The Complainant is Akbank Turk A.S. of Istanbul, Turkey, represented by Istanbul Patent & Trademark Consultancy Ltd., Turkey.
The Respondent is Axess Yeterbana of Turkey. 2. The Domain Name and Registrar
The disputed domain name is registered with MyDomain, Inc. d/b/a NamesDirect. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 9, 2010. On December 9, 2010, the Center transmitted by email to MyDomain, Inc. d/b/a NamesDirect a request for registrar verification in connection with the disputed domain name. On December 9, 2010, MyDomain, Inc. d/b/a NamesDirect 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 December 20, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 9, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 10, 2011.
The Center appointed Selma Ünlü as the sole panelist in this matter on January 18, 2011. 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 uncontested facts stated in the Complaint are as follows:
(1) The Complainant Akbank Turk A.S. is a Turkish bank founded in Turkey in 1947. It provides banking services for over 50 years.
(2) The Complainant has a credit card named “axess” which is promoted extensively in the market by a wide range of advertising materials such as print, broadcast and cable media as well as on the Internet.
(3) The Complainant uses the slogan “axess yeter bana” which means “axess is enough for me” in its advertisements.
(4) The Complainant is the registered owner of the AXESS trademark numbered 2001 04242 and dated March 9, 2001 and also registered owner of the AXESS+device trademarks numbered 2003 04444 and dated March 3, 2003 and numbered 2003 04445 and dated March 3, 2003 before the Turkish Patent Institute (the “TPI”). The Complainant has also over 25 trademarks containing AXESS before the TPI.
(5) The Complainant has also an international registration for AXESS under international Madrid Protocol numbered (IR) 869351 and dated November 19, 2004.
(6) The Complainant is the registered owner of the domain name since April 9, 2001.
(7) The disputed domain name was registered on August 18, 2010.
(8) The Respondent has given false identity and hidden its real name and contact information when registering the disputed domain name.
(9) “Axess yeter bana” is a famous and widely and well-known slogan in Turkey and it is unlikely that the Respondent is unaware of this slogan.
(10) The Respondent used the Complainant’s trademarks and advertising tools on the website under the disputed domain name and also makes an offer to sell the domain name.
The Panel’s observation of the case file reveals the following:
The Respondent used also some expressions which may jeopardize the reputation of the Complainant on the website under the disputed domain name such as “Is Axess enough for me?” and “For whom is Axess enough and for whom it is not enough?” In addition, the Respondent used advertising tools on the website under the disputed domain name which have likely generated some revenue. 5. Parties’ Contentions A. Complainant
The Complainant requests the Panel to issue a decision transferring the disputed domain name to the Complainant on the following grounds:
(i) The disputed domain name is identical or confusingly similar to the trademarks/service marks in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name was registered and is being used in bad faith.
(i). Identical or Confusingly Similar
The Complainant alleges that the disputed domain name is identical or confusingly similar with its registered AXESS trademarks and identical with it’s widely known “axess yeter bana” slogan.
The disputed domain name is a combination of three separate words, namely the Complainant’s AXESS trademark and the generic words “yeter” and “bana”, which together means “AXESS is enough for me” which is the slogan of the Complainant. The Complainant alleges that the addition of the descriptive terms to the Complainant’s AXESS trademark does not fail to distinguish the disputed domain name from the mark, but also reinforces the association of the domain name with the Complainant’s mark. The Complainant refers to Yahoo! Inc. and Overture Services, Inc. v. Registrant (187640), a/k/a Gary Lam, a/k/a Birgit Klosterman, a/k/a XC2, a/k/a Robert Chua, a/k/a Registrant,WIPO Case No. D2004-0896 to argue the confusingly similarity between the disputed domain name and its own trademarks. The Complainant refers to Quixtar Investments Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 and alleges that using the advertorial slogan ”yeter bana” with the Complainant’s AXESS trademark does not eliminate the visual and conceptual identity with the Complainant’s AXESS trademark.
The Complainant also refers to SABEL/PUMA Case of European Court of Justice (C-251/95 of November 11, 1997) to state that the determination of existence of the likelihood of confusion shall be made by comparing the trademarks by making an overall assessment of the visual and conceptual similarities between the marks.
