The Turkish Towel Company v. BARBAROS OZDOGAN / TURKISHTOWELS.COM
Claim Number: FA1505001621321
Complainant is The Turkish Towel Company (“Complainant”), represented by Thomas F. Dunn, Massachusetts, USA. Respondent is BARBAROS OZDOGAN / TURKISHTOWELS.COM (“Respondent”), represented by Marc J. Randazza of Randazza Legal Group, Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <turkishtowels.com>, registered with Enom, Inc.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Carol Stoner, Esq., Alan L. Limbury, and Hon. Karl V. Fink (Ret.) (Chair) as Panelists.
Complainant submitted a Complaint to the Forum electronically on May 27, 2015; the Forum received payment on May 27, 2015.
On May 28, 2015, Enom, Inc. confirmed by e-mail to the Forum that the <turkishtowels.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. 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 May 29, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 18, 2015 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@turkishtowels.com. Also on May 29, 2015, 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 June 18, 2015.
On June 26, 2015, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed Carol Stoner, Esq., Alan L. Limbury, and Hon. Karl V. Fink (Ret.) (Chair) as Panelists.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 <turkishtowels.com>, be transferred from Respondent to Complainant.
Complainant
Complainant uses the THE TURKISH TOWEL COMPANY mark in connection with towel products. Complainant has registered the THE TURKISH TOWEL COMPANY mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,523,647, filed April 13, 2000, registered Dec. 25, 2001), demonstrating its rights in the mark. Respondent’s <turkishtowels.com> domain name is confusingly similar to the THE TURKISH TOWEL COMPANY mark as it excludes generic non-distinctive terms “the” and “company”, pluralizes “towel”, eliminates spacing between words, and adds the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <turkishtowels.com> domain name.
Respondent is not commonly known by the disputed domain name. The relevant WHOIS information lists the registrant of record for the disputed domain name as “BARBAROS OZDOGAN / TURKISHTOWELS.COM”, however, Respondent does not display the <turkishtowels.com> name anywhere. Respondent has rights in, and is commonly known by, the “towel.com LLC” name.
Respondent offers competing retail services under the “towel.com LLC” name, and therefore lacks rights and legitimate interests under Policy ¶¶ 4(c)(i) and (iii).
Respondent registered and is using the <turkishtowels.com> domain name in bad faith.
Respondent uses the <turkishtowels.com> domain name to divert Internet users away from Complainant’s web offerings and towards Respondent, who is a direct competitor of Complainant.
Respondent has attempted to profit from the confusion created in Internet users as to the source, sponsorship, affiliation, or endorsement of Respondent’s website via its competing retail offerings.
Respondent
Complainant’s registration is on the Supplemental Register, which does not provide any substantive protections. Further, Respondent registered its domain name on December 16, 2000, prior to Complainant’s registration date. Towels originated in Turkey, and therefore the phrase “Turkish Towels” is descriptive. Additionally, on January 11, 2011, Respondent acquired a USPTO registration on the Principal Register for the TURKISHTOWELS.COM mark (Reg. No. 3,903,955).
The disputed domain name consists entirely of Respondent’s registered mark, and the fact that Complainant and Respondent are competitors holds no bearing on Respondent’s rights and legitimate interests in the <turkishtowels.com> domain name. Further, the disputed domain name consists of descriptive terms.
Respondent registered the descriptive disputed domain name in good faith, and had no knowledge of Complainant at the time of registration.
Preliminary Issue: Is This a Trademark Dispute Outside the Scope of the UDRP?
Both Complainant and Respondent assert rights in their respective THE TURKISH TOWEL COMPANY and TURKISHTOWELS.COM marks.
Complainant does not recognize Respondent’s registered trademark in TURKISHTOWELS.COM and the rights such a registration may import. Instead, Complainant argues that Respondent infringes on the (Supplemental Register) USPTO registration Complainant holds for the THE TURKISH TOWEL COMPANY mark.
Respondent argues it has been conducting legitimate business operations using the <turkishtowels.com> domain name. Respondent argues that the Panel should deny the Complaint and leave the parties to settle their trademark disputes in a court of competent jurisdiction, as finding Respondent to be in violation of the Policy would require the Panel to determine that Respondent’s USPTO registration for TURKISHTOWELS.COM is invalid, which is beyond the scope of the UDRP.
The Panel has chosen to consider the Complaint and issue a decision, as the gravamen of the case is Complainant’s allegation that Respondent’s domain name <turkishtowels.com>, was registered in bad faith, and its use infringes upon Complainant’s registered trademark THE TURKISH TOWEL COMPANY. See Weber-Stephen Prod. Co. v. Armitage Hardware, D2000-0187 (WIPO May 11, 2000) (“Like any other tribunal, however, this Panel can determine whether it has jurisdiction only from the facts and arguments presented to it. In this case, Complainant did allege bad-faith use and registration of the domain name at issue. Had Complainant proved those allegations, there would be no proper question as to this Panel’s jurisdiction.”); see also Telebrands Corp. v. Khalid, FA 467079 (Nat. Arb. Forum May 31, 2005) (decided to proceed with the dispute over the <telebrandspakistan.com> even though both the complainant and the respondent had registered marks in TELEBRANDS and TELE BRANDS PAKISTAN, respectively, because the panel thought it would be unfair and costly to treat the case as a trademark dispute when the “gravamen” of the proceeding was the alleged misuse of the domain name in dispute).
