WIPO

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Trkiye İş Bankasi A.Ş. v. Privia Kart (MK254)

Case No. D2007-1197

1. The Parties

The Complainant is Trkiye İş Bankasi A.Ş. of Istanbul, Turkey, represented by Hatice Banu Saatci, of Istanbul, Turkey.

The Respondent as per the Initial Complaint was Mr. Taluk of Istanbul, Turkey. Further to the registrar verification, the identity of the Respondent was amended to: Privia Kart (MK254) of Istanbul, Turkey (hereinafter referred to as the Respondent).

2. The Domain Name and Registrar

The disputed domain name <priviakart.com> is registered with Abacus America Inc. dba Names4Ever.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 17, 2007.

On August 20, 2007, the Center transmitted by email to Abacus America Inc. dba Names4Ever a request for registrar verification in connection with the domain name at issue. Abacus America Inc. dba Names4Ever transmitted by email to the Center its verification response on August 27, 2007 providing the registrant’s contact details which differed from the information provided by the Complainant in regard to Mr. Taluk.

On August 27, 2007, the Mr. Taluk replied to the Center via email correspondence.

In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on August 31, 2007 amending the name and the contact details of the Respondent.

On September 2, 2007, the Center received an email communication from the Respondent.

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 (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 September 4, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was September 24, 2007.

On September 4, 2007, the Center notified Mr. Taluk that although he is no longer listed as the registrant or the Respondent, his email communication of August 27, 2007, will be accepted as purportedly on behalf of the current registrant.

The Center notified the Respondent, on September 4, 2007, that it should confirm whether the communication received on September 2, 2007 may be regarded as its complete response. The Center further noted that in the absence of such confirmation by the due date, the aforementioned will be considered as the Respondent’s entire response.

On September 6, 2007, the Complainant sent an email communication in response to the Respondent’s September 2, 2007 communication.

As of September 24, 2007, the Respondent did not submit any further response to supplement or replace its September 2, 2007 communication. Accordingly, the Center notified the Respondent’s default on September 26, 2007.

On September 27, 2007, Mr. Taluk sent an email communication in response to the Center’s September 26, 2007 communication.

The Center appointed Nasser A. Khasawneh as the sole panelist in this matter on October 1, 2007. 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.

On October 2, 2007, both the Complainant and the Respondent sent supplemental filings to the Center.

Further to the Panel’s request, the decision due date was extended to October 20, 2007.

4. Factual Background

The Complainant is a major Turkish bank established in Turkey since 1924. The Complainant has launched “Privia Card”, an identification card for its customers, offering to its holder certain priority rights and special services.

In 2005, the Complainant filed registrations for its PRIVIA (figurative) and IS PRIVIA (figurative) trademarks in both Turkey and the European Union for classes 9, 16, 18, 20, 36 and 41. The Complainant has also registered its PRIVIA trademark for the same classes in the European Union. The Panel has reviewed the extracts confirming registrations of the aforementioned trademarks. The registrations are summarized in the following table:

Registration No.

Trade and Service Marks

Classes

Filing Dates

Registration Dates

Jurisdiction

2005 41282

Privia (figurative)

9, 16, 18, 20, 36, 41

28-Sep-05

 

Turkey

2005 41283

İş Privia (figurative)

9, 16, 18, 20, 36, 41

29-Sep-05

 

Turkey

004735536

Privia (figurative)

9, 16, 18, 20, 36, 41

22-Nov-05

24-Jan-07

European Union

004735544

İş Privia (figurative)

9, 16, 18, 20, 36, 41

22-Nov-05

24-Jan-07

European Union

004839651

PRIVIA (word)

9, 16, 18, 20, 36, 41

17-Jan-06

27-Jan-07

European Union

The disputed domain name <priviakart.com> is registered in the name of the Respondent as it appears on the WhoIs record of the registrar. The records show that the domain name <priviakart.com> was created on August 14, 2006 and then was updated on August, 16, 2007.

The Complainant is currently using the domain name <privia.com.tr> as per its assertions for the promotion of its Privia Card program to its customers. The website at that domain name is currently active and contains a link entitled “Privia Kart”.

5. Parties’ Contentions

A. Complainant

The Panel has reviewed the Complaint filed on August 20, 2007 and the subsequent amendments and correspondence.

The Complainant’s submissions are as follows:

1. Initial Complaint filed on August 17, 2007.

2. Amendment to Complaint submitted on August 31, 2007.

3. Email correspondence sent on September 6, 2007.

4. Email correspondence sent on October 2, 2007.

The Panel shall summarize the content of all submissions separately but will consider these as a whole for the purpose of this decision.

