Mr. Arif Develier v. Domain Administrator / Network Services, MindViews Limited Liability Company
Case No. D2014-1367
1. The Parties
The Complainant is Mr. Arif Develier of Istanbul, Turkey, represented by Net Koruma Danışmanlık Hizmetleri, Turkey.
The Respondent is Domain Administrator of Wellington, New Zealand / Network Services, MindViews Limited Liability Company of Wellington, New Zealand.
2. The Domain Name and Registrar
The disputed domain name is registered with Netracorp, LLC dba Global Internet (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 12, 2014. On August 13, 2014 the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 14, 2014 the Registrar 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 August 21, 2014 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 August 25, 2014.
The Center verified that the Complaint together with 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 August 25, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 14, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 15, 2014.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on September 19, 2014. 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 September 19, 2014 the Respondent’s representative, Mr. Preaudx, sent an email to the Center requesting an extension of one week to the time limit for the Response, stating that he had been unavailable and “only recently noticed these requests in my spam folder”. On September 23, 2014, the Respondent’s said representative filed a late Response with a request that this be forwarded to the Panel. On September 24, 2014, the Panel issued Administrative Panel Procedural Order No. 1 informing the Parties that the Panel was minded to accept the Respondent’s submission but not to treat this as the Response per se in view of its lateness. The Panel therefore invited the Complainant to submit its comments on the Respondent’s submission by September 30, 2014 and extended the due date for the Panel’s Decision to October 14, 2014. In response to Administrative Panel Procedural Order No. 1, the Complainant filed a supplemental filing on September 30, 2014.
4. Factual Background
The Complainant is a private individual and states that it is the owner of the restaurant chain named “Develi”, which it notes is the first and only such chain in Turkey that has been operating for more than a century. The Complainant states that the chain was founded by the Complainant’s grandfather in 1912, being initially established in the Gaziantep province of Turkey and expanded to Istanbul and other places in Turkey from 1966. The Complainant says that today its chain has a capacity of 5,500 customers and has plans to open in Russian Federation, Ukraine and Azerbaijan.
The Complainant claims rights in various trademarks related to its “Develi” brand including Turkish figurative mark no. 98/014355 for a design including the stylised word “Develi” placed beneath the silhouette of a camel, applied for on October 14, 1998, registered on September 10, 1999 and with a protection date of October 14, 2008 in Nice classes 29, 30 and 32; and Turkish figurative mark no. 98/014356 for the same design as that of no. 98/014355 applied for on October 14, 1998, registered on November 30, 1999 and with a protection date of October 14, 2008 in Nice classes 40 and 43.
The Respondent is a limited liability company which states that it has provided information technology consultation services for 12 years including hosting, domain registrations and paid search advertising. The Respondent notes that it is in the business of developing and registering common generic names for use with vanity Internet services such as email addresses and paid advertising. The disputed domain name was created on August 9, 2005. Screenshots provided by the Complainant from Internet archive websites show that in December 2005, and in March and July 2006, the website associated with the disputed domain name featured pay-per-click advertisements of a general nature together with a statement that the disputed domain name was for sale and a hyperlink soliciting offers to purchase it.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical to a trademark in which it owns rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Complainant notes that the disputed domain name was registered in 2005, some years after the Complainant’s trademark registrations were applied for in 1998 and also after the Complainant had registered the domain name in 2002. The Complainant states that the Respondent registered the disputed domain name with knowledge of the Complainant’s trademark and that it is not possible for the Respondent to claim otherwise. The Complainant notes that it did not give permission or license to the Respondent for the use of its trademark and that the Respondent has not acquired any rights including registered trademarks associated with the disputed domain name. The Complainant notes with reference to entries on the “www.archive.org” website that the disputed domain name was offered for sale after its registration.
The Complainant asserts that the Respondent is a Turkish citizen resident in Turkey who registered the disputed domain name in 2005. The Complainant notes that the Respondent’s credentials were hidden by way of a privacy service and submits with reference to past cases that this can be an indication of bad faith. The Complainant asserts that following the registration of the disputed domain name the Respondent did not develop website content therefor and only renewed it. With reference to the screenshots of the website associated with the disputed domain name, the Complainant asserts that the Respondent’s attempt to sell the disputed domain name is “the most basic evidence of malicious behavior”.
