Vertical Axis Beats Back A UDRP On “A Misspelling of a Common Dictionary Word” Detur.com: By A 2-1 Decision
Vertical Axis Inc represented by Ari Goldberger, beat back a UDRP on the domain name Detur.com, which was described by the panel as being “A Misspelling of a Common Dictionary Word.”
The domain was parked and available for sale.
The Complaint was brought by Detur International B.V. (“Complainant1”) of Amsterdam, Netherlands and Tatil Seyahat Turizm Anonim Şirketi (“Complainant2”) of Istanbul, Turkey.
The decision was decided by a three member panel which voted 2-1 in favor of the domain holder, and there is a dissenting opinion.
Its a very long opinion especially with the dissenting opinion but it is a very interesting case and all attorney’s should take note of the dissenting panelist opinion, which wouldn’t make him a top choice for a panelist by any domain holder.
Here are the relevant facts and findings by the panel:
“Complainant1 is a company established in Netherlands since 1976, holding of a group of companies established in Norway, Finland, Sweden, Malta and Denmark which are engaged in tourism and travel related activities.
“Complainant2 is a company established in Turkey, engaged in tourism and travel related activities, and which has operated a travel agency in Turkey under the name of Detur Turizm Seyahat Acentasi (i.e. Detur Tourism Travel Agency) since at least 1993.
“Complainant2 has rights over the nominative DETUR trademark for which it holds several trademark registrations, such as: registration No. 2004 29154 with the Turkish Patent Institute, application date September 13, 2004, registration date January 5, 2006, in classes 35, 37, 38, 39, 41, 42 and 43; registration IR No. 856523 with the World Intellectual Property Organization, registered on November 3, 2004 in classes 35, 39, 41 and 43.
“Complainant2 also has rights over several device trademarks incorporating the term “detur” and for which it holds several trademark registrations, such as: registration No. 2003 03832 with the Turkish Patent Institute, application date February 25, 2003, registration date July 7, 2004, in class 43; registration No. 856522 with the World Intellectual Property Organization, registered on November 3, 2004 in classes 35, 39, 41 and 43; registration No. 213236 with the National Board of Patents and Registration of Finland, application date April 1, 1998, registration date March 15, 1999, in class 39; registration No. 2005 18452 with the Turkish Patent Institute, application date May 11, 2005, registration date June 19, 2006, in classes 35, 37, 38, 39, 41, 42 and 43. Further, Complainant had a trademark registration covering DETUR and device, registration No 96 006027 with the Turkish Patent Institute, application date May 3, 1996, registration date December 5, 2000, in classes 35, 37, 38, 39, 41 and 42.
“In addition to those referred above, Complainant2 produced a list of similar trademarks registered since 2004 in Egypt, Tunisia, Morocco and Malta.
“Respondent is a company engaged in the registration of domain names.
“The disputed domain name was created on May 19, 2001.
“In terms of market share, 30.000 Finnish people chose Detur for their vacations in 2009, which means 4% of travel packages in the Finnish market were organized by Detur
“Detur Norway AS began its operations in Norway in 1999 by organizing trips to Turkey. Shortly after, it added charter tours to Egypt and Tunisia. So far, 275.000 Norwegians have chosen Detur Norway for their holiday trips. As a result, Detur Norway now organizes more than 45% of Norwegians’ holidays to Tunisia, and approximately 30% to Turkey every year.”
“Detur Sweden AB launched its local operations in 2000 with departures from six cities to Turkey and Tunisia and afterwards by organizing trips to Egypt as well. In 2010 Detur Sewden organized vacations for approximately 80,000 people. Detur Sweden was awarded the “Gazelle of the Year” title two years in a row by Dagens Industri, the leading business magazine in Sweden.”
“Detur Operations and Trade Limited and Detur Charter and Trade Limited officially began operating in Malta in 2009 and have sponsored several sport teams, sport organizations and awards which all broadcasted live on Malta TV channels.”
“Complainant2 was founded by one of the founder partners of Complainant1, as a tourism company in Turkey, in 2004, having its origin in Detur Tourism Travel Agency since 1993 and operates as Detur Turkey since then.”
“Complainant1 is the registrant of the following domain names: <deturgroup.com> created in 2009, <detur.dk> created in 2005, <detur.fi> created in 2005, <detur.no> created in 1999, <detur.se> created in 1999 and <detur.com.tr> created in 1998.”
