Case No. D2009-0767
The Complainant is Horoz Lojistik ve Kargo Hizmetleri Tic.
A.S. of Istanbul, Turkey, represented by Gür Law & IP Firm, Turkey.
The
Respondent is Murat Yikilmaz of Istanbul, Turkey, represented by The Muscovitch
Law Firm, Canada.
2.The Domain Name and
Registrar
The disputed domain name <horoz.com> is registered
with Moniker Online Services, LLC.
3.Procedural History
The Complaint
was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 11, 2009.
On June 11, 2009, the Center transmitted by email to Moniker Online
Services, LLC a request for registrar verification in connection with the disputed
domain name. On June 12, 2009, Moniker Online Services, LLC
transmitted by email to the Center its verification response disclosing
registrant and contact information for the disputed domain name, which differed
from the named Respondent and contact information in the Complaint. The Center
sent an email communication to the Complainant on June 23, 2009
providing the registrant and contact information disclosed by
the Registrar, and inviting the Complainant to submit
an amendment to the Complaint. The Complainant filed an
amended Complaint on June 24, 2009. The Center verified that
the amended Complaint satisfied the formal requirements of the Uniform Domain
Name Dispute Resolution Policy (the "Policy" or "UDRP"), 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 June 25, 2009.
In accordance with the Rules, paragraph 5(a), the due date for Response was July 15, 2009.
The Response was filed with the Center July 14, 2009.
The Center
appointed Gökhan Gökçe, Diane Cabell and Dr. Clive Trotman as panelists in this
matter on August 14, 2009. The Panel finds that it was properly
constituted. Each member of 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.
Together with
the case papers, the Center forwarded to the Panel a submission that had been
received from the Complainant in the nature of a Supplemental Communication,
and a reply to that from the Respondent.
4.Factual Background
According to
the Complainant, Horoz Lojistik ve Kargo Hizmetleri Tic. A.S. is a major
Turkish national and international transport and logistics company. The
company was founded by Mehmet Emin Horoz in 1942. Recent annual turnover has
been in the region of USD 233 million.
The
Complainant owns the following trademarks:
HOROZ with
device, Turkish Patent Institute, No. 2000 10974, registered May 5, 2000,
classes 35, 37, 39;
HOROZ YATIRIM
HOLDING LOJISTIK KARGO TASIT SERVIS SEKIL with device, Turkish Patent
Institute, No. 2003 24983, registered September 19, 2003, classes 4,
12, 35, 37, 39.
The
Complainant has also owned the domain name <horoz.com.tr> since
June 18, 1998. The disputed domain name was registered by the
Respondent on January 22, 2002.
According to the
Respondent he is a resident of Istanbul, Turkey. He is in the business of
registering descriptive and generic domain names in the English and Turkish
languages.
5.Parties' Contentions
A. Complainant
The
Complainant contends that the disputed domain name is identical or confusingly
similar to a trademark or service mark (hereafter, trademark) in which it has
rights. Copies of registration documents for the trademarks listed in section
4 above have been submitted in evidence. The Complainant has been operating in
Turkey since 1942, was named after its founder, and Horoz is a well-known brand
name.
The
Complainant further contends that the Respondent does not have rights or
legitimate interests in the disputed domain name. The Respondent does not have
any relevant registered trademark or other source of rights. The Respondent
cannot fulfill any of the illustrative requirements of paragraph 4(c) of the
Policy that could demonstrate rights in the disputed domain name.
The
Complainant further contends that the disputed domain name was registered and
is being used in bad faith. Visitors to the corresponding website are offered
links to goods and services in the Complainant's sphere, such as shipping and
cargo services.
B. Respondent
The Respondent
denies the Complaint and submits extensive contentions, an affidavit and
documentation, the thrust of which includes the following.
The
Complainant's company has about 60 employees and is not particularly large or
well known in Turkey. The Complainant's clients are predominantly other
commercial companies rather than the general public.
Horoz, the
last name of the Complainant's owner, is a common last name in Turkey. The
word Horoz translates to "rooster" or "cock", and the Complainant's trademark
bears an illustration of a rooster. About 87 Turkish trademark registrations
or applications include the word "horoz" and only two belong to the Complainant.
