Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA739573
`
`Filing date:
`
`04/12/2016
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91223732
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's e-mail
`
`Signature
`
`Date
`
`Attachments
`
`Plaintiff
`Ciceksepeti Internet Hizmetleri Anonim Sirketi
`
`CHARLES R MANDLY JR
`FOLEY & LARDNER LLP
`321 N CLARK ST, STE 2800
`CHICAGO, IL 60654
`UNITED STATES
`PTOMailChicago@foley.com, cmandly@foley.com, delder@foley.com,
`jberta@foley.com,jolsen@foley.com
`
`Motion to Suspend for Civil Action
`
`Charles R. Mandly, Jr.
`
`PTOMailChicago@foley.com, cmandly@foley.com, delder@foley.com,
`jolsen@foley.com
`
`/Charles R. Mandly, Jr./
`
`04/12/2016
`
`bonnyfood Opp. Suspend Mot.pdf(9610 bytes )
`bonnyfood Opp. Suspend Memo.pdf(58936 bytes )
`bonnyfood Opp Suspend Decl.pdf(56624 bytes )
`Exhibit A1.pdf(5478040 bytes )
`Exhibit A2.pdf(3582912 bytes )
`bonnyfood Opp. Ex.B.pdf(958215 bytes )
`bonnyfood Opp. Ex. C.pdf(552383 bytes )
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`Çiçeksepeti Interne Hizmetleri A.S.,
`
`
`
`
`
`
`Opposer,
`
`
`
`
`
`
`
`v.
`
`Bonaport LLC,
`
`
`
`
`
`
`
`Applicant.
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`
`
`Opposition No. 91223732
`
`MOTION TO SUSPEND PROCEEDINGS PENDING THE FINAL
`DETERMINATION OF A RELATED CIVIL ACTION
`
`Opposer, Çiçeksepeti Internet Hizmetleri A.S. (“Çiçeksepeti”), in accordance with
`
`Rule 2.117 of the Trademark Rule of Practice, moves this Board to maintain the present
`
`suspension of proceedings (presently set to expire May 1, 2016) pending the final determination
`
`of Didem Guëney Alsoy, Mehmet Ali Alsoy and Bonaport LLC v. Çiçeksepeti Internet Hizmetleri
`
`A.S., Civil Action No. 1:15-cv-00174-SLR (D. Del., filed Feb. 20, 2015) (“Delaware Action”).
`
`For the reasons set forth in the memorandum of law filed concurrently herewith, Çiçeksepeti
`
`suggests that the requested relief is warranted because the Delaware Action may have a bearing
`
`on this opposition proceeding.
`
`
`
`
`
`4811-9257-9376.1
`
`

`
`This motion is supported by the Declaration of Charles R. Mandly, Jr. filed concurrently
`
`herewith.
`
`Respectfully submitted,
`
`FOLEY & LARDNER LLP
`
`
`
`
`/Charles R. Mandly, Jr./
`
`Charles R. Mandly, Jr.
`
`Diane G. Elder
`
`321 North Clark Street
`
`Suite 2800
`
`Chicago, Illinois 60654-5313
`
`Attorneys for Opposer
`
`
`
`
`
`4811-9257-9376.1
`
`2
`
`

`
`
`
`CERTIFICATE OF SERVICE
`
`I, Charles R. Mandly, Jr., an attorney for Opposer, hereby certify that a copy of the
`
`foregoing Motion to Suspend Proceedings Pending the Final Determination of a Related Civil
`
`Action has been served this 12th day of April, 2016, by first class mail, postage prepaid upon
`
`attorneys for the Applicant, namely:
`
`Mr. Stephen L. Humphrey
`Cameron LLP
`818 Connecticut Ave., Ste. 1003
`Washington, DC 20006
`
`
`
`
`
`/Charles R. Mandly, Jr./
`Charles R. Mandly, Jr.
`
`
`
`4811-9257-9376.1
`
`3
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Ciceksepeti Interne Hizmetleri A.S. ,
`
`
`
`
`
`
`Opposer,
`
`
`
`
`
`
`
`v.
`
`Bonaport LLC,
`
`
`
`
`
`
`
`Applicant.
`
`Opposition No. 91223732
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`
`
`
`MEMORANDUM OF LAW IN SUPPORT OF OPPOSER’S
`MOTION TO SUSPEND PROCEEDINGS
`PENDING THE FINAL DETERMINATION OF A RELATED CIVIL ACTION
`
`
`
`I.