In its supplemental filing, the Complainant states that the late Response contains groundless information and documents which have been produced to misguide the Panel. The Complainant reiterates the fact that its trademark is well-known, is the subject of internationally registered trademarks and is popular in Turkey. The Complainant states that the Respondent’s position that “Develi” is a generic name is groundless and notes that the apparent list of third party trademarks incorporating this name taken from the website of the Turkish Patent Institute shows rejected applications rather than registered marks. The Complainant adds that the Respondent has failed to present any proof of its rights or legitimate interests in respect of the disputed domain name. The Complainant states that the Respondent was informed about the DEVELI trademark when registering the disputed domain name and consequently attempted to sell it and notes that it is not possible for the Respondent to claim that it was not so informed. The Complainant concludes that the Respondent has attempted to take advantage of the popularity of the Complainant’s trademark due to the Complainant’s registration thereof in various countries.
The Respondent’s late Response contains the following contentions:
The Respondent asserts that the city of Develi is located in the central Anatolia Region of Turkey, was established over 200 years ago and pre-dates anything that the Complainant may have established. The Respondent submits that the Complainant fails to show that the use of the disputed domain name is likely to confuse the vast global Internet population.
The Respondent states that its use of the city name in the practice of offering vanity email, blogging and web hosting services bears no resemblance to the Complainant’s claims that it would be confused with the Complainant’s café or restaurant. The Respondent adds that it uses the name “Develi” for its descriptive purpose by providing paid search advertising based around the city name itself and supports this with a screenshot from the website “www.domaintools.com” which appears to show that the said site has been used since registration for paid links, albeit that the nature of the links themselves cannot be discerned. The Respondent states that this constitutes a bona fide service which pre-dates any knowledge or awareness of the Complainant on its part.
The Respondent states that the name “Develi” is too generic to be registered as a trademark on its own. The Respondent notes that the Complainant has failed to provide proof of an actual certificate of registration for the DEVELI word mark itself and asserts that the United States Patent and Trademark Office (“USPTO”) shows an abandoned trademark application for such made by the Complainant in 2007, some two years after the disputed domain name was registered. The Respondent points out that such application disclaims the exclusive right to use “Develi” other than as part of the submitted drawing. The Respondent states that there are numerous Turkish trademarks registered by third parties encompassing the name “Develi”, none of which have exclusive right thereto outside a stylization, drawing or combination thereof.
The Respondent denies registering the disputed domain name for the purpose of selling it to another party and notes that there are no communications between the parties to this effect. The Respondent notes that the early “for sale” messages on its website were placed there by default from the hosting/parking company. The Respondent notes that it does receive purchase inquiries for the disputed domain name generated by third parties and provides examples from January 2013 and February 2014 but adds that it has never responded to such inquiries or entertained the idea of selling the disputed domain name. The Respondent defends its use of a privacy service as beneficial in providing a third party method of contact which reduces “spam” email and does not deceive anyone.
The Respondent denies all or any knowledge of the Complainant and denies any intent to prevent the Complainant from using its mark or engagement in any pattern of such conduct. The Respondent adds that it would not make financial sense to register and hold the disputed domain name for a decade in the hope that “a small café in Turkey” would one day wish to purchase it.
The Respondent notes that the Complainant appears to be a café or restaurant at a specific location within Turkey and notes that it is not even located in the city of Develi. The Respondent asserts that its business is Internet services and consulting and is not associated with that of the Complainant.
The Respondent submits that the Complainant’s reference to expansion plans demonstrate its true intent in bringing the Complaint and states that the Complainant has falsely claimed word mark trademark rights intentionally. The Respondent requests a finding of Reverse Domain Name Hijacking based on the fact that it considers that the Complaint was brought in bad faith and in the knowledge that the Respondent had an “unassailable” right to legitimate interest in the disputed domain name and a clear lack of bad faith registration and use.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Preliminary issue: Late filing of Response
On September 19, 2014, the Center received an email from the Respondent indicating that the Center’s email communications had been automatically filed in the Respondent’s email folder reserved for unsolicited commercial email and consequently had been overlooked. The Respondent therefore requested an extension of the due date for the Response by one week. The Response was filed on September 23, 2014 by which time the Panel had been appointed but had not yet proceeded to a Decision.
