Muzik Produksiyon Tanitim Turizm Sanayi Ve Dis Ticaret Ltd. STI; Tarkan Tevetoglu v. Deep.Net Corp.

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Tarkan Tevetoglu and H.I.T.T. Muzik Produksiyon Tanitim Turizm Sanayi Ve Dis Ticaret Ltd.Sti., v. Deep.Net Corp.

Case No. D2002-0278

1. The Parties

The Complainants in this administrative proceeding are Tarkan Tevetoglu

and H.I.T.T. Muzik Produksiyon Tanitim Turizm Sanayi Ve Dis Ticaret Ltd.Sti.,

both of Sakir Kesebir Sok. Balmumcu Plaza 1 No:3 K:8 D:13 Balmumcu/Besiktas,

Istanbul, Turkey. Complainants are represented in this administrative proceeding

by Ms. Dilek Ustun, Attorney at Law, Istanbul Patent & Trademark Consultancy Ltd.,

Büyükdere Cad. No: 26/16 Mecidiyeköy, Istanbul,

80290, Turkey.

Respondent is the Registrant, Deep.Net Corp., which provided the registration

address 118 Westfield Ave., Clark, NJ 07066, United States

of America, and in its Response provides the address 8524 10th Avenue,

Brooklyn, New York 11228.

2. The Domain Name and Registrar

The Domain Name subject to this Complaint is <tarkan.com>. The Registrar

of the Domain Name is Network Solutions, Inc., (NSI), 505 Huntmar Park Drive,

Herndon, VA 20170-5142, United States of America.

3. Procedural History

3.1. The Complaint in respect of the disputed Domain Name was received

by the World Intellectual Property Organization Arbitration and Mediation

Center (WIPO Center) on March 22, 2002. Complainants state that

on March 22, 2002, a copy of the Complaint was sent or transmitted

to the Respondent as the registered contact addresses by email and with

annexes by courier. A copy of the Complaint has been sent or transmitted

to the Registrar, NSI by email, with the hard copy and annexes to follow

by courier.

3.2. On March 28, 2002, verification was received from the Registrar, NSI,

that the Domain Name <tarkan.com> was registered in the name of Deep.Net

Corp., 118 Westfield Ave., Clark, NJ 07066, United States

of America. The Administrative, Technical and Billing Contact is Nejat Aksoy,

DeepNet, 580 Broadway, suite 408, New York, NY 10012,

United States of America. The Domain Name status is Active and the language

of the Service Agreement is English.

3.3. The Complaint satisfies the formal requirements of the Uniform Domain

Name Dispute Resolution Policy (Policy), the Rules for Uniform Domain Name

Dispute Resolution Policy (Rules) as approved by the Internet Corporation

for Assigned Names and Numbers (ICANN) and the Supplemental Rules for Uniform

Domain Name Dispute Resolution Policy (Supplemental Rules).

3.4. On April 3, 2002, Formal Notification of Complaint and Commencement

of Administrative Proceeding was sent by WIPO Center to the Respondent and

to the Administrative, Technical and Billing Contact. Notification was also

sent to Complainants, ICANN and the Registrar, NSI.

3.5. Courier material could not be delivered to the Clark address by April 10, 2002.

On April 18, 2002, Respondent acknowledged to WIPO Center its

receipt by email of the Complaint, provided an amended New York contact

address as notified to NSI, and also provided a personal name and New York

home street address for receipt of the hard copy. WIPO Center on April 19, 2002,

replied that hard copies would be sent to the addresses provided and extended

the date for receipt of a Response to April 29, 2002.

3.6. A Response dated April 25, 2002 was received by WIPO Center and stamped

April 30, 2002. The Response stated that email and courier copies

were sent to Complainants on April 26, 2002.

3.7. A document titled "Additional Submission In Reply To The Respondent’s

Response", dated May 3, 2002, was received from Complainants

by WIPO Center. This was replied to by email on May 3, 2002, pointing

out that its acceptance would be at the discretion of the Panel.

3.8. On May 5, 2002, Respondent emailed WIPO Center asking that, if the

Panel were to accept the Complainants’ Additional Submission In Reply To

The Respondent’s Response, then Respondent should be given a right to make

a further submission in reply.

3.9. On May 23, 2002, Dr. Clive Trotman, having provided the WIPO Center

with a Statement of Acceptance and Declaration of Impartiality, was appointed

as a single member Administrative Panel and notification was sent by email

to Complainants, Respondent and the Panel. An electronic copy of the Case

File was sent by email to the Panel and the complete Case File was sent

by courier.