`
`STATEMENT
`
`Opposer, Çiçeksepeti Internet Hizmetleri A.S. (“Çiçeksepeti”), files this memorandum of
`
`law in support of its motion to suspend proceedings pending the final determination of a related
`
`civil action, namely, Didem Guëney Alsoy, Mehmet Ali Alsoy and Bonaport LLC v. Çiçeksepeti
`
`Internet Hizmetleri A.S., Civil Action No. 1:15-cv-00174-SLR (D. Del., filed Feb. 20, 2015)
`
`(“Delaware Action”).1 For the reasons set forth below, Çiçeksepeti suggests that the requested
`
`relief is warranted because the Delaware Action may have a bearing on this opposition
`
`proceeding.
`
`
`
`
`
`
`1 Proceedings presently are suspended for settlement purposes. See Order (Feb. 24, 2016).
`Proceeding are set to resume May 1, 2016. Id.
`
`4844-0180-4335.1
`
`

`
`II.
`
`A.
`
`FACTS
`
`This Proceeding
`
`On September 16, 2014, Bonaport LLC (“Bonaport”) filed a use-based trademark
`
`application (Ser. No. 86/395,576) for the mark BonnyFood for the following:
`
`International Class 35: Market analysis and research services;
`
`Development of marketing strategies and concepts.
`
`International Class 42: Providing information in the field food
`
`market research pertaining to natural foods, plants, herbs, un-
`
`refined and refined foods.
`
`On September 9, 2015, Çiçeksepeti filed this opposition proceeding alleging, inter alia,
`
`the following:
`
`Count 1 – Bonaport’s application was void ab initio for, inter alia,
`
`failure to make bona fide use in commerce prior to either the filing
`
`date (Sept. 16, 2014) or the claimed first use date (Sept. 12, 2014).
`
`See Notice of Opp’n at ¶¶ 4-16.
`
`Count 2 – Bonaport had abandoned any rights it might have had in
`
`its mark BonnyFood through its failure to use the mark depicted in
`
`its application drawing. See Notice of Opp’n at ¶¶ 17-24.
`
`Count 3 - Bonaport’s application was void ab initio for the making
`
`of knowingly false statements respecting, inter alia, its purportedly
`
`4844-0180-4335.1
`
`2
`
`

`
`bona fide use in commerce of the mark BonnyFood. See Notice of
`
`Opp’n at ¶¶ 25-37.
`
`On October 19, 2015, Bonaport filed an answer denying the material allegations of the Notice of
`
`Opposition.
`
`Following a substitution of counsel by Çiçeksepeti, proceedings have been suspended for
`
`settlement discussions, with proceedings set to resume May 1, 2016.
`
`B.
`
`The Delaware Action
`
`Applicant Bonaport (joined by its principals, Didem Guëney Alsoy and Mehmet Ali
`
`Alsoy), filed a federal civil action in the District of Delaware against Çiçeksepeti. Bonaport’s
`
`alleged claims for declaratory relief respecting the ownership of the domain name
`
`“bonnyfood.com,” for reverse domain name hijacking respecting a WIPO ordered transfer of
`
`“bonnyfood.com” to Çiçeksepeti,2 for deceptive trade practices and common law unfair
`
`competition. See Mandly Decl. ¶ 4 & Ex. B (Complaint). In support of its claims, Bonaport
`
`allged, inter alia, the following:
`
`1.
`
`“Banaport LLC is a marketing outsourcing company in the food industry
`
`primarily. It has clients in . . . New Jersey and a website at bonnyfood.com.” See Compl.
`
`at ¶ 24.
`
`
`2 On January 29, 2015, a three-member panel of the WIPO Arbitration and Mediation Center
`made a determination under the Uniform Domain Name Dispute Resolution Policy ordering the
`transfer of the disputed domain name “bonnyfood.com” to Ciceksepeti. See Çiçeksepeti İnternet
`Hizmetleri A.S. v. Bonaport LLC, Case No. D2014-1775, at p. 10 (WIPO Arbtr. & Mediat. Ctr.
`Jan. 29, 2015) (Mandly Decl. ¶ 2 & Ex. A).
`
`
`
`4844-0180-4335.1
`
`3
`
`

`
`2.
`
`“. . . Bonaport LLC filed an application for the registration of the trademark
`
`BonnyFood in the U.S. before USPTO which is pending under serial number 86395526 .
