Yuksel Insaat A.S. v. Erdogan Koparal

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Yüksel Inºaat A.ª. v. Erdogan Koparal

Case No. D2002-0285

1. The Parties

The Complainant in these

administrative proceedings is Yüksel Inºaat A.ª., SIM Sogutozu Is Merkezi Sogutozu

Cad. No.14/A 06560 Bestepeler, Ankara, Turkey.

The Respondent is Erdogan Koparal, 193 Millet Cad. Istanbul, 02355,

Turkey.

2. The Domain Names and Registrar

The domain names in dispute

are <yukselinsaat.com>, <yukselinsaat.net>, and <yukselinsaat.org>.

The Registrar

with which said domain names are registered is TierraNet Inc. DBA DomainDiscover (hereinafter “the Registrar”).

3. Procedural History

On March 26, 2002 the Complaint

was received by the WIPO Arbitration and Mediation Center ("the

Center") by e-mail and in hard copy on April 2, 2002.

On April 3, 2002 the Center sent a

Request for Registrar Verification to the Registrar. On April 10, 2002 the

Registrar responded, confirming that it is the registrar of said domain names

and that the Respondent was the current registrant, Administrative Contact,

Technical Contact and Zone Contact for each said registration. The Registrar

furthermore confirmed in respect of each said registration that the Uniform

Domain Name Dispute Resolution Policy (hereinafter “the Policy”) applied to

each said registration, that the language of the registration agreement was

English, and that the registrant had submitted in his registration agreement to

the jurisdiction at the location of the principal office of the Registrar for

court adjudication of disputes concerning or arising from the use of the domain

names.

In accordance with Paragraph 4(a)

of the Rules for Uniform Domain Name Dispute Resolution Policy ("the

Rules") and paragraph 5 of the WIPO Supplemental Rules for Uniform Domain

Name Dispute Resolution Policy ("the Supplemental Rules") the Center

reviewed the Complaint to ascertain whether it satisfied the formal

requirements of the Policy, the Rules and the Supplemental Rules and that

payment in the required amount had been made by the Complainant.

On April 12, 2002, the Center sent

a Notification of Complaint and Commencement of Administrative Proceedings to

the Respondent. Said Notification was sent to the Respondent by Post/Courier

(with enclosures) and by e-mail (Complaint without attachments). A copy of said

Notification was sent to the authorised representative of the Complainant by

e-mail. Further copies of said Notification were sent to the Internet

Corporation for Assigned Names and Numbers ("ICANN") and to the

Registrar by e-mail.

The Center received confirmation via the courier’s Package Tracking Report

that the Notification of Complaint and Commencement of Administrative Proceedings

was successfully delivered on April 16, 2002. Service of the Notifications by

e-mail to the addresses postmaster@yukselinsaat.com, postmaster@yukselinsaat.org,

and postmaster@yukselinsaat.net failed due to permanent fatal errors. Similarly

delivery to the Respondent at the e-mail address provided by the Respondent

for administrative contact purposes failed due to a permanent error.

Said

Notification of Complaint and Commencement of Administrative Proceeding inter alia advised the Respondent that

the Administrative Proceeding had commenced on April 12, 2002 and that the

Respondent was required to submit a Response to the Center on or before May 2,

2002.

No

Response was received by the Center and on May 4, 2002, the Center sent a

Notification of Respondent Default to the Respondent by e-mail. A copy of said

Notification of Respondent Default was on the same date sent to the authorised

representative of the Complainant by e-mail.

On

May 15, 2002, after having received a Statement of Acceptance and Declaration

of Impartiality from him in accordance with paragraph 7 of the Rules, the

Center proceeded to appoint James Bridgeman as the Administrative Panel. On the

same day the case file was transmitted to the Administrative Panel.

The

Complainant and a person purporting to represent the Respondent sent further

e-mail communications both directly to this Administrative Panel and to the

Center. Such further communications are not encouraged by the Rules, and

communication directly with the Administrative Panel is prohibited by the

Rules. In the circumstances this Administrative Panel has not considered the

content of same in reaching this decision.

In the view of

the Administrative Panel, proper procedures were followed and this

Administrative Panel was properly constituted.

4. Factual Background

According to the Complaint, on March 15, 2002, on the

application of the Complainant, the 30th Basic Civil Court of Ankara

directed that the Respondent’s Internet site be stopped until the case is

resolved.

The Complainant is

engaged in the construction industry in Turkey and the owner of a Turkish

registered trademark and service mark device mark YÛKSEL INªAAT A.ª and

DEVICE, registration number 188944. The Complainant has registered the domain

name <yukselinsaat.com.tr>.

In the absence of a Response, the only

information relating to the Respondent is to be found in the registration

details provided to the Registrar and the information posted on the

Respondent’s web site at the <yukselinsaat.com> web address in which, he

states that he established the web site to encourage debate about certain

collapsed buildings in Turkey.

5. Parties’ Contentions

A. Complainant

The Complainant

requests that said domain names be transferred to the Complainant.

The Complainant alleges that said domain names are identical or

confusingly similar to a trademark or service mark in which the Complainant has

rights; that the Respondent has no rights or legitimate interests in respect of

said domain names; and that said domain names were registered and are being

used in bad faith.

