Complainant is Türkiye Garanti Bankasi Anonim Sirketi of Istanbul, Turkey, represented by Dericioglu & Yasar Law Office, Turkey.
Respondents are Esat Cansel and Holland Life of Nijmegen, Gelderland, Netherlands. 2. The Domain Name and Registrar
The disputed domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. 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 Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR a request for registrar verification in connection with the disputed domain name. Later on October 8, 2010, Complainant spontaneously submitted an Amended Complaint, naming an additional respondent, as discussed below.
On October 11, 2010, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the Respondents named in the Complaint and Amended Complaint. The Center sent an email communication to Complainant on October 25, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit a further amendment to the Amended Complaint. Complainant filed an amendment to the Amended Complaint on October 26, 2010. That amendment merely substituted the new contact and registrant information which had been provided in the registrar verification response for the previously identified Respondents.
The Center verified that the Complaint, the Amended Complaint and the amendment thereto 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 Respondent of the Complaint, Amended Complaint and Amendment thereto, and the proceedings commenced on October 27, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 16, 2010.
Due to administrative error, Respondents were informed on October 27, 2010 in the Written Notice and in the Notice of Complaint and Commencement of Proceeding that the proceedings commenced on November 27, 2010, rather than the actual commencement date of October 27, 2010. The notices both stated that Respondents had until November 16, 2010 (or twenty days from commencement of proceedings under the Rules) to file a response to the Complaint. While this communication may have created ambiguity respecting the correct deadline for response, Respondents replied informally by email to the notices the same day, October 27, 2010, as described more fully below. After receiving Respondents’ brief email, the Center twice asked in writing whether Respondents would be submitting any further responses, reminding Respondents of the November 16 deadline.
Respondents did not submit a formal response or further communications, and on November 17, 2010, the Center notified the parties that panel appointment would follow.1
The Center appointed Nasser A. Khasawneh as sole panelist in this matter on November 25, 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
Complainant is owner of several Turkish trademark registrations for the term “garanti,” including, for example Turkish registration grant number 2000 10404 (GARANTI, with design), registered May 30, 2000 in Nice classes 9, 35, 36, 38 and 42 and Turkish registration grant number 2008 05913 (GARANTI, stylized letters) registered January 25, 2010, in class 13.
Complainant also owns several Turkish trademark registrations that incorporate the term “garanti” along with other terms, as well as trademark grant number 2000 10408 registered May 30, 2000 for the trademark WWW.GARANTI.COM.TR, in classes 9, 35, 36, 38 and 42.2
The disputed domain name was registered July 20, 2010 and presently routes to a website in Turkish selling GPS units and other electronic devices.3 The website purports to represent “Garanti GPS,” a “service of [Respondent] Holland Life.” 5. Parties’ Contentions A. Complainant
Complainant avers that Türkiye Garanti Bankası Anonim Şirketi, with 63 years of established history, is Turkey's second largest private bank having a total asset size of USD 78 billion. Complainant avers that it is a "universal bank" well recognized under the “Garanti” name around the globe, that it has 9 million customers and nearly 17,000 employees.
Complainant initially filed the Complaint against İlke Dumanlı of Berlin, Germany, based upon WhoIs information which Complainant represents was listed as of October 4, 2010. Complainant then submitted an Amended Complaint on October 8, 2010, alleging that Respondent Dumanli had transferred the disputed domain name to Respondent Esat Cansel on October 4, but that these two individuals should be treated as related, since Dumanli sent Complainant an email in response to the filing of the first Complaint against him. Therefore, the Amended Complaint named both Respondents Dumanli and Esat Cansel.
On October 16, 2010 Complainant’s counsel wrote to the Center, alleging that on October 12, Respondent Dumanli sent a further email to Complainant’s counsel stating, “Dear Ms. [counsel’s name omitted] I hope that you registered your name as a domain name. Have a nice day”. Counsel refers to and includes evidence that her name was used as the basis for two new domain name registrations made on October 12, 2010, and requests that the Panel take notice that such conduct is a threat and confirms Respondents’ bad faith.4
Complainant alleges that the disputed domain name is identical to its registered marks.
Complainant also contends that “It is obvious that there is no evidence that the Respondent used 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 the Respondent is not making a legitimate non-commercial or fair use of the disputed domain name. . . . the motive behind the respondent’s registration of the disputed domain name is merely to take unfair advantage of the Complainant . . .. Accordingly, the use of the disputed domain name by the respondent indicates the bad faith of the respondent.”
With respect to bad faith, Complainant makes many other allegations based upon two prior registrants of the disputed domain name, and the prior registrants’ alleged passive holding and abusive registration of other domain names (see, in reference to the first registrant Andrew Espanza, Akbank Turk A.S. v. Mr. Cihan Uluca, Andrew Espanza, Ahmet Mithat,WIPO Case No. DCO2010-0001). Since the website to which the disputed domain name is presently active (not passively held), and on the record it is not clear whether the two prior registrants are necessarily associated with Respondents, the Panel finds it unnecessary to go into detail respecting those allegations.
