WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Türkiye Cumhuriyeti Ziraat Bankasi Anonim Şirketi v. Contact Privacy Inc. / ICS INC.

Case No. D2013-0772

1. The Parties

The Complainant is Türkiye Cumhuriyeti Ziraat Bankasi Anonim Şirketi of Ankara, Turkey, represented by Grup Ofis Marka Ve Patent Ajanlığı Müşavirlik Ve Tic.Ltd.Şti., Turkey.

The Respondent is Contact Privacy Inc. of Toronto, Canada / ICS INC. of Grand Cayman, Cayman Islands, United Kingdom of Great Britain and Northern Ireland (“UK”).

2. The Domain Name and Registrar

The disputed domain name <mailziraatbank.com> is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 1, 2013. On May 1, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 1, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 23, 2013, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 28, 2013.

On May 23, 2013, the Center transmitted the language of the proceedings document to the parties in both English and Turkish. On May 27, 2013, the Complainant requested Turkish to be the language of the proceedings. The Respondent did not submit its comments.

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 May 29, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 18, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 19, 2013.

The Center appointed Kaya Köklü as the sole panelist in this matter on June 27, 2013. 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 the late 1990’s, the Complainant holds and operates various domain names, incorporating its trademarks, under several generic top-level domains (gTLD) and country-code top level domains (ccTLD).

The disputed domain name was registered on August 30, 2007.

As evidenced in the Complaint, the website linked to the disputed domain name is a pay-per-click website with various kinds of advertisements. Furthermore, it is evidenced by Annex 9 to the Complaint that the Respondent offered the disputed domain name on “www.sedo.com” and “www.domainsponsor.com” for sale.

5. Parties’ Contentions

A. Complainant

The Complainant requests the transfer of the disputed domain name.

The Complainant is of the opinion that the disputed domain name is confusingly similar to the Complainant’s ZİRAAT BANKASI trademarks as it fully incorporates the Complainant’s firm name and trademark. The Complainant argues that the only difference between the disputed domain name and the Complainant’s trademark is that the disputed domain name additionally comprises the generic term “mail”. It is argued that the “addition of a commonly used and descriptive market expression is not enough to distinguish the wording in the domain name from the wording in the registered trademark.”

Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. In particular, the Complainant states that the Complainant has never granted a permission or license to the Respondent to use its ZİRAAT BANKASI trademarks. The Complainant alleges that the Respondent has never used and does not intend to use the ZİRAAT BANKASI trademarks in connection with a bona fide offering of goods and services. The Complainant rather believes that the disputed domain name was registered for the sole purpose to commercially profit from misled consumers searching for information about the Complainant’s business.

Finally, it is argued that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant believes that due to the wide recognition of the ZİRAAT BANKASI trademarks, the Respondent was well aware of the ZİRAAT BANKASI trademarks when registering the disputed domain name. Furthermore, the Respondent’s attempt to sell the disputed domain name shall also indicate its bad faith registration and use.

B. Respondent

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

6. Discussion and Findings

To begin with, the Panel determines in accordance with the Rules, paragraph 11(a), that the language of these administrative proceedings shall be the English language. Although the Complainant explicitly requested Turkish to be the language of the proceedings, the Panel finds that it would be inappropriate, given the circumstances of this case, to conduct the proceedings in Turkish since it is not certain that the Respondent, which is located in Canada and the Cayman Islands, is capable of reading and understanding the Turkish language. Additionally, the Panel takes into consideration that the implementation of the Decision by the Registrar, which is located in Canada, will be facilitated if the Decision is rendered in the English language. Finally, the Panel believes that the Complainant will not be prejudiced by a Decision being rendered in English, as the Complainant is apparently able to read, write and understand the English language.

According to paragraph 14(a) and 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 bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complaint. Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.

However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.

It is further noted that independent research, i.e., visiting the website linked to the disputed domain name, has been performed by the Panel on July 8, 2013. The competence of the Panel to perform such independent research is in line with previous UDRP decisions (see, e.g., Hesco Bastion Limited v. The Trading Force Limited, WIPO Case No. D2002-1038).

Finally, it is noted that the Panel has taken note of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) and, where appropriate, will decide consistent with the WIPO Overview 2.0.

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name is confusingly similar to the ZİRAAT BANKASI trademarks of the Complainant.

