Complainant is Akbank Turk A.S. of Istanbul, Turkey, represented by Istanbul Patent & Trademark Consultancy Ltd., Turkey.
Respondent is Andrei Ivanov of Saint-Petersburg, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name is registered with Topsystem, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 9, 2011. On May 9, 2011, the Center transmitted by email to Topsystem, LLC a request for registrar verification in connection with the disputed domain name. On May 18, 2011, Topsystem, LLC transmitted by email to the Center its verification response 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 Complainant on May 19, 2011, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint May 20, 2011.
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 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 23, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 12, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 21, 2011.
The Center appointed Roberto Bianchi as the sole panelist in this matter on June 24, 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
Complainant, founded in 1947, is one of the largest banks in Turkey. Besides its 715 Turkish branches, Complainant has branches in the Netherlands, Germany and Malta.
Complainant owns, inter alia, the following Turkish marks1:
AKSERVIS Registration No. 2001/11682, Registration Date June 26, 2002, Application No. 2001/11682; Application Date June 19, 2001, covering services of International Class 36; Protection Date June 19, 2011.
AK, Registration No. 180358, Registration Date January 15, 1998, Application No.1996/009195, Application Date June 24, 1996, covering services of International Class 36, Protection Date June 24, 2006;
AK (and design), Registration No. 181151, Registration Date March 20, 1998, Application No. 1996/009192, Application Date June 24, 1996, covering services of International Class 36, Protection Date June 24, 2006, and
AKBANK, Registration No. 180391, Registration Date January 19, 1998, Application No. 1996/009204, Application Date June 24, 1996, covering services of International Class 36, Protection Date June 24, 2006.
Complainant also owns an international trademark registration for AKBANK, Registration No. 750014, registered on October 19, 2000, covering services of International Class 36, for various countries (including the Russian Federation, the country of residence of Respondent).
Since December 9, 1996, Complainant had owned and used the domain name .
The disputed domain name was registered on August 25, 2010. 5. Parties’ Contentions A. Complainant
In its Complaint, Complainant contends as follows:
The disputed domain name is the combination of the AK mark and the generic Turkish word “servis”, which means “service” in English. Given that Complainant’s AKBANK and AK trademarks are well-known, the addition of descriptive terms to Complainant’s AK mark not only fails to distinguish the disputed domain name from the marks, but also reinforces the association of the disputed domain name with Complainant’s marks. In that sense, Respondent creates a likelihood of confusion in the minds of the consumers, who expect the domain name to resolve to a website owned by, operated by or affiliated with Complainant.
Respondent has made no claim that he is using the disputed domain name in connection with a bona fide offering of goods and services. Complainant has not licensed or otherwise permitted Respondent to use the mark AK or to apply for or use any domain name incorporating such trade/service mark. Respondent has no relationship with, or permission from, Complainant to use its marks. Complainant has prior rights in that trade/service mark, preceding Respondent’s registration of the disputed domain name. Respondent has no legitimate interest in using the disputed domain name in connection with AK trademarks. The only interest in registering the disputed domain name that can be imagined for a person without any connection to the AK Complainant, is to somehow create an impression of a connection with the Complainant and its trademarks.
Respondent has not been commonly known by the disputed domain name. Complainant has the right to exercise control over how its trademarks are used by third parties on the Internet. Thus, Respondent would only have a right to use the disputed domain name if the Complainant had specifically granted that right. The disputed domain name is not a mark by which Respondent is commonly known. Respondent has acquired no trademark or service mark rights and he is not commonly known as an individual, business, or other organization) by the disputed domain name. Respondent has never been licensed or granted permission from Complainant to use its mark.
Respondent is selling the domain name for USD 500, which exceeds Respondent’s out-of-pocket costs.
Respondent cannot have ignored Complainant’s AK trademarks. Complainant is well-known under its trademarks AKBANK and AK for its core business. Thus, when Respondent chose to register the disputed domain name there arises a strong indication that they intended to create an association with Complainant’s trademarks. If that was the reason for the Respondent to register such domain name, and it is difficult to imagine any other reason, they must have known the trademark AK.
Respondent’s bad faith is also shown by its use of the disputed domain name, or lack thereof. Respondent has placed no content on the site, to witch the disputed domain name resolves, that relates to a business or has been created by the Respondent, except linking it to a website trading in domain names.
As prior UDRP panels have held, the incorporation of a famous mark into a domain name, coupled with an inactive website, may be evidence of bad faith registration and use. When Respondent registered the disputed domain name, they must have known that AKBANK and AK were the well-known trademarks of Complainant.