Complainant concludes that Respondents “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 . . . documented out-of-pocket costs directly related to the domain name.”
On the basis of the above, Complainant seeks transfer of the disputed domain name. B. Respondents
Respondents did not submit a formal Response in reply to Complainant’s contentions. However, Respondents did send a brief email to the Center, stating “I would love to add attached documents also in case annexes file. Compliant [sic] has no control about other extensions of ‘Garanti’ and they trying to take advantage about which my web store for GPS products.”
The attached documents to which Respondents’ email refers consist of WhoIs records showing registrations of three domain names containing the “garanti” term owned by three different parties not involved in this proceeding. Respondents did not comment or explain the significance which they attribute to these annexes.5 6. Discussion and Findings
The Rules require the Panel to decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a). Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondents have 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.
Complainant must establish these elements even if Respondents do not make a formal response. See, e.g., The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064. In the absence of a Response, the Panel may also accept as true the factual allegations in the Complaint. E.g., ThyssenKrupp USA, Inc. v. Richard Giardini,WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009). A. Identical or Confusingly Similar
Although the disputed domain name is not identical to Complainant’s GARANTI –derivative marks, as alleged by Complainant, the Panel finds that the disputed domain name is confusingly similar to Complainant’s marks.
Complainant contends that the disputed domain name is identical to the mark GARANTI, which Complainant alleges was registered in Turkey since July 10, 1996, “with the number 182957 (96/010271).” Unfortunately, this 1996 registration does not appear in the record before the Panel.6 Moreover, the 1996 registration does not seem to appear in online searches with Türk Patent Enstitüsü, the Turkish government trademark agency.
Under the Policy, it is sufficient for a complainant to show that it has a trademark at the time of the filing of the Complaint. Complainant has registered rights in several marks described in the Factual Background above, consisting of or containing the word “garanti.” The Panel finds that the distinctive feature of these marks is the term “garanti.”
The test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the mark alone. Wal-Mart Stores, Inc. v. Traffic Yoon,WIPO Case No. D2006-0812. The top level domain (in the present case “.co”) in the disputed domain name is to be disregarded. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429.
Accordingly, the Panel finds the disputed domain name is confusingly similar to the GARANTI-derivative marks of Complainant.
The Panel concludes therefore that the requirements of paragraph 4(a)(i) of the Policy are fulfilled. B. Rights or Legitimate Interests
The Panel also concludes that Respondents have no rights or legitimate interests in the domain name.
The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in a domain name. The list includes: (1) the use of the “domain name in connection with a bona fide offering of goods and services”; (2) an entity being commonly known by the domain name; or (3) the making of “a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers . . . .” Policy paragraphs 4(c)(i)–(iii).
Complainant must show a prima facie case proving the negative that a respondent lacks rights or legitimate interests. E.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. The absence of rights or legitimate interests is established if a complainant makes out a prima facie case and the respondent enters no response. Id., (citing De Agostini S.p.A. v. Marco Cialone,WIPO Case No. DTV2002 -0005).
Complainant avers that Respondents are not commonly known by the disputed domain name, and that Respondents have no license or authorization from Complainant to use the GARANTI-derivative marks. Further, Complainant alleges that Respondents have no trademark registrations of their own that include the “garanti” term. In the absence of opposition to these allegations by Respondents, the Panel accepts as true these undisputed factual averments by Complainant.
Complainants also allege that there is no bona fide offering of goods or services by Respondent. At the time of filing of the Complaint, Complainants aver that the website to which the disputed domain name routed was not active. As noted above, however, the Panel has viewed online the website as it presently appears. The website makes commercial offerings, and is, as characterized in Respondents’ brief email, a “web store for GPS products.” Clearly the disputed domain name is being used commercially, therefore, the Panel finds, there is no noncommercial or fair use.
In some instances, a respondent may have a legitimate interest in the use of a generic term, even if that term is also the basis of a complainant’s trademarks. E.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.2 (citing cases). In this case, the Turkish term “garanti” means “guarantee.” There is no indication on the record, however, that “garanti” is a term for the products offered by Respondents’ web store, which offers GPS and electronic tracking products to a Turkish-speaking public.
The Panel also agrees that there is no bona fide offering by Respondents, since there is no indication that Respondents have any relationship to Complainant or are offering products or services related to Complainant or its GARANTI-derivative marks. See e.g., Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "M," WIPO Case No. D2000-0847 ("use which intentionally trades on the fame of another cannot constitute a "bona fide" offering of goods and services…to conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest…").
