WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Türkiye Cumhuriyeti Ziraat Bankası Anonim Şirketi v. Mehmet Kahveci,

Case No. D2016-1132

1. The Parties

The Complainant is Türkiye Cumhuriyeti Ziraat Bankası Anonim Şirketi of Ankara, Turkey, represented by Grup Ofis Marka Patent Inc., Turkey.

The Respondent is Mehmet Kahveci of Boston, Massachusetts, United States of America, represented by Uğur&Gög, Turkey.

2. The Domain Name and Registrar

The disputed domain name <ziraat.com> is registered with GoDaddy.com, LLC (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 7, 2016. On June 7, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 8, 2016, 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. Further to the Center's communication regarding the language of the proceeding (transmitted in both Turkish and English), the Complainant submitted its request for Turkish to be the language of the proceeding on June 24, 2016. The Respondent submitted its request for English to be the language of the proceeding on July 18, 2016 in his Response to the Complaint.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 28, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 18, 2016. The Response was filed with the Center on July 18, 2016.

The Center appointed Dilek Üstün Ekdial as the sole panelist in this matter on July 26, 2016. 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 well-known Turkish bank providing banking and financial services under the firm name "Ziraat Bankası" since August 15, 1888. It has a large number of branches inside and outside of Turkey.

The Complainant is the registered owner of ZİRAAT BANKASI and ZİRAAT BANKASI-figurative trademarks in Turkey and other jurisdictions (hereinafter, "ZİRAAT BANKASI trademarks"). The trademarks cover protection mainly for banking and financial services. According to the provided documents in the case file, the ZİRAAT BANKASI trademark was first registered in Turkey in 2005. Meanwhile, the Turkish Patent Institute (the competent authority for trademark registrations in Turkey) certified that ZİRAAT BANKASI is a well-known trademark in Turkey.

Since July 30, 1997 the Complainant is the legal owner of the domain name <ziraat.com.tr> and is still using this domain name.

The disputed domain name was registered on January 23, 1996.

5. Parties' Contentions

A. Complainant

The Complainant claims that the business operated by the Complainant has used the "Ziraat" name since 1888 and that this has been the "trade name of the Complainant since this date". It maintains that the disputed domain name is identical to the Complainant's mark.

The Complainant asserts that the Respondent is neither using the disputed domain name in connection with a bona fide offering of goods and services nor is the disputed domain name a mark by which the Respondent is commonly known.

The Complainant contends that the Respondent has a history of registering domain names that incorporate the marks of Turkish companies in order to prevent the owners of those marks from registering a domain name corresponding to those marks.

Given this, the Complainant maintains that the Respondent was fully aware of the Complainant's rights in the ZİRAAT BANKASI trademarks at the time the disputed domain name was registered. It claims that the Respondent hoped to "derive benefits from the Complainant for huge consideration in excess of the domain name's out-of-pocket registration costs". It accepts that there is, and had been, no explicit offer to sell the disputed domain name to the Complainant, but claims that this is the real intention of the Respondent in this case.

The Complainant further contends that the passive holding of the disputed domain name by the Respondent in the circumstances of this case involves bad faith use. In this respect, it asserts that it is not possible to imagine any plausible future active use of the disputed domain name by the Respondent that would not be illegitimate.

B. Respondent

The Respondent acknowledges that it registered the disputed domain name but asks the Panel to deny the remedy requested by the Complainant. The Respondent states that it registered and has continuously owned the disputed domain name and used it in good faith since 1996.

The Respondent submits that a search page of the Turkish Patent Institute in Turkey reveals many "established and different" companies bearing the name "Ziraat" which have no connection with the Complainant and cites several examples.

The Respondent also adds that the word "ziraat" is a generic word and is not distinctive.

According to the Respondent, the disputed domain name <ziraat.com> was used as a website to sell agricultural machinery and equipment, until the website was abondoned due to financial loses.

The Respondent states that it neither registered the disputed domain name primarily to sell it to the Complainant, nor has it attempted to sell it and notes that it denies any allegation of bad faith. The Respondent asserts that the Complainant has failed to satisfy the burden of proof. The Respondent also denies registering the disputed domain name in an attempt to attract Internet users to the associated website for commercial gain by creating a likelihood of confusion with the Complainant's mark. The Respondent alleges that the disputed domain name <ziraat.com> was not registered by the Respondent primarly to distrupt the Complainant's business.

6. Discussion and Findings

6.1. Language of the Proceeding

Paragraph 11(a) of the Rules provides that:

"Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding."

The language of the Registration Agreement for the disputed domain name is English.

The Panel concludes, according to the Rules, paragraph 11(a), that there is no prejudice or unfairness to the Complianant in accepting the Response in English and for its decision to be rendered in English. Accordingly, the Panel determined that the language of this administrative proceeding be English.

6. 2. Substantive Issues

Paragraph 15(a) of the Rules requires the Panel to decide the Complaint on the basis 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.

Under paragraph 4(a) of the Policy, the Complainant bears the burden of showing:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

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

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy, a complainant must prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.

The Panel accepts that the disputed domain name is confusingly similar to the Complainant's various registered trademarks relied upon in this case.

Altough the Complainant's registered trademarks include the terms "Bank" and "Bankası"; in this Panel's view, the use of the Complainant's trademark without the Turkish term "bankası" (meaning "bank") is not sufficient to distinguish the disputed domain name from the Complainant's trademarks.