4. Factual Background

4.1. According to Complainants, Tarkan Tevetoglu, known as Tarkan, is a

prominent Turkish performer of popular music. Tarkan’s first album dates

to 1993, and he was soon selling albums, produced alone or in collaboration

with other artists, in the hundreds of thousands. Tarkan has since undertaken

many international tours and performed numerous concerts in places including

Turkey, Europe, USA, North Africa, Australia and Ukraine. He has had concerts

broadcast live and his albums have sold in the millions.

4.2. In July 1997, Tarkan made significant progress in collaboration with

Sezen Aksu with the production of a third album that sold 3.5 million copies,

and in December 1997, Tarkan undertook a European tour of 18 concerts.

The third album was later licensed to the renowned Polygram company. Further

achievements flowing from the album included a Platinum Record in Mexico

and Golden Records in France, Holland, Germany, Belgium, Luxembourg, Sweden

and Colombia. There have been subsequent successful albums.

4.3. Tarkan is involved in the music production company known shortly as

Hitt Music which is the second Complainant and owner of a trademark registered

with the Turkish Patent Office for the mark TARKAN under international classes

03, 14, 16, 20, 21, 24, 28.

4.4. According to Respondent, Deep Net initially acted as a web solutions

development company and had a very small hosting capacity. The company intended

to set up various detailed projects as websites but effectively has not

yet done so. Mainly these would be information sites and also those related

to the medical and professional career interests of a family member. All

are aimed at Turkish people living in Turkey and the Turkish community in

the USA and elsewhere. The business activities have been postponed owing

to Turkish and world economic conditions. Specifically the disputed Domain

Name <tarkan.com> has an intended project associated with it.

5. Parties’ Contentions

A. Contentions of Complainants

5.1. The contentions of Complainants include (paragraphs 5.2-5.6 below)

that:

5.2. The dispute is properly within the scope of the Policy. The registration

agreement, pursuant to which the Domain Name being the subject of this Complaint

was registered, incorporates the Policy by reference.

5.3. The disputed Domain Name is confusingly similar to the mark TARKAN

in which first Complainant has common law rights, it being the name by which

he is known as a performer, and in which second Complainant has documented

registered rights.

5.4. Respondent has no rights or legitimate interests in the disputed Domain

Name and has not been granted any rights by Complainants. The Domain Name

has not been used in connection with a bona fide offering of goods

or services. Respondent has never been commonly known by the Domain Name.

Respondent is not making a legitimate noncommercial or fair use of the Domain

Name.

5.5. Respondent has registered and used the disputed Domain Name in bad

faith in the terms of the Policy. The respondent registered the disputed

Domain Name primarily for the purpose of selling it to the Complainants.

Requests for transfer of the Domain Name have met variously with refusal

to sell, claims of there being high offers from other contenders, and an

offer price of $US 100,000 to sell. Respondent registered the Domain Name

in order to prevent Complainants from doing so and thereby reflecting their

mark. The Domain Name is not in bona fide use but is held passively.

5.6. The remedy requested by Complainants is that the disputed Domain Name

shall be transferred to Complainants.

B. Contentions of Respondent

5.7. The contentions of Respondent include (paragraphs 5.8-5.16 below)

that:

5.8. Respondent denies the Complaint and requests that the Domain Name

should not be transferred.

5.9. Respondent registered the disputed Domain Name on November 1, 1996,

whereas second Complainant’s Turkish trademark was registered on November 25, 1997,

Complainants' Company having been incorporated on September 5, 1997.

5.10. Tarkan is a common Turkish first name and surname. There are numerous

listings of the name Tarkan in telephone directories inside and outside

of the Turkish Republic. The name is extensively used for pets in Turkish.

Tarkan is also the name of a comic character. Certain businesses incorporate

the name Tarkan and other Domain Names exist that include the name. In the

circumstances of this case the name Tarkan has no secondary meaning.

5.11. Respondent did not know about first Complainant at the time the disputed

Domain Name was registered in 1996, and Complainant's fame at that time

was less than he contends. The oldest article submitted in support of first

Complainant’s fame is a Turkish one dated December 1, 1997, and

others are undated or are dated 1998 onwards. The first award was dated 1997,

in Turkey and the first international award was dated 1999. There are

hundreds of Turkish pop singers on television and the fame of first Complainant

was accrued essentially after the disputed Domain Name was registered.

5.12. Respondent’s proprietor named the disputed Domain Name in memory

of her husband’s dog. The original intention to open a site for lost pets

has been changed to an intention to cater for certain issues of interest

to teenagers, including pet care. Respondent does not sell goods or services

that impinge on the Complainants’ mark in the relevant classes of registration,

and usage by Respondent does not imply the "singer Tarkan".