Initial Complaint Submitted on August, 17, 2008

1. The domain name is identical to the trademark in which the Complainant has rights

The Complainant has submitted proof of registration of the PRIVIA and IS PRIVIA trademarks, both figurative and in words, in Turkey and the European Union.

The Panel has examined the various certificates which are summarized in the above table.

The Complainant claims that the domain name <priviakart.com> is identical to the aforementioned registered trademarks.

2. The Respondent has no rights or legitimate interests in the disputed domain name

The Complainant confirms its ownership rights of the trademarks PRIVIA (figurative and word) and IS PRIVIA in Turkey and the European Union.

The Complainant affirms that Mr. Taluk is not a licensee nor has he obtained any type of license or permission to use the trademarks. The Complainant has conducted a trademark search which showed no records for trademarks containing the word “Privia” except those registered by the Complainant.

The Complainant claims that there is no evidence that Mr. Taluk has been known by the name “Privia Card.” In addition, the Complainant highlights that merely registering the domain name is not sufficient to establish rights or legitimate interests.

According to the Complainant, the domain name was used on October 11, 2006 to direct internet users to erotic content.

Finally, the Complainant asserts that Mr. Taluk is one of its customers. As the Complainant’s customer, and since Mr. Taluk works in a media related company, the Complainant avers that Mr. Taluk should be aware of the current use of the Privia Card by the Complainant.

3. The Respondent registered and used the domain name in bad faith

The Complainant claims that the use of the domain name to direct internet users to erotic content shows the intent of the Respondent to damage the Complainant’s business and consequently proves that the Respondent has registered and is using the domain name in bad faith.

The Complainant asserts that the Respondent has used the disputed domain name to intentionally create confusion regarding the Complainant’s sponsorship or affiliation with the Respondent’s site.

Amendment to Complaint submitted on August, 31, 2007

The Complainant amended the contact details of the Respondent to Privia Kart (MK254) further to the Center’s receipt of verification of same from the registrar.

The Complainant has affirmed that further to additional checks, it appears that the Respondent’s webpage at the disputed domain name no longer exists.

The Complainant has provided further arguments regarding the proof of registration and use in bad faith. The Complainant claims that the Respondent has registered the domain name in bad faith primarily for the purpose of selling it. The Complainant bases its allegations on the following grounds:

1. The incomplete contact details provided by the Respondent. The Complainant claims that Mr. Taluk who was the first person to register the domain name has sold the domain name in order to become unreachable;

2. The domain name is not actively used at the moment by the Respondent. The Complainant further affirms that inaction can constitute bad faith and refers to previous WIPO UDRP cases in this regard.

Email sent by Complainant on September 6, 2007

Further to the Respondent’s correspondence (summarized below), the Complainant confirms that it has never been in contact with Mr. Taluk or the Respondent.

The Complainant claims that the Respondent clearly admits his attempt to hide Mr. Taluk’s contact information.

Email sent by Complainant on October 2nd, 2007

The Complainant asks the Panel to disregard the answer of Mr. Taluk as it appeared that he was not the Respondent in this case.

B. Respondent

The Panel notes that the Center notified the Respondent’s default on September 26, 2007.

The Panel confirms that the Respondent’s name and contact details in the initial Complaint have been modified to that in the Amended Complaint on the basis of information received from the registrar.

The Panel has examined the various communications above and has noted that email communication was simultaneously sent by the Center to Mr. Taluk and the Respondent. Mr. Taluk was copied on all correspondence by the Respondent. Therefore, in accordance with paragraph 10(d) of the Rules, the Panel has considered the communications received by Mr. Taluk summarized below.

The Submissions of Mr. Taluk and the Respondent can be summarized as follows:

1. Email communication by Mr. Taluk on August 27, 2007.

2. Email communication from the Respondent on September 2, 2007.

3. Email communication by Mr. Taluk on September 27, 2007.

4. Email communication by the Respondent on October 2, 2007.

Email Communication by Mr. Taluk on August 27, 2007

Further to the Initial Complaint filed by the Complainant, upon which Mr. Taluk was designated as the Respondent, Mr. Taluk has submitted a response on August 27, 2007 and has based his defense on the following grounds:

- The Complainant has only registered the PRIVIA trademark and is using the domain name <privia.com.tr>.

- Mr. Taluk, although a customer of the Complainant, has never been informed of the Privia Card by any means.

- In reply to the erotic content allegations, Mr. Taluk denies the latter and claims that the domain name is currently redirected with a 302 connection to a different website.

- Mr. Taluk confirms that he is still a customer of the Complainant which should establish his good faith.

- Mr. Taluk asserts that there are multiple meanings and uses of the words “kart” and “privia”.

