WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Akbank Turk A.S. v. Arif Bilgin, The Diamond Bar Case No. DME2009-0009 1. The Parties
The Complainant is Akbank Turk A.S. of Istanbul, Turkey, represented by Istanbul Patent & Trademark Consultancy Ltd., Turkey.
The Respondent is Arif Bilgin, The Diamond Bar of New York, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 8, 2009. On October 8, 2009, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On October 8, 2009, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 14, 2009. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy approved by the doMEn d.o.o (“doMEn”) (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy approved by the doMEn d.o.o (“doMEn”) (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 15, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 10, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 11, 2009. On November 12, 2009, the Center received an informal Response from the Respondent.
The Center appointed Andrew Brown QC as the sole panelist in this matter on November 16, 2009. 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.
A series of informal emails and responses were sent by the Respondent and the Center and have been reviewed by the Panel. The content of the emails of the Respondent are set out at Part 5 of this decision. 4. Factual Background
The Complainant is a top tier Turkish bank known by the trade mark AKBANK. The Complainant was founded in 1947 and is now the largest bank in Turkey in terms of assets (excluding market re-evaluation of subsidiaries). At the end of 2007, the Complainant was ranked as Turkey's most valuable bank having the most profitable banking operation among privately owned banks in Turkey. It has a strong and extensive domestic distribution network that includes 715 branches and 13,513 employees. The Complainant operates from its headquarters in Istanbul and has 20 regional directorates around Turkey. The Complainant also has foreign banking operations namely Akbank NV in the Netherlands and Akbank AG in Germany, as well as a branch in Malta. These entities carry out the Complainant's overseas operations.
On January 9, 2007 the Complainant and the United States of America (“United States” or “U.S.”) bank Citigroup successfully completed a strategic partnership agreement under which Citigroup acquired a 20% equity stake in the Complainant.
At the end of 2007, the Complainant's net profit was 2 billion YTL (approximately USD 1,76 billion) and its asset size amounted to 72,1 billion YTL (approximately USD 62,2 billion).
Shares of the Complainant are traded in Turkey, the United Kingdom of Great Gritain and Northern Ireland and the United States. As at December 31, 2007, the Complainant's market capitalization stood at USD 22,5 billion, making it the most valuable bank on the Istanbul Stock Exchange.
The Complainant has an extensive number of registrations for the trade mark AKBANK and variations thereof on the Turkish Patent Office register. The Complainant also has a significant number of trade mark registrations for the trade mark AKBANK, including in Montenegro (the .me country code top level domain registered by the Respondent is the Montenegro country code) and in the United States (where the Respondent is currently domiciled). The trade mark registrations in Montenegro and the United States, amongst many others, were registered under the International Madrid Protocol on October 19, 2000.
Registration of the disputed domain name took place on July 17, 2008. 5. Parties' Contentions A. Complainant
The Complainant asserts that it has satisfied the first factor under paragraph 4(a) of the Policy, taking into account:
(a) its various trade mark registrations in Turkey and worldwide;
(b) its domain name registration , which it registered on December 9, 1996; and
(c) that AKBANK is the Complainant's trade name.
In relation to the issue of whether the Respondent has rights or a legitimate interest in the domain name (under paragraph 4(c) of the Policy), the Complainant asserts that it has not licensed or otherwise permitted the Respondent to use the mark AKBANK or to use any domain name incorporating that trade/service mark. Further, the Complainant asserts that it has “prior rights in that trade/service mark, which precedes [the] Respondent's registration of the domain name”.
The Complainant asserts that the only interest the Respondent may have in registering the domain name is “to somehow create a connection to the Complainant and its trade mark AKBANK”.
Further, the Complainant asserts that the Respondent does not use (commercially or non-commercially) the domain name nor has the Respondent been commonly known by the domain name.
The Complainant also asserts that “the Respondent is clearly aware of the Complainant's extensive goodwill and reputation in its service and trade mark AKBANK”. The Complainant concludes by stating that the Respondent “in this case would only have a right to the domain name if the Complainant has specifically granted that right”.
The Complainant asserts that the Respondent has “no common knowledge (as an individual, business, or other organisation) that he is known by the domain name” and that the domain name is not “a mark by which the Respondent is commonly known”.
