Çolakoğlu Metalurji A.Ş. v Ilker Baburoglu
WIPO Case No. D2024-1463
•10-06-2024
| ARBITRATION AND MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Çolakoğlu Metalurji A.Ş. v. Ilker Baburoglu
Case No. D2024-1463
1. The Parties
The Complainant is Çolakoğlu Metalurji A.Ş., Türkiye, represented by Gün + Partners Avukatlık
Bürosu, Türkiye.
The Respondent is Ilker Baburoglu, Türkiye, represented by Mr. Muharrem Küçük, Türkiye.
2. The Domain Name and Registrar
The disputed domain name <medtrade.net> is registered with GoDaddy.com, LLC (the
“Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 7,
2024. On April 8, 2024, the Center transmitted by email to the Registrar a request for registrar
verification in connection with the disputed domain name. On April 9, 2024, the Registrar
transmitted by email to the Center its verification response disclosing registrant and contact
information for the disputed domain name, which differed from the named Respondent
(Registration Private, Domains By Proxy, LLC) and contact information in the Complaint. The
Center sent an email communication to the Complainant on the same day, providing the registrant
and contact information disclosed by the Registrar, and inviting the Complainant to submit an
amendment to the Complaint. The Complainant filed an amended Complaint on April 15, 2024.
The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of
the Complaint, and the proceedings commenced on April 16, 2024. In accordance with the Rules,
paragraph 5, the due date for Response was May 6, 2024. The Response was filed with the
Center on May 6, 2024.
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The Center appointed Emre Kerim Yardımcı as the sole panelist in this matter on May 21, 2024.
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 a Turkish company established in 1968 and it operates in the iron and steel
industry. The Complainant has a subsidiary “Medtrade Inc.” established in United States of
America (“US”) in 2003.
The Complainant owns the Turkish trademark MEDTRADE registration No. 2013 13765, registered
on April 2, 2014, covering goods and services in classes 6, 35, and 40 and the US trademark
MEDTRADE registration No. 5347228, registered on November 28, 2017, covering the services in
class 35.
The Complainant’s website is linked to the domain name <medtradeinc.com> which was registered
in 2012.
The disputed domain name was registered on August 30, 2017.
According to the current record, the Respondent appears to be an individual located in Türkiye.
The disputed domain name does not now resolve to an active website. The Respondent owns
“MedTrade LLC” established in United Arab Emirates and is operating in the gas and oil sector.
5. Parties’ Contentions
A. Complainant
The Complainant contends that it has satisfied each of the elements required under the Policy for a
transfer of the disputed domain name.
Notably, the Complainant contends that that the disputed domain name is confusingly identical to
the MEDTRADE trademark.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of
the disputed domain name. It states that it has never authorized the Respondent to use its
MEDTRADE trademark, that the Respondent has not been commonly known by that name, and
that the Respondent is making neither bona fide commercial use nor legitimate noncommercial or
fair use of the disputed domain name.
The Complainant contends that the Respondent has registered and is using the disputed domain
name in bad faith. The Complainant claims that MEDTRADE trademark is a well-known
trademark, the Respondent had the Complainant’s trademark in mind when registering the
disputed domain name and that the Respondent is passively holding the disputed domain name.
B. Respondent
The Respondent contends that the Complainant has not satisfied the elements required under the
Policy for a transfer of the disputed domain name. The Respondent goes into considerable detail
and cites numerous previous UDRP cases. In summary the Respondent contends that:
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- there is another domain name <medtrade.com> which is registered and owned by a third-party
operating in a different sector and which predates the registration of the Complainant’s trademark
and its domain name.
- there are several trademarks registered for MEDTRADE throughout the world covering different
goods and services that are coexisting together with the Complainant’s trademark. The term
“MedTrade” as a shortened form of “Mediterranean Trade” and that is why it is used by different
parties with no specific relation to the Complainant.
- The Complainant’s trademark and activity is in relation with iron and steel industry whereas the
Respondent is engaged in the trade of petroleum products.
- the Complainant’s claim on the reputation of the Complainant’s trademark is not substantiated
with evidence,
- the Respondent is not active in any registered class of activity that the Complainant is engaged
in; therefore, the Respondent never sought to create an impression of association with the
Complainant. There is no single evidence showing that the Respondent was aware of the
Complainant's trademark or its activity,
- the Respondent is not using the disputed domain name as a website and the Respondent is
actively using the disputed domain name with 20 users in its communications.
The Respondent also requests, based on the evidence presented, that the Panel make a finding of
Reverse Domain Name Hijacking.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant is required to prove the presence of
each of the following three elements to obtain the remedy it has requested:
(i) the disputed domain name is identical or confusingly similar to a 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.
Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these
requirements are fulfilled.
It is further noted that the Panel has taken note of the WIPO Overview of WIPO Panel Views on
Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
A. Identical or Confusingly Similar
It is well accepted that the first element functions primarily as a standing requirement.
The standing (or threshold) test for confusing similarity involves a reasoned but relatively
straightforward comparison between the Complainant’s trademark and the disputed domain name.
WIPO Overview 3.0, section 1.7.
The Complainant has shown rights in respect of a trademark or service mark for the purposes of
the Policy. WIPO Overview 3.0, section 1.2.1.
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The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed
domain name is identical to the mark for the purposes of the Policy. WIPO Overview 3.0, section
1.7.
The Panel finds the first element of the Policy has been established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may
demonstrate rights or legitimate interests in a disputed domain name.
