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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Toscelik Granul Sanayi Anonim Sirketi v. Celik Granul Sanayi Anonim Sirketi

Case No. D2008-0750

1. The Parties

The Complainant is Toscelik Granul Sanayi Anonim Sirketi, Kadikoy, Istanbul, Turkey, represented by Ekin Dericioglu Kurt, Turkey.

The Respondent is Celik Granul Sanayi Anonim Sirketi, Hadimkoy, Istanbul, Turkey, represented by Marif Ugurlu Attorneys & Counsellors at Law, Turkey.

2. The Domain Names and Registrar

The disputed domain names <toscelikgranul.com> and <toscelikgranul.net> are registered with OnlineNic, Inc. d/b/a China-Channel.com

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 14, 2008. On May 15, 2008, the Center transmitted a request for registrar verification in connection with the domain names at issue by email to OnlineNic, Inc. d/b/a China-Channel.com

On May 29, 2008, OnlineNic, Inc. d/b/a China-Channel.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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”).

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 30, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was June 19, 2008. The Response was filed with the Center on June 19, 2008.

The Center appointed Dilek Ustun as the sole panelist in this matter on July 1, 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.

4. Factual Background

The Complainant in this administrative proceeding is Toscelik Granul Sanayi A.S. one of the group companies of Tosyali Holding in the Republic of Turkey. Tosyali Holding was founded in 1952. The Complainant is doing business in the steel sector.

The trademark TOSCELIK was registered in 2007 in the name of Toscelik Profil ve Sac Endustrisi Anonim Sirketi which is also one of the group companies of Tosyali Holding in the Republic of Turkey.

Toscelik Granul is the company name of the Complainant since July 27, 2005.

The Complainant also operates a web site under the domain name <toscelikgranul.com.tr>.

5. Parties’ Contentions

A. Complainant

The domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights

The Complainant asserts that the Respondent’s domain names <toscelikgranul.com> and <toscelikgranul.net> are identical to the Complainant’s trademark mentioned above.

The Respondent has no rights or legitimate interests in respect of the domain names.

The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain names. In support of this allegation, the Complainant states that the Respondent did not use the disputed domain names in connection with a bona fide offering of goods and services. The Complainant adds that the Respondent has never been known by this name. The Complainant also notes that the Respondent is not making a legitimate non-commercial or fair use of the domain names.

The domain names were registered and is being used in bad faith

The Complainant states that the domain names <toscelikgranul.com> and <toscelikgranul.net> were registered and used by the Respondent in bad faith.

The Complainant’s trademark is widely known in the market. The Respondent has thus registered the <toscelikgranul.com> and <toscelikgranul.net > domain names corresponding to a widely known trademark, thereby seeking to unduly profit from the goodwill flowing therefrom.

The Complainant also states that the web page under the disputed domain names merely consists of the Respondent’s trade name and its e-mail address for information.

B. Respondent

The Respondent, Celik Granul Sanayi A.S., established back in October 13, 1976, in Turkey and operating in steel-shot sector.

The Respondent has been using the trademark CELIKGRANUL and operating a web site under the domain name <celikgranul.com>.

The Respondent argues that the Complainant has failed to prove and establish the domain names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Respondent states that the Respondent has legitimate interest in respect of the domain names in issue.

The Respondent asserts that the domain names in issue were not registered and used in bad faith.

The Respondent seeks a finding of reverse domain name hijacking against the Complainant under paragraph 15(e) of the Policy.

6. Discussion and Findings

Paragraph 15(a) of the Rules requires the Panel to decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, these rules and any rules and principles of law that it deems applicable.

Under paragraph 4(a) of the Policy, the Complainant bears the burden of showing:

(i) that the domain names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the domain names; and

(iii) that the domain names have been registered and are being used by the Respondent in bad faith.

A. Identical or Confusingly Similar

The Complainant has established that it has rights in the registered trademark TOSCELIK.

Toscelik Granul is the trade-name of the Complainant and an individual or entity may be entitled to an unregistered trademark or service mark without registering the mark with the appropriate authority. See, Steven Rattner v. BuyThisDomainName (John Pepin), WIPO Case No. D2000-0402; Jeanette Winterson v. Mark Hogarth, WIPO Case No. D2000-0235; Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210.

It is generally understood that an exclusive right in a trademark can be acquired with, or without, registration. This is the case when the mark has been established on the market and this is the case at hand. (Reference to: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; and ASSA ABLOY AB v. P D S AB, WIPO Case No. D2000-0442).

Furthermore; the Complainant’s company has been established before the registration of the domain names.

Consequently, the Panel finds that the domain names are identical or confusingly similar to the Complainant’s registered trademark TOSCELIK and unregistered trademark TOSCELIK GRANUL.

B. Rights or Legitimate Interests

Viewing this situation in light of paragraph 4(c) of the Policy, what the Respondent has done to date is not a bona fide offering of goods or services. There is no evidence whatsoever that the Respondent has been commonly known by the domain names.

The Respondent has not provided any evidence of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the domain names. It is clear that the Respondent has not demonstrated any bona fide offering of goods and/or services by its using the disputed domain names. Nor has the Respondent shown that it has been known by the disputed domain names. The Complainant showed that the Respondent has neither a license nor any other permission to use the domain names in dispute and the Respondent has not made non-commercial or fair use of the domain names.

When the Respondent registered the domain names it knew that “Toscelikgranul” was the name of the Complainant as the Respondent appears to be operating in the same field of business as the Complainant. It registered the domain names because it would be recognized as such.

The Panel finds that the Respondent has no rights or legitimate interests in respect of the domain names.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides a list of indicative circumstances that suggest bad faith registration, however, such list is not exhaustive and a finding of bad faith depends on the circumstances of each case.

When the Respondent registered the domain names, the Respondent knew that the domain names were the name of the Complainant.

The Panel, in accordance with previous decisions issued under the Policy, is of the opinion that actual knowledge of the Complainants’ trademark at the time of the registration of the disputed domain names may be considered as an inference of bad faith (see Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).

In the circumstance when the disputed domain names are directed to a web site owned by the Respondent’s bad faith has also been proved. All these acts demonstrate that the Respondent, by using the disputed domain names, has intentionally attempted to attract, for commercial gain, Internet users to the website at the disputed domain names, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website at the disputed domain names or the products on the website of the disputed domain names, as provided in the Policy, paragraph 4(b)(iv).

In view of the above, the Panel finds that the Respondent has registered and used the domain names in bad faith, in accordance with paragraph 4(a)(iii) of the Policy.

D. Reverse Domain Name Hijacking

Paragraph 1 defines reverse domain name hijacking as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”. See also paragraph 15(e). To prevail on such a claim, the Respondent must show that the Complainant knew of the Respondent’s unassailable right or legitimate interest in the disputed domain names or the clear lack of bad faith registration and use, and nevertheless brought the Complaint in bad faith. See e.g., Sydney Opera House Trust v. Trilynx Pty. Ltd., WIPO Case No. D2000-1224.

In light of the Panel’s conclusions, the request for a finding under this heading inevitably fails.

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 names <toscelikgranul.com> and <toscelikgranul.net> be transferred to the Complainant.

Dilek Ustun
Sole Panelist

Dated: July 15, 2008