`
`. . . The USPTO upon examination has found no conflicting marks . . . that would bar
`
`registration under the Trademark Act.” See Compl. at ¶ 25.
`
`3.
`
`“[Çiçeksepeti] does not use the trademark BonnyFood in the U.S.A. . . . .” See
`
`Compl. at ¶ 26.
`
`4.
`
`Bonaport’s “registration and use of the domain name bonnyfood.com is not
`
`unlawful . . . .” See Compl. at ¶ 33; see also id. at ¶ 36.
`
`5.
`
`“The web page located at bonnyfood.com has never created the impression that
`
`bonnyfood.com was affiliated or associated with [Çiçeksepeti].” See Compl. at ¶ 37.
`
`6.
`
`“By its conduct, [Çiçeksepeti] caused likelihood of confusion or
`
`misunderstanding as to source, sponsorship, approval or certification of services by
`
`Plaintiffs [(including Bonaport)].” See Compl. at ¶ 41.
`
`
`7.
`
`“[Çiçeksepeti’s] constitutes misappropriation of valuable property rights of
`
`Plaintiffs [(including Bonaport)] and is thereby likely to confuse and deceive members of
`
`the purchasing public. By its conduct, [Çiçeksepeti] has engaged in unfair competition . .
`
`. .” See Compl. at ¶ 45.
`
`Among the relief sought by Bonaport in the Delaware Action is the following:
`
`1.
`
`A permanent injunction against Çiçeksepeti’s use of “bonnyfood.com.” See
`
`Compl. at p. 8.
`
`4844-0180-4335.1
`
`4
`
`

`
`2.
`
`An order blocking the WIPO ordered transfer of the “bonnyfood.com” domain
`
`name to Çiçeksepeti. See Compl. at p. 8; see also id. at pp. 8-9.
`
`The civil action remains pending as of the date of the filing of this motion. See Mandly
`
`Decl. ¶5 & Ex. C (Docket Sheet).
`
`III. ARGUMENT
`
`Rule 2.117(a) of the Trademark Rules of Practice provides in pertinent
`
`part:
`
`Whenever it shall come to the attention of the Trademark Trial and
`Appeal Board that a party or parties to a pending case are engaged
`in a civil action . . . which may have a bearing on the case,
`proceedings before the Board may be suspended until termination
`of the civil action . . . .
`
`37 C.F.R. § 2.117(a); see also TBMP § 510.02(a) (June 2015). In granting suspensions of its
`
`own proceedings, the Board often has noted that, “[t]o the extent that a civil action in a federal
`
`district court involves issues in common with those in a proceeding before the Board, the
`
`decision of the federal district court is often binding upon the Board. . . .” TBMP § 510.02(a).
`
`However, the Board also has held that, “the civil action does not have to be dispositive of the
`
`Board proceeding to warrant suspension, it need only have a bearing on the issues before the
`
`Board.” New Orleans La. Saints LLC v. Who Dat?, Inc., 99 U.S.P.Q.2d 1550, 1552 (TTAB
`
`2011). Grant of a suspension under such circumstances serves important systemic interests of
`
`judicial economy and reducing needless expense to the parties. See Kearns-Tribune, LLC v. Salt
`
`Lake Tribune Publ’g Co., LLC, Opp. No. 151,843, 2003 TTAB LEXIS 470, *9-*10 (TTAB Sept.
`
`11, 2003); Fed. R. Civ. P. 1.
`
`In this opposition proceeding, Çiçeksepeti has challenged the validity of Bonaport’s
`
`trademark rights underlying the opposed trademark application for BonnyFood. See supra at 2-
`
`4844-0180-4335.1
`
`5
`
`

`
`3. In the civil action, Bonaport has alleged, inter alia, its purported use of the mark BonnyFood,
`
`including the domain name “bonnyfood.com,” and the trademark application opposed here, and
`
`seeks relief, including, inter alia, an order “[q]uashing” the WIPO ordered transfer of the
`
`“bonnyfood.com” domain name to Çiçeksepeti, and a permanent injunction against Çiçeksepeti’s
`
`use of “bonnyfood.com.” See supra at 3-5. Consequently, the outcome of the Delaware
`
`Litigation will have a bearing on, if, indeed, it is not dispositive of, this proceeding.
