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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Istikbal Mobilya Sanayi ve Ticaret Anonim Şirketi v. MarketWeb A. S

Case No. D2003-0313

 

1. The Parties

The Complainant is Istikbal Mobilya Sanayi ve Ticaret Anonim Şirketi, of Kayseri, Turkey, represented by Murat Yildirim, Attorney at Law, of Istanbul, Turkey.

The Respondent is MarketWeb A.Ş, the address of which is Yaprak Sok 31/14, of Ankara, Turkey.

 

2. The Domain Name and Registrar

The disputed domain name which is the subject of this complaint is <istikbal.com>.

The Registrar of the domain name in issue is Total Registrations, of Cheshire, United Kingdom of Great Britain and Northern Ireland (the Registrar).

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 22, 2003. On April 23, 2003, the Center transmitted by email to Total Registrations a request for registrar verification in connection with the domain name at issue. On April 25, 2003, Total Registrations 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 each case the contact for the Respondent was Nurullah Çiftçi, of the same address in Ankara, Turkey as given for the Respondent.

In response to a notification by the Center that the Complaint was administratively deficient in certain omissions, the Complainant filed an amendment to the Complaint on April 30, 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 May 1, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was May 21, 2003. The Response was filed with the Center on May 20, 2003, and acknowledged by the Center on May 21, 2003.

Also on May 21, 2003, the Center received a Supplemental filing from the Complainant and on May 22 and May 23, 2003, a Supplemental filing from the Respondent. The Complainant’s filing was in the form of a rebuttal to the Respondent’s Response and the Respondent’s filing was a rebuttal of the Complainant’s Supplemental filing. In acknowledgement, the Center informed both parties that there was no provision in the Rules for the filing of Supplemental filings but the practice was to leave it to the Panelist to accept or refuse these further filings.

On June 4, 2003, the Center appointed James G. Fogo as the sole panelist in this matter, having received from Mr. Fogo an executed Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules,.

The Panel has independently determined and agrees with the assessment of the Center that the Complainant had met the formal requirements of the Policy, the Rules and the Supplementary Rules.

Upon reviewing the two Supplemental filings received from the Center, the Panel considered that both filings contained factual information of use in arriving at a decision. The Panel decided that both filings should be included in the material filed.

In addition, acting through the Center, the Panel issued an Administrative Panel Procedural Order under paragraph 12 of the Rules. In this order the panel requested from the Respondent clarification of certain dates and time periods at or during which the Respondent acted. In the same order, the Panel asked the Complainant for more precise information of an alleged offering to sell the domain name. Answers were received from each party. By reason of the Procedural Order, the projected decision date was extended to July 2, 2003.

The language of the administrative proceeding is English, the language of the registration agreement.

 

4. Factual Background

The Complainant, a business incorporated in Turkey under the name Istikbal Mobilya Sanayi ve Ticare t Anonim Şirketi (Istikbal Furniture Industry and Trade Incorporation) was established in 1989, by Mustafa Boydak, his brother Sami Boydak, their sons and family relatives. Mustafa Boydak had from 1962, established businesses including furniture manufact uring under the name Istikbal Celik Esya ve Mobilya (Istikbal Steel Objects and Furniture) and his brother Sami established a workshop in 1965, which used a trade name Istikbal Mobilya Atelyesi (Istikbal Furniture Workshop). When the businesses were joined to form the Complainant’s 1989 business, the word Istikbal (which is translated as "Future") had been used at least in Turkey for 25 years associated with furniture.

The Complainant obtained from the Turkish Patent Institute a Registration No. 113348, of a design mark comprising the words "istikbal mobilya" and the initials "i and M". The registration in international class 20 was granted on August 28, 1989 (Appendix C)

On December 14, 1995, the Turkish Patent Institute granted to the Complainant a Registration No. 166029 for the mark "istikbal" in a light shade on a dark wavy panel, covering wares in international class 24 (Appendix F).

On June 11, 1996, the Turkish Patent Institute granted to the Complainant a Registration No. 181766 for the same mark as registered under No. 166029 but in this case registered as a service mark in international class 35 (Appendix G).

