The Domain Name and Registrar
The disputed domain name, "digiturk.com" (the "Domain Name"), is registered with GoDaddy.com, Inc. (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 25, 2008. On January 28, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name(s) at issue. On the same day the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February 6, 2008.
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 February 6, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was February 26, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 27, 2008. The Center appointed Tony Willoughby as the sole panelist in this matter on March 6, 2008. 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.
The unchallenged evidence of the Complainant is that:
1. the Complainant is very well-known in Turkey as Turkey's leading digital television broadcaster;
2. the Complainant was founded on March 10, 1999, and has built up a significant reputation and goodwill in respect of the DIGITURK name since that date;
3. the Complainant's sister company, Digital Hizmetler Pazalarma A.S. registered DigiTurk DigiCard as a trade mark on December 3, 1999 and registered the name DIGITURK in logo format as a trade mark on December 14, 1999;
4. on October 5, 2000, the Complainant registered the domain name, "digiturk.com.tr";
5. on May 19, 2003, the Complainant registered in its own name the Community Trade Mark, DIGITURK EURO Kabel. The Domain Name was registered on December 2, 1999, and is connected to a parking page hosted by the Registrar and featuring sponsored links to various other sites.
While the Respondent's address is a Taiwanese address, the administrative and technical contact for the Domain Name, Koray Turker, has a Turkish name.
The Complainant contends that the Domain Name is identical or confusingly similar to a trade mark in which it has rights.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name.
Finally, the Complainant contends that the Domain Name was registered and is being used in bad faith.
The Complainants arguments in support of those contentions are referred to in section 6 below.
The Respondent did not reply to the Complainant's contentions.
Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove that:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered in bad faith and is being used in bad faith.
B. Identical or Confusingly Similar
The Complainant has produced sufficient evidence to establish to the satisfaction of the Panel that it has trade mark rights in respect of the name DIGITURK. For present purposes it is sufficient to mention the Complainant's Turkish trade mark registration no. 2004 33010 for the word DIGITURK in classes 9, 35 and 38.
The Panel finds that the Domain Name is identical to a trade mark in which the Complainant has rights.
C. Rights or Legitimate Interests
The Complainant asserts that the Respondent registered the Domain Name with knowledge of the Complainant's trade mark rights in respect of the name DIGITURK.
The Complainant notes that the Domain Name is connected to a parking page hosted by the Registrar and featuring sponsored links, which the Complainant asserts are earning pay-per-click revenue for the Respondent.
The Complainant further notes that the Domain Name is a made up word and has no obvious association with either the Respondent's name or the use to which the Domain Name is being put.
The Complainant contends that none of the examples of rights and legitimate interests set out in paragraph 4(c) of the Policy is applicable and asserts that it has not given the Respondent any permission to use its trade mark.
The Panel has nothing before it to indicate why the Respondent might reasonably be said to have any right or legitimate interest in respect of the Domain Name. The Panel finds that the Complainant has made out a case for the Respondent to answer.
However, the Respondent has not provided any answer. In these circumstances the Panel finds that the Respondent has no rights or legitimate interest in respect of the Domain Name.
D. Registered and Used in Bad Faith
As indicated, the Complainant asserts that the Respondent registered the Domain Name with knowledge of the Complainant's trade mark rights in respect of the mark DIGITURK and with the intention of exploiting the value of the Complainant's trade mark. The Complainant contends that this is clear from the manner in which the Complainant is using the Domain Name, namely to derive pay per click revenue through the Registrar's parking page, to which the Domain Name is connected.
The Complainant's contention is that anyone visiting the site connected to the Domain Name will be doing so on the back of the fame and distinctiveness of the Complainant's trade mark, which is featured in the Domain Name, expecting to arrive at a site of or connected with the Complainant. The Respondent's hope and expectation, so the argument goes, is that visitors will then click through one or more of the links on the site and thereby earn for the Respondent pay per click revenue.
The Complainant points to one of the links on the website to which the Domain Name is connected, namely a link to one of the Complainant's websites, and asserts that this is proof of the Respondent's knowledge of the Complainant and its trade mark rights. There are a number of aspects of these contentions of the Complainant, which are open to doubt.
