WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Akbank Turk A.S. v. Justin McDermott

Case No. D2010-0999

1. The Parties

The Complainant is Akbank Turk A.S. of Levent-Istanbul, Turkey, represented by Istanbul Patent & Trademark Consultancy Ltd., Turkey.

The Respondent is Justin McDermott of Illinois, United States of America.

2. The Domain Name and Registrar

The disputed domain name <akbanknv-uk.com> (the “Domain Name”) is registered with Melbourne IT Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 17, 2010. On June 17, 2010, the Center transmitted by email to Melbourne IT Ltd. a request for registrar verification in connection with the disputed Domain Name. On June 18, 2010, 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 June 21, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 11, 2010. The Response was filed with the Center on June 30, 2010.

The Center appointed Isabel Davies as the sole panelist in this matter on July 15, 2010. 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 Respondent did not dispute the statements of fact set out in the Complaint. Accordingly, the Panel accepts the factual background set out in the Complaint.

The Complainant states that it trades under the name AKBANK. The Complainant asserts that it is a top-tier privately owned Turkish bank with an extensive branch network. 25% of the Complainant bank's shares are traded on the Istanbul stock exchange and its Level 1 ADRs are traded on the IOB in London and the OTC in the United States. The Complainant also states that it is one of the largest banks in Turkey based on assets and loan volume.

The Complainant bank was founded in Adana in Turkey in 1947, primarily with the purpose of providing financing for the cotton producers in the region. It opened its first branch in Istanbul in 1950 and subsequently re-located its headquarters to Istanbul in 1954. It achieved automation of all of its banking operations in 1963 and, in addition to its core banking activities, offers a wide range of retail, commercial, private banking and international trade finance services. It also provides non-banking financial services and capital markets and investment services through its various subsidiaries. The Complainant states that it has 13, 513 employees operating in 715 branches across Turkey, as well as retail and corporate internet branches, a telephone banking center and web-based platforms. The Complainant also asserts that since December 1996, the Complainant has operated and maintained the website “www.akbank.com.tr”.

The Complainant asserts that in 2007, it entered into a strategic partnership with Citigroup in which Citigroup acquired a 20% stake in the Complainant. At the end of 2007 the Complainant had a net profit of 2 billion YTL (approximately USD 1.76) and assets of 72.1 billion YTL (approximately USD 62.2 billion).

The Complainant has several subsidiary companies, including one in Germany (Akbank AG) and branches in the UK and Malta. In addition, the Complainant has a wholly owned subsidiary, Akbank NV in the Netherlands, which was established in 2001. Akbank NV is a commercial bank, licensed to undertake banking transactions under the supervision of the Dutch central bank and the Dutch financial markets authority.

The Complainant states that until 1995, it was not possible to register trade or service marks in Turkey. Since that date, the Complainant states that it has obtained over 100 such marks in its name, and has provided details of these, approximately half of which feature the name AKBANK. The Complainant also asserts that it has several national trade mark registrations in a variety of countries across the world for AKBANK and AK plus a design, and has also provided details of these.

5. Parties' Contentions

A. Complainant

The Complainant makes the factual assertions set out above.

The Complainant asserts that the Domain Name <akbanknv-uk.com> is a combination of three separate elements: “AKBANK”, “NV” and “UK". AKBANK is the Complainant's main trade mark, and also the dominant element of its company name. The Complainant has traded under this mark continually since 1947. The Complainant contends that the latter two elements, “NV” and “UK” are generic, descriptive terms only which do not distinguish from, but rather reinforce the association of the Domain Name <akbanknv-uk.com> with AKBANK. The Complainant asserts that “NV” is the second element of the Complainant's wholly-owned Dutch subsidiary, Akbank NV, and is an abbreviation of the Dutch term Naamloze Venootschap, which means “public limited-liability company”. UK is the abbreviation for United Kingdom, an area in which Akbank NV also has business operations.

