WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Türkiye Cumhuriyeti Ziraat Bankasi Anonim Sirketi v. Rahul Jain, Jaano LLC
Case No. D2017-1890
1. The Parties
The Complainant is Türkiye Cumhuriyeti Ziraat Bankasi Anonim Sirketi of Ankara, Turkey, represented by Grup Ofis Marka Patent Inc., Turkey.
The Respondent is Rahul Jain, Jaano LLC of Edgewater, New Jersey, United States of America (“United States”), represented by John Berryhill, Ph.d., Esq., United States.
2. The Domain Name and Registrar
The disputed domain name <bankkart.com> is registered with Name.com, Inc. (Name.com LLC) (the “Registrar”).
3. Procedural History
The Complaint in Turkish was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 27, 2017. On September 28, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 28, 2017, 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.
Pursuant to the Complaint submitted in Turkish and the registrar verification dated September 28, 2017 stating that English is the language of the registration agreement of the disputed domain name, on October 4, 2017, the Center sent a request in English and Turkish that the Parties submit their comments on the language of the proceeding. On October 5, 2017, the Complainant submitted its request for English to be the language of the proceeding and on October 16, 2017, it submitted the Complaint translated into English. On October 6, 2017, the Respondent submitted its request that English be the language of the proceeding.
The Center verified that the Complaint together with the translated 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 18, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 7, 2017. Pursuant to paragraph 5(b) of the Rules, the due date for Response was extended to November 11, 2017. The Response was filed with the Center November 11, 2017.
The Center appointed Warwick A. Rothnie, Gökhan Gökçe and Frederick M. Abbott as panelists in this matter on November 30, 2017. The Panel finds that it was properly constituted. Each member of 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.
On October 24 2017, the Complainant also submitted a proposed supplemental filing. On November 13, 2017, the Respondent submitted a communication to the Center noting that the Response was directed to the Complaint as filed and did not address the unauthorized supplemental filing. In his communication, the Respondent further requested an opportunity to make additional observations directed to the Complainant’s supplemental filing if the Panel admitted that supplemental filing into the record.
On December 13, 2017, the Panel issued Panel Order No. 1 inviting the Respondent to submit his foreshadowed observations on the Complainant’s supplemental filing and extending the projected date for submission of the Panel’s decision.
On December 18, 2017, the Respondent submitted his proposed supplemental filing.
4. Factual Background
The Complainant is a large bank headquartered in Turkey. It can trace its origins to 1863 and the use of its common or abbreviated name, Ziraat Bankasi, from 1888.
Initially established to assist farmers and the development of agriculture, it now operates across all sectors of society. In addition to a widespread network in Turkey, it has 23 branches outside Turkey, namely in the United States, the United Kingdom of Great Britain and Northern Ireland, Bulgaria, Georgia, Iraq, Cyprus, Greece, Saudi Arabia and the Islamic Republic of Iran. The Complainant also has subsidiaries operating in Germany (10 branches), Bosnia-Herzegovina (24 branches), Russian Federation (Moscow), Kazakhstan (2 branches), Turkmenistan (7 branches), Uzbekistan and Azerbaijan (4 branches).
The Complainant has been using the term “Bankkart” for its bank card for use in automatic teller machines (“ATMs”) and EFTPOS-type terminals. From the late 1980s / early 1990s, the evidence shows the term being used in the following form:
Often this usage has included a device in the form of a stylized ear of wheat. Since some time in 2013, there is evidence that the Complainant has been using the term in the form “Bankkart” in reasonably plain lettering or in lower case with the letters “K” in stylized capitals. The evidence does not permit more precise identification of when that change occurred.
While the Complainant has submitted evidence of numerous registered trademarks, most do not appear to be relevant to the dispute relating to the disputed domain name. The registration which is directly relevant is the Turkish Registered Trademark No. 2012 38758, which was filed on April 25, 2012 and registered on February 25, 2015 for the trademark above (with a stylized wheat ear) in respect of goods and services in International Classes 9 and 36.
According to the Re-examination and Evaluation Board of the Turkish Patent and Trademark Institution, the term “bankkart” has been used on some 26 million bank cards issued by the Complainant since 1989.
The Complainant registered a domain name for <ziraatbank.com> in 1998. It has obtained registrations for <bankkart.net>, <bankkart.org>, <bankkart.gen.tr> and <bankkart.com.tr> in May 2017.
