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Generic Top Level Domain Name (gTLD) Decisions |
Eskidji
Muzayedecilik Ticaret Ithalat Ihracat Anonim Sirketi v. UDS Ulusal Dagitim
Sistemi ve Ticaret AS
Claim Number: FA0203000105932
PARTIES
The Complainant
is Eskidji Muzayedecilik Ticaret Ithalat
Ihracat A.S., Kasimpasa – Istanbul, TURKEY (“Complainant”) represented by Dilek Ustun, of Istanbul Patent & Trademark Consultancy Ltd. The Respondent is UDS Ulusal Dagitim Sistemi ve Ticaret AS, Istanbul, TURKEY
(“Respondent”).
REGISTRAR AND DISPUTED
DOMAIN NAME
The domain name
at issue is <eskidji.com>,
registered with Verisign - Network
Solutions, Inc.
PANEL
The undersigned
certifies that she has acted independently and impartially and to the best of
her knowledge, has no known conflict
in serving as Panelist in this proceeding.
Anne M. Wallace,
Q.C. as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (“the Forum”)
electronically on March 18, 2002; the Forum received
a hard copy of the
Complaint on March 29, 2002.
On March 20, 2002,
Verisign - Network Solutions, Inc. confirmed by e-mail to the Forum that the
domain name <eskidji.com> is
registered with Verisign - Network Solutions, Inc. and that the Respondent is
the current registrant of the name. Verisign
- Network Solutions, Inc. has verified that Respondent is bound by the Verisign
- Network Solutions, Inc. registration agreement
and has thereby agreed to
resolve domain-name disputes brought by third parties in accordance with
ICANN’s Uniform Domain Name Dispute
Resolution Policy (the “Policy”).
On April 3, 2002,
a Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting
a deadline of April 23, 2002 by which
Respondent could file a Response to the Complaint, was transmitted to
Respondent via e-mail,
post and fax, to all entities and persons listed on
Respondent’s registration as technical, administrative and billing contacts,
and to postmaster@eskidji.com by e-mail.
A timely Response
was received and determined to be complete on April 19, 2002.
On May 1, 2002, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the Forum appointed Anne M. Wallace, Q.C.
as Panelist.
RELIEF SOUGHT
The Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
The
Complainant “ESKIDJI MUZAYEDECILIK ITHALAT IHRACAT A.S.” herein called
“ESKIDJI” has the following national trade and service
marks registrations in
Turkiye for the mark ESKIDJI.
Registration
No Mark Intl.
Classes Date of Registration
197115 ESKIDJI 35, 36 13.07.1998
197114 ESKIDJI 14, 20 19.07.1998
ESKIDJI also
has the following international registration registered under Intl. Madrid
Protocol. :
Intl.Registration No: Mark: Intl. Classes Date
of Registration:
774613 ESKIDJI 14, 20, 35, 36 October 11, 2001
On July
22, 2001, the Complainant filed a service mark application which covers
international class 35 in the United Arab Emirates.
The
Complainant “ESKIDJI” is a leading auctioneering company in Turkiye. It was
established on August 22, 1997 in Istanbul. Since
1997 the Complainant has
conducted a wide range of auctions under the word mark ESKIDJI, the range of
services covering estate, antique,
household, fine furniture, collectibles,
fine art, jewelry, paintings and automobiles auctions. ESKIDJI also owns one of
the largest
auction houses in the world with an area of 17.000. m2.
ESKIDJI, in 2001, has rapidly grown to become one of the top five
company in the World Auction Industry.
The
Complainant has a web site published at <eskidji.com.tr> which provides
more detailed information on ESKIDJI.
The Complainant
has rights in the mark “ESKIDJI”. The Domain Name <eskidji.com> is
based on the word "eskidji" which is identical to national and/or
international ESKIDJI trade/service marks and
as well as to the identifying
part of the company name.
The
domain name <eskidji.com> was registered with the registrar on 12
November 1999. At this time, the Complainant had already been featured in auctioneering
services
and had acquired registered trade/service marks and common law rights
in its name.
Complainant
says the domain name, <eskidji.com> is identical or confusingly
similar to its trade mark ESKIDJI.
