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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Koç Holding A.S. v. KEEP B.T.

Case No. D2009-0938

1. The Parties

The Complainant is Koç Holding A.S. of Istanbul, Turkey, represented by Istanbul Patent & Trademark Consultancy Ltd., Turkey.

The Respondent is KEEP B.T. of Ankara, Turkey.

2. The Domain Name and Registrar

The disputed domain name <koc.com> is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 13, 2009. On July 14, 2009, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain name. On July 14, 2009, Network Solutions, LLC transmitted by email to the Center its verification response, confirming that the 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, the Complainant filed an amended Complaint on July 17, 2009. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), 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 July 20, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 9, 2009. The Respondent submitted an online Response on August 9, 2009.

The Center appointed GГ¶khan GГ¶kçe as the sole panelist in this matter on August 17, 2009. 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 August 19, 2009, the Complainant filed a reply to points raised in the Response as a Supplemental Filing, which the Center acknowledged on the same day. On August 20, 2009 the Respondent sent an email to the Center stating that if the Panel permitted the Complainant`s Supplemental Filing the Respondent would like to be given the opportunity to file a response to that Supplemental Filing. The Center acknowledged receipt of the Respondent`s communication on the same day.

No further submissions were received by the Center or the Panel. The date scheduled for the issuance of the Panel`s decision is August 31, 2009.

4. Factual Background

The Complainant, Koç Holding A.S., is one of Turkey`s top industrial conglomerates. Vehbi Koç, established his first firm on May 31, 1926. In 1938, Koç Ticaret A.S. was established and Koç Holding was founded in 1963, as evidenced at Annex 15 and 17 of the Complaint.

The Complainant operates in the automotive, durable goods, food, retailing, energy, financial services, tourism, construction, and IT industries.

The Complainant is ranked as one of the 50 largest publicly traded companies in Europe and among the largest 200 companies in the world. The Fortune Global 500 ranked Koc Holding at 186 for the year 2007 and Handelsbatt Europe`s 36^th largest public company for 2007 as evidenced in Annex 13 and 14 of the Complaint.

The Complainant owns and uses the trademark KOÇ which was registered on June 28, 2002 with the Turkish Patent Institute. The Complainant uses the domain name <koc.com.tr>, which it registered on February 9, 1996.

The Respondent registered the disputed domain name on August 12, 1997.

5. Parties` Contentions

Preliminary Issues

The Complainant previously filed a complaint with the Center against what may be the same Respondent on December 19, 2000, see Koç Holding A.S. v. MarketWeb A.S., WIPO Case No. D2000-1764. The Complainant notes this complaint was denied on the grounds that the Complainant had failed to establish registered trademark rights and did not claim common law rights.

The Complainant filed the instant Complaint based on new evidence that was not available at the time of the previous complaint, namely registration of its trademark, subsequent bad acts, and at least a nominal registrant change. The Complainant cites several UDRP decisions which have dealt with re-filing of complaints. Complaints have been permitted to be re-filed if the re-filed complaint presents fresh evidence not available at the time of the previous complaint. Some prior panels have also found that subsequent registration of a trademark is considered to be fresh evidence not previously available.

The Respondent requests that the Panel deny the request to rehear the Complaint and claims that the Respondent registered trademark KOÇ is not the same as "koc" in the disputed domain name.

The Policy and Rules do not speak specifically to the issue of re-filing of a complaint. Here, the previous complaint was denied as the Complainant failed to establish the first element, and new evidence, i.e., the Complainant`s trademark registration, that was evidently not reasonably available at the time of the previous complaint has been submitted in the new Complaint as has an allegation of subsequent bad faith and a nominal registrant change and is likely to have an important influence on the result of the case. Therefore, the Panel finds the re-filed Complaint should be heard.

A. Complainant

In accordance with paragraph 4 of the Policy, the Complainant requests that the disputed domain name should be transferred to the Complainant.

The Complainant submits the grounds for these proceedings are listed in paragraph 4(a) of the Policy.

Identical or Confusingly Similar

The Complainant registered the trademark KOÇ with the Turkish Patent Institute on June 28, 2002 as evidenced in the trademark certificate exhibited at Annex 3 and 21 of the Complaint.

The Complainant exhibits a number of trademarks it has registered with the Turkish Patent Institute, some of which contain the word "Koç" at Annex 22 of the Complaint. The Complainant has registered KOГ‡ as a trademark in Azerbaijan and Bulgaria as evidenced at Annex 23 of the Complaint and registered the trademark KOГ‡ as a Community Trademark before the OHIM as evidenced at Annex 24 of the Complaint. The Complainant`s trade name is KOC as exhibited at Annex 25 of the Complaint.