- Mr. Taluk finally refers to a similar domain name <priviacard.com> which remained available until he purchased it on August, 27, 2007.

- Finally, Mr. Taluk affirms that he did not make any offers to the Complainant to sell the disputed domain name.

Email Communication from the Respondent on September 2, 2007

Further to the notification of the Respondent, as per the contact details communicated to the Center by the Registrar, the Respondent sent an email communication to the Center copying Mr. Taluk on September 2, 2007 wherein:

- The Respondent confirms that the domain name belongs to Mr. Taluk.

- The Respondent asserts that Mr. Taluk approached him 10 months ago claiming that he was contacted by the Complainant through the previous CEO of the Complainant.

- The Respondent claims that Mr. Taluk has asked him to purchase the domain name in order to hide his contact information.

- Finally, the Respondent asserts that he is a resident of Turkey and has not heard of Privia “in regard to İş Bank”.

Email Communication by Mr. Taluk on September 27, 2007

Mr. Taluk sent a definition of the word “privia” by the online encyclopedia Wikipedia in which he argues that “privia” cannot be registered as a trademark.

Email Communication by the Respondent on October 2, 2007

The Respondent asserts that he has informed the Casio CO, Ltd. of this case. The Respondent informs Casio CO, Ltd. of the case lodged by the Complainant as the Respondent believes that the PRIVIA mark belongs to Casio CO, Ltd. He requests the Center to notify Casio CO, Ltd. of the aforementioned.

6. Discussion and Findings

Prior to discussing the various submissions of the parties, the Panel would like to comment on certain procedural issues:

The Center has acknowledged the receipt of supplemental filings from both the Complainant and the Respondent informing the parties that there is no explicit provision under the Rules for supplemental filings. According to paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence. The Panel has reviewed the supplemental filings and, in light of the various circumstances surrounding the submission of these additional documents, has decided to accept the aforementioned filings as part of the case file.

The Panel notes that although the Respondent has not submitted a formal response and was thus notified of default, email communications were received as summarized above respectively from Mr. Taluk and the Respondent.

The Panel notes that the Center has acknowledged receipt of the communications by Mr. Taluk noting only that he appears to be in communication with the Respondent. As this communication was purportedly received on behalf of the Respondent, the Center acknowledged its receipt and forwarded same to the Panel for its consideration.

The Panel finds that as the communications received from Mr. Taluk purport to make assertions on behalf of the Respondent, for the purpose of this decision, they will be treated as part of the Respondent’s response in accord with the general powers of the Panel as described in paragraph 10(d) of the Rules.

A. Identical or Confusingly Similar

As per the submitted records, the Complainant owns the rights to the registered trademarks PRIVIA (figurative) and IS PRIVIA for classes 9, 16, 18, 20, 36 and 41 in Turkey and the European Union and for PRIVIA (word) in the European Union.

The Complainant is a major bank operating primarily in Turkey. The Complainant has launched “Privia Card”, an identification card for its customers. “Privia Card” is written “Privia Kart” in the Turkish language as claimed by the Complainant.

The Complainant has placed advertisements of its “Privia Card” in popular magazines copies of which were submitted in the Complaint, and thus examined by the Panel.

The disputed domain name is <priviakart.com>, composed of the word “Privia” and the word “Kart”.

The Panel is satisfied that the Complainant has proven its rights in the registered trademark PRIVIA by submission of copies of registration certificates from the competent authorities in the relevant jurisdictions.

The Panel has no reasons to believe that third parties contested the ownership rights of the Complainant in the registered trademarks as these registrations are valid in the relevant jurisdictions.

Consequently, the Panel believes that the Respondent’s allegations in regard to the various uses of the word “privia” such as its use as a model type of Casio Digital Piano or as a generic word in the vehicle sector are not relevant to the purpose of this decision as such assertions do not contest per se the trademark ownership rights of the Complainant.

The Panel has verified the accuracy of the Complainant’s allegation in regard to the use of the word “kart” in the Turkish language. The word “kart” is used commonly in Turkish to designate any types of cards (inter alia, bank related cards and telephone cards). Thus the Panel concludes that the word “kart” is considered a generic term in the Turkish language when used in connection with, e.g., bank cards.

Based on the above, the Panel considers that the disputed domain name is composed of Complainant’s registered PRIVIA trademark and the generic word “kart”.

For the purpose of determining confusing similarity of the disputed domain name with the Complainant’s registered trademark, the Panel believes that the use of a generic term in addition to a registered trademark does not per se negate the existence of such similarity. (See, Educational Testing Service v. Jong-Cheol Seo, WIPO Case No. D2006-0056; eBay, Inc v. Progressive Life Awareness Network, WIPO Case No. D2001-0068).