Although the overall burden of proof in UDRP proceedings is on the complainant, panels have
recognized that proving a respondent lacks rights or legitimate interests in a domain name may
result in the difficult task of “proving a negative”, requiring information that is often primarily within
the knowledge or control of the respondent. As such, where a complainant makes out a prima
facie case that the respondent lacks rights or legitimate interests, the burden of production on this
element shifts to the respondent to come forward with relevant evidence demonstrating rights or
legitimate interests in the domain name (although the burden of proof always remains on the
complainant).
The Complainant made out at least a prima facie case that the Respondent has no rights or
legitimate interests in the disputed domain name, and it is then for the Respondent to rebut this
case.
In this respect, the Panel accepts the submission of the Respondent whereby the Respondent has
established a company called “MedTrade LLC” in the United Arab Emirates on August 30, 2017,
which is certified by the Turkish Consulate of United Arab Emirates. Moreover, even though the
disputed domain name has not been used for an active website, the Panel has accepted the
submission of the Respondent that the Respondent is communicating via the disputed domain
name with its clients or third parties, for petroleum products.
Therefore, the Panel finds that the Complainant has failed to establish that the Respondent lacks
rights or legitimate interests in the disputed domain name.
The Panel finds the second element of the Policy has not been established.
C. Registered and Used in Bad Faith
The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the
Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to
be present, shall be evidence of the registration and use of a domain name in bad faith.
Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that
a domain name was registered and used in bad faith, but other circumstances may be relevant in
assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO
Overview 3.0, section 3.2.1.
Having reviewed the available record, the Panel notes that the term “Medtrade” is registered and
used as a trademark for different goods and services throughout the world by third parties.
Moreover, Panel notices that nothing in the submissions of the Complainant shows that the
Complainant’s trademark MEDTRADE is a well-known trademark in Türkiye where both Parties
reside. As a matter of fact, the goods and services provided by the Complainant is with relation to
iron and metal products which is operated as business to business through professional firms in
the field of production and sales of iron and metal products.
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Considering the above, the Panel notes that the Respondent is operating in the trade of petroleum
products in the United Arab Emirates. The Panel finds the Respondent’s statement as to the
selection of the word “MedTrade” as plausible in the sense that nothing in the case file shows that
the Respondent has registered the disputed domain name with the Complainant’s trademark in
mind. The Panel accepts the Respondent’s submission that there are several trademarks for
MEDTRADE from third parties and even a website at “ in a different sector.
In the present case, the Panel notes that nothing in the Parties’ submissions show that the
Respondent has registered the disputed domain name in bad faith.
As to the bad faith use, it is accepted by both Parties that the disputed domain name does not
resolve to an active website. However, the Panel notes that the Respondent claims to be using the
disputed domain name in its communications and nothing in the file shows that the use of the
Respondent is targeting the Complainant’s activities and its communications with its clients and
third parties.
Therefore, the Panel, on the balance of probabilities, concludes that the Complainant has failed to
establish that the Respondent registered and used the disputed domain name in bad faith.
In the Panel’s opinion, the evidence in the case file as presented does not indicate that the
Respondent’s aim in registering the disputed domain name was to profit from or exploit the
Complainant’s trademark.
The Panel finds the third element of the Policy has not been established.
D. Reverse Domain Name Hijacking
Paragraph 15(e) of the Policy provides that, if after considering the submissions, the Panel finds
that the Complaint was brought in bad faith, for example in an attempt at Reverse Domain Name
Hijacking or to harass the domain-name holder, the Panel shall declare in its decision that the
Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. The
mere lack of success of the complaint is not, on its own, sufficient to constitute Reverse Domain
Name Hijacking. WIPO Overview 3.0, section 4.16.
The Respondent believes that the case at hand constitutes an attempt at Reverse Domain Name
Hijacking (“RDNH”).
RDNH 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 Ville de Paris v. Salient Properties LLC, WIPO Case No. D2009-1279 (citing Jazeera Space
Channel TV Station v. AJ Publishing aka Aljazeera Publishing, WIPO Case No. D2005-0309) “[a]llegations of reverse domain name hijacking have been upheld in circumstances where a
respondent’s use of a domain name could not, under any fair interpretation of the facts, have
constituted bad faith, and where a reasonable investigation would have revealed the weaknesses
in any potential complaint under the Policy” (see also Goldline International, Inc. v. Gold Line,
WIPO Case No. D2000-1151).
The Panel does not share the view of the Respondent and does not see sufficient indication to
assess an attempt at RDNH by the Complainant. In particular, this is not a proceeding in which the
Complainant lacked relevant trademark rights, or had clear knowledge of the Respondent’s rights
or legitimate interests, or clear knowledge of the Respondent’s lack of bad faith (see Canadian
Wear Technologies Ltd. v. Privacy Administrator, Anonymize Inc, WIPO Case No. D2021-1572).
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It needs to be pointed out that the decision is based on the available record. Moreover, the Panel
recalls that the Complainant may commence proceedings in a court of competent jurisdiction if it
considers that it has valid grounds to allege trademark infringement or unfair competition (see Tata
Sons Pvt. Ltd. v. Victor TSB, WIPO Case No. D2021-1084).
Consequently, the Panel is of the opinion that the present case does not qualify as an attempt at
RDNH.
7. Decision
For the foregoing reasons, the Complaint is denied.
/Emre Kerim Yardimci/ Emre Kerim Yardimci
Sole Panelist
Date: June 10, 2024
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