Turning to the final element under paragraph 4(b) of the Policy, i.e. whether the domain name has been registered and used in bad faith, the Complainant submitted as follows:
The Complainant asserts first that the “domain name was registered primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the owner of the trade mark for valuable consideration in excess of the domain name registrant's out-of-pocket costs”. Further that the Respondent does not actively use the disputed domain name. The website at the disputed domain name “currently appears to merely contain a search engine which does not function”. In support of its statements, the Complainant attached a copy of a screenshot from the Respondent's website at Annex-9.
The Complainant asserts, as a second ground for showing registration in bad faith, that “the Respondent cannot have ignored the fact that AKBANK is a registered and protected trade mark of the Complainant”. In respect of this ground, the Complainant asserted the following:
- “AKBANK is a well-known mark and it is difficult to imagine that the Respondent would not have been aware of that mark, when he registered the domain name ”.
- That the Respondent is located in Turkey, which is where the Complainant (which has incorporated the trade mark AKBANK in its corporate name) originated and first acquired its well-known status in that mark.
- The Complainant is well-known under its trade mark AKBANK for its core business of financing.
- “When somebody chooses to register the domain name , there is therefore a strong indication that he intends to create an association with the Complainant's trade mark. If that was the reason for the Respondent to register that domain name, and it is difficult to imagine any other reason, he must have known the trade mark AKBANK.”
The third ground relied on by the Respondent to establish registration in bad faith is that the Respondent registered the domain name to prevent the Complainant from “reflecting the mark in corresponding domain names and from offering online services through said domain names”. Under this ground, the Complainant asserts that the Respondent would have “certain constructive and actual knowledge of [the] Complainant's trade/service mark rights prior to registering the disputed domain name”. In support of this submission the Complainant relied on WIPO cases: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Banco Espanōl de Crédito, S.A. v. Miguel Duarte Perry Vidal Taveira, WIPO Case No. D2000-0018; Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028; Rollerblade, Inc. v. Chris McCardy WIPO Case No. D2000-0429 and Arab Bank for Investment and Foreign Trade v. Sabah Mahmoud Akkou WIPO Case No. D2000-1399.
The Complainant then turned to the issue of use of the domain name in bad faith. Under this head, the Complainant asserted that bad faith was shown as the Respondent:
“Has placed no content on the site at “www.” that relates to a business or has been created by the Respondent. Rather, the Respondent has included superficial links to a handful of third parties' commercial sites that even belong to the competitors of the Complainant and apparently create revenue for the Respondent.”
The Complainant relies on the cases Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; CBS Broadcasting, Inc. v. Dennis Toeppen, WIPO Case No. D2000-0400. The Complainant also relies on Florists' Transworld Delivery, Inc. v. DomainS aka DomainSource, Inc, NAF Claim No. 105882 (May 1, 2002) in support of the proposition that a passive holding of a domain name suggests that the Respondent registered it for the purpose of selling it to the Complainant for profit.
The Complainant also relies on the cases Hilton Group Plc v. Forum LLC, WIPO Case No. D2005-0244 and Volvo Trademark Holding AB v. Michele Dinoia,WIPO Case No. D2004-0911 in relation to the proposition that the parking of a domain name to obtain revenue through web traffic and sponsor results, to the enrichment of the Respondent, constitutes bad faith.
The Complainant also asserts that:
“Having regard to the content of the webpage, it is clear that as a Turkish person/citizen the Respondent was aware of the Complainant or the trade mark, it is difficult to avoid the conclusion that the Respondent's intention must have been to capitalize on the Complainant's goodwill in the mark.”
“Furthermore, the advertisement and sponsored links on the web-site of the domain name are mostly to the web-sites of the Complainant's competitor banks or credit services.”
The Complainant concludes its submissions by submitting as follows:
“- The Complainant's trademark AKBANK is an internationally well-known mark; …
- The Respondent has made no use of its domain name and there is no evidence whatsoever of any good faith use of or intention to use the domain name ;
- Taking into account all these considerations together, it is not possible to imagine any plausible future active use of the domain name by the Respondent that would not be illegitimate, such as being an infringement of Complainant's well-known mark or an act of unfair competition and infringement of consumer protection legislation.
- In light of these particular circumstances, the Respondent's passive holding of the domain name satisfies the requirement of paragraph 4(b) of the Policy that the domain name is being used in bad faith by the Respondent”. B. Respondent
A number of informal emails were sent by the Respondent to the Center. An initial email was received on October 9, 2009 in which the Respondent expressed concern with the Complaint as follows:
“I understand that a bank in Turkey filed complaints and tries to take my domain name. But honestly I don't know what to do about it and I feel helpless against these corporate lawyers who obviously know all the law tricks to get what they want.
