December 23rd, 2015
WIPO PANEL DENIES TURKISH UDRP CLAIM

In a decision rendered in the case of

Sarten Ambalaj San. ve Tic. A.Ş. v. Stanley Pace

Case No. D2015-1790, the panel denied the claim of a Turkish Company whose trademarks are not well-known outside of Turkey. Here is the decision where I represented the Respondent:

1. The Parties

The Complainant is Sarten Ambalaj San. ve Tic. A.Ş. of Istanbul, Turkey, represented by Grup Ofis Marka Patent Inc., Turkey.

The Respondent is Stanley Pace of Flower Mound, Texas, United States of America (“USA”), represented by Law Office of Howard M. Neu, P.A., USA.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:

(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;

(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.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has established trademark rights in the mark SARTEN by virtue of its multiple registrations in Turkey, as outlined above.

The Panel further finds that the disputed domain name is identical to the Complainant’s trademark SARTEN.

Accordingly, the Panel finds that the Complainant has satisfied this requirement under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

In light of the findings on bad faith, it is not necessary for the Panel to rule on rights or legitimate interests.

C. Registered and Used in Bad Faith

On the basis of the evidence filed by the parties, the Panel finds that the Complainant has not satisfied the requirement under paragraph 4(a) of the Policy, that the disputed domain name was registered and used by the Respondent in bad faith.

The Complainant is a Turkish company; the Respondent resides in the USA. When the Respondent registered the disputed domain name in 1998, the Complainant only held a single Turkish trademark registration for SARTEN (which has since expired). The Complainant also claims trade name use since 1972, but has failed to bring forward probative evidence to the effect that its common law use ever resulted in a reputation outside Turkey itself. The Panel concludes that there is no reason to believe the Respondent knew about the Complainant’s rights in the SARTEN mark or trade name, when the Respondent registered the disputed domain name in 1998.

Even if the Panel were to accept the Complainant’s suggestion that as a “sophisticated domainer”, the Respondent should have conducted adequate searching to ensure that the disputed domain name did not violate any trademark rights, the Complainant has not provided any evidence to indicate that the Respondent would have found the Complainant’s Turkish mark had he searched for it in 1998. In fact, it is not clear if the Respondent, while residing in the USA, would have even been able to confirm the existence of the Complainant’s Turkish company in 1998, let alone find the Complainant’s Turkish mark. Based on the Complainant’s evidence, its oldest domain name, , (and its earliest Internet presence under that name) was registered on January 6, 1999, a year after the Respondent registered the disputed domain name.

On balance, the Panel accepts the Respondent’s evidence that he was not aware of the Complainant’s trademark rights when he registered the disputed domain name in 1998, nor, in the Panel’s assessment of the particular circumstances of this case, should he have been so aware.

The Panel has also carefully reviewed the Complainant’s argument that the links displayed on the Respondent’s website at “www.sarten.com” constitute evidence of bad faith. The web page produced in the Complainant’s evidence does not actually contain any indicia that suggest any direct connection to the Complainant’s business. The majority of the webpage references are consistent with the Spanish meaning of “sarten” as a frying pan, and not with a packaging business.

In all the circumstances, based on the evidence as filed, the Panel finds that the Complainant has failed to meet its burden to prove that the disputed domain name was registered and used in bad faith. The Complainant’s failure to do so means that this Complaint must be dismissed.

7. Decision

For the foregoing reasons, the Complaint is denied.

Christopher J. Pibus
Presiding Panelist

Ugur G. Yalçiner
Panelist

Richard G. Lyon
Panelist
Date: December 18, 2015