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and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kale Endustri Holding A.S., Kale Kilit Ve Kalip Sanayi A.S.
and Kale Yapi Ve Ticaret A.S. v. Orion Bil’sim Teknolojileri Bilg. Ve
Elek. SIS. SA
Case No. D2007-0129
1. The Parties
The Complainants are Kale Endustri Holding A.S., Kale Kilit Ve Kalip Sanayi A.S., and Kale Yapi Ve Ticaret A.S., of Istanbul, Turkey, represented by Istanbul Patent & Trademark Consultancy Ltd., Turkey.
The Respondent is Orion Bil’sim Teknolojileri Bilg. Ve Elek. SIS. SA,
of Istanbul, Turkey-No. .
2. The Domain Name and Registrar
The disputed domain name <kalecenter.com> is registered with DSTR Acquisition VII, LLC
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 31, 2007. On February 2, 2007, the Center transmitted by email to DSTR Acquisition VII, LLC d/b/a Dotregistrar.com a request for registrar verification in connection with the domain name at issue. On February 5, 2007, DSTR Acquisition VII, LLC d/b/a Dotregistrar.com 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 an email communication from the Center requesting confirmation of the identity of the Respondent named in the Complaint, the Complainant filed an amendment to the Complaint on February 26, 2007. 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 27, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was March 19, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 20, 2007.
The Center appointed Nasser A. Khasawneh as the sole
panelist in this matter on April 11, 2007. 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 three Complainants represent a trading group of companies, which does business in Turkey and other countries worldwide. The third Complainant is the oldest member of the group and has been established since 1953. The second Complainant produces locks and, according to the Complainant, is the number one in its sector in Turkey and the third world.
The Second Complainant has a number of Trademark Registrations, in Turkey and in other countries:
- The oldest registered trademark in Turkey, comprising the word KALE, has an application date of 1999.
- The oldest internationally registered word mark KALE has an application date of 1996 in China (Renewed).
- The oldest registered logo comprising the word KALE has an application date of 1995 in Taiwan (Renewed).
The Third Complainant registered the trademark KALE CENTER on April 5, 2006, in Turkey.
The domain name <kalecenter.com> was created
on April 10, 2003, and points to a website of a company called Kale Insaat Elektrik
Maline PVC Dograma San ve Tic. Ltd. Sti, which appears to be engaged in the
business of laminate flooring. It is not evident whether the Respondent, Orion
Bil'sim Teknolojileri Bilg. Ve Elek. SIS. SA, has any formal links to Kale Insaat
Elektrik Maline PVC Dograma San ve Tic. Ltd. Sti.
5. Parties’ Contentions
The Complainants contend that:
- The disputed domain name <kalecenter.com> is identical to the Complainants’ trademark KALE CENTER. The Complainants argue that although the trademark was registered after the domain name was created, the Complainants have established trademark rights in the name KALE, by which the Complainants were known since 1953. Furthermore, the Complainants argue that an exclusive right in a trademark can be acquired with or without registration. The Complainants also argue that the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainants’ registered mark, and that adding other terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to the Complainants’ registered trademark.
- The Respondent has no rights or legitimate interests in respect of <kalecenter.com>. The Complainants argue, inter alia, that the Respondent is neither known as “Kale Center” or “Kale”, nor contends to make a legitimate noncommercial or fair use of the domain name <kalecenter.com>, nor has it obtained any license to use the mark KALE CENTER, and therefore cannot be using the domain name in connection with a bona fide offering of goods and services. The Complainants also argue that the Respondent is clearly aware of the extensive goodwill and reputation of the Complainant in their trade/service marks KALE and KALE CENTER.
