Horoz Lojistik ve Kargo Hizmetleri Tic. A.S.
Case No. D2009-0767
The Complainant is Horoz Lojistik ve Kargo Hizmetleri Tic. A.S. of Istanbul, Turkey, represented by Gr Law & IP Firm, Turkey.
The Respondent is Murat Yikilmaz of Istanbul, Turkey, represented by The Muscovitch Law Firm, Canada.
2.The Domain Name and Registrar
The disputed domain name <horoz.com> is registered with Moniker Online Services, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 11, 2009. On June 11, 2009, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On June 12, 2009, Moniker Online Services, LLC 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 June 23, 2009 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 June 24, 2009. The Center verified that 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 June 25, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 15, 2009. The Response was filed with the Center July 14, 2009.
The Center appointed Gkhan Gke, Diane Cabell and Dr. Clive Trotman as panelists in this matter on August 14, 2009. The Panel finds that it was properly constituted. Each member of 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.
Together with the case papers, the Center forwarded to the Panel a submission that had been received from the Complainant in the nature of a Supplemental Communication, and a reply to that from the Respondent.
According to the Complainant, Horoz Lojistik ve Kargo Hizmetleri Tic. A.S. is a major Turkish national and international transport and logistics company. The company was founded by Mehmet Emin Horoz in 1942. Recent annual turnover has been in the region of USD 233 million.
The Complainant owns the following trademarks:
HOROZ with device, Turkish Patent Institute, No. 2000 10974, registered May 5, 2000, classes 35, 37, 39;
HOROZ YATIRIM HOLDING LOJISTIK KARGO TASIT SERVIS SEKIL with device, Turkish Patent Institute, No. 2003 24983, registered September 19, 2003, classes 4, 12, 35, 37, 39.
The Complainant has also owned the domain name <horoz.com.tr> since June 18, 1998. The disputed domain name was registered by the Respondent on January 22, 2002.
According to the Respondent he is a resident of Istanbul, Turkey. He is in the business of registering descriptive and generic domain names in the English and Turkish languages.
The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark or service mark (hereafter, trademark) in which it has rights. Copies of registration documents for the trademarks listed in section 4 above have been submitted in evidence. The Complainant has been operating in Turkey since 1942, was named after its founder, and Horoz is a well-known brand name.
The Complainant further contends that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent does not have any relevant registered trademark or other source of rights. The Respondent cannot fulfill any of the illustrative requirements of paragraph 4(c) of the Policy that could demonstrate rights in the disputed domain name.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith. Visitors to the corresponding website are offered links to goods and services in the Complainant's sphere, such as shipping and cargo services.
The Respondent denies the Complaint and submits extensive contentions, an affidavit and documentation, the thrust of which includes the following.
The Complainant's company has about 60 employees and is not particularly large or well known in Turkey. The Complainant's clients are predominantly other commercial companies rather than the general public.
Horoz, the last name of the Complainant's owner, is a common last name in Turkey. The word Horoz translates to "rooster" or "cock", and the Complainant's trademark bears an illustration of a rooster. About 87 Turkish trademark registrations or applications include the word "horoz" and only two belong to the Complainant. Turkish media company Horoz Medya has registered trademarks for HOROZ with a rooster logo.
The word "rooster" is widely used in the United States of America in business names and trademarks.
The Respondent contends that he registered the disputed domain name in 2002, and it was not challenged prior to receipt of the Complaint. By affidavit he says the disputed domain name was chosen because "horoz" by its meaning is an innocuous animal name. It keeps company with other Turkish words he has registered before or since as domain names that translate to: "animal", "animals", "cat", "rabbit", "squirrel" and "fly". He owns over a thousand descriptive or generic domain names.
The Respondent says that he has never cybersquatted and has consistently avoided registering other than generic and descriptive domain names. Had he been contacted by the Complainant, he would have taken immediate steps to ensure that no advertisements appeared on the website that related to the Complainant's area of business, and did so. The advertisements that the Complainant complains of were automatically generated by Skenzo, a domain name traffic monetization company. In the six years prior to using Skenzo, the mistake had not happened.
The Respondent says that he has rights or legitimate interests in the disputed domain name. The word "horoz" is not unique but common and also a common Turkish surname. The Respondent need only show that he has a right or legitimate interest, not a better one than the Complainant. It has been long held in precedent that the first person to register a descriptive or generic domain name in good faith is entitled to it and this is considered a legitimate interest. The Policy is confined to instances of cybersquatting or cyberpiracy and does not extend to trademark disputes.