The disputed domain name was registered on September 7, 2013.
Since that date it has resolved to a website which consists of pay-per-click (“PPC”) links to banking related activities. It has been, and is being, offered for sale at a price of USD 998.
5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark 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 15(a) of the Rules directs the Panel to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
5.1. Language of the Proceeding
The Complaint was initially filed in Turkish. The language of the registration agreement for the disputed domain name, however, is English.
Paragraph 11 of the Rules provides that the language of the proceeding shall be the language of the registration agreement unless the parties agree, or the Panel determines, otherwise.
After an exchange with the Center about the language of the proceedings, the Complainant as noted above submitted the Complaint in English with a request that English be treated as the language of the proceeding. The Respondent also requested that English be the language of the proceeding.
In light of these requests, the Panel determines that it is appropriate that English be the language of the proceeding in accordance with paragraph 11 of the Rules.
5.2. Supplemental filings
Under paragraph 12 of the Rules, a panel may request further statements or documents from a party. Apart from that, the Rules do not contemplate extensive rounds of submissions; providing only for the filing of a complaint and response. This straightforward procedure is an important part of the design of the system to provide a simple and speedy process for the resolution of the types of dispute covered by the Policy.
Subject to the overarching requirement that the parties be treated fairly, however, panels have accepted supplemental filings. Typically this is where the response raises some issue which could not reasonably have been anticipated by the complainant or to correct errors.
In the present case, the Complainant’s supplemental filing was not made in response to some unanticipated point taken by the Respondent. Rather, the supplemental filing was made before the Response had even been filed. The circumstances by which the material included in the supplemental filing was not included in the Complaint, but a large amount of irrelevant material was, have not been properly explained by the Complainant. Nonetheless, given the timing of the supplemental filing and significance of the material (which had the potential to be highly material to the issues in the proceeding), the Panel decided to admit the Complainant’s supplemental filing. To ensure fairness, the Panel also permitted the Respondent to make a response to that supplemental filing, as the Respondent had requested.
5.3. Substantive Issues
A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademark in Turkey identified in section 4 above. It appears that the Complainant has also established secondary meaning in the term in Turkey but, as discussed in section 5.3.B below the time when that was achieved is unclear.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top Level Domain (“gTLD”) component as a functional aspect of the domain name system: WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
Apart from the addition of the gTLD “.com”, the disputed domain name is identical to the Complainant’s registered trademark No. 2012 38758.
B. Registered and Used in Bad Faith
In the circumstances of this case, it is appropriate to consider the third requirement under the Policy next.
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see, e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
The Complainant points to the PPC links in Turkish on the website to which the disputed domain name resolves and the offer of the disputed domain name for sale at USD 998 to infer that the Respondent must have been aware of the Complainant’s rights and is seeking impermissibly to take advantage of them by registering the disputed domain name.
The Respondent denies this. First, the Respondent points to the descriptive nature of the term “bankkart” in Turkish, Armenian, Greek, Czech, Bulgarian, Azerbaijani and Polish which can be translated into English as “bank card”.
Secondly, the Respondent points out that a number of banks other than the Complainant use the term “bankkart” or “bank kart” to refer to their own bank cards. These include BNP Paribas in Poland, CITI Bank in Poland, HSBC Bank Kart in Turkey, the Silk Way Bank kart referred to on an Azerbaijani website, the ICBC Bank kart in Turkey and Turkmenistan Bank “Dayhanbank”s bank karts.
Thirdly, the Respondent contends that it registered the disputed domain name in 2013 before the Complainant secured any registered rights in any trademark which could extend rights over “bankkart”.
This argument is not strictly correct in relation to Trademark No. 2012 38758. In relation to Trademark No. 2012 38758, the Respondent points to the fact that registration was granted on February 25, 2015. The Panel understands, however, that under Turkish law (as with many jurisdictions) the Complainant’s rights run from the date of filing. In the case of Trademark No. 2012 38758, that was April 25, 2012.