Should I just wait until you reach to a decision or should I send you my arguments or will you contact me at some point and ask for my ‘plea'.”
The Center replied on October 9, 2009 to this email advising the Respondent that once the Complaint was verified the Respondent will be notified that an administrative proceeding had been commenced against him pursuant to the UDRP and he would have 20 days to file his Response. The Center contacted the Respondent on October 15, 2009 with the Complaint and informed the Respondent that he had 20 calendar days to respond. An additional electronic copy was sent to the Respondent on November 5, 2009 to the email address “[…]@”. The Center also provided an additional 5 days (to November 10, 2009) to the Respondent to file his Response. On November 9, 2009, the Center was informed by the Respondent that he would not be able to access the email address “[…]@” and requested that further communications be sent to the email address “[…]@”. This email attached the Notification of Complaint and accompanying documents. On November 11, 2009, the Center contacted both the Complainant and Respondent notifying that no Response had been filed by the Respondent and served on both parties the Notification of Respondent's Default.
On the same day, the Respondent replied to this notification stating that:
“Honestly I have had trouble with understanding the legal terms in your email. I didn't even know I was supposed to send a respond [sic] regarding to the complaint. Now you tell me that this is too late!
Does this mean I will not be given any chance of saying anything about this case anymore?
Will anybody ask me what I think at some point of this process?”
The Center responded on the same day noting that having no response from the Respondent, the Center “forwarded the Notification of Complaint documents to the Respondent's email address “[…]@” giving the Respondent an additional 5 days period to November 10, 2009 to submit its Response to the Complaint”. The Center also noted that should a late response be filed this would be forwarded to the Panel and it would be upon the appointed Panel to decide whether it wishes to admit any late filed Response and whether to order any further procedural steps (if any).
Further email exchanges between the Respondent and the Center occurred in relation to the format of the Response to be filed. A concern was also raised by the Respondent in relation to his understanding of the correspondence. On November 11, 2009, the Respondent in an email stated as follows:
“… I didn't submit a response because I had difficulties with understanding the email?
And I am curious about your policy regarding to people who don t [sic] speak English. Do you allow them to communicate in their own language with you?
I'd like to submit a 'late response' in the next few days if it is okay with you. And I also like this email to be forwarded to the 'pane'” hoping that they would be reasonable and they would understand how hard for regular people to figure out the language that you law people use.”
The Center replied to the Respondent noting paragraph 11(a) of the Rules which notes that the language of the administrative proceeding shall be the language of the Registration Agreement. The Registration Agreement for the domain name was in English.
On November 12, 2009, the Respondent forwarded an informal submission as follows:
“Dear Sirs
I like to make clear that I have lived in the United States since 2000. Hence all my business interests have been tied to U.S for the last 9 years.
I own a web design and e-commerce consulting company and an important part of this business involves advertising campaigns.
As you know Google is the main player in online advertisement business. Google rank of a website has a direct effect on one's online popularity. The higher rank a website has, more online traffic it attracts, less pay per click price is paid etc. Google's page ranking algorithm heavily depends on inter-website references. My main goal is to have my customer's websites link on as many web sites as possible. For this purpose I register tens of domains and fill them up with common information varies from biographies of known people to baby care, lung cancer to places to visit in Tibet. Then I place my customer's links in these resource web sites to move them up in search results. …
AK was registered to build one of those resource sites to help my customers. And the intention is to provide basic information about banks, in Alaska. (As you know AK stands for Alaska) There are such websites about almost each states in the U.S. Some examples are NJ, NYB, TX etc. I have never put any content related to Turkey's Akbank on that site. I have never contacted anyone in Turkey's Akbank about this domain. It is not my problem that they have the same name with a state in the U.S. We are talking about a two letters word 'AK' which can mean millions things in millions of languages.
I would like my domain name, which was obtained in good faith, restored to me.
I would be willing to consider any reasonable non-compete agreement that Turkey's Akbank cares to propose to ameliorate their concerns in this matter.”
On November 13, 2009, the Complainant raised a concern that it appeared that the Respondent's English was sufficient and requested that the Panel ignore the Respondent's late Response.
The email correspondence concluded with the final email from the Respondent dated November 13, 2009 responding to the Complainant's email above. This email stated as follows:
“Dear Sir (s),
I do not remember saying that i lack basic communication skills in English language. What I said was i had trouble to understand the terms that law people use.