The complainant argued that:
“DETUR is neither a dictionary word nor a common word, rather it is a created trademark with no meaning in Turkish. ”
“The argument that “detur” is typographical variation of the dictionary word “detour” is not persuasive and Respondent cannot claim descriptiveness based on its typo variations.”
“Respondent cannot claim that its use is legitimate due to the original word’s generic nature. Further, in Turkish “De Tour” does not mean “The Tour”, it has no meaning in Turkish.”
“The disputed domain name was registered primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the owner of the trademark for valuable consideration in excess of the registrant’s out-of-pocket costs, and by using the disputed domain name until it is sold Respondent has intentionally attempted to attract, for commercial gain, Internet users to a web site, by creating a likelihood of confusion with Complainant’s mark as to the source or affiliation of the web site or of a product or service on the web site.”
“The disputed domain name is offered for sale through the WhoIs search results page <domainbrokers.com> and a note on the top of said web page under the disputed domain name.”
“The disputed domain name used to display obscene photos, which would tarnish Complainants’ reputation and goodwill. Respondent put an erotic based web page link and advertisement to attract the visitors of the Complainants’ to its web site, while forcing Complainants to buy the disputed domain name to prevent their trademark and trade name along with their reputation to be tarnished.”
“Other than claiming it used for a brief period time in non-US and Canada countries and that “www.snog.com” is a social web site, Respondent could not have explained why the web site was displaying contents from “www.snog.com” which consist of partly naked and/or sexy photos of some ”www.snog.com” users.”
“Respondent is responsible of the content of the web site and this kind of use could not justify any kind of good faith use claim.”"
The web site associated to the disputed domain name contains advertisements and links to travel routes that are Complainant’s main target, such as Alanya and Tunisia, which would cause confusion to the Internet users who seek information on DETUR and divert them away from Complainant’s web sites for Respondent’s commercial gain.”
The domain holder argued that:
“The Complaint was filed over ten years after registration of the disputed domain name, a substantial delay by any measure and an eternity in Internet time.
“Complainants do not explain why they waited so long to initiate the Complaint. This long delay bars Complainant under the doctrine of laches, which has been recognized under the Policy. Complainants’ long delay particularly demonstrates that laches is appropriate because Complainants was likely aware of the disputed domain name since before 2004 when the vast majority of its own trademarks were registered by foreign trademark offices.”
“Complainants were certainly aware of the disputed domain name in 2005 when it registered the domain names <detur.fi> and <detur.dk>. Now, without explanation and after Respondent has owned the disputed domain name for eleven years, Complainants chose to file their Complaint. Accordingly, the Complaint should be denied on this basis alone.”
“Respondent registered the disputed domain name because “detour” is a common English dictionary word to which it believed no party could claim exclusive rights. Respondent obtained the disputed domain name because it contains the common typographical error of the word “detour” – missing the letter “o”.”
“Respondent registered the disputed domain name on February 1, 2002 after it expired, was deleted, and offered for registration again. Respondent did not register the disputed domain name with Complainants trademark and trade name in mind and had no knowledge of Complainants, their web site, their business name or trademark when it registered the disputed domain name over ten years ago.”
“Respondent hosts the disputed domain name with Hitfarm.com, a service which places pay-per-click (“PPC”) advertising links based on a Google advertiser feed on hosted domain names, sharing the advertising revenue with the domain name owners. Links on the web page are naturally related to the word “tour,” as in “detour,” and are auto-generated by Google’s keyword advertising inventory and user search behavior, displaying PPC links related to the meaning and context of the word “detour”, i.e. travelling off of the main route.”
“Contrary to Complainants’ assertion, the disputed domain name did not resolve to an erotic or pornographic web site.”
“Since the date the disputed domain name was registered until September 2011, all visitors to the disputed domain name viewed the PPC links related to the common meaning and travelling context of the word “detour”, …since 2001 certain international traffic was directed to the British social web site “www.snog.com” which is a social site popular with British teenagers and it is not an erotic or pornographic site as mischaracterized in the Complaint.”
Regarding laches the panel found:
“It is true that the Policy and the Rules do not set forth any period of time within which a complaint should be filed nor any express provision similar to the defense of laches. On the other hand, as set forth above, paragraph 15(a) of the Rules provides that a panel is to decide a complaint pursuant to the Policy, the Rules and any rules and principles of law that it deems applicable.”
