For many years, the allocation of ".tr" domain names in Turkey was carried out through the Nic.TR system under the authority of Middle East Technical University (“METU”). As a result of the protocol signed between METU and the Information Technologies and Communications Authority (“BTK”) and IANA/ICANN approvals, this authority was transferred to BTK and it transitioned to the .tr Network Information System (“TRABIS”) as of 14 September 2022.
With the launch of TRABIS, the "first come, first served" principle began to apply to domain names with the ".tr" extension, which were previously allocated only with documentation. This principle means that persons who want to allocate domain names such as "com.tr", "org.tr" and "net.tr" should be the first person to apply for that domain name. There is no requirement to submit a proof such as a trademark application/registration or commercial document regarding right of ownership.
It is clear that with the first come first serve principle, allocating a domain name became easier and the process is accelerated. However, this may also result in allocation of domain names in bad faith by non-right holders and the prevention of their use by the rightholder.
In this context, the procedures and principles concerning the operation of the domain names dispute resolution mechanism, the determination of dispute resolution service providers and their obligations are regulated with the relevant provisions of the Regulation on Internet Domain Names and the Communiqué on Internet Domain Names Dispute Resolution Mechanism (“Communiqué”) enforced by the Ministry of Transportation and Infrastructure.
Thus, a system similar to the Uniform Settlement Policy of Domain Name Disputes (“UDRP”) of the World Intellectual Property Organization (“WIPO”) is implemented in our country as well. Internet domain name disputes are resolved by the Dispute Resolution Service Providers (“DRSP”) within approximately 1 month, and therefore, the loss of rights related to the domain names can be prevented quickly.
I. APPLICATION TO DISPUTE RESOLUTION MECHANISM
First of all, it should be noted that this alternative dispute resolution mechanism does not apply to domain names that were allocated before TRABIS became operational. However, it is possible to apply for said domain names whose renewal process has been carried out after TRABIS became operational.
Disputes are resolved by DRSPs as an alternative. Currently, there are 2 entities that are approved by BTK to operate as DRSP (Information Technology and Internet Security Association (BTİDER) and TOBB UYUM Mediation and Dispute Resolution Center).
The complainant can make an application online to their choice of DRSP. When making the application, the complainant should state their request for the domain name and arbitrator/committee preference, together with the relevant information and documents proving the right of ownership. After the application, the domain name is frozen for the duration of the dispute.
If DRSP detects any missing document or information in the application, it notifies the complainant and gives 5 days to provide such document or information. If complainant can’t provide the missing document or information within this period, the application will be deemed invalid. However, this does not prevent the complainant from applying again.
Within 1 business day after the DRSP accepts the application, DRSP sends the information about the complaint and explanations about the information and documents required for the response to the complainee. The complainee should submit (if any) an extension request, necessary and supporting information and documents, arbitrator/committee preference and contact information to the DRSP within 10 days.
According to the arbitrator/committee preference of the parties, 1 or 3 arbitrators are determined by the DRSP. If one of the parties prefers a committee, the choice of 2 arbitrators, one of which is a substitute, is notified to the DRSP from the list of arbitrators on the website of the DRSP; otherwise, the selection of arbitrators is made by the DRSP directly. It is possible to request a refusal if a situation arises that may affect the impartiality of the arbitrators.
Unless otherwise agreed by the parties, the language to be used in the dispute resolution process is Turkish.
II. CONDITIONS FOR APPLICATION
It is possible to apply to the domain name dispute resolution mechanism if the following conditions are met. When the decisions published on the DRSPs’ websites are examined, it is seen that some arbitrators/committees refer to the UDRP decisions and the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0) when evaluating these conditions.
a. The domain name is similar or identical to the trademark, trade name, business name or other identifying marks owned or used in trade
The complainant must first be able to prove the rights ownership of the trademark, trade name, business name or other identifying marks and demonstrate that the domain name subject to the complaint is the same or similar to these elements.