Some of the terms that i have never heard in my life that you used in your emails are:
'administrative panel'
'commence'
'Commencement of Administrative Proceedings'
'the Amendment to the Complaint'
'If we do not hear from the Respondent by November 10, 2009, we will accordingly proceed to appoint the Panel'
Now I know that last sentence above means:
'Mr Bilgin, send your response by Nov 10, 2009 or you may not have a chance to do it in the future'
How could i possibly know that “appointing the Panel” also means a deadline since i didn't have any idea what the 'Panel' stood for.” 6. Discussion and Findings Admissibility of response dated November 12, 2009
As an initial issue, the Panel is required to determine the status of the informal emails including the email dated November 12, 2009 by the Respondent setting out his reasons for registering the domain name . The Rules (at paragraph 5) specify the information that is to be provided in a Response. The Rules, at paragraph 5(b)(viii), also require that the Respondent conclude his Response with the following statement:
“Respondent certifies that the information contained in this Response is to the best of the Respondent's knowledge complete and accurate, that this Response is not being presented for any improper purpose, such as to harass, and that the assertions in this Response are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument.”
The Rules also provide at paragraph 5(e) that if a Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based on the Complaint.
The Panel has carefully reviewed the chain of correspondence between the Center and the Respondent cumulating with the late informal Response dated November 12, 2009. Taking into account the Respondent's alleged difficulty in understanding the terms contained in the Notification of Complaint and Notification of Respondent's Default and the fact that the late Response was filed within 2 days of the deadline for filing, the Panel has accepted the informal Response and has taken the submissions made by the Respondent into account when preparing this decision.
The approach taken by the Panel accords with earlier decisions where there has been a late and/or deficient Response. The overriding duty on the Panel is to treat parties with equality and to ensure that each party is given a fair opportunity to present its case: Rules paragraph 10(b). Where a credible reason has been provided by a respondent for a late filing (Internationale Spar Centrale B.V. v. Scientific Process & Research Inc., WIPO Case No. D2005-0603) or where the lateness is minimal (such as two days: see J.P. Morgan & Co., Incorporated and Morgan Guaranty Trust Company of New York v. Resource Marketing, WIPO Case No. D2000-0035) panels have been willing to accept the response. Deficient responses may also be accepted by the panel – especially where the deficiencies relate to mainly administrative matters such as nominating members of the panel or providing contact details: Internationale Spar Centrale B.V. v. Scientific Process & Research Inc [supra].
The Panel has reached its conclusion based on the facts that the Respondent has been in communication with the Center from the outset indicating that he wished to respond to the Complaint, there appear to have been difficulties in sending the Notification of the Complaint to the Respondent and that less than 2 days had passed since the deadline. As less than 2 days had passed, no prejudice has been suffered by the Complainant or the Panel in preparing its decision.
The informal Response provided by the Respondent failed however to meet all of the requirements specified at paragraph 5 of the Rules regarding the format of the Response. Many of these requirements relate to administrative matters, for example, setting out the Respondent's name, postal and email addresses (5(b)(ii)) or electing a three member panel (5(b)(v)).
Most notably however, the Respondent failed to conclude its Response with the statement required at paragraph 5(b)(viii) (set out above) regarding the truthfulness and bona fides of the statements that he has made. The Panel finds that the omission of this statement is not fatal to it being considered but does affect the weight to be afforded to the Respondent's statement. The Complaint
Turning now to the substance of the Complaint: A. Identical or Confusingly Similar
The Complainant has provided extensive evidence of its various trade mark registrations, both in Turkey and worldwide (including in Montenegro and the United States), its reputation under the trade mark AKBANK and its registration for domain names which use the trade mark AKBANK, for example . The trade mark registrations, creation of the Complainant's reputation in the name AKBANK and the registration of domain name all occurred prior to the Respondent's registration of the domain name on July 17, 2008. Accordingly the Complainant has established rights in the trade mark AKBANK prior to the Respondent's registration of the disputed domain name.
Further, the disputed domain name is identical to the mark in which the Complainant has rights. B. Rights or Legitimate Interests
The Complainant has been widely known by the trade mark AKBANK for a number of years prior to the Respondent's registration of the domain name. Furthermore, the Complainant has not authorised or granted a licence to the Respondent to use its mark in the domain name. The Complainant has therefore satisfied the Panel that there is a prima facie case that the Respondent does not have rights or a legitimate interest in the domain name.