Subsequently, in the period July 20, 1998, to April 9, 1999, ten registrations have been granted by the Turkish Patent Institute to the Complainant, each for a design mark identical to that in Appendix F with the addition of a single word beneath the wavy panel.

On March 11, 1999, through the International Bureau of WIPO, the Complainant secured certification in the International Register of Marks maintained under the Madrid Agreement and Protocol, of a design mark identical to that referred to in Appendix F, under Registration No.709583 for classes 20 and 24. The basis for registration was Turkish Registration No.158448. Designations under the Madrid Agreement and Protocol were China, Czech Republic, Denmark, Finland, France, Norway, Poland, Portugal, Slovakia, Slovenia, Spain, Sweden, Switzerland and the United Kingdom.

The Complainant alleges that the company has over the period of operation expanded its sales of furniture beyond Turkey, now exporting to close to fifty countries.

Its trade marks are well known in Turkey but also across the world.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that the domain name <istikbal.com> is identical or confusingly similar to the registered trade marks "istikbal" and "istikbal mobilya" as identified above, in which the Complainant has rights. The Complainant further contends that the Respondent had no rights or genuine interests in the domain name <istikbal.com>. Further the Complainant alleges that the Respondent registered and used the domain name <istikbal.com> in bad faith.

B. Respondent

The Respondent, in its initial response, conceded that the domain name and the trade mark of the Complainant were similar but not confusingly similar. It presented an argument that the word "istikbal" was a generic name and should not have been granted to the Complainant.

After some confusion in the translation of a word, the Admini strative and Technical Contact, Mr. Nurullah Зiftзi, disclosed that he was at all times the owner of the domain name. He commenced working for a company MarketWeb A.Ş on January 10, 1997, working for that company as a web designer. While in their employ , Mr. Çiftçi acquired the domain name <istikbal.com> from the Registrar, but naming the company as the Registrant, not his own name. He left the company on October 3, 2000, but at no time did he change the name of the Registrant. He did not think it necessary to make the change. According to Mr. Çiftçi, the company for which he worked did not go bankrupt as he had previously stated. It continued on under a different name and retained some use of the name Marketweb. In answer to a question in the Panel Procedure Order, Mr. Çiftçi has stated as follows:

“In this case, the respondent is not Marketweb A.Ş, but me, Nurullah Зiftзi. At the time I registered the domain name, I had to fill the company name section of the application form. I was working for Marketweb and thus I used its name as the company I work. However this does not mean that Marketweb is the registered party and the respondent of this case. As I have stated before, I am not the representative of the domain name holder, I am the domain name holder."

The Panel considers that any actions in the name of the Respondent can be imputed to Mr. Çiftçi since there appears to be no corporate entity involved.

Mr Çiftçi appears to say that actions taken throughout the period 1997 to date were entirel y his actions and not actions of MarketWeb A.Ş. However when soliciting and providing business in the creation of internet security systems and web designs prior to October 3, 2000, he would refer to the name of the corporation.

Mr. Çiftçi further disclosed that in the year 2000, he decided that he could not afford to maintain more than one site and decided to direct the domain name <istikbal.com> temporarily to a second site also owned by Mr. Çiftçi, with the domain name <arama.com>. This site was a search engine in the Turkish language. If at any time after the redirection in the year 2000, an Internet user seeking to locate the Complainant by entering the domain name <istikbal.com>, would receive the following message:

"This is the placeholder for the domain istikbal.com.
If you see this page, content is under construction.
Now you will be directed to the Turkish Sites Search Engine: Arama.Com
This page has been automatically generated."

The Respondent submitted that the domain name was used in connection with a bona fide offering of goods or services before he received the notice of domain dispute. In support of this allegation, Mr. Çiftçi identified two web sites designed by "istikbal.com" in 1999, and two more on a similar basis in 2001. The panelist was invited to check the web site source code of each of these web sites to confirm that each was shown to be designed by "istikbal.com". The panelist undertook this examination.

