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Enmersan Granit Mermer ve Inşaat Taahhut Sanayi ve Ticaret A.S. v. Ibrahim Sahin [2004] GENDND 1132 (13 August 2004)

1. The Parties

The Complainant is Enmersan Granit Mermer ve Inşaat Taahhut Sanayi ve Ticaret A.S., Izmir, Turkey, represented by Özlem Soylu, Turkey.

The Respondent is Ibrahim Sahin, Alma-ata, Kazakhstan.

2. The Domain Name and Registrar

The disputed domain name <enmersan.com> is registered with NameSecure.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 11, 2004. On June 14, 2004, the Center transmitted by e-mail to NameSecure.com (a VeriSign Co.) a request for registrar verification in connection with the domain name <enmersan.com>. On June 15, 2004, NameSecure.com (a VeriSign Co.) transmitted by e-mail 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 response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on June 16, 2004. 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 paragraphs 2(a) and 4(a) of the Rules the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 23, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was July 13, 2004. The Respondent submitted a response on July 10, 2004.

The Center appointed Alfred Meijboom as the sole panelist in this matter on July 20, 2004. The Panelist finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules.

4. Factual Background

The Complainant registered the trade name “ENMERSAN GRANIT MERMER VE INŞAAT TAAHUT SANAYI VE TICARET A.Ş.” on March 3, 1990, in Izmir, Turkey Under this trade name and under the trade name “ENMERSAN” and / or “ENMERSAN GRANIT”, as the Panelist understands the Complaint and Annex 4 to the Complaint, the Complainant trades in marble in Turkey and abroad.

The Respondent registered the domain name <enmersan.com> on May 17, 2004 (the “Domain Name”). On May 28, 2004, the website at enmersan.com displayed the following text (English translation of the original Turkish text):

“ANNOUNCEMENT

OUR COMPANY HAS TEMPORARILY SUSPENDED ITS ACTIVITIES DUE TO ITS ECONOMIC PROBLEMS.

FOR DETAILED INFORMATION

Name: E-mail

E-mail: [not reproduced]”

5. Parties’ Contentions

A. Complainant

According to paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the Domain Name, the Complainant is required to prove that the following three elements are met:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark to which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name was registered and is being used in bad faith.

The Complainant makes the following assertions with respect to these elements:

(i) The Domain Name is identical or confusingly similar to the trademarks in which the Complainant has rights.

“Mermer” means marble in Turkish. The domain enmersan.com is identical to the trade name “ENMERSAN GRANIT MERMER VE INŞAAT TAAHUT SANAYI VE TICARET A.Ş.”, which is registered by the Complainant. Therefore, the Domain Name is identical to the registered trade name “Enmersan” in which the Complainant has rights.

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name.

The Respondent does not trade or offer goods or services under the Domain Name or a similar trademark. The Respondent’s business has no connection with the name “ENMERSAN GRANIT MERMER VE INŞAAT TAAHUT SANAYI VE TICARET A.Ş.” nor is he commonly known by the domain name enmersan.com. Furthermore, the Respondent gave a fraudulent address when he registered the Domain Name. Therefore the Respondent has no rights or legitimate interests in respect of the Domain Name.

(iii) the Domain Name was registered and is being used in bad faith.

On May 18, 2004, the Respondent asked for money in an e-mail he sent to the advertising department of the Complainant’s parent company, in which the Respondent threatened the Complainant by stating he would display the following statement on the website at “www.enmersan.com” if the Complainant would not “get interested”: “We have suspended our activities due to the severe economic crisis we have experienced” (English translation of the original Turkish text). On May 28, 2004, the text mentioned under paragraph 4 was displayed on the website at “www.enmersan.com”. Therefore it is obvious that the Respondent has made illegitimate use of the domain name and has chosen the Domain Name purely for the purpose of selling or renting the domain name.

B. Respondent

The Respondent has put forward the following arguments to refute the Complaint:

1. The real name of the Complainant is “ENMERSAN GRANIT MERMER VE INŞAAT TAAHUT SANAYI VE TICARET A.Ş.” and not “Enmersan”.

