WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION A.S. v. Hakan Günaydın, ProNET Case No. D2009-1392 1. The Parties
The Complainant is Türkiye İş Bankası A.S. of Istanbul, Turkey, represented by Sevil Ozcan Kalkan and Rasim Oguz Egilmez, Turkey.
The Respondent is Hakan Günaydın, ProNET of Ankara, Turkey. 2. The Domain Name and Registrar
The disputed domain name is registered with Dotster, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 20, 2009. On October 20, 2009, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the disputed domain name. On October 20, 2009, Dotster, 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 October 26, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 15, 2009. The Response was filed with the Center on November 5, 2009.
On November 10, 2009, the Complainant filed a reply to points raised in the Respondents Response (as a Supplemental Filing). On November 11, 2009 the same date the Respondent sent an e-mail regarding the Complainant Supplemental Filing submitted a Supplementary Filing in response to the Complainant's contentions.
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.
No further submissions were received by the Center or the Panel. The date scheduled for the issuance of the Panel's decision is December 2, 2009. 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 of the Complaint., 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 of the Complaint.
The Complainant has several trademark registrations containing variations of its trade name, Türkiye İs 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 of the Complaint and the affiliate Isbank GmbH has registered “ISBANK GmbH” with the German Patent and Trademark Office (Deutsches Patentamt) on August 31, 1992 as evidenced in Annex 10 of the Complaint. 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 with the “Middle East Technical University, the country code ‘.tr' 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 of the Complaint.
The Respondent registered the disputed domain name on September 17, 2001 and renewed it on August 27, 2009 as evidenced in Annex 1 of the Complaint. 5. Parties' Contentions A. Complainant
In accordance with paragraph 4(b)(i) of the Policy, 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. 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 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 of the Complaint., furthermore the results of a search for trademark “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 does not resolve in a website and displays an error message as evidenced in Annex 14 of the Complaint.. 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 submits that the Respondent registered the domain name for the purpose of confusing Internet users searching for the Complainant's website to divert them to his website 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 a product or service on his web site.
The Complainant submits that the Respondent when registering the domain name had taken active steps to conceal his identity by deliberately providing false or incomplete contact details in order to remain unreachable.
The Complainant avers that the Respondent registered the domain name primarily for the purpose of disrupting the Complainant's business and intentionally attempting to attract, for commercial gain, Internet users, searching for the Complainant's web site and 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 offered on web site.
The Complainant states that its trademark ISBANK and the name of its bank has been legally registered and is recognised and well known in Turkey and globally.
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 of the Complaint.. B. Respondent
The Respondent filed a Response to the allegations in the Complaint and requests the Panel to deny the remedy requested, namely transfer of the disputed domain name to the Complainants.
The Respondent disputes the arguments put forward by the Complainant and submits that the Complainant has failed to prove all three elements set forth under paragraph 4(a) of the Policy.
The Respondent states that “iş” is a Turkish word meaning “business” and submits that he acquired the disputed domain name for a website whose subject matter is business banking. The Respondent submits that although the domain name is inactive this is because he has removed the website content in order to develop it which will be placed online once it is completed. Moreover the Respondent contends that although the disputed domain name remains inactive this does not constitute bad faith use. The Respondent claims that the domain name has never been used in bad faith and never will be. Furthermore, the Respondent states that he has never attempted to sell the disputed domain name. Identical or Confusingly Similar
The Respondent states that he has been the registered owner of the disputed domain name since September 17, 2001 and points to the fact that the Complainant had not registered the trademark ISBANK until April 21, 2004 with the Turkish Patent Institute and April 27, 2004 with the OHIM. The Respondent contends that the Complainant did not have a registered trademark at the date of registration of the disputed domain name.
The Respondent denies that there could be any confusion created by the disputed domain name as the extension is “.info” indicating that it is a website providing information whereas the Complainant uses “.com” indicating commercial business. The website will be as the name implies an information exchange site. Rights or Legitimate Interests
The Respondent states that as “iş” means “business” and “bank” means “bank”, the disputed domain name as its name implies is a website for exchanging information about business banking. The Respondent also points to the fact that the words are generic and may be used by anyone.
The Respondent states that the Complainant had ample chance to claim the disputed domain name should be registered to the Complainant. Afilias the operator of “.info” domains provides period in which trademark holders can register their trademarks, then provides a period to challenge any registrations and such period ended on December 26, 2001. Furthermore, the Complainant obtained the domain name in Turkiye Is Bankasi A.S. v. Ali Nail Kocyigit, WIPO Case No. D2004-0825 at this point the Complainant had registered its trademark and could have initiated a case against the Respondent of the disputed domain name but chose not to. The Respondents submits the reason for this as the Complainant was aware that the “.info” extension is used for information purposes and therefore there would be no confusion.
