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February 4, 2011 / Nate Harris

Viko can’t prove bad faith registration of VIKO.COM

Summary of Viko Elektrik Ve Elektronik Endüstrisi Sanayi Ve Ticaret Anonim Şirketi v. UniqueBrandNames

(WIPO Case No. D2010-1856)

Filed: November 2, 2010; Decided: January 26, 2011 (Panelist: Tony Willoughby)

Disputed domain name: <viko.com>

The Parties

Complainant Viko Elektrik Ve Elektronik Endüstrisi Sanayi Ve Ticaret Anonim Şirketi (“Viko”) is one of the largest industrial companies in Turkey. “It was the 366th largest Turkish company in 2008,” with  “a substantial international business with many countries including the United States of America.” Though the Panel points out some timeline inconsistencies with the complaint and its exhibits, it accepts that Viko has had rights in the mark VIKO or VI-KO (the Panel considers them interchangeable) since 1995, and owns registrations for the mark.

The Respondent UniqueBrandNames (“Unique”) did not file a formal response to the complaint, but the Panel is willing to accept some informal correspondence that Unique sent to WIPO. The disputed domain name was registered on November 13, 1998, and has never been used. According to Unique, it used a random name generator to identify thousands of short domain names that it then registered as investments, recognizing that the domains could later be valuable due to their short length. Unique claims that other companies have made six-figure offers to buy the disputed domain.

Identical or Confusingly Similar

“The Domain Name comprises the Complainant’s registered trade mark, VIKO, and the generic “.com” domain suffix.” Therefore, the disputed domain is identical to Viko’s mark.

Rights or Legitimate Interest

In light of its finding of lack of bad faith below, the Panel declines to consider this prong.

Registered and Used in Bad Faith

For this Complaint to succeed the Complainant must satisfy the Panel that when registering the Domain Name the Respondent had the Complainant in mind and that the Respondent’s purpose was to exploit the Complainant’s trade mark rights in some way or cause damage to the Complainant’s business.

As the Panel points out, the evidence does not make clear whether Viko’s trademark rights existed when the disputed domain name was registered. Nonetheless, the Panel puts this issue aside: “[e]ven if, as may have been the case, VIKO was in use as a trade mark in Turkey in November 1998, why should it be that the Respondent, a business based in the United States of America, must have been aware of the Complainant at that time?”

Here, there is no evidence that the VIKO mark was well-known internationally at the time the disputed domain was registered. Therefore, the Panel accepts Unique’s uncontroverted evidence that it was unaware of Viko at the time of registration.

Decision

The complaint is denied.

Commentary

As the Panel explains,  a respondent must have “had the Complainant in mind” for a finding of bad faith registration. Under that standard, it doesn’t matter that the Respondent bought <viko.com> on the assumption that there was (or would someday be) a company called Viko. But the Respondent’s whole business model is based on the likelihood that a company would someday adopt that short, four-letter name and be willing to pay a lot of money to register the corresponding domain name. Doesn’t the respondent have that hypothetical-but-reasonably-likely-to-exist company “in mind” for purposes of the bad faith prong?

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