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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Mey Alkollu Ickiler Sanayi ve Ticaret Anonim Sirketi v. Mr. Ufuk Ercan

Case No. D2009-0002

1. The Parties

The Complainant is Mey Alkollu Ickiler Sanayi ve Ticaret Anonim Sirketi, of Istanbul, Turkey, represented by Mr. Sarper Parlakyildiz of Istanbul, Turkey.

The Respondent is Mr. Ufuk Ercan, of Kirklareli, Turkey represented by Taner Sevim of Istanbul, Turkey.

2. The Domain Name and Registrar

The disputed domain names <tekirdagrakisi.com> and <tekirdagrakisi.net> are registered with Register.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 6, 2009. On the same date, the Center transmitted by email to Register.com, Inc. a request for registrar verification in connection with the disputed domain names. Again on January 6, 2009 Register.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the disputed domain names and providing the contact details.

On January 9, 2009, the Center transmitted by email to the Complainant a notification by the Center that the Complaint was administratively deficient due to a Mutual Jurisdiction option and requested the Complainant to cure the deficiency by submitting an amendment to the Complaint by January 14, 2009. The Complainant filed an amendment to the Complaint on January 12, 2009, and submitted to the jurisdiction of the courts at the location of the principal offices of the Registrar.

The Center verified that the 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 January 12, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was February 1, 2009. The Response was filed with the Center on January 30, 2009.

On February 4, 2009, the Complainant filed a reply to points raised in the Respondent`s Response as an unsolicited Supplemental Filing, which the Center acknowledged receipt of on the same date.

The Center appointed Gökhan Gökçe as the sole panelist ("the Panel") in this matter on February 6, 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.

No further submissions were received by the Center or the Panel. The date scheduled for the issuance of the Panel`s decision is February 20, 2009.

Finally, in accordance with Article 11 of the Policy, the language of the administrative proceeding will be the language of the registration agreement (i.e., English) since the Parties have not agreed otherwise and since the registration agreement, which the present dispute is based upon, does not provide otherwise.

4. Factual Background

The Complainant, was established as joint venture in 2003, and in 2004 through privatization became the owner of the state owned Tekel alcohol monopoly.

Amongst the products that Tekel manufactured was a product named Raki, the Raki they produced was originally sold and known as "Yeni Raki". At a later date a Raki product named "Tekirdag Rakisi" was released. The Complainant has heavily promoted Tekirdag Rakisi through advertising materials, print, broadcast, cable media and the Internet.

In November 2005 the Complainant renewed the registered trade mark TEKIRDAG RAKISI originally registered in 1995. The Complainant has also made several applications and registrations of the trade name containing the word TEKIRDAG RAKISI and owns a considerable number of trade mark registrations related to its trademark TEKIRDAG RAKISI in Turkey, and other jurisdictions. The earliest TEKIRDAG RAKISI trademark registration is dated November 10, 1995 and was made by Tekel. As a result of the privatization, the Complainant became the rightful owner of the above Tekel trademark.

The Complainant is the registered owner of "mey.com.tr/u_raki_gold.html" since January 5, 2005, and, <tekirdagrakisi.com.tr> since November 27, 2006.

The Respondent is an individual who has developed a website under the disputed domain names <tekirdagrakisi.com> and <tekirdagrakisi.net>. The Respondent registered the disputed domain names on August 1, 2000 and October 3, 2000 respectively.

5. Parties` Contentions

A. Complainant

In accordance with paragraph 4(b)(i) of the Policy, the Complainant requests that the domain names <tekirdagrakisi.com> and <tekirdagrakisi.net> should be transferred to the Complainant.

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

Furthermore, the Complainant submits that its trademark TEKIRDAG RAKISI is a well known trademark and that the Respondent, must have had prior knowledge of this when he registered the disputed domain names, <tekirdagrakisi.com> and <tekirdagrakisi.net> in 2000.

Identical or Confusingly Similar

The Complainant contends that the disputed domain names <tekirdagrakisi.com> and <tekirdagrakisi.net> are identical or confusingly similar to the Complainant`s trademark TEKIRDAG RAKISI and trademarks consisting of the words TEKIRDAG RAKISI.

Rights or Legitimate Interests

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant has never granted the Respondent a licence or permission to use the mark TEKIRDAG RAKISI and the Respondent has no association with the Complainant.

Registered and Used in Bad Faith

The Complainant asserts that at the time of registering the domain names the Respondent must have been aware of the reputation and goodwill of the Complainant`s trademarks TEKIRDAG RAKISI.

The Complainant relies on rights which are established through recognition and the use of the mark TEKIRDAG RAKISI which is recognised by the public as indicating association with the Complainant, evidenced in advertising material provided at Annex IV. The Complainant further relies on registered trademarks as evidenced at Annex II and III.

