification response, informing the Center that the current Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on April 14, 2008, and requested that the language of the administrative proceeding be English. On April 15, 2008, the Center invited Respondent to comment on Complainant’s request, but Respondent remained silent within the time limit specified by the Center. The Center then 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 April 28, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 18, 2008. The Response was filed with the Center on May 16, 2008.

The Center appointed Assen Alexiev as the sole panelist in this matter on May 30, 2008. 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 June 6, 2008, Complainant filed a supplemental submission. Having reviewed the case file, the Panel noted that: (1) the initial Complaint was filed against a different respondent - Fanatik Servicepoint, of Saint Petersburg, Russian Federation, which was identified by Complainant on the basis of the Whois information publicly available at the time; (2) the present Respondent was identified only after the receipt of the Registrar verification in relation to the Domain Name, and in its Response, Respondent raised arguments that Complainant was not in a position to expect at the time of filing of its original Complaint; and (3) the supplemental submission addressed Respondent’s arguments mentioned above.

Therefore, on June 10, 2008, the Panel, exercising its powers under Rules, paragraphs 10 and 12, issued its Procedural Order No.1, whereby it decided to accept Complainant’s supplemental submission and to take it into account in reaching its decision on the case, and invited Respondent to submit its comments on the supplemental submission. On June 17, 2008, Respondent filed its response to Complainant’s supplemental submission.

In relation to the language of the administrative proceeding, the Panel considered the following:

The Complaint was filed in English, and Complainant had requested that English be the language of the administrative proceeding.

Respondent’s representative filed no objection to this request, communicated with the Center in English, and filed its submissions in English.

Neither of the parties would be put at a disadvantage if English is chosen as the language of the proceedings, as it is neutral, not being the native language of any of them.

On this basis, and on the grounds of Rules, paragraph 11(a), and Rules, paragraph 10 (a), (b) and (c), the Panel decided that the language of the administrative proceeding be English.

4. Factual Background

Complainant is the owner of the trademark FANATIK, valid for the territory of Turkey, with reg. No.164734, registered as of November 2, 1995, for goods in International Class 16. Complainant has registered the domain name <fanatik.com.tr> on November 8, 1996.

Complainant’s German affiliate Dogan Media (International) GmbH is the owner of the Community trademark FANATIK with reg. No.002852465, applied for on October 21, 2002, for goods and services in International Classes 16, 35, 38, and 41.

Respondent is the owner of the trademark FANATIK registered for the territory of the Russian Federation with reg. No.231681, applied for on April 27, 2001, for services in International Classes 35, 38, 41, and 42.

The Domain Name was registered on September 26, 2000.

5. Parties’ Contentions

A. Complainant

Complainant submits that it is a well-known Turkish publishing company, subsidiary of Dogan Yayin Holding A.S. Complainant engages in journalism, printing, publishing and sale of newspapers and similar other periodical or non-periodical publications in printed or electronic form, production of national and international programs, visual and audio media, video, films, advertisements, and promotion business.

On November 20, 1995, Complainant started the publishing of the “Fanatik” newspaper -Turkey’s first sports daily newspaper. This newspaper contains a betting supplement and a horse race supplement. Its Fan-Etik (Fan-Ethics) page earned the newspaper a fairplay award from the International Olympics Committee - the first and only daily newspaper in the world to have received such an award. Complainant also publishes “Fanatik Basket” - a weekly newspaper devoted to Turkish and foreign professional and amateur basketball teams.

Dogan Media International coordinates Dogan Media Group’s activities in Germany and other parts of Europe. It is responsible for the publication and marketing efforts of the dailies Hьrriyet, Milliyet and Fanatik and the magazine Haftasonu there.

According to Complainant, Respondent is not using the Domain Name in connection with a bona fide offering of goods and services, and has not claimed to be doing so. Complainant has not licensed or otherwise permitted Respondent to use the FANATIK trademark, or to apply for or use any domain name incorporating that trademark. Respondent has no relationship with Complainant. Complainant has prior rights in the FANATIK trademark, which precede Respondent’s registration of the Domain Name.