(ii). Rights or Legitimate Interests
The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name since the Respondent has no registered trademark for “axess” or “axessyeterbana” phrases. Further, the Respondent is not a licensee of the Complainant and has not a permission to use the AXESS trademark or “axess yeter bana” slogan of the Complainant.
The Complainant further states that the disputed domain name is not a mark by which the Respondent is commonly known or registered by the Respondent.
(iii). Registered and Used in Bad Faith
To prove that the Respondent acts in bad faith, the Complainant alleges that:
The registration of a domain name under a false identity is an element proving that the domain name was registered or maintained in bad faith and refers to City of Hamina v. Paragon International Projects Ltd., WIPO Case No. D2001-0001;
The Respondent has intentionally attempt to attract, for commercial gain, Internet users to its own website, by creating likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of service on the Respondent’s website or location by showing the confusing similarity between the disputed domain name and the Complainant’s trademarks and the previous content of the website which contains the Complainant’s trademarks and advertising materials;
The disputed domain name was registered primarily for the purpose of selling it by showing that there was at some point a suggestion on the web page as following: “This web site is not an official web site (for now). All of the materials such as pictures, logos, trademarks and etc. belong to its rightful owners. We are open to offers.” The Complainant refers to Wagamama Limited v. Transure Entreprise Ltd., WIPO Case No. D2008-1200 to prove its arguments;
The Complainant and all products/services are well-known and it is difficult to imagine that the Respondent would not have been aware of the AXESS mark and its commercial slogan “axess yeter bana” when it registered the disputed domain name;
The Respondent registered the disputed domain name in order to prevent the owner of the mark from reflecting the mark in corresponding domain name and from offering online services through said domain name.. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint where no Response has been submitted.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) The disputed domain name is identical or confusingly similar to the trademark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the Complainant has the burden of proving that all these requirements are fulfilled. A. Identical or Confusingly Similar
Based on the evidence submitted by the Complainant concerning its various trademark registrations for the AXESS marks, the Panel finds that the Complainant has successfully proven its earlier rights in the AXESS marks. The Complainant has also proven ownership of the domain name . The disputed domain name contains the AXESS mark which is a registered trademark of the Complainant. The disputed domain name consists of the Complainant’s trademark together with two descriptive words “yeter” and “bana”.
Concerning confusing similarity, The Panel considers the below mentioned decisions together with the decisions stated by the Complainant:
Turkcell Iletisim Hizmetleri A.S. v. Vural Kavak,WIPO Case No. D2010-0010: “The Panel finds that the addition of the generic word “mobile” does not distinguish the Respondent’s domain name from Complainant’s trademark [...]. Furthermore the generic term, “mobile” is directly related to Complainant’s business and the addition of generic word is especially confusing where the generic words bear an obvious relationship to Complainant’s business.”
Greenbrier IA, Inc. v. Moniker Privacy Services/Jim Lyons,WIPO Case No. D2010-0017: “The disputed domain name incorporates the entirety of Complainant’s mark. The addition of “hotel” in the disputed domain name compounds rather than dispels the confusion, because Complainant provides resort hotel services, among other things, in connection with the GREENBRIER mark.”
Zodiac Marine & Pool, Avon Inflatables Ltd and Zodiac of North America Inc. v. Mr. Tim Green,WIPO Case No. D2010-0024: “Complainant’s trademark is the term AVON. The disputed domain name is comprised of Complainant’s trademark AVON and the generic term “marine”. The combination of a descriptive or generic term with a well-known trademark does not overcome confusing similarity.”
Doğan Gazetecilik Anonim Şirketi v. Jason Statham, WIPO Case No. D2010-0164: “The disputed domain name comprises the word “posta” which is identical to the distinctive part of the Complainant’s trademarks. The additional word “gazetesi” used in the disputed domain name is, in the Turkish language, only a generic term and means “newspaper”. The Panel finds that simply adding a generic term like “gazetesi” does not ameliorate the likelihood of confusion and does not make the disputed domain name distinctive as compared to the Complainant’s trademarks. The Panel is even of the opinion that by using the additional word “gazetesi” in the disputed domain name, the likelihood of confusion with the Complainant’s trademarks is increased as the word “gazetesi” clearly refers to the goods and services protected by the Complainant’s trademarks.”
