Cyrillus v. KRP Tekstil

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Cyrillus S.A .v. KRP Tekstil

Case No. D2001-0551

1. The Parties

The Complainant in this administrative proceeding is Cyrillus S.A., a company

organized under French law, located at 5/7, rue du Delta, 75009 Paris,

France and represented by Andre Bertrand with offices at rue Vignon, 26, 75009

Paris, France, hereinafter the "Complainant".

The Respondent is KRP Tekstil San. ve Tic.Ltd.Sti, with address at EskiHisarKavsagi

Seferoglu Is.No3, Gebze, Izmit 80000, Turkey, hereinafter the "Respondent".

2. Domain Name and Registrar

The domain names at issue are <cyrillus.org> and <cyrillus.net>,

hereinafter the "Domain Names". The registrar is Network Solutions Inc. of Herndon,

Virginia, United States of America. and the Domain Names were registered on

October 11, 1999.

3. Procedural History

The WIPO Arbitration and Mediation Center, hereinafter "the Center" received

the Complainant's complaint on April 17, 2001, by email and on April 21, 2001,

by hardcopy with the exhibits.

On April 18, 2001, the Center has transmitted the Acknowledgement of Receipt

of Complaint both to the Complainant and to the Respondent by email.

On April 26, 2001, the Center transmitted via email to Network Solutions, Inc.

a request for Registrar Verification relating to this case. On April 27, 2001,

Network Solutions Inc. transmitted via email to the Center, Network Solutions’

Verification Response, confirming that the Domain Names are registered with

Network Solutions, that the Respondent is the current registrant of the Domain

Names and that the administrative and billing contact is KORPI HAKAN while the

technical contact is UYGUN BORA. It confirmed also that the Network Solution

5.0 Agreement is in effect and that the Domain Names registration status is

"Active".

The Center transmitted on May 15, 2001, to the Respondent the Notification

of Complaint and Commencement of the Administrative Proceeding via post/courier,

email and fax in accordance with the following contact details:

KRP Tekstil San.ve TicLtd.Sti, EskiHisarKavsagi Seferoglu Is Mer.No3, Gebze,

Izmit 80000, Turkey.

The Administrative and Billing Contact is Korpi, Hakan (KH1218-ORG), KRP Tekstil

San.ve TicLtd.Sti, EskiHisarKavsagi Seferoglu Is Mer.No3, Gebze, Izmit 80000,

Turkey, Tel: +9026265624406, Fax: +902626562409, Email: korpi@KRP.COM.TR.

The Technical contact is Uygun E. Bora (EU76), VOM Bilgi Islem Ltd. Sti. Abide-I,

Abide-I Hurriyet Cad.Sevinc Apt., No 251 K 5 D 9, Sisli, IS 80220, Turkey, Tel:

+902122314406,. Fax: + 902122315032, Email: uygun@SASAIN.COM.TR.

This notification has been copied to the Complainant via email in accordance

with the following contact details:

Cyrillus, Represented by, Me Andre Breton, 26, rue Vignon, 75009 Paris, France,

Tel: +33 1 53307890, Fax: +33 1 53307899, Email: info@a-bertrand.com.

The Center advised that the Response was due by June 3, 2001.

On June 8, 2001, having received no Response from the Respondent, the Center

issued to the email address of both parties a Notification of Respondent Default.

No reply from the Respondent to the Notification of Respondent Default was received.

On June 19, 2001, in view of the Complainant’s designation of a single panelist,

the Center invited M. Geert Glas to serve as a panelist and transmitted to him

the Request for Declaration of Impartiality and Independence and a Statement

of Acceptance.

Having received on June 20, 2001, M. Geert Glas' Declaration of Impartiality

and Independence and his Statement of Acceptance, the Center transmitted on

June 22, 2001, to the parties a Notification of Appointment of Administrative

Panel and Projected Decision Date by e-mail, in which M. Geert Glas was formally

appointed as the Sole Panelist. The Projected Decision Date is July 5, 2001.

The Sole Panelist finds that the Administrative Panel was properly constituted

and appointed in accordance with the Rules and Supplemental Rules.

Having reviewed the communication records in the case file, the Administrative

Panel finds that the Center has discharged its responsibility under Paragraph

2(a) of the Rules "to employ reasonably available means calculated to achieve

actual notice to Respondent." Therefore the Administrative Panel shall issue

its Decision based on the Complaint, the Policy, the Rules, the Supplemental

Rules and the verifiable facts but without the benefit of any Response from

Respondent.

4. Factual Background

The Complainant is a French company selling, since 1982, clothing under the

tradename CYRILLUS.

The Complainant has registered the word CYRILLUS as a French, international

and Community trademark.

The Complainant is present on the market place through local subsidiaries in

several countries such as Germany, United Kingdom, Belgium, France, Japan, Austria

and Switzerland.

On August 8, 1996, the Complainant registered the domain name <cyrillus.com>

and is today also active under the following domain names: <cyrillus.be>

<cyrillus.de>, <cyrillus.co.ik>, <cyrillus.fr>, <cyrillus.at>.

Therefore, since 1996 the Complainant has developed its presence on the web

and has made efforts for the general public to be aware of its business and

have the opportunity to order products on-line.

According to the Complainant, from 1995 to 1998, the Complainant was in contractual

relationship with a company called HAS TEKSTIL. This company was manufacturing

clothes for the Complainant.

In 1997, ASLAN KORPI, a shareholder of HAS TEKSTIL sold most of his shares

to HAYATI DIZDAR, and became the owner of the Respondent, the KRP TEKSTIL company.