In Complainant’s submission, Respondent has no legitimate interest in the Domain Name. The only interest in registering the Domain Name, which can be imagined for a person, not having an apparent particular connection with this trademark, is to somehow create a connection with Complainant and its trademark.

Respondent does not use (commercially or non-commercially) the Domain Name, and has not been commonly known by it. Respondent has acquired no trademark or service mark rights. Respondent has not attempted to sell the Domain Name to Complainant.

As alleged by Complainant, the Domain Name was registered primarily for the purpose of selling, renting, or otherwise transferring its registration to the owner of the trademark for valuable consideration in excess of Respondent’s out-of-pocket costs. Complainant also states that Respondent registered the Domain Name in order to prevent Complainant from reflecting the mark in corresponding domain names and from offering online services through said domain names.

According to Complainant, Respondent is clearly aware of Complainant’s extensive goodwill and reputation of its FANATIK trademark. FANATIK is a well-known mark and a Turkish word which means “fanatic”, therefore it is difficult to imagine that Respondent would not have been aware of that mark, when it registered the Domain Name, which is in itself a strong evidence of registration of the Domain Name in bad faith.

Respondent has placed no content on the website at the Domain Name. As prior panels acting under the Policy have held, the incorporation of a famous mark into a domain name, coupled with an inactive website, may be evidence of bad faith registration and use.

In its supplemental submission, Complainant pointed out the contact details of Respondent’s representative, and, in support of its contentions, cited the decision in Nutricia International B.V. v. Milupa, WIPO Case No. D2002-0400, which, according to Complainant, dealt with very similar facts.

On the above grounds, Complainant requests that the Domain Name be transferred to it.

B. Respondent

Respondent points out that it is the holder of a trademark FANATIK registered for the territory of the Russian Federation. Complainant’s trademark is unknown in the Russian Federation, because Complainant’s newspaper is printed in the Turkish language and is not distributed there, and only a small number of Turkish people live in Russia. Respondent also claims that even if wanted to do so, Complainant would be barred from distributing its newspaper in Russia as such an activity would amount to infringement of Respondent’s trademark. The Turkish language is not spoken in Russia, and the word “fanatik”, being of Greek and Latin origin, has its own meaning in the Russian language as well.

Respondent then goes on to describe Complainant as a criminal organization; a section of the Response that, in the Panel’s view, goes too far and deserves no further comment.

In its response to Complainant’s supplemental submission, Respondent states that the decision in Nutricia International B.V., supra, cited by Complainant, dealt with a completely different factual and legal situation, as it was the complainant in that case, and not the respondent, who had trademark rights in the registrar’s jurisdiction. Respondent also denies any relation to “Expresspost” which was mentioned in the above case, and states that what was included as part of the address of Respondent’s representative in this proceeding just meant “express post” – a postal service. Further, Respondent submits that the present case involves a collision of independent trademark rights, and thus goes beyond the narrow scope of the Policy.

Lastly, Respondent requests that the Panel make a finding of reverse domain name hijacking in respect of Complainant.

6. Discussion and Findings

Pursuant to Policy, paragraph 4(a), Complainant must prove each of the following to justify the transfer of the Domain Name:

(i) That the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) That Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) That Respondent has registered and is using the Domain Name in bad faith.

By Rules, paragraph 5(b)(i), it is expected of a Respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…”

In this case, the Center has achieved actual notice of the Complaint to Respondent, in compliance with Rules, paragraph 2(a).

Each of the parties was given a fair opportunity to present its case, and the Panel reached its decision on the basis of the contentions of the parties and the supporting evidence brought before it.

A. Identical or Confusingly Similar

Complainant has provided evidence of its rights in the FANATIK trademark, protected in Turkey. As to the Community trademark registration, referred to by Complainant as evidence of its trademark rights, the Panel notes that it is registered by Dogan Media (International) GmbH – an affiliate of Complainant. Complainant’s contentions and evidence in support of its trademark rights are not contested by Respondent. Therefore, the Panel accepts that Complainant has established that it has rights in the FANATIK trademark for the territories of Turkey and the European Union.