Turkish media company Horoz Medya has registered trademarks for HOROZ with a
rooster logo.
The word "rooster"
is widely used in the United States of America in business names and
trademarks.
The Respondent
contends that he registered the disputed domain name in 2002, and it was not
challenged prior to receipt of the Complaint. By affidavit he says the
disputed domain name was chosen because "horoz" by its meaning is an innocuous
animal name. It keeps company with other Turkish words he has registered
before or since as domain names that translate to: "animal", "animals", "cat", "rabbit",
"squirrel" and "fly". He owns over a thousand descriptive or generic domain
names.
The Respondent
says that he has never cybersquatted and has consistently avoided registering other
than generic and descriptive domain names. Had he been contacted by the
Complainant, he would have taken immediate steps to ensure that no advertisements
appeared on the website that related to the Complainant's area of business, and
did so. The advertisements that the Complainant complains of were
automatically generated by Skenzo, a domain name traffic monetization company.
In the six years prior to using Skenzo, the mistake had not happened.
The Respondent
says that he has rights or legitimate interests in the disputed domain name.
The word "horoz" is not unique but common and also a common Turkish surname.
The Respondent need only show that he has a right or legitimate interest, not a
better one than the Complainant. It has been long held in precedent that the
first person to register a descriptive or generic domain name in good faith is
entitled to it and this is considered a legitimate interest. The Policy is confined
to instances of cybersquatting or cyberpiracy and does not extend to trademark
disputes.
The Respondent
denies that the domain name was registered and is being used in bad faith. His
accidental portrayal of logistics-related advertising does not necessarily
demonstrate bad faith registration. The disputed domain name is generic and
descriptive and the Respondent, with over one thousand domain names, does not
have a background of cybersquatting. The Respondent submits in effect that the
Policy is not intended to deal with trademark infringement disputes, which are
for the courts or for arbitration.
The UDRP is
not intended to serve as a means of determining who has "better" or "superior"
rights in a domain name, that is to say, competing legitimate interests are
outside the scope of the UDRP. Domain names comprising generic or descriptive
words or phrases will generally not be transferred to a complainant just
because a complainant has a registered trademark.
There is no
evidence that the Respondent registered the domain name primarily in order to
transfer to the Complainant, nor is there any evidence that the Respondent has
engaged in a pattern of such conduct, nor is there any evidence of any attempt
to sell the domain name to the Complainant. Accordingly, all that is left is
the recent, temporary, and unintentional use of logistics related advertising
links in connection with a domain name that is otherwise descriptive and
generic.
The Respondent
submits that he had never heard of the Complainant. There is no evidence he
specifically targeted the Complainant, and therefore no bad faith. There is no
evidence that the Complainant is famous or that the Respondent ought to have
been aware of the Complainant, and no basis for a finding of constructive
knowledge, a concept repeatedly rejected by panels. Cases finding constructive
knowledge have been limited to specific situations in which the trademark is
famous.
The Respondent
cited and quoted from numerous previous UDRP decisions that he would like to be
considered as precedent.
6.Discussion and
Findings
Procedural matters
In accordance
with paragraph 12 of the Rules the Panel may, in its sole discretion, ask
either or both of the Parties to provide additional information, through the
Center and copied to the other Party. The principles of the Policy envisage
that the Parties shall present their case fully in the first instance and that
any invitation to provide a supplementary communication shall be exceptional
and of necessity. As said by presiding panelist the
Hon. Sir Ian Barker QC in Grove Broadcasting Co. Ltd v. Telesystems
Communications Limited, WIPO Case No. D2000-0703: "A Complainant should "get
it right" the first time and should have provided all the information necessary
to prove its case from the material contained in the Complaint and its annexes
alone. There is no right of reply under the Rules."
The Panel has found no need to request any additional
material from either party. Nevertheless it would appear that the Center received
from the Complainant a submission in the nature of a Supplemental
Communication to the Panel, and that a reply to that was received from the
Respondent. These were forwarded to the Panel to deal with in its sole discretion.
They were not requested and have not been considered.
