WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Akbank Turk A.S. v. Performans Iletisim ve Teknoloji Hizmetleri Ltd. Sti./ Cemil Fidanligul
Case No. DCC2008-0003
1. The Parties
The Complainant is Akbank Turk A.S., Levent, Istanbul, of Turkey, represented by Istanbul Patent & Trademark Consultancy Ltd., Turkey.
The Respondent is Performans Iletisim ve Teknoloji Hizmetleri Ltd. Sti./ Cemil Fidanligul, Sisli, Istanbul, of Turkey.
2. The Domain Name and Registrar
The disputed domain name <akbank.cc> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 15, 2008. On April 15, 2008, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On April 15, 2008, eNom transmitted by email to the Center its verification response disclosing the underlying registrant and contact information for the disputed domain name which differed from the named Respondent in the Complaint. The Center sent an e-mail communication to the Complainant on April 21, 2008 providing the underlying registrant information disclosed by the Register, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on April 28, 2008. 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 April 30, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 20, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 21, 2008.
The Center appointed Nasser A. Khasawneh as the sole panelist in this matter on May 28, 2008. 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, Akbank Turk A.S. a/k/a Akbank, is a top tier bank in Turkey, and offers a wide range of banking products to individuals and businesses. Akbank was founded in 1947 and is currently headquartered in Istanbul, with an extensive branch network all over Turkey. Akbank has also established a number of financial services companies, which have become well known in Turkey as well. The bank also has regional presence through branches in the Netherlands, Germany, and Malta. The shares of Akbank are traded on the Istanbul Stock Exchange.
Akbank holds a considerable number of trade and service marks registrations in Turkey and in other jurisdictions in addition to International registrations under the Madrid Protocol. The oldest of the Turkish registrations dates back to an application date of 1996.
Akbank has been operating online under the domain names <akbank.com> and has been the owner of the domain name <akbank.com.tr> since December 9, 1996, which resolves to the main website of the bank under <akbank.com>.
The Respondent has registered the Disputed Domain Name <akbank.cc> on November 6, 2007 in the country code (.cc) which is the code for the Cocos Islands. The Disputed Domain Name <akbank.cc> resolves to a dormant web page, stating that the website is under construction.
5. Parties’ Contentions
The Complainant alleges and contends the following:
- The Complainant contends that Akbank is now the largest bank in Turkey in terms of assets and that it has an extensive network of branches and is widely known in Turkey, regionally and internationally;
- The Complainant alleges that the Respondent has no rights or legitimate interest in the Disputed Domain Name, and that the only interest that the Respondent may have in the Disputed Domain Name is that “of a person, not having an apparent particular connection to the trademark AKBANK, in registering a domain name <akbank.cc> who wants to “somehow create a connection to the Complainant and its trademark AKBANK”, and that the only way that the Respondent would have a right to the Disputed Domain Name is if the Complainant has specifically granted it that right;
- The Complainant alleges that the Respondent, as a Turkish Citizen, is clearly aware of the Complainant’s extensive goodwill and reputation in its trade/service mark AKBANK;
- The Complainant contends that the Respondent has registered and is using the Disputed Domain Name in bad faith, as the Complainant alleges that the Respondent has registered the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of the trademark for valuable consideration in excess of the domain name registrant’s out-of-pocket costs for the following reasons:
- the website at the Disputed Domain is inactive, and that this fact alone supports bad faith use and registration;
- the Respondent is located in Turkey, so it would be difficult to imagine that the Respondent would not have been aware of the trademarks of the Complainant, and as such that is a strong indication that the Respondent intends to create an association with the Complainant’s trademark;
- registering a domain name of a well-known trademark is necessarily in bad faith.
- The Complainant alleges that the Respondent registered the Disputed Domain Name in order to prevent the Complainant from reflecting the mark in a corresponding domain name, as the Respondent has constructive knowledge of the trademark rights of the Complainant in the Disputed Domain Name;
- The Complainant contends that any use of the Disputed Domain Name by the Respondent would necessarily result in infringing the trademark rights of the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to the Policy, the Complainant must prove each of the three elements referred to in paragraph 4(a) of the Policy in order to have a favorable order, namely that:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has 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.
A. Identical or Confusingly Similar
The Panel finds that the Disputed Domain Name <akbank.cc> is identical and/ or confusingly similar to the numerous trademarks to which the Complainant has rights; the Complainant has demonstrated through evidence that is acceptable to the Panel that it is the owner of the various trademarks, which are either identical to the Disputed Domain Name (AKBANK), or are fully incorporated in the name “AK” or confusingly similar to the Disputed Domain Name as they consist of Disputed Domain Name and another term(s) (e.g. “AKBANK express”, “AKBANK Kral Kobi” “AKBANK e-Kredi”, etc).
The Panel is convinced that the Complainant has well established trademark rights in the word AKBANK.
Consequently, the Panel finds for the Complainant on the first element of the Policy.
B. Rights or Legitimate Interests
The Complainant contends that the Respondent does not have rights in the disputed domain name <akbank.cc>, as the Respondent is not affiliated with the Complainant, nor does it have a license from the Complainant, and that the Respondent keeps an inactive website under the Disputed Domain Name, which was created after the Complainant had established long standing rights in its trade and service marks. Also, the Complainant contends that considering the goodwill established by the Complainant in the trademark AKBANK, it is not conceivable that the Respondent (located in Turkey) has rights or legitimate interests in the dispute domain name.
In the absence of a response from the Respondent, and its failure to demonstrate any preparation to use the Disputed Domain Name for a bona fide offering of goods and services, and considering the fact that the Respondent is not apparently commonly known by the Disputed Domain Name, the Panel is satisfied that the Complainant has made a prima facie case by providing convincing evidence that the Respondent lacks any legitimate rights or interests in the Disputed Domain Name. The consensus view of the WIPO Panels considers that the burden of proving lack of legitimate interest is shifted to the respondent once the complainant has made its prima facie case, as described herein. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455, and Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
Based on the analysis above, the Panel finds that the Complainant has satisfied Paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a list of indicative circumstances that suggest bad faith registration and use, however such list is not exhaustive and a finding of registration and use in bad faith depends on the circumstances of the case.
In this case, the Panel is convinced that, on a balance of probabilities, the Respondent must have been aware and must have had knowledge of the goodwill and fame of the trade and service mark AKBANK, particularly in light of the fact that the domain name was registered a while after the date of the earlier registrations of the trademark in the name of the Complainant.
Moreover, the Panel agrees with the Complainant, that under such circumstances, the registration of a domain name fully incorporating a mark by a registrant with a location such that familiarity with a mark may be reasonably construed is a strong indication of bad faith registration and use. See Cellular One Group v. Brien, WIPO Case No. D2000-0028, and Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003. To support its view, the Panel points to the various WIPO Panels which have found that the registration of a domain name, which incorporates a famous trademark, is necessarily in bad faith; such decisions include Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163, and AT&T Corp. v. John Zuccarini d/b/a Music Wave and RaveClub Berlin, WIPO Case No. D2002-0440.
Therefore, the Panel finds for the Complainant on the third element of the Policy.
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, <akbank.cc> be transferred to the Complainant.
Nasser A. Khasawneh
Dated: June 11, 2008