With respect to rights or
legitimate interests, Complainant contends:
1)
Respondent
is not using the domain name in connection with a bona fide offering of goods
and services. The Complainant, ESKIDJI, has
not licensed or otherwise permitted
the Respondent to use the mark “ESKIDJI” or to apply for or use any domain
names incorporating
that trade/service mark. The Respondent has no relationship
with or permission from the Complainant for use of its trade/service
mark. The
Complainant has prior rights in that trade/service mark, which precede
Respondent’s registration of the domain name.
2)
The
domain name in question is not a mark by which the Respondent is commonly
known. Respondent does not operate a business or other
organization commonly
known as “ESKIDJI,” or that offers any goods or services covered under the
ESKIDJI mark.
3)
The
Respondent has made no commercial use of the mark, and has sold no goods or
services under the mark ESKIDJI. Internet users who
visit the web site <eskidji.com>
encounter a single page where the domain name is offered for sale. The
statement “Bu Site Satiliktir” written in Turkish is equal
to “This site is for
sale” when translated into English. The users who visit <eskidji.com>
are further re-directed to <r-portakal.com.tr> in a pop-up window. This
site, <r-portakal.com.tr>, belongs to a competing
company offering goods
and services which are similar to that of the Complainant. Internet users who
wish to visit Complainant’s
web site are misleadingly diverted to a web site
which is operated by one of the Complainant’s competitors. The Respondent
deliberately
intends to force the Complainant to pay for the domain name.
4)
The
Respondent has made no legitimate, non commercial or fair use of the domain
name. Instead, Respondent is using the domain name
solely to injure and harass
Complainant and Complainant’s business. As discussed above, Respondent is
currently using the <eskidji.com> domain name to link users
directly and involuntarily to a different domain name and site of a company not
affiliated with Complainant
nor legitimately affiliated with Complainant’s
ESKIDJI mark, but instead offering goods that compete with Complainant’s goods
identified
by Complainant’s ESKIDJI mark. Prior to creating that link,
Respondent used the <eskidji.com> domain name as a vehicle to
advertise his offer to sell the <eskidji.com> domain name.
Complainant
asserts the Domain Name was registered and is being used in bad faith for the
following reasons:
1) The Respondent registered and is using
the domain name in question primarily for the purpose of selling it to the
Complainant. Respondent
registered the Domain Name for the purpose of
"selling, renting, or otherwise transferring the Domain Name registration
to the
Complainant who is the owner of the trade/service mark or to a
competitor of the Complainant, for valuable consideration in excess
of the
Respondent’s documented out-of-pocket costs directly relating to the Domain
Name. The Domain Name was registered without the
Complainant’s consent, license
or authorization; Complainant’s ESKIDJI trade/service mark is well-known in
Turkiye and partially
in the world and Respondent must have been fully aware of
Complainant’s trademark rights when Respondent registered the Domain Name.
2) The Respondent registered the Domain Name
with constructive notice of the Complainant’s trade/service mark registration.
The Respondent
must have known of the Complainant’s trademark rights in ESKIDJI
in view of the Complainant’s long use and trade/service mark registrations
of
the same.
3)
The
Respondent intends to prevent the Complainant from registering the Domain Name;
and the Respondent intends to disrupt the Complainant’s
business or to pressure
the Complainant to buy the Domain Name from the Respondent for a price.
4)
Respondent
does not conduct any legitimate commercial or noncommercial business under the
ESKIDJI mark or name.
5)
The
Respondent does not actually present a fair use of the disputed domain name,
rather he uses the <eskidji.com> domain name as a vehicle to
advertise his offer to sell the same and to force the Complainant to pay for
the name. Such usage
of the domain name may further be considered as “passive
holding” and under these circumstances this must be considered as a concrete
evidence of bad faith.
6)
By
registering the <eskidji.com> domain name, the Respondent is
diverting consumers away from the Complainant’s business and will divert
consumers away from Complainant’s
official web site, thereby making it
difficult for Complainant’s customers and the general public to locate
Complainant’s business
and official web site, and thereby disrupting
Complainant’s business. By using the <eskidji.com> domain name,
Respondent has intentionally attempted to attract, for vindictive reasons,
Internet users to a competitor of the
Complainant. Complainant alleges, upon
information and belief, that Respondent has registered this domain name with
only intent to
sell it to Complainant or to some third party or for the
purposes of preventing Complainant from using this domain name as its own.
Under all the aforesaid circumstances, Respondent has both registered and is
now currently using this domain name in bad faith.