First, the Panel confirms that the Complainant has satisfied the threshold requirement of having trademark rights regarding ZİRAAT BANKASI. As evidenced in the Complaint, the Complainant is the owner of a large number of word and figurative ZİRAAT BANKASI trademarks in Turkey and in many further jurisdictions, particularly covering protection for all kinds of banking and financial services.

Although not identical, the disputed domain name nearly fully incorporates the Complainant’s ZİRAAT BANKASI trademarks.

The disputed domain name differs from the ZİRAAT BANKASI trademarks mainly by the addition of the generic term “mail”. In the Panel’s view, the addition of a generic term like “mail” does not negate the confusing similarity between the Complainant’s trademarks and the disputed domain name. The Panel finds that this incorporation of “mail” is purely descriptive and does not create a new distinctiveness separate from the Complainant’s ZİRAAT BANKASI trademarks. On the contrary, the nearly full inclusion of the Complainant’s trademark in combination with this generic term may even enhance the false impression that the website linked to the disputed domain name is somehow officially related to the Complainant and its financial services.

The Panel concludes that the disputed domain name is likely to confuse Internet users in their believing that the disputed domain name is affiliated or endorsed by the Complainant or that the use of the disputed domain name is at least authorized by the Complainant.

In view of the above, the Panel is satisfied that the Complainant has met the requirements under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel further finds that the Respondent has not demonstrated any rights or legitimate interests in the disputed domain name.

While the burden of proof remains with the Complainant, the Panel recognizes that this would often result in the impossible task of proving a negative, in particular as the evidence needed to show the Respondent’s lack of rights or legitimate interests is primarily within the knowledge of the Respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the burden of production of evidence shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name in order to meet the requirements in paragraph 4(a)(ii) of the Policy. Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

The Panel finds that the Complainant has satisfied this requirement, while the Respondent has failed to file any evidence or convincing argument to demonstrate a right or legitimate interest in the disputed domain name according to the Policy, paragraph 4(a)(ii) and 4(c).

With its Complaint, the Complainant has provided uncontested prima facie evidence that the Respondent has no rights or legitimate interests to use the Complainant’s ZİRAAT BANKASI trademarks in the disputed domain name.

In the absence of a Response, the Respondent has failed to demonstrate any of the nonexclusive circumstances evidencing rights or legitimate interests under the Policy, paragraph 4(c), or any other evidence of a right or legitimate interest in the disputed domain name. Especially, the Respondent has failed to show that the disputed domain name has been used in connection with a bona fide offering of goods or services.

Furthermore, there is no evidence in the case file to conclude that the Respondent trades under or is commonly known by a firm name corresponding to the disputed domain name.

Finally, there is also no indication that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name without the intent for commercial gain to misleadingly divert Internet users or to tarnish the ZİRAAT BANKASI trademarks. Quite the contrary, it appears that the Respondent particularly tries to gain commercial benefit from pay-per-click links and the sale of the disputed domain name.

Hence, the Panel finds that the Complainant has also satisfied the second requirement of the Policy, namely paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel is further convinced that the Respondent has registered and is using the disputed domain name in bad faith.

First, the Panel believes that the Respondent must have been well aware of the ZİRAAT BANKASI trademarks when it registered the disputed domain name in August 2007. At the date of registration of the disputed domain name, the Complainant’s ZİRAAT BANKASI firm name and trademarks were already established and well known for many years.

Furthermore, the Panel shares the view of the Complainant that the Respondent’s main purpose is to create a likelihood of confusion among customers and/or to tarnish the Complainant’s ZİRAAT BANKASI trademarks for commercial gain. In particular, the Respondent’s offer to sell the disputed domain name and the use of the disputed domain name for a pay-per-click website strongly indicates that the Respondent registered and has used the disputed domain name in bad faith

Finally, the Panel finds that the Respondent’s failure to respond to the Complaint additionally supports the conclusion that it has registered and used the disputed domain name in bad faith in order to mislead Internet users and gain commercial profit.

Overall, the Panel believes that the above demonstrates a typical cybersquatting case.

The Panel therefore concludes that the disputed domain name was registered and is being used in bad faith and that the Complainant consequently has satisfied the third element of the Policy, namely, paragraph 4(a)(iii) of the Policy.

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 <mailziraatbank.com> be transferred to the Complainant.

Kaya Köklü
Sole Panelist
Date: July 9, 2013