The Complainant states that although the disputed domain names, <tekirdagrakisi.com> and <tekirdagrakisi.net>, were registered several years previous to the Complainant`s domain names, <mey.com.tr/u_raki_gold.html> and <tekirdagrakisi.com.tr>, it is submitted that the Complainant is entitled to protect and control use of its trademark by third parties and the Respondent in this case would only have a right to the domain names if the Complainant had specifically granted that right, which the Complainant did not grant.

The Complainant notes that the disputed domain names currently resolve in a website that provides information on products related to Raki and promotes foods and mezes that are commonly consumed whilst drinking Raki.

B. Respondent

The Respondent filed a Response to the allegations in the Complaint and requests the Panel to deny the remedy requested, namely transfer of the disputed domain names to the Complainant.

Identical or Confusingly Similar

The Respondent agrees that the disputed domain names <tekirdagrakisi.com> and <tekirdagrakisi.net> are identical to the Complainant`s trademark TEKIRDAG RAKISI, however submits evidence at Annex 5, 6 and 7 to support the contention that "Tekirdag Rakisi" is a generic name created by the public.

The Respondent states that Tekel produced Raki, named "Yeni Raki" at various factories throughout Turkey but it was well known that the Raki produced at the Tekirdag factory was of a superior quality. The Respondent submits, it is for this reason the public created the generic name "Tekirdag Rakisi" and furthermore gives examples of several products from Turkey that the public have attached geographical marks to.

At Annex 8 and 9, the Respondent submits that Mr. Vefa Zat, an advisor to the Complainant, through a website "www.uzmantv.com" explains the history of Raki and how Tekirdag Rakisi became legendary. He explains that in the past the Raki produced at the Tekirdag factory was not readily available across the whole of Turkey and people would travel from all over Turkey to purchase the Raki from Tekirdag. In order to create a distinction between the Raki other factories produced this Raki became commonly known and was named by the public as "Tekirdag Rakisi".

The Respondent claims that the disputed domain names, consist of a generic name created by the public and cannot be confused with the trademark. The Respondent submits he has the right to use the generic name "Tekirdag Rakisi" as part of his domain names.

Rights or Legitimate Interests

The Respondent states that the domain names resolve in a website that contains useful information for public reference on Raki and foods to be consumed whilst drinking Raki. The Respondent submits that he is not competing with the Complainant and furthermore that amongst others he makes reference to the Complainants products.

The Respondent claims legitimate noncommercial use of the domain name, without intent for commercial gain or to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Registered and Used in Bad Faith

The Respondent denies any allegation of bad faith. The Respondent states that there is no evidence of registration in bad faith as he registered the disputed domain names previous to the privatization, and therefore before the Complainant took over Tekel alcoholic beverages in 2004.

The Respondent claims that he has invested time and effort in developing a website and provides extracts from the website at Annex 1. The Respondent states that the website is a source of information for members of the public who are interested in consuming Raki.

The Respondent asserts that the website has never been used or been involved in any activity associated with bad faith. The website does not re-direct the user to any competitor websites or sites with inappropriate content, to the contrary, the disputed domain names resolve in an active and legitimate website.

Furthermore, the Respondent submits that he has personally funded the development of the website and that he has had no commercial gain, nor does he intend to derive any financial gain from the website.

The Respondent notes that at the time of registering the disputed domain names the Complainant had not registered any trademarks except for the trademark TEKIRDAG RAKISI originally registered by Tekel.

The Respondent contends that the Complainant is acting in bad faith as it registered the domain name <tekirdagrakisi.com.tr> on November 27, 2006, well after the disputed domain names were registered in 2000. The Panel is directed to the fact that this domain name does not resolve in a website and is inactive, evidenced in Annex 3, which suggests bad faith. It is further submitted that the Complainant has neglected to register or purchase other domain names consisting of the word TEKIRDAG RAKISI which is suggestive of bad faith, as evidenced at Annex 4.

Finally the Respondent states that the extension ".com" symbolises commercial activity whereas the extension ".net" is representative of networks, these networks could be for socialising or providing information, and also that in requesting the disputed domain names to be transferred the Complainant is acting in bad faith.

6. Discussion and Findings

There are two procedural matters, namely the unsolicited Supplemental Filing by the Complainant and the Respondent`s contention that the Complainant does not have the right to complain, 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 such 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 made a Supplemental Filing in which it replied to the Respondent`s Response, the Rules simply provide for a Complaint and Response, paragraph 12 allows for the Panel to request further statements, in the absence of such a request the filing is outside of the Rules.

