Administrative panel decision erk Pazarlama ve Giyim San. Ve Tic. A. Ş. V. Jake Messinger




Дата канвертавання17.04.2016
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group 2


ARBITRATION
AND
MEDIATION CENTER



ADMINISTRATIVE PANEL DECISION

Erk Pazarlama ve Giyim San. Ve Tic. A. Ş. v. Jake Messinger

Case No. D2015-0807


1. The Parties
The Complainant is Erk Pazarlama ve Giyim San. Ve Tic. A.Ş. of Istanbul, Turkey, represented by Aksu Teke, Turkey.
The Respondent is Jake Messinger of Texas, United States of America (“USA”), represented by Amy L Mitchell, USA.

2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with eNom (the “Registrar”).

3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 7, 2015. On May 8, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 8, 2015, 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 for the disputed domain name.
The Center verified that the 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 May 29, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 18, 2015. The Response was filed with the Center on June 18, 2015.
The Center appointed John Swinson as the sole panelist in this matter on July 3, 2015. 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.

4. Factual Background
The Complainant is Erk Pazarlama ve Giyim San. Ve Tic. A.Ş. of Turkey, a clothing company established and operating under the laws of Turkey.
The Complainant has provided evidence of a large number of trade mark registrations with the Turkish Patent Institute which incorporate the term COLIN’S or COLINS, the earliest of which was registered on July 8, 2010 (collectively, the “Trade Mark”). The Complainant also states that it holds similar trade mark registrations in the USA, Azerbaijan, Bulgaria, Estonia, Kazakhstan, Romania and the Ukraine. The Complainant also holds a registered domain name which incorporates the Trade Mark, being .
The Respondent is Jake Messinger, an individual of the USA. The Respondent is a programmer, researcher and professor, and owns an Internet company which was founded in 1972. The Respondent is well known in the Internet community, and is recognized as an authority on Internet protocols and policies. The Respondent is also an actor, and has appeared in movies such as “Dreamer” and “Caveman Theory”.
According to the Registrar, the Disputed Domain Name was registered on March 28, 2001. The Respondent submits that he first registered the Disputed Domain Name in 1995, but the Disputed Domain Name expired and the Respondent re-registered it in 2001.
The website at the Disputed Domain Name is currently the personal website of Colin Messinger

5. Parties’ Contentions
A. Complainant
The Complainant’s contentions are as follows.
Identical or Confusingly Similar
The Trade Mark is a well-known and reputable trade mark in Turkey. The registrations provided by the Complainant establish the Complainant’s rights in the Trade Mark.
The Disputed Domain Name is identical to the Trade Mark, which creates confusion. Consumers expect that domain names which incorporate the name or trade mark of a company should resolve to a website associated with that company. Many panels have determined that a domain name is similar to a trade mark in a manner that causes confusion when the domain name completely comprises the trade mark (see, e.g., PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No. D2003-0696).
Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in the Disputed Domain Name for the following reasons:
- The Respondent is not associated with any of the products provided by the Complainant under the Trade Mark, and has not been authorized by the Complainant to use the Trade Mark.
- The Respondent has never used any commercial titles which incorporate the Trade Mark.
- The Respondent has never applied for a trade mark registration which incorporates the Trade Mark.
Therefore, the Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services. The Respondent refers to the decision of the panel in Melbourne IT Limited v. Grant Matthew Stafford, WIPO Case No. D2000-1167.
Registered and Used in Bad Faith
The Respondent has registered the Disputed Domain Name in bad faith.
The Respondent is using the Disputed Domain Name in bad faith, as despite the fact that the Respondent is aware of the Complainant’s rights in the Trade Mark, and that it is well-known in Turkey and around the world, he is continuing to use the Disputed Domain Name.
Domain names registered under the generic Top-Level Domain “.com” are intended to be used in commercial activities. Even if the Disputed Domain Name is the Respondent’s personal domain name, it has not been used since it was registered, and it has been listed for sale.
The Respondent is attempting to deceive consumers. Consumers are directed to the Respondent’s website rather than the Complainant’s popular website.
B. Respondent
The Respondent’s contentions are as follows.
The Respondent has a son named Colin Messinger. The Respondent registered the Disputed Domain with the intention that his son would use it when he was older.
The Respondent’s son now uses the email address associated with the Disputed Domain Name (“[…]@colins.com”) as his primary email address. The Respondent’s son also uses the Disputed Domain Name for personal and educational communication and research purposes. He does this via intranet administrative pages that are accessible via password.
Identical or Confusingly Similar
The Complainant registered the Trade Mark in the USA on September 27, 2005, which was a number of years after the Respondent registered the Disputed Domain Name. It follows that the Complainant was aware that the Disputed Domain Name was in use at the time it registered the Trade Mark in the USA.
There are over 80 other trade mark registrations that are similar or identical to the Disputed Domain Name in the USA, and many more in Europe, most of which belong to companies unrelated to the Complainant. Therefore, the Trade Mark could be confused with many other companies as it is a common name in the USA and Europe.
Rights or Legitimate Interests
The Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain misleadingly to divert consumers or to tarnish the Trade Mark. The website at the Disputed Domain Name specifically states that its current purpose is for personal use and education, and has never referred to the Complainant, its competitors, or the industry in which the Complainant operates.
The Disputed Domain Name is used primarily for email, and not for the related website. The Policy does not require demonstrable use of a website, but of the domain name.

