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Dedeman Holding v. Dedeman Hakan [2004] GENDND 1331 (22 October 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Dedeman Holding v. Dedeman Hakan

Case No. D2004-0573

1. The Parties

The Complainant is Dedeman Holding of Istanbul, Turkey, represented by Mr. Murat Dedeman, Turkey.

The Respondent is Dedeman Hakan of Ankara, Turkey.

2. The Domain Name and Registrar

The disputed domain name <dedeman.com> is registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 2, 2004. On August 2, 2004, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On August 3, 2004, Go Daddy Software transmitted by email 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 August 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 7, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was September 27, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 28, 2004.

The Center appointed Dilek Ustun as the sole panelist in this matter on October 11, 2004. 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 well-known as “Dedeman Group of Companies”. Founded in the 1910s, Dedeman Group is involved in mining, construction and tourism sectors in Turkey.

Complainant has registered a number of trade and service marks comprising the mark DEDEMAN in the Turkish Patent Institute. DEDEMAN is also Complainant’s main trade name. The main website of the Complainant is to be found at “www.dedeman.com.tr”.

5. Parties’ Contentions

A. Complainant

(A) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(Policy, paragraph 4(a)(i), Rules, paragraphs 3(b)(viii), (b)(ix)(1))

The Complainant contends that it has registered trademark/service marks in its name and that the Domain Name, which comprises its name “dedeman” together with the generic ‘.com’ suffix, is identical or confusingly similar to its trademarks .

The complainant contends that Dedeman Holding has a Country Code Top Level Domain on the internet <dedeman.com.tr> at which their company is introduced.

(B) The Respondent has no rights or legitimate interests in respect of the domain name;

(Policy, paragraph 4(a)(ii), Rules, paragraph 3(b)(ix)(2))

The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent is not related to “Dedeman Holding” or to any other business/person named (or that has a confusingly similar name to) Dedeman Holding or its subsidiaries.

(C) The domain name was registered and is being used in bad faith.

(Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))

The Complainant contends that the Respondent registered the Domain Name in bad faith and is using it in bad faith.

The Complainant’s trademark has long been established in the market and widely known in the Society. In the absence of evidence or even an assertion by the Respondent to the contrary, it should be taken into consideration that the Respondent intends to register dozens of domain names identical to various well-known names of companies, simply by knowing that they correspond to a trademark.

Additionally, the Respondent registered the Domain Name primarily for the purpose of selling it for a profit or with a view to attracting, for commercial gain, Internet users to its website by creating confusion with the Complainant’s trademarks within the meaning of paragraph 4(b)(iv) of the Policy.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

General

According to Rules paragraph 5(b)(i) “(t)he response shall (...) (r)respond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain-name holder) to retain registration and use of the disputed domain name (...)”. In case of a default, under Rules paragraph 14(a), the Panel “shall proceed to a decision on the complaint”, and under paragraph 14(b) the Panel “shall draw such inferences there from as it considers appropriate”.

Thus, the Respondents default would indicate that the Complainant’s assertions are sufficient ground for the Panel to proceed to a default decision in its favor. However such automatic consequence is qualified under the Policy, because “the complainant must prove that each of these three elements are present”. Policy, paragraph 4(a) in fine.

According to paragraph 4(a) of the Policy, the Complainant must prove that;

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

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

(iii) The Domain Name has been registered in bad faith and is being used in bad faith.

A. Identical or Confusingly Similar

Complainant has proven that it owns the trademark/service mark(s) comprising solely the mark DEDEMAN and a number of combinations comprising the mark DEDEMAN.

The trademark is included in the disputed domain name. The suffix <.com> is incidental to domain name and cannot serve to distinguish it. Additionally, by the time the Respondent registered the subject domain name in his own name, the Complainant was already a well-known establishment in Turkey.

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 (Reference to: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Cases No. D2000-0003 and ASSA ABLOY AB v. P D S AB, WIPO Case No. D2000-0442).

The Panel finds that the Complainant has trademark/service mark(s) and trade name rights in the name “Dedeman”. Since the Domain Name comprises the Complainant’s trademark and the generic ‘.com’ suffix, the Panel finds that the Domain Name is identical to a trademark/service mark and a trade name in which the Complainant has rights.