The UDRP, however, does not require that a complainant hold rights specifically in a registered trademark or service mark. Instead, it provides only that there must be "a trademark or service mark in which the complainant has rights", without specifying how these rights are acquired. With this distinction in mind, many decisions under the UDRP have therefore determined that common law or unregistered trademark rights may be asserted by a complainant and will satisfy the first condition of the UDRP.

ZİRAAT has also been the Complainant's company name since the year 1888.

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 (as is the case here) 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.

The Panel finds that the requirements of paragraph 4(a)(i) of the Policy are fulfilled, and consequently, the Panel finds for the Complainant on the first element of the Policy.

B. Rights or Legitimate Interests

For reasons that are explained in detail under the heading of "Registered and Used in Bad Faith" below, the Panel accepts the Complainant's claim that the real reason why the disputed domain name was registered and is being held is with a view to taking unfair advantage of the Complainant's marks. Given this, it is clear that the Respondent does not have a right or legitimate interest in the disputed domain name and the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy. In addition, the Panel notes that in these circumstances passive holding of the disputed domain name does not give rise to rights or legitimate interests.

C. Registered and Used in Bad Faith

The Panel accepts the Complainant's contention that the disputed domain name was registered and is being used by the Respondent in bad faith.

The evidence brought forward by the Complainant showing that the Respondent has a long history of registering domain names that incorporate the marks of well-known Turkish companies is compelling. The Panel is persuaded that (at least in Turkey) the term "Ziraat" is well-known and is associated with the Complainant. Against this background, the obvious inference is that the disputed domain name was registered and is being used with a view to take unfair advantage in some form or other of the reputation and goodwill developed by the Complainant in that term, whether that be by way of sale of the disputed domain name to the Complainant or otherwise.

The Respondent has been the respondent, or the panel has held that the Respondent can be treated as the controller or the underlying registrant of the disputed domain name, in at least eight prior proceedings under the Policy in which a finding of registration and use in bad faith was made. These are:

Diler Demir Çelik Endüstri Ve Ticaret Anonim Şirketi, Diler Yatirim Bankasi Anonim Şirketi v. Dr. Mehmet Kahveci, WIPO Case No. D2014-0060 (disputed domain name: <diler.com>, originally created in April 1996, transfer ordered);

Tupras Turkiye Petrol Rafinerileri A.S. (TUPRAS) v. Domains By Proxy, LLC / ",", WIPO Case No. D2013-1247 (disputed domain name: <tupras.com>, originally created in February 1996, transfer ordered);

Kibar Holding A.Ş. and Kibar Diş Ticaret A.Ş. v. Dr. Mehmet Kahveci, WIPO Case No. D2012-1417 (disputed domain name: <kibar.com>, originally created on April 17, 1996, transfer ordered);

Merko Gida Sanayi Ve Ticaret Anonim Şirketi v. Dr. Mehmet Kahveci, WIPO Case No. D2010-1124 (disputed domain name: <merko.com>, originally created on April 17, 1996, transfer ordered);

Alarko Holding A.S. v. ",", WIPO Case No. D2007-0909 (disputed domain name: <alarko.com>, originally created on January 23, 1996, transfer ordered);

Yildiz Holding A.S., Ülker Gida Sanayi Ve Ticaret A.S. v. Dr. Mehmet Kahveci, WIPO Case No. D2002 1141 (disputed domain name: <ulker.com>, originally created on April 17, 1996, transfer ordered);

Akbank v. Dr. Mehmet Kahveci, WIPO Case No. D2001-1488 (disputed domain name: <akbank.com>, originally created on September 12, 1999, transfer ordered);

Vestel Elektronik Sanayi ve Ticaret AS v. Mehmet Kahveci, WIPO Case No. D2000-1244 (disputed domain name: <vestel.com>, originally created on April 17, 1996, transfer ordered).

On the subject of registration in bad faith, the Complainant submits that the Respondent targets well-known companies before the corresponding trademarks are registered and/or before companies register domain names including their trademarks. The Complainant makes reference to the panel's analysis in Tupras Turkiye Petrol Rafinerileri A.S. (TUPRAS) v. Domains By Proxy, LLC/",", supra as authority for the following propositions: "(1) a delay in bringing the Complaint should not matter, as the doctrine or defense of laches should not apply in a case brought under the Policy; (2) the fact that the disputed domain name pre-dates the Complainant's registered trademark should not be fatal to the Complaint; and (3) there can be bad faith registration if a respondent is clearly aware of a complainant at the time of registration of the domain name concerned and the aim of such registration is to take advantage of the confusion between such domain name and potential rights of the Complainant in a mark. This includes where the Complainant has used such mark in a trademark sense before obtaining a corresponding registered trademark."

In the circumstances, noting particularly the Complainant's long trading history under "ZİRAAT", predating the registration of the disputed domain name and the Respondent's pattern of bad faith conduct, the Complainant has fulfilled the requirements of Policy paragraph 4(a)(iii). In the totality of the circumstances the passive holding of the disputed domain name is no bar to a finding of bad faith use.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <ziraat.com> be transferred to the Complainant.

Dilek Üstün Ekdial
Sole Panelist
Date: August 6, 2016