In the light of the above mentioned decisions the Panel concludes that although the disputed domain name includes additional words to the Complainant’s mark, the additional words are not sufficient to distinguish the disputed domain name from the Complainant’s mark. On the contrary, the additional words enhance the confusing similarity since the phrase arises from the merge of the words is the well-known slogan of the Complainant. Thus the Panel finds that the disputed domain name is identical or confusingly similar to trademarks in which the Complainant has rights.
The Panel therefore finds the Complainant has fulfilled the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy states that, a respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [the respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [the respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [the respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The burden of proof rests with the Complainant who must demonstrate that the Respondent lacks rights or legitimate interests in the disputed domain name. Once the Complainant has made out a prima facie case in this regard, then the Respondent may, by, inter alia, showing one of the above elements, demonstrate rights or legitimate interests in the disputed domain name.
The Panel finds that the Complainant has proved its rights on the AXESS marks, the earliest of which dates back to 2001, and sufficiently demonstrated the fact that the Respondent does not have any rights or legitimate interests in the “axess” phrase.
The Panel also finds that the Respondent has not provided evidence of the circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name. Thus, the Panel finds that the Respondent has failed to furnish evidence to show that it has rights or legitimate interests in the disputed domain name.
In this sense, based on the content of the case file, the Panel holds that the use of the AXESS mark has not been authorized or licensed to the Respondent, the disputed domain name does not obviously correspond to the Respondent’s name or a trade name by which it has become commonly known and the Respondent cannot be regarded as using the disputed domain name in connection with a bona fide offering of goods or services. Although the Respondent’s name appears as “Axess Yeterbana” on the registration information it is clear that the name is a fake name. Additionally, in the Panel’s view the Respondent has made no legitimate noncommercial or fair use of the disputed domain name.
Hence, as the Respondent has not rebutted the Complainant’s prima facie case, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy enumerates four, non-inclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site 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 web site or location or of a product or service on respondent’s web site or location.
By consideration of the foregoing, the Panel is of the opinion that due to the well-known status of the Complainant’s marks and extensive usage of such marks, the Respondent, who appears to be located in Turkey, cannot be deemed to be unaware of their existence. Moreover, even the Respondent mentioned in its website the following “All of the materials such as pictures, logos, trademarks and etc. belong to its rightful owners.” Thus it is totally clear to the Panel that the Respondent is aware of Complainant’s trademarks and slogans. Even the advertising material of the Complainant used on the website under the disputed domain name included the “axess yeter bana” slogan of the Complainant.
Additionally, the Respondent clearly stated that it is open to offers, on the previous content of the website. Currently the website contains “domain sale” phrase under the disputed domain name. Thus, in the Panel’s view, it is indisputable that the Respondent is acting to have commercial gain, by creating likelihood of confusion and disrupting the business of the Complainant.
The Panel finds, taking all of the facts and circumstances of the case into account, that that the disputed domain name was registered and used in bad faith within the requirements of paragraph 4(a)(iii) of the Policy and that the Respondent registered and used the disputed domain name with the intent to target the Complainant’s marks.(see, e.g., Eveready Battery Company Inc. v. Oscar Haynes,WIPO Case No. D2003-1005, Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, and Intel Corporation v. the Pentium Group, WIPO Case No. D2009-0273)
In light of the evidence submitted, the Panel is of the opinion that the Respondent has registered and used the disputed domain name in order to prevent the owner of the trademark from reflecting the marks in corresponding domain name and intentionally attempted to attract Internet users to its websites for commercial gain by benefitting from the Complainant’s reputation.
The Panel is therefore convinced that the disputed domain name has been registered and is being used in bad faith and that the Complainant has fulfilled the third element under 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.
Selma Ünlü
Sole Panelist
Dated: January 31, 2011
Full & Egal Universal Law Academy