World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Akbank Turk A.S. v. Mr. Cihan Uluca, Andrew Espanza, Ahmet Mithat

Case No. DCO2010-0001

1. The Parties

The Complainant is Akbank Turk A.S. of Levent-Istanbul, Turkey, represented by Istanbul Patent & Trademark Consultancy Ltd., Turkey.

The Respondents are Mr. Cihan Uluca of Mugla, Turkey, Andrew Espanza of Bolivar, Colombia and Ahmet Mithat of Berlin, Germany (the “Respondents”).

2. The Domain Names and Registrars

The disputed domain names <akbank.co>, <akbanktas.co> and <fishcard.co> are registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.

The disputed domain names <akbank.com.co> and <akbank.net.co> are registered with My.CO Gateway.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 23, 2010. As originally filed, the Complaint pertained to a single domain name <akbank.com>, with the named Respondent being Cihan Uluca. On July 23, 2010, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name <akbank.co>. On July 27 and August 2, 2010, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com transmitted by email to the Center its verification response disclosing registrant and contact information for the domain name <akbank.co> which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 9, 2010 providing the registrant and contact information disclosed by Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on August 14, 2010 and added the <akbanktas.co>, <fishcard.co>, <akbank.com.co> and <akbank.net.co> domain names to the Complaint, together with the Respondents Andrew Espanza and Ahmet Mithat. 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” 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 Respondents of the Complaint, and the proceedings commenced on August 17, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 6, 2010. The Respondents did not submit any formal response. Accordingly, the Center notified the Respondent’s default on September 7, 2010.

At the Complainant’s request, the proceedings were suspended on September 10, 2010 in order to allow the parties to explore settlement options. On September 17, 2010, the Complainant requested that the proceedings be re-instituted, and the parties were notified accordingly.

The Center appointed William R. Towns as the sole panelist in this matter on October 1, 2010. 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, founded in 1947, is one of the largest banks in Turkey, and is widely known as “Akbank”. The Complainant owns trademark registrations for AK and AKBANK in Turkey as well as a number of other countries. The Complainant also has registered FISH CARD as a trademark in Turkey.

The disputed domain name <akbank.co> was registered on July 20, 2010, according to the concerned registrar’s WhoIs database. As of July 23, 2010, when the Complaint was initially filed with the Center, the Respondent Cihan Uluca was listed as the domain name registrant in the WhoIs records. However, on July 27, 2010 the concerned registrar in response to the Center’s request for registrar verification indicated that the domain name registrant was Andrew Espanza. The record reflects that the Complainant’s legal counsel had contacted the Respondent Uluca regarding the disputed domain name prior to filing the Complaint on July 23, 2010, at which time, according to the Complaint, the Respondent indicated the domain name could be bought for USD 20,000. It appears from the record that the Respondent Uluca holds himself out as the CEO of Bydor Telecom (“Bydor”), reportedly a provider of web hosting, domain name registration and reseller services based in Mugla, Turkey.

Notwithstanding the apparent change in domain name holders, on July 27, 2010 the Respondent Uluca sent an email to the Center, inquiring why the domain name <akbank.co> had been locked and requesting its activation. At some time following the suspension to allow settlement exploration, the name of the domain name holder for <akbank.com> was again changed; however, the registrant information was restored to that which existed prior to the suspension, after the Center contacted the concerned registrar.

The additional disputed domain names <akbanktas.co>, <akbank.com.co>, <akbank.net.co>, and <fishcard.co> were registered on July 23, 2010. According to relevant WhoIs data, the domain names <akbank.com.co> and <akbank.net.co> were registered in the name of Andrew Espanza, while <akbanktas.co> and <fishcard.co> were registered in the name of Ahmet Mithat. On July 23, 2010, an email was sent by Ahmet Mithat to Istanbul Patent & Trademark Consultancy Ltd., the Complainant’s legal representatives in this matter, offering to sell these disputed domain names as well as additional domain names incorporating the names of three of the Complainant’s attorneys.

