The Complainant is Türkiye Garanti Bankasi Anonim Sirketi of Istanbul, Turkey, represented by Dericioglu & Yasar Law Office, Turkey.
The Respondent is Mehmet Kamar, Deha Teknoloji Bilgisayar San. Tic. Ltd. Şti. of Istanbul, Turkey. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 8, 2010. On October 8, 2010, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On October 8, 2010, Tucows Inc. 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 October 14, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 3, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 4, 2010.
The Center appointed Selma Ünlü as the sole panelist in this matter on November 11, 2010. 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 evidence attached to the Complaint lays down the following:
(1) The Complainant is Turkey’s second largest private bank established in 1947 and having a total asset size of USD 78 billion. It renders banking services under various trademarks containing the name “garanti” (GARANTI trademarks) which also constitutes the trade name of the Complainant as “Garanti Bankasi”.
(2) The Complainant is the registered owner of a number of GARANTI trademarks before the Turkish Patent Institute dating back to 1996 as well as the , , , and domain names registered on July 19, 2001, February 27, 1998, June 3, 2005 and June 16, 1996 respectively.
(3) As a result of its extensive and ongoing use since 1996, the Complainant asserts that such trademarks and domain names have acquired a significant priority right in the GARANTI mark, and that the GARANTI mark enjoys an outstanding, well known status in Turkey especially with respect to all kinds of banking services.
Panel’s observation of the case file reveals the following:
(1) The disputed domain name was registered in the name of the Respondent in July 2010.
(2) The Panel visited the web site to which the disputed domain name resolves and observed that the disputed domain name cannot be displayed and has no activity currently.
(3) The name, corporate address and email address details of the Respondent provided by the registrar company indicates that the Respondent is located in Turkey. 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 a trademark or a service mark in which the Complainant has rights;
(ii) The Respondents have 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 indistinguishably similar to its original well reputable GARANTİ trademarks as well as its domain names, namely , , and as the disputed domain name wholly derives from these marks and domain names. The Complainant further argues that the ”.Co” generic top level domain name suffix used in the disputed domain name is not sufficient to overcome the indistinguishably similarity and likelihood of confusion between these domain names by relying on Philip Morris USA Inc. v. Mariana Gemenitzi,WIPO Case No. D2009-1715. (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 does not have a trademark registration or application filed in his own name and he does not have any personal rights on the terms “Garanti” and “Garanti Bank”. Further, the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or any domain names consisting of such related marks. In addition to this, the Complainant claims that the Respondent is not commonly known by the disputed domain name and it was registered by the Respondent despite the knowledge on Complainant’s established rights on the GARANTI mark with the aim of taking unfair advantage of the Complainant. (iii) Registered and Used in Bad Faith
The Complainant argues that with respect to its well known status and extensive usage, the Respondent is well aware of Complainant’s GARANTI marks and the mentioned domain names as the Respondent appears to be of Turkish origin and living in Turkey as well, so he has registered the disputed domain name in bad faith for the purpose of gaining reputation over the GARANTI marks and domain names, which are owned by the Complainant and are well known by the Turkish consumers of all ages. In addition to this, the Complainant also claims that although the Respondent is the passive holder of the disputed domain name, the bad faith of the Respondent cannot be ruled out in the case and it does not remove the conditions of paragraph 4(a)(iii) of the Policy.
The Complainant further alleges that as the Complainant is a private bank and provides online banking services to most of its customers by using their IDs and passwords, if the disputed domain name is not transferred to the Complainant, this domain name can be used in order to get the private data of the Complainant’s customers covertly which reveals that the disputed domain name was registered in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions within its deadline of November 3, 2010. However, the Panel observed that the Respondent sent emails to the Center on October 12 and November 4, 2010 which contain no substantial arguments and evidence in relation to the disputed case. Therefore, the Panel has not found these emails of the Respondent relevant to its consideration during the examination of the record in this case. 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 and domain name registrations containing the GARANTI, GARANTI BANKASI and GARANTI BANK marks, the Panel finds that the Complainant has successfully proved the earlier registered rights on the GARANTI, GARANTI BANKASI and GARANTI BANK marks. Besides, as the disputed domain name wholly contains the GARANTI BANK mark which also constitutes the trade name of the Complainant and wholly derives from the Complainant’s GARANTI marks, the Panel finds the disputed domain name needs to be regarded as confusingly similar. See, e.g., Dr. Ing. H.c.F. Porsche AG v. Vasily Terkin,WIPO Case No. D2003-0888, Mejeriforeningen Danish Dairy Board v. Cykon Technology Limited, WIPO Case No. D2010-0776.