The Panel therefore finds that the domain name <dedeman.com> is identical to Complainant’s trademark/service mark and as a consequence, the action brought by Complainant meets the requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Viewing this situation in light of paragraph 4(c) of the Policy, what 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 name, nor has Respondent demonstrated any trademark or service mark rights in the name. Respondent has made no non-commercial or fair use of the name.

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 Name. The Complainant showed that the Respondent has neither a license nor any other permission to use the domain name in dispute. Since the Respondent did not file a response to the complaint, there is no ground which could make the Panel believe in the possibility of any association, right or interest of the Respondent with the name “Dedeman”.

The Panel therefore concludes that Respondent has no rights or legitimate interests in the domain name <dedeman.com> and that the requirement of the Policy paragraph 4(a)(ii) is satisfied.

C. Registered and Used in Bad Faith

When the Respondent registered the Domain Name, he knew that the name was the name of the Complainant, a well-known Turkish association. The Respondent is most probably a Turkish citizen as the claimed name of the Respondent “dedeman, hakan” are both Turkish names. He is therefore assumed to live within the geographical area where DEDEMAN is a well-known mark and DEDEMAN products and services are widely publicized in the media and in the market, which are indeed in the Respondent’s province of claimed residence. Domain name records show that Respondent claims an address located in Ankara, the capital of Turkey. A copy of the complaint was returned by the Postal Service due to Respondent’s non-presence in the claimed address. This was asserted by Complainant and ran undisputed by Respondent. This leads the Panel to conclude that the Respondent must have known about the products, services of the Complainant, and its fame on the Turkish market.

The Complainant contends further that the intent of the Respondent in registering the domain name was to resell it to the Complainant. No negotiation was engaged in.

Although the fact of default would allow the Panel to immediately conclude that the purpose of the Respondent’s registration was to sell or rent the domain name, the fact that the Complainant does not mention any precise offer by Respondent, and specifically that Complainant does not contend that any precise sum for the transfer of rights in the domain name was asked by Respondent, leads the Panel to conclude that the presence of the circumstance described in the Policy paragraph 4(b)(i) was not demonstrated by Complainant.

Nevertheless, the Policy paragraph 4(b)(ii) allows a Panel to determine that bad faith registration is present if such registration was made to prevent the trademark owner from reflecting its trademark or service mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct. However, as the Complainant has provided no evidence that Respondent has registered multiple domain names corresponding to trademarks, bad faith under this element is not proven.

The Respondent has not done anything with the domain name in this case: there is no related website, or offer to sell a product or service, and the Respondent is not in competition with the Complainant. Nonetheless, the special circumstances referred to in the Policy at 4(b)(i) to (iv) do not themselves in all cases require positive action after registration. Furthermore, it is clear from the wording of paragraph 4 of the Policy that bad faith is not limited to the circumstances listed in the Policy at 4(b) (‘the following circumstances in particular but without limitation’). It was correctly pointed out in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, that inaction after bad faith registration can, in certain circumstances, suffice to establish registration and use in bad faith. All the circumstances, taken together, need to be assessed to determine the question of bad faith. In this case the following circumstances are relevant:

- that the mark is a well-known mark in multiple jurisdictions, including in Turkey and other Turkish-speaking jurisdictions;

- that the Respondent has no legitimate claim, right or interest in the domain name;

- that there is no evidence of actual or intended use in good faith; and

- that the Respondent has not replied to the Complaint.

Finally, the Panel agrees that bad faith is indicated in this case by the Respondent providing false contact information and most probably false contact name in the domain name registration. While not an express ground of bad faith under paragraph 4(b), false contact information is widely recognized as an indication of bad faith in domain name registration. The Panel has confirmed the conclusion of other UDRP Panels: that the address provided by Respondent has actually no apparent connection to the Respondent. Grupo Televisa, S.A. v. Party Night, Inc. a/k/a Peter Carrington, WIPO Case No. D2003-0796; Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775.

For the foregoing reasons, the Panel finds that the domain name <dedeman.com> has been registered and used in bad faith by the Respondent.

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 name, <dedeman.com> be transferred to the Complainant.

Dilek Ustun
Sole Panelist

Dated: October 22, 2004