Tuyap Tum Fuarcilik Yapim Anonim Sirketi (Tuyap Fairs and Exhibition Organization Inc.) v. Tuyap /Kurumsal.net/Koznet Kurumsal Internet Hizmetleri

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Tuyap Tum Fuarcilik Yapim Anonim Sirketi (Tuyap Fairs and Exhibitions Organization Inc.) v. Tuyap /Kurumsal.net/Koznet Kurumsal Internet Hizmetleri

Case No. D2003-0442

1. The Parties

The Complainant is Tuyap Tum Fuarcilik Yapim Anonim Sirketi (Tuyap Fairs and Exhibitions Organization Inc.), of Istanbul, Turkey, represented by Pinar Kaya Yalcin of Turkey.

The Respondents are Tuyap /Kurumsal.net/ Koznet Kurumsal Internet Hizmetleri ("Respondent"), of Istanbul, Turkey.

2. The Domain Name and Registrar

The disputed domain name <tuyap.com> is registered with Bulkregister.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 9, 2003. On June 10, 2003, the Center transmitted by email to Bulkregister.com a request for registrar verification in connection with the domain name at issue. On the same day, Bulkregister.com transmitted by email to the Center its verification response confirming that the Respondent "Tuyap" is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, on the ground that the registrant of record was not the entity specified in the Complaint as the Respondent, the Complainant filed an amendment to the Complaint on June 17, 2003. The Center verified that the Complaint together with the amendment to 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 June 19, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was July 9, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 10, 2003.

The Center appointed Anne-Virginie Gaide as the sole panelist in this matter on July 16, 2003. 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.

On July 30, 2003, the Administrative Panel issued Panel Order no. 1, by which it requested Complainant to provide additional information on its relation to the holder of the registered trademark relied upon in the Complaint as well as on the legal proceedings initiated by Complainant in Turkey before the filing of the Complaint. On August 1, 2003, within the deadline set in Panel Order no. 1, Complainant filed a Reply by e-mail with the Center. Respondent did not file any observations on such Reply.

4. Factual Background

Complainant, a company founded in 1979, organizes fairs and exhibitions in Turkey and abroad.

Tuyap Holding Inc. is the registered owner of a Turkish registration for the service mark TÜYAP & design in international class 36 (reg. number 172 445), valid until October 23, 2005. The services covered are "investment, financing services".

In the course of the year 2000, Complainant entered into a Registrant Name Change Agreement with Cem Incecinar, in the name of which the Domain Name was registered at the time. This Agreement provided for the transfer of the Domain Name to Complainant.

As of November 23, 2001, the Domain Name was registered in the name of Tuyap Fuarcilik A.S. The administrative and technical contact for the Domain Name was at that time "kurumsal.net".

As of June 4, 2003, the registrant of the Domain Name was "Tuyap", the only address provided being "Istanbul, TR 80300". The administrative and technical contact for the Domain Name was still "kurumsal.net".

On May 1, 2003, the Domain Name resolved to a web page with the following content: "The Internet publishing and e-mail services have been closed for an unlimited period because Tuyap has not paid the prices for the Internet project services. The reasons for closing this web-site will be explained in the Internet site tomorrow".

On May 9, 2003, the Domain Name resolved to a web page with the following content, in Turkish and in English: "Tuyap.com Website hosting & e-mail services have been suspended permanently due to non-payment".

5. Parties’ Contentions

A. Complainant

Complainant contends as follows:

Since 1979, Complainant has served more than 25,000 domestic and foreign client organizations by organizing 443 domestic fairs and exhibitions. It is the owner of the TUYAP Fair, Convention and Congress Center in Istanbul, the largest fair and congress center in Turkey, covering 121,000 square meters and designed to provide a full range of services to exhibitors and visitors. Complainant owns the domain name <tuyap.com.tr>, through which it currently broadcasts its Internet site, as well as numerous domain names including the term "tuyap".

Complainant is controlled by Tuyap Holding Inc., which owns 59,8% of Complainant's shares.

Complainant entrusted the company Koznet Kurumsal Internet Hizmetleri (herafter "Koznet") with design, consultancy and management services relating to its web site and to the Domain Name <tuyap.com>. Koznet transferred the Domain Name (until then registered with Network Solutions) to the current registrar Bulkregister.com, and modified on that occasion the Whois data pertaining to the Domain Name, without Complainant's consent, thus violating its contractual agreement with Complainant and the principles of good faith and commercial ethics.

