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Tvist Giyim Sanayi Pazarlama Ve Ticaret A.S. v. Machka Company C/O Yenidünya,Yasin [2005] GENDND 1910 (28 November 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Tvist Giyim Sanayi Pazarlama Ve Ticaret A.S. v. Machka Company C/O Yenidünya,Yasin

Case No. D2005-0957

1. The Parties

The Complainant is Tvist Giyim Sanayi Pazarlama Ve Ticaret A.S., Istanbul, Turkey, represented by Ms. Eyüboglu, Attorney at Law, Ankara, Turkey.

The Respondent is Machka Company, Yasin Yenidünya, Istanbul, Turkey, represented by Ms. Ozdogan, Attorney at Law, Istanbul, Turkey.

2. The Domain Name and Registrar

The disputed domain name <machka.com> is registered with Intercosmos Media Group d/b/a directNIC.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 7, 2005. On September 7, 2005, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On September 13, 2005, Intercosmos Media Group d/b/a directNIC.com 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. 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 October 5, 2005. In accordance with the Rules, paragraph 5(a), the extended due date for Response was November 1, 2005. The Response was filed with the Center on October 31, 2005.

The Center appointed Dilek Ustun as the sole panelist in this matter on November 8, 2005. 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 a Turkish Company and has the following trademarks registered by the Turkish Patent Institute:

- Trademark registration MACHKA, registered with the number of 99 018178 in Turkey on November 4, 1999, for the goods in class 25.

The Complainant has filed trade and service mark applications for the following trademarks before the Turkish Patent Institute and OHIM:

- Trademark application MACKA, applied with the number of 2002/12332 in Turkey on 21 May 2002 for the goods and services in classes 14,18,24,25,35,37,40 and 42. The filing date of the trademark 2002/12332 of the Complainant is before the registration date of the domain name of the Respondent. This trademark has been filed by the Complainant’s brother company IPEKYOL GIYIM SANAYI VE PAZARLAMA TICARET A.S. and transferred to the Complainant on February 10, 2004.

- Trademark application MACHKA, applied with the number of 2004/02708 in Turkey on February 11, 2004 for the goods and services in all of the classes.

- Community trademark application MACHKA, applied with the number of 003965381 at OHIM on August 2, 2004, for the goods in classes 3,14,18,20,24,25,26 and 35.

The Complainant has also registered the domain name <machka.com.tr> by “Middle East Technical University, the country code ‘.tr’ domain name Administration” Authority.

The disputed domain name <machka.com> was registered by the Respondent on August  5, 2002.

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), (iii), Rules, paragraphs 3(b)(viii), (b)(ix)(1), (b)(ix)(2), (b)(ix)(3)

The Complainant asserts that the Respondent’s domain name <machka.com> is identical or confusingly similar to their registered trade and service marks and their trade and service marks which are on the phase of application listed above, in which they have the right to use.

The Complainant also asserts that the trademark MACHKA is well-known in Turkey.

(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 states that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant also states that the Respondent is neither a licensee of the Complainant, nor has obtained a permission to use the Complainant’s trademarks. The Complainant adds that the Respondent has not registered the name “machka” as a trademark in Turkey or elsewhere and the Respondent has never been known by this name.

The Complainant also stated that the company name of the Respondent is not a valid name and it not registered at the Company Register.

(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 states that the domain name of Respondent <machka.com> was registered primarily for the purpose of selling.

The Complainant’s trademark has long been established in the market and widely known in the Society. The Complainant asserts that the Respondent will attract the Internet users, knowing this trademark, to his web site and by this way he will take unfair commercial gain.

The Complainant asserts that the Respondent should be found to have acted in bad faith by the “passive holding” of the disputed domain name.

B. Respondent

(a) Whether 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))

The Respondent asserts that the domain name <machka.com>, registered on August 5, 2005, which is far before the date the Complainant obtained trademark rights to MACHKA trademarks.

The Respondent accepts that the Complainant has official rights only to the trademark MACHKA registration No: 99 018178, which he obtained through assignment and denies that the trademark MACHKA is well-known in Turkey.

(b) Whether the Respondent has rights or legitimate interests in respect of the domain name;

(Policy, paragraph 4(a)(ii))

The Respondent stated that the Respondent has registered the subject domain name for curiosity and to improve his own computer and Internet skills.

The Respondent also explained that he is an old Macedonian native. In Macedonia, Serbo – Croatian is one of the languages spoken and everybody in the Respondent’s family can speak Serbo – Croatian in everyday dialogues. In Serbia – Croatian “machka” connotes “cat”. The Respondent heard the word “machka” before and knew what it means.

The Respondent accepts that he is not using the domain name <machka.com> actively right now, but is planning to do so. The reason why the Respondent is not using the web site is because he is a student and unable to afford activation of the web site.

The Respondent asserts that he has a right and a legitimate interest in registering the domain name <machka.com>.

(c) Whether the domain name has been registered and is being used in bad faith.

