The Complainant is Akbank Turk A.S. of Istanbul, Turkey, represented by Istanbul Patent & Trademark Consultancy Ltd., Turkey.
The Respondent is Mr. Veysel Harman of Istanbul, Turkey. 2. The Domain Names and Registrar
The disputed domain names , , and are registered with FBS Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 20, 2014. On August 20, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 21, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On August 29, 2014, the Center transmitted the language of the proceedings document to the parties in both English and Turkish. On September 1, 2014, the Complainant requested English to be the language of the proceedings. The Respondent did not submit its comments.
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 both in English and Turkish, and the proceedings commenced on September 8, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 28, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 29, 2014.
The Center appointed Emre Kerim Yardimci as the sole panelist in this matter on October 8, 2014. 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 is a leading Turkish bank offering a wide range of banking products to individuals and businesses
The Complainant has been using the Trademark AKBANK continuously since 1947 and holds a considerable number of trade and service marks registrations in Turkey and in other jurisdictions in addition to International registrations under the Madrid Protocol. The oldest of the Turkish registrations dates back to an application date of 1996.
The Complainant has been operating online banking services with AKBANK trademark under the domain name and has been the owner of the domain name since December 9, 1996, which resolves to the main website of the Complainant under .
The disputed domain names were created on July 21, 2014. According to the current record, the Respondent is a physical person of Turkish origin domiciled in Istanbul. 5. Parties’ Contentions A. Complainant
The Complainant requests the transfer of the disputed domain names.
The Complainant asserts that the disputed domain names are identical or at least confusingly similar to the Complainant’s trademark AKBANK and the addition of the generic words “direkt”, “direktplus” and “plus” are not sufficient to distinguish the domain names from the mark but on the contrary such additional words reinforce the association of the domain names with the Complainant’s mark.
The Complainant considers that the Respondent has no rights or legitimate interests in respect of the disputed domain names, mainly because the Complainant has neither licensed nor otherwise authorized the Respondent to use its marks or to apply for or use any domain name incorporating the trademark AKBANK.
Finally, in addressing the question of registration and use of the disputed domain names in bad faith, the Complainant observes that the Respondent could not ignore the Complainant's well-known trademarks. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Language of the Proceeding
Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
It is established that the language of the Registration Agreement for the disputed domain names is Turkish.
The Complainant, upon receiving a notification from the Center that the language of the Registration Agreement was Turkish, submitted a request for this dispute to proceed in English. The Center made a preliminary determination to accept the Complaint filed in English and accept a response in either English or Turkish, subject to a determination by the Panel pursuant to paragraph 11(a) of Rules.
The Center has throughout the proceedings issued its case-related communications, including the Center’s Complaint notification documents, in both Turkish and English. The Respondent has chosen not to participate in the proceeding, and has been notified of its default.
The Panel notes the following passage from the Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004 “The Panel's discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.”
In accordance with the above, in deciding the language of the proceeding, the Panel takes the following into consideration:
a) The Respondent did not object to the Complainant’s request that English be the language of the proceeding.
b) The Respondent has been given a fair chance to object to the Complainant’s choice of English as the language of the proceeding, but has not done so, nor has it participated in the proceeding generally.
c) The Respondent has been given a possibility to submit a Response in Turkish.
Upon considering the above, the Panel concludes, according to the Rules, paragraph 11(a), that there is no prejudice or unfairness to the Respondent for these proceedings to be conducted in English and for its decision to be rendered in English. Accordingly, the Panel determined that the language of this administrative proceeding be English. B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant owns numerous Turkish trademark registrations as well as international and foreign registrations, including Turkish Registration No. 96/009204 for the mark AKBANK, registered on June 24, 1996; International Registration No. 750014 for the mark AKBANK, registered October 19, 2000 covering not less than 40 countries and several national registrations dating back as early as 2003.
The disputed domain names , , , integrate the Complainant’s AKBANK trademark in its entirety, as their dominant element.
The disputed domain names differ from the registered AKBANK trademark by the additional descriptive words “direkt” and/or “plus”, and the generic Top-Level Domains (“gTLD”) “.com”, “.net” and “.org”.
The words “direkt” and/or “plus” do not serve to sufficiently distinguish or differentiate the disputed domain names from the Complainant's trademark, as they are also descriptive terms that relate to financial services offered by the Complainant.
