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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Yapi-Endustri Merkezi A.S. v. Anba Anadolu Basin Ajansi Ltd. Sti.

Case No. D2009-0573

1. The Parties

The Complainant is Yapi-Endustri Merkezi A.S. of Istanbul, Turkey, represented by Istanbul Patent & Trademark Consultancy Ltd., Turkey.

The Respondent is Anba Anadolu Basin Ajansi Ltd. Sti. of Istanbul, Turkey, represented by Erol KaraoÄŸlu, Turkey.

2. The Domain Name and Registrar

The disputed domain name <yapifuari.com> is 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 4, 2009. On May 4, 2009, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the disputed domain name. On May 5, 2009, 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. On May 11, 2009, the Center transmitted an email to the Complainant concerning the address of the Registrar. On May 12, 2009, the Complainant submitted an amendment to the Complaint.

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" 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 May 13, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was June 2, 2009. The Response was filed with the Center on May 28, 2009.

The Center appointed Gökhan Gökçe as the sole panelist in this matter on June 3, 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.

4. Factual Background

The Complainant is Yapı-Endustrı Merkezı A.S. (YEM), providing services to all users of building materials, including companies engaged in the production of goods and services, professionals, executives, architects, engineers and contractors.

The Complainant provides a platform between the producers and users of such services and organizes sectoral fairs/exhibitions, professional/technical trips, meetings and symposiums, it also publishes technical journals and periodicals and provides professional information. The exhibitions have an international attendance and both domestic and foreign companies participate, for that reason the YAPI FUARI trademark is known in relevant sector both in Turkey and internationally.

YEM Kitabevi (translates to YEM Bookstore) offers a comprehensive selection of literature for those interested in arts and culture, it also provides specialist and technical publications to the building sector. YEM Kitabevi is unique and the only bookstore in Turkey offering a wide variety of specialized technical books and publications related to the building and construction sector. The collection of books consists of in excess of five thousand books from around the world.

The Complainant registered the design service mark YAPI FUARI on April 12, 1996 with the Turkish Patent Office (TPO). The Complainant uses the domain name <yem.net> as its official website and <yapiistanbul.com>, <yapiankara.com> and <yapiizmir.com> for more detailed information on exhibitions. On December 24, 1997, the Complainant registered eight marks with the Turkish Patent Office, all consist of the words "Yapi Fuarı" preceded by the numbers 97, 98 followed by 2000 to 2005.

The disputed domain name <yapifuari.com> was created on December 17, 2002 by the Respondent.

5. Parties` Contentions

A. Complainant

Identical or Confusingly Similar

The Complainant contends that the disputed domain name is identical to the design service mark in which the Complainant has rights evidenced in the trademark certificate No. 171124 exhibited in Annex 3. The Complainant avers that the disputed domain name <yapifuari.com> is identical to the design service mark YAPI FUARI registered since 1996, furthermore the term "yapi fuari" has been used by the Complainant for its products and services since as early as 1978.

Rights or Legitimate Interest

The Complainant relies on its right to exercise control over how its trademark is used by third parties on the Internet. In addition to its rights in accordance with ownership of the design service mark, the Complainant asserts that it has common law rights in the service mark established through recognition and use of the design service mark YAPI FUARI.

The Complainant states that the Respondent is not commonly known by the disputed domain name. Moreover, the Complainant states it has no connection with the Respondent and has not provided any permission for the use the mark. The Complainant affirms that the Respondent was clearly aware of the Complainants extensive goodwill and reputation of its design service mark "YAPI FUARI" and that 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 and/or in order to gain commercial benefit by selling the disputed domain name to the Complainant.

The Claimant notes the Respondent has not claimed that the disputed domain name is being used in connection with a bona fide offering of goods and services. The Complainant complains that it could not register the domain names on its own due to lack of availability caused by the Respondent`s registration thereof in December 2002.

Registered and Used in Bad Faith

The Complainant asserts that the Respondent`s registration of the disputed domain name is in bad faith as the Respondent must have been aware of the reputation and goodwill of the Complainant`s design service mark YAPI FUARI at the time of registering the disputed domain name. The Complainant contends that the Respondent registered the disputed domain name in bad faith in order to prevent the Complainant from reflecting the mark in a corresponding domain name, and is using the disputed domain name in bad faith to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant`s service mark. Furthermore, the Complainant states that it would have been impossible for the Respondent to use the disputed domain name as the name of any business or service for which it would be commercially useful without violating the Complainant`s rights.