FINDINGS
For the reasons set forth below, the Panel finds Complainant is not entitled to the requested relief of transfer of the disputed domain name of <turkishtowels.com>, to the Complainant.
Identical or Confusingly Similar
Complainant uses the THE TURKISH TOWEL COMPANY mark in connection with its towel products. Complainant states that it has registered the THE TURKISH TOWEL COMPANY mark with the USPTO (Reg. No. 2,523,647, filed April 13, 2000, registered Dec. 25, 2001), which establishes Policy ¶ 4(a)(i) rights in the THE TURKISH TOWEL COMPANY mark. Although Complainant’s registration is on the Supplemental Register, such a registration may establish Policy ¶ 4(a)(i) rights. See Action Sports Videos v. Reynolds, D2001-1239 (WIPO Dec. 13, 2001) (holding that, although the complainant's registration on the Supplemental Register denotes a descriptive mark without secondary meaning, the complainant nevertheless had standing to initiate a UDRP claim because Policy ¶ 4(a)(i) requires only that the complainant have mark "rights" in the disputed domain name, strong or weak though they be). The Panel finds that Complainant’s registration on the Supplemental Register is sufficient to establish Complainant’s rights in the THE TURKISH TOWEL COMPANY mark.
Complainant convincingly argues that Respondent’s <turkishtowels.com> domain name is confusingly similar to the THE TURKISH TOWEL COMPANY mark as it excludes the generic non-distinctive terms “the” and “company”, pluralizes “towel”, eliminates the spacing between words, and adds the gTLD “.com”. This Panel has determined that these alterations to the mark THE TURKISH TOWEL COMPANY do not negate a finding of confusing similarity. See WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is confusingly similar to the complainant’s mark, where the complainant holds the WEST JET AIR CENTER mark); see also T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). As a result of this analysis, the Panel finds that Respondent’s <turkishtowels.com> domain name is confusingly similar to Complainant’s THE TURKISH TOWEL COMPANY mark under Policy ¶ 4(a)(i).
Respondent contends that the <turkishtowels.com> domain name is comprised of common and generic/descriptive terms and as such cannot be found to be confusingly similar to Complainant’s mark, however, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
Complainant has proved this element.
Rights and Legitimate Interests
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant posits that Respondent is not commonly known by the disputed domain name; however, the WHOIS information lists the registrant of record for the disputed domain name as “BARBAROS OZDOGAN / TURKISHTOWELS.COM”. Complainant also argues that Respondent offers competing retail services and therefore lacks rights and legitimate interests.
The Panel finds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).
Even assuming that Complainant has established a prima facie case, Respondent has shown that it has rights and legitimate interests in the disputed domain name. The <turkishtowels.com> domain name consists entirely of Respondent’s registered TURKISHTOWELS.COM mark (Reg. No. 3,903,955, registered Jan. 11, 2011) and is being used to promote the sale of towels. Complainant filed its Statement of Use on May 21, 2001, alleging first use in commerce of November 30, 2000. Before that filing, Respondent registered the disputed domain name on December 16, 2000. The fact that Complainant and Respondent are competitors has no bearing on Respondent’s rights and legitimate interests in the <turkishtowels.com> domain name. See Modern Props, Inc. v. Wallis, FA 152458 (Nat. Arb. Forum June 2, 2003) (finding that the respondent’s operation of a bona fide business of online prop rentals for over two years was evidence that the respondent had rights or legitimate interests in the disputed domain name). In light of the available evidence, the Panel concludes that Respondent uses the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).
Complainant has not proved this element.
Registration and Use in Bad Faith
Complainant claims that Respondent uses the <turkishtowels.com> domain name to divert Internet users away from Complainant’s web offerings and towards Respondent, who is a direct competitor of Complainant. Complainant contends that Respondent has attempted to profit from the confusion created in Internet users as to the source, sponsorship, affiliation, or endorsement of Respondent’s website via its competing retail offerings.
The Panel finds that Complainant has failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
The Panel has found that Respondent has rights or legitimate interests in the <turkishtowels.com> domain name pursuant to Policy ¶ 4(a)(ii), as the domain name consists entirely of Respondent’s registered TURKISHTOWELS.COM mark and is being used to promote the sale of towels, and therefore concludes Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
The Panel further finds that Respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii), and concludes Respondent has not registered or used the <turkishtowels.com> domain name in bad faith. See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ¶ 4(a)(iii)).
Complainant has not proved this element.
Doctrine of Laches
Respondent argues that since it first registered the disputed domain name in late 2000 and began using the disputed domain name for selling towels in 2003, Complainant therefore failed to bring this proceeding for over a decade. The Panel has not considered Respondent’s discussion of laches, as this is a legal argument not covered by the Policy. See Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (“Respondent’s efforts at arguing related equitable defenses such as estoppel and acquiescence are equally misplaced as these legal arguments are not contemplated by the Policy. Moreover, recognition of these arguments in accordance with Respondent’s desires requires the Panel to make a legal determination regarding the continuing validity of Complainant’s DISNEY mark. Such action is beyond the scope of the UDRP proceeding and if Respondent desires such an outcome it should avail itself of the proper judicial proceedings by which such a result might be accomplished.”).
As the Complainant has not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is ORDERED that the <turkishtowels.com> domain name REMAIN WITH Respondent.
__________________________________________________________________
Hon. Karl V. Fink (Ret.) as Panelist (Chair)
Carol Stoner, Esq. as Panelist
Alan L. Limbury as Panelist
Dated: July 2, 2015
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