In the Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525 decision, it is stated that “where the domain name incorporates a complainant's registered trademark, this may be sufficient to establish that the domain name is identical or confusingly similar for the purposes of the policy”. In this context, in cases where a domain name incorporates an entire trademark or where at least one dominant feature of the relevant trademark is recognizable within the domain name, it is accepted that the domain name is similar enough to the trademark to create confusion under normal circumstances. However, a similarity assessment is made specific to each concrete event.
b. The party allocating the domain name has no legal right or affiliation with this domain name
Although it is the complainant who has to prove the conditions necessary for the application to the dispute resolution mechanism, it is often considered that it is difficult for the complainant to prove a negative situation. Therefore, if the complainant can clearly show at first glance (prima facie) that the complainee lacks the right or legitimate interest in the domain name, the burden of proof is considered to pass to the complainee. In this case, the complainee must prove that they have a right or legitimate interest in the said domain name.
According to the UDRP policy, which are also accepted by the DRSP arbitrators/committees, it is accepted that the complainee has a right or legitimate interest if the following situations are proven:
Before any notice of a dispute, the use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
The complainee has been commonly known by the domain name, even if they have acquired no trademark or service mark rights; or
The complainee makes a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
In cases where the complainee cannot prove a legal right or affiliation with the domain name and the complainant has not granted any license, permission or authorization to the complainee to use the domain name, it is considered that the domain name carries the risk of showing an implied affiliation with the complainee.
c. Allocation or use of the internet domain name by the registrant in bad faith
There is also a bad faith condition for the complainant to be found justified. In the Communiqué, the situations that can be considered as the allocation or use of the domain name by the complainant in bad faith are set out as:
i. The domain name has been allocated for the purpose of selling or transferring the domain name to the complainant, who is the owner of the trade or service mark, trade name, business name or person’s name or other identifying mark, or to the complainant’s commercial competitor, for an amount exceeding the documented allocation costs and investment cost of the domain name,
ii. The domain name has been allocated in order to prevent the owner of the trademark, trade name, business name or other identifying mark used in trade, from using this trademark, title, name or sign in a domain name,
iii. The domain name has been allocated primarily for the purpose of harming the business or activities of commercial competitors,
iv. The domain name is used for the purpose of directing internet users to the website of the owner of the domain name or any other website, by causing confusion by creating a similarity with the trademark, trade name, business name or other identifying mark used in trade and owned by the complainant, for commercial gain.
However, the cases of allocation/use in bad faith are not limited to the ones listed above but are at the discretion of the arbitrator/committee based on the concrete case. In this context, the following cases can also be considered as the allocation or use of the domain name in bad faith:
Registration and use of domain names that are associated with widely known trademarks
Registration of the disputed domain name after the registration date of the similar trademark
No rights or legitimate interests and no reasonable bona fide use of the complainee with regards to the domain name
Failure of the complainee to respond to the application or to show proof regarding the existing bona fide use or any planned use of the disputed domain name
In certain situations, inactivity of the complainee/non-active use of the domain name (passive ownership doctrine)
The complainee concealing their identity or providing inaccurate contact information
When a simple trademark search and/or internet search can easily reveal the complainant's previous trademark and com domain name, when the complainee allocated the disputed domain name.
III. DECISION PHASE
The arbitrator/committee, within 15 days of the complainee's response to the DRSP, decides to:
cancel the domain name,
transfer the domain name to the complainant, or
reject the request.
In this process, the arbitrator/committee may request additional information and documents and may use an additional period of up to 5 days if a decision cannot be made within this period. If the complainant and the complainee demand the conclusion of the dispute resolution process by mutual agreement before the decision is taken, the arbitrator/committee concludes their work. If only the complainant requests to conclude the process, it is up to the arbitrator/committee whether they will continue or not.
The DRSP sends the arbitrator/committee decision and the justification to the parties within 1 day and publishes on its website.
Within 10 business days after the decision is sent to the parties or at an earlier stage of the dispute resolution mechanism process, if the DRSP is notified that a preliminary injunction decision has been taken, the dispute resolution mechanism process continues, but the arbitrator/committee decision is not implemented. In this case, the litigation process is expected to be completed.
If the decision is to transfer the domain name to the complainant and if a preliminary injunction is not taken within 10 working days after the decision, a code for the transfer of the domain name is sent to the complainant by the DRSP. The complainant can transfer the domain name using this code.
With TRABIS becoming operational, disputes can now be resolved quickly through the dispute resolution mechanism, where the domain names with the “.tr” extension are allocated in a way that causes violation of rights. It is essential for parties of the complaint to follow to the application procedure and deadlines as well as to present claims and defenses properly.
Authors: Hatice Ekici Tağa, Sümeyye Uçar, Öykü Su Sabancı, Ebru Gümüş