WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

TÜRKİYE İŞ BANKASI A.Ş. v. H.Kerem Findik

Case No. D2010-2186

1. The Parties

The Complainant is TÜRKİYE İŞ BANKASI A.Ş. of Istanbul, Turkey, represented by SEVİL ÖZCAN KALKAN, Turkey.

The Respondent is H.Kerem Findik of Istanbul, Turkey, internally represented.

2. The Domain Name and Registrar

The disputed domain name <herkesmaximumda.com> is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 15, 2010. On December 15, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On December 16, 2010, GoDaddy.com, Inc. 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 December 20, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 9, 2011. The Response was filed with the Center on January 9, 2011. The Complainant sent a communication to the Center on January 10, 2011.

The Center appointed Selma Ünlü as the sole panelist in this matter on January 17, 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 TÜRKİYE İŞ BANKASI A.Ş. is a Turkish Bank established in Turkey in 1924. It has provided banking services for over 80 years.

(2) The Complainant has a credit card named “maximum” which is used by approximately 3.800.000 customers.

(3) The Complainant uses the slogan “Herkes Maximum’da” which means “everyone is in/at maximum”, in its advertisements of the maximum credit card.

(4) The Complainant is the registered owner of the HERKES MAXIMUM’DA trademark numbered 2008 28327 and dated May 13, 2008 and MAXIMUM trademark numbered 2006 06808 and dated February 24, 2006 before the Turkish Patent Institute. The Complainant is also registered owner of the MAXIMUM trademarks numbered 005249859 and dated August 09, 2006 and numbered 005780218 and dated March 22, 2007 before the Office for Harmonization in the Internal Market (OHIM).

(5) The Complainant is the registered owner of the domain name <herkesmaximumda.com.tr> since June 04, 2010.

Panel’s observation of the case file reveals the following:

(1) The disputed domain name <herkesmaximumda.com> was registered on April 13, 2010.

(2) The Respondent is an individual residing in Istanbul, Turkey.

(3) HERKES MAXIMUM’DA is a famous and widely and well-known slogan in Turkey, and it is highly improbable that the Respondent is unaware of this slogan.

5. Parties’ Contentions

A. Complainant

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 the trademarks/service marks 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 was registered and is being used in bad faith.

(i) Identical or Confusingly Similar

The Complainant alleges that the disputed domain name is identical or confusingly similar with its registered trademarks named HERKES MAXIMUM’DA and MAXIMUM.

(ii) Rights or Legitimate Interests

The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name since the Respondent does not have a registered trademark for the “herkes maximumda” or “herkesmaximumda” phrases. Further, the Respondent is not a licensee of the Complainant and does not have the Complainant’s permission to use the HERKES MAXIMUM’DA trademark of the Complainant. Additionally, the Respondent has made no legitimate noncommercial or fair use of the domain name.

(iii) Registered and Used in Bad Faith

To prove that the Respondent acts in bad faith, the Complainant alleges that

1. the disputed domain name is confusingly similar to the Complainant’s trademarks, and there is a likelihood of confusion between the trademarks and the disputed domain name;

2. the disputed domain name was registered primarily for the purpose of selling it;

3. the Respondent shows its apparent intent to damage the Complainant’s business by directing Internet users to improper sexual friendship sites. The Complainant refers to Caledonia Motor Limited v. Amizon, WIPO Case No. D2001-0860, and stated that using the domain name to divert Internet users to a pornographic website is evidence that the Respondent registered and is using the disputed domain name in bad faith;

4. the Respondent intended to disrupt the business of the Complainant and attempted to attract Internet users to its website 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 a product or service on its website for commercial gain, See Kocbank A.S. v. N&K Danismanlik Limited, WIPO Case No. D2001-0849;

5. The HERKES MAXIMUM’DA trademark is a legally registered, recognized and well-known trademark not only in Turkey, but the world as well.

B. Respondent

The Respondent states that the “Herkes Maximum’da” phrase is the slogan of the Complainant but alleges that since its meaning is “everybody at Maximum”, it is generic.

