Posts Tagged ‘Passive Use’

Re-Filed Case…Different Result

Tuesday, September 8th, 2009


In the recent domain name dispute Koç Holding A.S. v. KEEP B.T. (WIPO D2009-0938, August 31, 2009) a single member arbitrator was faced with a dispute over the domain www.koc.com. As the decision points out, this appears to be re-filed case, after the complainant lost a previous decision back in December 2000 and decided in March 2001. See Koç Holding A.S. v. MarketWeb A.S., WIPO Case No. D2000-1764. In that prior decision Complainant failed to establish trademark rights. This complaint was now re-filed based on new evidence, including a trademark registration and subsequent bad acts. Although the rules don’t specifically address a re-hearing, many Panels have permitted it. WIPO has provided a short summary consensus view of re-filed cases:

A refiled case involves the complainant submitting a second complaint involving the same domain name(s) and the same respondent(s) as in an earlier complaint that had been denied. A refiled case may only be accepted in limited circumstances. These circumstances include when the complainant establishes in the complaint that relevant new actions have occurred since the original decision, or that a breach of natural justice or of due process has occurred, or that there was other serious misconduct by the panel or the parties in the original case (such as perjured evidence). A refiled complaint will also be accepted if it includes newly presented evidence that was unavailable to the complainant during the original case.

This Panel found there was sufficient evidence and allegations to support a re-filed case. Complainant is one of Turkey’s top industrial conglomerates, and has been around since 1926. It is ranked among the largest 200 companies in the world, and maintains a web site at www.koc.com.tr. The disputed domain was registered on August 12, 1997. Complainant owns a trademark registration for the KOC mark, with registration date of 2002, but with rights relating back to 1926.

In addressing the elements, the Panel made the following observations. First, with respect to whether the domina is identical or confusingly similar, the Panel explained that since Complainant proved it registered KOC as a trademark, there was no need for the Panel to consider the common law rights. Next, the Panel addressed whether Respondent had any rights or legitimate interests in the domain. The Panel found that Respondent was unable to show any rights or legitimate interests and that Complainant sufficiently presented a prima facie case. Third the Panel reviewed whether the domain was registered in bad faith. Complaianint submitted new allegations of bad faith, which included:

The Respondent received news and documents that were intended for the Complainant. After the previous case between the parties the Respondent was supposed to return all that was received to the Complainant but never did. The Respondent sent an e-mail that blackmailed the Complainant. The Complainant initiated legal proceedings which concluded in the Complainant’s favour….

The Panel merely states this information is germane to the instant decision, but does not provide additional analysis. Instead, the Panel found that due to the size of Complainant at the time of the registration of the disputed domain, and since Respondent also resided in Turkey, then Respondent must have known about Complainant. The Respondent’s passive holding of an inactive web site was also troubling to the Panel.

Ultimately, the Panel found that Complainant satisfied all the elements and ordered the domain be TRANSFERRED.

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