The Respondent denies that the domain name was registered and is being used in bad faith. His accidental portrayal of logistics-related advertising does not necessarily demonstrate bad faith registration. The disputed domain name is generic and descriptive and the Respondent, with over one thousand domain names, does not have a background of cybersquatting. The Respondent submits in effect that the Policy is not intended to deal with trademark infringement disputes, which are for the courts or for arbitration.
The UDRP is not intended to serve as a means of determining who has "better" or "superior" rights in a domain name, that is to say, competing legitimate interests are outside the scope of the UDRP. Domain names comprising generic or descriptive words or phrases will generally not be transferred to a complainant just because a complainant has a registered trademark.
There is no evidence that the Respondent registered the domain name primarily in order to transfer to the Complainant, nor is there any evidence that the Respondent has engaged in a pattern of such conduct, nor is there any evidence of any attempt to sell the domain name to the Complainant. Accordingly, all that is left is the recent, temporary, and unintentional use of logistics related advertising links in connection with a domain name that is otherwise descriptive and generic.
The Respondent submits that he had never heard of the Complainant. There is no evidence he specifically targeted the Complainant, and therefore no bad faith. There is no evidence that the Complainant is famous or that the Respondent ought to have been aware of the Complainant, and no basis for a finding of constructive knowledge, a concept repeatedly rejected by panels. Cases finding constructive knowledge have been limited to specific situations in which the trademark is famous.
The Respondent cited and quoted from numerous previous UDRP decisions that he would like to be considered as precedent.
6.Discussion and Findings
In accordance with paragraph 12 of the Rules the Panel may, in its sole discretion, ask either or both of the Parties to provide additional information, through the Center and copied to the other Party. The principles of the Policy envisage that the Parties shall present their case fully in the first instance and that any invitation to provide a supplementary communication shall be exceptional and of necessity. As said by presiding panelist the Hon. Sir Ian Barker QC in Grove Broadcasting Co. Ltd v. Telesystems Communications Limited, WIPO Case No. D2000-0703: "A Complainant should "get it right" the first time and should have provided all the information necessary to prove its case from the material contained in the Complaint and its annexes alone. There is no right of reply under the Rules."
The Panel has found no need to request any additional material from either party. Nevertheless it would appear that the Center received from the Complainant a submission in the nature of a Supplemental Communication to the Panel, and that a reply to that was received from the Respondent. These were forwarded to the Panel to deal with in its sole discretion. They were not requested and have not been considered.
Paragraph 4(a) of the Policy states that the Respondent is required:
to submit to a mandatory administrative proceeding in the event that a third party (a complainant') asserts to the applicable Provider, in compliance with the Rules of Procedure, that
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith."
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
A.Identical or Confusingly Similar
The Complainant is required to prove that it has rights in a trademark, and that the disputed domain name is identical or confusingly similar to that trademark.
Turkish trademark No. 2000 10974 exhibited in evidence comprises the word HOROZ in upper case preceded by a square device, the size of another letter, framing the head of a chicken. The Panel finds, within the meaning of the Policy and in this particular case, that this trademark comprises essentially the word "horoz" and that the Complainant has rights in that trademark as a word. The disputed domain name is <horoz.com>, of which ".com" may be disregarded for the determination of confusing similarity under the Policy. The Panel finds the remainder of the disputed domain name to be confusingly similar to a trademark in which the Complainant has rights in the terms of paragraph 4(a)(i) of the Policy. The Panel finds it sufficient to proceed on the finding in respect of this trademark alone.
B.Rights or Legitimate Interests
The Complainant is required to prove that the Respondent does not have rights or legitimate interests in the disputed domain name. The Complainant has asserted prima facie that this is so, and that the Respondent cannot fulfill any of the illustrative requirements of paragraph 4(c) of the Policy.
The Panel finds that the Respondent cannot reasonably claim to be commonly known by the disputed domain name in the terms of paragraph 4(c)(ii) of the Policy or to be using it non-commercially in the terms of paragraph 4(c)(iii) of the Policy.
Paragraph 4(c)(i) of the Policy recognizes that the Respondent may be able to establish rights or legitimate interests in a disputed domain name by proving:
-before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services
A majority of the Panel is in agreement that the well-known business model of displaying click-through (pay per click) links and paid advertising on a website for the purpose of revenue generation, in and of itself, may be legitimate provided there are no other factors that would render such use non-legitimate, such as the appropriation of another's well-known trademark for the purpose.
By a majority, the Panel finds for the Respondent in the terms of paragraph 4(a)(ii) of the Policy.
It is not strictly necessary to proceed to the question of bad faith but the Panel will set out its findings for completeness.
C. Registered and Used in Bad Faith
The Complainant is required to prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four circumstances that, without limitation, 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 website or location.