Furthermore the Respondent, mentioning that the disputed domain name <herkesmaximumda.com> was acquired by the Respondent before the <herkesmaximumda.com.tr> was acquired by the Complainant, alleges that the allegations of the Complainant are baseless.

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, Supplemental Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint and the Response.

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 elements 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 HERKES MAXIMUM’DA and several marks named MAXIMUM. The disputed domain name contains the whole phrase of the HERKES MAXIMUM’DA trademark. Additionally, the distinctive element of the disputed domain name, which is “maximum”, is also a registered trademark of the Complainant.

Additionally, the HERKES MAXIMUM’DA trademark cannot be argued in these Policy proceedings to be generic, since it is a registered trademark. In the Turkish system, it is impossible to register generic phrases as a trademark. Only the registration is sufficient to prove that the HERKES MAXIMUM’DA trademark is not generic. Additionally, HERKES MAXIMUM’DA is a well and widely known slogan, associated with the Complainant, which also has acquired distinctiveness.

Consequently, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks and the first requirement under paragraph 4(a) of the Policy is satisfied.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy rules that, a respondent may establish its rights or legitimate interests in the 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 noncommercial 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 rests with the Complainant who must demonstrate a prima facie case that the Respondent lacks 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.

The Panel finds that the Complainant has proved rights in the HERKES MAXIMUM’DA and MAXIMUM marks, the earliest of which dates back to 2006, and also sufficiently demonstrated the fact that the Respondent does not have rights or legitimate interests in the disputed domain name for the purpose of the Policy. The Panel finds that in disputed domain name, as previously noted, the Panel does not accept the Respondent’s claims that this phrase is in fact generic in Turkey. As noted, the Complainant has a pre-existing trademark registration for the term. The Complainant has not granted the Respondent any right or license to use the HERKES MAXIMUM’DA phrase and marks.

The Panel also 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 finds 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 HERKES MAXIMUM’DA and MAXIMUM marks has not been authorized or licensed to the Respondent, the disputed domain name does not obviously correspond to the Respondent’s name or a trade name by which it has become commonly known and the Respondent cannot be regarded as using the disputed domain name in connection with a bona fide offering of goods or services.

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 enumerates four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a 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 the 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 web site 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 web site or location or of a product or service on the Respondent’s web site or location.

By consideration of the foregoing, the Panel is of the opinion that due to the well-known status of the Complainant’s marks and extensive usage of such marks, the Respondent, who appears to be located in Turkey, is most likely aware of their existence.

As listings appearing on the web page contain some links to the sexual friendship sites and since the suggestion “Want to buy this domain? Our Domain Buy Service can help you get it.” Appears, to the Panel, that there, that the Respondent is acting in bad faith.

The Panel finds, taking all of the facts and circumstances of the case into account, that this does not circumvent a finding that the disputed domain name is in use within the requirements of paragraph 4(a)(iii) of the Policy and does not exculpate the Respondent as it is obvious that the Respondent registered the disputed domain name with the intent to target the Complainant’s marks. See e.g., Eveready Battery Company, Inc. v. Oscar Haynes, WIPO Case No. D2003-1005; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; and Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273).

In light of the evidence submitted, the Panel is of the opinion that the Respondent has registered the disputed domain name in order to prevent the Complainant from reflecting the marks in a corresponding domain name and intentionally attempted to attract Internet users to its websites for commercial gain by benefitting from the Complainant’s reputation. The Complainant and the Respondent are evidently of Turkish origin and reside in Turkey. Given the circumstances, the Panel is of the opinion that it is highly unlikely that the Respondent is unaware of the Complainant, its trademarks and domain names and unlikely to have registered the disputed domain name which contains the Complainant’s trademarks without having been aware. 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.

The Panel is therefore convinced that the disputed domain name has been registered and is being used in bad faith and that the Complainant has fulfilled the third element under paragraph 4(a)(iii) of the Policy.

7. Decision

For all 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 <herkesmaximumda.com> be transferred to the Complainant.

Selma Ünlü
Sole Panelist
Dated: January 29, 2011