2. The Complainant has no need for the domain name enmersan.com, since it can use <enmersan.com.tr>.

3. The Respondent has not asked the Complainant for money.

4. The Complainant has to prove that the Respondent made a profit by using the Complainant’s name.

6. Discussion and Findings

A. Identical or confusingly similar to a mark which Complainant has rights in

The Internet Corporation for Assigned Names and Numbers (ICANN) has based the Policy largely on the Report on the First WIPO Internet Domain Name Process (“wipo2.wipo.int/process1/report/index.html”) of 1999, which contained recommendations for, inter alia, an administrative system for resolving domain name disputes. According to the Report, it was premature to extend the notion of abusive registration beyond the violation of trade marks and service marks (hereinafter jointly referred to as “trademarks”). The Second WIPO Internet Domain Name Process of 2001 addressed the issue whether or not trade names should be brought under the protection of the Policy. The Report of this Second WIPO Internet Domain Name Process (“wipo2.wipo.int/process2/report/index.html”) recommends not to take action in the area of trade names, and ICANN has not changed the Policy in this respect.

Further, paragraph 3(viii) and (ix) of the Rules require the Complainant:

a. to specify the trademark(s) on which the Complaint is based and, for each mark, describe the goods or services, if any, with which the mark is used; and

b. to describe, in accordance with the Policy, the grounds on which the Complaint is made, in particular the manner in which the Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights.

According to the explicit wording of paragraph 4(a) of the Policy and paragraphs 3(viii) and 3 (ix) of the Rules, the Complainant should have rights in a trademark to which the Domain Name is identical or confusingly similar. In the light of the Internet Domain Name Processes mentioned above, the Panel is of the opinion that the Policy and Rules do not leave room for extending trademarks in paragraph 4(a) of the Policy and paragraphs 3(viii) and 3 (ix) of the Rules to include trade names (which are not also used as non registered trademarks). Therefore, the Panel finds that the Policy does not apply to domain names that allegedly infringe trade names or company names.

The Complainant has registered the trade name “ENMERSAN GRANIT MERMER VE INŞAAT TAAHUT SANAYI VE TICARET A.Ş.” and has legitimate rights to this trade name and possibly to the trade names “ENMERSAN” and/or “ENMERSAN GRANIT”. The Complainant has not, however, stated that it registered “Enmersan” – or a similar sign – as a trade mark and has not claimed “Enmersan” is a non registered trademark, neither can it be deduced from the facts that Complainant uses or used “Enmersan” or a similar sign as a (non registered) trademark.

By Administrative Panel Procedural Order of July 28, 2004, the Panelist requested that the Complainant provide arguments and evidence indicating that it had either registered “enmersan” or a name containing “enmersan” as a trademark, or that it had acquired unregistered trademark rights in the word “enmersan” or a name containing “enmersan”. On August 4, 2004, the Complainant timely replied by repeating its earlier statements. The Panel understands that the Complainant has a valid trade name “ENMERSAN GRANIT MERMER VE INŞAAT TAAHUT SANAYI VE TICARET A.Ş.”, but that the Complainant does not have a trademark which can serve as ground for the claim.

Consequently, the Panel finds that the Domain Name is not identical or confusingly similar to a trademark or service mark to which the Complainant has a right. As a result of that there is no need to assess the other requirements of paragraph 4(a) of the Policy.

B. Additional remarks

Although the Complaint must be denied, the Panel notes that if the Policy would have incorporated trade name infringement as cause of action, the registration and use of the Domain Name by the Respondent would probably have resulted in the Panel directing the Domain Name to be transferred to the Complainant for the following reasons:

1. the Complainant sufficiently demonstrated that it has rights in the trade names “ENMERSAN GRANIT MERMER VE INŞAAT TAAHUT SANAYI VE TICARET A.Ş.” and that it is also known as “ENMERSAN” and / or “EMERSAN GRANIT”. The Domain Name is confusingly similar to these trade names; and

2. the Respondent does not have any right or legitimate interest in respect of the Domain Name because he apparently registered the Domain Name with the purpose to extort a financial compensation for the transfer of the Domain Name from the Complainant. In this respect the Panel is of the opinion that the e-mail of the Respondent of May 18, 2004 (see paragraph 5A above) should be understood as a threat that a statement which could be regarded detrimental to Complainant would be published on the website under the Domain Name if Complainant would not pay the Respondent a certain sum of money; and

3. for the foregoing reason, the Respondent registered and (by publishing the detrimental statement of paragraph 4 above on the website under the Domain Name) used the Domain Name in bad faith.

The Panel considers the fact that the Respondent registered the Domain Name with the apparent intention to threaten the Complainant as a serious offense which in principle justifies transfer of the Domain Name.

7. Decision

For the forgoing reasons the Complaint is denied.

Alfred Meijboom
Sole Panelist

Dated: August 13, 2004