The WIPO Overview 2.0 has summarized the different existing views as follows: “Panels have recognized that the doctrine or defense of laches as such does not generally apply under the UDRP, and that delay (by reference to the time of the relevant registration of the disputed domain name) in bringing a complaint does not of itself prevent a complainant from filing under the UDRP, or from being able to succeed under the UDRP, where a complainant can establish a case on the merits under the requisite three elements. Panels have noted that the remedies under the UDRP are injunctive rather than compensatory in nature, and that a principal concern is to avoid ongoing or future confusion as to the source of communications, goods, or services. However: Panels have also noted that a delay in bringing a complaint under the UDRP may make it more difficult for a complainant to establish its case on the merits, particularly in relation to the second and third elements requiring the complainant to establish that the respondent lacks rights and legitimate interests and that the respondent registered and used the domain name in bad faith. A small number of panels have also begun to acknowledge the possible applicability, in appropriate and limited circumstances, of a defense of laches under the UDRP where the facts so warrant”.
“In any event, this Panel is of the view that the present proceeding may be decided on the basis of the evidence adduced by each side and the conclusions that can be reached from that evidence.”
“It is uncontested that the disputed domain name redirected Internet users to the web page of “www.snog.com”. This Panel considers that the printout of such web page attached to the Complaint shows no pornographic or erotic materials but rather it conveys the impression of a social meeting or dating place in the web. Respondent contends that such redirection took place from August 2011, and that before that and at the present the disputed domain name shows PPC ads relating to the common meaning of the word “detour”: travelling, a diversion, deviating from the common path. Respondent supplied printouts of the web page associated to the disputed domain name showing its content in November 2006, February 2009 and June 2012, all displaying travel-related content.”
“Although Respondent’s explanation on the use of the term “detur” (as a misspelling of “detour” in English) and its alleged relationship with the English word “tour” might seem reasonable on its face, it is not fully persuasive in light of the content of the disputed domain name web site which, according to Respondent’s supplied evidence, simply shows travel-related ads generally, nothing to do with the allleged specific intention of traveling off of the main route. The aforesaid, coupled with the fact that the disputed domain name was redirected to another web site totally unrelated to such alleged specific intention gives rise to a valid inference that the disputed domain name is not used strictly within the alleged meaning of the allegedly misspelled English word “detour”.
This case presents the particularity that what seems to be a misspelling of a common dictionary word in English is an invented meaningless term in Turkish, country where the DETUR mark was firstly used and registered.
Respondent asserts that in registering domain names it does not target third-party’s trademarks and although that seems to be true, the fact before this Panel is that DETUR is a mark registered by Complainant and that such term has no meaning in Turkish.
“Notwithstanding the aforesaid, due to this Panel’s finding under the bad faith requirement, this Panel considers it unnecessary to determine whether Respondent might have rights or legitimate interests in the disputed domain name.”
“There is no evidence showing that in 2001-2002, the time when the disputed domain name was registered and subsequently obtained by Respondent, the trade marks on which this Complaint is based were famous or at least well known in Turkey and in the other countries in which Complainants already had operations. ”
“Likewise there is no evidence showing that Respondent was, or should have been, aware of Complainants or Complainants’ marks at that time, which is a requisite for a finding of bad faith registration.”
“Moreover, the fact alone that there were 5 companies with the term “detur” incorporated in their corporate names does not mean that such term was well known as a mark or that such companies were well known in their jurisdictions and elsewhere.”
“Complainants also provided figures relating to the number of passengers and operating revenue obtained, but only for the years 2006-2010 and not for the relevant period 2001-2002. ”
“Further, Complainants contend that they made a TV show which was broadcast for 2 years in Finland TV and it invited this Panel to verify this as well as other materials appearing at certain Internet sites. This Panel did so and found that such materials are dated and/or were uploaded onto the corresponding Internet sites in different dates between January 2010 and October 2011. Accordingly, none of this material supports Complainant’s contention that the disputed domain name was registered in bad faith.”
“Complainants further contend that because Respondent registered the disputed domain name and because of its unavailability Complainants could not register the disputed domain name. However, such bare assertion is not supported by any explanation as to why Complainants did not register the disputed domain name before their creation date (2001) while, on the other hand, then did obtain the registration of 3 domain names under the above mentioned TLDs in 1998 and 1999.”
“The Complaint includes in its evidence the results of an Internet search conducted at “www.google.com.tr”. That search, however, shows the result obtained at present and there is no evidence that an Internet search conducted in 2001-2002 would have displayed results showing Complainants’ group of companies and Complainants’ trademarks. ”
“To assume that an Internet search performed today would show the same results as a search performed more than 10 years ago is unpersuasive. In this respect, it is noteworthy that Complainants did not supply this Panel at least with evidence that the 3 domain names already registered by Complainants before 2002 were operational or with evidence of their content. Complainants could have supplied printouts of the content of its web sites in 2000 or 2001 to support its allegations but did not do so.”
