KARACA ZÜCCACIYE TICARET VE SANAYI ANONIM SIRKETI v. Karaca Yacht LTD.
Claim Number: FA1206001448308
Complainant is KARACA ZÜCCACIYE TICARET VE SANAYI ANONIM SIRKETI (“Complainant”), represented by Judith Bachman, New York, USA. Respondent is Karaca Yacht LTD. (“Respondent”), represented by Matthew H. Swyers of The Trademark Company, PLLC, Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <karaca.com>, registered with Network Solutions, LLC.
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as a Panelist in this proceeding.
Jeffrey M. Samuels, David P. Miranda, and Sandra J. Franklin, as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 12, 2012; the National Arbitration Forum received payment on June 12, 2012.
On June 13, 2012, Network Solutions, LLC. confirmed by e-mail to the National Arbitration Forum that the <karaca.com> domain name is registered with Network Solutions, LLC. and that Respondent is the current registrant of the names. Network Solutions, LLC. has verified that Respondent is bound by the Network Solutions, LLC. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 18, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 9, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@karaca.com. Also on June 18, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on July 11, 2012
A timely Additional Submission was received from Complainant on July 13, 2012.
A timely Additional Submission was received from Respondent on July 20, 2012.
On July 20, 2012, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Jeffrey M. Samuels, David P. Miranda, and Sandra J. Franklin as Panelists.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
In its Amended Complaint[1], Complainant notes that it owns U.S. Trademark registration No. 4081915 for the mark KARACA for cutlery, apparatus for cooking, refrigerating, household or kitchen utensils and containers, candlesticks, cups, mugs, bowls, and vases. The registration issued on January 10, 2012, based on an international application filed under the Madrid Protocol.
Complainant contends that the disputed domain name, <karaca.com>, is identical and confusingly similar to its registered KARACA mark “since the heart of that mark is just the stylized and colored word `Karaca.’”
Complainant further asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name. Upon information and belief, Complainant maintains that Respondent has never actually posted any content at the disputed site and never offered goods or services under the domain name. Instead, the site reads “Karaca.com is under construction.”
Complainant indicates that the original registrant of disputed domain name went bankrupt in 1999, that the current registrant, Respondent Karaca Yacht Ltd., which has a mailing address in Turkey, is not a registered Turkish company, and that the registrant information was changed on June 13, 2012, just one day after the complaint was filed in the instant matter.
Complainant further asserts, upon information and belief, that Respondent has not been commonly known by the disputed domain name and is not making a legitimate noncommercial or fair use of the domain name.
With respect to the issue of bad faith registration and use, Complainant notes again that no content has appeared and no goods or services have been offered at the disputed site. It also presents evidence that, when contacted by Complainant to inquire about the disputed name, Respondent responded as follows: “I think you want to buy it. You can offer me anything you like but I don’t think I’ll sell it unless you offer me record high price. If it was yours how much would you sell it for? May be you would never. I would say $4 Million for as a price as rough idea. Sorry.” See Amended Complaint, Exhibit 2.
Complainant also claims that Respondent has falsely held himself out to be associated with the Complainant as well as with another large company in Turkey. See Amended Complaint, Exhibit 3.
B. Respondent
Respondent indicates that it is a descendant of the Karaca family of Turkey and that Demir Karaca is a principal of Respondent. The Karaca family traces its history to the Ottoman Empire. The Karaca business was founded in 1923 by Mr. Demir Karaca’s great grandfather and has been involved in a number of businesses over the years, including industrial pumps and furniture.
Mr. Karaca registered the disputed domain name in 1997[2] and founded a company in 1999 to manage real estate, as well as other family-owned businesses. According to the affidavit submitted by Mr. Karaca (see Response, Exhibit A), web pages were posted at the <karaca.com> site on or about December 6, 2000 (see Response, Exhibits 2 and 3), but, over the years, the site has been removed from active posting due to non-payment of fees, and the site was not active from 2007 – 2010. In 2010 and 2011, a “simple” web site was posted to the domain name. See Response, Exhibit 6.
From 2008-2010, Mr. Karaca became interested in the boating and yachting industries and, with the recent surge in value of his family’s real estate holdings, founded Respondent Karaca Yacht, a Delaware Limited Liability Company, in 2010 to assist U.S. suppliers for imports and parts for marine vessels, as well as the sale of such vessels. See Response, Exhibit 7. Mr. Karaca’s original company, Karaca Insaat ve Tic. A.S., which is based in Turkey, began building the first yacht in 2011 with plans to go to full-scale production and sales in late 2012 or 2013. See Response, Exhibit 8. Mr. Karaca plans to re-launch the website later this year.
