WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Turkiye is Bankasi A.S. v. Elmasgunes Bilisim Hizmetleri

Case No. D2011-1118

1. The Parties

The Complainant is Turkiye is Bankasi A.S. of Istanbul, Turkey, represented by Grup Ofis Patents & Trademarks Agency Limited, Turkey.

The Respondent is Elmasgunes Bilisim Hizmetleri of Manisa, Turkey.

2. The Domain Name and Registrar

The disputed domain name <biyokimlik.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 1, 2011. On July 4, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 5, 2011, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 July 8, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 28, 2011. The Response was filed with the Center on July 28, 2011. The Center received the Complainant’s supplemental filing on August 8, 2011.

The Center appointed Dilek Ustun Ekdial as the sole panelist in this matter on August 10, 2011. 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 in this administrative proceeding is Turkiye is Bankasi Anonim Sirketi, a Turkish bank (corporation) established under the laws of the Republic of Turkey.

The disputed domain name <biyokimlik.com> was registered on July 10, 2010, according to the concerned registrar’s WhoIs database.

The Complainant applied to register trademarks BIYOKIMLIK and TURKIYE IS BANKASI BIYOKIMLIK with application number 2010/44053, 2010/44062 respectively with the filing date of July,6 2010 as to cover the goods and services in classes 09, 35, 36, 38, 41, 42 according to the International Classification Of Goods And Services under the Nice Agreement.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical to its BIYOKIMLIK trade/service mark, that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that the disputed domain name was registered and is being used in bad faith.

B. Respondent

The Respondent submits that:

1) The disputed domain name, <biyokimlik.com> means “bio-identity” and is an abbreviation of “biyolojik kimlik” (“biological identity”) in Turkish. It is not an innovation mark as the Complainant claimed.

2) He has rights and legitimate interests in the disputed domain name.

3) The disputed domain name was not registered or used in bad faith. He states that buying and selling domain names is legal. Every business owner can sell their business goods if someone pays for its value. The disputed domain name and the web page that will be published on the domain name, is a business for article-writers. If someone pays for article-writer's article, they may sell it to anyone else. The disputed domain name is listing at “www.sedo.com” for that reason.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) The domain name registered by the Respondent 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 with respect to the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has trademark rights in the word “Biyokimlik”. First of all, the Complainant has a registered trademark combining the words “Turkiye is Bankasi” and “Biyokimlik”. The date of application is July 6, 2010. Furthermore, based on the documentation presented by the Complainant, it is evident that the Complainant had launched a marketing campaign utilizing the word “Biyokimlik” in the year 2010.

The Panel concurs with the opinion of several prior UDRP panels which have held that, when a domain name wholly incorporates a complainant’s registered mark that may be sufficient to establish confusing similarity for purposes of the Policy. See, e.g., Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle, WIPO Case No. D2005-1105; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047; Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615.

Therefore, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy is met.

B. Rights or Legitimate Interests

The Panel examined the current use by the Respondent of the disputed domain name. At present, the disputed domain name is inactive.

Yes, there is a disclaimer which said that “Bu sitenin Türkiye İş Bankası ile bir ilişkisi yoktur.” “This site has not any connection with Türkiye İş Bankası.”

“The fact that the Respondent has felt it necessary to include in the website the disclaimer quoted above indicates to the Panel that the Respondent was well aware when it created the website and connected it to the Domain Name that a substantial proportion of visitors would assume it to be the Complainant’s official site in the absence of the disclaimer. By then of course the Respondent has benefited from that initial interest confusion, whether the benefit be commercial or non-commercial. The visitor is at the Respondent’s website. He might not have been there if the website had been connected to a different domain name”. (See (1) Galatasaray Spor Kulubu Dernegi (2) Galatasaray Pazarlama A.S. (3) Galatasaray Sportif Sinai Ve Ticari Yatirimlar A.S. v. Maksimum Iletisim A.S., WIPO Case No. D2002-0726).

Besides, a number of previous decisions have dealt with disclaimers. In the ISL Worldwide and The Federal Internationale de Football Association .v. Western States Ticket Service, WIPO Case D2001-0070, the panel stated:

“The Panel does not find the Respondent’s Disclaimer effective for the purposes of either paragraph 4(a)(i) or 4(a)(iii) of the Policy. It is tantamount to committing a tortuous act but then seeking to avoid liability after the event. It is only by unauthorised use of the trademark that the potential customer is brought to the website (containing the disclaimer) in the first place.”

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. Nor does the disputed domain name appear to the Panel to be in use for a purpose connected to its claimed meaning in Turkish. The Panel is not convinced by the Respondent’s claim that this domain name was registered to “publish articles”.

The Complainant’s campaign BIYOKIMLIK has been widely advertised in Turkey. The Respondent confirms to be “clearly aware” of the Complainant’s BIYOKIMLIK trade/service mark. This knowledge, coupled with the lack of use by the Respondent of the disputed domain name 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 name. 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 disputed domain name in connection with a bona fide offering of goods and services. As for paragraph 4(c)(ii) of the Policy above, the Respondent is not commonly known by the disputed domain name. As for paragraph 4(c)(iii) of the Policy, this cannot apply as the Respondent himself has stated that he intended to use the disputed domain name 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;”

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 name came very shortly after the launch of the BIYOKIMLIK 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 BIYOKIMLIK campaign.

2) Paragraph 4(b) of the Policy provides a list of indicative circumstances that suggest bad faith registration, however, such list is not exhaustive and a finding of bad faith depends on the circumstances of each case.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

The Panel considers it an inescapable conclusion from the undisputed facts and circumstances reflected in the record that the Respondent knew of and had in mind the Complainant’s marks when registering the disputed domain name. See generally Ticketmaster Corporation v. Spider Web Design, Inc., WIPO Case No. D2000-1551. As noted in Research In Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492, when a domain name is so obviously connected with a complainant, the very use of the domain name by a registrant with no connection to the complainant suggests “opportunistic bad faith”. See also Paule Ka v. Paula Korenek, WIPO Case No. D2003-0453. In view of the foregoing, and for reasons discussed as well under the preceding heading, the Panel can ascribe no motive for the Respondent’s registration and use of the disputed domain name as reflected in the record except to trade on the goodwill associated with the Complainant’s marks.

The Respondent’s bad faith is also shown by its use of the disputed domain name or lack thereof.

In conclusion, the Panel finds that the third test under paragraph 4(a) of the Policy has been established successfully by the Complainant.

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 <biyokimlik.com> be transferred to the Complainant.

Dilek Ustun Ekdial
Sole Panelist
Dated: August 24, 2011