When Complainant decided to work with another service provider, due in particular to failures in the service provided by Koznet, it asked Koznet to orient the Domain Name towards the servers of the new service provider. Mr. Erdinc Muslu, responsible for Koznet, instead oriented the Domain Name towards his own servers, and then published untrue and harmful statements on Complainant. Complainant contends that it has paid all the sums due to Koznet, and does currently not owe anything to this company. The confiscation of the Domain Name by Respondent caused material and moral damage to Complainant, which had in particular to reprint its promotional material to replace <tuyap.com> by <tuyap.com.tr>.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, Complainant must show that :

i) The Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and

iii) The Domain Name has been registered and is being used in bad faith.

Before turning to an analysis of these three elements, it is necessary to address a preliminary issue, concerning who the proper Respondents are in this case.

Even though only "Tuyap" is listed as Registrant in the Whois record relating to the Domain Name, Complainant contended in the Complaint that Respondent was Koznet Kurumsal Internet Hizmetleri, Mr. Erdinc Muslu, with two different addresses in Istanbul. The Center notified Complainant that the Complaint was administratively deficient, because the registrant of record was not the entity specified in the Complaint as the Respondent. In the amendment to the Complaint, Complainant indicated that Respondent should be "kurumsal.net", as this name was listed as the administrative contact for the Domain Name in the Whois record. According to Complainant, kurumsal.net and Koznet Kurumsal Internet Hizmetleri are the same entity. Complainant also mentioned that the owner of the domain name <kurumsal.net> was Mr. Erdinc Muslu.

According

to the definition

provided

by paragraph

1 of the

Rules, "Respondent

means the

holder of

a domain-name

registration

against

which a

Complaint

is initiated".

Strictly

speaking,

the Respondent

in this

case should

be "Tuyap",

the only

name listed

under Registrant.

In view

of the fact

that "Tuyap"

does not

appear to

be a person

or a legal

entity (this

name corresponds

to Complainant's

name and

to the Domain

Name), the

Administrative

Panel finds

it appropriate

to consider

the name

listed under

"administrative

and technical

contact",

i.e. kurumsal.net,

as a Respondent

in this

case. It

is also

appropriate

to cite

Koznet Kurumsal

Internet

Hizmetleri

as a Respondent,

in view

of Complainant's

uncontested

contention

that kurumsal.net

and Koznet

Kurumsal

Internet

Hizmetleri

designate

the same

entity (see

Amazon.com,

Inc. v.

Wes Mayder,

WeDirect,

Inc. and

Iclicks,

WIPO

Case No.

D2003-0258,

where the

Administrative

Panel considered

as a proper

Respondent

an entity

which appeared

to be probably

identical

to one of

the listed

Registrant,

and whose

name appeared

as a technical

contact).

On the other hand, the Administrative Panel considers that it is not appropriate to name as a Respondent Mr. Erdinc Muslu, as this person does not appear anywhere in the Whois record for the Domain Name. This might be justified, maybe, if Mr. Muslu was the only beneficial owner of Koznet. This has however not been alleged and cannot be inferred from the sole fact that he is the registrant of the domain name <kurumsal.net>.

Accordingly, the Administrative Panel considers that Respondent in the present case is Tuyap/kurumsal.net/Koznet Kurumsal Internet Hizmetleri.

A. Identical or Confusing Similarity

The Domain Name reproduces in its entirety the word element of the service mark "TÜYAP & design". The Administrative Panel assumes in this context that the term "TÜYAP" is distinctive, as this has not been contested. The fact that the typographic sign "" on the letter "U" is not reproduced in the Domain Name is not relevant. Indeed, it does not influence in a significant manner the visual impression produced by the mark, so that its absence does not constitute a material difference. The graphical elements of the mark consist in the font in which the word "TÜYAP" is written, as well as in a square device on the left of this word, which features what seems to be a stylized "T". This device is smaller than the word "TUYAP", which is thus clearly predominant. The Administrative Panel finds consequently that the Domain Name is confusingly similar to the service mark "TÜYAP & design".

