The Complainant is Akbank Turk A.S., of Istanbul, Turkey, represented by Istanbul Patent & Trademark Consultancy Ltd., Turkey.
The Respondent is Domain Privacy Group, Inc. / tamam karaca, of Istanbul, Turkey.
The disputed domain name <fishkart.com> is registered with Netfirms, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 18, 2008. On November 19, 2008, the Center transmitted by e-mail to Netfirms, Inc. a request for registrar verification in connection with the disputed domain name. On November 20, 2008, Netfirms, Inc. transmitted by e-mail to the Center its verification response informing the Center that the entity identified in the original Complaint as the Respondent (Domain Privacy Group, Inc.) was not the registrant of the disputed domain name. In response to a notification by the Center of the information provided by the registrar regarding the registrant tamam karaca, the Complainant filed an amended Complaint on November 28, 2008. The Center verified that the Complaint together with the amended 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 proceeding commenced on December 3, 2008.
In accordance with the Rules, paragraph 5(a), the due date for Response was December 23, 2008. The Respondent only sent two e-mails on November 24 and 30, 2008; in the first he stated that he did not understand the e-mail and in the second that there were a lot of lies in the Complaint. However, the Respondent did not file a formal response, and the Center notified the Respondent's default on December 24, 2008.
The Center appointed Gökhan Gökçe as the sole panelist (the “Panel”) in this matter on January 26, 2009. 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.
The Complainant, Akbank Turk A.S., is widely known and recognised as “Akbank”, was founded in 1947, has its headquarters in Istanbul and is one of the leading banks in Turkey.
The Complainant has an extensive domestic distribution network and offers a wide range of retail, commercial, corporate, private banking, and international trade finance services in Turkey and abroad.
The Complainant has a considerable number of trade and service mark registrations related to its trademark AKBANK in Turkey, and other jurisdictions under the Madrid Protocol.
“Fish Card” is the name of a credit card developed by the Complainant and Boyner Holding jointly; this credit card incorporates a loyalty point scheme and promotional discount advantages. The Complainant has heavily promoted the Fish Card through advertising materials, print, broadcast, cable media, and the Internet. It is widely known that Fish Card is a credit card provided by and connected to the Complainant, a well known bank. The service mark FISH CARD is widely recognized as representing the Complainant's reputation of a trustworthy and established bank offering quality service.
The Complainant has filed several trade and service mark applications with the Turkish Patent Institute consisting of the words “FISH” and various suffixes including “FISH CARD”, and the earliest application date is May 21, 2008. The Complainant's applications have not been registered yet, but the Complainant's use of the mark FISH and FISH CARD is widely known throughout Turkey and among users in Europe, establishing rights of the Complainant in the service mark FISH CARD.
The disputed domain name is a combination of two (2) words, “Fish” and “Kart”. “Kart” translates from Turkish to “card”.
The Respondent's contact details were not immediately available due to the Respondent's use of a private registration service. Upon request, Netfirms Inc. informed the Center that the registrant was recorded as tamam araca, and provided an e-mail address that consisted of a name “Bulent Karaca” in the registrant's contact information. The Respondent was contacted via this e-mail address, and two responses were received in which the sender appeared as Bulent Karaca. There is no further information about the Respondent. Although the disputed domain name was registered by tamam karaca, the e-mail correspondences from the registrant's e-mail address indicate the holder of the e-mail address is Bulent Karaca. Accordingly, the Panel understands that, despite the registrar and WhoIs-confirmed registrant being listed as tamam karaca, the Respondent's name may be Bulent Karaca.
The Respondent registered the disputed domain name on June 12, 2008.
In accordance with paragraph 4(b)(i) of the Policy, the Complainant requests that the disputed domain name should be transferred to the Complainant.
The Complainant submits the grounds for this proceeding are listed in paragraph 4(a) of the Policy.
Furthermore, the Complainant submits that its trademark AKBANK and FISH CARD are well known trademarks, and that the Respondent, must have had prior knowledge of this when he registered the disputed domain name in June 2008.