Respondent contends that it has rights or legitimate interests in the disputed domain name. More specifically, it argues that it is commonly known by the “Karaca” name and that it has in the past and continues currently to use the disputed domain name in connection with a bona fide offering of services.
Respondent further contends that it did not register the domain name in bad faith. It emphasizes that the domain name registration issued in 1997, years before Complainant acquired any rights in the KARACA mark. According to Respondent, when Mr. Karaca registered the <karaca.com> domain name in 1997, he had no knowledge of Complainant.
Respondent also maintains that it never attempted to seek out buyers for the disputed domain name. While acknowledging that it did indicate a willingness to sell the domain name to Complainant, Respondent notes that this was a result of Complainant’s solicitation and not the result of any affirmative action by Mr. Karaca.
C. Additional Submissions
The Panel concludes that the disputed domain name, <karaca.com>, was not registered in bad faith. As a result, the Panel finds no need to address any of the other elements of the Policy.
Paragraph 15(a) of 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
Given the Panel’s finding on the issue of bad faith registration and use, there is no need to address this issue.
Given the Panel’s finding on the issue of bad faith registration and use, there is no need to address this issue.
The evidence establishes that the disputed domain name was registered in 1997. Complainant has failed to present any evidence that its rights in the KARACA mark predate 1997. As noted by Respondent, none of the Complainant’s registrations for the KARACA mark were issued prior to 1997, and Complainant has not established any basis to demonstrate rights in the mark that predate 1997. As noted by Respondent, “[i]t is axiomatic that if a complainant does not have trademark rights at the time an at-issue domain name registration [issues] (even though it may have such rights at the time of the parties dispute), there can be no bad faith registration on the part of the domain registrant/respondent.” The cases are legion on this point. See, e.g., Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO Oct. 5, 2001) (finding that it is “impossible” for the respondent to register disputed domain name in bad faith if the complainant company did not exist at the time of registration); see also Open Sys. Computing AS v. Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding no bad faith where the respondent registered the domain name in question before application and commencement of use of the trademark by the complainant).
While Complainant established rights in the KARACA mark prior to the transfer of the domain name to Respondent – and such transfer usually amounts to a new registration – where, as here, the evidence clearly establishes common control of the domain name before and after such transfer, panels[3] have found that no new registration exists. The Panel agrees with this analysis and, thus, concludes that the time at which bad faith registration is measured in this case is 1997 (the date of the original registration of the domain name) and not June 13, 2012 (the date of the transfer).
The fact that Complainant is a Turkish company that was founded in 1973, well before registration of the disputed domain name, does not by itself provide sufficient support for the Panel to draw an inference that Demir Karaca acted in bad faith in registering such domain name. There is no evidence that Complainant actually used the KARACA mark prior to 1997 or that, even if it had, that such use by itself would be sufficient to confer trademark rights.
While there is evidence that Respondent offered to sell the disputed domain name to Complainant for an amount far in excess of Respondent’s out-of-pocket costs related to the domain name, the evidence falls short of establishing that the domain name was registered “primarily” for the purpose of selling it to Complainant. As noted by Respondent, its offer to sell the domain name was made only after an initial inquiry by Complainant. See Coca-Cola Co. v. Svensson, FA0 103933 (Nat. Arb. Forum Feb. 27, 2002) (panel found that because the complainant initiated a discussion regarding the respondent’s sale of the domain name registration, the respondent did not act in bad faith); Gen. Mach. Prod. Co. v. Prime Domains, FA 92531 (Nat. Arb. Forum Mar. 16, 2000) (panel noted that the complainant initially contacted the respondent to inquire about purchasing the disputed domain name, which weighed against a finding of bad faith).
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <karaca.com> domain name REMAIN WITH Respondent.
Jeffrey M. Samuels, David P. Miranda, and Sandra J. Franklin, Panelists
Dated: July 31, 2012
[1] The original complaint was found deficient on grounds it did not name the proper respondent.
[2] The domain name apparently was registered originally in the name of HARTEKS TESISAT VE MAKINA SANAYI A.S. See Complainant’s Additional Submission, ¶17; Respondent’s Additional Submission, ¶8.
[3] See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, ¶3.7 and cases collected therein.
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