WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Yapi Ve Kredi Bankasi A.S. v. Mr. Oguzhan Sakaayar
Case No. D2005-0805
1. The Parties
The Complainant is Yapi Ve Kredi Bankasi A.S., Istanbul, Turkey, represented by Istanbul Patent & Trademark Consultancy Ltd., Turkey.
The Respondent is Mr. Oguzhan Sakaayar, Ankara Turkey, represented by Farina Nuran, Turkey.
2. The Domain Names and Registrar
The disputed domain names <vadaa.com> and <vadaa.net> are registered with iHoldings.com Inc. d/b/a DotRegistrar.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 28, 2005. On July 28, 2005, the Center transmitted by email to iHoldings.com Inc. d/b/a DotRegistrar.com a request for registrar verification in connection with the domain names at issue. On July 28, 2005, iHoldings.com Inc. d/b/a DotRegistrar.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 August 4, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was August 24, 2005. The Response was filed with the Center on August 19, 2005.
The Center appointed Nasser A. Khasawneh as the sole panelist in this matter on September 15, 2005. 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.
The Panel requested an extension of the decision due date. In accordance with paragraph 10(c) of the Rules, the decision due date was extended to and including October 6, 2005.
The Panel received a supplementary filing from the Complainant, aimed at responding to the points raised by the Respondent. The Panel reviewed this supplementary filing found that the supplementary filing did not offer any significant additional information to the case. Consequently, the Panel found it unnecessary to request the Respondent to respond to this supplementary filing.
4. Factual Background
The Complainant “Yapi Kredi” is one of the long-established and well-known banks in Turkey. It was founded in 1944. The bank handles a large volume of credit card and other business, and has over 420 domestic branches and various other subsidiaries and affiliated companies.
In August 2003, Yapi Kredi started a national reward campaign entitled “wordcard Vadaa”. The “Vadaaaaa”s represented points which could be accumulated by customers through the use of their credit cards.
The Respondent registered the domain names <vadaa.com> on October 8, 2003, and <vadaa.net> on October 11, 2003.
On June 30, 2004, the Complainant registered the trade/service mark VADAAAAA! (along with the words “Yapi Kredi”) with the Turkish Patent Office.
5. Parties’ Contentions
The Complainant’s contentions may be summarized as follows:
1) The disputed domain names are confusingly similar to a trademark in which the Complainant has rights. The Complainant claims that the dispute domain names <vadaa.com> and <vadaa.net> are confusingly similar to its “VADAAAAA” mark and that the addition or deletion of a letter or two in the domain name is not sufficient to eliminate the confusion. The Complainant also claims common law rights prior to the trademark registration date, resulting from the use of the mark in the market.
2) The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant points out that the Respondent is not using the domain names in connection with a bona fide offering of goods and services and that he is neither known by these names nor does he claim to make a legitimate non-commercial or fair use of the disputed domain names.
3) The websites of the disputed domain names were registered and used in bad faith. The Complainant claims, inter alia, that an earlier communication with the Respondent shows that the primary purpose behind the registration of the disputed domain names was to negotiate the transfer to the owner of the trademark, in return for financial profit.
The Respondent submits that:
1) The disputed domain names are not identical or confusingly similar to the trademark of the Complainant. He insists that he had registered the domain names and filed for registration of the trade/service mark VADAA prior to the Complainant’s trademark registration.
2) He has rights and legitimate interests in the disputed domain names. He claims, inter alia, that the disputed domain names were registered in order to publish his services in E-Commerce, B2B and other fields of business different from those of the Complainant.
3) The disputed domain names were not registered or used in bad faith. He states that there is no sufficient evidence to prove that his primary purpose in registration was the selling, renting or transfer thereof to another party. He also insists on the differences between the Complainant’s trademark VADAAAAA! and the domain names containing the word “vadaa,” particularly given that they were configured for different services.
6. Discussion and Findings
(a) Identical or Confusingly Similar
The Panel is satisfied that the Complainant has trademark rights in the word VADAAAAA!. First of all, the Complainant has a registered trademark combining the words “YAPI KREDI” and VADAAAAA!. The date of registration is June 30, 2004. Furthermore, based on the documentation presented by the Complainant, it is evident that the Complainant had launched a marketing campaign utilizing the word VADAAAAA! as far back as late summer 2003. The evidentiary record presented by the Complainant contains news clippings dating back to October 4, 2003.
The disputed domain names (i.e. the word <vadaa>) constitute an exact reproduction of the first 5 letters of the Complainant’s VADAAAAA! Mark. Furthermore, it is obvious that the disputed domain names and the Complainant’s mark are phonetically identical.
The Panel requested a native Turkish speaker whether the words ”vadaa” or VADAAAAA! have any meaning in the Turkish language. It was confirmed that these words have no linguistic meaning whatsoever. The Panel finds this fact significant, in the sense that it confirms the distinctiveness of the Complainant’s mark. This VADAAAAA! word is not a common word that could have been chosen at random by any Turkish speaker – this is a distinctive word created for a particular purpose.