The Respondent states that he has owned the domain name for 9 years and used it without bad faith and has therefore gained rights in the domain name.
The Respondent claims legitimate non-commercial use or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark at issue. Registered and Used in Bad Faith
The Respondent contends that he is developing the site and once it is completed he shall place it online.
The Respondent claims that the Complainant is acting in bad faith when alleging that the Respondent provided inaccurate contact details in order to be unreachable as all details are correct and the Respondent has been successfully contacted through these details.
The Respondent asserts that the disputed domain name was not registered or acquired primarily for the purpose of selling, renting or otherwise transferring the disputed domain name registration to the Complainant, as the alleged owner of the trademark or service mark, or to a competitor of the Complainant.
The Respondent contends that the Respondent is not a competitor of the Complainant and the disputed domain name was not registered primarily to disrupt the Complainant's business. The disputed domain name was not registered in order to prevent the Complainant from reflecting their service mark in the corresponding domain name and, in connection therewith, the Respondent has not engaged in a pattern of such conduct. The Respondent denies that the disputed domain name was registered in an intentional attempt to attract for commercial gain, Internet users to his website or other online 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 location or of a product or service on the Respondent's website or location. C. Complainant's Supplemental Filing of November 10, 2009
The Complainant in its Supplemental Filing repeated contentions made in its initial Complaint. Other than that it raised new points and responded to the Respondent's Response.
The Complainant notes that the Respondent states the date of registration as September 17, 2001 and later as September 17, 2009. The Complainant amplified its contention that the Respondent had not provided full contact details, the Complainant notes that the address provided on the registration is for a P.O Box and the address provided during the current proceedings is different. Furthermore, the Complainant notes that the Respondent has been a customer of the Complainant since 1998.
The Complainant disputes that the disputed domain name reflects the intended content of the website, namely, an information exchange on business banking. Furthermore, although the content is information rather than commercial purposes Internet users may assume that the site is provided by the Complainant.
The Complainant denies that “iş” and “işbank” are generic as they are the Complainant's trademarks. D. Respondent's Supplemental Filing of November 11, 2009
The Respondent in its Supplementary Filing argues and elaborates the same contentions raised in his initial Response and replies arguments put forward by the Complainant in its Supplementary Filing.
The Respondent states that the Complaint does not satisfy the bad faith use and registration element of the Policy. The Respondent accepts that there was a typing error when referring to the disputed domain name registration date as 2009 and states it is September 17, 2001 as evidenced in various records.
The Respondent acknowledges that the address he provided at registration was a P.O. Box address but nonetheless this is a legal address and upon enquiring the post office provides details of the owner.
The Respondent denies that the fact he has been a customer of the bank provides a basis for bad faith. Supplemental Filing
There is a procedural matter, namely the unsolicited Supplemental Filing by both parties, which should be disposed of as a preliminary matter.
On November 10, 2009, the Complainant submitted a supplemental filing in connection with this matter, inviting the Panel to consider further evidence to support its Complainant and addressing points raised in the Response.
On the same date the Respondent sent an e-mail requesting that the Complainant's Supplemental Filing be rejected and in the event that his objection was not heard submitted a Supplemental Filing in response to the Complainant's contentions on November 11, 2009.
The rules make no explicit provision for such Supplemental Filings and they are admissible at the Panel's discretion. A Panel has the discretion to admit or invite further filings under paragraphs 10(a), (b), (d), and 12 of the Rules.
The Panel elected to review the Supplemental Filings of both parties and based on the nature of the material contained therein, the Panel is willing to accept and consider the Supplemental Filing of both the Respondent and Complainant.
In reaching its decision the Panel considered the fact that the Supplemental Filing was submitted prior to the Panel's appointment, before the Panel began its review of this matter and the Respondent had an opportunity to respond to the Supplemental Filing therefore each party has been treated with equality and had a fair opportunity to present its case.
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 domain names of the Respondent be transferred to the Complainant:
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 domain name of the Respondent be transferred to the Complainant:
(a) the domain names are 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 names; and
(c) the domain names have been registered and are 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. 6. Discussion and Findings 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 words “Isbank”.
The Panel also notes the decision of the European Court of Justice in Sabel BV v. Puma AG( C-251/95 11.11.9) in determining whether there is a likelihood of creating confusion in the minds of consumers that expect the disputed domain name to resolve to websites owned by the Complainant is a subjective test. Following Oki Data Americas Inc. v. ASD Inc., WIPO Case No. D2001-0903, a domain name that reproduces the trademark in its entirety is confusingly similar to the mark. It has been stated in several decisions by other UDRP administrative 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 filed this dispute in its view 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.
