Eskidji Muzayedecilik Ticaret Ithalat Ihracat Anonim Sirketi v. UDS Ulusal Dagitim Sistemi ve Ticaret AS
Claim Number: FA0203000105932
The Complainant is Eskidji Muzayedecilik Ticaret Ithalat Ihracat A.S., Kasimpasa – Istanbul, TURKEY (“Complainant”) represented by Dilek Ustun, of Istanbul Patent & Trademark Consultancy Ltd. The Respondent is UDS Ulusal Dagitim Sistemi ve Ticaret AS, Istanbul, TURKEY (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <eskidji.com>, registered with Verisign - Network Solutions, Inc.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge, has no known conflict in serving as Panelist in this proceeding.
Anne M. Wallace, Q.C. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on March 18, 2002; the Forum received a hard copy of the Complaint on March 29, 2002.
On March 20, 2002, Verisign - Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <eskidji.com> is registered with Verisign - Network Solutions, Inc. and that the Respondent is the current registrant of the name. Verisign - Network Solutions, Inc. has verified that Respondent is bound by the Verisign - Network Solutions, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 3, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 23, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on April 19, 2002.
On May 1, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Anne M. Wallace, Q.C. as Panelist.
The Complainant requests that the domain name be transferred from Respondent to Complainant.
The Complainant “ESKIDJI MUZAYEDECILIK ITHALAT IHRACAT A.S.” herein called “ESKIDJI” has the following national trade and service marks registrations in Turkiye for the mark ESKIDJI.
Registration No Mark Intl. Classes Date of Registration
197115 ESKIDJI 35, 36 13.07.1998
197114 ESKIDJI 14, 20 19.07.1998
ESKIDJI also has the following international registration registered under Intl. Madrid Protocol. :
Intl.Registration No: Mark: Intl. Classes Date of Registration:
774613 ESKIDJI 14, 20, 35, 36 October 11, 2001
On July 22, 2001, the Complainant filed a service mark application which covers international class 35 in the United Arab Emirates.
The Complainant “ESKIDJI” is a leading auctioneering company in Turkiye. It was established on August 22, 1997 in Istanbul. Since 1997 the Complainant has conducted a wide range of auctions under the word mark ESKIDJI, the range of services covering estate, antique, household, fine furniture, collectibles, fine art, jewelry, paintings and automobiles auctions. ESKIDJI also owns one of the largest auction houses in the world with an area of 17.000. m2. ESKIDJI, in 2001, has rapidly grown to become one of the top five company in the World Auction Industry.
The Complainant has a web site published at <eskidji.com.tr> which provides more detailed information on ESKIDJI.
The Complainant has rights in the mark “ESKIDJI”. The Domain Name <eskidji.com> is based on the word "eskidji" which is identical to national and/or international ESKIDJI trade/service marks and as well as to the identifying part of the company name.
The domain name <eskidji.com> was registered with the registrar on 12 November 1999. At this time, the Complainant had already been featured in auctioneering services and had acquired registered trade/service marks and common law rights in its name.
Complainant says the domain name, <eskidji.com> is identical or confusingly similar to its trade mark ESKIDJI.
With respect to rights or legitimate interests, Complainant contends:
1) Respondent is not using the domain name in connection with a bona fide offering of goods and services. The Complainant, ESKIDJI, has not licensed or otherwise permitted the Respondent to use the mark “ESKIDJI” or to apply for or use any domain names incorporating that trade/service mark. The Respondent has no relationship with or permission from the Complainant for use of its trade/service mark. The Complainant has prior rights in that trade/service mark, which precede Respondent’s registration of the domain name.
2) The domain name in question is not a mark by which the Respondent is commonly known. Respondent does not operate a business or other organization commonly known as “ESKIDJI,” or that offers any goods or services covered under the ESKIDJI mark.
3) The Respondent has made no commercial use of the mark, and has sold no goods or services under the mark ESKIDJI. Internet users who visit the web site <eskidji.com> encounter a single page where the domain name is offered for sale. The statement “Bu Site Satiliktir” written in Turkish is equal to “This site is for sale” when translated into English. The users who visit <eskidji.com> are further re-directed to <r-portakal.com.tr> in a pop-up window. This site, <r-portakal.com.tr>, belongs to a competing company offering goods and services which are similar to that of the Complainant. Internet users who wish to visit Complainant’s web site are misleadingly diverted to a web site which is operated by one of the Complainant’s competitors. The Respondent deliberately intends to force the Complainant to pay for the domain name.
4) The Respondent has made no legitimate, non commercial or fair use of the domain name. Instead, Respondent is using the domain name solely to injure and harass Complainant and Complainant’s business. As discussed above, Respondent is currently using the <eskidji.com> domain name to link users directly and involuntarily to a different domain name and site of a company not affiliated with Complainant nor legitimately affiliated with Complainant’s ESKIDJI mark, but instead offering goods that compete with Complainant’s goods identified by Complainant’s ESKIDJI mark. Prior to creating that link, Respondent used the <eskidji.com> domain name as a vehicle to advertise his offer to sell the <eskidji.com> domain name.
