WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Akbank Turk A.S. v. Murat Erdogan
Case No. D2013-1177
1. The Parties
The Complainant is Akbank Turk A.S. of Istanbul, Turkey, represented by Istanbul Patent & Trademark Consultancy Ltd., Turkey.
The Respondent is Murat Erdogan of Istanbul, Turkey.
2. The Domain Name and Registrar
The disputed domain name <akbankkirmizi.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 July 1, 2013. On July 1, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 2, 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.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 8, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 28, 2013. The Response was filed with the Center on July 24, 2013.
The Center appointed Kaya Köklü as the sole panelist in this matter on August 6, 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.
In accordance with the Rules, paragraph 11(a), and since the parties have not agreed otherwise, the Panel finds that the language of the administrative proceedings is the language of the Registration Agreement (i.e. English).
4. Factual Background
The Complainant is a well-known top-tier Turkish bank. It was founded in 1947 and is now one of the largest banks in Turkey. According to the information provided in the case file, the Complainant has more than 13,000 employees and 715 branches in Turkey.
The Complainant’s AKBANK trademark is in use since more than 60 years, mainly in combination with its corporate color red. The AKBANK trademark was first formally registered in Turkey in the year 1995, when the possibility to register service marks was introduced to Turkish trademark law. In the meantime, the Complainant has become the registered owner of numerous AKBANK word and figurative trademarks, including but not limited to Turkish, Community and International Registration service marks.
The registered AKBANK trademarks cover protection especially for banking and financial services.
The Complainant additionally owns and operates a large number of domain names incorporating the trademark AKBANK, such as <akbank.com>, <akbank.com.tr> and <akbank.net>. Most of these domain names were registered long before the year 2013.
The disputed domain name was created on January 23, 2013.
According to the current record, the Respondent is of Turkish origin and located in Istanbul, Turkey.
When the Panel visited the Respondent’s website on August 12, 2013, there was no content provided except a notice in Turkish language, stating that all services are stopped for now but will probably restart shortly.
Based on information provided in the case file, the Complainant contacted the Respondent before initiating the present administrative proceedings. In its communication with the Respondent, the Complainant requested the transfer of the disputed domain name. The Respondent, however, refused to recognize trademark infringement and requested a meeting with authorized representatives of the Complainant instead. Such meeting never took place.
5. Parties’ Contentions
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 AKBANK 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 Turkish term “kirmizi”, which means “red” in the English language. It is argued that the “Respondent creates a likelihood of confusion in the minds of the consumers, who expect the [disputed] domain name […] to resolve to websites owned by or affiliated with the Complainant”, in particular as the color “red” is used by the Complainant as its essential corporate color.
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 AKBANK trademark. The Complainant alleges that the Respondent has never used and does not intend to use the AKBANK trademark in connection with a bona fide offering of goods and services. It is further alleged that the Respondent has not been commonly known by the disputed domain name.
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 AKBANK trademark in Turkey, the Respondent must have known the Complainant and its AKBANK trademarks when registering the disputed domain name. Furthermore, the Respondent’s request for a meeting with authorized representatives shall also indicate its bad faith registration and use.
The Respondent requests the Complaint to be denied.
First, the Respondent argues that the disputed domain name is not confusingly similar to the Complainant’s AKBANK trademarks. It is asserted that “Ak bank kirmizi is a system that not only to introduce members to each other but also to provide alcoholic and non-alcoholic activity organized, submitted and recommended by “akbankkirmizi.com” and to share the moment contrary to most of dating site”, and hence, significantly different from any financial or banking business of the Complainant.
In particular, it is alleged that the Respondent uses the term “ak” as a synonym for the Turkish term “beyaz”, which means “white” in the English language, whereas the Complainant uses the term “ak” as an abbreviation for “Adana’daki Kayserililer”, which means “the Kayserians in Adana” in the English language.
Furthermore, the Respondent asserts that it uses the term “bank” only in the meaning of a “bench”.
With regard to the term “kirmizi”, the Respondent argues that “many companies in Turkey and in the world use red color”.
