WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Turkiye Halk Bankasi A.S. v. y.g jo
Case No. D2007-1628
1. The Parties
The Complainant is Turkiye Halk Bankasi A.S., of Istanbul, Turkey, internally represented.
The Respondent is y.g. jo, of Seoul, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <halkbank.com> is registered with Korea Information Certificate Authority Inc. d/b/a DomainCa.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 5, 2007. On November 6, 2007, the Center transmitted by email to Korea Information Certificate Authority Inc. d/b/a DomainCa.com a request for registrar verification in connection with the domain name at issue. On November 8, 2007, Korea Information Certificate Authority Inc. d/b/a DomainCa.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The registrar also informed that the language of the registration agreement was in Korean. In response to the Center’s notification of the language of proceedings, the Complainant, on November 12, 2007, submitted a request that English should be the language of proceedings, along with related evidence. The Center verified that the Complaint (subject to determination of the Complainant’s language request by the Panel to be appointed) 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 (the Center’s covering document being in both Korean and English), and the proceedings commenced on November 15, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 5, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 7, 2007.
The Center appointed Thomas P. Pinansky as the sole panelist in this matter on December 21, 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.
4. Factual Background
The Complainant is a full-service commercial and retail bank and well-known as “Halk Bank” which provides a broad range of products and services to its more than 6.0 million customers across Turkey as of December 31, 2006.
The Complainant’s name has been associated with tradesmen, artisans and small and medium-size enterprises in Turkey since 1938, and these clients remain at the core of the Complainant’s customer base to this day.
The Complainant has used the trademark HALKBANK in Turkey and in Europe since 1938.
The Complainant has numerous trademark and domain name registrations.
5. Parties’ Contentions
The Respondent has no rights or legitimate interests in respect of the domain name.
The Respondent is neither a licensee of the Complainant, nor has obtained a permission to use the Complainant’s trademarks.
The domain name was registered for the purpose of selling. The Respondent sent an e-mail to “[email address]@yahoo.ca” (apparently in reply to a query from or on behalf of the Complainant) and requested $40,000 for the domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Language of Proceeding
The Complaint was originally filed in the English language. There was no Response. It is noted that the language of the registration agreement for the domain name in dispute is Korean.
According to Paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the Panel decides otherwise.
The spirit of Paragraph 11 is to ensure fairness in the selection of language by giving full consideration to the Parties’ level of comfort with each language, the expenses to be incurred and the possibility of delay in the proceeding in the event translations are required and other relevant factors.
In the present case, the Respondent, in his email of November 15, 2007 to the Center, indicated his preference to proceed in the Korean language. The Center indicated to the Parties that a Response would be accepted in either Korean or English. The Panel notes that prior correspondence between the Parties indicating the Respondent’s ability to communicate in English. Furthermore, the Complainant is not able to communicate efficiently in Korean. Therefore, in consideration of the above circumstances, the Panel hereby decides, under paragraph 11 of the Rules, that English shall be the language of administrative proceeding in this case.
B. Substantive Elements of the Policy
Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the grounds 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.
Moreover, under Paragraph 14(b) of the Rules, it is established that: “If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.”
In light of the above, the Panel may draw such inferences from the Respondent’s failure to comply with the Rules as it considers appropriate (see Paragraph 14(b) of the Rules; see Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
Under Paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
C. Identical or Confusingly Similar
The Complainant has registered the HALKBANK marks and is the registrant of various domain names containing the name “Halk Bank”. The domain name wholly incorporates the Complainant’s distinctive trademark and as such the Panel is satisfied that it creates sufficient similarity to be confusingly similar (Paragraph 4(a) of the Policy). Therefore, the Panel finds that the domain name is confusingly similar to the Complainant’s trademark pursuant to the Policy, Paragraph 4(a)(i).
D. Rights or Legitimate Interests
According to Paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the domain name. In connection with the burden of proof, several decisions of WIPO panels have held that “once a complainant establishes prima facie evidence showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondent to rebut the showing” (see among others, Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784; see also International Hospitality Management-IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683).
The Complainant has asserted that the Respondent has no relationship with or authorization from the Complainant to use its marks; the Panel notes that there is nothing in the record to suggest that the Respondent has been commonly known by the domain name; the Panel further notes that there is no evidence that the Respondent has ever been commonly known by the domain name. The Panel’s view is that these facts may be taken as proven in the circumstances of this case provided that they have not been denied by the Respondent.
The Respondent has not submitted a substantive response to the Complainant’s contentions. Therefore, it has failed to invoke any circumstances that demonstrate rights or legitimate interests in the domain name under Paragraph 4(c) of the Policy.
Accordingly the Panel holds that the Respondent has no legitimate interests or rights in the domain name pursuant to Paragraph 4(a)(ii) of the Policy.
E. Registered and Used in Bad Faith
Both under past UDRP decisions (see for instance Nike, Inc. v. B.B. de Boer, WIPO Case No. D2000-1397; and Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806) and under the Policy (see Paragraph 2), a well-established principle is that when someone registers a domain name, it represents and warrants to the registrar that, to its knowledge, the registration of the domain name will not infringe the rights of any third party. In the case at issue, the Panel reasonably finds that since the Complainant’s marks are widely known, especially in the international financial community, it is very unlikely that the Respondent, at the time of registration or purchase of the domain name, was not aware that it was infringing the Complainant’s trademarks.
Bad faith can in appropriate circumstances also be inferred based on the fame of the Complainant’s marks, such that the Respondent was aware or should have been aware of the Complainant’s mark and claims of rights thereto (particularly in view of the Complainant’s use of its mark on the Internet). The Panel finds it highly doubtful that the Respondent would have registered the domain name without having knowledge of the Complainant. The Panel also notes that the Respondent acted similarly in connection with the mark of an Indian bank (see Kotak Mahindra Bank Limited v. Jo Y.G., WIPO Case No. D2007-1510).
The registration of a domain name that is similar to a distinctive trademark by the Respondent, when the Respondent has no relationship to that mark, is also sufficient evidence of bad faith (see Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403; Centurion Bank of Punjab Limited v. West Coast Consulting, LLC, WIPO Case No. D2005-1319).
In addition, it is well established that registering a domain name for the primary purpose of offering to sell, rent, or otherwise transfer the domain name for an amount in excess of the registration cost is evidence that a domain name was registered and being used in bad faith (see Adidas-Saloman AG v. Vincent Stipo, WIPO Case No. D2001-0372). The Panel finds, in the absence of rebuttal by the Respondent, that the Complainant has adequately supported the inference that the Respondent’s actions and correspondence satisfy the “intent to sell” requirement of Paragraph 4(b)(i).
Furthermore, the conduct described above falls squarely within Paragraph 4(b)(iv) of the Policy and accordingly the Panel concludes that the Respondent registered and is using the domain name in bad faith.
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 <halkbank.com> be transferred to the Complainant.
Thomas P. Pinansky
Dated: January 25, 2008