The Complainant is Türkiye Garanti Bankası Anonim Şirketi of Istanbul, Turkey, represented by Dericioğlu & Yaşar Law Office, Turkey.
The Respondent is Evreka Danismanlik, cankaya ANKARA of Ankara, Turkey. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 11, 2013. On March 11, 2013, the Center transmitted by email to the registrar FBS Inc. a request for registrar verification in connection with the disputed domain name. On March 12, 2013, the registrar FBS Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On March 12, 2013, FBS Inc. confirmed that the disputed domain name was registered with it and that it had been locked. However, on March 27, 2013, it came to the attention of the Center that the disputed domain name was transferred to another registrar, namely GoD, LLC (the “Registrar”). On March 28, 2013, GoD, LLC, confirmed that the disputed domain name is registered with it and that it has been transferred to GoD LLC on March 24, 2013. Moreover, GoD LLC has confirmed that “the respondent, Evreka Danismanlik is not the registrant of the domain name. The registrant of the domain name is cankaya ANKARA” and has provided the full contact details. On April 5, 2013, the Center requested that the Complainant file a short amendment to the Complaint, listing the correct Registrar and registrant (respondent) and making all necessary amendments in this regard. The Complainant filed such amended Complaint on April 5, 2013.
The Complaint has been submitted in English and listed FBS Inc. as the registrar of the disputed domain name. On March 11, 2013, FBS Inc. confirmed that the disputed domain name was registered with it and that Turkish was the language of the registration agreement as used by the registrant. However, on March 28, 2013, GoD, LLC confirmed to the Center that the disputed domain name was transferred to it on March 24, 2013, and that the language of the registration agreement used by the registrant was English.
On April 5, 2013, in light of the particular circumstances of this administrative proceeding and with the aim to ensure the Respondent’s right to due process, the Center transmitted the language of the proceedings document to the parties in both English and Turkish. On April 5, 2013, the Complainant requested English to be the language of the proceedings. The Respondent did not submit its comments.
The Center verified that the Complaint together with the amended 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 April 11, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 1, 2013. The Response was filed with the Center on April 30, 2013.
The Center appointed Gökhan Gökçe as the sole panelist in this matter on May 13, 2013. 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, Türkiye Garanti Bankası A.Ş. is Turkey’s second largest private bank established in 1946 and having a total asset of USD 78 billion.
The Complainant is the owner of the following trademarks registered before the Turkish Patent Institute:
- GARANTI (No. 2008 05913) registered on January 25, 2010 (protected from February 1, 2008);
- GARANTI + Design (No. 2000 10404) registered on July 5, 2001 (protected from May 30, 2010);
- I-GARANTI (No. 2012 05724) registered on February 13, 2013 (protected from January 18, 2012);
- WWW.GARANTI.COM.TR (No. 2000 10408) registered on July 30, 2001 (protected from May 30, 2010).
The Complainant is also the owner of several domain names which incorporate its various trademarks, such as , , , , and .
The Respondent of the disputed domain name has been identified by the concerned Registrar as cankaya ANKARA. The Respondent registered the disputed domain name on April 24, 2012. At the time of this Decision, this Panel notes that the disputed domain name does not resolve to an active website. 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 listed under paragraph 4(a) of the Policy. Identical or Confusingly Similar
The Complainant states that it is Turkey’s second largest private bank which has been operating since 1946. The Complainant further asserts that it is a universal bank well recognized under the “Garanti” name around the world and that it has 9 million customers and nearly 17,000 employees.
The Complainant asserts that the disputed domain name is confusingly similar to its registered trademark as it incorporates the Complainant’s trademark GARANTI as a whole with the addition of a letter “i” and further states that the “.com” extension does not remove the similarity between the disputed domain name and the Complainant’s trademark. Rights or Legitimate Interests
The Complainant asserts that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, the Respondent is not commonly known by the disputed domain name and is not using the disputed domain name as a legal name of its business, and the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
The Complainant asserts that it has been actively using the domain name and since 1996 and states that the term “garanti” is its original trademark with distinctiveness which has identified the Complainant due to its widespread use and promotion activities. The Complainant further asserts that the Respondent has no rights or legitimate interests in the disputed domain name as the Respondent has no trademark registration or application to support the disputed domain name and has no personal rights in the name “garanti” or “i-garanti”.
The Complainant submits it has never granted the Respondent a license or permission to use the mark GARANTI.