Additionally, the Panel considers that the disputed domain name is identical with Complainant’s domain names and which date back to February 27, 1998 and June 16, 1996, respectively. Furthermore, the addition of generic top level domains (gTLDs) or country code top level domains (ccTLDs) does not affect the confusing similarity or identity between the domain name and the trademarks. Therefore the suffix “.Co” is ignored as commonly accepted by former decisions (Ahmanson Land Company v. Vince Curtis, WIPO Case No. D2000-0859; Philip Morris USA Inc. v. Mariana Gemenitzi, supra; Société Nationale des Chemins de Fer Français (SNCF) v. Comdot Internet Services Private Limited. / PrivacyP,WIPO Case No. D2008-0025 and Alstom v. Yulei,WIPO Case No. D2007-0424). Accordingly, the Panel finds that the confusing similarity cannot be overcome with the use of the suffix “.co” in the disputed domain name as it bears no distinctive character.
Consequently, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark GARANTI BANK and therefore the first requirement under paragraph 4(a) of the Policy is satisfied. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy rules 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 [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 [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 [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 lays on the Complainant who must demonstrate a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. Once the Complainant has made out a prima facie case, then the Respondent may, by, inter alia, showing one of the above elements, prove rights or legitimate interests in the disputed domain name.
The Panel finds that the Complainant has proved the senior rights on the GARANTI, GARANTI BANKASI and GARANTI BANK marks, the earliest of which dates back to 1996, and sufficiently demonstrated the fact that the Respondent does not have any rights in the ”garanti”, ”garanti bankasi” and “garanti bank” terms which precede Complainant’s rights. The Panel further finds that the disputed domain name, namely has just been registered in July 2010, while Complainant’s identical domain names and date back to February 27, 1998 and June 16, 1996 respectively.
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 GARANTI, GARANTI BANKASI and GARANTI BANK marks 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.
Hence, as the rights or legitimate interests of the Respondent have not been duly proven under paragraph 4(c)(ii) of the Policy, 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 sets out 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 website 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 website or location or of a product or service on respondent’s website or location.
By consideration of the foregoing, the Panel is of the opinion that due to the well known status of Complainant’s marks and extensive usage of such marks, as well as the above mentioned domain names, the Respondent, who appears to be located in Turkey, cannot be taken to be unaware of their existence.
Based on this submission and the facts, the Panel considers that the disputed domain name was registered primarily;
i) for the purpose of getting the private data of the Complainant’s customers who commonly use its online banking services as it is obvious that the Respondent is aware of the Complainant’s marks and domain names as well as the online banking services provided from such domain names; and
ii) for the purpose of benefitting commercially from the Complainant’s reputation over the referred marks which are all known by Turkish citizens and that this constitutes taking unfair advantage of the Complainant’s marks and reputation (see, e.g., Synkem v. Synkemlab, WIPO Case No. D2010-0675).
Further, the Panel is of the opinion that it is of no matter that the disputed domain name is not active currently and the Respondent is regarded as the passive holder of it. The Panel finds, taking all of the facts and circumstances of the case into account, that this does not circumvent a finding that the disputed domain name is in use within the requirements of paragraph 4(a)(iii) of the Policy and does not exculpate the Respondent as it is obvious that the Respondent registered the disputed domain name with the intent to target the Complainant’s marks and domain names (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).
Hence, the Panel is 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: November 25, 2010
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