Paragraph 4(c) of the Policy sets out three non-exhaustive factors which shall demonstrate a respondent's right or legitimate interest to the domain name. The Respondent is required to establish its rights or legitimate interest to the balance of probabilities. These factors are as follows:
(i) The Respondent has, prior to any notice of the dispute, used or made 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) The Respondent (as an individual, business, or other organisation) had been commonly known by the domain name, even if the Respondent had acquired no trade mark or service mark rights; or
(iii) The Respondent has made a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
In this Complaint, factors (ii) and (iii) are not applicable. There is no evidence that the Respondent (as an individual, business or other organisation) has been commonly known by the domain name. The Respondent has also admitted that he registered the domain name and operated the website as part of his e-commerce consultancy company . Accordingly, the Respondent is making commercial gain from the domain name and factor (iii) does not apply.
The issue therefore is whether, paragraph 4(c)(i) applies.
The Respondent submitted that he registered the domain name as one of his resource sites to provide his customers with higher rankings on Google's algorithm which heavily depends on inter-website references. The intention was also to provide basic information about banks in Alaska. As the letters “AK” are the abbreviation by which Alaska is known by.
The Complainant on the other hand asserts that the Respondent registered the domain name to create a connection to the Complainant and its trade mark AKBANK. The Complainant also provided, as Exhibit Annex-9, a screenshot of the website operated by the Respondent under the domain name prior to the Respondent having notice of this dispute. The screenshot shows a number of sponsored links on the website in the Turkish language. These links appear to be links to other Turkish banks, credit card companies and mortgage businesses. The Complainant has also asserted that the links on the website are “superficial links to a handful of third parties' commercial sites that even belong to competitors of the Complainant”.
The Panel finds that the Respondent has failed to show that he has rights or a legitimate interest in the domain name. The evidence shows that the Respondent has listed at the domain name links in Turkish to competitors of the Complainant. This is contrary to the Respondent's submissions that he operates a website to provide basic information about banks in Alaska. The evidence establishes that the Respondent is taking advantage of the Complainant's trade mark and goodwill associated with it, to offer services from third parties, including competitors of the Complainant. It appears that the only purpose for using the Complainant's trade mark is to draw Internet users to the Respondent's website. Such activities do not constitute a bona fide offering of services within the meaning of paragraph 4(c)(i) of the Policy: O, Inc. v. Metro Media, WIPO Case No. DME2009-0001, Fifth Third Bancorp v. Texas International Property Associates, WIPO Case No. D2007-0537. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four factors which “shall be evidence of the registration and use of a domain name in bad faith”.
The Panel finds on the evidence that the Respondent has taken advantage of the goodwill associated with the Complainant's trade mark, to offer services from third parties (including the Complainant's competitors) and that the Respondent has registered and used the domain name in bad faith under paragraph 4(c)(iv) of the Policy.
By registering the domain name which uses a mark identical to the Complainant's trade mark, the Respondent has intentionally attempted to attract Internet users to his site by creating a likelihood of confusion with the Complainant's mark as to the source of the website (namely, that it is the Complainant's website). This act of registering the domain name was for commercial gain as shown by the sponsored links displayed on the domain name's webpage.
The evidence establishes that the Complainant's mark is widely known and the Complainant had registered the mark in a significant number of jurisdictions, including in the United States where the Respondent currently lives. Significantly too, shares in the Complainant are traded publicly in the United States. A search of the US Patent and Trademark Office register, or even a Google search, would have shown to the Respondent the Complainant's rights in the trade mark that he proposed to register as a domain name. In light of this, the Panel finds that the Respondent would have either constructive or actual knowledge of the Complainant's trade mark rights prior to registering the disputed domain name. Such knowledge is strong evidence of registration and use of a domain name in bad faith: Rollerblade, Inc v. Chris McCrady, WIPO Case No. D2000-0429.
Furthermore, previous WIPO UDRP cases have held that when a domain name is so obviously connected with a complainant and its products and services, its very use by a registrant with no connection to the complainant, suggests “opportunistic bad faith”: Exxonmobil Corp v. Robert Christian, WIPO Case No. DME2008-0003, Research in Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492. The Panel finds that, by using the exact trade mark by which the Complainant is known, and by displaying on the domain name's website links to the Complainant's competitors, the Respondent engaged in such opportunistic bad faith.
The Panel accordingly finds that the domain name was registered and is used in bad faith under paragraph 4(b) 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.
Andrew Brown QC
Sole Panelist
Dated: November 30, 2009
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