Refraining from submitting a response, Respondents have brought to the Panel’s attention no circumstances from which the Panel could infer that Respondents have rights or legitimate interests in making use of the disputed domain name.
Therefore, the Panel concludes that the second element of paragraph 4(a) of the Policy is established. C. Registered and Used in Bad Faith
The Panel also concludes that Respondents registered and are using the disputed domain names in bad faith, as explained below.
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which may be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy:
(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 the respondent’s documented out-of-pocket costs directly related to the domain name;
(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;
(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 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 website or location or of a product or service on its website or location.
These circumstances are not exhaustive, however, and panels may draw inferences about bad faith registration or use in light of the circumstances, such as whether the trademarks in question are well-known, whether there is no response to the complaint, concealment of identity, and other circumstances. E.g., Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
The Panel believes, on a balance of probabilities that Respondents knew of Complainant’s mark when Respondents registered or acquired the disputed domain name, for the following reasons. First, it appears that Complainant’s marks are well known in Turkey, and Respondents’ use of Turkish in the website to which the disputed domain name routes makes clear that Respondents are targeting Turkish consumers. Second, Complainant’s marks were in use for several years before the registration of the disputed domain name. Therefore, this Panel finds “that Respondent[s] most likely w[ere] aware of Complainant’s trademark when [they acquired] the disputed domain name. It seems [highly] unlikely . . . that Respondent[s] would have chosen this name randomly.” Kahn Lucas Lancaster, Inc. v. Marketing Total S.A.,WIPO Case No. D2007-1236. Thus, the Panel finds, based on the record before it, that the disputed domain name was registered and acquired in bad faith.
It remains to determine whether Respondents, in addition to registering in bad faith, are also using the disputed domain name in bad faith.7 Despite the fact that the record contains little direct evidence connected with Respondents relating to the first three illustrative circumstances in paragraph 4(b) of the Policy quoted above, the Panel nevertheless concludes that Respondents are also using the domain names in bad faith, as explained below.
Respondents have chosen to refrain from filing a formal or substantive Response to the Complaint, and have made only the most cursory effort to reply to any allegations.8 Second, examining the circumstances in this case, the Panel finds that Respondents were aware of Complainant’s well-known GARANTI-derivative marks. Respondents deliberately adopted a domain name incorporating the GARANTI mark to create confusion and attract Internet users to their website for commercial gain. Therefore, the Panel concludes that Respondents registered and are using the disputed domain name in bad faith. See, e.g., Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co,WIPO Case No. D2000-0163.
Having found that Respondents are using the disputed domain name in bad faith, it is unnecessary to consider the threatening email communication to Complainant’s counsel allegedly made by İlke Dumanlı.
The Panel concludes that the requirements of paragraph 4(a)(iii) of the Policy are fulfilled. 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 disputed domain name, be transferred to Complainant.
Nasser A. Khasawneh
Sole Panelist
Date: December 12, 2010
1 Given that Respondents replied immediately to the initial notices by submitting materials for the Panel’s consideration, and that the Center made two further communications informing Respondents of the November 16, 2010 deadline for formal Response, the Panel has determined that the clerical error which may have created a degree of ambiguity as to the notification date does not result in any prejudice whatsoever to Respondents; This is evident in that Respondent, apparently unaware of the clerical ambiguity, communicated in reply to such notification.
2 Complainant’s trademarks together are referred to in this decision as the “GARANTI-derivative marks.”
3 The Panel has undertaken limited factual research by viewing the website to which the disputed domain name resolves, and by viewing archives at “/index.php”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 4.5. No archives of the website or proof is available showing the appearance of the website at the time the Complaint was filed, although Complainant represents that there was no active website at that time.
4 The WhoIs information indicates registration under a privacy registration service.
5 The Panel nonetheless takes into account this material and communication from Respondents in reaching its Decision.
6 Despite the fact that the Complaint annexes over 70 pages consisting of copies of Turkish certificates of trademark registration and lists of registered domain names containing the term “garanti,” the Complaint seems to have omitted any proof relating to the cited 1996 registration.
7 Both the elements of bad faith registration and bad faith use must be established. E.g., E. & J. Gallo Winery v. Hanna Law Firm,WIPO Case No. D2000-0615; Telstra Corporation Limited v. Nuclear Marshmallows, supra.
8 Presumably Respondents’ purpose in annexing information about third-party websites that also use the term which is the basis for the GARANTI-derivative marks of Complainant is to suggest either (1) that “garanti” is a generic term or (2) possibly that other parties also abuse Complainant’s trademarks. The Panel has already set forth above its analysis of the former proposition, and the latter proposition is irrelevant to this proceeding; neither of these possible interpretations of Respondents’ submissions alter the Panel’s findings under paragraphs 4(a)(ii) and (iii) of the Policy.
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