Paragraph 4(a) of the Policy states that the Respondent
is required:
to
submit to a mandatory administrative proceeding in the event that a third party
(a ‘complainant') asserts to the applicable Provider, in compliance with the
Rules of Procedure, that
(i) your domain name is identical or confusingly
similar to a trademark or service mark in which the complainant has rights;
and
(ii) you have no rights or legitimate interests in
respect of the domain name; and
(iii) your domain name has been registered and is being
used in bad faith."
The Complainant has made the relevant assertions as above.
The dispute is properly within the scope of the Policy and the Panel has
jurisdiction to decide the dispute.
A.Identical
or Confusingly Similar
The Complainant is required to prove that it has rights in
a trademark, and that the disputed domain name is identical or confusingly
similar to that trademark.
Turkish
trademark No. 2000 10974 exhibited in evidence comprises the word HOROZ in
upper case preceded by a square device, the size of another letter, framing the
head of a chicken. The Panel finds, within the meaning of the Policy and in
this particular case, that this trademark comprises essentially the word "horoz"
and that the Complainant has rights in that trademark as a word. The disputed
domain name is <horoz.com>, of which ".com" may be disregarded for the
determination of confusing similarity under the Policy. The Panel finds the
remainder of the disputed domain name to be confusingly similar to a trademark
in which the Complainant has rights in the terms of paragraph 4(a)(i) of the
Policy. The Panel finds it sufficient to proceed on the finding in respect of this
trademark alone.
B.Rights or
Legitimate Interests
The Complainant is required to prove that the Respondent
does not have rights or legitimate interests in the disputed domain name. The
Complainant has asserted prima facie that this is so, and that the
Respondent cannot fulfill any of the illustrative requirements of paragraph
4(c) of the Policy.
The Panel finds that the Respondent cannot reasonably claim
to be commonly known by the disputed domain name in the terms of paragraph
4(c)(ii) of the Policy or to be using it non-commercially in the terms of
paragraph 4(c)(iii) of the Policy.
Paragraph 4(c)(i) of the Policy recognizes that the
Respondent may be able to establish rights or legitimate interests in a disputed
domain name by proving:
- before any notice to you of the dispute, your
use of, or demonstrable preparations to use, the domain name or a name
corresponding to the domain name in connection with a bona fide offering
of goods or services
A
majority of the Panel is in agreement that the well-known business model of
displaying click-through (pay per click) links and paid advertising on a
website for the purpose of revenue generation, in and of itself, may be
legitimate provided there are no other factors that would render such use
non-legitimate, such as the appropriation of another's well-known trademark for
the purpose.
By a majority,
the Panel finds for the Respondent in the terms of paragraph 4(a)(ii) of the
Policy.
It is not
strictly necessary to proceed to the question of bad faith but the Panel will
set out its findings for completeness.
C.
Registered and Used in Bad Faith
The Complainant is required to prove that the disputed
domain name was registered and is being used in bad faith. Paragraph 4(b)
of the Policy lists four circumstances that, without limitation, 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 website or
location.
A majority of the Panel focuses on paragraph 4(b)(iv) of
the Policy and reasons as follows. Under paragraph 4(a)(iii) of the Policy it
is essential for the Complainant to prove both bad faith registration and bad
faith use. Specifically in terms of bad faith registration, the Respondent
seven years ago registered as the disputed domain name the common Turkish word "horoz",
standing alone. As an illustration of its commonness, it means rooster. The
word "horoz" is also a common surname in Turkey according to Turkish telephone
directory pages submitted in evidence, and is the name of a place. The
Respondent has submitted evidence of there being 23 Turkish companies having
the word "horoz" in their names, including Horoz Medya (media) and Horoz
Electric which both feature a chicken or chicken head in their logos. Thus,
numerous individuals, families, companies or authorities could have reason to
register a domain name embodying the word "horoz" for purposes of innocent
usage or because of natural rights embodied in their own name or the place
name. In fact no reason is required.
