WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Turkiye Is Bankasi A.S. v. Mehmet Ulutug, Tek Sistem Case No. D2009-1374 1. The Parties
The Complainant is Turkiye Is Bankasi A.S. of Istanbul, Turkey, represented by Sevil Ozcan Kalkan and Rasim Oguz Egilmez, Turkey.
The Respondent is Mehmet Ulutug, Tek Sistem of Istanbul, Turkey. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 15, 2009. On October 16, 2009, the Center transmitted by e-mail to eNom a request for registrar verification in connection with the disputed domain name. On October 16, 2009, eNom 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 October 23, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 12, 2009. An administratively deficient Response was filed by the Respondent with the Center on November 13, 2009.
The Center appointed Gökhan Gökçe as the sole panelist in this matter on November 18, 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. 4. Factual Background
The Complainant, Turkiye Is Bankasi A.S. is Turkey's first public bank established on August 26, 1924 and has been operating since its establishment. The Complainant is one of the largest banks in Turkey in terms of assets with its head office in Istanbul, 1,073 branches in Turkey, 14 branches in foreign countries, a Representative Office in Shanghai and an affiliate in Germany Isbank GmbH whereby the Complainant owns 100% of its shares. Isbank GmbH has 14 branches in Europe. The Complainant is well-known as “Türkiye İş Bankası”, “İş Bankası” and also “İşbank”.
The Complainant has advertised extensively in Turkish newspapers, as evidenced in Annex 4, and TV channels for years. The Complainant is quoted as a world top ranking bank in several sector specific publications, as evidenced in Annex 5.
The Complainant has several trademark registrations containing variations of its trade name, Turkiye Is Bankasi A.S. with the Turkish Patent Institute as evidenced in Annex 8, Community Trademark (CTM) registrations before the Office for Harmonization in the Internal Market (OHIM) as evidenced in Annex 9 and the affiliate Isbank GmbH registered ISBANK GmbH with the German Patent and Trademark Office (Deutsches Patentamt) on August 31, 1992 as evidenced in Annex 10. The Complainant registered its trademark ISBANK with the Turkish Patent Institute on April 21, 2004, as a CTM before the OHIM on April 27, 2004.
The Complainant registered the domain name on June 16, 1997 before the Middle East Technical University, the national domain name administration authority from which it operates its official website as evidenced in Annex 6, and was transferred on November 22, 2004 in Turkiye Is Bankasi A.S. v. Ali Nail Kocyigit, WIPO Case No. D2004-0825 as evidenced in Annex 7.
The Respondent registered the disputed domain name on June 7, 2000 renewed on January 27, 2009 as evidenced in Annex 1. 5. Parties' Contentions A. Complainant
The Complainant requests that the disputed domain name be transferred to the Complainant.
The Complainant submits the grounds for these proceedings are listed in paragraph 4(a) of the Policy as explained below. Identical or Confusingly Similar
The Complainant submits that the disputed domain name is identical or confusingly similar to its registered trade and service marks. The Complainant has used the trademark ISBANK in Turkey and Europe for many years and their trademark has acquired distinctiveness through use according to Article 15 of Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS Agreement”). Rights or Legitimate Interests
The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name as he has no trademark registration with the Turkish Patent Institute for “isbank” as evidenced in Annex 11, furthermore the results of a search for trademarks “isbank” reveals the Complainant as the registered owner of trademark ISBANK as evidenced in Annex 12.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has never granted the Respondent a licence or permission to use the mark ISBANK, the Respondent has no association with the Complainant and the Respondent has never been commonly known by the disputed domain name.
The Complainant notes the disputed domain name resolves in a website that contains sponsored listings for banking and financial services, thereby provides links to services in direct competition with the Complainant. The website contains a search engine and advertising links related to the Complainants business and links to competitor websites as evidenced in Annex 14, 15 and 16. The Complainant notes that there is also a link for what appears to be its bank “Türkiye İş” and when a user follows the link it resolves in a page populated with links to dating sites, as evidenced in Annex 17. When the Complainant used the search engine it provided a link directing the user to a website containing erotic material and news, as evidenced in Annex 19.
The Complainant submits that there is no bona fide use of the disputed domain name which is indicative of bad faith. Registered and Used in Bad Faith
The Complainant contends that the disputed domain name was registered and is being used in bad faith.
The Complainant asserts that the disputed domain name was registered by the Respondent primarily for the purpose of selling and notes that the Respondent purchased the disputed domain name from A. Vergili, as evidenced in Annex 20, and that this individual was also the original registrant of which was transferred to the Complainant in Turkiye Is Bankasi A.S. v. Ali Nail Kocyigit, WIPO Case No. D2004-0825.
The Complainant submits that the Respondent registered the domain name for the purpose of confusing Internet users and to divert them to a website containing links and adverts of services in direct competition with the Complainant, inappropriate dating sites or sites with sexual content. The Complainant asserts that the disputed domain name will cause the Complainant's customers and potential customers confusion as they would expect the disputed domain name to resolve in the Complainant's website.