The disputed domain names resolve to an identical website on which each domain name is being offered for sale for USD 20,000. Following a brief display of the sale information and contact information for Andrew Espanza and Ahmet Mithat, Internet visitors to the site are then redirected to the website of another bank, Ziraat, which is a direct competitor of the Complainant. Other than indicating that Espanza is from Bolivar, Columbia and Mithat from Berlin, Germany, the relevant WhoIs data does not include a physical or postal address for either Respondent.

5. Parties’ Contentions

A. Complainant

The Complainant asserts trademark rights in AK, AKBANK, and FISH CARD, and contends that each of the disputed domain names is identical or confusingly similar to one or more of the Complainant’s marks. The Complainant maintains that the circumstances surrounding the registration and use of the disputed domain names demonstrate that all of these domain names are controlled by the Respondent Uluca, and that the Respondents Espanza and Mithat are not separate persons, but rather fictitious names employed by the Respondent Uluca. Accordingly, the Complainant asserts that consolidation of the multiple disputed domain names and multiple named Respondents is appropriate under the Policy and the Rules.

The Complainant maintains that the Respondents have no rights or legitimate interests in the disputed domain names, as the Respondents have not been authorized to use the Complainant’s marks, have not been commonly known by the disputed domain names, and prior to notice of this dispute were not using the disputed domain names in connection with a bona fide offering of goods or services, or otherwise making a legitimate or noncommercial use of the domain names. To the contrary, the Complainant contends that the disputed domain names were registered in order to sell at an exorbitant price to the Complainant or a competitor of the Complainant, clearly establishing the Respondents’ bad faith under the Policy.

B. Respondent

The Respondents did not reply to the Complainant’s contentions.

6. Preliminary Procedural Issue: Consolidation of Multiple Domain Names and Respondents

This Panel held in Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281, that consolidation of multiple registrants as respondents in a single administrative proceeding is appropriate under the Policy and Rules where the disputed domain names or the websites to which they resolve are subject to common control, and consolidation would be procedurally efficient and fair and equitable to all parties.

The uncontroverted facts in the record strongly indicate that the disputed domain names and the website to which they resolve are under common control. When the instant Complaint initially was filed with the Center on July 23, 2010 respecting the disputed domain name <akbank.com>, the Respondent Uluca was identified in the relevant WhoIs records as the domain name holder. At or near the filing of the Complaint, and after Uluca has been placed on clear notice of the Complainant’s rights in the AK and AKBANK marks, the registrant information was changed to Andrew Espanza in an apparent act of cyberflight. The likelihood that this was an act of cyberflight is underscored by Respondent Uluca’s email to the Center dated July 27, 2010, which clearly reflects an awareness of the Complainant’s marks, and manifests an unmistakable assertion of control by Uluca over the domain name.

The Panel further considers it more than mere coincidence that on July 23, 2010, the date on which the initial Complainant was filed, the following occurred: (1) two more domain names reflecting the Complainant’s marks were registered in the name of Respondent Espanza; (2) two additional domain names reflecting the Complainant’s marks were registered in the name of Respondent Mithat; and (3) an email was sent to the Complainant’s legal representative by Mithat offering two of these domain names for sale.

It seems to this Panel highly unlikely that Respondent Mithat would have been aware of Istanbul Patent & Trademark Consultancy Ltd.’s representation of the Complainant as of July 23, 2010 in the absence of a connection between Respondents Uluca, Espanza and Mithat. That a connection exists between Respondents Uluca and Espanza is manifest from the totality of the circumstances. Moreover, the disputed domain names resolve to an identical website on which the domain names are jointly offered for sale (for USD 20,000 each) by Respondents Espanza and Mithat.

The foregoing in the Panel’s view reflects a clear pattern in the registration and use of the disputed domain names indicative of common control of the disputed domain names and the website to which they resolve. Further, the circumstances of the case evince that the Complainant has been the target of common conduct by all of the Respondents directly affecting the Complainant’s rights. In view of the readily identifiable commonalities in the registration and use of the disputed domain names, common conduct by the Respondents affecting the Complainant’s rights, and taking into account the common questions of law and fact and that the number of parties and domain names is manageable, the Panel is of the view that consolidation will be procedurally efficient, and fair and equitable to all parties. Accordingly, the Panel will proceed to a decision on the merits of these domain name disputes.

7. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170.

Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.

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.

Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).

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.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain names are identical or confusingly similar to trademarks or service marks in which the Complainant clearly has established rights. The critical inquiry under the first element of the Policy is whether the mark and domain name, when directly compared, are identical or confusingly similar. See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662.

The disputed domain names <akbank.co> and <fishcard.co> are identical to the Complainant’s AKBANK and FISH CARD marks. The disputed domain names <akbanktas.co>, <akbank.com.co> and <akbank.net.co> incorporate the Complainant’s AK and AKBANK marks in their entirety and as such are confusingly similar. This confusing similarity is not diminished by the addition of a gTLD suffix such as “.com” and “.net”.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

As noted above, once a complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of proof to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) has been made. It is undisputed that the Complainant has not authorized the Respondents to use the Complainant’s marks, and there is no indication that any of the Respondents have been commonly known by the disputed domain names. The Complainant’s AK and AKBANK marks enjoy a strong reputation and are internationally known. The record reflects that the Respondents are offering the disputed domain names for sale at prices greatly exceeding any reasonable out-of-pocket expenses associated with the domain names, in addition to using the disputed domain names to redirect Internet visitors to the website of one of the Complainant’s major competitors.

Pursuant to paragraph 4(c) of the Policy, the respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is 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 Respondents have not submitted a formal Response to the Complaint, and in the absence of any such submission this Panel may accept all reasonable inferences and allegations included in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009.1 In any event, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondents’ registration and use of the disputed domain names within any of the “safe harbors” of paragraph 4(c) of the Policy. To the contrary, the record in this case indicates that the Respondents registered and are using the domain names with the clear intent of exploiting and profiting from the Complainant’s marks.

Such use of the disputed domain names to trade on the Complainant’s goodwill and reputation precludes any bona fide offering of goods or services under paragraph 4(c)(iii) of the Policy. See, e.g., First American Funds, Inc. v. Ult.Search, Inc, WIPO Case No. D2000-1840 (for offering under paragraph 4(c)(i) to be considered bona fide, domain name use must be in good faith under paragraph 4(a)(iii)). See also Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847; Trade Me Limited v. Vertical Axis Inc, WIPO Case No. D2009-0093. Nor, in the circumstances of this case, does the record reflect any legitimate noncommercial or fair use of the disputed domain names within the contemplation of paragraph 4(c)(iii) of the Policy.

Accordingly, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.

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 overriding objective of the Policy is “to curb the abusive registration of domain names in the circumstances where the registrant is seeking to profit from and exploit the trademark of another”. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

The Panel considers it an inescapable conclusion from the undisputed facts and circumstances reflected in the record that the Respondents knew of and had in mind the Complainant’s marks when registering the disputed domain names. 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 Respondents’ registration and use of the disputed domain names as reflected in the record except to trade on the goodwill associated with the Complainant’s marks.

In this case, the undisputed facts and circumstances reflect that the Respondents registered or acquired the domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations in a manner constituting bad faith under paragraph 4(b)(i) of the Policy. The Panel further is of the opinion that the registration of the disputed domain names in the circumstances reflected in the record is indicative of a bad faith pattern of domain name registrations for purposes of paragraph 4(b)(ii) of the Policy.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

8. 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 names, <akbank.co>, <akbanktas.co>, <akbank.com.co>, <akbank.net.co>, and <fishcard.co> be transferred to the Complainant.

William R. Towns
Sole Panelist
Dated: October 15, 2010


1 Some panels have held that a respondent’s lack of response in particular circumstances can be construed as an admission that the respondent has no rights or legitimate interests in a disputed domain name. See, e.g., Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624. Other panel decisions note that adverse inferences may be drawn from a respondent’s failure to reply. See, e.g., Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403.

 

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