The Response filed claims that Respondent
has been in the business of computer software and hardware marketing in Turkey
since 1997.
Respondent says it purchased the <eskidji.com> domain
name at a customer’s request and sold the name to the customer. Respondent did
not respond to the substantive claims of
the Complainant.
FINDINGS
I have found
that the domain name in question is identical or confusingly similar to Complainant’s
established trademark and service
mark, that the Respondent has no rights or
legitimate interest in the domain name and that the Respondent is using the
domain name
in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute
Resolution Policy (the “Rules”) instructs this 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.”
Paragraph
4(a) of the Policy requires that the Complainant must prove each of the
following three elements to obtain an order that
a domain name should be
cancelled or transferred:
(1)
the domain name registered by the Respondent is identical or confusingly
similar to a trademark or service mark in which the Complainant
has rights;
(2)
the Respondent has no rights or legitimate interests in respect of the domain
name; and
(3)
the domain name has been registered and is being used in bad faith.
Before turning to these three elements,
however, I must address an initial issue. Respondent claims that it has sold
the domain name
registration to a third party. However, the WhoIs lists the
Respondent as the current registrant of the disputed domain name. Unless
a
party takes steps to transfer the registration of a domain name in the WhoIs,
potential Complainants and others have no way of
knowing who is the registrant
of the name. Respondent is the registrant of the name and unless and until a
change to that registration
is made, Respondent is the proper party to the
proceedings. Respondent may well owe a fiduciary or contractual duty to a
person to
whom Respondent may have sold the domain name to inform that person
of proceedings such as this or to file a substantive response.
I
do not believe, however, that it was ever intended that a third party like the
Complainant or the Provider be required to “chase
down” allegations that a
registrant is no longer the owner of the domain name. Third parties are
entitled to rely on the WhoIs to
determine who is the registrant. That being
the case, I will decide this case based on the submissions before me.
Identical and/or Confusingly Similar
Except for the
addition of the “.com” requirement for the domain name, the disputed name is
identical to Complainant’s ESKIDJI trademark.
There is no question the name is
identical to Complainant’s mark. Complainant succeeds on the first element.
Rights or Legitimate Interests
I accept the Complainant’s arguments with
respect to this element. Viewing this situation in light of Para. 4(c) of the
Policy, what
Respondent has done to date is not a bona fide offering of goods
or services. The web site in fact advertises to sell the domain
name and links
to a competitor of the Complainant. This 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 name, nor has Respondent demonstrated any
trademark or service mark rights
to the name. Respondent has made no
non-commercial or fair use of the name. Again, the use of the name has been a
web site advertising
the name for sale and a link to a competitor of the
Complainant. Complainant, therefore, succeeds on the second element.
Registration and Use in Bad Faith
With
respect to this element, the paragraph 4(b) of the Policy reads:
“For the purposes of Paragraph 4(a)(iii), the
following circumstances, in particular but without limitation, 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 you have
registered or you have acquired the domain name primarily for the purpose of
selling, renting,
or otherwise transferring the domain name 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 your
documented out-of-pocket costs directly related to
the domain name; or
(ii) you have registered the domain name in order
to prevent the owner of the trademark or service mark from reflecting the mark
in
a corresponding domain name, provided that you have engaged in a pattern of
such conduct; or
(iii) you have registered the domain name primarily
for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have
intentionally attempted to attract, for commercial gain, Internet users to your
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 your web site or location or of a product or service on your web
site or location
In this case, Respondent has engaged in bad faith in at
least two ways. The fact that the only real use that has been made of the
domain
name is to put up a web site which offers to sell the domain name to third
parties, is evidence that Respondent has acquired
the domain name primarily for
the purpose of selling, renting or otherwise transferring the domain name to
Complainant or to a competitor
of the Complainant. This in itself, in this
circumstance, is bad faith, and also constitutes evidence of passive holding
which is
also bad faith.
In addition, however, Respondent has also included in the
web site a link to a competitor of Complainant. This demonstrates an intention
to attempt to attract for commercial gain, Internet users to the web site and
then to another on-line location for the purpose of
creating confusion. This
too, in this case, amounts to bad faith.
DECISION
For the
reasons set out above, I find for the Complainant, and I order that the
disputed domain name <eskidji.com> be transferred to the
Complainant.
Anne M. Wallace, Q.C., Panelist
Dated: May 15, 2002
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