In terms of paragraph 10(a) of the Rules, the Panel has discretion to conduct an administrative proceeding in such manner as it considers appropriate in accordance with the Policy and Rules. Paragraph 10(b) of the Rules provides that the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.
The Panel noted that the Response had been filed relatively promptly after the Respondent’s first communication with the Center. Furthermore, in the Panel’s opinion, the Response contained information which was important to the merits of the dispute, in particular the fact that “Develi” is the name of a city in Turkey. The Panel therefore considered it appropriate to admit the late Response into the record. That said, the Panel was mindful that in accepting a late Response it would be granting something of an indulgence to the Respondent which required to be balanced by a similar consideration to the Complainant, in terms of paragraph 10(b) of the Rules.
Accordingly, the Panel determined, pursuant to paragraph 10(a) of the Rules, that it would admit the Response but not treat it as the Response per se, and would therefore allow the Complainant the opportunity to reply thereto. The Panel communicated this determination to the Parties by way of Administrative Panel Procedural Order No. 1 and the Complainant subsequently took up the opportunity to reply by way of its reply of September 30, 2014. The Panel has taken both the Respondent’s and the Complainant’s respective filings into consideration in this Decision. In all of these circumstances, the Panel is satisfied that the Parties have been treated with equality and have each received a fair opportunity to present their case.
B. Identical or Confusingly Similar
There are two parts to the inquiry under this element of the Policy. The Complainant must first show that it has rights in a trademark and secondly that the disputed domain name is identical or confusingly similar to such mark.
The mark on which the Complainant relies is a figurative mark consisting of the stylized word “Develi” placed beneath the silhouette of a camel. The Panel is therefore required to consider how to deal with the design elements of this mark in comparing it to the disputed domain name. Paragraph 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) addresses this topic by posing the question “Are disclaimed or design elements of a trademark considered in assessing identity or confusing similarity?” The consensus view is stated as follows:
“[…] as figurative, stylized or design elements in a trademark are generally incapable of representation in a domain name, such elements are typically disregarded for the purpose of assessing identity or confusing similarity, with such assessment generally being between the alpha-numeric components of the domain name, and the dominant textual components of the relevant mark. However, design elements in a trademark may be relevant to the decision in certain circumstances - such as where, for example, they form an especially prominent or distinctive part of the trademark overall. Some panels have found it to be a matter of impression in the circumstances of each case. Where the entire textual component of a complainant’s relevant trademark has been disclaimed, or the only protectable component of such mark is comprised of design elements which generally cannot be represented in the alpha-numeric string of a domain name, then (absent a showing of acquired distinctiveness through use of the relevant mark) the complainant may lack any relevant rights under the UDRP on the basis of such mark, rendering moot any assessment of the disputed domain name’s identity or confusing similarity with it.”
The Panel respectfully adopts the consensus view. In the present case, the Panel can clearly identify the word and design elements separately and has no difficulty in extracting the alphanumeric element “Develi” within the mark. Ordinarily, the Panel would proceed to compare this element with the second level of the disputed domain name. However, in the present case, the Respondent has placed the figurative nature of the Complainant’s mark firmly in issue by pointing out that the name “Develi” is a generic term which, in whole or in part, represents the name of a city in Turkey. The Respondent adds that in the Complainant’s abandoned trademark application before the USPTO the Complainant had made an express disclaimer of the exclusive right to use the word “Develi” other than as part of the submitted drawing. While the Complainant replies in its supplemental filing denying that its mark contains a generic name, it notably does not address the contentions of the Respondent regarding either the city name or USPTO disclaimer. As such, there is a distinct possibility in the Panel’s mind that the only protectable component of the Complainant’s mark is the entire word + design element unless the Complainant can show acquired distinctiveness through use as to the textual element. Given the Complainant’s averments regarding its use of the mark for over a century, its insistence that its mark is a well-known brand and that it is popular in Turkey, the Panel would have expected the Complainant to have been able to make such a showing either in its Complaint or reply brief. The problem for the Complainant however is that it has entirely failed to provide any independent evidence to support its averments on this topic.
In all of these circumstances, the Panel considers that it would likely have found that the Complaint fails on this element of the Policy. However, in light of its finding on registration and use in bad faith below, it is unnecessary for the Panel to reach a concluded view on this issue.