It would appear from the evidence that the Respondent
received no complaint about his use of the disputed domain name until the
service of this proceeding, and he attributes this recent complaint to a change
of provider of the targeted advertising links on his site about a year
earlier. The new advertisement provider evidently caused the Respondent's
website to display some links that precipitated the Complaint, whereupon the
Respondent immediately ordered his provider to remove and avoid them, which
according to an exchange of emails, was promised in "a couple of hours".
The onus is upon the Complainant to prove bad faith
registration, for which no evidence has been offered. Had there been evidence
of bad faith use from the start, it may have been supporting evidence of bad
faith registration. There is no allegation of bad faith use for a period of
around six years thereafter. Such trademark infringement as may have occurred
recently would appear to be beyond the remit of the Panel in terms of abusive
registration and use, and may instead be resolved by communication or argued in
another forum.
By a majority, the Panel does not find that the disputed
domain name was registered in bad faith by the Respondent in the terms of
paragraphs 4(b)(iv) and 4(a)(iii) of the Policy.
7.Decision
For all the foregoing
reasons, by a majority decision of the Panel, the Complaint is denied.
|
___________________________
Dr. Clive Trotman
Presiding Panelist
|
|
______________________
Gökhan Gökçe
Panelist
|
______________________
Diane Cabell
Panelist
|
Dated: August 28, 2009
Dissenting Opinion
The dissenting Panelist finds that the Respondent's use of
the disputed domain name is not bona fide. The disputed domain name
resolves to a service provided by Skenzo that targets links to individual
visitors according to their search terms and other data. Use of a domain name
in this manner may be considered proper only if it does not conflict with
another's trademark rights. It is widely accepted by UDRP panels that a
respondent cannot absolve itself from the consequences of employing this type
of technique if it results in the presentation of material on the corresponding
website that is in conflict with the trademark rights of another.
Furthermore, the dissenting Panelist finds that
the use of a domain name through a parking service is not acceptable as
demonstrating a right or legitimate interest, because if this were to be so,
most of those cybersquatters who have merely linked domain names to a parking
service would be able to establish the requirements of paragraph 4(c)(i) of the
Policy in their favour.
The dissenting
Panelist notes that the Complainant registered its website "www.horoz.com.tr" on June 18, 1998. In order to
establish a ".com.tr" in the name of a real person or a legal entity, a
commercial purpose is necessary and official documentation is required which
must certify that the domain name applied for is the applicant's registered
trademark or corporate name. Therefore, the procedure is quite stringent and
demonstrates that the Complainant is the registered and rightful owner of "www.horoz.com.tr"
as it reflects his business name. This suggests that in the absence of any
justified use the Complainant should also be the rightful owner of
<horoz.com>.
The
dissenting Panelist further considers that because the Respondent is apparently
in Turkey and the Complainant is well known in Turkey, it is doubtful that the
Respondent was unaware of the Complainant's trademark. Most Internet users
would assume that the disputed domain name would resolve to a website of, or
affiliated with, the Complainant. Furthermore, the generic term "horoz" is not
indicative of the contents of the website of the disputed domain name and there
is no evidence of legitimate use. Although a generic term may be used in a
domain name, its use must be legitimate or at the very least innocent, which is
not so in the present case.
The dissenting Panelist finds that the disputed domain name
was registered and used in bad faith within the meaning of paragraph 4(b)(iv)
of the Policy. The Respondent attracts visitors to his website through their
confusion with the Complainant's trademark and name. Once at the Respondent's
website, visitors are confronted with links to other websites. The Respondent
has employed the services of a commercial algorithm that displays links
targeted to advertisers within the Complainant's field who are bound to be
competitors of the Complainant. This is the well-known business model known as
click-through or pay per click. In this case it represents exploitation of the
Complainant's trademark name and goodwill for the commercial gain of the
Respondent since the purpose of the operation is to earn commissions from
referrals to the websites of advertisers. In the terms of paragraph 4(b) of
the Policy, an adverse finding under paragraph 4(b)(iv) of the Policy "shall be evidence of the registration and use of a domain
name in bad faith".
In the light
of foregoing, the dissenting Panelist finds in favor of the Complainant on all
the three elements of the Policy and would find that <horoz.com> should
be transferred to the Complainant.
______________________
Gökhan Gökçe
Panelist
Dated: August 28, 2009
