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Oznur Kablo San. v. Mesut Yucel [2004] GENDND 1365 (11 October 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Oznur Kablo San. v. Mesut Yucel

Case No. D2004-0662

1. The Parties

The Complainant is Oznur Kablo San, of Karakoy, Istanbul, Turkey, represented by Mr. Yucel Karakis, Turkey.

The Respondent is Mr. Mesut Yucel, of Karakoy, Istanbul, Turkey, represented by Mr. Abdullah Sutcuoglu, Turkey.

2. The Domain Name and Registrar

The disputed Domain Name <oznurkablo.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 19, 2004. On August 20, 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 20, 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. On August 24, 2004, the Center requested clarification about the disputed Domain Name and Section 15 of the Complaint. The Complainant sent a reply on the same day. The Center verified that 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 August 24, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was September 13, 2004. The Response was filed with the Center on September 13, 2004.

The Center appointed Dilek Ustun as the sole panelist in this matter on September 28, 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

Complainant is a power cable factory in Turkey and has registered the trademark “OZNUR” under international classes 6 and 9 for the goods “cables”. The registration date is January 15, 1988. “Oznur” is also Complainant’s trade name. The main website of the Complainant is to be found at “www.oznurkablo.com.tr”. The term “kablo” which follows the trademark / trade name “oznur” is the Turkish translation of “cable”.

The Respondent’s website, to which the Domain Name is connected, is re-directed to “www.hes.com.tr”, which is owned by one of the competitors of the Complainant who also appears to be unconnected to the Respondent.

5. Parties’ Contentions

A. Complainant

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 rights in its name and that the Domain Name, which comprises its name “Oznurkablo” together with the generic ‘.com’ suffix, is identical or confusingly similar to its trademark.

The Complainant contends that Oznur Kablo has a Country Code Top Level Domain on the internet “www.oznurkablo.com.tr” at which their company and products are introduced.

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 with Oznur Kablo or with any other business/person named (or that has a confusingly similar name to) Oznur Kablo.

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. Additionally, the Respondent registered the Domain Name primarily for the purpose of selling it and the Respondent registered the Domain Name 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 contends that the name “Oznurkablo” is not an internationally or locally well-known name;

The Respondent contends that “Oznur” is not a unique name and Complainant has no rights on this name;

The Respondent further contends that he did not ask for money and was not aware of any interest in the Domain Name <oznurkablo.com>.

6. Discussion and Findings

General

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

In the trademark context, it is normal to assess such issues by reference to the categories of goods/services involved. Complainant has registered trademark “OZNUR” under international classes 6 and 9 for the goods “cables”. Accordingly, the fact that there may be a financial establishment for example which uses the name, does not prevent the Complainant having relevant rights in a mark used for another field of activity. In this case, the Panel found that the trademark “OZNUR” is distinctive for the goods “cables” under international classes 6 and 9.

By the time the Respondent registered the disputed Domain Name in his own name, the Complainant was already a well-known establishment in Turkey. It is generally understood that a right in a trademark can be acquired with, or without, registration. This is the case when the mark has been established by use in 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 and trade name rights in the names “OZNUR” and “OZNUR KABLO”. 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 in which the Complainant has rights.

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. The website in fact directs 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 Domain Name has been merely a re-direction to a website owned by a well-known competitor of the Complainant.

The Respondent has not provided 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. In the absence of evidence brought by the Respondent, the Panel cannot find a legitimate interest.

The Panel therefore concludes that Respondent has no rights or legitimate interests in the Domain Name <oznurkablo.com> and that the requirement of Paragraph 4(a)(ii) of the Policy 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.

When the disputed Domain Name is directed to a website owned by a well-known competitor of the Complainant, the Respondent’s bad faith has also been proved. It is found by the Panel that the Respondent had re-directed the disputed Domain Name to a website at “www.hes.com.tr”, a direct competitor of the Complainant. All these acts demonstrate that the Respondent, by using the disputed Domain Name, had intentionally attempted to attract, for commercial gain, Internet users to the website at the disputed Domain Name, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website at the disputed Domain Name or the products on the website of the disputed Domain Name, as provided in the Policy, paragraph 4(b)(iv).

On the basis of that finding, it is not necessary for the Panel to consider other allegations as to bad faith registration and use put forward by the Complainant.

The Panel finds that the Domain Name was registered in bad faith and is being used in bad faith within the meaning of paragraphs 4(a)(iii) and 4(b)(i) of the Policy.

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, <oznurkablo.com> be transferred to the Complainant.

Dilek Ustun
Sole Panelist

Date: October 11, 2004