The Complainant claims although it registered the trademark KOÇ in 2002 it has been using the trademark since 1926 and submits a statement to this effect displayed on the Complainant`s website at Annex 4 of the Complaint. The Complainant notes that one of the Complainant`s companies registered trademark KOÇ in 1984 but later abandoned the registration in 1996, as evidenced in Annex 5, 6, and 7 of the Complaint.

The Complainant registered the domain name <koc.com.tr> on February 9, 1996 as exhibited at Annex 8 of the Complaint.

The Complainant submits that its trademark KOÇ is a well-known trademark and that it has used and has had rights in the trademark continuously since 1926. The Complainant presents evidence of the Complainant`s wide array of activities, size and turnover at Annex 12 of the Complainant. The Complainant submits further evidence to this effect at Annex 20 of the Complaint, evidencing KOÇ products sold on a global scale, that KOÇ is regarded as a well-known trademark and a market leader of many goods and services. The Complainant claims it has established common law rights in its trademark. Furthermore, the Complainant goes on to state that unregistered trademark rights are recognised under Turkish law. The Complainant cites Alpine Entertainment Group, Inc. v. Walter Alvarez, WIPO Case No. D2007-1082, in which the panel considered trademark registration to be sufficient to show the Complainant has rights in a mark and it is not necessary to consider any evidence of secondary meaning.

The Complainant contends that the disputed domain name <koc.com> wholly incorporates and is identical to the trademark KOÇ in which it has rights and cites Bayerische Motoren Werke AG, Sauber Motorsport AG v. Petaluma Auto Works, WIPO Case No. D2005-0941, amongst other cases.

Rights or Legitimate Interests

The Complainant cites (1) Galatasaray Spor Kulubu Dernegi (2) Galatasaray Pazarlama A.S. (3) Galatasaray Sportif Sinai Ve Ticari Yatirimlar A.S. v. Maksimum Iletisim A.S., WIPO Case No. D2002-0726 in which the panel concludes that the fact that the respondent registered a domain name knowing it to be the complainant`s trademark and to be recognised as such, effectively satisfies the requirement of paragraph 4(c) of the Policy.

The Complainant submits it has never granted the Respondent a licence or permission to use the mark KOÇ or to apply for or use a domain name incorporating that mark. The Respondent has no association with or permission from the Complainant to use its mark in which it had rights prior to the Respondent`s domain name registration.

The Complainant contends the only conceivable interest and reason for registering the disputed domain name was to create a connection to the Complainant and its design service mark in order to gain commercial benefit by selling the disputed domain name to the Complainant.

The Complainant states that the Respondent is not commonly known by the disputed domain name. The Complainant affirms that the Respondent was clearly aware of the Complainant`s extensive goodwill and reputation of its design service mark KOÇ at the time of registration of the disputed domain name.

The Complainant avers that the Respondent would only have a right to the disputed domain name if the Complainant had specifically granted to the Respondent that right.

The Complainant notes the Respondent is not commonly known by the disputed domain name and has no trademark rights. The Complainant submits that use of the Complainant`s trademark without permission is an infringement. The Complainant contends that considering that the Respondent is in Turkey, it is unlikely that it was unaware of the trademark KOÇ. The Complainant alleges the Respondent`s reason for registering the domain name is to confuse Internet users for its own benefit and profit, to sell the domain name to the Complainant for commercial gain or both.

Registered and Used in Bad Faith

The Complainant refers to the previous complaint and repeats its claim that the Respondent in the course of a telephone conversation offered to sell the disputed domain name to the Complainant for USD 200,000.00 – 300,000.00 and claims this is evidence of bad faith registration. The Respondent denies this phone conversation.

The Complainant contends that the Respondent is in Turkey and knew KOГ‡ was a famous mark at the time of registering the disputed domain name. The Complainant states this is strong evidence of bad faith and cites Banco EspaГ±ol de Crédito, S.A. v. Miguel Duarte Perry Vidal Taveira, WIPO Case No. D2000-0018 amongst others.

The Complainant submits that the disputed domain name was registered in bad faith as the Respondent must have had knowledge of the Complainant`s ownership rights in the trademark KOÇ at the time of registration of the domain name. The Complainant avers the registration and use of the domain name incorporating a famous mark is in bad faith as the Respondent knew at the time of the registration and use of the domain name it would infringe the trademark owner`s rights and cites Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028.

The Complainant asserts that the Respondent could not have ignored the fact that KOÇ is a registered and protected trademark. KOÇ is a well-known mark and the Respondent`s registration is a strong indication that the Respondent intended to create an association wit the Complainant. The Complainant cites Galatasaray Spor Kulubu Dernegi, supra, in which the panel found evidence showing that the respondent knew the complainant`s name, intended the domain name to refer to the Complainant and when registering the domain name hoped that the complainant would pay it a substantial sum of money, is sufficient for a finding of bad faith registration and use.

