Basak Demet Gots v. Ertugrul Anaz
Claim Number: FA1710001756084
Complainant is Basak Demet Gots (“Complainant”), New York, USA. Respondent is Ertugrul Anaz (“Respondent”), Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <demetgots.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 29, 2017; the Forum received payment on October 29, 2017.
On October 30, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <demetgots.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 3, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 24, 2017 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@demetgots.com. Also on November 3, 2017, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On November 28, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant states that she uses the DEMET GOTS mark in connection to her sole proprietorship law firm since June, 2013. Complainant applied for the DEMET GOTS mark with the United States Patent and Trademark Office (“USPTO”)(e.g., Serial No. 87,663,835, filed Oct. 29, 2017) and has common law rights to the mark, as DEMET GOTS is Complainant’s legal name.
Complainant alleges that the disputed domain name is identical to Complainant’s DEMET GOTS mark because it incorporates the mark in its entirety, removes spaces, and attaches a “.com” generic top-level domain (“gTLD”).
According to Complainant, Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name nor affiliated with any person or entity known by that name. Respondent has not made a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to harass and defame Complainant and her business by resolving to a criticism site inimical to the interests of Complainant and has replicated it as a domain name.
Further, says Complainant, Respondent registered and used the disputed domain name in bad faith. Respondent registered the domain name to intentionally target Complainant in order to harass and defame Complainant. The disputed domain name also invites users to share their feedback about Complainant, whether genuine and well-founded criticisms or not, which is additional evidence of bad faith registration and use.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has common law trademark rights in the mark DEMET GOTS, with rights dating back to 2013.
The disputed domain name was registered in 2017.
Complainant has not licensed or otherwise authorized Respondent to use her mark.
The disputed domain name is being used to publish criticism of the legal services provided by Complainant.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant claims to have filed an application, but not has not registered, the DEMET GOTS mark with the USPTO (e.g., Serial No. 87,663,835, filed Oct. 29, 2017). Generally, trademark applications alone fail to show rights in a mark. See Jireh Industries Ltd. v. DVLPMNT MARKETING, INC. / Domain Administrator, FA 1719671 (Forum Apr. 14, 2017) (“Pending trademark applications do not confer rights under Policy ¶ 4(a)(i).”). However, Complainant also claims to have common law rights to the DEMET GOTS mark because the mark is her personal name. Typically, personal names in connection to goods or services offered by a complainant may demonstrate rights in the mark. See Karen Finerman v. Ben Johnston / Bookclout, FA 1606620 (Forum Apr. 7, 2015) (finding that “Complainant has presented evidence that her name, KAREN FINERMAN, has achieved widespread recognition in connection with financial, charitable and other services, such that KAREN FINERMAN has obtained secondary meaning as identifying Complainant as the source of the services she offers.”). Here, Complainant claims use the DEMET GOTS mark because it is her personal last name and advertises her name in connection to her sole proprietorship law firm since 2013. Complainant has not presented any additional arguments, nor has she provided any documentation, to further this assertion. However, the evidence in the file supports Complainant’s assertion. Accordingly, the Panel finds that Complainant has offered evidence of her use of the mark and accepts her contentions as true. Consequently, the Panel finds that Complainant does have trademark rights for the mark DEMET GOTS.
The disputed domain name is identical to the DEMET GOTS mark because it incorporates the mark in its entirety, removes spaces, and attaches a gTLD. Generally, removing spaces within the mark and attaching a gTLD fails to create distinction in a disputed domain name. See Health Republic Insurance Company v. Gustavo Winchester, FA 1622089 (Forum July 7, 2015) (finding, “Domain name syntax requires TLDs. Domain name syntax prohibits spaces. Therefore, omitted spacing and adding a TLD must be ignored when performing a Policy ¶4(a)(i) analysis.”). Therefore, the Panel finds that the disputed domain name is identical to the DEMET GOTS mark for the purposes of Policy ¶ 4(a)(i).
Complainant contends Respondent has no rights or legitimate interests in the disputed domain name by not making a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Complainant argues that Respondent’s disputed domain name intends to criticize, harass, or defame Complainant, and that Respondent’s right to free speech is not absolute. In this case, Respondent appears to use the resolving domain to share experiences with Complainant’s legal services by giving users an alleged history with Complainant and allowing users to submit their own experiences on this same domain name.
We cite below relevant paragraphs of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Jurisprudential Overview 3.0):
2.6 … UDRP jurisprudence recognizes that the use of a domain name for fair use such as noncommercial free speech, would in principle support a respondent’s claim to a legitimate interest under the Policy.
2.6.1 To support fair use under UDRP paragraph 4(c)(iii), the respondent’s criticism must be genuine and noncommercial; in a number of UDRP decisions where a respondent argues that its domain name is being used for free speech purposes the panel has found this to be primarily a pretext for cybersquatting, commercial activity, or tarnishment.