The Complainant states that it is the owner of the above referenced

registered trademark and has provided a photocopy of said registration as an

annex to the Complaint. The trademark is registered in respect of construction

services relating to railways, airports, bridges, underground structures, and

multi-story buildings.

The Complainant further submits that said domain name

<yukselinsaat.com> is particularly confusingly similar to the

Complainant’s domain name <yukselinsaat.com.tr>.

The Respondent is not related to the Complainant and has no connection

with any other construction business or person named Yuksel Insaat. Neither is

the Respondent related to any business or person with a name that is

confusingly similar to the Complainant’s name.

Furthermore the Complainant submits that the results of a WHOIS query

conducted by the Complainant in the Registrar’s database on March 3, 2002

against the domain name <yukselinsaat.com>, produced a web page on which

the statement “for sale, for sale, for sale, for sale, tr” was posted. The

Complainant has submitted a copy of said web page with the Complaint.

The Complainant submits that by permitting said statement “for sale, for

sale, for sale, for sale, tr” to be posted on the Registrar’s WHOIS database,

the Respondent shows that he has commercial interests in the domain name.

Furthermore the Complainant submits that the domain name

<yukselinsaat.com> should be considered as having been registered and

used in bad faith because the Respondent’s web site established at the

<yukselinsaat.com> address, contained statements that purported to

represent that web site as the official web site of the Complainant. The

Complainant has submitted a number of screen shots of pages of the Respondent’s

web site accessible at the address www.yukselinsaat.com/indexEn.xp., to

illustrate this point.

In the English language version of this site, the following words appear:

“Yüksel Construction Co., Inc. TÛV CERT ISO 9001 YÜKSEL PROJE important

public announcement.”

The web page contained a number of photographs of people and a photograph

of what appears to be a collapsed building captioned “Yüksel Complex, Yalova,

Turkey (following Agust (sic) earthquake)”

The web page further contained the following statements:

“Our buildings are collapsing: 316 people died in Yalova Complex (Agust

(sic) 1999) – Bolu Tunnel collapsed (October 12 1999) – Aksary Istanbul

Underground construction collapsed.”

The web page further stated:

“So many innocent people lost their lives. Despite the fact that all

these innocent people died in the buildings that we built, to this date, we

have not made any public statement. Now the next anticipated Istanbul

earthquake is immanent. We have our signatures on many familiar buildings that

are home to thousands of people in Istanbul. It really scares us to think the

possibility of loosing (sic) thousands of more people in the next inevitable

earthquake. That is why we have decided to judge ourselves (sic) in front of

you with our good deeds and sins on these pages…”

Further down the web page there is a statement:

“As you have guessed it, this can not be a site that Yüksel Insaat Co.

put together and obviously, it is not. This site is an invitation to thinking

and talking about what is going on here. Why have we built this site? Because

we have lost 4 of our own family members under those buildings…”

The Complainant submits that this web site has harmed the commercial

reputation of the Complainant. The Complainant has furthermore provided copies

of newspaper articles published in the Turkish newspaper Hürriyet.

The Complainant submits that while the Respondent

has not yet established a web site to which the domain names

<yukselinsaat.org> and <yukselinsaat.net> resolve, the Complainant

is concerned at the possibility that the same content may be published on web

sites at these addresses.

B. Respondent

There was no Response filed by the

Respondent.

6. Discussion and Findings

Court Proceedings and the Jurisdiction of this Administrative Panel

Sub-paragraph

4(k) of the Policy addresses “Availability of Court Proceedings” and provides

that the mandatory administrative proceeding requirements set forth in

Paragraph 4 shall not prevent either party from submitting the dispute to a

court of competent jurisdiction for independent resolution before such

mandatory administrative proceeding is commenced or after such proceeding is

concluded.” It follows that the fact

that the Complainant has commenced court proceedings in Turkey is no bar to the

jurisdiction of this Administrative Panel.

Substantive Matters

In

accordance with paragraph 4(a) of the Policy, the Complainant must prove that:

(i) the domain names registered by the

Respondent are 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 interests in respect of the domain names in question; and

(iii) the domain names have been registered and

are being used in bad faith.

Identical or Confusingly Similar

It is clear that the Complainant

has rights in the Turkish registered

trademark and service mark device mark YÛKSEL INªAAT A.ª and

DEVICE, registration number 18894. In the view of this Administrative

Panel, it is further clear that the said domain names and each of them are

confusingly similar to the Complainant’s trademark and service mark, and this

is evidenced by the fact that the Complainant registered the domain name <yukselinsaat.com.tr> to

represent its company name, and trade mark, in the Turkish domain.

The Complainant has therefore

succeeded in establishing the first element in the test set out in paragraph

4(a) of the Policy.

Rights or Legitimate Interests

It is clear that the Respondent

has no commercial association with the Complainant and has no rights or

legitimate interest in the trademark or service mark YÛKSEL INªAAT A.ª and DEVICE or any similar trademark such as YUKSEL

INSAAT. The question arises as to whether the Respondent has any rights in the

domain names as distinct from the trademark or service mark.