In the first instance, there is very little before the Panel to demonstrate the reputation and goodwill claimed by the Complainant to have been developed under and by reference to the DIGITURK name prior to December 2, 1999, the date that the Domain Name was registered. This is of significance because all the relevant registered rights post-date the registration of the Domain Name, although one of the registrations is dated only one day following the date of registration of the Domain Name.
Secondly, the Panel is by no means certain that the Respondent will necessarily have selected the sponsored links featured on the parking page hosted by the Registrar.
Thirdly, not all sponsored links on parking pages hosted by Internet service providers provide revenue for the registrant; some simply earn revenue for the entity hosting the page in question.
In finding that, notwithstanding these areas where there is scope for doubt, the Complaint nonetheless succeeds, the Panel has taken the following matters into account:
1. DIGITURK is a made-up word and not one that one would adopt without a specific aim in mind.
2. Had the Respondent a justifiable aim in mind when registering the Domain Name, it would have been so easy for him to come forward with it in responding to the Complaint, but he elected not to respond.
3. While the date of registration of the Domain Name pre-dates the Complainant's (and its sister company's) registered rights, one of the registrations followed a day later and another followed less than two weeks later. The Panel believes it to be more likely than not that the registration of the Domain Name was inspired by the Complainant's unregistered trade mark, which, as the Complainant asserts, was well known to Turks at that date.
4. The Complainant's unchallenged assertions as to its unregistered rights predating the registration of the Domain Name are supported by a certificate as to their accuracy by the Complainant's legal representative.
5. The Complainant's assertions as to the pay-per-click commercial gain being derived by the Respondent are plainly arguable and the Respondent has not seen fit to challenge them. The same goes for the extent to which the Respondent has editorial control over the links appearing on the parking page to which the Domain Name is connected.
6. Whether or not the Respondent is deriving commercial gain from the Domain Name, once one has decided, as the Panel has decided, that the Domain Name, which is a distinctive made-up name identical to the Complainant's trade mark, was registered by the Respondent with knowledge of the Complainant's rights in that name, it is fair to assume that the Respondent's intentions are predatory and represent an unfair, abusive threat hanging over the head of the Complainant.
In summary, the Panel finds that the Complainant's unchallenged assertion that the Respondent registered the Domain Name with the intention of exploiting the value of the Complainant's trade mark for commercial gain by deceiving Internet users within the meaning of paragraph 4(b)(iv) of the Policy is made out.
Further, the Panel finds that even if the Respondent was not deriving commercial gain, nonetheless the circumstances surrounding the Respondent's registration and use of the Domain Name, combined with the absence of any right or legitimate interest in respect of the Domain Name, represent an abusive threat hanging over the head of the Complainant such as to constitute an Abusive Registration within the broad meaning of paragraph 4(a)(iii) of the Policy, albeit not as one of the non-exhaustive list of examples of bad faith registration and use set out in paragraph 4(b) of the Policy.
In this regard, the Panel gratefully adopts the reasoning of the learned panelist in WIPO Case No. D2000-0028 (Cellular One Group v. Brien):
The Panel, however, also notes that subparagraphs of Paragraph 4(b) are not intended to be the exclusive criterion of bad faith use. The Panel believes that bad faith use can also exist in situations, such as the instant one, where (i) the Domain Name contains in its entirety, and is for all essential purposes only, Complainant's trademark, (ii) such trademark is a coined word, has been in use for a substantial time prior to the registration of the Domain Name and is a well known mark, and (iii) Respondent has alleged no good faith basis for use by it of the Domain Name. Among other things, in these circumstances and absent a transferal, Complainant is deprived of the use of the Domain Name and must always be concerned about the possibility of a confusing future site. And this harm to the Complainant is not balanced by a showing of any legitimate use or potential use by Respondent.
The only feature of the above, which may not be present here is the longstanding prior use of the Complainant's mark, but the mark in question is certainly a coined word and the Panel is satisfied (just) on the evidence before him that it would have been well-known to Turks by the date that the Domain Name was registered.
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, "digiturk.com", be transferred to the Complainant.
Dated: March 20, 2008