WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Turkiye Is Bankasi Anonim Sirketi (Isbank) v. Tuncay Ferdi
Case No. D2011-1512
1. The Parties
The Complainant is Turkiye Is Bankasi Anonim Sirketi (Isbank) of Istanbul, Turkey, represented by Grup Ofis Patents & Trademarks Agency Limited, Turkey.
The Respondent is Tuncay Ferdi of Istanbul, Turkey.
2. The Domain Name and Registrar
The disputed domain name <bankamatik.net> is registered with Melbourne IT Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 8, 2011. On September 9, 2011, the Center transmitted by email to Melbourne IT Ltd. a request for registrar verification in connection with the disputed domain name. On September 13, 2011, Melbourne IT Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 14, 2011.
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 proceedings commenced on September 14, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 4, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 5, 2011.
The Center appointed Selma Ünlü as the sole panelist in this matter on October 13, 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 facts stated in the Complaint are as follows:
(1) The Complainant, Turkiye Is Bankasi Anonim Sirketi, is the first national Bank of Turkey which was founded in 1924. The Complainant provides financial services with its group companies, affiliates and partners. The Complainant has various branches abroad including United Kingdom of Great Britain and Northern Ireland, Bahrain, Iraq, Germany, Netherlands, France and Switzerland.
(2) BANKAMATIK is the brand name of the ATMs implemented by the Complainant that embody a concept of a whole bank branch in itself. The Complainant introduced ATMs in 1982 and the first ATMs known as “Bankamatiks” were put into service at three braches in Istanbul namely Nisantasi, Caddebostan and Yenisehir. In 2010, the Complainant’s Bankamatik network totalled 4137.
(3)The trademark TURKIYE IS BANKASI BANKAMATIK numbered 173030 was registered in the name of the Complainant on October 16, 1995 and the said trademark was renewed for ten years on October 16, 2005. Also, the Complainant is the owner of the registered trademarks BANKAMATIK and BANKAMATIK PLUS numbered 2008 51511 and 2008 51514 respectively and dated August 29, 2008. The Complainant has trademark applications namely BANKAMATIK and BANKAMATIK IS BANKASINDAN NEYI EKSIK numbered 2010/44987 and 2010/49800 dated July 8, 2010 and July 29, 2010 respectively.
(4) The domain name <bankamatik.com.tr> was registered in the name of the Complainant on May 8, 2004. The Complainant is the owner of the other websites such as “www.isteyatırım.com.tr”, “www.maximum.com.tr”, “www.istekobi.com.tr” and the website “www.isbank.com” is the official website of the Complainant.
(5) The disputed domain name <bankamatik.net> was registered on February 22, 2002, nearly seven years after the trademark TURKIYE IS BANKASI BANKAMATIK was registered on October 16, 1995.
The Panel’s observation of the case file reveals the following:
(1) The disputed domain name is inactive and the search engine gave an error regarding connection to the website on October 21, 2011.
(2) The name, corporate address and email address details of the Respondent provided by the Registrar indicates that the Respondent is located in Turkey.
(3) The web pages “www.isbank.com” and “www.bankamatik.com.tr” are well-recognized web pages for personal and corporate online banking services in Turkey.
5. Parties’ Contentions
The Complainant requests the Panel to issue a decision transferring the disputed domain name to the Complainant on the following grounds:
(i) The disputed domain name is identical or confusingly similar to a trademark or a 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 is registered and is being used in bad faith
(i) Identity or Confusingly Similarity
The Complainant alleges that it has several trademark registrations and applications containing the “bankamatik” term. Also the Complainant indicates that, true and earlier right ownership of the “bankamatik” term belongs to the Complainant since BANKAMATIK trademarks were officially registered before Turkish Patent Institute prior to the registration date of the disputed domain name.
The Complainant states that the disputed domain name consists of only the “bankamatik” term as the distinctive and entire element. Therefore, the Complainant alleges that it is identical to the Complainant’s trade/service marks that have been protected before TPI since 1995 and have an extensive usage since 1982.
The Complainant further states that it is impossible to make a comparison regarding the similarity of the goods and services provided under the registered trademarks and the disputed domain name since the Respondent’s disputed domain name is inactive and redirects to the website of the host servers of “www.business.mail.yahoo.com”. Therefore, the Complainant alleges that the registrant’s sole purpose is to hold the disputed domain name with no purpose of use and sell it to a third party.
(ii) Rights or Legitimate Interests
The Complainant alleges that the Respondent will not prove any earlier right on an identical trademark to the “bankamatik” term since the Complainant has early right ownership on BANKAMATIK trademark. Further, the Complainant mentions that the disputed domain name was registered more than 22 years after the foundation of first Bankamatik ATM and more than 8 years after the BANKAMATIK trademark application was filed by the Complainant.