The website at the Disputed Domain Name refers to Colin Messinger. It is reasonable that a person with this given name would have the legitimate interest to use the Disputed Domain Name. Previous panels have denied complainants’ representations that a person’s given name is not allowed to be used by a respondent as there is no associated trade mark (see, e.g., Alessandro International GmbH v. Alessandro Gualandi, WIPO Case No. D2014-2111).


Registered and Used in Bad Faith
The Respondent has not registered or used the Disputed Domain Name in bad faith for the following reasons:
- The Respondent registered the Disputed Domain Name many years before he was aware of the Complainant. The Complainant is not known in the USA. The Complainant’s website is in Turkish, and it would have been difficult to find or understand if the Respondent had conducted an Internet search.
- The Disputed Domain Name has been in continuous use for the purpose of personal email and privately accessible web pages for many years.
- The Respondent’s website could not deceive the consumer, as it is obvious when a potential customer types the Disputed Domain Name into the address bar of an Internet browser that it is not the Complainant’s website. An Internet search of just the term “colins” shows the Complainant’s website at the top of the list, and does not include the website at the Disputed Domain Name.
- The Complainant has not demonstrated any of the indicators of bad faith registration and use listed at paragraph 4(b) of the Policy. In particular:
- the Respondent has not registered the domain primarily to sell it for profit in excess of reasonable out-of-pocket expenses;
- the Respondent has not registered the Disputed Domain Name to prevent the Complainant from reflecting it in a corresponding domain name;
- the Respondent has not registered the Disputed Domain Name to disrupt the business of the Complainant. The Respondent receives approximately one email per month from an individual looking for the Complainant, and they are either ignored or referred to the Complainant’s website; and
- the Respondent has not registered the Disputed Domain Name to intentionally attract Internet users for commercial gain, as there are no links to any commercial sites or any references to any businesses on the website at the Disputed Domain Name, other than the Respondent’s Internet hosting company, which is a requirement to show how to contact the owner of a website or their hosting provider.

6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
The onus of proving these elements is on the Complainant.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.


The Disputed Domain Name is identical to the COLINS trademark. The COLINS trademark has been wholly incorporated into the Disputed Domain Name, and no additional words have been added.
The Complainant succeeds on the first element of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.