2.6.2 Panels find that even a general right to legitimate criticism does not necessarily extend to registering or using a domain name identical to a trademark (i.e., <trademark.tld> (including typos)); even where such a domain name is used in relation to genuine noncommercial free speech, panels tend to find that this creates an impermissible risk of user confusion through impersonation. In certain cases involving parties exclusively from the United States, some panels applying US First Amendment principles have found that even a domain name identical to a trademark used for a bona fide noncommercial criticism site may support a legitimate interest.
A detailed analysis of the relevant legislative history of the Policy, and of the relevant early case law, is given in National Alliance for the Mentally Ill Contra Costa v. Mary Rae Fouts, FA0310000204074 (Forum Nov. 28, 2013). As explained in that decision, the relevant legislative history provides that the Policy is limited to cases of deliberate, bad faith abusive registrations; and that domain name registrations that are justified by legitimate free speech rights would not be considered to be abusive.
As in the cited case, the Panel finds that the web site at the disputed domain name publishes views that are clearly Respondent’s own personal views, so a user would not be confused by the source of the information.
Complainant appears to imply that Respondent will not exercise any control over what is posted on the resolving web site. But there is no evidence to show that such is the case. Respondent may well evaluate any comments that are sent to the resolving web site and publish only those that appear to be legitimate criticism.
Respondent’s use of the disputed domain name would not be legitimate (and would be in bad faith) if, as Complainant alleges, the published material is false or defamatory.
The information posted on the web site is a recital of alleged facts. Complainant has not presented any evidence to show that the recital is false. The Panel has no way of determining whether or not the recital is correct. Further, national courts are better equipped to determine whether published material is or is not defamatory.
Complainant cites Tom Cruise v. Network Operations Center/Alberta Hot Rods, D2006-0560 (WIPO Jul. 5 2006). But that case must be distinguished from the present case, because in the cited case the resolving web site was used to market unrelated products, and Respondent had engaged in a pattern of registering domain names to prevent the owners of marks from registering them. Neither is the case here.
The present case concerns US persons. As the WIPO overview notes: “In certain cases involving parties exclusively from the United States, some panels applying US First Amendment principles have found that even a domain name identical to a trademark used for a bona fide noncommercial criticism site may support a legitimate interest.”
For the reasons given above, the Panel finds that Respondent’s use of the disputed domain name supports a finding of legitimate interest in the sense of the Policy.
Since the Panel has concluded that Respondent has legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii), the issue of bad faith registration and use is moot. See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name.
However, the Panel will nevertheless analyze this element of the Policy. As already noted, Complainant alleges Respondent registered and used the disputed domain name in bad faith by intentionally targeting Complainant and her practice in order to harass and defame her by providing criticism of Complainant’s work.
We cite below relevant paragraphs of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Jurisprudential Overview 3.0):
2.7.1 As with criticism sites discussed above, for purposes of assessing fair use under UDRP paragraph 4(c)(iii), a respondent’s fan site must be active, genuinely noncommercial, and clearly distinct from any official complainant site. Again, similar to claimed criticism sites, there are a number of UDRP cases in which the respondent claims to have a true fan site but the panel finds that it is primarily a pretext for cybersquatting or commercial activity.
2.7.2 Where a domain name which is identical to a trademark (i.e., <trademark.tld>) is being used in relation to a genuine noncommercial fan site, panels have tended to find that a general right to operate a fan site (even one that is supportive of the mark owner) does not necessarily extend to registering or using a domain name that is identical to the complainant’s trademark, particularly as the domain name may be misunderstood by Internet users as being somehow sponsored or endorsed by the trademark owner. (See discussion of inter alia misrepresentation at section 2.5 above.) In such cases, where the domain name is identical to the trademark, panels have also noted that this prevents the trademark holder from exercising its rights to the mark and so managing its presence on the Internet, including through a corresponding email address. However, as with criticism sites, in certain cases involving parties exclusively from the United States, some panels applying US First Amendment principles have found that even a domain name identical to a trademark used for a bona fide noncommercial fan site may support a legitimate interest.
Complainant cites Adam Milstein v. Benjamin Doherty, FA1511001647496 (Forum Jan. 11, 2016). But that case must be distinguished from the present case. In the cited case, Respondent was found not have exercised any control over the criticism published on the resolving web site, the Panel held that a user viewing the resolving web site could be confused into believing that the complainant was the source of some of the information, and the resolving web site contained many inflammatory headlines. Such is not the case here.
As already noted, the present case concerns US persons. Accordingly, the Panel finds that Respondent did not register or use the disputed domain name in bad faith in the sense of the Policy.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <demetgots.com> domain name REMAIN WITH Respondent.
Richard Hill, Panelist
Dated: November 28, 2017
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page