In particular, in the present case, the word “kart” reflects the field of goods of the Complainant’s registered trademark. In fact, the Complainant is using its registered trademark in connection with a card service as per its allegations and as it appears from its various figurative registered trademarks.

Consequently, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademarks as per the terms of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has made out the prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Complainant argues that, as the trademark owner, it has not granted any license or authorization to the Respondent to use its trademarks in any manner.

By making a prima facie case that the Respondent lacks rights or legitimate interests, the burden of proof as per the UDRP Panelists’ consensus view on the matter shifts to the Respondent. (See, Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d v. WACHEM d.o.o, WIPO Case No. D2004-0110).

The Respondent has not established in any of the submitted correspondence any rights or legitimate interests in the use of the disputed domain name.

The Respondent, although claiming that “Privia” is a well-known trademark for Casio CO, Ltd. does not affirm or provide evidence that he has obtained any licenses, authorizations or permissions from Casio CO, Ltd. to use its trademark.

Finally, the Panel has checked the website at the disputed domain name and has found that it is not currently used by the Respondent. The passive holding of the disputed domain name does not grant to the Respondent rights or legitimate interests for its use.

Based on the above, the Panel believes that the Respondent does not possess any rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Panel has assessed the evidence as to whether the registration and use of the disputed domain name by the Respondent is in bad faith on the basis of a balance of probabilities. The Panel does not believe there is one particular circumstance that is conclusive in this regard, but the determination of bad faith in this case is dependent on a combination of circumstances.

The Panel has chosen to disregard the Complainant’s assertions in regard to the erotic content of the disputed domain name as these could not be verified by the Panel. The disputed domain name is currently inactive.

Therefore, the Panel regards the use of the disputed domain name as a case of passive holding given that the disputed domain name is not, as of the date of this decision, being actively used in any manner by the Respondent.

As per the WIPO UDRP Panelists’ consensus view, passive holding does not per se demonstrate a finding of bad faith. The Panel has therefore proceeded in the examination of the circumstances of the case for the purpose of determining whether the Respondent has registered and used the disputed domain name in bad faith.

The Complainant alleges that Mr. Taluk is its customer and works in a media related company which should prove his awareness of its “Privia Card”. The Complainant however does not affirm that any correspondence has been directly addressed to Mr. Taluk in regard to its “Privia Card”. In addition, the advertisements that have been submitted to the Panel contain simply the Complainant’s PRIVIA trademark without further details on the use of the trademark.

However, the Respondent claims for the purpose of contesting the Complainant’s rights in the registered trademarks that “Privia” is widely known as a model type of Casio Digital Piano. Such allegation establishes, in the Panel’s view, the awareness of the Respondent of the wide use of the trademark by a third party. Such evidence although not per se conclusive of bad faith is considered by the Panel as a relevant circumstance in the assessment as to whether there was any bad faith on the part of the Respondent.

It was stated by the Respondent in his correspondence of September 9, 2007 that Mr. Taluk is the owner of the disputed domain name. The Respondent further explicitly affirms that Mr. Taluk has requested from the Respondent further to “threats” by the Complainant to conceal his identity by changing the contact details in order to remain unreachable. The consensus view amongst WIPO UDRP Panelists is that concealment of identity may be regarded as a circumstance corroborating the bad faith of a respondent. (See, Fifth Third Bancorp v. Whois ID Theft Protection, WIPO Case No. 2006-1209).

Mr. Taluk acknowledges in his correspondence of August 27, 2007, that he has purchased the domain name <priviacard.com> but has not approached the Complainant; this is supposed to prove his lack of interest in reselling the domain name. The Panel acknowledges that the exact intention of the Respondent in the purchase of the domain name <priviacard.com> is not established in this instance. However, based on the various communications between Mr. Taluk and the Respondent, and the active involvement of Mr. Taluk in this case, the Panel regards this circumstance, although not solely decisive, relevant for the purposes of assessment of whether or not bad faith exists in this case. The Panel further notes that the Respondent has not offered any evidence of its intentions, if any, to make a legitimate, non-infringing use of the domain name.

In summary, the Panel concludes that the Respondent is passively holding the disputed domain name, without any proven intention to use it actively. In addition, the Respondent has actively tried to conceal his identity by changing the contact details.

The Panel finds that the aforementioned circumstances, when regarded collectively and on a balance of probabilities, constitute evidence of the registration and use of the domain name in bad faith.

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 <priviakart.com> be transferred to the Complainant.

__________________________________

Nasser A. Khasawneh
Sole Panelist

Dated: October 20, 2007