The Claimant is AKBANK TURK A.S of Istanbul, Turkey, represented by Istanbul Patent & Trademark Consultancy Ltd., Turkey.
The Respondent is Mehmet Ali of Ankara, Turkey. 2. Domain Name
The dispute concerns the following Domain Name: . 3. Procedural History
The Request was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 5, 2011. On August 5, 2011, the Center transmitted by email to SWITCH, the “.ch” and “.li” registry, a request for verification in connection with the disputed domain name. On August 8, 2011, SWITCH transmitted by email to the Center its verification response confirming that the Respondent is listed as the holder of the Domain Name and providing the relevant contact details. On August 10, 2011, the Center notified the Claimant that its Request was administratively deficient, and invited it to amend its Request within five calendar days. The Claimant filed an amendment to the Request on August 15, 2011. The Center verified that the Request, together with the amendment to the Request, satisfied the formal requirements of the Rules of procedure for dispute resolution proceedings for “.ch” and “.li” domain names (the “Rules of Procedure”), adopted by SWITCH, on March 1, 2004.
In accordance with the Rules of Procedure, paragraph 14, the Center formally notified the Respondent of the Request, and the Dispute resolution proceedings commenced on August 18, 2011. In accordance with the Rules of Procedure, paragraph 15(a), the due date for Response was September 7, 2011.
The Respondent has neither filed a Response nor expressed his readiness to participate in Conciliation in accordance with paragraph 15(d) of the Rules of Procedure.
On September 9, 2011 the Center notified the Claimant accordingly, who on the same date made an application for the continuation of the Dispute resolution proceedings in accordance with paragraph 19 of the Rules of procedure and paid the required fees.
On September 15, 2011 the Center appointed Dr. Philippe Gilliéron as Expert in this case. The Expert finds that it was properly appointed. In accordance with Rules of Procedure, paragraph 4, the above Expert has declared his independence of the parties. 3. Factual Background
The Claimant is a Turkish banking establishment that conducts overseas operations through its subsidiaries in the Netherlands, Germany and Dubai, along with a branch in Malta. The Claimant has more than 15,000 employees in Turkey. As of the end of 2010, it reported a consolidated net profit of TL 3,010 million (approximately USD 1,958 million) and total consolidated assets of TL 120,070 million (approximately USD 78,089 million).
The Claimant has numerous registered trademarks on a worldwide basis, in particular the IR verbal trademark AKBANK n° 750014, which is protected in Switzerland under class 36 of the Nice classification for financial services since October 19, 2000.
The term AKBANK also is the trade name of the Claimant, as registered in Turkey.
The Claimant carries out its activities online under the domain name since December 9, 1996. 4. Parties’ Contentions A. Claimant
The Claimant alleges that is has a right in a distinctive sign under the law of Switzerland, and in particular refers to the IR verbal trademark AKBANK n° 750014, which is protected in Switzerland under class 36 of the Nice classification for financial services since October 19, 2000.
It affirms that the disputed domain name is identical to its trademark, and creates a likelihood of confusion among the public.
The Claimant then asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Claimant asserts the Respondent has made no claim that it would be using the Domain Name in connection with a bona fide offering of goods or services, and is not commonly known under that name. Furthermore, the Claimant has neither licensed nor authorized the Respondent to use its trademark.
The Claimant finally states that the Respondent registered and is using the Domain Name in bad faith. The Respondent would have registered the Domain Name primarily for the purpose of selling to the Claimant for valuable consideration in excess of the Domain Name registrant’s out of pocket costs. It would also have prevented the Claimant to reflect the mark in corresponding Domain Name. B. Respondent
The Respondent did not submit any Response. 5. Discussion and Findings
According to the Rules of Procedure, paragraph 24, “[t]he Expert shall grant the request if the registration or use of the domain name constitutes a clear infringement of a right in a distinctive domain sign which the Claimant owns under the law of Switzerland or Liechtenstein” (litera c). Litera d of the same further rules that: “[i]n particular, a clear infringement of an intellectual property right exists when:
i. both the existence and the infringement of the claimed Right in a distinctive sign clearly result from the wording of the law or from an acknowledged interpretation of the law and from the presented facts and are proven by the evidence submitted; and
ii. the Respondent has not conclusively pleaded and proven any relevant grounds for defence; and
iii. the infringement of the right justifies the transfer or deletion of the domain name, depending on the remedy requested in request.”
It is to be pointed out that, in its Request, the Claimant hardly refers to the law of Switzerland, in spite of the clear rule stated in the Rules of Procedure, paragraph 24, and rather refers to decisions that have been rendered under the Uniform Domain Name Dispute Resolution Policy. Considering the Rules of Procedure, paragraph 24, the Expert is of the opinion that such references are irrelevant as to the Domain Name Dispute Resolution Service for .ch, for which Swiss Law shall be the only relevant criterion.