Complainant is not the registered holder of this mark. The registered holder is indeed Tüyap Holding A. S. Complainant has declared, and Respondent has not contested, that it is controlled and managed by Tüyap Holding, which is its majority shareholder. In view of the relationship between Complainant and Tüyap Holding, the Administrative Panel considers that Complainant has rights to the service mark "TÜYAP & design" (which appears on Complainant's letterhead). It is accordingly not necessary to examine whether Complainant could be seen as having common law trademark rights due to its long use of the mark. It is to be noted in this respect that the application of the notion of common law trademark rights might not be appropriate when deciding a dispute between two parties located in a non-common law country.

In conclusion, the first condition provided in paragraph 4(a) of the Rules is satisfied.

B. Rights or Legitimate Interests

The record contains no element that would command a finding of rights or legitimate interests of the Respondent regarding the Domain Name.

There could

be a question

as to whether

a dispute

between

Respondent

and Complainant

on the subject

of the fees

due to Respondent

for its

services

may justify

the retention

of the Domain

Name as

a security

for payment.

In other

words, it

is not impossible

that Respondent

could invoke,

under Turkish

law, some

sort of

lien or

charge on

the Domain

Name, which

might be

a legitimate

interest

(see Clinomics

Biosciences,

Inc. v.

Simplicity

Software,

Inc.,

WIPO

Case No.

D2001-0823,

where the

Administrative

Panel found

that the

issue of

whether

the Respondent

had a lien

was outside

the scope

of the proceedings,

because

it requested

an evaluation

of the applicable

commercial

law of liens).

However,

in the absence

of any allegation

on this

issue from

Respondent

(who is

in default),

the Administrative

Panel infers,

in conformity

with paragraph

14(b) of

the Rules,

that no

such lien

or charge

exists in

favor of

Respondent,

and that

Respondent

has no rights

or legitimate

interests

to the Domain

Name.

In conclusion, the second condition provided in paragraph 4(a) of the Rules is satisfied.

C. Registration and Use in Bad Faith

Paragraph 4(b) of the Policy provides four circumstances which may be evidence of registration and use of a Domain Name in bad faith, with the indication that the list thus given is not exhaustive.

As of November

2001, the

Domain Name

was registered

in the name

of Complainant,

the Respondent

being only

the administrative

and technical

contact

for the

Domain Name.

Sometimes

between

November

2001 and

June 2003,

Respondent

deleted

the name

and address

of Complainant

under the

Registrant

details,

leaving

only the

name "tuyap"

and a zip

code. The

only concrete

details

left were

those of

Respondent,

under administrative

and technical

contact.

This subsequent

appropriation

of the Domain

Name must

in the Panel's

view be

equivalent

to registration

within the

meaning

of paragraph

4(b) of

the Policy.

It can be

noted that

the notion

of registration

has already

been stretched

to encompass

subsequent

acquisition

of a domain

name (see

Madonna

Ciccone,

p/k/a Madonna

v. Dan Parisi

and "Madonna.com",

WIPO

Case No.

D2000-0847).

Thus, the

fact that

Respondent's

acts in

respect

of the Domain

Name are

not technically

a registration

or an acquisition

should not

prevent

a finding

of "registration

in bad faith"

within the

meaning

of paragraph

4b) of the

Policy.

None of the circumstances set forth in paragraph 4(b) corresponds exactly to the present situation. It must however be examined whether the circumstances provided under letter (i) and (iii) could be applicable by analogy.

a) Paragraph 4(b)(i)

Paragraph 4(b)(i) provides that circumstances indicating that respondent has acquired the Domain Name primarily for the purpose of selling or otherwise transferring the domain name to the complainant, for a valuable consideration in excess of the out-of-pocket costs related to the domain name, shall be evidence of registration and use in bad faith.

In the present case, it might be argued that Respondent modified the Whois data of the Domain Name (thus "acquiring" it by deleting Complainant's name as Registrant and leaving only its own details in the Whois data) and used it to broadcast presumably untrue statements about Complainant for the purpose of pressuring Complainant into paying the disputed fees (in all likelihood in excess of the costs related to the Domain Name), in exchange of the restitution of the Domain Name. The Administrative Panel believes however that this interpretation of the Policy is a bit stretched, and that the situation at issue differs from the one contemplated by the drafters of the Policy, i.e. a typical cybersquatting situation. Moreover, it is not quite clear whether Respondent is willing to restitute control over the Domain Name to the Complainant if its fees were paid (there is no evidence of such an offer in the file, and the amount of the fees in dispute is unknown).

b) Paragraph 4(b)(iii)

Paragraph 4(b)(iii) of the Rules, on the other hand, provides that registration of a domain name primarily for the purpose of disrupting the business of a competitor shall be evidence of registration and use in bad faith.