The Complainant cites UDRP decision Yahoo! Inc. and Overture Services, Inc. v. Registrant (187640), a/k/a Gary Lam, a/k/a Birgit Klosterman, a/k/a XC2, a/k/a Robert Chua, a/k/a Registrant, WIPO Case No. D2004-0896, in which it was decided that a domain name which consists of a complainant's trade mark with the addition of a generic term is not sufficient to distinguish the respondent's domain name from the complainant's trade mark and, in addition, if the term added is associated with the business of the complainant, it can even add to the similarity between the domain name and the mark in question.

The Complainant cites numerous UDRP decisions to support its contention that the incorporation of a trade mark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to a complainant's registered mark. In particular, the Complainant refers to AKBANK TURK A.S. v. Set Computer,WIPO Case No. D2008-1735(in which it also featured as the Complainant)as covering circumstances similar to those in the present issue. In that decision, the WIPO panel was satisfied that the Complainant had established its reputation and its ownership of various national and international trade marks, and that, by virtue of the reputation of the Complainant, rather than specific knowledge of the respondent, it was unlikely that the respondent would be unaware of the mark AKBANK.

The Complainant contends that it has no relationship with the Respondent and has not authorised the Respondent to use its AKBANK trade mark. The Complainant contends that the Respondent appears to be operating a computer company and is not known by the Domain Name. The Complainant asserts that the Respondent does not use the Domain Name in either a commercial or non-commercial context. The Complainant also asserts that the Respondent has no legitimate interest in using the Domain Name and that the only reason the Respondent would have for registering the Domain Name would be to create a connection to the Complainant and its AKBANK mark, or to disrupt the business of the Complainant.

The Complainant states that no content has been placed on the website hosted on the Domain Name and cites various previous UDRP decisions in support of its contention that the incorporation of a famous mark into a domain name which supports an inactive website may be evidence of bad faith registration and use.

The Complainant refers to several previous WIPO domain name disputes which have been initiated by the Complainant, in which the contested domain names (held by a variety of individuals and companies) include the AKBANK mark, either alone or in conjunction with a generic word element, with a variety of top level domains. These are cited as evidence that the AKBANK mark is well-known and attracts third party bad faith registrations.

The Complainant also asserts that the Respondent would have been aware of the AKBANK mark when he applied to register the Domain Name because it is a well-known mark, and the Complainants websites: <akbanknv.com> and <akbank.co.uk> contain detailed information on the existence of the AKBANK NV company and it's operations in the UK, elements which the Complainant claims feature in the disputed Domain Name. In addition, the Complainant states that it sent a cease and desist letter to the Respondent (who was using a domain name privacy proxy service at the time) on July 6 2009, to which it received no response. The Complainant cites several previous UDRPdecisionsto support its contention that a respondent's constructive and actual knowledge of a complainant's trade mark rights prior to registering the disputed domain is already strong evidence of registration of the domain in bad faith.

The Complainant argues that registration and use of a domain name incorporating a famous mark is necessarily in bad faith where a respondent knew at the time of registration that he could not make use of the domain name without infringing the Complainant's trade marks. In support of this, the Complainant cites UDRP decision Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028, in which the respondent's registration was held to be necessarily in bad faith because it would have been impossible for the respondent to use the domain name for any commercially useful business or service without infringing the complainant company's rights.

B. Respondent

The Respondent, in his response submitted on June 30, 2010 stated that he had no interest in, and had never reserved, the Domain Name <akbanknv-uk.com>. This was re-iterated in the Respondent's email to the Center of July 1, 2010 in which he restated that he had no interest in the Domain Name <akbanknv-uk.com>, and that although his name was correctly listed as registered at the specified postal address, the email addresses and telephone numbers for the registrant listed in the details provided by the registrar were not connected with him.

6. Discussion and Findings

The Respondent contends that he has no interest in and has never reserved the domain <akbanknv-uk.com>. This does not mean that a decision should automatically be granted in favour of the Complainant. The Complainant must still establish each of the three elements required by paragraph 4(a) of the Policy. However, under paragraph 14(a) of the Rules, the Panel is entitled to draw such inferences as it considers appropriate from a party's failure to comply with any provision of, or requirement under, the Rules, including the Respondents' failure to file a Response. In this circumstance the Respondent has responded to the effect that he has not registered the Domain Name, and in the absence of evidence to the contrary, the Panel has no reason to doubt that this is correct. If this is the case, the Panel is entitled to infer from this that the Domain Name has been registered by a third party attempting to conceal its true identity. There has been no response given to the substantive elements of the Complaint by either the Respondent or any third party.