It furthermore is to be pointed out that the exchange of emails that has occurred between the parties has only been filed in Turkish, and that the Claimant has not deemed it appropriate to translate them in English. Absent any such translation, the Expert is unwilling to take the Claimant’s explanations as to this exchange of emails for granted. A. The Claimant has a right in a distinctive sign
Unlike the situation prevailing under the Uniform Domain Name Dispute Resolution Policy, it is not enough for a claimant under the Domain Name Dispute Resolution Service for .ch to demonstrate that it owns a trademark in whatever country to meet the requirements of the Rules of Procedure; rather, claimant has to prove that it has a right in a distinctive sign in Switzerland.
To that regard, the fact that Claimant owns numerous trademarks all over the world is irrelevant under the Rules of Procedure.
The Claimant has however proved to be the holder of the IR verbal trademark AKBANK n° 750014, which is protected in Switzerland under class 36 of the Nice classification for financial services since October 19, 2000. As such, it undoubtedly has a right in a distinctive sign in Switzerland. B. The Respondent has not conclusively pleaded and proven any relevant grounds for defense
The Respondent did not provide a Response and, as such, has not conclusively pleaded and proven any relevant grounds for defense. C. The infringement of the right justifies the transfer or deletion of the domain name
Under Swiss Law, a distinctive sign can be protected under different legal regimes: the Swiss Trademark Act, the Swiss Code of Obligations as to trade names, the Swiss Unfair Competition Act as well as the Swiss Civil Code with regards to publicity rights.
Invited by the Center to provide further arguments with regards to the infringement of a distinctive sign in Switzerland in compliance with the Rules of Procedure, paragraph 24, the Claimant has provided little further legal explanations as to the reasons why there would be a clear infringement of its distinctive sign in Switzerland.
In substance, the Claimant, referring toWIPO Case No., DCH2010-0002, République et Canton du Valais v. Julen & Schnidrig Engineering , merely invokes the application of Article 29.2 of the Swiss Civil Code, as well as the one of Articles 2 and 3 litera d of the Swiss Unfair Competition Act.
It is to be pointed out thatWIPO Case No. DCH2010-0002, République et Canton du Valais v. Julen & Schnidrig Engineering, the only “.ch” case to which the Claimant refers, dealt with a complete different set of circumstances. The concerned public entity obviously had no trademark and, being well-known in Switzerland, convincingly argued its case based upon Article 29.2 of the Swiss Civil Code and Articles 2 and 3 litera d of the Swiss Unfair Competition Act.
Such is not the case here. While the Claimant argues that AKBANK is a well-known trademark and refers to Article 6bis of the Paris Convention and Article 16 of the TRIPS Agreement (whose direct application is doubtful), it does neither allege any fact nor prove that the term “AKBANK” would be used in Switzerland or known among the Swiss public, which the Expert finds is the only relevant fact to be taken into account.
As a result, the Expert has insufficient information to assess whether AKBANK would be a well-known trademark in Switzerland. Furthermore, and for the same reasons, Claimant did not establish that the term AKBANK would have acquired distinctiveness in Switzerland, and would refer to the Claimant in the Swiss public’s mind absent any such use (see Gilliéron Philippe, Les divers régimes de protection des signes distinctifs et leurs rapports avec le droit des marques, Bern 2000, N 11, at. 47 et seq. and references quoted; Joller Gallus, Die Verwechslungsgefahr im Kennzeichenrecht, Bern 2000, at 297).
Based upon what precedes, the Expert considers that it has insufficient information to substantively assess whether there has been any clear infringement of Article 29.2 of the Swiss Civil Code or Articles 2 and 3 litera d of the Swiss Unfair Competition Act.
Absent any further explanations and legal reasoning regarding Swiss Law, the Expert is of the opinion that it is not in a position to asses the substantive merits of the case. The Claimant appears to have mistakenly based its Request upon the criteria foreseen under the Uniform Domain Name Dispute Resolution Policy, and the filed claim is fatally deficient in that respect. The Expert is simply not in a position to decide on the substantive merits of a Request which appears to have been pled by the Claimant under the wrong policy.
Arguably, it is however worth pointing out that Article 956 of the Swiss Code of Obligations, which protects Swiss trade names, would be irrelevant in the present case, as AKBANK has not been registered as a trade name in Switzerland, and that such a registration is required for Article 956 of the Swiss Code of Obligations to apply (Joller Gallus, at 256).
Left out with a potential trademark claim and the infringement of Article 13 of the Swiss Trademark Act, a provision not even referred to by the Claimant, the Expert notices that the disputed domain name is not in use. As ruled by Swiss Civil Courts, under Swiss Law, the mere registration of a domain name does not amount to a trademark infringement (sic! 2000, at 25 A).
As a result, based upon the limited arguments put forward by the Claimant and the absence of compelling legal reasoning as to a clear infringement of a right upon a distinctive sign held by the Claimant in Switzerland, the Expert has no other choice but to decline substantive consideration of the Request. 6. Expert Decision
For the above reasons, the Request as filed in these proceedings is declined.
Dr. Philippe Gilliéron
Expert
Dated: September 21, 2011
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