The Complainant contends that an inactive website is evidence of bad faith use and registration. Furthermore, the Respondent`s passive holding of the domain name suggests registration for the purpose of selling it for profit.

The Complainant notes there is no evidence of good faith use or intention to use the disputed domain name. Furthermore, the Complainant submits that it is not possible to imagine any legitimate use of the domain name without infringing the Complainant`s rights.

The Complainant notes that the disputed domain name is not being actively used and contends that passive holding of a domain name is in violation of the Policy and constitutes bad faith.

New Allegations of Bad Faith

The Respondent received news and documents that were intended for the Complainant. After the previous case between the parties the Respondent was supposed to return all that was received to the Complainant but never did. The Respondent sent an e-mail that blackmailed the Complainant. The Complainant initiated legal proceedings which concluded in the Complainant`s favour as evidenced at Annex 9, 10, and 11 of the Complaint.

B. Respondent

The Respondent filed a Response to the allegations in the Complaint and requests the Panel to deny the remedy requested. The Respondent requests the Panel to deny to rehear the Complaint and to also deny the requested transfer the disputed domain name to the Complainant.

The Respondent claims that the Complainant misrepresented its trademark and notes that the trademark exhibited at Annex 3 of the Complaint is a registration for the trademark KOÇ, not KOC. The Respondent states that the trademark KOÇ means "ram" in Turkish and notes the Complainant uses RAM as its international name.

The Respondent contends that the fact the Complainant owns the domain name <koc.com.tr> is irrelevant to this dispute. The Respondent disputes the new allegations of bad faith made by the Complainant and states that the case is still pending as it has been appealed.

The Respondent draws the Panel`s attention to Annex 11 of the Complaint and states the translations are inaccurate as the Turkish version states <koç.com> not <koc.com>.

6. Discussion and Findings

There is a procedural matter in relation to the Complainant`s Supplemental Filing of August 19, 2009, which should be disposed of as a preliminary matter.

The Complainant made a reply to the Respondent`s Response, and this was filed as a Supplemental Filing. The Rules make no explicit provision for Supplemental Filings and they are admissible at the Panel`s discretion, having regard to paragraphs 10(a) and 10 (b) to conduct the proceedings in a manner it considers appropriate under the Policy and Rules, subject to the requirements that the parties are treated with equality.

The Complainant submitted its Supplemental Filing in which it replied to the Respondent`s Response; the Rules simply provide for a complaint and a response. Paragraph 12 allows for the Panel to request further statements, but in the absence of such a request the filing is outside of the Rules.

In this case there is no need to consider the Supplemental Filing as the Panel does not find the additional statements necessary to reach its Decision. The Panel is of the opinion that neither party will be prejudiced by a refusal to admit the Complainant`s unsolicited Supplemental Filing, and in the interests of fairness, equality and expedience, the Panel declines to consider the Supplemental Filing.

The Panel turns to the merits of the case. Paragraph 4(a) of the Policy sets forth the following three elements which the Complainant must prove, during the administrative proceedings, to merit a finding that the domain name of the Respondent be transferred to the Complainant:

(a) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(b) the Respondent has no rights or legitimate interests in respect of the domain name; and

(c) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Policy simply requires the Complainant to demonstrate that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

The Panel is satisfied that the Complainant is the owner of the trademark KOÇ as evidenced at Annex 3 of the Complaint. As the Complainant has proved that it registered KOÇ as a trademark, there is no need for the Panel to considered the common law rights claimed by the Complainant, Alpine Entertainment Group, Inc., supra.

Furthermore, the Complainant registered and uses the domain name <koc.com.tr>, which is identical to the disputed domain name <koc.com> except for the country code top level domain ".tr". The Respondent claims that this fact is irrelevant to this dispute, but the registration of the domain name <koc.com.tr> by the Complainant is significant to the issues to be considered. The Complainant registered the domain name <koc.com.tr> on February 9, 1996. ".com.tr" domain names are used by persons and legal entities for commercial purposes, and a ".tr" domain name applicant must submit an official documentation demonstrating that the applicant registered a trademark or corporate name for the words incorporated in the domain name. Due to the stringent application procedure, the Panel believes that the Complainant registered and is a rightful owner of the domain name <koc.com.tr> as it reflects its business name which may demonstrate the strength of its mark.

The Respondent contends that the Complainant does not have trademark rights in the word KOC which is the word that appears in the disputed domain name. This contention is rejected by the Panel as it is not presently possible to reflect Turkish characters in a domain name and therefore KOC is the obvious equivalent to the Complainant`s trade name and mark KOÇ.