The Respondent contends, however, that the scope of protection conferred by Trademark No. 2012 38758 did not extend to the verbal element, “bankkart”, divorced from the stylistic elements. The Respondent points to the descriptive nature of the term, as already discussed. In addition, the Respondent points out that the Complainant applied to register the term BANKKART alone in Turkey as a trademark in 2002. The Turkish authorities, however, refused that registration because the term was descriptive. The Complainant appears to have disputed that view for a number of years, but ultimately the application was refused finally in 2007. In addition, in 2016 the Turkish authorities rejected the Complainant’s opposition to Turkiye Finans Bank’s application to register TAKDIRBANKKART on the basis of the Complainant’s claimed rights in BANKKART.
However, the Panel notes that the Re-examination and Evaluation Board of the Turkish Patent and Trademark Institution ultimately allowed registration of the Complainant’s Trademark No. 2017 38604 for BANKKART. The Re-examination and Evaluation Board of the Turkish Patent and Trademark Institution agreed with the examining authority’s assessment that “bankkart” was ordinarily descriptive of the relevant goods and services. However, it found on the basis of survey evidence submitted to it that the trademark had acquired distinctiveness through extensive use and recognition.
It appears, therefore, that the term “bankkart” alone became distinctive of the Complainant in Turkey sometime between 2007 and 2017. The evidence before the Panel does not permit a conclusion more precisely about when that occurred.
Fourthly, in support of its claim that it registered the disputed domain name because of its descriptive value, the Respondent points out that it has registered at least 20 other “kart” domain names. These include “babykart.com”, “mobilepphonekart.com” and other, similar apparently descriptive terms.
Taking into account all these matters, the Respondent’s claim that it registered the disputed domain name for its descriptive significance is not inherently implausible and, on the record in this case, the Complainant has not shown that the Respondent did in fact have knowledge of the Complainant’s rights and registered the disputed domain name to take advantage of those rights.
Accordingly, as the Complainant has not established that the disputed domain name was registered in bad faith, the Complaint must fail.
C. Rights or legitimate interests
As the Complaint must fail given the finding in section 5.3.B above, it is unnecessary to address this requirement.
D. Reverse Domain Name Hijacking
The Respondent has requested a finding of reverse domain name hijacking against the Complainant. While the Panel has found that the Complaint fails, that does not necessarily (or even ordinarily) entail a finding of reverse domain name hijacking.
While there are some troubling aspects about the Complaint including in particular the word length considerably in excess of WIPO Supplement Rule 10 and the irrelevance of much of the material included in the Complaint, various of the grounds relied on by the Respondent to support its application are also misplaced. In any event, a finding of reverse domain name hijacking is not appropriate in circumstances where there is a dissenting view in which one member of the Panel would have upheld the Complaint.
For the foregoing reasons, the Complaint is denied.
Warwick A. Rothnie
Frederick M. Abbott
Date: December 26, 2017
Dissenting Opinion (Gökhan Gökçe)
The Dissenting Panelist agrees with the conclusion of the majority of the Panel that the disputed domain name is identical with the trademark in which the Complainant proved to have rights. Additionally, the Dissenting Panelist considers that a finding of reverse domain name hijacking is not appropriate in this case.
The Dissenting Panelist is not persuaded that the circumstances of this case justify a finding of reverse domain name hijacking. Making a finding of reverse domain name hijacking is defined in paragraph 1 of the Rules as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name.” The basis for such a finding would have been that, on the evidence filed, the Complainant should have known that the Complaint never stood a chance of success. However, in this case, the Complainant does have registered trademark rights. In relation to trademark registration dated 2012, BANKKART is the dominant portion of the trademark and the presence of the design component does not change this fact. Further, the Complainant has been using this trademark in commerce since the 1980s, therefore from not only the said trademark registration but also the unregistered right perspective, its right should be protected. Therefore, the Complainant has a previous registration for the BANKKART closely reproduced in the disputed domain name. Therefore, the Complaint might well have succeeded. The Dissenting Panelist is not persuaded that the Complaint was filed in bad faith.
The Dissenting Panelist cannot agree with the majority of the Panel on the decision of bad faith registration and use. Regarding the third element of the Policy, the Dissenting Panelist finds that the Respondent registered and is still using the disputed domain name in bad faith.