The Complainant submits that the Respondent`s motivation in registering the domain name was to misleadingly divert Internet traffic to its site and for commercial gain by advertising. Furthermore as the subject matter and sector that the Respondent`s website is directed at is the same as Complainant`s it is likely that it will cause Internet users confusion and they are likely to conclude that the Respondent`s website is hosted by the Complainant, which is not the case.

The Complainant notes the Respondent attempted to change the registrant information and has provided false contact information and further contends the Respondent provided false contact information mainly for the purpose of remaining unreachable which indicates bad faith.

B. Respondent

The Respondent states that Anba Anadolu Basın Ajansi Ltd. Sti. which is the subject of the Complaint was founded in 1985 and has been active in the construction and building sector since its establishment. The company`s main aim was to make printed material available on the Internet. It has succeeded in this goal and has been providing such information since 2002, the date of registering the disputed domain name. The website provides an information portal for those in the building sector and includes interviews with leading personalities within the sector. The Respondent refers to 6 other websites that actively provide information in relation to the building sector, for which printouts are provided at Annex 4 – 9, it also refers to 4 printed media products for which printouts are provided at Annex 10 – 12a.

Identical or Confusingly similar

The Respondent notes the Complainant states that the attendees of its exhibitions increases each year, the Respondent relies on this fact to demonstrate that the disputed domain name does not cause any significant disturbance in relation to commercial activities, nor does it have a negative effect on the number of customers. Therefore there can be no confusion caused to Internet users who would be searching for <yemfuar.net> the Complainant`s main website.

The Respondent contends that the Complainant does not own a registered service mark YAPI FUARI and refers to several other service marks that preceded it by a year, for example 2002 Yapı Fuarı. In the alternative, the Respondent states that "yapı fuarı" is a generic term and that the Turkish Patent Institute will not provide protection for generic terms. The Respondent notes there are several other companies that have registered the trademarks with the Turkish Patent Office consisting of the words "Yapi Fuarı" as evidenced at Annex 14.

The Respondent asserts that the Complainant is trying to abuse its rights in order to become a monopoly in the building trade exhibition sector. The right to organize and promote a building exhibition does not exclusively belong to the Complainant and the Complainant can not claim exclusive rights over the term "yapi fuarı" as it is a generic term.

Rights or Legitimate Interests

The Respondent is a media agency whose main activity is related to the construction and building sector. The Respondent registered the disputed domain name because it consists of a generic term, that is relevant to the services offered and it wanted to use the domain name for that purpose. The Respondent refers to several other websites that it actively uses in relation to services connected to the building sector, these are exhibited at Annexes 4-9.

The Respondent asserts that it does not make a profit from the website and simply funds itself with advertising. Furthermore, the Respondent has never contemplated selling the disputed domain name to the Complainant or any other third party.

The Respondent notes that the Complainant`s main website "www.yem.net" was registered in 1997. The Respondent rejects the argument that the Complainant has not been able to reflect its design service mark in a domain name due to the Respondents registration of the disputed domain, had the Complaint wished to register the domain name it had ample opportunity to do so. The Respondent further contends that this demonstrates the Complainant`s intention to cause the Respondent company distress as they are competitors and there is a history of animosity between them. The Respondent states that this further supported by the fact that the Complainant has known of the Respondent for years and has provided evidence of correspondence relating to the same dated 2007. The Respondents states trademark law does not protect a party that does not voice a complaint against a violation within a period of time as it waives such rights, therefore the Complainant has waived its rights.

Registered and Used in Bad Faith

The Respondent`s main activity is related to the construction and building sector and the Respondent registered the disputed domain name in good faith for this purpose. The Respondent asserts that it does not make a profit from the website and simply funds itself with advertising. The Respondent has never contemplated selling the disputed domain name nor has it ever made such an offer, moreover the Respondent struggles to fund the site as it not enjoying any commercial gain.

The Respondent points to the fact that the disputed domain name resolves to a website which is a community website providing and sharing information and contains contact details of those within the building and construction sector. Therefore the website does not compete with that of the Complainant`s as it does not promote exhibition organization services and has no intention of misleadingly diverting the Complainant`s potential customers.

