WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Akbank Turk A.S. v. Mustafa Ismet Cinar Case No. D2009-0642 1. The Parties
The Complainant is Akbank Turk A.S. of Levent-Istambul, Turkey, represented by Istanbul Patent & Trademark Consultancy Ltd., Turkey.
The Respondent is Mustafa Ismet Cinar of Istanbul, Turkey. 2. The Domain Name and Registrar
The disputed domain name, (the “Domain Name”), is registered with GoD, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 13, 2009. On May 14, 2009, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 15, 2009, GoD, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 WIPO 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 on May 27, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was June 16, 2009. The Response was filed with the Center on June 8, 2009.
The Center appointed Tony Willoughby as the sole panelist in this matter on June 22, 2009. The Panel finds that it was properly constituted. 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 Panel informed the Center that for various reasons it would not be possible for this decision to be provided before July 13, 2009 and the time for the decision was extended accordingly. 4. Factual Background
Both parties to this dispute have addresses in Istanbul, Turkey.
The Complainant is one of Turkey's leading banks. It is the registered proprietor of a large number of service mark registrations of or comprising its name “Akbank”. It has traded under and by reference to the “Akbank” name for several decades.
The Domain Name was registered on March 26, 2008 and is connected to a parking page hosted by the Registrar and featuring sponsored links. 5. Parties' Contentions A. Complainant
The Complainant contends that the Domain Name is confusingly similar to its AKBANK service mark, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered and is being used in bad faith.
The details of the Complainant's contentions are referred to as necessary in section 6 below. B. Respondent
The Respondent contends that he registered the Domain Name within the rules applicable to the DotAsia domain. He contends that the Complainant had ample opportunity to register the Domain Name itself ahead of the Respondent during the Sunrise Period. The Respondent contends that the Complainant's failure to avail itself of that opportunity means that it was legitimate for him to register the name.
The Respondent objects to the speculation on the part of the Complainant in the Complaint as to what the Respondent might do with the Domain Name. The Respondent contends that the decision has to be based on the factual position and observes that he has never tried to sell the Domain Name and has never developed a website for it.
The Respondent also objects to the Complainant's contention that the website to which the Domain Name is connected is earning revenue for him. He asserts that it is a website hosted by the Registrar and that he has nothing to do with it. He says that he is deriving no revenue from the site.
The Respondent denies the Complainant's claims and contends that his registration of the Domain Name is legitimate.
Finally, the Respondent raises a procedural issue, relating to an associate of the Complainant's lawyer, which is dealt with below. 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, the Complainant must prove that
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interest in respect of the Domain Name; and
(iii) The Domain Name has been registered in bad faith and is being used in bad faith. B. Procedural Issue
The Respondent notes that a lawyer at the law firm acting for the Complainant is herself one of the panelists appearing on the list of panelists retained by the Center for adjudicating disputes under the Policy. He expresses the hope that the lawyer in question is not selected for adjudication of this dispute.
That has not happened, nor would it ever happen. The Center and the Center's panelists are meticulous in avoiding conflicts of interest. The Panel is able to confirm in addition that, to the best of his recollection and belief, he has never met the lawyer in question and has had no contact with her of any kind. C. Identical or Confusingly Similar
The Respondent does not dispute that the Complainant is the proprietor of a large number of trade and service mark registrations of or comprising the Complainant's name, “Akbank”. The Domain Name features the name, “Akbank”, and the generic top-level domain suffix. It is well-established that the generic domain suffix may be ignored when assessing identity or confusing similarity for the purposes of paragraph 4(a)(i) of the Policy.
The Panel finds that the Domain Name is identical to the Complainant's trade and service mark, AKBANK. D. Rights or Legitimate Interests
In suggesting as he does that the Complainant cannot complain at the registration of the Domain Name because the DotAsia Sunrise Policy gave the Complainant the opportunity of registering it first demonstrates a basic misunderstanding of the rationale behind the Sunrise Policy. The Sunrise Policy provided trade mark owners with an opportunity, not an obligation. There is no obligation upon trade mark owners, or indeed anybody else, to register domain names of any kind. A trade mark owner's failure to register a trade mark as a domain name (whether under a Sunrise Policy or at any other time), thereby leaving it available for registration by someone else, of itself gives that “someone else” no rights at all. See Adidas AG v. Zhifang Wu,WIPO Case No. D2007-0032.