The Complainant states that the Respondents use of the disputed domain name demonstrates his intention to damage the Complainant's reputation and tarnish the trademark or service mark in issue.
The Complainant submits that the Respondent when registering the domain name has taken active steps to conceal his identity by deliberately providing erroneous contact details which is a strong indication of bad faith.
The Complainant states that its trademark ISBANK and its bank are widely known in Turkey and globally. The disputed domain name incorporates a famous mark and the Complainant asserts that at the time of registration the Respondent, who has given his address as Turkey, knew or should have known of the existence of the Complainant's trademark, reputation and goodwill.
The Complainant notes that the disputed domain name is being used by the Respondent to divert users to sites of those in direct competition with the Complainant which demonstrates the Respondent's intention to disrupt the Complainant's business. Therefore, the Respondent registered the disputed domain name and by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's web site 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 the Respondent's web site or location or of a product or service on the Respondent's web site or location.
Additionally, the Complainant asserts that by including the word “bank” in a domain name the Respondent also violates the provisions of Turkish Banking Law No.4389 as evidenced in Annex 25. B. Respondent
The Respondent filed a short reply to the Complaint in the form of an e-mail communication which was administratively deficient, lacking amongst other requirements under the Rules, paragraph 5(b), the Response has not been signed by the Respondent or its authorized representative. The Respondent contends that he purchased the disputed domain name 9 years ago and that he uses parking services of Bulk Register and therefore does not control the content.
The Respondent states he purchased the disputed domain name as an investment and relies on the English reading as in “Is Bank?”. The Respondent also states that there are 250 domain extensions all of which are not owned by the Complainant. 6. Discussion and Findings Procedural Matters
There is a procedural matter, namely the Respondent's late filing of his Response, which should be disposed of as a preliminary matter. The Complainant objected to the Respondent's late submission of the Response and requested that the Panel reject the submission. Under the Rules, this determination is solely within the discretion of the Panel.
On October 26, 2009, the Complainant sent an e-mail communication to the Center, copying the Respondent, informing the Center that the Complainant had sent the Complaint to the Respondent's registered address however it was returned undelivered stating that the recipient (Respondent) was unknown at that address. The Respondent replied by e-mail stating that he intended to submit a Response and stated that due to language difficulties he would seek assistance and submit a response as soon as possible. The Centre replied and advised the Respondent that the last date for filing his Response is November 12, 2009. However, a Response was not filed by the deadline and on November 13, 2009 the Respondent sent an e-mail communication containing a short Response to the Centre, copying the Complainant. Although the Panel is not required to consider a late filed Response, the Panel reviewed the e-mail communication as it was sent just one day after the deadline, before the Panel was appointed and before the Panel began its review of this matter. After considering the Respondent's e-mail communication, the Panel concludes that it could not be considered as a Response as it was administratively deficient in a number of respects, including that it did not contain a certification that the Response is complete and accurate and has not been signed by the Respondent as required by the Rules, paragraph 5(b)(viii). Following Talk City Inc., v. Michael Robertson,WIPO Case No. D2000-0009, the Panel is of the view that without certification, it is not appropriate to accept the factual assertions contained in the e-mail communication.
In any event, the Decision in this case would have been the same had the Panel considered the uncertified Response when making its decision.
As the Respondent failed to submit a Response, the Panel accepts as true all of the allegations of the Complaint, pursuant to paragraph 5(e) of the Rules, if a respondent does not submit a response, in the absence of exceptional circumstances, the panel shall decide the dispute based upon the complaint.
However, failure to respond in a Policy proceeding does not constitute an admission of any pleaded matter. The Panel will proceed to evaluate the Complainant's evidence and his own examination of the Respondent's website against the requirements of paragraph 4(a) of the Policy, Stanworth Development Limited v. E Net Marketing Ltd.,WIPO Case No. D2007-1228.
The Panel turns to the merits of the case, paragraph 4(a) of the Policy sets forth the following three elements which the Complainant must prove, during the administrative proceedings, to merit a finding that the disputed domain name be transferred to the Complainant:
(a) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(b) the Respondent has no rights or legitimate interests in respect of the domain name; and,
(c) the domain name has been registered and is being used in bad faith.
Pursuant to paragraph 15(a) of the Rules, the Panel shall decide a Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. A. Identical or Confusingly Similar
The Complainant has provided sufficient evidence of owning several trade and service mark applications with the Turkish Patent Institute, OHIM and the German Patent and Trademark Office consisting of the term ISBANK.
Following such cases as Oki Data Americas Inc. v. ASD Inc., WIPO Case No. D2001-0903, a domain name that reproduces the trademark in its entirety is typically confusingly similar to the mark. It has been stated in several decisions by other UDRP panels that incorporating a trademark in its entirety into a domain name can be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark, Bayerische Motoren Werke AG, Sauber Motorsport AG v. Petaluma Auto Works,WIPO Case No. D2005-0941; Thaigem Global Marketing Limited v. Sanchai Aree,WIPO Case No. D2002-0358; Toyota France and Toyota Motor Corporation v. Computer-Brain, WIPO Case No. D2002-0002.