`
`Suspension is especially appropriate at this time because discovery in this proceeding has
`
`not yet commenced. Additionally, there are no dispositive motions currently pending before the
`
`Board.
`
`IV. CONCLUSION
`
`
`
`For the above stated reasons, Çiçeksepeti respectfully requests the Board to grant its
`
`motion to suspend this proceeding pending the final determination of the Delaware Action.
`
`Respectfully submitted,
`
`FOLEY & LARDNER LLP
`
`
`
`
`
`/Charles R. Mandly, Jr./
`Charles R. Mandly, Jr.
`Diane G. Elder
`321 North Clark Street
`Suite 2800
`Chicago, Illinois 60654-5313
`Telephone No.: (312) 832-4398
`Facsimile No.: (312) 832-4700
`Email Address: crmandly@foley.com
`
`Attorneys for Opposer
`Çiçeksepeti Internet Hizmetleri A.S.
`
`
`
`6
`
`
`
`4844-0180-4335.1
`
`

`
`
`
`CERTIFICATE OF SERVICE
`
`I, Charles R. Mandly, Jr., an attorney for Opposer, hereby certify that a copy of the
`
`foregoing Memorandum of Law in Support of Opposer’s Motion to Suspend Proceedings
`
`Pending the Final Determination of a Related Civil Action has been served this 12th day of
`
`April, 2016, by first class mail, postage prepaid upon attorneys for the Applicant, namely:
`
`Mr. Stephen L. Humphrey
`Cameron LLP
`818 Connecticut Ave., Ste. 1003
`Washington, DC 20006
`
`
`
`/Charles R. Mandly, Jr./
`Charles R. Mandly, Jr.
`
`
`
`
`
`4844-0180-4335.1
`
`7
`
`

`
` 
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`Çiçeksepeti Interne Hizmetleri A.S.,
`
`
`
`
`
`
`Opposer,
`
`
`
`
`
`
`
`v.
`
`Bonaport LLC,
`
`
`
`
`
`
`
`Applicant.
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`
`
`Opposition No. 91223732
`
`
`
`
`
`DECLARATION OF CHARLES R. MANDLY, JR.
`
`I, Charles R. Mandly, Jr., declare, in accordance with Section 1746 of the United States
`
`Judicial Code, 28 U.S.C. § 1746, as follows:
`
`1.
`
`I am a lawyer with the Chicago, Illinois office of the firm of Foley & Lardner
`
`LLP, counsel for opposer, Çiçeksepeti Internet Hizmetleri A.S. (“Çiçeksepeti”), in this
`
`opposition proceeding. I submit this declaration in support of the Motion to Suspend
`
`Proceedings Pending the Final Determination of a Related Civil Action, filed concurrently
`
`herewith. I have either personal knowledge, or other information available to me as counsel for
`
`Çiçeksepeti which I believe to be true and correct, respecting the facts set forth herein.
`
`2.
`
`Attached hereto as Exhibit A is a true and correct copy of the Administrative
`
`Panel Decision issued on January 29, 2015 by the World Intellectual Property Organization
`
`(“WIPO”) Arbitration and Mediation Center in the matter of Çiçeksepeti İnternet Hizmetleri A.S.
`
`v. Bonaport LLC, Case No. D2014-1775, which I caused to be obtained from the WIPO database
`
`of decisions at “http://www.wipo.int/amc/en/domains/search/.”
`
`3.
`
`In addition to representing Çiçeksepeti in this proceeding, I also represent
`
`Çiçeksepeti in the civil action entitled Didem Guëney Alsoy, Mehmet Ali Alsoy and Bonaport
`
`4815-9806-7504.1
`
` 
`
`

`
` 
`
`LLC v. Çiçeksepeti İnternet Hizmetleri A.S., Civil Action No. 1:15-cv-00174-SLR (D. Del., filed
`
`Feb. 20, 2015) (“Delaware Action”).
`
`4.
`
`Attached hereto as Exhibit B is a true and correct copy of the Complaint filed in
`
`the Delaware Action which I caused to be obtained from the PACER database.
`
`5.
`
`Attached hereto as Exhibit C is a true and correct copy of the Court’s Docket
`
`Sheet in the Delaware Action which I caused to be obtained from the PACER database.
`
`I state under penalty of perjury under the laws of the United States of America that the
`
`foregoing is true and correct.
`
`Date: April 12, 2016
`at Chicago, Illinois
`
`
`
`
`/Charles R. Mandly, Jr.
