1st UDRP Finding Of Reverse Domain Name Hijacking for Turkey? The Case Of tatil.com Vs. etatil.com
According to the domain holder who fought back a UDRP on his domain name etatil , a three member UDRP panel just handed down the first Reverse Domain Name Hijacking (RDNH) for a domain holder located in Turkey.
We don’t have any independent knowledge if this is truly the 1st finding of RDNH for a Turkish owned domain but the domain owner is quite sure.
The domain at issues was etatil.com.
The Complainants were ÖZALTUN OTELCİLİK TURİZM VE TİCARET LTD. ŞTİ. of Istanbul, Turkey, Allstar Hotels LLC of New York, Unites States of America and Mr. Metin ALTUN of Istanbul, Turkey, represented by Istanbul Patent & Trademark Consultancy Ltd., Turkey.
The Respondent was E-k Turizm Otelcilik ve Danışmanlık Ltd. Şti of Aydin, Turkey, represented by Gökhan Gökçe and Ayla Özenbaş, Turkey.
Here are the relevant facts and findings:
The Complainants are two associated companies and a Turkish individual, which together own and operate a vacation web portal at tatil.com.
The Complainants’ domain name tatil.com was registered on May 15, 1997; the Complainants state that this domain name was first used on September 14, 2004.
The Complainant ÖZALTUN OTELCİLİK TURİZM VE TİCARET LTD. ŞTİ. is the owner of the Turkish registration No. 2007/46771 for the service mark TATIL.COM (word and device), filed on August 31, 2007, in classes 39 and 43.
The Complainant ÖZALTUN OTELCİLİK TURİZM VE TİCARET LTD. ŞTİ. is the owner of the Turkish registration No. 2009/24538 for the service mark TATIL.COM.TR, filed on June 18, 2009, in classes 39 and 43.
The disputed domain name etatil.com was registered on August 8, 2004.
“The Complainants contend that the disputed domain name is confusingly similar to their trademark TATIL.COM (word and design), which was filed on August 31, 2007 before the Turkish Patent Office. ”
“The Complainants have also provided evidence of ownership of a trademark registration for TATIL.COM.TR, filed in 2009.”
“The Panel notes that the registration of the disputed domain name, which is dated August 8, 2004, predates the trademark registrations the Complainants rely upon.”
“In the present case, the Panel considers that the Complainants have established rights only in the combination of the word and figurative elements which constitute their trademarks and that the design element is the sole source of distinctiveness of their trademarks. ”
“The Panel is thus not satisfied by the evidence submitted by the Complainants that the term “tatil”, which is the only common element between the Complainants’ marks and the disputed domain name, has itself become distinctive of the Complainants’ services, since “tatil” is a generic Turkish word which means “holiday” or “vacation”. ”
“In light of the fact that the “tatil” is a generic Turkish word which means “holiday” or “vacation” and that the prefix “e” is commonly used as an abbreviation for “electronic” or for online products or services and thus the term “etatil” indeed describes the services which have been provided on the Respondent’s website – even before the filing of the Complainants’ trademarks – the Panel is of the opinion that the Respondent, before any notice of the dispute, has used the disputed domain name in connection with a bona fide offering of goods or services for purpose of the Policy.”
“Moreover, at the time the disputed domain name was registered in August 2004, the Respondent could have only become aware of the existence of the Complainants’ domain name tatil.com, since it was already registered as of 1997 and thus not available for registration.”
“However, as the Complainants themselves stated, the website “www.tatil.com” was not active at that time, since the Complainant’s domain name tatil.com was first used on September 14, 2004, more than a month after the registration of the disputed domain name. Furthermore, the Complainants’ figurative trademark TATIL.COM was filed before the Turkish Patent Office only in August 2007.”
“Therefore, the Panel finds that the Respondent did not register the disputed domain name in bad faith.”
“With reference to the use of the disputed domain name, the Panel notes that the website to which the disputed domain name resolves neither displays the Complainants’ figurative trademarks nor imitates the look and feel of the Complainants’ website “www.tatil.com”. In the Panel’s view, the use of <etatil.com> to promote holiday services is consistent with the meaning of the disputed domain name, which is constituted by the common prefix “e” and the Turkish generic term for “holiday”.
“The Panel thus concludes that also the use of the disputed domain name made by the Respondent does not amount to bad faith.”
On this issue of Reverse Domain Name Hijacking the panel found:
“Reverse domain name hijacking is defined in paragraph 1 of the Rules as using the Policy in bad faith to attempt to deprive the domain-name holder of a domain name.”
“In the case at hand, it is uncontested that the registration date of the disputed domain name precedes the dates of the Complainants’ relevant trademark registrations and the evidence shows that the disputed domain name has been used as part of a bona fide business of the Respondent. ”
“The Complainant was aware of those facts before submitting its Complaint and cannot reasonably claim exclusive rights in the generic term “tatil” (“holiday”), which constitutes the only common element between the Complainants’ marks and the disputed domain name.”
“For all the foregoing reasons, the Complaint is denied and the Panel declares that this is an appropriate case to make a finding of Reverse Domain Name Hijacking.”