“Complainants contend that the disputed domain name has been registered and used for (i) selling, renting, or otherwise transferring it to the owner of the trademark for valuable consideration in excess of the domain name registrant’s out-of-pocket costs, (ii) commercial gain, intentionally attract internet users to its web site by creating likelihood of confusion with Complainant’s trademarks and reputation, (iii) tarnishing Complainant’s trademarks and reputation, all of which are proof of bad faith. However, those bare assertions are unsupported by evidence.”
For all the foregoing reasons, the Complaint is denied.
The Hon Neil Brown Q.C.
Dated: July 16, 2012
Here is the dissenting opinion:
“The Dissenting Panelist agrees with the majority of the Panel on the question of confusing similarity. However, the Dissenting Panelist cannot agree with the majority of the Panel on the questions of rights or legitimate interests in the disputed domain name and bad faith registration and use.”
“In this second element of the Policy, one of the important points is whether the disputed domain name is misspelled or mistyped word or not. In Turkish language the word “Tour” is translated into “tur”.is not a dictionary word. It is also not a generic or descriptive or common word. The word “tur” in Turkish is used for “tourism” in short and it means “a travel starting from a point, continuing according to a program and ending at the same point”. So the word “tur” is directly related with the tourism and travel services.”
“In this second element of the Policy, one of the important points is also whether Respondent’s use of the disputed domain name is noncommercial or fair use or not.”
“The business area of Complainants is “travelling and tourism services”. Respondent is using or used the disputed domain name either to direct to the website “www.snog.com” or to direct to the web sites of the companies dealing with travelling and tourism services which are competitors of Complainants. Directing the disputed domain name to the website “www.snog.com” has no relation with the word mistyped “detur” or the correct typing “detour” or “the tour”.”
“In fact pay-per-click (“PPC”) is accepted as fair use but not all PPC usages. In this case the Dissenting Panelist is of the opinion that the usage of disputed domain name by Respondent is for obtaining commercial gain and tarnishing the trademark of Complainants. Because Respondent is either directing the users to irrelevant website “www.snog.com” or to the web sites of competitors of Complainants.”
“Additionally Respondent is a domain name trader and owns numerous domain names. So Respondent is not known by the disputed domain name.”
“In the opinion of the Dissenting Panelist, Respondent has not demonstrated the conditions in paragraph 4(c) of Policy. So, the Dissenting Panelist recognizes that Respondent has no rights and legitimate interests in the disputed domain name.”
“In the third element of the Policy, one of the most important point is whether Respondent has acted in bad faith during the registration of the disputed domain name or not.”
“First of all, it should be considered that, during the domain name registration stage, the person who registers the domain name declares that “the registration of the Domain Name will not infringe upon or otherwise violate the rights of any third party…”It is the responsibility of the person who registers the domain name to determine whether the domain name infringes or violates someone else’s rights”.”
“In the present case, it is clear that, before the date of registration of the disputed domain name, that Complainants;
- operated in Turkey, Netherlands, Finland, Norway and Sweden with local companies,
- had corporate names include the term “detur” as main element,
- had obtained trademark registrations in Turkey and Finland for DETUR,
- registered 3 domain names with the word “detur” as <detur.com.tr>, <detur.se> and <detur.no>.
- have used DETUR and device mark in Turkey on the brochures relating to hotel destinations in 1997, 1998 and 1999.
It is also clear that Respondent is not an ordinary domain name owner. Respondent is a domain name trader. At the moment it should be stated that being domain name trader does not mean that the trader is in bad faith. But it is important that the domain name trader must be very careful in registering the domain name. In the opinion of the Dissenting Panelist acting can be otherwise considered as wilful blindness.”
“Additionally, as it is stated above, the business area of Complainants is the “travelling and tourism services”. The disputed domain name has either been directing to the site “www.snog.com” or directing to the web sites of the companies dealing with travelling and tourism services which are competitors of Complainants. This shows that Respondent is using the disputed domain name in bad faith.”
“Respondent has stated in its response that it has registered and owns hundreds of domain names which solely incorporate typographical variations of English dictionary words, such as: <aircondioners.com>; <airelines.com>; <alibama.com>; <ambassy.com>; <andriods.com>; <arilines.com>; <asthama.com>; <asume.com>; <attoreys.com>; <attornie.com>; <batterys.com>; <benifets.com>; <bibile.com>; <calandar.com>; <catolic.com>; <classifields.com>; <colllege.net>; <cometology.com>; <convertion.com>; <copuons.com; <coupoons.com>; <creidtcards.com> … etc.”. Those are really generic or descriptive words. But in the present case the situation is different. “Detur” is not generic or descriptive word.”