A. Identical or Confusingly Similar

The Complainant contends that it has been using the AKBANK mark continuously since 1947 and has provided details about the growth of the company and it's reputation since that date. The Complainant has submitted evidence of numerous trade mark registrations (both in Turkey and other jurisdictions across the world) consisting of, or incorporating AKBANK mark, of which it is the proprietor. This evidence is unchallenged by the Respondent and the Panel has no reason to doubt that it is factually correct and accepts the Complainant's assertions as to its rights in the trade mark AKBANK.

The Domain Name consists of the whole of the Complainant's trade mark with the addition of “NV-UK”. The Panel accepts the Complainant's assertions that “NV” is commonly understood to mean “public limited-liability company” in the Dutch language, and that “UK” is the common abbreviation of United Kingdom, and that both of these are simply descriptive abbreviations, thus making the AKBANK mark the dominant element of Domain Name.

The Panel also accepts the Complainant's assertion that it has a subsidiary company, AKBANK NV, and that this company has active operations in the UK (as well as in the Netherlands). Although the Complainant has not presented evidence of specific registered trade marks that combine AKBANK with “NV” and/or “UK”, the Panel accepts the Complainant's evidence that AKBANK NV is a well-known company which is commonly associated with the UK, and that the Akbank companies have a UK-facing website, “www.akbank.co.uk”. The Panel also accepts that customers would associate “NV” and “UK” with the Akbank group of companies and therefore the Complainant. As a result, the Panel finds that the Domain Name <akbanknv-uk.com> is conceptually similar to the AKBANK mark.

Because of the generic nature of the “NV” and “UK” suffixes, and the dominant nature of the AKBANK mark, which is incorporated into the Domain Name in its entirety, the Domain Name is visually similar to the AKBANK mark.

The Respondent has not submitted evidence to the contrary. As a result, the Panel accepts the Complainant's contentions that the Domain Name is similar to the Complainant's trade mark.

On the basis of the uncontested evidence and UDRP cases cited by the Complainant, the Panel finds that the Domain Name is confusingly similar to the trade mark.

B. Rights or Legitimate Interests

The burden of showing that the respondent has no rights or legitimate interests in the domain name lies with the complainant. However, it is established that this could result in the impossible task of proving a negative, requiring information that is within the knowledge of the respondents. The complainant is therefore required only to establish a prima facie case that the respondent has no rights or legitimate interests in the domain name. If the respondent does not submit a response, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See, among others, Croatia Airlines d.d. v. Modern Empire Internet Ltd, WIPO Case No. D2003-0455.

The Panel accepts the Complainant's uncontested assertion that it has not granted the Respondent any right to use its AKBANK trade mark. There also appears to be no legitimate connection between the Respondent and the AKBANK mark, and the Respondent does not appear to be using it in any circumstances, other than this registration. The Complainant submits that the AKBANK trade mark and its associated brand are well-known in the banking field, and provides evidence of the same. There is no apparent purpose for the Respondent to have registered the Domain Name. The Panel has no reason to doubt this uncontested evidence. The Panel also has no reason to doubt the Respondent's assertion that he has no interest in, and has never reserved the Domain Name. Bearing this in mind, the Panel therefore infers that the Domain Name has been registered by a third party, the true identity of which is unknown. Given that the Panel has been presented with no evidence of any third party having any legitimate rights in the AKBANK mark, the Panel infers that such third party would have no purpose to register the Domain Name, other than to make money by attempting to sell the Domain Name at a profit to the Complainant, or to a competitor of the Complainant, or at the very least, to disrupt the business of the Complainant. The Panel therefore finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the Domain Name.

The Respondent has had the opportunity to attempt to refute the Complainant's prima facie case and to demonstrate such right or interest. he has not done so. The Panel infers from this that the Respondent has no such right or interest and that he is not claiming such.