Furthermore, the addition of a gTLD suffix is irrelevant when determining whether a disputed domain name is confusingly similar to the Complainant's trademark, Akbank Turk A.S. v. Ramazan Yaylaoglu,WIPO Case No. D2008-0575.
The Panel recognises the Complainant's rights and concludes that the domain name at issue is identical and 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), 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 has 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 right or legitimate interest 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 no evidence that the Respondent is commonly known by the disputed domain name, the disputed domain name incorporates the Complainant's mark and it is evident that Complainant has not authorized the Respondent to use their mark and name in the disputed domain name.
Furthermore, the Complainant notes the disputed domain name resolves in an inactive web site. The Panel finds the Respondent is not making use of the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services and the domain resolves in an inactive website, Grosbill v. JT2M, WIPO Case No. D2006-1000.
The Respondent claims that the domain name has been and will be used to offer bona fide services, namely, an information exchange website regarding business banking. The Respondent claims he is developing the website however has failed to provide any evidence of his preparations or intended use. Aside from his statement there is no supporting evidence and the Panel does not accept that this alone provides evidence to draw the conclusion that the domain will in fact be used for a bona fide offering of goods or services as the Respondent claims. The Respondent has failed to establish “demonstrable preparations” to use the disputed domain name for a bona fide offering of goods or services, Helen Fielding v. Anthony Corbert aka Anthony Corbett,WIPO Case No. D2000-1000.
The Respondent points to the fact that the word “iş” means business and bank is the same in both Turkish and English, he states that these words reflect the content of his website. The Respondent claims that the disputed domain name is composed of generic terms that reflect the content of the web site. The Panel is of the opinion that the Respondent could clearly secure a domain name which reflects the nature of his website content.
The Respondent claims that the Complainant can not claim any rights in the word “isbank” as it is generic. The Panel finds, whilst the disputed domain name contains generic and descriptive words when used individually the combination of the two words, as used by the Complainant, gains distinctiveness, Levantur, S.A. v. Media Insight, WIPO Case No. D2009-0608, furthermore, the term “isbank” without a doubt is associated with the Complainant.
The Respondent notes that although the Complainant initiated a WIPO case in 2004 and as result of which acquired it chose not to submit a Complaint for the disputed domain name in issue. Furthermore the Respondent states that he must have acquired rights in the domain name as the registered it eight years ago. Although there has been a delay in bringing the proceedings the Panel finds that alone is not sufficient to bar the Complainant from bringing its Complaint, as stated in The Hebrew University of Jerusalem v. Alberta Hot Rods,WIPO Case No. D2002-0616 there is no limitation period in the Policy and delay alone should not disentitle the Complainant to relief.
Furthermore, if the Complainant's trademark is recognised with longstanding use, delay in filing the Complaint does not suffice to justify a denial of relief, The E.W. Scripps Company v. Sinologic Industries,WIPO Case No. D2003-0447, Villeroy & Boch AG v. Whois Data Shield/Hong Kong Names LLC.,WIPO Case No. D2008-1300.
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 all three disputed domain names.
The requirements of 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 well known bank and has submitted evidence of extensive advertising through various channels.
The Panel finds that the Respondent is a resident of Turkey and customer of the bank since 1998, two years previous to his registration of the disputed domain name. The Panel finds that the Respondent knew of Complainant and its marks prior to registration of the disputed domain name and therefore had both actual and constructive knowledge of Complainants' marks. It must also have been apparent to the Respondent that his registration of the disputed domain names would prevent the Complainant from registering its mark in a corresponding domain name. It therefore follows that the Respondent, at the time of registration, may likely have been aware that commercial use of the domain name could result in a violation of the Complainant's trademark rights, suggesting that there was never an intention of good faith use, Telstra Corp. Ltd. v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
The Panel is of the opinion that the majority of users would assume that the disputed domain name resolves in a site affiliated with the Complainant, such intention of apparent 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 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. The disputed domain name is apparently inactive and not being used by the Respondent, although he has claimed he is developing a web site he has offered no evidence to support his claim. The Panel following previous Panels finds that “passive use” of the domain name indicates bad faith, Bilbao Vizcaya Argentaria, S.A. v. Victor Edet Okon,WIPO Case No. D2004-0245, Banco CareerBuilder LLC, v. Finity Development Group,WIPO Case No. D2006-0615. Furthermore, the Panel notes that the disputed domain name was registered eight years ago yet there is no evidence that the disputed domain name has ever been actively used.
As in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 and Ladbroke Group Plc v. Sonnoma 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 3, 2009
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