- The Respondent registered and is using the domain name in bad faith. The Complainants contend that the Respondent registered and is using the domain name in an intentional attempt to attract, for commercial gain, Internet users to the website at the disputed domain name, by creating a likelihood of confusion with the Complainants’ marks as to the source, sponsorship, affiliation or endorsement of the website and, as such, is tarnishing the reputation and goodwill of the Complainants. The Complainants explain that the domain name <kalecenter.com> comprises two segments; “kale” having a meaning of a “castle”. The Complainants argue that there is no apparent reason for the Respondent to adopt the word “kale” other than the reasons explained above. The Complainants also contend that the Respondent registered the domain name in order to prevent the Complainants from reflecting their mark in a corresponding domain name, eventually forcing the Complainants to pay for the transfer of the domain name. Furthermore, the Complainants allege that the Respondent was aware of their intention to have website to promote their services, and that the mere registration of a domain name incorporating a well-known trademark is necessarily in bad faith.
The Respondent did not reply to the Complainants’
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to trademarks in which the Complainants have rights. The disputed domain name <kalecenter.com> fully incorporates the trademark KALE, of which the Complainants hold various trademark registrations, whether as a logo or word mark.
The Panel is convinced that the full incorporation of the trademark in the domain name is sufficient to make a finding of confusing similarity between the trademark and the domain name, and that the addition of the generic term “center” does not take the domain name out of the realm of confusing similarity with the Complainants’ registered trademarks.
There have been various WIPO UDRP decisions that have held that the addition
of the generic terms to the domain name in dispute has little, if any, effect
on a determination of whether the disputed domain name is identical or confusingly
similar to a trademark. These include the decision in Quixar Investments
Inc. v. Dennis Hoffman, -WIPO Case No. D2000-0253.
Consequently, the Panel finds for the Complainant on the first element of the Policy.
B. Rights or Legitimate Interests
The Complainants allege that the Respondent is not making any commercial use in connection with a bona fide offering of goods and services of the domain name.
When the Panel viewed the website, it appeared to be a legitimate website of another Turkish Company called “Kale Insaat Elektrik Maline PVC Dograma San ve Tic. Ltd. Sti”, which appears to be engaged in the business of laminate flooring. While the relationship between the Respondent “Orion Bil'sim Teknolojileri Bilg. Ve Elek. SIS. SA”, and the company is not clear, the Panel is of the opinion that the Respondent may simply be the website developer, instructed by the Kale Insaat to register the domain name.
As the Complainants explain, the word “kale” is a generic term in Turkish, which means “castle”. The Panel is of the view that while the Complainants clearly have established trademark rights in the word “kale” in connection with the offering of their goods and services, this does not exclude the fact that a third party may in appropriate circumstances be able to use the term “kale” as part of their domain name, or even acquire independent trademark rights in a sufficiently distinguished use of the term in connection with a separate set of goods and/or services.
The Panel acknowledges that a complainant’s burden of proof is satisfied
with the making of an initial prima facie case that a respondent does
not have any legitimate rights or interests in the domain name, and that in
the absence of a response, it is more likely that a complainant’s have
made their case. However, non-response in itself does not automatically support
a finding in favor of a complainant; although it may sometimes be used to infer
that the respondent does not have any legitimate rights or interests in the
domain name, while the complainant is still required to make out its prima
facie case against a respondent. Relevant decisions to this effect include
the Vanguard Group, Inc. v. Lorna Kang, -WIPO
Case No. D2002-1064, Berlitz Investment Corp. v. Stefan Tinculescu,
-WIPO Case No. D2003-0465, and Brooke
Bollea, a.k.a Brooke Hogan v. Robert McGowan, -WIPO
Case No. D2004-0383.
In the present case, the Panel is not convinced from the material provided that the Complainant establishes a prima facie case against the Respondent. The website does appear, on a balance of probabilities, to be for the purposes of a legitimate business. Moreover, there is nothing on the website that suggests that the Respondent is benefiting from the goodwill of the Complainants as it appears that the website is engaged in a totally different business from that of the Complainants.
Consequently, the Panel finds that the Complainants failed to establish the second element of the Policy.
C. Registered and Used in Bad Faith
In light of the Panel’s finding under the second element, considering
that it is for the Complainant to demonstrate all three elements of the Policy,
the Panel need not make a finding under the third element.
For all the foregoing reasons, the Complaint is denied.
Nasser A. Khasawneh
Dated: April 25, 2007