Paragraph 4(c) of the Policy sets out a non-exhaustive list of circumstances, any of which, if proved by a respondent to exist, will demonstrate a respondent's right or legitimate interest in a disputed domain name. These may be summarised as: (i) use of the domain name in connection with a bona fide offering of goods or services; (ii) that the respondent has been commonly known by the domain name; and (iii) that the respondent is making legitimate non-commercial or fair use of the domain name.

The Panel has not seen any evidence that any of these circumstances exist in the instant case. As at July 27, 2010, the Domain Name does not resolve to a live website. The Panel therefore finds that the Domain Name has not been and is not being used by the Respondent in connection with a bona fide offering of goods or services. There is also no evidence to suggest, and the Respondent does not claim, that the Respondent is commonly known by the Domain Name, or that it is making legitimate noncommercial or fair use of the domain name.

Accordingly, the Panel is satisfied that the Respondent would be unable to, and does not wish to demonstrate rights or legitimate interests in the Domain Name under the circumstances set out at paragraph 4(c) of the Policy.

C. Registered and Used in Bad Faith

Under paragraph 4(b) of the Policy, the Complainant must show that the Respondent has registered and is using the Domain Name in bad faith.

Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances, any of which, if found by the panel to be present, shall be in particular evidence of registration and use of a domain name in bad faith. These include, at paragraph 4(b)(i) circumstances indicating that the respondent has registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name.

Although the Panel recognises that the Complainant's mark has previously been the subject of several bad faith registrations by third parties wishing to make financial gain by offering to transfer the domain names in question to the Complainant at a premium substantially greater than the cost of the registration, the Panel believes that the Complainant has provided no firm evidence of the Respondent intending to use this practice in the current case.

However, the Panel has no reason to doubt the Respondent's contention that he has no interest in, and has never reserved the Domain Name. If the Respondent himself did register the Domain Name, the Panel would have inferred from this that this was a bad faith registration. If, as stated by the Respondent, the Domain Name was registered by a third party, using the identity of the Respondent without his permission, in order to conceal that third party's true identity, this in itself would be a bad faith registration.

As well as being satisfied that the Domain Name was registered in bad faith, the Panel also needs to be satisfied that it is being used in bad faith. In this case, the Domain Name does not resolve to a web site. There is no evidence that a web site or other on-line presence which will use the Domain Name is in the process of being established. There is no evidence of advertising, promotion or display to the public of the Domain Name and there is no evidence that the Respondent has offered to sell, rent or otherwise transfer the domain name to the Complainant, a competitor of the Complainant, or any other person. In sum, there is no positive action being undertaken by the Respondent, or any third party, in relation to the domain name.

However, lack of active use of the domain name does not as such prevent a finding of bad faith use. The Panel must examine all of the circumstances of the case to determine whether the Domain Name is being used in bad faith. According to the guidance on paragraph 4(b) of the Policy, examples of circumstances that can indicate bad faith use include: the complainant's trademark being well-known, a lack of response to the complaint, concealment of identity and the impossibility of conceiving a good faith use of the domain name. The Panel is entitled to draw inferences based on the combination of these circumstances.

In the current case, the Panel accepts that:

(i) the Complainant's trademark has a strong reputation and is widely known, as evidenced by its substantial use in Turkey and in other countries;

(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the Domain Name;

(iii) as a result of the Respondent's response that he has not registered the Domain Name, the Panel has reason to believe that the true registrant is a third party which taken active steps to conceal its true identity, by operating under a name that is not its own;

(iv) in line with this, the third party registrant has actively provided, and failed to correct, false contact details, in breach of its registration agreement;

(v) in the alternative, if the Respondent's response is incorrect, and the Respondent is the true registrant, then the Respondent has failed to respond to the substantive elements of the Complaint; and

(v) taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant's rights under trademark law.

In light of these particular circumstances, the Panel considers that it is difficult to conceive a good faith use of the Domain Name. Therefore the Panel concludes that the passive holding of the Domain Name in this particular case satisfies the requirement of paragraph 4(a)(iii) that the domain name is being used in bad faith.

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 Domain Name, <akbanknv-uk.com> be transferred to the Complainant.

Isabel Davies
Sole Panelist

Dated: July 29, 2010