C. Rights or Legitimate Interests
The requirements of paragraph 4(a) of the Policy are conjunctive. A consequence of this is that failure on the part of a complainant to demonstrate one element of the Policy, including that the disputed domain name has been registered and is being used in bad faith, will result in failure of the complaint in its entirety. Accordingly, in light of the Panel’s finding under the next head, it is unnecessary for the Panel to address the issue of the Respondent’s rights or legitimate interests in the disputed domain name.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, 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 online 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 web site or location”.
The screenshots of the website associated with the disputed domain name produced by the Complainant dated December 12, 2005, March 28, 2006 and July 19, 2006 demonstrate to the Panel’s satisfaction that within months of the creation of the disputed domain name, it was pointed to a website featuring pay per click advertising of a general nature. These screenshots also show that the web pages concerned offered the disputed domain name for general sale. The broad thrust of the Complainant’s case is that this demonstrates registration and use in bad faith. The Panel does not agree. There is no evidence before the Panel that the Respondent was intent on targeting the Complainant’s trademark by way of its registration of the disputed domain name. On the contrary, it seems plausible to the Panel that the Respondent selected the disputed domain name because it represented the name of a geographic location, the city named Develi. The Complainant’s screenshots show that the pay-per-click advertising published on the corresponding website did not target the line of business in which the Complainant is engaged, which is again consistent with the Respondent’s case. Furthermore, the Respondent does not fall foul of the Policy simply by having made a general offer of sale of the disputed domain name. The Complainant has placed no evidence before the Panel indicating that the Respondent’s primary purpose in registering the disputed domain name was to sell it to the Complainant or a competitor thereof rather than, as the Respondent contends, to take advantage of its geographic and generic connotation.
Although the Complainant insists that the Respondent must have known of the Complainant and its rights at the time of creation of the disputed domain name, the Complainant provides no supportive evidence showing how the Respondent could be expected to have gained such knowledge. Indeed, the Complainant’s averment, found in both the Complaint and the Amended Complaint, that the Respondent “is a Turkish citizen resident in Turkey” is apparently incorrect and, at least on the present record, is without any foundation. Had it been an accurate statement, it might have pointed in the direction of the Respondent’s possible knowledge of a Turkish business such as that of the Complainant. Even then, in the Panel’s opinion, this would not have been enough for the Panel to impute such knowledge to the Respondent without further evidence to support the Complainant’s contention that it and its mark are well known and that its business is popular in that country.
As matters stand, there is no evidence on the present record indicating that the Respondent’s denial of knowledge of the Complainant and of the Complainant’s mark is inherently improbable, such as, for example, any evidence as to the extent of the renown of the mark on the Internet. Had suitable evidence of this nature been forthcoming, it might perhaps have gone some way towards demonstrating that an IT and Internet focused organization, such as the Respondent, could more probably than not have identified the Complainant (and its fame) by a simple search. In the absence of any such evidence, however, the Respondent’s denial of knowledge is credible enough to cast doubt on the Complainant’s claims.
In all of these circumstances, the Panel finds that the Complainant has failed to prove that the disputed domain name was registered and has been used in bad faith.
E. Reverse Domain Name Hijacking
The Respondent requests a finding of Reverse Domain Name Hijacking based on the fact that it considers that the Complaint was brought in bad faith and in the knowledge that the Respondent had an “unassailable” right or legitimate interest in the disputed domain name and a clear lack of bad faith registration and use. The Panel is troubled by the Complainant’s inability to provide suitable evidence to support its assertions of the extent to which it is well-known, in terms of its case that the Respondent was more likely than not to have been targeting it. More importantly, however, the Panel is concerned by the Complainant’s critical failure to address either in the Complaint or in its supplemental filing the fact that the name “Develi” holds a non trademark meaning arising from the eponymous city. Instead, the Complainant attempts to rely upon bare averments that it is well known, vague assertions as to the reach and extent of its restaurant chain with no supporting evidence and an unfounded submission that the Respondent is Turkish. It is the view of the Panel that a Complaint in these terms was bound to fail and that the Complainant knew or ought to have known this at the point of filing.
In all of these circumstances, the Panel finds that on balance the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
For the foregoing reasons, the Complaint is denied.
Andrew D. S. Lothian
Date: October 14, 2014