Several UDRP panels have ruled that the mere addition of a descriptive element does not sufficiently differentiate the domain name from the registered trademark. Moreover, it is the Panel’s view that in using such a descriptive word together with a registered trademark rather strengthens the impression that the disputed domain names are in some way connected to the Complainant’s trademark (see, e.g., Société des Produits Nestlé S.A. v. MrT LLC, WIPO Case No. D2012-1356; Allianz SE v. Roy Lee / Traffic-D,WIPO Case No. D2012-1459; Swarovski Aktiengesellschaft v. mei xudong,WIPO Case No. D2013-0150; Swarovski Aktiengesellschaft v. ‘’,WIPO Case No. D2013-0335.
As regards the gTLDs “.com”, “.net” and “.org”, these are typically disregarded under the confusing similarity test.
Consequently, the Panel finds that the Complainant has shown that the disputed domain names are all confusingly similar to a trademark in which the Complainant has rights. C. Rights or Legitimate Interests
The onus is upon the Complainant to make out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names and it is then for the Respondent to rebut this case.
The Panel accepts the Complainant's submissions that the Respondent does not appear to have been known by the disputed domain names, has not made demonstrable preparations to use the disputed domain names other than in relation to pay-per-click websites and the Respondent is not making a legitimate noncommercial use of the disputed domain names.
Previous UDRP panels have found that the mere fact that the disputed domain names resolves to a pay-per-click websites is not of itself evidence of rights or legitimate interests arising from a bona fide offering of goods or services (see for example Compart AG v. C/Vertical Axis, Inc., WIPO Case No. D2009-0462).
The Respondent has not filed a Response. It has no consent from the Complainant to register any domain name incorporating the Complainant’s trademark, it has not used the disputed domain names for a bona fide offering of goods and services given the confusing use, as discussed below, and it is not commonly known by the disputed domain names. Nor is it making noncommercial fair use of these disputed domain names.
In the Panel’s view the Complainant has made out its prima facie case under this element of the Policy and the Respondent has failed to file a Response. In the circumstances of this case, and in view of the Panel’s discussion below, the Panel finds that the second element of the Policy has been established. D. Registered and Used in Bad Faith
At the time of registration of the disputed domain names the Complainant’s trademark AKBANK was well-known trademark for a very long time at least in Turkey where both parties are located. As the Complainant submits, it is inconceivable that the Respondent would not have known of the Complainant’s mark.
Additionally, although not mentioned in the Complaint, the Complainant is using “Akbank Direkt” for Internet banking services since 2012 and it has a Turkish trademark for AKBANK DIRECT protected from February 1, 2012.
It appears from the screenshots of the underlying webpages submitted within the Complaint that all of the disputed domain names resolve to websites which provide sponsored pay-per-click links to websites associated with banking services, including links to the Complainant’s competitor’s websites. Additionally, all of the disputed domain names contain, at the bottom of each website, the Turkish wording that this domain name is for sale. The Panel also notes that at the date of this Decision, the websites at the disputed domain names are no longer available or could not be retrieved.
The Panel is persuaded that the Respondent’s registration and use of the disputed domain names for re-directing Internet users, particularly customers and potential customers of the Complainant, to companies which directly compete with the Complainant, constitutes bad faith and use. Prior UDRP decisions also support this conclusion. See E, Inc. v. Ult. Search, Inc.,WIPO Case No. D2001-1319 (“registration and use of a domain name to redirect Internet users to websites of competing organizations constitutes bad faith registration and use under the Policy.”); Netwizards, Inc. v. Spectrum Enterprises,WIPO Case No. D2000-1768 (“Respondent’s registration and continued use of the contested domain name for re-directing Internet users, i.e., particularly customers and potential customers of the Complainant from the Complainant’s web site to the web site of Bestnet, Inc., a company which directly competes with the Complainant, constitutes bad faith and use.”).
The only reason for its registrations must have been with bad faith intent to use it to exploit, for commercial gain, the Complainant’s reputation. As demonstrated above, the Respondent has used the disputed domain names for precisely that purpose (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004).
Therefore, in the view of cumulative circumstances, the Panel finds that the requirement of registration and use in bad faith is satisfied, according to the Policy, paragraph 4(a)(iii). 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 names , , and be transferred to the Complainant.
Emre Kerim Yardimci
Sole Panelist
Date: October 21, 2014
Full & Egal Universal Law Academy