(Policy, paragraph 4(a)(iii))

The Respondent asserts that he is not in bad faith. He has registered the domain name due to his vocational concern. He do not intent to sell it and he cannot be accused of making commercial gain through the domain name <www.machka.com> as it is not active.

The Respondent asserts that he has no intention to make commercial profit, to dilute or tarnish the Complainant’s trademark, or to divert consumers from the Complainant’s trademark.

The Respondent seeks a finding of reverse domain name hijacking against the Complainant under Paragraph 15(e) of the Policy.

6. Discussion and Findings

Paragraph 15(a) of the Rules requires the 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.

Under paragraph 4(a) of the Policy, a Complainant bears the burden of showing:

(i) That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) That the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) That the domain name has been registered and is being used by the Respondent in bad faith.

A. Rights in a trademark

Complainant has proven that it owns the trademark comprising solely the mark MACHKA.

B. Identical or Confusingly Similar

The trademark is included in the disputed domain name. The suffix ‘.com’ is incidental to domain name and cannot serve to distinguish it.

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 Case No. D2000-0003 and ASSA ABLOY AB v. P D S AB, WIPO Case No. D2000-0442). Therefore, the Respondent’s arguments in relation to the trademark applications(s) of the Complainant are found unacceptable.

The Panel finds that the Complainant has trademark/service mark rights in the name MACHKA. 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 in which the Complainant has rights.

In result, the Panel therefore concludes that the Domain Name <machka.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.

C. 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 the Respondent demonstrated any trademark or service mark rights in the name. Further, the Respondent hasn’t made 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.

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

C. Registered and Used in Bad Faith

The Policy Paragraph 4(b) requires evidence of Respondent’s bad faith registration and use.

The Panel makes reference to Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

Complainant has not submitted evidence proving that Respondent on its own initiative contacted Complainant in order to sell the domain name, before Complainant contacted Respondent.

The Panel in this connection makes reference to Barlow Lyde & Gilbert v. The Business Law Group, WIPO Case No. D2005-0493, where the Panel stated:

“Standing alone, there is nothing wrong with offering to sell a domain name at a high price. It is a very common business practice. Respondent did not initiate contact with Complainant. It responded to contact from Complainant concerning the domain name. There is nothing here to show that Respondent took any interest in Complainant prior to being contacted by it. The Panel finds that Complainant has failed to establish that Respondent registered the disputed domain name with the intention to sell it to Complainant.”

The Panel finds that there is no indication that Respondent was aware of or interested in Complainant at the time of registration, or later, prior to the contact initiated by Complainant. The evidence does not show that Complainant’s trademark was (or indeed is now) well-known in Turkey, where Respondent is based, at the time the domain name was registered. The attractive price mentioned by Respondent is not in itself a proof of registration in bad faith.

The Respondent has explained he is Macedonian heritage, and “machka” has a generic meaning in Serbo-Croatian (“cat”). According to the Respondent he registered the domain name to exercise his computer related interest, and he had not the Complainant in mind.

The Panel can thus not see that Complainant has proved on a balance of probabilities that Respondent must have been familiar with Complainant’s marks or have tried to benefit from Complainant’s marks and Complainant’s goodwill by creating a likelihood of confusion.

Complainant’s second argument is that Respondent should be found to have acted in bad faith by the “passive holding” of the disputed domain name.

A number of panel decisions, beginning with Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, decided February 18, 2000, have found bad faith on the basis of domain names which have been registered but not used by the registrant. However, non-use of a domain name does not on its own constitute bad faith. Other factors must be involved. An important element is that the Complainant’s mark is sufficiently well known such that a registrant might reasonably be inferred to have registered an identical or confusingly similar domain name in the expectation of taking advantage of the trademark holder. As discussed above, Complainant has not demonstrated that Respondent should have had notice of its trade mark rights when it registered the disputed domain name. Complainant has not demonstrated that its mark was well known. In the circumstances of this proceeding, the Panel does not consider that Respondent’s failure to use the disputed domain name is sufficient evidence that it registered it in the expectation of taking unfair advantage of Complainant.

Thus, the Panel finds that Complainant has not established Respondent’s bad faith according to Paragraph 4(b).

The Panel notes that this finding is not any way meant to prejudice the Complainant’s eventual filing for trademark infringement in national courts. In national courts a wider range of evidence, such as examination of Parties and witnesses, is available and, as opposed to the UDRP procedure, there will be an oral hearing.

E. Reverse Domain Name Hijacking

Paragraph 1 defines reverse domain name hijacking as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” See also paragraph 15(e). To prevail on such a claim, the Respondent must show that the Complainant knew of the Respondent’s unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the Complaint in bad faith. See e.g., Sydney Opera House Trust v. Trilynx Pty. Ltd., WIPO Case No. D2000-1224.

In the circumstances the Panel declines to make a finding of Reverse Domain Name Hijacking.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Dilek Ustun
Sole Panelist

Dated: November 28, 2005