`Charles R. Mandly, Jr.
`
`
`
`4815-9806-7504.1
`
`2 
`
`

`
` 
`
`
`
`CERTIFICATE OF SERVICE
`
`I, Charles R. Mandly, Jr., an attorney for Opposer, hereby certify that a copy of the
`
`foregoing Declaration of Charles R. Mandly, Jr., has been served this 12th day of April, 2016, by
`
`first class mail, postage prepaid upon attorneys for the Applicant, namely:
`
`Mr. Stephen L. Humphrey
`Cameron LLP
`818 Connecticut Ave., Ste. 1003
`Washington, DC 20006
`
`
`
`
`
`/Charles R. Mandly, Jr./
`Charles R. Mandly, Jr.
`
`
`
`4815-9806-7504.1
`
`3 
`
`

`
`EXHIBIT A1
`EXHIBIT A1
`
`
`
`
`
`
`
`

`
`4/12/2016
`
`WIPO Domain Name Decision: D2014—1775
`
`WIPO
`WORLD IIITILLIDTIJAL PBDFIITY OFIBINIZATION
`
`WIPO Arbitration and Mediation Center
`
`ADMINISTRATIVE PANEL DECISION
`
`Qiceksepeti Internet Hizmetleri Anonim $irketi v. Bonaport LLC, Mehmet Ali
`
`Alsoy
`
`Case No. D2014-1775
`
`1. The Parties
`
`The Complainant is Ciceksepeti nternet Hizmetleri Anonim Sirketi, of Kagithane, Turkey, represented by
`
`Cagirgan Law Firm & IP Services Ltd., Turkey.
`
`The Respondent is Bonaport LLC, Mehmet Ali Alsoy of Wilmington, Delaware, United States of America
`
`(“U.S.”), represented by Erdem Kaya Partners, Turkey.
`
`2. The Domain Name and Registrar
`
`The disputed domain name <bonnyfood.com> is registered with GoDaddy.com, LLC (the “Registrar”).
`
`3. Procedural History
`
`The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 9, 2014.
`
`On October 10, 2014, the Center transmitted by email to the Registrar a request for registrar verification in
`
`connection with the disputed domain name. On October 13, 2014, the Registrar transmitted by email to the
`
`Center its verification disclosing registrant and contact information for the disputed domain name which
`
`differed from the named Respondent and contact information in the Complaint. The Center sent an email
`
`communication to the Complainant on October 20, 2014 providing the registrant and contact information
`
`disclosed by the Registrar, and in response to a notification by the Center that the Complaint was
`
`administratively deficient, the Complainant filed an amendment to the Complaint on October 24, 2014.
`
`The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal
`
`requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules
`
`for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the VVIPO Supplemental Rules for
`
`Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
`
`In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the
`
`Complaint, and the proceedings commenced October 28, 2014. In accordance with the Rules, paragraph
`
`5(a), the due date for Response November 17, 2014. The Response was filed with the Center on November 17,
`2014.
`
`http://www.wipo.int/am c/en/dom ains/search/text.jsp?case=D2014-1775
`
`EXHIBIT A
`EXHIBIT A
`
`1/12
`
`

`
`4/12/2016
`
`WIPO Domain Name Decision: D2014—1775
`
`The Center appointed Luca Barbero, Emre Kerim Yardimci, and David E. Sorkin as panelists in this matter
`
`on December 23, 2014. The Panel finds that it was properly constituted. Each member of the Panel has
`
`submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by
`
`the Center to ensure compliance with the Rules, paragraph 7.
`
`The Complainant submitted a Supplemental Filing on December 25, 2014, to which the Respondent replied
`
`on December 29, 2014.
`
`In light of the Supplemental Filings submitted by the parties, that the Panel decided to consider in this
`
`proceedings, the decision due date was postponed to January 30, 2015.
`
`4. Factual Background
`
`The Complainant is a Turkish e-commerce company which provides goods and services in the area of
`
`floriculture, fruit, cake, and biscuit arrangements, operating the websites “www.ciceksepeti.com” and
`“www.frutation.com”.
`
`The Complainant acquired the following Turkish trademark registrations previously owned by Bonnyfood
`
`A. S. through a judicial auction on May 16, 2014, paying a price of 265.000,00 TRY (corresponding to
`
`approximately 117.000,00 USD): trademark registration No. 2010/52138 for BONNYFOOD (figurative
`
`mark), in classes 30, 35, and 43; No. 2009 /09000 for BONNY (figurative mark), in classes 30, 35, and 43;
`
`and No. 2012/ 18724 for BONNY (word mark), in class 35.