The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant's trademark FISH CARD. Additionally, the domain name contains two (2) separate words “fish” and “kart”, the word “kart” means “card” in Turkish.
It is submitted that the disputed domain name will cause the Complainant's customers confusion as use of the word “kart” rather than “card” does not eliminate visual and conceptual identity with the Complainant's FISHCARD trademark. Furthermore, the domain name creates a likelihood of confusion of the Complainant's consumers as it resolves to an inactive website, and one would expect the domain name to resolve to a website owned or affiliated with the Complainant.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has never granted the Respondent a licence or permission to use the mark FISH KART, the Respondent has no association with the Complainant, and the Respondent has never been known by the term “fish kart”.
The Complainant notes that no goods or services are offered by the Respondent, and it is submitted that the Respondent is not using the domain name for legitimate noncommercial or fair use.
The Complainant asserts that at the time of registering the domain name, the Respondent must have been aware of the reputation and goodwill of the Complainant's trademarks FISH CARD and AKBANK. The Complainant relies on rights in the trademark FISH CARD, which are established as the use of the mark FISH CARD is recognised by the public as indicating association with the Complainant.
It is submitted that the Complainant is entitled to protect and control use of its trademark by third parties on the Internet, and the Respondent in this case would only have a right to the disputed domain name if the Complainant had specifically granted that right, which the Complainant did not grant.
The Complainant submits that the Respondent registered the domain name in bad faith and primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the owner for valuable consideration in excess of the domain name registrants out-of-pocket costs.
The disputed domain name, <fishkart.com>, incorporates a famous mark, and the Complainant asserts that the Respondent, who has given his address in Turkey, knew or should have known of the existence of the Complainant's product, Fish Card. It is submitted that the Respondent acted in bad faith as he knew at the time of registration that he could not make legitimate commercial use of a domain name incorporating a famous mark without infringing the trademark owner's rights.
The Complainant assumes that the Respondent is familiar with the Turkish language. Although there are no specific street address contact details of the Respondent, the Respondent's address provided by the concerned registrar is in Turkey. Accordingly, the Complainant submits that the Respondent is familiar with the Turkish language and at the time of registration of the disputed domain name, he must have been aware of the implications and benefits that could be derived from registering the domain name.
The Complainant states that at the time of registration the Respondent had knowledge of the trademark rights of the Complainant and that FISH CARD is a well-known trademark of the Complainant. It is suggested that the Respondent registered the disputed domain name in order to prevent the Complainant from reflecting the mark in corresponding domain names and offering online services.
The Complainant notes that the domain name currently resolves to a passive website and submits that this is evidence of bad faith registration and use. There is no apparent legitimate use of the domain name and there is no indication that the Respondent intended to use the domain name in good faith.
The Complainant argues the Respondent has taken active steps to conceal his identity by using a private registration service and provided minimal contact information, which is a strong indication of bad faith.
The Respondent did not respond to the Complainant's contentions, but only stated in his e-mails that the Complainant's claims were not true.
Paragraph 4(a) of the Policy sets forth the following three elements which the Complainant must prove, during the administrative proceeding, to merit a finding that the disputed domain name be transferred to the Complainant:
(a) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(b) the Respondent has no rights or legitimate interests in respect of the domain name; and
(c) the domain name has been registered and is being used in bad faith.
Pursuant to paragraph 15(a) of the Rules, the Panel shall decide a 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.
In the absence of a reply from the Respondent, the Complainant must still establish the elements of paragraph 4(a) of the Policy, The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064. Additionally, the Panel may accept as true factual allegations in the complaint, ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425.
The Complainant has provided sufficient evidence of owning several trade and service mark applications with the Turkish Patent Institute consisting of the words “fish” and “fish card”.