“According to the opinion of the Dissenting Panelist, the decision in Compart AG v. Compart.com / Vertical Axis, Inc., WIPO Case No. D2009-0462 is important and applicable for the present case. This decision has also been discussed in the majority decision. The Dissenting Panelist considers that;
- in the present case, Complainants have registered trademarks outside of the country of Complainants (Finland other than Turkey), at the date of the registration of the disputed domain name, contrary to the Compart AG v. Compart.com / Vertical Axis, Inc., Supra in which the complainant had registered his trademark only in his own country at the registration date,
- in the present case, Complainants have also registered domain names outside of the country of the Complainants (Sweden and Norway other than Turkey), at the date of the registration of the disputed domain name, contrary to the Compart AG v. Compart.com / Vertical Axis, Inc., Supra in which the complainant had no domain name registrations outside of its country at the registration date,
- if Respondent has performed at least a Google search to make sure it did not violate any rights of third parties, it could determine either the domain names or corporate names of Complainants.”
“So, differing from the majority of the Panel, the Dissenting Panelist recognizes that Respondent has acted in bad faith at the registration stage of the disputed domain name and is using the disputed domain name in bad faith.”
“Accordingly, in the view of the Dissenting Panelist Respondent has no rights or legitimate interests in the disputed domain name which has been registered and used in bad faith and the domain name <detur.com> should be transferred to the Complainant1.”
Ugur G. Yalçiner
Dated: July 16, 2012
1 Available at “www.wipo.int/amc/en/domains/search/overview2.0/index.html”
2 See Koninklijke Philips Electronics N.V. v. Relson Limited, WIPO Case No. DWS2001-0003: “Each of the three stated elements are made up of a number of facts, each of which has to be proven in order for the Complainants to succeed [...] Facts are proven through evidence [...] Mere “assertions” are nothing more than argument and must in each case be based on facts proved through evidence”.
4 See Valve Corporation v. ValveNET, Inc., ValveNET, Inc., Charles Morrin, WIPO Case No. D2005-0038.
5 See The Ritz Hotel, Limited v. Damir Kruzicevic, WIPO Case No. D2005-1137: “Complainant has proved that it is the registered proprietor of the mark RITZ [...] It is not for the Panel in an administrative proceeding such as this to question the validity of those registrations”.
6 See Intocast AG v. Lee Daeyoon, WIPO Case No. D2000-1467: “For methodical reasons it is very hard for the Complainant to actually prove that Respondent does not have rights or legitimate interests in respect of the domain name, since there is no strict logical means of verifying that a fact is not given [...]. Many legal systems therefore rely on the principle negativa non sunt probanda. If a rule contains a negative element it is generally understood to be sufficient that the complainant, by asserting that the negative element is not given, provides prima facie evidence for this negative fact. The burden of proof then shifts to the respondent to rebut the complainant’s assertion”.
9 See Enrique Bernat F., SA v. Marrodan, WIPO Case No. D2000-0966: “The burden of proof lies with the Complainant in all cases to establish actual bad faith by the Respondent. There is no obligation whatsoever on the Respondent to prove good faith, and in any event it is equally important to note that the absence of good faith does not constitute bad faith”.
10 See The Skin Store, Inc. v. eSkinStore.com, WIPO Case No. D2004-0661: “The [p]anel suspects [...] that further evidence could have been produced, but it is not the job of the [p]anel to hunt it out”.
11 Of particular interest is the following statement of the dissenting panelist in Red Nacional De Los Ferrocarriles Españoles v Ox90, WIPO Case No. D 2001-0981: “If a concept of constructive knowledge (i.e. “he must have guessed and had he made the simplest of searches he would have known; he ought to have made the search, therefore he is to be taken as having known”) is introduced into the UDRP, there is no knowing where this will all lead. The “Cautionary Comments” of the majority of the Panel acknowledge the risk. Had the name in issue been a global brand, which the Respondent could have been expected to know, I might have disbelieved his story, but in this case the name is not one that he could have been expected to have known [...] If, as may be the case, the modus operandi of the Respondent is to be condemned, the proper course is to amend the Policy, not to “stretch” the Policy to deal with an activity that it was not designed to cover”.