In reaching its decision the Panel considered the fact that the Respondent did not have an opportunity to reply to the case put against it, which compromises equality. In this case there is no need to consider the Supplemental Filing as the Panel does not find the additional statements necessary to reach a decision. The Panel is of the opinion that neither party will be prejudiced by a refusal to admit the Complainant`s Supplemental Filing and in the interests of fairness, equality and expedience the Panel declines admission and consideration of the Supplemental Filing.

With reference to the Respondent`s contention that the Complainant does not have a right to complain based on the belief that the original owner of the registered trademark, TEKIRDAG RAKISI was neither Tekel, nor the Complainant but T.C. Tekirdag Chamber of Commerce, upon checking the Turkish Patent Institute this statement appears to be inaccurate as there was an application made by T.C. Tekirdag Chamber of Commerce which never resulted in registration.

The Complainant relies on recognised use of the trademark TEKIRDAG RAKISI and contends that the public associates that mark with the Complainant and further relies on registered trademarks containing the words TEKIRDAG RAKISI as evidenced at Annex 2. The Complainant has established grounds to Complain and therefore the Panel will continue to consider the complaint.

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 names of the Respondent be transferred to the Complainant:

(a) the domain names are 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 names; and

(c) the domain names have been registered and are being used in bad faith.

Pursuant to paragraph 15(a) of the Rules, the Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

A. Identical or Confusingly Similar

The Complainant at Annex II and III has provided evidence of owning several trade and service mark registrations with the Turkish Patent Institute, and other jurisdictions, consisting of the words TEKIRDAG RAKISI which have mainly been registered in 2005; however the trademark TEKIRDAG RAKISI was first registered with the Turkish Patent Institute in 1995.

The Turkish Patent Institute carries out an examination and determination that there are no obstacles before registering trademarks, the fact that the trademarks have been registered demonstrates that there were no absolute grounds for refusal, prior rights and no objections were filed.

The Complainant further contends that it has rights in the trademark on the basis that it has established wide recognition and it is common knowledge that Complainant is the producer of TEKIRDAG RAKI and the use of that mark has come to be recognised by the general public as indicating an association with products produced exclusively by the Complainant.

The Respondent agrees that the disputed domain names are identical to the Complainant`s trademark TEKIRDAG RAKISI, however the Respondent further submits that TEKIRDAG RAKISI is a generic name and he is therefore entitled to use it as his domain name. The Respondent submits evidence to support this fact at Annexes 6 -9, these consist of various materials discussing the history of Raki, "Yeni Raki" and "Tekirdag Rakisi". Within this material it is understood that whilst "Tekirdag Rakisi" is a name generated by the public to distinguish Raki made in Tekirdag from Raki produced in other areas of Turkey, it also discusses the fact that "Tekirdag Rakisi" became a marketed product and recognised trademark.

The Policy simply requires the Complainant to demonstrate that the disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights. The Panel therefore accepts that the Complainant is the owner and has exclusive rights in the trademark, T. Rowe Price Associates, Inc. v. J A Rich, WIPO Case No. D2001-1044.

The Respondent contends that the Complainant is acting in bad faith as its domain name, <tekirdagrakisi.com.tr> resolves in a dormant website, when the Panel checked on February 16, 2009, the domain name did not resolve in a website. The Complainant registered the domain name <tekirdagrakisi.com.tr> on November 27, 2006, well after the disputed domain names were registered in 2000. Nonetheless, the fact that the Respondent registered the disputed domain names before the Complainant does not prevent a finding of identical or confusingly similar, Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827.

The Respondent claims that the Complainant has made no attempt to protect its trademark or domain name, as the domain name "Tekirdag Rakisi" is available for registration with several different extensions. The Panel does not agree with this contention, Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662 "Trademark owners are not required to create ‘libraries` of domain names in order to protect themselves".

Following Oki Data Americas Inc. v. ASD Inc., WIPO Case No. D2001-0903, a domain name that reproduces the trademark in its entirety is generally 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 v. Petaluma Auto Works, WIPO Case No. D2005-0941; 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 domain names at issue are identical and confusingly similar with the Complainant`s trademark. The Panel finds that the requirements in paragraph 4(a)(i) of the Policy are fulfilled, consequently, the Panel finds for the Complainant on the first element of the Policy.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, the Respondent may exhibit that it has rights or legitimate interests in the domain names by showing one or more of the following circumstances:

(i) before any notice to the Respondent of the dispute, the Respondent`s use of, or demonstrable preparations to use, the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services; or

(ii) the Respondent (as an individual, business, or other organisation) has been commonly known by the domain names, even if the Respondent has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Complainant simply contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names, that the Complainant has never granted the Respondent a licence or permission to use the mark TEKIRDAG RAKISI, and that the Respondent has no association with the Complainant.