`
`The trademark BONNYFOOD No. 2010/52138 was filed on August 10, 2010 in the name of the Turkish
`
`company BONNYFOOD A. S. and was registered on April 9, 2013. According to the trademark records, the
`
`recordal of assignment was made on June 23, 2014 and completed before July 18, 2014.
`
`After purchasing the trademark BONNYFOOD through judicial auction, the Complainant sent a letter to
`
`Bonnyfood A. S. in order to request the transfer of the disputed domain name and of <bonnyfood.com.tr> as
`
`trademark owner of the mark BONNYFOOD. Bonnyfood A.S. sent a response letter to the Complainant
`
`indicating that it was ready to transfer the domain name <bonnyfood.com.tr> but not the disputed domain
`
`name <bonnyfood.com>, since one of the shareholders of the company Bonnyfood A.S. held control over the
`
`disputed domain name.
`
`In view of the above, the Complainant currently operates the website “www.bonnyfood.com.tr”, at which it
`
`provides cake, biscuit, chocolate and fresh fruit arrangements to its customers under the trademark
`BONNYFOOD.
`
`The disputed domain name <bonnyfood.com> was registered on August 29, 2008 through a privacy service.
`
`According to the Respondent, it was registered by Ms. Didem Giiney Alsoy, and the Complainant contends
`
`that Ms. Alsoy currently holds registration and control over the disputed domain name even though the
`evidence submitted shows that the second renewal of the domain name was made under the name of the
`
`company Techoplus A. S., which then merged into Bonnyfood A. S. on July 7, 2010.
`
`The Registrar-identified registrant of the disputed domain name is the U.S. company Bonaport LLC, which
`
`was incorporated on August 28, 2014. The contact person indicated in the Registrar’s Whols records is Mr.
`
`Mehmet Ali Alsoy (the husband of Ms. Alsoy, who is a shareholder of Bonnyfood A.S.).
`
`http://www.wipo.int/am c/en/dom ains/search/text.jsp?case=D2014-1775
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`EXHIBIT A
`EXHIBIT A
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`Mr. Alsoy also owns another company, Favorya Internet Pazarlama Ticaret Limited Sirket (“Favorya”) and
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`operates the website “www.lezzetlihediye.com”
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`A trademark application for BONNYFOOD was filed in the name of the company Bonaport LLC on
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`September 16, 2014 before the United States Patent and Trademark Office (“USPTO”). Said application,
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`which was assigned the number 86395576, was filed in International classes 35 and 43.
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`The disputed domain name is pointed to the website “www.bonnyfood.com”, promoting food industry
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`market research and other marketing services. Reference is made on the website to the company Bonaport
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`LLC as owner of the brand BONNYFOOD. Banners published on the site lead users to the website
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`“www.1ezzetlihediye.com”.
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`5. Parties’ Contentions
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`A. Complainant
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`The Complainant contends that the disputed domain name is identical to the trademark BONNYFOOD in
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`which the Complainant has registered rights pursuant to the purchase of the trademark at a judicial action
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`in May 2014.
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`The Complainant highlights that its main goal when paying quite a large amount of money for purchasing
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`the trademark BONNYFOOD was being able to operate a website under the disputed domain name, in light
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`of the reputation acquired by the disputed domain name.
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`As a result of its purchase of the trademark at the judicial auction, the Complainant affirms that the
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`Respondent does not have a legal right to the disputed domain name.
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`The Complainant asserts that, in light of the Respondent’s registration and use of the disputed domain
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`name, its trademark BONNYFOOD is being tarnished and diluted and the Complainant’s reputation is
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`damaged as consumers who trust the Complainant are misleadingly diverted to another website named
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`“www.lezzetlihediye.com”.
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`The Complainant points out that the Respondent acquired and is using the disputed domain name in bad
`faith since:
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`— The Respondent was established and has acquired the disputed domain name for the purpose of
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`disrupting the business of a competitor, namely Bonnyfood A. S., at which the wife of the Respondent
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`company’s owner is a shareholder;
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`- The Respondent is still using the disputed domain name for the purpose of disrupting another competitor,
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`namely the Complainant;
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`- The Respondent sells the same products as the Complainant through its website at
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`“www.lezzetlihediye.com”, whose content concerns fruit, cake and biscuit arrangements, giving rise to
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`confusion and trying to attract the attention of the Complainant’s customers. The Complainant concludes
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`that the Respondent is intentionally attempting to attract for commercial gain Internet users to its website
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`“www.lezzetlihediye.com”, by creating a likelihood of confusion with the Complainant’s mark.