In this regard, the Panel is guided by numerous UDRP Decisions that support the principle that slight typographical or spelling differences between a disputed domain name and a complainant’s mark do not grant distinctiveness to the disputed domain name. In particular, there have been several UDRP Decisions that found that the mere addition of letters to a trademark-protected word did not allow a domain name to avoid the application of the first test of the Policy. By way of example, the Panel refers to the following UDRP Decisions:
- Universal City Studios,Inc. v. HarperStephens, WIPO Case No. D2000-0716 (“Such differences are commonplace in instances where trademarks are reflected in domain names. They do not change the overall impression engendered.”)
- Network Solutions, LLC v. Terry Wang, WIPO Case No. D2004-0675 (“The deletion or addition of one letter is an insignificant change for the purposes of Policy paragraph 4 (a)(i)”)
- Google, Inc.v.Namerental.com and Leonard Bensonoff, WIPO Case No. D2001-0060.
The Panel considered the statement made by the Respondent that it had filed for the registration of the word “vadaa” as a trademark, and that this application predated the registration date of the Complainant’s VADAAAAA! mark. However, there are a number of factors that diminish the value of this assertion. First of all, it seems that the applicant of the registration of VADAA mark is not the Respondent, but another person who shares his family name. Secondly, this application did not mature into a registration and, as such, it can be discounted. Thirdly, and most importantly, the Respondent has declared that he had actually withdrawn this application.
Consequently, the Panel finds that the Complainant has met the requirements of the first test under the Policy.
(B) Rights or Legitimate Interests
The Panel examined the current use by the Respondent of the disputed domain names. At present, both disputed domain names are inactive and lead to an error or a blank page. As per the Respondent’s own admission, the sites of the disputed domain names were only used in the past to carry the slogan “Shopping will be an entertainment in the future.” Furthermore, the Panel visited the site of <guguu.com>, the site which the Respondent claims to have developed in order to carry its business following the “compulsive behaviour of the Complainant.” This site has the following minimal content: the name “guguu!” the same slogan “Shopping will be an entertainment in the future,” and an animated character that looks rather similar to the animated character used in the Complainant’s VADAAAAA! campaign. There is no other content on the site.
In light of the above, the Panel is compelled to agree with the Complainant’s claim that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. The Panel is not convinced by the Respondent’s claim that these domain names were registered to “publish their services in E-Commerce, B2B, and B2C fields of business.” If that was indeed the case, why the disputed domain names sites have not offered yet any services or content? The disputed domain names were registered as far back as 2003. Why Respondent has not come round using these sites for the objectives declared in his Response? The Panel cannot find any satisfactory answer to these questions in the case file.
The Complainant’s campaign VADAAAAA! has been widely advertised in Turkey. The Respondent, confirms to be “clearly aware” of the Complainant’s VADAAAAA! campaign. This knowledge, coupled with the lack of use by the Respondent of the disputed domain names for any viable reason, makes the Respondent’s defense under this second test of the Policy rather untenable.
The arguments of the Respondent fail to convince the Panel that the Respondent has rights or legitimate interests in the disputed domain names. The Panel’s conclusion is strengthened in light of the illustrations of “legitimate interest” that are presented in paragraph 4(c) of the Policy. In this paragraph, the following are listed as circumstances that, if proven, would demonstrate a respondent’s legitimate interest or right in a disputed domain name:
(i) before any notice to you 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 (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 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 Panel holds that none of the above circumstances apply to the case at hand. As shown above, the Respondent is not using the domain name in connection with a bona fide offering of goods and services. As for (ii) above, the Respondent is not commonly known by the domain name. As for (iii), this cannot apply as the Respondent himself has stated that he intended to use the disputed domain names for commercial purposes.
Consequently, the Panel finds for the Complainant on the second element of the Policy.
(C) Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out a number of circumstances, each of which shall provide evidence of registration and use in bad faith. First such circumstance is defined as follows:
“(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name;”
Upon reviewing all the available documentation, the Panel finds that the above circumstance is established in this case. As confirmed by the Complainant and the Respondent, an exchange of emails occurred between the parties in October 2004. In that exchange, the Respondent offers the Complainant the opportunity to reach a mutual agreement regarding the disputed domain names. What is most instructive about the Respondent’s reply is that he offers a marketing pitch on the importance of domain names to business in today’s world. He describes how the name <vadaa.com> “is able to change your business methods in our global world and effect your customers deeply …” The Respondent even attaches a write-up by a consultant on the importance of the internet to business. It is evident to the Panel from the content and spirit of the Respondent’s email to the Complainant that he was ready and prepared to offer the disputed domain names for sale to the Complainant.
The above facts satisfy the Panel that the circumstance defined in paragraph 4(b)(i) of the Policy is established in this case and is sufficient to conclude this third test in favour of the Complainant. However, the Panel also noted the following circumstances, inter alia, in support of its finding:
1) The registration of the disputed domain names came very shortly after the launch of the VADAAAAA! campaign by the Complainant. This suggests that there was a deliberate decision by the Respondent to benefit from the high publicity generated by the Complainant regarding its VADAAAAA! campaign.
2) The site of the disputed domain names contained the image of a purple animated creature that looks similar to the character used in the Complainant’s VADAAAAA! campaign. Again, this suggests a deliberate attempt to ride on the coattails of the Complainant’s mark and campaign publicity.
In conclusion, the Panel finds that the third test under paragraph 4(a) has been established successfully by the Complainant.
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 names <vadaa.com> <vadaa.net> be transferred to the Complainant.
Nasser A. Khasawneh
Date: October 6, 2005