Complainant argues that the registration and use of a domain name incorporating a famous mark is in bad faith where a respondent knew at the time of the registration that he could not make any actual use of the registered domain name without infringing on the trademark owner’s rights. Complainant’s trademarks AKBANK and AK are internationally well-known marks.
Respondent has displayed no evidence whatsoever of any good faith use of, or intention to use, the disputed domain name . Taking into account all these considerations, it is not possible to imagine any bona fide use of the disputed domain name by Respondent that would not be illegitimate, or would not be infringement of Complainant’s well-known marks or an act of unfair competition and violation of consumer protection legislation. Accordingly, Complainant argues that Respondent has registered and used the disputed domain names in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions, and is in default. 6. Discussion and Findings
Under Policy, paragraph 4(a), a complainant must make out its case that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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. A. Identical or Confusingly Similar
Complainant submitted a detailed list of trademark registrations as well as numerous registration certificates from Turkey and several other countries. Thus, it has evidenced that its trademark rights in the AKSERVIS, AK and AKBANK marks, covering financial services of International Class 36.
The Panel finds that the disputed domain name is identical to the AKSERVIS mark of Complainant. As to the AK and AKBANK marks, the disputed domain name consists of the AK mark plus the generic term “servis”, the Turkish word for “service”. It is well established that the addition in a domain name of a generic term and a gTLD such as “.com” to a mark does nothing to distinguish one identifier from the other. Moreover, since a bank typically provides services to its customers, the addition of the term “servis” rather increases the risk of confusion with Complainant’s AKBANK mark. Accordingly, the Panel finds that the disputed domain name is identical to the AKSERVIS mark, and confusingly similar to Complainant’s AK and AK BANK marks. The first element of the Policy is thus met. B. Rights or Legitimate Interests
Complainant contends that: Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services; that Complainant has not licensed or otherwise permitted Respondent to use its AK mark or to apply for or use any domain name incorporating such mark; that Respondent has no relationship to Complainant or permission from Complainant to use its marks; that Complainant has prior rights in that trade/service mark, preceding Respondent’s registration of the disputed domain name; that Respondent’s only interest in registering the disputed domain name is to somehow create a connection with the Complainant and its trademarks; that Respondent is not and has not been commonly known (as an individual, business, or other organization) by the domain name; and that Respondent would only have a right to the disputed domain name if the Complainant had specifically granted it.
The Panel finds that considered together, these contentions and supporting evidence provided with the Complaint amount to a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name. It is the consensus view of UDRP panels that once a complainant makes out a prima facie case, the respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
Since Respondent is in default and has not submitted any comments or evidence in its own favor, the Panel concludes that Respondent lacks any rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Panel considers that the AK mark, owned by Complainant, and identifying Complainant’s services, is well-known in Turkey and elsewhere in respect of providers of financial services. Previous panels found that the AKBANK mark is long established and widely known. See Akbank v. Dr. Mehmet Kahveci,WIPO Case No. D2001-1488, regarding and Akbank v. Gurlercafe, WIPO Case No. D2001-1489, regarding . Further, Complainant has shown that its registration of its AK marks precedes by several years the registration of the disputed domain name by Respondent. Moreover, Complainant has shown that the Akbank was the subject of a Harvard Case Study in the Case Program of the John F. Kennedy School of Government, in 2010. Finally, Respondent is in default and has not denied that he knew of Complainant, its AK marks and services at the time of registering the disputed domain name. The Panel concludes that Respondent knew or must have known of Complainant, its AK marks and financial services at the time of registration.
Complainant has also shown that Respondent offered the disputed domain name for sale at USD 500 on a website trading in domain names, and that the disputed domain name is not used in any other manner or for any other purpose. The Panel believes that these facts support a finding of bad faith registration pursuant to Policy paragraph 4(b)(i). (“[C]ircumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name.”)
On July 5, 2011, the Panel tried to connect its browser to the website at . This resulted in neither a connection to an active website nor in an error message. Since there is no evidence of any other use of the domain name, and having in mind that Respondent is in default and failed to submit any element in its own favor, the Panel believes that this is a case where inaction amounts to use in bad faith, as depicted in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
Accordingly, the third element of the Policy is also met. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Roberto Bianchi
Sole Panelist
Dated: July 5, 2011
1 As confirmed by the Panel in its visit of July 5, 2011, to the online trademark database of the Turkish Patent Institute, available at .
Full & Egal Universal Law Academy