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`http://www.wipo.int/am c/en/dom ains/search/text.jsp?case=D2014-1775
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`EXHIBIT A
`EXHIBIT A
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`In its amendment to the Complaint, the Complainant also asserts that the Respondent (Mr. Alsoy) is acting
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`in bad faith through i) his recent attempts of setting up a shell company called Bonaport LLC, which was
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`incorporated on August 28, 2014 and was registered through an agent named Delaware Business
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`Incorporaters, Inc., whose address corresponds to the Registrar-disclosed registrant’s address; and ii) its
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`filing of a trademark application, on September 16, 2014, for the registration of the mark BONNYFOOD in
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`the name of his fictitious U.S. company, against which the Complainant intends to take necessary legal
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`actions in the U.S., separately.
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`The Complainant explicitly objects to the Respondent’s U.S. address, stating that it is not the principal
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`address of the Respondent and should not be taken into account regarding the mutual jurisdiction it relied
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`on in its Complaint. In particular, the Complainant states that Mr. Alsoy is a Turkish citizen focusing its
`business activities in Turkey through his company Favorya lntemet Pazarlama Ticaret Limited Sirketi
`(“Favorya”), which the Complainant names as co-Respondent.
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`B. Respondent
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`The Respondent requests to dismiss the designation of Favorya as the second Respondent, stating that,
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`even if this company was founded by the same person (Mr. Alsoy), every company has its own legal
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`personality, and sharing the same founder does not automatically make a company liable for its sister
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`company’s actions and activities.
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`The Respondent also states that Favorya has never used the trademark BONNYFOOD and has never
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`controlled the disputed domain name for any reason at any time, as said company is the owner of the
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`LEZZETLIHEDIYE trademarks and domain names, whose rights of use and control have been assigned to a
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`third party company, named Filizgift Gida Ve Ihtiyac Maddeleri Egitim Danismanlik Snayi Ve 'I‘icaret
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`Limited Sirketi (“Filizgift”).
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`The Respondent has submitted an invoice issued by Bonaport LLC to Filizgift for a customer expectations
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`research covering 13 cities in Turkey and states that the business relationship between said companies does
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`not entail that Favorya or Filizgift have ever infringed the trademark BONNYFOOD or have owned the
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`disputed domain name.
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`The Respondent also states that the Complainant has been infringing the Respondent’s trademark
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`LEZZETLIHEDIYE and conducting unfair competitive activities on the Internet since February 24, 2014
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`and that a lawsuit was filed by Favorya against the Complainant based on unfair competition before the
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`Istanbul Commercial Court of First Instance on September 30, 2014.
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`The Respondent concludes that Favorya should be found irrelevant to this proceeding and that the real and
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`appropriate Respondent of this proceeding is the Alsoy family, namely Mr. and Ms. Alsoy, in relation with
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`Bonaport LLC and Bonnyfood A. S.
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`The Respondent highlights that the disputed domain name has been registered and managed through the
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`same personal account with the concerned registrar since the date of registration, August 29, 2008, and that
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`the registration and most of the renewal fees were paid with Ms. Alsoy’s own personal credit card.
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`http://www.wipo.int/am c/en/dom ains/search/text.jsp?case=D2014-1775
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`EXHIBIT A
`EXHIBIT A
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`The Respondent contends that the Complainant filed the Complaint only to eliminate all possible
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`competitors and to harm the Respondent, who is the major shareholder of Bonnyfood A.S. The Respondent
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`also underlines that the Complainant expressly acknowledges that the Alsoy family has registered the
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`domain name with bonafide intentions and still has legal rights and legitimate interests in respect of the
`domain name.