The obligation is upon the Respondent to avoid violating the rights of any third party. Paragraph 2 of the Policy provides:
“By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that (a) the statements that you made in your Registration Agreement are complete and accurate; (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else's rights.”
The Respondent appears to be a Turkish resident. He has an address in Istanbul. The Complainant is a leading Turkish bank with an address in Istanbul. The Complainant alleges and the Respondent does not dispute that when he registered the Domain Name the Respondent was well aware of the Complainant's name and trade/service mark, AKBANK.
It is noteworthy that the Respondent does not offer any explanation for his registration of the Domain Name, save that it was available for registration.
There is nothing before the Panel to suggest that the Respondent has any rights or legitimate interests in respect of the Domain Name.
The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. E. Registered and Used in Bad Faith
The Panel believes the following passage from the decision in Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912 to be precisely on point:
“Paragraph 4(b) of the Policy sets out four non-exclusive circumstances any of which, if found by the Panel, shall be evidence of registration and use of a domain name in bad faith.
In particular, paragraph 4(b)(iv) states that if the Panel finds that the Respondent has used the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of its website, it should be taken as evidence of the registration and use of the domain name in bad faith.
The Panel finds that the evidence submitted by the Complainant supports a finding of bad faith under paragraph 4(b)(iv). The Respondent's use of the disputed domain name with the intention to attract Internet users for commercial gain is established by the sponsored links and pop-up advertisements on its website. The likelihood of confusion as to source, sponsorship, affiliation or endorsement is established by the fact that the disputed domain name is confusingly similar to the VILLEROY & BOCH trademarks and the Complainant's own domain names. The fact that the website at the disputed domain name includes links to sites offering competing products as the Complainant aggravates the likelihood of confusion.
The only novel feature in this case is the Respondent's statement that the parking page was created by the Registrar, and that at the time the Respondent had no knowledge of its contents. These statements are corroborated by the information and disclaimer on the parking page itself, and the Registrar's contractual right under clause 3.6 of the registration contract referred to above. Further, the Respondent states that he has not received any money or discount from the website. However, these facts do not exclude bad faith under paragraph 4(b)(iv) for the following reasons: (i) paragraph 4(b)(iv) requires the Respondent to intend to attract Internet users ‘for commercial gain', but this gain does not need to be derived by the Respondent himself. The Respondent cannot infringe the Complainant's rights with impunity on the basis that it is allowing a third party to reap the profits of its wrongful conduct; (ii) the Respondent has at all times been in contractual control of the content of the website at the disputed domain name, and had the power to instruct the Registrar to remove the parking page.”
The Panel accepts that the Respondent may have received no financial benefit from the parking page to which the Domain Name is connected. However, in circumstances where, as here,
(a) the Complainant's trade mark is distinctive,
(b) the Respondent was well aware of the Complainant and its trade mark when registering the Domain Name,
(c) the Domain Name is identical to the Complainant's trade mark,
(d) the Respondent has no right or legitimate interest in respect of the Domain Name,
(e) the Domain Name is connected to a commercial parking page generating revenue from sponsored listings (including links to the Complainant's competitors),
(f) Internet users are very likely to visit the parking page in the hope and expectation of reaching a site of or authorized by the Complainant and
(g) there is no conceivable lawful commercial use that the Respondent can make of the Domain Name without the authority of the Complainant,
registration of the Domain Name must in these circumstances constitute registration and use in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.
This could be for the reason cited by the learned panel in Villeroy & Boch AG v. Mario Pingerna,WIPO Case No. D2007-1912 in the passage quoted above or, on the basis that nobody registers a domain name for no purpose, it is reasonable in the circumstances of this case for the Panel to infer that the Respondent's purpose in registering the Domain Name was abusive. Thus, the Domain Name in the hands of the Respondent represents an abusive threat hanging over the Complainant's head, which in the view of this Panel is tantamount to bad faith use of the Domain Name.
The Panel finds that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy. 7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to the Complainant.
Tony Willoughby
Sole Panelist
Dated: July 12, 2009
Full & Egal Universal Law Academy