The web site established at the

domain name address <yukselinsaat.com>

is clearly a gripe site and the other domain names, <yukselinsaat.org> and <yukselinsaat.net>, do not

resolve to any web site. In the view of this Administrative Panel, while the

Respondent is entitled to freely express his views, provided that he does not

contravene the laws of libel, such right does not extend to having a right to

use the Complainant’s trademark as a domain name for the purposes of

establishing a web site to express such views.

This would equally be the case

regardless of whether the views were laudatory or otherwise.

In paragraph 4(c) of the Policy

there is a non-exhaustive list of ways in which the Respondent can establish

that he has rights or legitimate interest in the domain names in issue. In the

view of this Administrative Panel, the activities of the Respondent do not fit

into any of the categories. The Respondent is not using the domain names in

connection with any offering of goods or services, bona fide or otherwise. Neither is the Respondent an individual,

business, or other organization that has been commonly known by the domain

names or any of them.

This Administrative Panel has

considered whether it could be argued that the Respondent is making a

legitimate non-commercial or fair use of the domain names, without intent for

commercial gain to misleadingly divert consumers or to tarnish the trademark or

service mark at issue and has concluded that this is not the case either.

Firstly there is the submission of

the Complainant, supported by the evidence of the print out of the WHOIS search

results, that the Respondent has offered one of the domain names for sale. This

indicates that the Respondent is not engaged in a “non-commercial” use of that domain

name, and by inference of all three of the domain names in issue. Secondly it

is clear that the content of the web site established by the Respondent is

designed to tarnish the Complainant’s trademark and service mark as detailed

below.

In the view of this Administrative

Panel the Respondent has no rights or legitimate interests in said domain names

and the Complainant has therefore succeeded in establishing the second element

of the test in paragraph 4(a) of the Policy.

Bad Faith

Paragraph 4(b) of the ICANN Policy

sets out the following examples of circumstances that will be considered by an

Administrative Panel to be evidence of the bad faith registration and use of a

domain name viz. circumstances indicating :

(i) that the domain name was registered or

acquired 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 the domain name registrant’s out-of-pocket

costs directly related to the domain name; or

(ii) the domain name was registered in order to

prevent the owner of the trademark or service mark from reflecting the mark in

a corresponding domain name, provided that the domain name registrant has

engaged in a pattern of such conduct; or

(iii) the domain name was registered primarily

for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the domain name

registrant intentionally attempted to attract for financial gain, Internet

users to the registrant’s 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 the registrant’s web site or

location or of a product or service on the registrant’s web site or location.

While

there is no evidence that the Respondent approached the Complainant directly

with an offer to sell any of the domain names, there is evidence that the

Respondent has offered the domain name <yukselinsaat.com> for sale on the

Registrar’s WHOIS page. While this is inconsistent with the Respondent’s

statement on the web page at the <yukselinsaat.com> address, that he built the

web site to start a debate because he lost four members of his family in

collapsed buildings, this Administrative Panel is sensitive to the fact that

this may well be the case and has great sympathy with the family of victims of

such a disaster.

Nonetheless the fact that the “for sale” statements were posted, amount

to circumstances indicating that the domain names were registered or

acquired primarily for the purpose of selling, renting, or otherwise

transferring the domain name registrations 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 the domain name registrant’s out-of-pocket

costs directly related to the domain name.

Furthermore on the balance of probabilities this

Administrative Panel does not accept that the said domain names were registered

and are being used by the Respondent to facilitate a debate on the issue of

collapsed buildings in Turkey. It is noteworthy that only one of the domain

names resolves to a web site viz.

<yukselinsaat.com>. Neither <yukselinsaat.net> nor

<yukselinsaat.org> resolve to any web site. Even if the Respondent

did want to set up a bona fide gripe

site, in the view of this Administrative Panel, he would not be entitled to use

any of these domain names in any event as they are virtually identical to the

Complainant's trademark. Nonetheless the fact that the Respondent

registered all three gTLD names indicates that he has another motive in

holding these registrations. In the view of this Administrative Panel, on the

balance of probabilities, said domain

names were registered and are being used in order to prevent the Complainant,

as owner of the trademark or service mark, from reflecting the mark in a

corresponding domain name, and by registering the three gTLD names the

Respondent has engaged in a pattern of such conduct.

This

Administrative Panel therefore finds that the Respondent has registered and is

using said domain names in bad faith.

7. Decision

With specific reference to Paragraphs 4(i) of

the Policy and 15 of the Rules it is the decision of this Administrative Panel

that the Complainant has established that said domain names <yukselinsaat.com>, <yukselinsaat.net>

and <yukselinsaat.org> and

each of them are confusingly similar to the trademark and service mark in which

the Complainant has rights, that the Respondent has no rights or legitimate

interests in said domain names and that the Respondent has registered and is

using said domain names in bad faith.

This Administrative Panel therefore directs

that said domain names <yukselinsaat.com>,

<yukselinsaat.net> and

<yukselinsaat.org> shall be transferred to the Complainant.

James Bridgeman

Sole Panelist

Dated: May 28, 2002