It is obvious to the Panel that the Complainant has applied for the domain name in order to protect its trademark and goodwill, Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662. “Trademark owners are not required to create ‘libraries' of domain names in order to protect themselves”. The fact that the Respondent registered the disputed domain name before the Complainant does not prevent a finding of identical and confusingly similar, Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827.
The Panel recognises the Complainant's rights and concludes that the domain name at issue is identical or confusingly similar with the Complainant's trademark.
The Panel finds that the requirements in paragraph 4(a)(i) of the Policy are fulfilled, consequently, the Panel finds for the Complainant on the first element of the Policy. B. Rights or Legitimate Interests
In accordance with paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Although the Policy states that the Complainant must prove each of the elements in paragraph 4(a), it is often observed that it is difficult for a complainant to prove a negative and it is therefore generally accepted under the Policy that, once a Complainant has presented a prima facie case of a Respondent's lack of rights or legitimate interests in a domain name, the burden shifts to the Respondent.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. It is submitted that the Respondent has neither association to the Complainant, nor a connection to the disputed domain name, and is not commonly known by disputed domain name.
The Panel finds registering a domain name incorporating a widely known trade mark and using it to misdirect Internet users to websites offering competing products and services, with the apparent intention of earning click through revenue does not by itself give rise to a legitimate interest. Although other panels have found that use of the domain name in this manner may be considered proper use of domain names the general consensus is that it must not conflict with another's trademark rights, as is the case in this dispute, Volvo Trademark Holding AB v. Unasi, Inc.WIPO Case No. D2005-0556.
Furthermore, the Complainant claims the Respondent was fully aware of the Complainant's established reputation and contends the only conceivable interest and reason for registering the disputed domain name was to create confusion for his own benefit and profit. The Panel is convinced that the Respondent was aware of and must have had prior knowledge of the reputation and goodwill of the Complainant's trademark ISBANK when he registered the disputed domain name. In these circumstances the Respondent, at the time of registration, must have been aware that any legitimate commercial use of the domain name would result in a violation of the Complainant's trademark rights.
Paragraph 4(a)(ii) requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the disputed domain name. The Complainant has established a prima facie case that the Respondent lacks a legitimate right or interest in the disputed domain name. The Respondent was unable to demonstrate a legitimate interest or right in the disputed domain name. The Panel therefore concludes that the Respondent has not satisfied paragraph 4(c) of the Policy and concludes that the Respondent has no rights or legitimate interests in the disputed domain name.
The requirements of Policy, paragraph 4(a)(ii) are fulfilled and consequently the Panel finds in favour of the Complainant on the second element of the Policy. C. Registered and Used in Bad Faith
The Complainant is a widely known bank and has submitted evidence of extensive advertising through various channels. The Panel finds that the Respondent, a resident of Turkey, was more than likely aware of the Complainant's trademark prior to registering the disputed domain name and draws an inference of bad faith, Parfums Christian Dior v. Javier Garcia Quintas and C,WIPO Case No. D2000-0226. It therefore follows that the Respondent, at the time of registration, must have been aware that any legitimate commercial use of the domain name would result in a violation of the Complainant's trademark rights, suggesting that there was never an intention of good faith use, Telstra Corporation Limited v. Nuclear MarshmallowsWIPO Case No. D2000-0003.
The Panel notes the Respondent did not provide full contact details which is also an indication of bad faith however contact was established with the Respondent.
The Panel is of the opinion that the majority of Internet users would assume that the disputed domain name resolves in a site affiliated with the Complainant, misdirection of traffic to other websites suggests bad faith, General Electric Co. v. Fisher Zvieli, a/k/a Zvieli Fisher,WIPO Case No. D2000-0377; The Sportman's Guide, Inc. v. John Zuccarini,WIPO Case No. D2001-0617. The Respondent uses the domain name to resolve in a website that advertises links offering goods and services in direct competition with the Complainant. Use of a domain name that is confusingly similar to another's trademark to display sponsored links to third parties has been regarded to indicate bad faith, McDonald's Corporation v. ZusCom,WIPO Case No. D2007-1353.
Moreover, diverting potential customers looking for the Complainant's site to a site containing sexual content with the intention to profit further indicates the Respondent's bad faith, Giampaolo Matteucci v. Webmaster, AWG,WIPO Case No. D2001-1135.
The Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to an on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or other location.
The Panel did not consider the Complainant's contention that including the word “bank” in the disputed domain name was in breach of Turkish Banking Law as it was not relevant or necessary to establish bad faith.
As in Telstra Corporation Limited v. Nuclear Marshmallows supra and Ladbroke Group Plc v. Sonoma International LDC,WIPO Case No. D2002-0131 after examining all circumstances surrounding the registration and use of the domain name, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith. Accordingly the Panel finds in favour of the Complainant on the third element 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.
Gökhan Gökçe
Sole Panelist
Dated: December 2, 2009
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