The Complainant’s evidence included an allegation that the Respondent offered to sell the domain name to the Complainant for the sum of $U.S. 30,000.00 but the offer was refused. Mr. Çiftçi replied as follows:

" Saying that I accepted to sell the domain name in return for $30,000 does not constitute an alle gation with legal ground and I strongly reject that I or my so-called representative, which I never had, made such an offer in a conversation or in another setting to the senior manager of Istikbal A.Ş. The complainant lacks evidence to prove this conver sation or give the name of my so-called representative, which I never had. This is not an allegation, but just a statement that can not go beyond being a statement."

and later:

"I strongly claim that any written or oral statement given by the so-called witnesses of the Complainant will be against the truth and their aim is to mislead the jurisdiction process. I have never made a conversation or any kind of contact with the complainant or its representatives. Such a big claim can only be proven by a tape record or any other kind of concrete evidence."

 

6. Discussion and Findings

A. Identical or Confusingly Similar

The first element that the Complainant must prove is that its mark is identical or confusingly similar to the domain name. In this case the Complainant’s design mark "istikbal" is virtually identical to the domain name <istikbal.com>. In the domain name, the additional element "com" is a TLD which is ignored for the purpose of assessing similarity. The background panel, a figurative element of the trade mark, would not prevent one from believing that the domain name was owned by the Complainant.

The Respondent in its initial response conceded that the trade mark and the domain name were similar but sought to show that no one would be confused because of difference between the wares and services of the parties. However the use of the term "confusingly similar" in a UDRP proceeding should not be interpreted by reference to the concept of likelihood of confusion under trade mark law. Whether there is a likelihood of confusion between the complaining party’s mark and the domain name is irrelevant. The determination was made by a side by side comparison independent of whether there is any actual or likelihood of confusion.

The panelist does not accept the argument that the word "istikbal" is a generic word in Turkish, meaning "future" in English. Generally the generic word is the name of a product or service or category. The word "future" in itself be seen to be the name of a product. It is conceivable that over time and extensive use, a word could become generic. However the Respondent has not provided any evidence that many other persons trade under the same name to such an extent that the word "istikbal" has become a generic word. Suffice to say that a registered trade mark will be presumed to be a valid registration with protected rights under UDRP and a panel will not question whether the registration should have been granted.

The Panelist finds that the Respondent’s domain name is, at the very least, confusingly similar to the Complainant’s trade marks. The Complainant succeeds in meeting the requirements of paragraph 4(1)(i).

B. Rights or Legitimate Interests

The Complainant has the onus of proving a negative, the absence of any right or legitimate interest on the part of the Respondent. However where the knowledge of the facts lies with the Respondent, the burden shifts to the Respondent to provide credible evidence that substantiates its claim of rights or legitimate interests. Do the Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624.

The Complainant has at no time licensed or otherwise authorized or permitted the Respondent to use any of the Complainant’s trade marks or to register the domain name in issue.

The Complainant’s use of its registered trade marks with the element "istikbal" obtained in 1989, 1995 and 1996, predated the Respondent’s registration of the domain name <istikbal.com> by a substantial period of time. The Complainant’s family has used a word that has distinguished its products to persons in Turkey over many years and more recently expanded to foreign countries. The Respondent has not shown any evidence of the use of the mark by third parties was common in Turkey. This is not a case where one party is remote from the other. Both are resident in Turkey in cities that are relatively close – about 250 miles at most. One would reasonably expect that the Respondent would know of the Complainant’s use of ‘istikbal" on its wares. The Respondent has not offered any explanation for the choice of the domain name.

Clearly the Complainant was known to the Respondent two to three years ago when an offer was made to sell the domain name to the Complainant.

Under paragraph 4(c) of the Policy, the Respondent may demonstrate that it has rights or legitimate interests in the domain name by showing one or more of the following circumstances:

(i) the Respondent’s demonstrable use of, or preparations to use, the contested domain name in connection with a bona fide offering of wares or services; or

(ii) the Respondent has been commonly known by the domain name, even if it had acquired no trade mark or service mark; or

(iii) the Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to mislead or divert consumers or tarnish the trade marks or service marks at issue.