Complainant asserts the Domain Name was registered and is being used in bad faith for the following reasons:
1) The Respondent registered and is using the domain name in question primarily for the purpose of selling it to the Complainant. Respondent registered the Domain Name for the purpose of "selling, renting, or otherwise transferring the Domain Name registration to the Complainant who is the owner of the trade/service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly relating to the Domain Name. The Domain Name was registered without the Complainant’s consent, license or authorization; Complainant’s ESKIDJI trade/service mark is well-known in Turkiye and partially in the world and Respondent must have been fully aware of Complainant’s trademark rights when Respondent registered the Domain Name.
2) The Respondent registered the Domain Name with constructive notice of the Complainant’s trade/service mark registration. The Respondent must have known of the Complainant’s trademark rights in ESKIDJI in view of the Complainant’s long use and trade/service mark registrations of the same.
3) The Respondent intends to prevent the Complainant from registering the Domain Name; and the Respondent intends to disrupt the Complainant’s business or to pressure the Complainant to buy the Domain Name from the Respondent for a price.
4) Respondent does not conduct any legitimate commercial or noncommercial business under the ESKIDJI mark or name.
5) The Respondent does not actually present a fair use of the disputed domain name, rather he uses the <eskidji.com> domain name as a vehicle to advertise his offer to sell the same and to force the Complainant to pay for the name. Such usage of the domain name may further be considered as “passive holding” and under these circumstances this must be considered as a concrete evidence of bad faith.
6) By registering the <eskidji.com> domain name, the Respondent is diverting consumers away from the Complainant’s business and will divert consumers away from Complainant’s official web site, thereby making it difficult for Complainant’s customers and the general public to locate Complainant’s business and official web site, and thereby disrupting Complainant’s business. By using the <eskidji.com> domain name, Respondent has intentionally attempted to attract, for vindictive reasons, Internet users to a competitor of the Complainant. Complainant alleges, upon information and belief, that Respondent has registered this domain name with only intent to sell it to Complainant or to some third party or for the purposes of preventing Complainant from using this domain name as its own. Under all the aforesaid circumstances, Respondent has both registered and is now currently using this domain name in bad faith.
The Response filed claims that Respondent has been in the business of computer software and hardware marketing in Turkey since 1997. Respondent says it purchased the <eskidji.com> domain name at a customer’s request and sold the name to the customer. Respondent did not respond to the substantive claims of the Complainant.
I have found that the domain name in question is identical or confusingly similar to Complainant’s established trademark and service mark, that the Respondent has no rights or legitimate interest in the domain name and that the Respondent is using the domain name in bad faith.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Before turning to these three elements, however, I must address an initial issue. Respondent claims that it has sold the domain name registration to a third party. However, the WhoIs lists the Respondent as the current registrant of the disputed domain name. Unless a party takes steps to transfer the registration of a domain name in the WhoIs, potential Complainants and others have no way of knowing who is the registrant of the name. Respondent is the registrant of the name and unless and until a change to that registration is made, Respondent is the proper party to the proceedings. Respondent may well owe a fiduciary or contractual duty to a person to whom Respondent may have sold the domain name to inform that person of proceedings such as this or to file a substantive response.
I do not believe, however, that it was ever intended that a third party like the Complainant or the Provider be required to “chase down” allegations that a registrant is no longer the owner of the domain name. Third parties are entitled to rely on the WhoIs to determine who is the registrant. That being the case, I will decide this case based on the submissions before me.
Identical and/or Confusingly Similar
Except for the addition of the “.com” requirement for the domain name, the disputed name is identical to Complainant’s ESKIDJI trademark. There is no question the name is identical to Complainant’s mark. Complainant succeeds on the first element.
Rights or Legitimate Interests
I accept the Complainant’s arguments with respect to this element. Viewing this situation in light of Para. 4(c) of the Policy, what Respondent has done to date is not a bona fide offering of goods or services. The web site in fact advertises to sell the domain name and links to a competitor of the Complainant. This is not a bona fide offering of goods or services. There is no evidence whatsoever that the Respondent has been commonly known by the domain name, nor has Respondent demonstrated any trademark or service mark rights to the name. Respondent has made no non-commercial or fair use of the name. Again, the use of the name has been a web site advertising the name for sale and a link to a competitor of the Complainant. Complainant, therefore, succeeds on the second element.
Registration and Use in Bad Faith
With respect to this element, the paragraph 4(b) of the Policy reads:
“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, 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 on-line 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
In this case, Respondent has engaged in bad faith in at least two ways. The fact that the only real use that has been made of the domain name is to put up a web site which offers to sell the domain name to third parties, is evidence that Respondent has acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name to Complainant or to a competitor of the Complainant. This in itself, in this circumstance, is bad faith, and also constitutes evidence of passive holding which is also bad faith.
In addition, however, Respondent has also included in the web site a link to a competitor of Complainant. This demonstrates an intention to attempt to attract for commercial gain, Internet users to the web site and then to another on-line location for the purpose of creating confusion. This too, in this case, amounts to bad faith.
For the reasons set out above, I find for the Complainant, and I order that the disputed domain name <eskidji.com> be transferred to the Complainant.
Anne M. Wallace, Q.C., Panelist
Dated: May 15, 2002
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