The Respondent notes that when the term "yapi fuarı" is entered into the Google search engine, the first result is the Respondent`s website and in the heading it clearly states <yapifuari.com> – Sanal Yapi Fuarı – Virtual Build Fair" the disputed domain name whereas the Complainant`s <yemfuar.net> website heading states "Uluslar arasi Yapı 2009 Ankara Fuari" and "Yapi-Endãstri Merkezi Tarafindan Duzenlenen Yapı Fuarlarının Web Sitesi", as evidenced at Annex 17. Therefore there can be no confusion between the two sites and the Respondent cannot be accused of intending to benefit from the Complainant`s reputation.

6. Discussion and Findings

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 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.

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 relies on the trademark certificate it has provided at Annex 3 as evidence of owning the design service mark YAPI FUARI, with the Turkish Patent Institute, registered in 1996 and renewed in 2006. At Annex 4 the Complainant has provided evidence of owning further design service mark registrations with the Turkish Patent Institute consisting of the words "Yapi Fuari" used during the years from 1997 through 2005 and registered after 2004.

The Complainant contends that in addition to registered rights it has rights in the term "Yapi Fuari" on the basis that it is common knowledge that the Complainant organises building exhibitions and the use of that mark is recognised by the general public as indicating an association with services offered exclusively by the Complainant.

The Respondent denies that the disputed domain name is identical to the Complainant`s design service mark. The Respondent fails to acknowledge the Complainant is the owner of the design service mark YAPI FUARI and simply refers to the design service marks evidenced at Annex 4 of the Complaint. Nonetheless, the Respondent further submits that "Yapi Fuari" is a generic name and the Respondent is therefore entitled to use it as its domain name and that a design service mark cannot be protected under Turkish Trademark Law or the Turkish Patent Office.

It has been stated in several decisions by other UDRP 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, 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).

In cases involving a complaint based on a design or device mark, however, the question of whether a mark is incorporated in its entirety in the domain name, in the context of making a finding of identity or confusing similarity, requires a more finely balanced and case-specific analysis. Previous UDRP panels have stated that in such cases "it is open to a Panel to make a finding under the first element of the Policy, based on the ‘dominant [word] elements` of a mark. There are two reasons for this.

Firstly, it is obvious that a mark, to the extent that it includes a device, cannot be reproduced in a domain name. To require some similarity with a device itself, for a finding under this first element of the Policy, would always place the owners of such marks at a significant disadvantage. The terms of the Policy include no such limitation against owners of such marks.

Secondly, it follows from the above that whether a domain name is identical or confusingly similar to a mark, is to be judged against the dominant textual elements of a complainant`s mark . This approach is supported by a series of prior panel decisions. (See e.g. Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031, and the cases cited in that one.) In that case, the panel noted that: ‘… graphic elements, such as the Sweeps design, not being reproducible in a domain name, need not be considered when assessing identity or confusing similarity`). The nature of a design mark may be relevant to whether its textual components are sufficiently dominant. But this is something that can only be judged on a case by case basis according to the nature of the mark in question. Put in other words, the more distinctive or particular the textual elements of the trademark, the greater the likelihood of it being identical or confusingly similar." Borges, S.A., Tanio, S.A.U. v. James English, WIPO Case No. D2007-0477. See also, Airborne Systems North America and Airborne Systems Group, Ltd. v. Virtual Point, Inc., WIPO Case No. D2008-1669.

The Panel agrees with the Respondent that "yapi fuari" (which translates to "building exhibition") is a generic or descriptive term and is not particularly distinctive. Moreover the Complainant`s design service mark apparently only grants rights to the use of the words as a part of the particular design or logo. Moreover, the words, in this Panel`s view, do not, on balance, feature descisively prominently in this relatively basic design service mark as the words appear simply under the darkened silhouette of a house. Furthermore, as Respondent points out "yapi fuari" appears to be used as an identifier by other companies. Therefore, as these circumstances tend to weigh against the confusing similarity of the disputed domain name, the Panel would be inclined to take the approach used by the panel in Airborne Systems North America and Airborne Systems Group, Ltd. v. Virtual Point, Inc., WIPO Case No. D2008-1669, that stated:

"The Panel would consider it relevant, however, if the evidence established that the Respondent itself selected the Domain Name because of its likelihood of being confused with the Complainants` [design] mark [in which the textual elements from the mark that were incorporated in the disputed domain name were not found to be sufficiently prominent] ... Hence, the Panel defers its finding on confusing similarity until taking up that argument below in connection with the issue of bad faith."

That being said, the Panel likewise does not find it necessary to make a determination under the first element, in light of its below findings under the second and third elements.