Neither 4(c)(ii) or 4(c)(iii) appear to be applicable to the present circumstances. There is no evidence that the Respondent was commonly known by the domain name. A mere assertion will not establish a case under 4(c)(ii). The basis for a case under 4(c)(iii) requires a showing that the Respondent is making a legitimate non-commercial or fair use of the domain name without intent to make money. The intent in this case was commercial and directly or indirectly to make money.

Only the first of the three circumstances could form an arguable basis for establishing a right or legitimate interest, and even here the position is not clear. In the earliest Response filed by the Respondent, the panel was informed by the Respondent that he created two web sites in 1999, and two others in 2001. It was said by the Respondent that this would be confirmed by going to the source codes of each site, where it would be shown that each included confirmation that the design was by "istikbal.com". However when this search was done, none of the source codes displayed this message. Instead, there was in each, a copyright notice reading "Copyright © 1999- Designed by Istikbal Tasarim – Nurrullah Ciftci & Songul Yavuzaslan". One might conclude that this was a form used repeatedly for any entry.

The Respondent was then invited to provide a copy of invoices or any other documentary evidence that would show, that the jobs were performed under an agreement with the domain name <istikbal.com>, as distinct from any other person or company. Mr. Çiftçi replied that the invoices could not be found.

If the Respondent was accurate in the recollection of dates, the two jobs in 1999, were carried out when Mr. Çiftçi was employed by MarketWeb A.S. He has stated that prior to his leaving the company in October 2000 he used the name of the company when soliciting business or creating systems and web designs, rather than the domain name.

Further, the two jobs in 2001, would have been carried out when the domain name <istikbal.com> was no longer an actual trading business but was directed to "www.arama.com" which one would expect made money.

The panel finds that the Respondent has failed to establish that it has rights or legitimate interests in the disputed domain.

C. Registered and Used in Bad Faith

The final element required to be considered under the Policy and Rules is whether the domain name was used and registered in bad faith. While the UDRP speaks of both use and registration, the two issues are often combined from an evidentiary standpoint. As earlier noted, the Respondent vigorously denied any part of an offer to sell the domain name and this could not be proven except on tape recording or with other concrete evidence.

The Complainant provided three sworn affidavits which confirm a visit to the premises of the Complainant and an offer. The affidavits were sworn by two lawyers who are members of the bar at Kays eri. The statements were taken in both Turkish and English. After taking the oath, Mumduh Boydak, a senior manager of Istikbal A.Ş, gave evidence, a extract of which is reproduced in English as follows:

"I have been working as a senior manager in the Istikbal A.S. for many years. 3-4 years ago, a man from Ankara wanted to talk to me about the subject of <istikbal.com> domain name. He said that his name was Nurullah Ciftci and he was the representative of a firm named as MarketWeb A.S. which is managed in Ankara. He continued to tell that the <istikbal.com> was registered in the name of MarketWeb A.S. and in return to $30,000 for the sale of the domain name, they could transfer this name to Istikbal A.S. He also added that unless we did this, Istikbal Mobilya Sanayi ve Ticaret A.S. could come across with some negative situations. As a reply to this, I said that this offer was illegitimate, istikbal was a registered trade mark and In addition to these, It was accepted as a well- known trade mark by the Turkish Patent Institute at 01,07,1996. Then I rejected the offer from Nurullah Ciftci, the representative of MarketWeb A.S. as the offer was illegitimate."

Two further affiants gave sworn evidence on the offering of sale of the domain name by the Respondent. A manager of the Complainant, Abdussamet Sami Palta gave evidence that he was present "at the place of incident" and heard what was said by the senior manager and the visitor. A second manager, Mehmet Kilinç, also swore he was witness to the discussion. Each confirmed the account given by the senior manager.

While noting the submission of Mr. Çiftçi, the panel prefers the account of the meeting at the offices of the Complainant. In the circumstances, where the Respondent sought to sell the domain name to the Complainant, who was the owner of the trade mark, for valuable consideration far in excess of out-of-pocket costs directly related to the domain name, the panel finds that the Respondent’s domain name was registered and used in bad faith.

 

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 <istikbal.com> be transferred to the Complainant.

 

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James G. Fogo
Sole Panelist

Dated: July 3, 2003