The Complainant submits that although it does not own a registered trademark, the term “fish card” is well-known throughout Turkey and among users in Europe. And the Complainant submits that it has established common law rights in the service mark FISH CARD, Jeanette Winterson v. Mark Hogarth, WIPO Case No. D2000-0235.
The Complainant relies on rights in the trademark FISH CARD on the basis that it has established wide recognition of the mark; it is common knowledge that the Complainant is the provider of the Fish Card; and the use of that mark has come to be recognised by the general public as indicating an association with words written and produced exclusively by the Complainant.
The term “fishkart” translates from Turkish as “fishcard”, and therefore it would cause confusion to the users as there would be a legitimate expectation that the disputed domain name is connected to the Complainant. Further, the Panel is of the opinion that there is a likelihood of confusion based on the overall visual and phonetic similarities between the trademark and the disputed domain name, and it is therefore confusingly similar to the trademarks in which the Complainant has rights.
The Complainant owns the following domain names, <fishkart.com.tr>, <fishcard.com.tr> and <fishcard.com> as evidenced in the relevant WhoIs databases. The Panel notes that when entered on January 29, 2009 the following domain names, <fishcard.com> and <fishkart.com.tr>, they resolved to the official website of the Complainant with the AKBANK trademark prominently on the webpage. The webpage provides information about the Fish Card and enables potential customers to complete an application for the credit card. The only difference with the disputed domain name is either the absence of “.tr”, or alternatively, that the word “card” in the domain name <fishcard.com> is written in Turkish as “kart”. Otherwise, the disputed domain name is virtually the same as the domain names used and owned by the Complainant.
Further, there is a high probability that potential customers who are looking for the Complainant's website are very likely to type in “fish kart” using the Turkish word for a “card” rather than “fish card” in English, thereby being directed to the Respondent's website at the disputed domain name.
It is also worth noting that upon checking the Turkish Patent Institute the Panel discovered that an application to register the trademark FISH CARD had been submitted on May 15, 2008 and later withdrawn in favour of Akbank's application.
It is obvious to the Panel that the Complainant has applied for these domain names in order to protect its trademark and goodwill. The fact that the Respondent registered the disputed domain name before the Complainant does not prevent a finding of identity or confusing similarity, Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827. The Panel recognises the Complainant's common law rights and concludes that the disputed domain name is virtually identical and confusingly similar with the Complainant's trademarks and domain names.
The panel finds that the requirements in paragraph 4(a)(i) of the Policy are fulfilled. Consequently, the Panel finds for the Complainant on the first element of the Policy.
Pursuant to paragraph 4(c) of the Policy, the Respondent may exhibit that it has rights or legitimate interests in the domain name by showing one or more of the following circumstances:
(i) before any notice to the Respondent 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 (as an individual, business, or other organisation) has been commonly known by the domain name, even if the Respondent 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 Complainant submits evidence at Annex 5 that when it visited the disputed domain name, the website resolved to a web page stating “UNDER CONSTRUCTION” and provided an e-mail address “yardim@fishkart.com”. When the Panel visited the website at the disputed domain name on January 29, 2009, it resolved to a web page that stated no DNS server for that domain name. Nonetheless, the Respondent is not making use of the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services, and the domain name resolves to an inactive website.
The Complainant contends that the Respondent has no rights or legitimate interests in the domain name, see Quixtar Investments, Inc. v. Scott A. Smithberger and QUIXTAR-IBO, WIPO Case No. D2000-0138. It is submitted that the Respondent has neither association to the Complainant, nor a connection to the domain name, and is not commonly known by the term “fish kart”. Furthermore, the Respondent was more than likely aware of the Complainant's established reputation because it would appear from the present record that Fish Card is commonly known and recognised as a product of the Complainant. There is no evidence or suggestion that the Respondent has made any effort, or has any intention of using the domain name for any purpose or legitimate activity consistent with having rights or legitimate interests, and this suggests that there is no intention of fair use and the Respondent registered the domain name for commercial gain.