B. Rights or Legitimate Interests

The Complainant asserts that the Respondent was aware of the Complainant`s reputation and that "Yapi Fuari" is commonly recognised and associated with the Complainant. The Complainant attempts to rely both on common law rights and the registration of the design service mark YAPI FUARI. The Complainant puts forward its right to exercise control over how its trademark is used by third parties on the Internet and contends that the Respondent has no right or legitimate interest in the domain name. Furthermore, it is submitted that the Respondent has neither an association to the Complainant, nor a connection to the domain name, and is not commonly known by the term "Yapi Fuari".

The Complainant states that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that the Complainant has never granted the Respondent a licence or permission to use the mark YAPI FUARI. The Complainant asserts that as the Respondent must have been aware of the Complainant`s reputation at the time of registering the disputed domain name and that the only conceivable interest was to create the appearance of a connection to the Complainant.

The Respondent disputes that the Complainant has not been able to reflect its design service mark in a domain name due to the Respondent`s registration of the disputed domain and that if its intention was of registering the disputed domain name it had ample opportunity to register it prior to the Respondent`s registration.

The Respondent registered the disputed domain name because it consists of a generic term, that is relevant to the services offered and it wanted to use the domain name for that purpose. Furthermore, the Respondent asserts that the website is not being used to provide services competitive to the Complainant`s business. The Respondent provides the Panel print outs of the website "www.yapifuari.com" at Annex 3. The Panel visited the disputed domain name on June 12, 2009, the website appears established and actual. Furthermore, the Respondent submits evidence of other websites that it actively uses in relation to services connected to the building sector, these are exhibited at Annexes 4-9, therefore demonstrating that the Respondent has a legitimate interest in the disputed domain name.

As stated above, the Panel agrees that "yapi fuari" is a generic term for present purposes and the use of such a term in a domain name when this is being used in accordance with the dictionary meaning of such a term would typically bolster a finding of Respondent`s rights or legitimate interests therein. Furthermore, the Panel finds comfort in the fact there are a number of domain names in which "yapi fuari" is used by a third parties. A generic term cannot be protected as to prevent use of the term in its generic sense in a domain name, therefore under the present circumstances the Respondent`s use of the term "Yapi Fuari" in its domain name does not violate the second element of the Policy. see, TAM Communications, Inc. v. 3Dnet, Inc., WIPO Case No. D2002-1136.

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 right or legitimate interest in the disputed domain name.

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

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.

The Complainant notes that the domain name currently resolves to a website that provides information on products related to building sector. The Panel visited the website and as stated above it can be seen that the website is engaged in a bona fide provision of information related to the trade and sector it is and has been actively involved since 1985, a substantial period of time. Although there is an advertisement displayed on the website, the site is not riddled with click-through sites or several advertisements, just one modest advert which the Respondent claims funds the website, furthermore the advertisement is relevant to the content not simply for commercial gain which is dissimilar to cases where it is obvious that the purpose is commercial gain and advertisements that are irrelevant to the main content but are likely to attract Internet users is evident. Except for the current use of the disputed domain name, the Respondent has not made any commercial use nor has it sold any goods or services under the trademark YAPI FUARI.

The Panel is also of the opinion that the content of the site to which the domain name at issue resolves suggests that the Respondent has chosen the disputed domain name due to descriptiveness and relevance of the term rather than on the goodwill attached to the Complainant`s mark. Furthermore the content of the website does not compete with the Complainant`s core business of organizing building exhibitions.

In relation to the contention that the Respondent has changed the registrant details is rejected by the Respondent. The Respondent acknowledges that the registrant details changed however the company address and contact details always remained the same. The Panel is therefore of the opinion that the Respondent did not attempt to conceal contact details in order to avoid being reached. Furthermore the Respondent contends that the Complainant is attempting to use its rights for a malicious purpose as not only was the Complainant aware of the Respondent they have contacted one another via e-mail as evidenced at Annex 16.

The Panel is of the opinion that there is no evidence, provided by the Complainant, or suggested by the website, that the Respondent registered or acquired the domain name in bad faith. The Respondent has rights or legitimate interests in using a generic term as its domain name and there is no evidence of commercial gain or the intention to misleadingly divert consumers. The Respondent has demonstrated legitimate non-commercial use of the domain name, 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.

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.

7. Decision

For all the foregoing reasons, the Complaint is denied.

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Gökhan Gökçe
Sole Panelist

Dated: June 12, 2009