Finally, it is asserted that the Respondent requested a meeting with authorized representatives of the Complainant only for the purpose “to tell [the Complainant] [the] project and to guarantee the project’s responsibility to their trade mark reputation”.
All in all, the Respondent believes that the Complainant acts in bad faith itself and that the Complainant’s “aim is not to protect its right but to purchase domain name unfairly.”
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 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 as appropriate 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 Internet site linked to the disputed domain name, has been performed by the Panel on August 12, 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 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 AKBANK trademark of the Complainant.
First, the Panel confirms that the Complainant has satisfied the threshold requirement of having trademark rights regarding the sign AKBANK. As evidenced in the Complaint, the Complainant is the owner of a large number of word and figurative AKBANK trademarks, not only in Turkey, but also in many other jurisdictions, particularly covering protection for banking and financial services.
Although not identical, the disputed domain name fully incorporates the Complainant’s AKBANK trademark.
The disputed domain name differs from the AKBANK trademark only by the addition of the Turkish generic term “kirmizi”, which means “red” in the English language. In the Panel’s view, the addition of a generic term like “red” does not negate the confusing similarity between the Complainant’s trademark and the disputed domain name. The Panel finds that the incorporation of “kirmizi” is purely descriptive and does not create a new distinctiveness separate from the Complainant’s AKBANK trademark. On the contrary, the full inclusion of the Complainant’s trademark in combination with the generic term “kirmizi” may even enhance the false impression that the website linked to the disputed domain name is somehow officially related to the Complainant, in particular as the Complainant is famous for its corporate color “red” for more than 60 years.
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) 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 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 by providing uncontested prima facie evidence that the Respondent has no trademark, valid license or any similar right to use the Complainant’s AKBANK trademark in the disputed domain name.
The Panel further finds that 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, paragraphs 4(a)(ii) and 4(c).
In the Panel’s view, the Respondent’s defense arguments contain only general and non-convincing assertions concerning the intended use of the disputed domain name as a dating and networking platform. The Panel accepts that “akbankkirmizi” is not a recognized word, phrase or slogan in the Turkish language. Even in light of the allegations raised by the Respondent that “ak” should mean “white” and “bank” should mean “bench”, the disputed domain name <akbankkirmizi.com> is assembled not in a grammatically correct way and, hence, makes hardly a sense in the alleged manner. The Panel consequently concludes that the allegations raised by the Respondent are purely self-serving assertions.
The Panel additionally finds that the Respondent is not commonly known by the term “akbankkirmizi”.
Furthermore, the Panel is prepared to find that the Respondent is not using the disputed domain name in a bona fide manner. The Panel is convinced that the Respondent must have been aware of the Complainant’s registered trademark, and that the Respondent has deliberately used the trademark AKBANK in the disputed domain name in order to divert Internet users seeking information on the Complainant to the Respondent’s website for the purpose of monetary gain. The Panel believes that this does not constitute a bona fide offering of services under the Policy.
Based on the findings above, the Panel believes that in the present case the Complainant has made a prima facie case and the evidence available in the case file does not provide a basis for the Panel to find any rights or legitimate interests of the Respondent.
Consequently, the Panel finds that the Complainant has satisfied the requirements of 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 AKBANK trademark when it registered the disputed domain name in January 2013. At the date of registration, the AKBANK trademark was already established and well-known for many years, especially in Turkey, where the Respondent is located.
The Panel particularly notes that the Respondent has requested to meet authorized representatives of the Complainant prior to these administrative proceedings. The Panel is not convinced by the Respondent’s allegation that it only “wanted to tell about the project and to guarantee the project’s responsibility to the trade mark reputation” of the Complainant. The Panel rather believes that the Respondent has registered and used the disputed domain name in bad faith by attempting to trade on the goodwill and reputation of the Complainant’s trademark.
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 AKBANK trademark, likely for commercial gain or any other illegitimate benefit.
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.
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 <akbankkirmizi.com> be transferred to the Complainant.
Date: August 16, 2013