In accordance with paragraph 4(b)(i) of the Policy; “registered or acquired the domain name primarily for the purpose of selling for valuable consideration in excess of documented out-of-pocket costs”, in a showing of bad faith. It is well established that seeking to profit from the sale of a confusingly similar domain name that incorporates a third party’s trademark demonstrates bad faith. See Wal-Mart Stores, Inc. v. Lars Stork, WIPO Case No. D2000-0628 (finding that the attempted sale of a domain name is evidence of bad faith). In our case, the content of disputed domain name in Turkish explicitly states that the domain name is offered to sale, and when the link is clicked it provides the minimum figure as USD 988. Therefore, the offer presented by the Respondent to sell the disputed domain name to the Complainant for minimum USD 988, which would appear to amount to more than the documented out−of−pocket costs directly related to the disputed domain name, clearly supports the existence of bad faith within the meaning of paragraph 4(b)(i) of the Policy.
By the way, the Complainant’s registered trademark numbered 2012 38758 predates the disputed domain name and it is not probable that the Respondent registered the disputed domain name without knowledge of the Complainant and the trademark BANKKART as the disputed domain name contains Turkish words related to banking sector which is Complainant’s sector and sales offer for the disputed domain name in Turkish.
Accordingly the Dissenting Panelist finds in favor of the Complainant on the third element of the Policy.
While the majority of the Panel did not need to address to the second element under the UDRP, the Dissenting Panelist in fact holds that the Respondent has no rights or legitimate interests in the disputed domain name.
The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case that the respondent has no rights or legitimate interests in the disputed domain name which is not rebutted by the respondent. Once such prima facie case is made, the respondent carries the burden of production of evidence on demonstrating such rights or legitimate interests. In the present dispute, the Complainant submits that the Respondent had no rights or legitimate interests in the disputed domain name at the date of its registration and was not then or since commonly known by the disputed domain name. The Complainant also asserts that the Respondent is not making legitimate noncommercial or fair use of the disputed domain name and that the Respondent is using the website associated with the disputed domain name to create the impression that it is in some way connected to or associated with the Complainant and its services when this is not the case. The Dissenting Panelist is satisfied that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name based upon these submissions. The burden of production accordingly shifts to the Respondent to bring forward evidence of its rights and legitimate interests in the disputed domain name.
The Dissenting Panelist concludes that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the domain name and that there is no evidence to rebut such presumption. It is clear that Respondent is not using the disputed domain name in connection with a bona fide offering of goods and/or services or in a noncommercial or fair manner.
The Respondent has failed to meet that burden of production. It has not adduced any evidence to show use of the disputed domain name in respect of any independent business (beyond offering the disputed domain name for sale and linking the disputed domain name to a PPC site.) Running a PPC page does not per se confer a right or legitimate interest on the Respondent; rather, it can support a right or legitimate interest if the links on the page are related to the dictionary value of the domain name, rather than to its trademark value; WIPO Overview 3.0, section 2.9 (“Panels have generally recognized that use of a domain name to post…PPC links…would not of itself confer rights or legitimate interests…[but] where domain names consisting of dictionary or common words or phrases support posted PPC links genuinely related to the [dictionary or common] meaning of the domain name at issue, this may be permissible and indeed consistent with recognized sources of rights or legitimate interests under the UDRP, provided there is no capitalization on trademark value”).
The Dissenting Panelist visited the disputed domain name and finds that the Respondent is not making use of the disputed domain name in connection with a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the disputed domain name. LEGO Juris A/S v. Admin Hostmaster, WIPO Case No. D2016-1474.
Although the Respondent argues that disputed domain name has a generic meaning in Turkish, it would not be expected to associate such meaning with an offering of any goods or services or any other meaningful content. As a matter of fact, the Respondent has offered no evidence in support of any of the three methods provided in the Policy paragraph 4(c) and the disputed domain name is not used in connection with a purpose relating to its generic or descriptive meaning. The Dissenting Panelist considers that the Respondent has demonstrated no convincing reason to own and operate the disputed domain name. As indicated in WIPO Overview 3.0, section 2.10, for example, a hypothetical respondent may well have a legitimate interest in the domain name <orange.com> if it uses the domain name for a website providing information about the fruit or the color orange. The same respondent would not however have a legitimate interest in the domain name if the corresponding website is aimed at goods or services that target a third-party trademark (in this example: Orange, well-known inter alia for telecommunications and Internet services) which uses the same term as a trademark in a non-dictionary sense.
Consequently, the Dissenting Panelist finds in favor of the Complainant on the second element of the Policy.
Date: December 26, 2017