The Complainant further contends that these factors all indicate the Respondent’s motive in registering the disputed domain name is merely to take unfair advantage of the Complainant’s trademark. Registered and Used in Bad Faith
The Complainant contends that it has become a symbol of quality in the banking sector and it has become well known and recognized in the banking sector throughout Turkey. It is clear that the disputed domain name, which is almost identical with the Complainant’s trademarks, has been registered by the Respondent to gain improper benefit from the Complainant’s reputation. Furthermore, the Complainant submits that the Respondent undoubtedly knew the disputed domain name was identical to the Complainant’s trademark at the time of registration.
The Complainant notes that the disputed domain name has not been actively used since registration and that the Respondent is a passive holder. The Complainant claims that the disputed domain name was registered by the Respondent in bad faith, knowing that it is registering the identical mark of the Complainant as a domain name. B. Respondent
The Respondent states that it operates as a provider of legal services, which is different from the Complainant’s operation field. Although it does not have intellectual property rights, it registered the disputed domain name as it plans to provide legal services in the future..
The Respondent contends that in order to transfer a domain name under the UDRP one must prove bad faith registration and use and that the Complainant’s bad faith claims are not met in this case.
The Respondent asserts that “garanti” means “warranty” which stands for trust and is a descriptive word used by everyone in the business world and is not distinctive. The Respondent notes that there are over 500 trademark registrations in the name of almost 100 registrants in the Turkish Patent Institute database.
The Respondent claims that the letter “i” in the disputed domain name stands for “intelligent” and that the disputed domain name registration is not in bad faith. Therefore, the Respondent requests the denial of the Complaint. 6. Discussion and Findings 6.1. Language of the Proceedings
Under paragraph 11 of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceedings shall be the language of the Registration Agreement. In the present case, as confirmed by the current Registrar of the disputed domain name, the language of the Registration Agreement is English.
The Complainant submitted its Complaint in English and requested the language of the proceedings to be English. The Respondent submitted its response in Turkish, however did not object to the language of the Complaint and did not request Turkish to be the language of the proceedings. There is no agreement between the parties with respect to the language of the proceedings and therefore the Panel has decided English to be the language of the proceedings.
The Panel is of the opinion that as both parties are Turkish, there is no necessity for the translation of the response by the Respondent. Therefore, the Panel has decided to 1) accept the Respondent’s filing in Turkish; and 2) issue a decision in English. 6.2. Substantive Elements of the Policy A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to demonstrate that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Panel is satisfied that the Complainant is the owner of the trademarks GARANTI, GARANTI + Design, WWW.GARANTI.COM.TR and I-GARANTI as evidenced in the annexes to the Complaint.
While irrelevant under the first element, the Panel notes that the Complainant has registered a number of domain names incorporating its trademark GARANTI. The Respondent registered on July 9, 1997, and other domain names owned and used by the Complainant are , , , , .
This Panel notes that the Complainant has also registered the trademark WWW.GARANTI.COM.TR with the Turkish Patent Institute on July 30, 2001 in Nice classes 9, 35, 36, 38 and 42. Furthermore, the Complainant states that the Turkish Patent Institute states that “” is a country code top-level domain used by persons and legal entities for commercial purposes and official documentation is required which must certify that the domain name applied for is the applicants registered trademark or corporate name. Therefore the procedure is quite stringent and demonstrates that as the Complainant is the registered owner of the referenced “” domain name it correspondingly lends support to the strength of the mark.
Further, the Complainant’s trademark I-GARANTI, which was registered with the Turkish Patent Institute on February 13, 2013, and protected from January 18, 2012, predates the registration of the disputed domain name. It is clear that the only differences between the disputed domain name and the Complainant’s registered trademark I-GARANTI is the generic top-level domain extension “.com”.
In relation to the disputed domain name, the Panel finds the addition of the “.com” extension is irrelevant when determining whether a disputed domain name is confusingly similar to the Complainant's trademark, PRL USA Holdings, Inc. v. Spiral Matrix,WIPO Case No. D2009-0009. It has been stated in several decisions by other UDRP panels that the incorporation of a trademark in its entirety into a domain name may be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark, Hürriyet Gazetecilik ve Matbaacılık Anonim Şirketi v. Moniker Privacy Services / Kemal Demircioglu, WIPO Case No. D2010-1941, Bayerische Motoren Werke AG, Sauber Motorsport AG v. Petaluma Auto Works,WIPO Case No. D2005-0941. The Panel recognizes the Complainant’s trademark rights and concludes that the disputed domain name is identical and confusingly similar with the Complainant’s I-GARANTI and GARANTI trademarks, respectively.