A majority of the Panel focuses on paragraph 4(b)(iv) of the Policy and reasons as follows. Under paragraph 4(a)(iii) of the Policy it is essential for the Complainant to prove both bad faith registration and bad faith use. Specifically in terms of bad faith registration, the Respondent seven years ago registered as the disputed domain name the common Turkish word "horoz", standing alone. As an illustration of its commonness, it means rooster. The word "horoz" is also a common surname in Turkey according to Turkish telephone directory pages submitted in evidence, and is the name of a place. The Respondent has submitted evidence of there being 23 Turkish companies having the word "horoz" in their names, including Horoz Medya (media) and Horoz Electric which both feature a chicken or chicken head in their logos. Thus, numerous individuals, families, companies or authorities could have reason to register a domain name embodying the word "horoz" for purposes of innocent usage or because of natural rights embodied in their own name or the place name. In fact no reason is required.
It would appear from the evidence that the Respondent received no complaint about his use of the disputed domain name until the service of this proceeding, and he attributes this recent complaint to a change of provider of the targeted advertising links on his site about a year earlier. The new advertisement provider evidently caused the Respondent's website to display some links that precipitated the Complaint, whereupon the Respondent immediately ordered his provider to remove and avoid them, which according to an exchange of emails, was promised in "a couple of hours".
The onus is upon the Complainant to prove bad faith registration, for which no evidence has been offered. Had there been evidence of bad faith use from the start, it may have been supporting evidence of bad faith registration. There is no allegation of bad faith use for a period of around six years thereafter. Such trademark infringement as may have occurred recently would appear to be beyond the remit of the Panel in terms of abusive registration and use, and may instead be resolved by communication or argued in another forum.
By a majority, the Panel does not find that the disputed domain name was registered in bad faith by the Respondent in the terms of paragraphs 4(b)(iv) and 4(a)(iii) of the Policy.
For all the foregoing reasons, by a majority decision of the Panel, the Complaint is denied.
Dr. Clive Trotman
Dated: August 28, 2009
The dissenting Panelist finds that the Respondent's use of the disputed domain name is not bona fide. The disputed domain name resolves to a service provided by Skenzo that targets links to individual visitors according to their search terms and other data. Use of a domain name in this manner may be considered proper only if it does not conflict with another's trademark rights. It is widely accepted by UDRP panels that a respondent cannot absolve itself from the consequences of employing this type of technique if it results in the presentation of material on the corresponding website that is in conflict with the trademark rights of another.
Furthermore, the dissenting Panelist finds that the use of a domain name through a parking service is not acceptable as demonstrating a right or legitimate interest, because if this were to be so, most of those cybersquatters who have merely linked domain names to a parking service would be able to establish the requirements of paragraph 4(c)(i) of the Policy in their favour.
The dissenting Panelist notes that the Complainant registered its website "www.horoz.com.tr" on June 18, 1998. In order to establish a ".com.tr" in the name of a real person or a legal entity, a commercial purpose is necessary and official documentation is required which must certify that the domain name applied for is the applicant's registered trademark or corporate name. Therefore, the procedure is quite stringent and demonstrates that the Complainant is the registered and rightful owner of "www.horoz.com.tr" as it reflects his business name. This suggests that in the absence of any justified use the Complainant should also be the rightful owner of <horoz.com>.
The dissenting Panelist further considers that because the Respondent is apparently in Turkey and the Complainant is well known in Turkey, it is doubtful that the Respondent was unaware of the Complainant's trademark. Most Internet users would assume that the disputed domain name would resolve to a website of, or affiliated with, the Complainant. Furthermore, the generic term "horoz" is not indicative of the contents of the website of the disputed domain name and there is no evidence of legitimate use. Although a generic term may be used in a domain name, its use must be legitimate or at the very least innocent, which is not so in the present case.
The dissenting Panelist finds that the disputed domain name was registered and used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. The Respondent attracts visitors to his website through their confusion with the Complainant's trademark and name. Once at the Respondent's website, visitors are confronted with links to other websites. The Respondent has employed the services of a commercial algorithm that displays links targeted to advertisers within the Complainant's field who are bound to be competitors of the Complainant. This is the well-known business model known as click-through or pay per click. In this case it represents exploitation of the Complainant's trademark name and goodwill for the commercial gain of the Respondent since the purpose of the operation is to earn commissions from referrals to the websites of advertisers. In the terms of paragraph 4(b) of the Policy, an adverse finding under paragraph 4(b)(iv) of the Policy "shall be evidence of the registration and use of a domain name in bad faith".
In the light of foregoing, the dissenting Panelist finds in favor of the Complainant on all the three elements of the Policy and would find that <horoz.com> should be transferred to the Complainant.
Dated: August 28, 2009