ALIPAY case highlights efficiency of 'two-way campaign' in domain name disputes

Nowadays, domain names have a significant importance due to both the widespread use of the Internet in commercial areas and the development of e-commerce, and have become an indispensable tool for commercial companies.

In Turkey, domain names under the country-code top-level domain ‘.tr’ are administered by Nic.tr, located within the Middle East Technical University, on a ‘first-come, first-served’ basis. For certain domain name extensions, such as ‘.com.tr’ and ‘.org.tr, applicants must provide official documents confirming their rightful ownership of the domain name. For domain name applications filed by legal entities and organisations under ‘.com.tr’, the official documents must certify that the domain name applied for corresponds to the applicant’s registered trademark or corporate name.

Problems thus arise when a domain name has been registered in the name of a third party other than the holder of the trademark rights. In a recent case, a globally-known Chinese e-commerce company became aware of a ‘.com.tr’ domain name registration containing its registered trademark in the name of a Turkish company. Although Nic.tr has no active alternative dispute resolution mechanism in place, a complaint can be filed before a panel to resolve disputes over ‘.tr’ domain names. As well as proving its ownership rights over the domain name registered by the third party, the applicant must also cancel the trademark on which the domain name registration is based and the third party should be deprived of its alleged rights.

In this case, the Chinese e-commerce company followed a ‘two-way campaign’: it opposed the trademark application filed by the owner of the domain name and simultaneously filed a complaint before Nic.tr. The e-commerce company claimed in its opposition that the trademark application was identical to its registered trademark and that there was a likelihood of confusion between the trademarks as they covered similar and related services. In addition, it claimed that the application could be considered to be part of its ‘ALI’ series of trademarks.

The Turkish Patent Institute (TPI) found that the trademarks were indistinguishably similar and that there was a likelihood of confusion, since the marks were covering similar and related services, and such similarity might cause consumers to believe that the marks came from the same undertaking or from economically linked undertakings. The TPI thus rejected the trademark application.

Although the applicant appealed against the TPI’s refusal, the Re-Examination and Evaluation Board of the TPI upheld its earlier decision and rejected the application in its entirety. Since the trademark that was the basis for the domain name registration was no longer valid and in force, Nic.tr decided in favour of the Chinese company. Following the expiry of the legal time limit, the Chinese company registered the said domain in its own name.

It is highly recommended that right owners follow a two-way campaign in domain name complaints in Turkey. In order to have a reasonable chance of success in such cases, it is crucial to prevent the other party from obtaining any registered rights over the trademark on which the domain name registration is based. If the rights holder chooses to file only a complaint before Nic.tr, without taking any action to cancel the trademark, it may face a rejection from Nic.tr, as the other party would still have rights in the trademark serving as a basis for the domain name.

Ceylin Beyli and Elfiye Kudaki, CBL Law Office, Istanbul