Düş Yeri Bilişim Teknoloji ve Animasyon Anonim Şirketi v. Gregg Ostrick, GNO, Inc.: A Study in Domain Name Dispute and Registration Priorities

In the domain name dispute case D2019-2060, the complainant, Düş Yeri Bilişim Teknoloji ve Animasyon Anonim Şirketi from Turkey, contested the domain ‘pepee.com’, held by Gregg Ostrick, GNO, Inc., from the United States. The complaint was filed on August 22, 2019, with the WIPO Arbitration and Mediation Center.

The crux of the dispute revolved around the timing of the domain name registration and the establishment of trademark rights. The complainant, a producer of animated cartoons, held the Turkish trademark ‘PEPEE’, registered in 2010, and claimed that the domain name was confusingly similar to this trademark. The domain name, however, was registered by the respondent in 2006, well before the complainant’s trademark registration and use.

The respondent argued that the domain name, acquired due to its potential value as a diminutive nickname or juvenile term, was not registered with any knowledge of the complainant’s trademark, which didn’t exist at the time. The domain name was used for various search advertising systems, automatically associating with relevant content.

The WIPO panel, consisting of Assen Alexiev, Gökhan Gökçe, and Andrew D. S. Lothian, established that while the domain name was identical to the complainant’s trademark, the key issue was the timing of the domain name registration relative to the complainant’s trademark rights. Given that the domain name was registered before the complainant developed its trademark, there was no evidence to suggest that the respondent had any knowledge of the complainant or that the domain name was registered in bad faith.

The panel also noted that while the complainant was aware of the domain name’s prior registration, they failed to provide a convincing argument or evidence that the domain name was registered in bad faith with the intent to capitalize on the complainant’s trademark.

In conclusion, the complaint was denied due to the lack of evidence supporting the claim of bad faith registration by the respondent. The panel, while recognizing the potential issues around the use of the domain name, did not find sufficient grounds to support a finding of Reverse Domain Name Hijacking, given the complainant’s legitimate concerns about the domain name’s use.

This case highlights the importance of the timing of domain name registrations and the establishment of trademark rights in domain name disputes. It underscores the necessity for complainants to thoroughly investigate the history of a domain name and provide substantial evidence when contesting a domain name registered prior to their trademark rights. The decision was made on October 24, 2019​​.

In the domain name dispute case D2019-2060, the complainant, Düş Yeri Bilişim Teknoloji ve Animasyon Anonim Şirketi from Turkey, contested the domain ‘pepee.com’, held by Gregg Ostrick, GNO, Inc., from the United States. The complaint was filed on August 22, 2019, with the WIPO Arbitration and Mediation Center. The crux of the dispute revolved around…