Following Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, a domain name that reproduces a trademark in its entirety is confusingly similar to the mark. It has been stated in several decisions by other UDRP administrative panels that incorporating a trademark in its entirety into a domain name can be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark. See Bayerische Motoren Werke AG, Sauber Motorsport AG, supra, Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358; Toyota France and Toyota Motor Corporation v. Computer-Brain, WIPO Case No. D2002-0002. The Panel recognises the Complainant`s rights and concludes that the disputed domain name is identical or confusingly similar to the Complainant`s trademark.

The Panel finds that the requirements in paragraph 4(a)(i) of the Policy are fulfilled, and consequently, the Panel finds for the Complainant on the first element of the Policy.

B. Rights or Legitimate Interests

In accordance with paragraph 4(a)(ii), the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Although the Policy states that the Complainant must prove each of the elements in paragraph 4(a), it is often observed that it is difficult for a complainant to prove a negative, and it has therefore generally accepted under the Policy that once a Complainant has presented a prima facie case of a Respondent`s lack of rights or legitimate interests in a domain name, the burden shifts to the Respondent.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. It is submitted that the Respondent has neither association to the Complainant nor a connection to the disputed domain name, and is not commonly known by the disputed domain name. Furthermore, the Complainant claims the Respondent was fully aware of the Complainant`s established reputation and contends the only conceivable interest and reason for registering the disputed domain name was to create a connection to the Complainant and its mark.

The Complainant alleges the Respondent`s reason for registering the disputed domain name is to confuse Internet users for its own benefit and profit, and to sell it to the Complainant for commercial gain or both.

Paragraph 4(a)(ii) requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the disputed domain name. The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent was unable to demonstrate that it has rights or legitimate interests in the disputed domain name. The Panel therefore concludes that the Respondent has not satisfied paragraph 4(c) of the Policy and that the Respondent has no rights or legitimate interests in the disputed domain name.

The requirements of paragraph 4(a)(ii) are fulfilled, and consequently the Panel finds in favour of the Complainant on the second element of the Policy.

C. Registered and Used in Bad Faith

According to paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name has been registered and is being used in bad faith.

The "New Allegation of Bad Faith" conerns allegations of blackmail post-dating the earlier complaint and as such was considered by this Panel as germane to instant case.

The Panel agrees that as the Respondent is in Turkey, considering the size of the Complainant`s business, it is unlikely that the Respondent was unaware that KOÇ was a famous mark at the time of registering the disputed domain name. Therefore the Panel finds that the Respondent must have been aware of the Complainant`s then trademark at the time of registration of the domain name. The Panel is of the opinion that the Respondent had knowledge of the Complainant`s trademark at the time of registration of the disputed domain names and draws an inference of bad faith, Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226. It therefore follows that the Respondent, at the time of registration, must have been aware that use of the domain name may result in a violation of the Complainant`s trademark rights, suggesting that there was never an intention of good faith use, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

The Complainant contends that an inactive website is evidence of bad faith use and registration. Furthermore, the Respondent`s passive holding of the disputed domain name suggests registration for the purpose of selling them for profit. When the Panel visited the disputed domain name on August 22, 2009 it resolved to an inactive website, and there is no evidence or suggestion that the Respondent has any intention of using the domain name for any purpose or legitimate activity consistent with good faith use. Paragraph 3.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions states the lack of active use of the domain name does not as such prevent a finding of bad faith. The Panel must examine all the circumstances of the case to determine whether a respondent is acting in bad faith. The Complainant`s well-known registered and unregistered trademark and the impossibility of conceiving a good faith use of the domain name are indicative of bad faith. The Panel infers bad faith use considering the circumstances surrounding registration.

The Panel finds the disputed domain name is not being actively used and that passive holding of a domain name is in violation of the Policy and constitutes bad faith, as found in several WIPO UDRP decisions, Banco Bilbao Vizcaya Argentaria, S.A. v. Victor Edet Okon, WIPO Case No. D2004-0245; Telstra Corporation Limited, supra; DCI S.A. v. Link Commercial Corporation, WIPO Case No. D2000-1232; CareerBuilder, LLC v. Finity Development Group, WIPO Case No. D2006-0615.

There is no suggestion that the Respondent had any intention of legitimate use, that it enjoys a connection to the disputed domain name or that there is conceivable good faith use for the domain name. After examining all circumstances surrounding the registration and use of the domain name, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith. Accordingly the Panel finds in favour of the Complainant on the third element 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 <koc.com> be transferred to the Complainant.

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GГ¶khan GГ¶kçe
Sole Panelist

Dated: August 31, 2009