5.13. Respondent made no misrepresentation in correspondence with Complainants,

is not a reseller of Domain Names and has not listed any for sale, and eventually

replied to Complainants with a high price to dissuade further requests to

part with the disputed Domain Name.

5.14. The present case should be decided differently from those where personality

names (e.g., Julia Roberts) have been appropriated because cases in that

category refer generally to specific name combinations and the name Tarkan

is less distinctive. Respondent has never registered celebrity names, famous

peoples’ names or trademark names.

5.15. An appearance of passive holding of the Domain Name is for reasons

including economic conditions and Respondent’s belief that such a common

name could not be registered as a trademark. Respondent’s activities can

be distinguished from cited cases of passive holding.

5.16. Complainants hold a Domain Name <tarkantevetoglu.net> incorporating

first Complainant’s full name. Additional gTLD, ccTLD and other Domain Names

are still available.

6. Discussion and Findings

Jurisdiction of Administrative Panel

6.1. Paragraph 4(a) of the Uniform Policy states:

"You are 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."

6.2. Complainants have made the relevant assertions as in 6.1 above. This

dispute is properly within the scope of the Uniform Domain Name Dispute

Resolution Policy and the Administrative Panel has jurisdiction to decide

the dispute.

Procedural

6.3. The Panel assures both parties that the language and colloquialisms

of all parts of their submissions, where provided in the language of the

Registration Agreement (English) (Rules, 11), were entirely understood,

and that the general purpose of exhibits in other languages could be ascertained.

6.4. The Case File received by the Panel included an unsolicited Supplemental

Filing from the Complainants titled "Additional Submission In Reply

To The Respondent’s Response". The Respondent duly asked through WIPO

Center for permission to file a further reply to the Supplemental Filing.

Supplemental Filings are not provided for except by request of the Panel

in its sole discretion (Rules, 12). Each Party had every opportunity to

file its case and a protracted correspondence is outside the spirit and

letter of the prescribed process. Having seen the Supplemental Filing, the

Panel finds that it adds nothing of substance that could not have been included

in the Complaint in Chief and it has not influenced the Panel. The Supplemental

Filing is rejected and Respondent’s request to make a submission in reply

is declined.

Whether the Domain Name is Identical or Confusingly Similar to a Trademark

6.5. The factual decision required under the Policy is whether Respondent’s

Domain Name is confusingly similar to a trademark or service mark held by

Complainants. The gTLD suffix <.com> is an inevitable part of the

Domain Name and has no bearing on the question of confusing similarity.

The remainder of the Domain Name <tarkan.com> is identical to second

Complainant’s mark TARKAN duly registered with the Turkish Patent Office

on November 25, 1997, and is identical to the name by which first

Complainant has common law recognition as an entertainer. The disputed Domain

Name is confusingly similar to Complainants’ mark in the terms of Paragraph

4(a)(i) of the Policy.

Whether Respondent Has Rights or Legitimate Interests in Respect of the

Domain Name

6.6. Paragraph 4(a)(ii) of the Policy requires Complainants to prove that

Respondent has no rights or legitimate interests in respect of the disputed

Domain Name. The Artist’s common law right to the use of his name in the

context of his work is not doubted. Complainants have provided evidence

of Turkish registration of the mark TARKAN under international classes 03,

14, 16, 20, 21, 24, 28 since 1997, and state that Respondent has no

authority to use the mark.

6.7. Paragraph 4(c) of the Policy lists illustrative grounds, without limitation,

on which a Respondent may refute a Complaint and may establish rights to

and legitimate interests in a Domain Name.

6.8. It is common ground that there has been no significant use of the

Domain Name. There is no evidence that Respondent has used or made demonstrable

preparations to use the disputed Domain Name or a name corresponding to

the Domain Name in connection with a bona fide offering of goods

or services in terms of Paragraph 4(c)(i). Similarly there is not sufficient

evidence that Respondent is making a legitimate noncommercial or fair use

of the Domain Name in terms of Paragraph 4(c)(iii).

6.9. There is no evidence that Respondent as an individual, business, or

other organization has been commonly known by the Domain Name within the

terms of Paragraph 4(c)(ii). The fact that the Domain Name may have been

inspired by a family pet is of little consequence for Paragraph 4(c)(ii),

which does not extend beyond Respondent as an individual, business, or other

organization being known by the Domain Name.

6.10. The Panel has not found any other grounds sufficient for Respondent

to establish rights or legitimate interests in the disputed Domain Name

within the terms of Paragraph 4(a)(ii).