According to the Complainant, ASLAN KORPI is the father of HAKAN KORPI, who

appears in the whois database as being the administrative and billing contact

of the Domain Names.

Upon its incorporation, the Respondent registered the word CYRILLUS with the

Turkey Trademark Office.

The Complainant filed an opposition procedure against this trademark registration.

According to the Complainant, its request was rejected by the Turkey Trademark

Office. A further appeal before the Commercial court could be filed prior to

April 16, 2001. It is not clear whether such appeal was lodged.

It appears from Network Solutions’ Verification Response that the Respondent

is the registrant of the Domain Names. The Respondent registered the Domain

Name on September 15, 1999.

At the time the Complainant filed the Complaint the Respondent was apparently

making use of the Domain Name "cyrillus.net" and according to the Complainant

was offering, via a webpage related to this Domain Name, clothing products similar

to those of the Complainant.

However, the websites linked to the Domain Names currently resolve to inactive

pages.

5. Parties Contentions

a. Complainant

The Complainant contends that the Domain Names are identical to its trademark.

The Complainant contends that the Respondent has no rights or legitimate interests

in respect of the Domain Names since the registration of a domain name as well

as a trademark of a word identical to the prior trademark of the Complainant

with whom the Respondent was in a business relationship, constitutes an act

of fraud and of unfair competition.

The Complainant contends that the Respondent has registered the Domain Names

in bad faith since the Respondent has registered the Domain Names only for the

purpose of disrupting the business of the Complainant and with the intention

to attract, for financial gain, Internet users to its websites by creating a

likelihood of confusion with the Complainant' s trademark and website.

b. Respondent has not contested the allegations of the Complaint and is in

default.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Administrative Panel as to the principles

the Administrative Panel is to use in determining the dispute: "A Panel shall

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."

Applied to this case, Paragraph 4(a) of the Policy directs that the Complainant

must prove each of the following:

(1) that the Domain Name registered by the Respondent is identical or confusingly

similar to the trademark in which the Complainant has rights; and,

(2) that the Respondent has no rights or legitimate interests in respect of

the Domain Name; and,

(3) that the Domain Name has been registered and is being used in bad faith.

a. Identity or confusing similarity

The Domain Names at issue are identical to the Complainant's trademark.

The Administrative Panel therefore finds that the requirement of paragraph

4(a)(i) of the Policy is satisfied.

b. Rights or Legitimate Interests

As stated by the Complainant in its Complaint, and as confirmed by exhibit

13 of its Complaint, in 1998 the Respondent registered the trademark CYRILLUS

with the Turkey Trademark Office.

According to the Complainant, it lodged an opposition procedure against this

Turkish registration of the CYRILLUS trademark but this opposition was rejected

by the Higher Board of Re-examination of the Turkish Trademark Office.

The Administrative Panel is not provided with any further information as to

this procedure and the current status of the Turkish trademark registration

of the Respondent. However, it can be presumed that following the dismissal

of the opposition procedure initiated by the Complainant, this trademark formally

still constitutes a valid trademark owned by the Respondent.

This situation creates a legal dilemma for the Administrative Panel: while

some elements seem to indicate that the trademark may have been registered in

bad faith by the Respondent (cfr. infra), the Panel cannot simply disregard

the fact that the opposition procedure was dismissed and that the trademark

owned by the Respondent still constitutes a title under Turkish law.

The Panel finds itself in the impossibility to solve this issue without leaving

the strict legal boundaries of the Policy and the Rules. While a court judging

this matter on the merits could assess the validity of the trademark of the

Respondent and potentially conclude to its invalidity, this is not an assessment

which the Administrative Panel is, under the Policy and the Rules, intended

to carry out or equipped for. It should be noted in this regard that a further

appeal against the decision of the Turkish Trademark Office could be lodged

prior to April 16, 2001. It is unclear whether such appeal was lodged.

In view of these circumstances, the administrative Panel cannot conclude that

at this moment in time the Respondent has no rights or legitimate interests

in respect of the Domain Names.

Therefore, the Administrative Panel does not find that the second requirement

as provided by paragraph 4(a)(ii) of the Policy is satisfied.

c. Registration and Use in Bad Faith

The Respondent is a company belonging to a prior shareholder of the company

that was in contractual relationship with the Complainant.

In view of this circumstance, it can reasonably be said that the Respondent

was most probably aware of the Complainant's trademark and domain names when

registering the Domain Names.

In most other circumstances, this fact would be constitutive of a bad faith

registration.

In the given case, the fact that the registration of the Domain Names was preceded

by the registration of an identical Turkish trademark and that this trademark

was unsuccessfully opposed, may have some mitigating influence on the bad faith

qualification of the registration and use of the Domain Names.

The Respondent was in default to respond in this proceedings, thereby failing

to invoke any element or circumstance which could indicate the good faith nature

of his registration and use of Domain Names.

7. Decision

In light of the foregoing, the Administrative Panel decides that the Domain

Names registered by the Respondent are identical to the Complainant's trademark

and that the Respondent’s Domain Names may have been registered/used in bad

faith.

However, according to paragraph 4 the Complainant must establish that the Respondent

has no legitimate rights or interests in the Domain Names.

In view of the existence of an identical trademark in the name of the Respondent,

the Panel did not find this second requirement to be satisfied. Therefore the

Administrative Panel denies the Complaint of the Complainant.

Geert Glas

Sole Panelist

Dated: July 5, 2001