WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Yapi ve Kredi Bankasi A.S. v. Shota Nakano
Case No. D2013-0942
1. The Parties
The Complainant is Yapi ve Kredi Bankasi A.S. of Istanbul, Turkey, represented by Istanbul Patent & Trademark Consultancy Ltd., Turkey.
The Respondent is Shota Nakano of Japan.
2. The Domain Name and Registrar
The disputed domain name <engelsizbankacilik.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 May 28, 2013. On May 28, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 29, 2013, 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.
On June 5, 2013, the Center sent an email communication to the Complainant inviting it to amend the Complaint, namely paragraph 9, relating to the Complainant’s submission to one (or two) appropriate mutual jurisdiction(s) with respect to any challenges that may be made by the Respondent to a decision by the Administrative Panel to transfer or cancel the disputed domain name. The Complainant filed an amended Complaint on June 10, 2013.
On June 10, 2013, the Center received an email communication from the Complainant requesting suspension of the proceeding in order to explore a possible settlement with the Respondent. On June 11, 2013, the Center notified the suspension of the proceeding. On June 21, 2013, the Complainant requested the reinstitution of the proceeding.
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 June 21, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 11, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 12, 2013.
The Center appointed Douglas Clark as the sole panelist in this matter on July 18, 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 Turkish bank established in 1944.
In 2008 the Complainant launched a program called, “Enabled Banking” (Engelsiz Bankacılık in Turkish).
On December 4, 2009, an employee of the Complainant registered the disputed domain name. On November 18, 2011, the disputed domain name was assigned to the Complainant. The Complainant has been using the disputed domain name from 2009 until 2012.
On January 7, 2010, the Complainant applied for the trademark YAPI KREDI ENGELSIZ BANKACILIK in Turkey, which was registered on February 8, 2011.
The Complainant missed the renewal date of the disputed domain name in the year 2012.
The disputed domain name was registered by the Respondent on January 15, 2013. The disputed domain name resolves to a website in Japanese which provides information on snorkeling. There are links to other websites on the disputed domain name website, which appear to be commercial.
5. Parties’ Contentions
i. The disputed domain name is identical to the mark in which the Complainant has rights
The Complainant contends that the disputed domain name is identical to the Complainant’s originally registered domain name <engelsizbankacilik.com> and confusingly similar to its trademark YAPI KREDI ENGELSIZ BANKACILIK.
ii. No rights or legitimate interests
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name on the grounds that: the Respondent has made no claim that he is using the disputed domain name in connection with a bona fide offering of goods and services, the disputed domain name is not a mark by which the Respondent is commonly known, and the Respondent has not made a legitimate noncommercial or fair use of the disputed domain name.
iii. Registered and used in bad faith
The Complainant contends that the Respondent has registered and used the disputed domain name in bad faith on various grounds: the disputed domain name was registered and has been used in order to unfairly take advantage of the undisputed fame of the service mark ENGELSIZ BANKACILIK associated directly with the Complainant, to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name and to attract, for commercial gain, Internet users to the Respondent’s website.
The Respondent did not reply to the Complainant’s contentions. In email correspondence (in Japanese) with the Complainant, the Respondent stated he had bought the disputed domain name at auction for USD120 to USD150 and would return it for that price.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in the disputed domain name based on its prior use for 3 years of the same domain name. In the circumstances of this case, the Panel finds this to be sufficient to establish unregistered trademark rights in ENGELSIZ BANKACILIK for purposes of the Policy.
The Respondent re-registered the disputed domain name when the Complainant failed to renew it. By definition, the domain names are identical.
The first element of the UDRP is made out.
B. Rights or Legitimate Interests
The Respondent did not reply to the Complaint to assert any rights or legitimate interests. None of the circumstances in paragraph 4(c) of the Policy, which set outs how a respondent can prove its rights or legitimate interests, are present in this case.
Since the Complainant has made out a prima facie case that the Respondent has not rebutted, the Panel finds that the second element of the UDRP is made out.
C. Registered and Used in Bad Faith
The Panel also finds that the disputed domain name was registered in bad faith and is being used in bad faith.
The Respondent offered to sell the disputed domain name for USD120 to USD150 after proceedings were brought. The Respondent stated this was the price he paid at auction but provided no evidence. While such an offer could be considered to be evidence of bad faith, the Panel will in the circumstances of this case not consider this to be evidence of bad faith. The sum could be in excess of the Respondent’s out of pocket expenses, but it may not.
The disputed domain name only has meaning in Turkish. It means “enabled banking.” The disputed domain name has no meaning in Japanese. “Enabled banking” has no connection with a website providing information on snorkeling. The use of the disputed domain name is similar to use on a parking page. There are links to commercial websites.
This use clearly shows an intention to profit from the disputed domain name and is therefore evidence of registration and use in bad faith (see paragraph 3.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)).
The third element of the UDRP is made out.
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 <engelsizbankacilik.com> be transferred to the Complainant.
Date: August 5, 2013