Moreover, the Complainant argues that the Respondent was fully aware of the Complainant’s earlier and reputed trademark BANKAMATIK at the time of the registration of the disputed domain name. The Complainant is a well-known bank in Turkey and the Respondent is a Turkish citizen and Turkey resident. Therefore the Complainant alleges that it is not possible for him, not to be aware of the well-known Isbank’s BANKAMATIK trademarks.
Further, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name since the Respondent does not have earlier rights for the “bankamatik” term and not a licensee of the Complainant and does not have the Complainant’s permission or authorisation to use the BANKAMATIK trade/service mark of the Complainant. At this point the Complainant refers to Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055 where the panel held that “in the absence of any licence or permission for the Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by Respondent.”
The Complainant also states that the Respondent cannot be said to be using the disputed domain name in connection with a bona fide offering of goods or services or making a legitimate non-commercial or fair use of the disputed domain name since the Respondent has no intention to use the disputed domain name, and it holds the disputed domain name to obtain a financial benefit by selling it. Further the Complainant unfolds the activity reports obtained from the “www.archive.org” reveal that there is no industrial or commercial activity available for the disputed domain name.
Moreover, the Complainant refers to the Express Scripts, Inc. v. Windgather Investments Limited / Mr. Cartwright, WIPO Case No. D2007-0267 and states that directing the Internet users with an expectation for information about business activities of the trademark owner to the parking service page does not provide a legitimate interest in that domain name.
(iii) Registered and Used in Bad Faith
The Complainant argues that with respect to its well-known status and extensive usage, the Respondent is well aware of the Complainant’s BANKAMATIK marks, so it has registered and used the disputed domain name in bad faith.
Moreover, the Complainant alleges the existence of wilful blindness based on the fact that the Respondent has already registered 22 domain names, two of the said domain names are now registered in the name of different firms and 20 of them are not in use. Also, the Complainant alleges that 18 of the 20 domain names are redirecting to “www.yahoo.com” website, and two of domain names are giving service errors. Therefore, the Complainant states that the Respondent is a person, who is in the business of registering and selling domain names.
The Complainant refers to Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304 where the panel found that the Respondent, who carried out a business of registering multiple domain names and purchasing lapsed domain names, was not entitled to shield its conduct by “closing its eyes” to whether the domain names it registered were identical or confusingly similar to a third party’s trademark.
Lastly, the Complainant stated that since its creation date in 2002, the disputed domain name redirected to “bankammatik.webvana.com” address between the years of 2002 and 2003 and was no activity between the years of 2003 and 2009. Since 2009, the disputed domain name has redirected to “www.yahoo.com”. Consequently, the Complainant refers to various UDRP cases and states that inaction or passive holding by a respondent with regard to a domain name may constitute bad faith use. At this point, the Complainant also refers to Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, where the Panel concluded that “[r]espondent’s passive holding amounts to acting in bad faith.”
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint where no Response has been submitted.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) The disputed domain name is identical or confusingly similar to the trademark in which the Complainant has rights; and
(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.
Paragraph 4(a) of the Policy states that the Complainant has the burden of proving that all of these requirements are fulfilled.
A. Identical or Confusingly Similar
The test for identical or confusing similarity under the Policy, paragraph 4(a)(i) is limited in scope to a direct comparison between the Complainant’s trademark and the textual string which comprises the disputed domain name. In this case, the Complainant has demonstrated registered trademark rights in the mark BANKAMATIK. The disputed domain name consists of only the term “bankamatik”.
Based on the evidences submitted by the Complainant concerning the trademark registrations of BANKAMATIK, the Panel finds that the Complainant has successfully proven the earlier registered right on the Bankamatik term. The Complainant has had a trademark registration for Türkiye İş Bankası BANKAMATIK term since 1995, well before the registration date of the disputed domain name.
The disputed domain name consists of only the “bankamatik” term as a core element. Considering that the core element of the registered trademark is also the Bankamatik term, it is clear that the disputed domain name is highly similar to the Complainant’s registered earlier right. Moreover, the Complainant’s use of the Bankamatik term have been continuous for many years and the term has been used as a sole and core element.
In similar cases, UDRP panels have found that neither the beginning of the URL, nor the gTLD have any source indicating significance and do not remove the likelihood of confusion between a trademark and a domain name incorporating said trademark. See, The Forward Association, Inc., v. Enterprises Unlimited, NAF Claim No. FA95491. Therefore, the Panel is of the opinion that the suffix “.net” has no significance.