It is well established that the top level domain name portion “.com” is not taken into account for the purposes of the test whether the Domain Name is identical or confusingly similar to a trademark. Therefore, the relevant part of the Domain Name to be analysed, is the sequence “fanatik”. This sequence is identical to the FANATIK trademark of Complainant.

On these grounds, the Panel finds that the Domain Name is identical to a trademark in which Complainant has rights.

B. Rights or Legitimate Interests

Complainant has contended that Respondent has no rights or legitimate interests in the Domain Name, Respondent is not authorized to use Complainant’s FANATIK trademark, and is not commonly known by the name “Fanatik”, Respondent has not used the Domain Name for any purpose, and there is no conceivable bona fide legitimate use which the Respondent can make of the Domain Name. In its supplemental submission Complainant also states that Respondent’s trademark was registered only after the registration of the Domain Name, and thus cannot justify the use of the Domain Name and mitigate Respondent’s bad faith.

Thus, Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the Domain Name.

It is well established that once Complainant makes out a prima facie case under the Policy, paragraph 4(a)(ii), the burden shifts to Respondent to rebut the showing by providing evidence of its rights or legitimate interests in the Domain Name.

Respondent has contended that it is the owner of the trademark FANATIK, registered for the territory of the Russian Federation, and has provided evidence in this regard. At the same time, Respondent has not claimed to have used this trademark or the Domain Name, and indeed, has not referred to any of the circumstances under Policy, paragraph 4(c).

In this situation, the issue to be decided is whether Respondent’s Russian trademark gives rise to rights and legitimate interests of Respondent in the Domain Name. According to Policy, paragraph 4(c) “Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):[…] you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights (emphasis added)”. In the Panel’s view, this text does not automatically qualify the ownership of a trademark as a circumstance, demonstrating rights or legitimate interests of a respondent in a domain name. Rather, Respondent has to establish that it has been commonly known by the Domain Name, and for this purpose there is no requirement for Respondent to have acquired trademark rights. However, the circumstances under Policy, paragraph 4(c), are listed without limitation, and the Panel may find that Respondent has rights or legitimate interests in the Domain Name on the basis of its evaluation of other circumstances in the specific case. At the same time, the common characteristics of the examples listed in paragraph 4(c) should serve as a guide for the evaluation of the specifics of the case before the Panel. All these examples share one thing – they contain an active element that needs to be established – either that Respondent has used the Domain Name in good faith, or that it has become known by it (as to become known obviously requires a certain active and lawful conduct).

In the present case, any active conduct of Respondent is conspicuously missing. Respondent has not claimed to have used its trademark or the Domain Name, and indeed, to have performed any activity whatsoever, and has brought no other grounds for its alleged rights in the Domain Name apart from its trademark registration. It is clear that the registration of a trademark does not in itself make it an identifier of its owner or of its goods and services – it has to be used and promoted actively so that a link between the trademark and its owner’s goods and services gets established in the minds of consumers. Also, the non-use of a trademark for a certain period of time may cause the termination of its protection¹. In addition, as evident from the case file, the contact details, provided by Respondent to the Registrar, are incorrect. There is no information about Respondent and its activities, from which conclusions may be drawn about its conduct and intentions.

At the same time, it is obvious that Respondent, having a valid trademark for the territory of the Russian Federation, although registered after the Domain Name, may be able, if acting lawfully and in good faith, and excluding the possibility for confusion with Complainant, to use the Domain Name there within the scope of its trademark rights, and to prevent third parties from doing so.