Whether Domain Name Has Been Registered and Is Being Used in Bad Faith

6.11. Paragraph 4(a)(iii) of the Policy requires Complainants to prove

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

Paragraph 4(b) provides four illustrative circumstances, without limitation,

that shall be evidence of the registration and use of a Domain Name in bad

faith. In the present case it is convenient to consider these in reverse

order.

6.12. Bad faith may be found under Paragraph 4(b)(iv) if Respondent has

intentionally attempted to attract, for commercial gain, Internet users

to its website by creating a likelihood of confusion with Complainants’

mark as to the source, sponsorship, affiliation, or endorsement of the website

or of a product or service thereon. The disputed Domain Name is effectively

unused and there is no evidence to suggest such an attempt.

6.13. Under Paragraph 4(b)(iii) bad faith is indicated where the Domain

Name was registered primarily for the purpose of disrupting the business

of a competitor. There is no evidence or indication that this was Respondent’s

primary purpose or that Complainants and Respondent are competitors.

6.14. Under Paragraph 4(b)(ii) there is bad faith if the Domain Name was registered

in order to prevent the owner of a mark from reflecting the mark in a corresponding

Domain Name, provided Respondent has engaged in a pattern of such conduct. Complainants

assert that, "The Respondent was aware of the fact that the Complainants

have the intention to have an official web site associated with their mark ..",

and refer to "Respondent’s certain constructive and actual knowledge of

complainant’s trade/service mark and common law rights prior to registering

the disputed domain names ...". These are assertions, not supported by

evidence. Respondent replies: "The singer was not famous when Deep.Net

had registered "tarkan.com". (At least we did not recognize a singer

whose name was Tarkan in Turkey or in USA on that date.)". This Response

is plausible in the light of the chronology presented in evidence and summarized

briefly in 4.1, 4.2, 5.9 and 5.11 above, and because according to the evidence

of Turkish, German and USA telephone directories, the name Tarkan is relatively

common. Certain businesses or Domain Names incorporate the word Tarkan without

apparent relationship to Complainants. The Complainants' mark therefore is not

especially distinctive or strong (cf. Goldline International Inc., v. Gold

Line; WIPO Case No. D2000-1151, in

which a three-member Panel declined to transfer the relevant Domain Name and

found Reverse Domain Name Hijacking) and is not as distinctive as in the personality

cases epitomized by Julia Fiona Roberts v. Russell Boyd (WIPO

Case No. D2000-0210).

6.15. In any case Complainants cannot succeed under Paragraph 4(b)(ii)

since Respondent has registered only one Domain Name containing the word

TARKAN and Complainants have not produced any evidence to show Respondent

has engaged in a pattern of the proscribed conduct in relation to either

the Complainants’ mark or any other mark. A feature of Julia Roberts

and similar cases cited by Complainants was a pattern of multiple registrations

of Domain Names incorporating personality names.

6.16. Paragraph 4(b)(i) supports a finding of bad faith where a Respondent

has registered a Domain Name primarily for the purpose of transferring it

to a Complainant who is the owner of the mark, or to a competitor, for a

profit. Both Parties concur that approaches to acquire the Domain Name originated

from Complainants and that Respondent expressed disinterest before nominating

a price. Complainants say that Respondent eventually offered to sell the

Domain Name for $US 100,000 and Complainants considered this to be "...evidence

that the Respondent has registered the domain name primarily for the purpose

of selling it to the Complainant ...". Respondent says the price was

intended to be a disincentive to further approaches.

6.17. Had bad faith registration already been evident, then asking a high

price would additionally have constituted bad faith use. The reverse does

not necessarily apply and no particular asking price in itself converts

a registration retrospectively from good faith to bad faith or imputes a

Respondent's primary purpose in registering a Domain Name. Complainants

might have misgivings about Respondent's motives in registering the Domain

Name but these do not substitute for proof and the circumstances must be

examined dispassionately on the evidence.

6.18. Respondent provides a list of its holding of 23 Domain Names, mostly

with their English translations. Taken as a whole these seem unremarkable and

<tarkan.com>, being based on a relatively common name, does not appear

to be exceptional in the context. Respondent relates an innocuous inspiration

for <tarkan.com> and provides some weak documentation (Annex 13). The

Domain Name is stated to have been inspired by the name of a dog belonging to

the husband of Respondent's guiding mind. It is not unknown for a Panel to ask

for additional confirmation in comparable circumstances (Weider Publications,

Inc. v. Don Ho Cha, WIPO Case No. D2001-0105,

in which two brothers were known as Muscle and Fitness, coinciding with the

title of a magazine, and that Panel declined transfer of the relevant Domain

Name). Respondent has, however, certified the veracity of its statement in accordance

with Rules, 5 (viii), and taking into account the lack of any pattern of abusive

registration of Domain Names as found in 6.14 - 6.15 above, and all available

evidence, the Panel sees no reason to reject Respondent's explanation of innocent

registration. Complainants have not proved the original registration to have

been made in bad faith on the balance of probabilities.