The Panel considers that the Respondent has rights to or legitimate interests in the Disputed Domain Name.
The Complainant’s submissions establish that the Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services (see paragraph 4(c)(i) of the Policy). However, despite the fact that the text on the website at the Disputed Domain Name reads “I am Colin Messinger and this is my PERSONAL domain … My dad registered this domain name for me when I was 2 years old”, the Complainant has not addressed the possibility that the Respondent may have been commonly known by the Disputed Domain Name, or may have been making a legitimate noncommercial or fair use of the Disputed Domain Name (see paragraphs 4(c)(ii) and (iii) of the Policy).
In any event, the Respondent’ submissions show that the Respondent does have rights to or legitimate interests in the Disputed Domain Name in accordance with paragraph 4(c)(iii) of the Policy.
The Disputed Domain Name incorporates the name of the Respondent’s son, Colin Messinger. The Panel accepts the Respondent’s submissions that the Disputed Domain Name is being used primarily for its associated email address and for other personal and educational purposes, even if these uses are not visible to the public. This constitutes a legitimate noncommercial or fair use of the Disputed Domain Name.
Further, the website at the Disputed Domain Name does not feature any pay-per-click links, or any advertising at all, other than the name of the Respondent’s company. It would be quite clear to any consumers visiting this website that the Respondent’s business (“Adjecta Technologies”) is not related to the Complainant. Therefore, there is no evidence that the Respondent registered the Disputed Domain Name for commercial gain to misleadingly divert consumers or to tarnish the Trade Mark.
The panel in Gail Guarulhos Indústria e Comércio Ltda. v. Kevin Watson, WIPO Case No. D2006-0655 () found for the respondent in that case in similar circumstances:
“The Respondent registered the domain name to reflect his wife’s given name and has used the corresponding website to post family photographs and emails. The Panel finds this constitutes non-commercial use, especially given the fact that Respondent is not in competition with the Complainant and the fact that the Respondent has never attempted to use or actually used the domain name for any sort of commercial purpose.”
Therefore, the Complainant does not succeed in establishing the second element of the Policy.

C. Registered and Used in Bad Faith

In light of the above finding, the Panel is not required to consider the third element of the Policy. However, the Panel will briefly address the key aspects of this element for completeness.


Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
The Respondent registered the Disputed Domain Name on March 28, 2001. The Complainant first registered the Trade Mark in 2005, which is four years after the Respondent registered the Disputed Domain Name. The Complainant has made no submissions as to why the Respondent knew or should have known of the Complainant in 2001. The Panel considers that the Respondent did not know of the Complainant when the Disputed Domain Name was registered, and accordingly, did not register the Disputed Domain Name in bad faith.
Further, as mentioned above, the Respondent is using the Disputed Domain Name primarily for personal and educational purposes. There is no evidence that the Respondent is using the Disputed Domain Name for the purpose of disrupting the Complainant’s business, or to mislead Internet users into believing he is affiliated with the Complainant.
The fact that the Respondent has on previous occasions offered the Disputed Domain Name for sale is not sufficient to show registration and use in bad faith.
The Complainant does not succeed in establishing the third element of the Policy.

7. Decision
For the foregoing reasons, the Complaint is denied.

John Swinson

Sole Panelist

Date: July 15, 2015

________________________________________________


Addendum to Administrative Panel Decision
Subsequent to notification of the decision in this matter, the Complainant’s representative contacted the Center by email on July 24, 2015. The Panel addresses a factual issue raised by the Complainant that is not material to the outcome of the proceeding.
The Complainant states that the Trade Mark was first registered in 1994, and not in 2005 as indicated by the Panel in its assessment of whether the Disputed Domain Name was registered and used in bad faith. This would mean that the Trade Mark was in fact registered earlier than the Disputed Domain Name.
The Panel has reviewed the Complaint. The Complainant provided a list of trade marks showing the application number, application date, trade mark and class in section I of the Complaint, as well as approximately 100 pages of evidence of those trade mark registrations in Annex C. The list in section I of the Complaint seems to contain a typographical error, as the relevant trade mark to which the Complainant refers appears in that list as having an application date of May 10, 2014. There is a further trade mark, registered in 1997, which appears in the list as having an application date of March 27, 2006.

However, the evidence of registration provided in Annex C for those trade marks shows registration dates of July 8, 1994 and September 16, 1997 respectively. The Panel acknowledges that the information provided by the Complainant is correct.


However, this proceeding was decided primarily on the basis that the Respondent has rights to and a legitimate interest in the Disputed Domain Name. The date that the Trade Mark was first registered is not relevant to that finding, and therefore is not material to the outcome of the proceeding.
The Panel reaffirms its decision.

John Swinson

Sole Panelist



Date: July 28, 2015



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