On balance, given the lack of information and evidence of active use of the Domain Name and of Respondent and its intentions generally, and within the procedural constraints of the Policy for extensive evidence gathering, the Panel finds that Respondent’s trademark registration, while in itself insufficient to firmly establish Respondent’s rights and legitimate interests in the Domain Name, contradicts Complainant’s prima facie case. On the basis of the evidence before it, the Panel is not in a position to find that Respondent lacks rights or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

As Complainant has failed to meet the requirement of Policy, paragraph 4(a)(ii), it is not necessary for the Panel to deal with the issue of bad faith under Policy, Paragraph 4(a)(i). However, for the sake of completeness, the Panel will briefly discuss Complainant’s allegations on this issue.

According to Complainant, Respondent was clearly aware of Complainant’s extensive goodwill and reputation of its FANATIK trademark, when it registered the Domain Name, which evidenced the registration of the Domain Name in bad faith.

The word “фанатик”, transliterated as “fanatik”, has a certain meaning, unrelated to Complainant, in the Russian language. Also, on the basis of its Russian trademark, Respondent was in a position to prevent Complainant from promoting and distributing its newspaper in the Russian Federation starting as early as the end of 2002, so such distribution there, at least in the last five years, is not likely. Therefore, the Panel is of the opinion that no actual or constructive knowledge of Complainant or its trademark by Respondent has been established.

As alleged by Complainant, the Domain Name was registered primarily for the purpose of selling, renting, or otherwise transferring its registration to the owner of the trademark for valuable consideration in excess of Respondent’s out-of-pocket costs.

There is no evidence in the case file in support of this allegation. Complainant itself states that Respondent has not attempted to sell the Domain Name to Complainant.

Complainant also states that Respondent registered the Domain Name in order to prevent Complainant from reflecting the mark in corresponding domain names and from offering online services through the Domain Name.

Under the Policy, in order to qualify as bad faith, such actions should represent instances of a pattern of conduct. Complainant has provided no evidence for such pattern.

In Complainant’s submission, the incorporation of a famous mark into a domain name, coupled with an inactive website, may be evidence of bad faith registration and use.

One of the main arguments in support of this line of reasoning is that any conceivable active use of the respective domain name would be illegitimate. In the Panel’s view, Respondent may legitimately use the Domain Name within the scope of its trademark rights, provided that such use is lawful and in good faith, and that any confusion with Complainant is excluded. Therefore, Complainant’s argument is not applicable to the circumstances of this case.

On these grounds, and in the absence of any use of the Domain Name by Respondent, the Panel finds that Complainant has not provided evidence of bad faith registration and use of the Domain Name, and has thus not met its burden under Policy, paragraph 4(a)(iii).

D. Reverse Domain Name Hijacking

Respondent has requested a finding of Reverse Domain Name Hijacking to be made against Complainant.

In order to make such a finding, the Panel must be satisfied that Complainant had instituted the administrative proceeding with knowledge of Respondent’s rights or legitimate interest in the Domain Name or the clear lack of bad faith registration and use, but nevertheless brought the Complaint in bad faith, without any real prospect of success. Sydney Opera House Trust v. Trilynx Pty. Limited, WIPO Case No. D2000-1224. The Panel must consider both “malicious intent and recklessness or knowing disregard that the Respondent possessed legitimate interests”. Goldline International Inc v. Gold Line, WIPO Case No. D2000-1151.

In the present case, Complainant has valid trademark rights, and Respondent was identified only with the receipt of the Registrar’s verification response. Therefore, the Panel does not consider that the conduct of the Complainant justifies a finding of Reverse Domain Name Hijacking.

7. Decision

For all the foregoing reasons, the Complaint is denied.

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Assen Alexiev
Sole Panelist

Dated: June 28, 2008

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¹ Article 22.3 of the Law of the Russian Federation No.3520-1 On Trademarks, Service Marks and Appellations of Origin of Goods states that: “Legal protection of a trademark may be terminated ahead of time in respect of all or a part of goods in connection with a nonuse of a trademark for any three years in a row after its registration. An application on the termination ahead of time of legal protection of a trademark due to its nonuse may be submitted to the Board on Patent Disputes on the expiry of the above-mentioned three years provided that trademark had not been used before such an application was submitted.”