This is supported by the fact the domain name is offered for auction sale on a website “www.gittigidiyor.com” which is a Turkish online auction and shopping website in which people and businesses buy and sell goods or services. The Panel discovered this information when it entered the domain name into a search engine on January 29, 2009 and one of the results was a link for an advertisement on GittiGidiyor, under id number 13943690, for the disputed domain name. The advert states “AKBANK ve BOYNER MARKASI: www.fishkart.com” which translates from Turkish to “AKBANK and BOYNER TRADEMARK: www.fishkart.com”. This provides concrete evidence that the disputed domain name was registered and is being used in bad faith and for commercial gain, not for any legitimate reason.
Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. As the Respondent failed to submit a response and rebut the allegations made against him, the Panel accepts the Complainant's contentions as true, De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005.
In the absence of a response, the Respondent was unable to demonstrate rights or legitimate interests in the disputed domain name and therefore the Panel accepts the Complainant's contentions as true. The Panel therefore concludes that the Respondent has not satisfied paragraph 4(c) of the Policy and concludes that the Respondent has no rights or legitimate interests in the disputed domain name.
The requirements of paragraph 4(a)(ii) of the Policy are fulfilled, and consequently the Panel finds in favour of the Complainant on the second element of the Policy.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that, if found by a panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or 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; or
(ii) the respondent has 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) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's web site or location or of a product or service on the respondent's web site or location.
Although the domain name was registered before the Complainant registered a trademark, the Complainant had established rights in the trademark FISH CARD because the earliest application date is May 2008 prior to the Respondent's registration of the disputed domain name in June 2008. Although the Respondent registered the disputed domain name at an earlier date than the trademark registration, it is clear the registration was in bad faith as the intention behind the registration was to take advantage of the Complainant's trademark by creating a confusingly similar domain name and derive commercial gain using the Complainant's rights in the trademark FISH CARD, see Kangwon Land, Inc. v. Bong Woo Chun (K.W.L. Inc), WIPO Case No. D2003-0320.
The Panel agrees, when the Respondent registered the disputed domain name, he knew or should have known of the Complainant's reputation and goodwill of the trademarks AKBANK and FISH CARD. Therefore, the Respondent, at the time of registration, must have been aware that any commercial use of the domain name would result in a violation of the Complainant's trademark rights, suggesting that there was never an intention of good faith use, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
With the Respondent's knowledge of the Complainant's trademark rights, the Panel believes the Respondent registered the disputed domain name in order to prevent the Complainant from reflecting the mark in corresponding domain names. The domain name is for sale, further suggesting that the Respondent registered the domain name in bad faith to prevent the Complainant from registering it and for the purpose of selling the domain name to the Complainant at considerable cost. In the absence of rebuttal evidence, it is inferred that the Respondent is the seller of the disputed domain name.
The Respondent is not using the domain name, and it remains inactive. Accordingly, the Panel draws the inference that the domain name was registered in bad faith and primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant at considerable cost, solely for the Respondent's own profit.
There is no reply from the Respondent. While this not conclusive of bad faith, it is a consideration to be taken into account to support the Complainants contentions of bad faith. The Respondent did not provide full contact details and initially concealed his identity with a private registration service which may be an indication of bad faith.
There is no suggestion that the Respondent had any intention of legitimate use, that he enjoys a connection to the domain name, or that there is conceivable good faith use for the disputed domain name.
In reaching a conclusion, the Panel observed whether or not bad faith existed when the domain name was registered and whether or not the domain name was used in bad faith. The Panel draws inferences of bad faith from the following: the disputed domain name is inactive, the Respondent concealed his identity, the Respondent had prior knowledge of the trademark, and the only obvious purpose of registration is resale to the Complainant at considerable cost.
As in Telstra Corporation Limited, supra, and Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131, after examining all circumstances surrounding the registration and use of the domain name, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith. Accordingly, the Panel finds in favour of 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 <fishkart.com> be transferred to the Complainant.
Gökhan Gökçe
Sole Panelist
Dated: February 9, 2009