6.19. Grounds for a finding of bad faith are not limited to those exemplified

in Paragraph 4(b). Complainants contend that Respondent’s passive holding of

the Domain Name indicates bad faith, citing e.g., Telstra Corporation Limited

v. Nuclear Marshmallows, WIPO Case No.

D2000-0003. Substantial points of difference distinguish the present case

from the often cited Telstra, which was undefended. As summarized by

Telstra Panelist Andrew F. Christie in the context of passive holding:

"(i) the Complainant’s trademark has a strong reputation and is widely

known, as evidenced by its substantial use in Australia and in other countries;

(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated

good faith use by it of the domain name; (iii) the Respondent has taken active

steps to conceal its true identity, by operating under a name that is not a

registered business name; (iv) the Respondent has actively provided, and failed

to correct, false contact details, in breach of its registration agreement,

and (v) taking into account all of the above, it is not possible to conceive

of any plausible actual or contemplated active use of the domain name by the

Respondent that would not be illegitimate, such as by being a passing off, an

infringement of consumer protection legislation, or an infringement of the Complainant’s

rights under trademark law." By contrast in the present case, using equivalent

numbering: (i) Respondent certifies that it had not heard of Complainants’ name

or mark at the relevant time, which was about a year before the mark was registered;

(ii) Respondent states that its plans for the Domain Name do not conflict with

Complainants’ use of their mark; (iii) Respondent has not taken active steps

to conceal its true identity and has evidently responded to the offers for purchase

and to the Complaint; (iv) Respondent has not actively provided false contact

details but has, if belatedly, corrected its registration details and provided

Complainants with good contact addresses; (v) plans outlined by Respondent are

plausible and potentially legitimate.

6.20. Passive holding would not in any case be sufficient evidence on its

own of bad faith but, as pointed out in Telstra, would require registration

to have been made with an intention to sell, rent or transfer the registration

(Paragraph 4(b)(i) of the Policy); or a pattern of conduct preventing a

trademark owner’s use of the registration (Paragraph 4(b)(ii)); or the primary

purpose of disrupting the business of a competitor (Paragraph 4(b)(iii)).

6.21. The present Panel finds the precedents in France Telecom v. Les Pages

Jaunes Francophones (WIPO Case No. D2000-0489)

to be more pertinent than Telstra. In France Telecom the three-member

Panel declined to transfer the relevant Domain Names, saying among other things:

"Nonetheless, the Panel does not consider it in itself improper to keep

a domain name for some time without using it"; and "No finding of

use in bad faith can be made against the Respondent. The Respondent did not

try to sell or otherwise apply pressures for obtaining advantages in connection

with the release of the domain name. The Respondent does not appear to collect

well-known domain names that were left unoccupied by the companies most legitimately

entitled to them"; and furthermore, "Finally, in the present circumstances,

the fact that the Respondent seems not to be an active company is not a sign

of bad faith, since it clearly and unmistakably reacted when the Complainant

opened the present proceedings, and gave full details about address and contact

person." Parallels with the present case are unmistakable.

Summary

6.22. Complainants’ assertions have been strenuously defended by Respondent.

Complainants and Respondent have each certified that the information contained

in their submissions is to the best of their knowledge complete and accurate.

Conversely Complainants have described their dealings with Respondent with

terminology such as "a very questionable claim", whilst Respondent

has referred to "a serious misinterpretation or translation error".

The onus is on the Complainants to prove their case under all three limbs

of Paragraph 4(a) of the Policy. In accordance with Paragraph 4(a)(i), Respondent’s

Domain Name is found to be confusingly similar to Complainants’ mark. Within

the terms of Paragraph 4(a)(ii), Respondent does not have rights in the

Domain Name. However, under Paragraph 4(a)(iii), the Complainants’ assertions

that the disputed Domain Name was registered in bad faith and is being used

in bad faith do not outweigh Respondent’s reply that the Domain Name was

registered innocently and is not being used in bad faith. Complainants have

failed to tip the balance of probabilities in their favor and the final

Decision is therefore given for Respondent.

7. Decision

The Decision of the Administrative Panel is that Complainants have not

proved that Respondent has registered and used the disputed Domain Name

<tarkan.com> in bad faith. Complainants' request for the Domain Name

<tarkan.com> to be transferred is denied.

Dr. Clive N. A. Trotman

Sole Panelist

Dated: June 6, 2002