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`The Respondent describes the factual background of this case as follows:
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`- In February 2005, Ms. Alsoy came up with the idea of bringing “fresh fruit bouquets” into the Turkish
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`market;
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`- On August 29, 2008, Ms. Alsoy registered the disputed domain name with Mr. Alsoy, as they were
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`preparing to enter into the food business industry and the disputed domain name consisted of generic words
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`meaning “healthy food”;
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`- On October 16, 2008, Ms. Alsoy founded a company named Techoplus A. S. with her founder partner
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`Hamit Kekec and two other shareholders. Ms. Alsoy had and still is currently the majority shareholder of the
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`company. Bonnyfood A. S. is active in the field of e-commerce of online healthy, edible fruit, vegetable, cake
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`bouquets and baskets, and has been a pioneer company in bringing this business line to Turkey. The
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`Respondent highlights that the disputed domain name and corresponding trademark BONNYFOOD have
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`been widely advertised and promoted by Ms. Alsoy and that she has been granted several awards, including
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`European Business Awards;
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`- On December 8, 2009, the domain name <bonnyfood.com.tr> was registered;
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`- On June 25, 2010, the name of the company “Techoplus A.S.” was changed to Bonnyfood A. S.;
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`- On August 10, 2010, Bonnyfood A.S. applied for the registration of the figurative trademark BONNYFOOD
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`before the Turkish Patent Institute;
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`- On June 22, 2012, shareholders of Bonnyfood A.S. committed forgery on legal company documents and
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`with these fake documents and signatures registered the resignation of one of the members of Board before
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`the Istanbul Chamber of Commerce. Since the authority of signatures to represent Bonnyfood A. S. remained
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`the same for a while, Ms. Alsoy did not realized the forgery at that time;
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`- In May, 2013, Ms. Alsoy discovered the above-mentioned fraud and fake General Assembly Resolution and
`filed a law suit before the Istanbul Commercial Court of First Instance for anomalous capture of the
`signature authorities and invalidation of the forged General Assembly Minutes and Decisions.
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`With the new power acquired by the forgery, Ms. Alsoy’s authority of signature was abridged. Subsequently,
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`the company Bonnyfood A. S. and the domain name <bonnyfood.com.tr> were confiscated due to unpaid
`debts;
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`- On December 13, 2013, a criminal complaint for forgery was filed by Ms. Alsoy and another shareholder
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`against their partners. This case is currently pending before the Istanbul 28th Criminal Court of First
`Instance.
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`http://www.wipo.int/am c/en/dom ains/search/text.jsp?case=D2014-1775
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`EXHIBIT A
`EXHIBIT A
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`- On May 16, 2014, the Complainant acquired the trademarks from a judicial auction;
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`- On June 13, 2014, another law suit was filed by Ms. Alsoy against her partners for the malpractice and
`illegal acquisition of the property of the company. This case is pending before the Istanbul Anadolu
`Commercial Court of First Instance;
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`— On July 09, 2014, the Respondent filed a request for the rescission of a sale of the BONNYFOOD
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`trademarks before the Ankara Enforcement Court against the Complainant and the bank that auctioned off
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`said trademarks. This case is pending before the Supreme Court.
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`Therefore, the Respondent contends that the Complainant’s claim to the trademarks is in question before
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`the Turkish Supreme Court and states that the Respondent has a legal interest in the trademarks, as founder
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`and majority shareholder of Bonnyfood A.S. In View of the above, the Respondent deems that, until the
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`Court gives its decision on the Validity of the transfer of ownership of the trademark, this requirement of the
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`Policy should not be deemed satisfied.
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`The Respondent further alleges that, while fighting before the legal authorities to re-institute her rights and
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`prevent further damage, Ms. Alsoy decided to get into another business with Mr. Alsoy, under his name.
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`Given the above legal actions, they thought it would be better to establish the company solely in the name of
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`her husband, Mr. Alsoy, who then registered the U. S. company Bonaport LLC.
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`Said company filed an application for the registration of the trademark BONNYFOOD before the USPTO on
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`September 16, 2014.
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`With reference to the activity of Bonaport LLC, the Respondent states that it is a marketing outsourcing
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`company that drives awareness, project management, leads and revenue for its clients, and that said
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`company would like to provide its vertical marketing and research services for the companies in the U.S.
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`using the trademarks BONNYFOOD, for services in the food industry, and BONNYGOODS, for Design-
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`based Consumer Goods industries, such as Textile, Luxury Products, Home Equipment.
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`Therefore, the Respondent contends that the Complainant’s claimed trademark is in question before the
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`Court and states that, however, the Respondent has a legal interest on it, being the founder and major
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`shareholder of Bonnyfood A. S. In view of the above, the Respondent deems that, unti