The Panel also refers to Dr. Ing. h.c. F. Porsche AG v. Takeda, Jim, WIPO Case No. D2002-0998 where the Panel held that “[a]lthough the ‘.org’ TLD may have been intended originally for non-trading organisations, its use is not restricted to such organizations and many Internet users are not aware of the original purpose of the different TLDs. The [p]anel has no doubt that the ‘.org’ suffix would not dispel confusion caused by the use of the Complainant’s well-known mark.” Consequently, the Panel believes that such inference may be applied to the present case and there is no doubt that the disputed domain name is confusingly similar to the Complainants’ mark BANKAMATIK and thus, the first requirement under paragraph 4(a) of the Policy is satisfied.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy states that, a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] are making a legitimate non-commercial 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 burden of proof is on the Complainant to demonstrate a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. Once the Complainant has made out a prima facie case, then the Respondent may, by, inter alia, showing one of the above elements, prove rights or legitimate interests in the disputed domain name.
In the light of the evidence submitted in the case file, e.g., trademark registration certificates, a wide range of advertisement campaigns, etc., it is clear to the Panel that the Complainant has earlier and lawful rights in the BANKAMATIK mark. Therefore, the Panel finds on the current record that the Complainant has proved rights in the BANKAMATIK mark and also established a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain names for the purposes of the Policy. The Complainant has not granted the Respondent any right or license to use the BANKAMATIK marks.
The Panel finds that the Respondent has not provided evidence of the circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name. Thus, the Panel is of the opinion that the Respondent has failed to furnish evidence to show that it has rights or legitimate interests in the disputed domain name.
In this sense, based on the content of the case file, the Panel holds that the use of the BANKAMATIK mark has not been authorized or licensed to the Respondent, and the disputed domain name does not obviously correspond to the Respondent’s name or a trade name by which it has become commonly known.
Hence, as the rights or legitimate interests of the Respondent have not been duly proven under paragraph 4(c) of the Policy, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four, non-inclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed 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 the Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the Respondent has registered the disputed 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the disputed domain name, the Respondent has intentionally attempted 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 respondent’s website or location.
By consideration of the foregoing, the Panel is of the opinion that due to the earlier registered right of the Complainant on “bankamatik” term and its extensive and intensive usage, the Respondent, who appears to be located in Turkey, was most likely aware of their existence. See e.g., Ebay Inc. v. Wangming, WIPO Case No. D2006-1107; General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087.
In the light of evidence submitted in the case file, the Panel is convinced that the Respondent has passively held the disputed domain name and is engaging in no activity. “Passive holding” has been accepted as a sufficient bad faith indicator in a number of cases. As it is well reasoned in the case of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, “inaction […] can, in certain circumstances, constitute a domain name being used in bad faith.” Also, the panel refers to Compaq Computer Corporation v. Boris Beric, WIPO Case No. D2000-0042 and VEDA GmbH v. Mr. Nicholas Silverstone, WIPO Case No. D2002-1040. More clearly, the Panel decided not to challenge these UDRP decisions since:
(i) the Respondent did not offer any counter-argument and remained in default,
(ii) the Complainant’s trademark has a strong reputation and is well known in Turkey,
(iii) the Respondent has not proven any good faith use; instead, he has actively provided false contact details which constitutes a breach of the registration agreement as well.
In relation to the contact details of the Respondent, it is understood that the contact address is false since no postal code of the districts of Istanbul start with 80800. Therefore, the Panel refers to Ticketmaster Corporation v. Dmitri Prem, WIPO Case No. D2000-1550 where the panel held that “[i]n the absence of explanation, the omission of significant information may be taken to amount to bad faith in securing a domain name registration.” Likewise, in various UDRP decisions, false contact information provided by the Respondent can constitute bad faith. See also Quixtar Investments, Inc. v. Scott A. Smithberger and QUIXTAR-IBO, WIPO Case No. D2000-0138.
Also, the Complainant stated in its Complaint that the Respondent has registered a large number of domain names, and some of them are the combination of first and last names of Turkish persons. The evidence submitted in the case file reveals that the Respondent has no registered trademarks before the Turkish Patent Institute. Also, the Respondent did not prove its earlier rights in any of these domain names. Based on this submission and the facts, the Panel considers that the disputed domain name was registered primarily for the purpose of transferring the domain name registration to the owner of the trademarks for valuable consideration in excess of the domain name registrant’s out-of-pocket costs. See e.g., Telefonaktiebolaget L.M Ericsson v. iNuntius Inc., WIPO Case No. D2005-0732.
Hence, the Panel is convinced that the disputed domain name has been registered and is being used in bad faith and that the Complainant has established the third element under paragraph 4(a)(iii) of the Policy.
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, <bankamatik.net> be transferred to the Complainant.
Dated: October 27, 2011