In the present case, it is likely that Respondent modified the Whois data for the Domain Name and used its control over the Domain Name for the purpose of disrupting the business of Complainant. First, by preventing web users from accessing Complainant's web site by means of the Domain Name, Respondent obviously caused an important disruption. Complainant explains in this respect that it had to reprint various commercial documents in order to mention <tuyap.com.tr> instead of <tuyap.com>. Moreover, assuming Complainant does not owe any sum to Respondent for its past services (as alleged without contestation by Complainant), the use of the Domain Name in connection to web pages falsely accusing Complainant of not paying its provider, is obviously apt to disrupt Complainant's business by creating doubts about its solvability and commercial honesty.

Arguably,

Complainant

is not a

commercial

competitor

of Respondent,

since they

do not offer

similar

goods or

services.

Rather,

Complainant

was a customer

of Respondent.

The notion

of "competitor",

as provided

in paragraph

4(b)(iii)

of the Policy,

has been

interpreted

differently

by Administrative

Panels.

In Mission

KwaSizabantu

v. Benjamin

Rost,

WIPO

Case No.

D2000-0279,

the Panel

held that

the term

"competitor"

should not

be restricted

to a commercial

or business

competitor

but should

encompass

a person

who acts

in opposition

to another.

In The

Toronto-Dominion

Bank v.

Boris Karpachev,

WIPO

Case No.

D2000-1571,

the Panel

also adopted

a broad

approach,

holding

that the

genre of

competition

referred

to needed

not be commercial,

and that

the respondent's

opposition

to the practices

of a broker,

of which

he was previously

a customer

and which

he criticized,

was sufficient

to qualify

him as a

competitor.

In Tribeca

Film Center,

Inc. v.

Lorenzo

Brusasco-Mackenzie,

WIPO

Case No.

D2000-1772,

the Panel

preferred

a restrictive

view, and

held that

a respondent

can disrupt

the business

of a "competitor"

only if

it offers

goods or

services

that can

compete

or rivals

with the

goods or

services

offered

by the trademark

owner.

The Administrative Panel finds it not necessary to take side in this controversy. Indeed, In view of the fact that paragraph 4(b) of the Policy is not exhaustive, it should be possible to apply its provisions by analogy to situations that differ only slightly from the situations described in this paragraph. The Administrative Panel sees no reason why registration and use for the purpose of disrupting the business of a previous customer should be treated differently from registration and use for the purpose of disrupting the business of a competitor. Even though disruption of the business of a customer is not expressly described in the Policy, it appears materially very similar to the situation concerned by paragraph 4(b)(iii). A finding of bad faith registration and use is therefore justified in the Panel's opinion, even if, arguably, the term "competitor" does not cover a previous customer of the respondent.

Finally, the fact that Respondent did not reply to the Complaint, even though it received the Complaint sent by courier, is an additional element supporting a finding of bad faith.

In view of the above, the Administrative Panel finds that Responded registered and used the Domain Name in bad faith, so that the third condition of paragraph 4(a) of the Policy is satisfied.

7. Other proceedings

In the Complaint, Complainant mentioned that on May 6, 2003, its attorney had introduced "a complaint" against Koznet Internet Hizmetleri to the office of the Prosecutor of Istanbul.

According to paragraph 18(a) of the Rules, in the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding or to proceed to a decision.

In its Panel Order No. 1, the Administrative Panel requested Complainant to provide more information about the initiated proceedings, in order to determine whether it might be appropriate to suspend or terminate the administrative proceeding. In its Reply of August 4, 2003, Complainant clarified that the proceeding at issue was a criminal proceeding. It further explained that the purpose of the criminal complaint was to prevent the use of the Domain Name by Respondent, but did not aim at the transfer of the Domain Name.

In view of the fact that the proceeding initiated on May 6, 2003, in Turkey will not address the question of the ownership of the Domain Name, the Administrative Panel has not found necessary to suspend or terminate the present administrative proceeding, and has decided to proceed with a decision, in view of the fact that the procedures at issue do not have the same object.

8. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <tuyap.com> be transferred to the Complainant.

Anne-Virginie Gaide

Sole Panelist

Dated: August 21, 2003