The Respondent submits he has rights or legitimate interests in the domain names as they resolve in an active website in which he as invested time, effort and money. The website is not being used to provide services competitive to the Complainant`s business. The website provides information about various Raki products, there is a forum for visitors and members, and generally the aim of the website appears to be to promote enjoyment and awareness of Raki. The Respondent provides the Panel print outs of the website "tekirdagrakisi.com" and "tekirdagrakisi.net", the Panel visited the disputed domain names on February 16, 2009 and they both resolve in the same website, the website appears established and sophisticated and there is no evidence that it generates any income or commercial gain.

The Complainant asserts that at the time of registering the domain names the Respondent must have been aware of the reputation and goodwill of the Complainant`s trademark TEKIRDAG RAKISI which is indicative of bad faith. The Respondent does not deny knowledge of the term TEKIRDAG RAKISI, he believed that it was a generic term created by the public and that he had the right to use the term as part of his domain name. The Respondent believed he was using a generic, descriptive term as a name for his website whose subject is Raki. The domain names contains a term "tekirdag rakisi" and therefore the user would expect the domain name to resolve in a website that is connected with the name. It is obvious to the Panel that in this case the domain names do resolve in a site that provides information about Tekirdag Rakisi, Home Interiors & Gifts, Inc. v. Home Interiors, WIPO Case No. D2000-0010.

There is no evidence, provided by the Complainant, or suggested by the website, that the Respondent registered or acquired the domain names in bad faith. The Respondent believed he had legitimate rights in using a generic term as his domain names and there is no evidence of commercial gain, intention to misleadingly divert consumers or to tarnish the trademark at issue. The Respondent has demonstrated legitimate noncommercial use of the domain names, as the website is active and is used in connection with the provision of relevant information to the public, RCN Corporation, RCN Telecom Services, Inc. v. RCN Networks, LLC, WIPO Case No. D2006-0927.

The Panel concludes that the Respondent has satisfied paragraph 4(c) of the Policy and concludes that the Respondent has rights or legitimate interests in the disputed domain names.

Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the disputed domain names. The Complainant has failed to establish that the Respondent lacks a legitimate right or interest in the disputed domain names.

The requirements of 4(a)(ii) of the Policy are not satisfied and consequently the Panel finds in favour of the Respondent on the second element of the Policy.

C. Registered and Used in Bad Faith

Given the findings above, it is not strictly necessary to discuss bad faith, however, for completeness, the Panel notes the following.

Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that,

if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the Respondent has registered or acquired the domain names primarily for the purpose of selling, renting, or otherwise transferring the domain names registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the Respondent`s documented out-of-pocket costs directly related to the domain names; or

(ii) the Respondent has registered the domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent registered the domain names primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent`s 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 the Respondent`s web site or location or of a product or service on the Respondent`s web site or location.

The Complainant relies on rights which are established through recognition and the use of the mark TEKIRDAG RAKISI which is recognised by the public as indicating association with the Complainant. The Complainant has invested in advertising their TEKIRDAG RAKISI product; however there is no indication of when the product was first used and the first trademark certificate seems to be from 2005 (notwithstanding the registration for TEKIRDAG RAKI from 1995). Moreover, given the geographic connotations, in the absence of evidence, it is not possible for the Panel to assess whether the Respondent knew or should have known of the Complainant`s (or their predecessor`s) use of the trademark TEKIRDAG RAKISI which would fall on the weak end of the mark spectrum as opposed to the geographical association to "Tekirdag Rakisi". The Complainant notes that the domain currently resolves in a website that provides information on products related to Raki and promotes foods and mezes that are commonly consumed whilst drinking Raki. The Panel visited the website and as stated above it can be seen that the website is engaged in the noncommercial legitimate use of providing information on Raki, with reference to Tekirdag Rakisi. The Panel thus finds that the domain names are not being used in bad faith.

The Complainant has failed to prove that the Respondent, at the time of registration, must have been aware of the Complainant`s trademark, furthermore following National Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseball v. John Zuccarini, WIPO Case No. D2002-1011, registration of a common (in this case geographic) term that is also a trademark requires additional evidence before bad faith can be found; no such evidence, which would likely be in the Complainant`s control were it available, has been submitted, due to the lack of any such evidence, the Panel concludes that the domain names were not registered in bad faith.

After examining all circumstances surrounding the registration and use of the domain names, the Panel finds that the Complainant has not satisfied paragraph 4(a)(iii) of the Policy. Accordingly the Panel finds in favour of the Respondent on the third element of the Policy.

The Panel notes finally that the present finding may not limit the Complainant`s recourse in another forum, or in circumstances where the use of the domain names may change.

7. Decision

For all the foregoing reasons, the Complaint is denied.

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Gökhan Gökçe
Sole Panelist

Dated: February 24, 2009