The Panel finds that the requirements of paragraph 4(a)(i) of the Policy are fulfilled. Consequently, the Panel finds that the Complainant has met 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. It is established in numerous UDRP decisions that it is difficult for a complainant to prove a negative and for that reason the complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests in a domain name, Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110. Once the complainant makes a prima facie case, the burden of demonstrating rights or legitimate interests in the disputed domain name shifts to the respondent. The Policy at paragraph 4(c) provides various examples in which a respondent may demonstrate rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
Pursuant to paragraph 4(c) of the Policy, the Respondent may exhibit that it has rights or legitimate interests in the disputed domain name by showing one or more of the following circumstances:
(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Thus, if the Respondent proves any of these elements or indeed anything else that shows it has a right or interest in the disputed domain name, the Complainant will have failed to discharge its onus and the Complaint will be dismissed.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name; the Respondent has no supporting trademark registration and has neither association to the Complainant, nor is commonly known by the disputed domain name. The Complainant has not granted the Respondent a license or permission to use its trademarks GARANTI and I-GARANTI or to apply for or use a domain name incorporating these trademarks. The Complainant alleges that the Respondent’s motive in registering the disputed domain name is merely to take unfair advantage of the Complainant.
Furthermore, the Respondent is not making use of the disputed domain name in connection with a bona fide offering of goods or services. It has been over one year since the Respondent registered the disputed domain name and it has not made active use of the disputed domain name to provide legal services, nor has it made any other active use of the disputed domain name. The Respondent claims that it intends to use the website for their operations as a law consultancy service provider. However it has failed to provide any evidence of preparations for intended use. The Respondent has failed to provide evidence of “demonstrable preparations” to use the disputed domain name for a bona fide offering of goods or services, which suggests there is no such intention, Helen Fielding v. Anthony Corbert aka Anthony Corbett,WIPO Case No. D2000-1000. Aside from the Respondent’s statement there is no evidence of such intended use and the Panel does not accept that this alone provides sufficient evidence to draw the conclusion that the disputed domain name will in fact be used for a bona fide offering of goods or services as the Respondent claims.
Furthermore, the Respondent has not submitted any evidence, which may suggest that it (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights.
As discussed, there is no evidence in the case record that the Respondent has made any effort or has any intention to use the disputed domain name for any purpose or legitimate activity consistent with having rights or legitimate interests. Therefore, the Panel infers that there is no intention of legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain or to misleadingly divert consumers.
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 rights or legitimate interests in the disputed domain name. The Respondent was unable to demonstrate rights or legitimate interests 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 4(a)(ii) of the Policy are fulfilled and consequently the Panel finds in favor of the Complainant on the second element of the Policy. C. Registered and Used in Bad Faith
Finally, the Complainant must show that the disputed domain name has been registered and is being used in bad faith under paragraph 4(a)(iii) of the Policy.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that, if found by a 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 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; 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 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.
The Complainant’s trademark GARANTI + Design was registered and was being used long before the Respondent’s registration of the disputed domain name and has become well known in Turkey.
Despite the fact that the Respondent has stated it had intentions to use the disputed domain name in connection with legal services; there is no evidence to support its contentions. Further, as a legal service provider the Respondent in this Panel’s view should have made research for possible trademark infringements before registering the disputed domain name. Under these circumstances, the Panel is of the opinion that the registration of the disputed domain name was in bad faith.
Further, the Respondent has not denied knowledge of the Complainant’s trademarks. The Panel, in accordance with previous decisions issued under the Policy, is of the opinion that actual knowledge of the Complainant’s trademark at the time of registration of the disputed domain name is to be considered as an inference of bad faith. Especially, the Panel notes that the Respondent is based in Turkey where the trademarks are registered and are well known. Parfums Christian Dior v. Javier Garcia Quintas and C,WIPO Case No. D2000-0226.
As in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 after examining all circumstances surrounding the registration and use of the disputed domain name, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith. Accordingly, the Panel finds in favor of the Complainant on the third element of the Policy. 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.
Gökhan Gökçe
Sole Panelist
Date: June 3, 2013
Full & Egal Universal Law Academy