Complaint for detur.com owned by Vertical Axis denied at WIPO

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 30, 2012.

There were 2 complainants in this complaint. Complainant1 is Detur International B.V. (“Complainant1”) of Amsterdam, Netherlands and Complainant2 is Tatil Seyahat Turizm Anonim Şirketi (“Complainant2”) of Istanbul, Turkey.

Respondent is Vertical Axis Inc. of Christ Church, Barbados, represented by ESQwire.com Law Firm.

The disputed domain name was created on May 19, 2001. Complainant1 is the registrant of only one .com domain name: deturgroup.com created in 2009.

DETUR is a registered mark of Complainant2 only. Complainant1 has no registered mark for detur.

First of all the Panel made a comment on the “Delay in Filing the Complaint” and it’s view was to decide the Complaint based on the evidence and not on the doctrine of laches as Respondent requested:

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.
Accordingly, on one view there are no legal grounds under the Policy or the Rules to dismiss the Complaint based on the time lapsed between the date of registration of the disputed domain name and the date of filing of the Complaint. Many UDRP panel decisions support that view.
However, there are also some decisions to the contrary, the most known of which perhaps is The New York Times Company v. Name Administration, Inc., NAF Claim No. 1349045. Further, in other decisions such as C. Brewer and Sons Ltd. v. Vertical Axis, Inc., WIPO Case D2009-1759, and Vanguard Trademark Holdings USA LLC v. Nett Corp., NAF Claim No. 1262162, observations have been made by panels to the effect that delay in instituting proceedings, along with other factors present in each case, may have an impact in the outcome of UDRP.
[…] 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.

Identical or Confusingly Similar
Then the Panel found that the Complaint satisfied the first element of the UDRP (Identical or Confusingly Similar). It was clear to the Panel that Complainants had rights in the DETUR mark. Therefore, the Panel found that the disputed domain name was identical to Complainant’s mark.

Rights or Legitimate Interests
The disputed domain name redirected Internet users to the web page of “www.snog.com”. The Panel considered that the printout of such web page attached to the Complaint showed no pornographic or erotic materials but rather it conveyed the impression of a social meeting or dating place in the web. Respondent contended 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.
Due to the Panel’s finding under the bad faith requirement, the Panel found it unnecessary to determine whether Respondent might had rights or legitimate interests in the disputed domain name.

Registered and Used in Bad Faith
The issue of bad faith has to be clearly supported by appropriate evidence and, as it was apparent from the remainder of this decision, the Panel reached the conclusion on the evidence that Complainants have not established this element. This conclusion was reached from the following analysis of the evidence:

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 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.

[…]

Complainants also rely on several UDRP panel decisions to support its allegations of bad faith registration. However, after reviewing those decisions, this Panel finds that they are not applicable to the present case.

[…]

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.
There are several UDRP panel decisions where the lack of appropriate evidence on this issue has been a detrimental factor resulting in a finding against complainants.

[…]

Given the aforesaid, this Panel finds that Complainant has failed to establish, pursuant to paragraph 4(a)(iii) of the Policy, that the disputed domain name was registered in bad faith.

The Decision was signed by 2 of the panelists:
Gerardo Saavedra (Presiding Panelist) and The Hon Neil Brown Q.C. (Panelist)

There was a dissenting opinion by panelist Ugur G. Yalçiner. Panelist’s opinion was that the Complaint had satisfied the second element of the UDRP because:

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.

Interesting point is that the Panelist admits that PPC usage CAN BE ACCEPTED AS FAIR USE.

The Panelist states that:

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.
[…] 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.

Then the dissenting Panelist tries to compare his dissenting opinion with a similar dissenting opinion of another UDRP decision. This is were the Panelist messed up and clearly wrote the wrong decision number. The decision number refers to a UDRP from 2009 that Vertcal Axis lost. This decision had no dissenting opinion. I searched all the decisions cited in the Panel’s decision but couldn’t find one with a dissenting opinion.

So, differing from the majority of the Panel, the Dissenting Panelist recognized that Respondent had acted in bad faith at the registration stage of the disputed domain name and was using the disputed domain name in bad faith.