WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

AKBANK TURK A.S. v. Ahmetay, Ahmet Ay

Case No. D2011-0108

1. The Parties

The Complainant is AKBANK TURK A.S. of Istanbul, Turkey, represented by Istanbul Patent & Trademark Consultancy Ltd., Turkey.

The Respondent is Ahmetay, Ahmet Ay of Balova ZMR, Turkey.

2. The Domain Names and Registrar

The disputed domain names <akbankfaktoring.com> and <akfaktoring.com> are registered with Register.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 19, 2011. On January 19, 2011, the Center transmitted by email to Register.com a request for registrar verification in connection with the disputed domain names. On January 19, January 20, 2011, Register.com 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 January 25, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 14, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 15, 2011.

The Center appointed Ugur G. Yalçiner as the sole panelist in this matter on February 22, 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

AKBANK TURK A.Ş., well known briefly as “AKBANK”, is a top tear Turkish Bank which was founded in 1947 and has 715 branches and 13,513 employees, operates from its headquarters in Istanbul and 20 regional directorates around Turkey. Apart from its branches, the Complainant has the Telephone Banking Center, 1855 ATM’s, 835 BTM’s 253.274 POS terminals and high-tech channels such as cell phones and web-based platforms. The Complainant is affiliated with a number other companies operating in various sectors such as securities, funds, asset management, pension funds, investment, insurance, leasing etc.

At the end of 2007, the Complainant reached 2 billion YTL of net profit (approximately USD 1,76 billion) and 25% of the Complainant’s shares are traded on the Istanbul Stock Exchange.

Considering the history of the bank, its advertisements and customer and asset volume, AKBANK is a widely-known, reputable bank in Turkey.

The Complainant provided documentary evidence as to the registration of the trademarks AK and AKBANK with the Turkish Patent Office and it furthermore asserted that it had registered numerous trademarks including these words.

The Complainant AKBANK TURK A.S. has several service mark registrations before Turkish Patent Institution (TPI), national trademark offices of different countries and international registrations registered under Madrid Protocol.

The foregoing statements are not only uncontested but also supported by evidentiary documents and therefore the Panel is of the view that such constitutes a fair representation of the Complainant's trademark rights.

On the other hand, the disputed domain names <akbankfaktoring.com> and <akfaktoring.com> were created on December 27, 2010.

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar

With respect to paragraph 4(a)(i) of the Policy and paragraph 3(b)(viii), (b)(ix)(1) of the Rules, the Complainant contends that:

The Complainant AKBANK TURK A.S. has several service mark registrations before Turkish Patent Institution (TPI), national trademark offices of different countries and international registrations registered under International Madrid Protocol.

The Complainant is the legal owner of the domain name <akbank.com.tr> since December 09, 1996 which is still in use by the Complainant.

“AKBANK” is also the trade name of the Complainant.

The disputed domain names <akbankfaktoring.com> and <akfaktoring.com> are the combinations of two separate words, namely “akbank” and “ak” plus the generic Turkish word “faktoring” which means “factoring” in English. The words “akbank” and “ak” are the Complainant’s main trademarks and also AKBANK is its company name. The Complainant’s all trading operations, services, advertisements and promotions are conducted under the marks AKBANK and AK and it has used these marks continuously since 1947. The second word in the domain name is “faktoring”, a banking term, which the Complainant uses to cite its factoring service.

In particular, the terms “akbank faktoring” and “ak factoring” are clearly used in the commercial world.

Given the well-known nature of Complainant’s AKBANK and AK trademarks, in all aforementioned cases, the addition of descriptive terms to the Complainant’s marks AKBANK and AK do not only fail to distinguish the disputed domain names from the marks, but also reinforces the association of the disputed domain names with the Complainant’s marks. In that sense, the Respondent creates a likelihood of confusion in the minds of consumers, who expect the disputed domain names <akbankfaktoring.com> and <akfaktoring.com> to resolve to websites owned by, operated by or affiliated with the Complainant.

Using the generic Turkish word “factoring” which is also a term in financial/banking industry with the Complainant’s main trademarks AKBANK and AK does not eliminate the visual and conceptual identity with the Complainant’s AKBANK and AK trademarks. Based on the overall visual and conceptual impression and expected Internet user association, the disputed domain names are confusingly similar to the Complainant’s AKBANK and AK marks. As numerous courts and prior UDRP panels have recognized, the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark.

AKBANK’s well-known status and its trademark rights have been declared for several times by UDRP panels. Due to the fame and well-known status of the Complainant, there have been several attempts to use the Complainant’s trademark as a domain name solely or with another phrase. However, all these attempts have been prevented by UDRP panels.

Rights or Legitimate Interests

With respect to paragraph 4(a)(ii) of the Policy and paragraph 3(b)(ix)(2) of the Rules, the Complainant contends that:

a. The Respondent has made no claim that he is using the disputed domain names in connection with a bona fide offering of goods and services (Policy, paragraph 4(c)(i)).

The Complainant, AKBANK, has not licensed or otherwise permitted the Respondent to use the marks AKBANK and AK or to apply for or use any domain name(s) incorporating those trade/service marks. The Respondent has no relationship with or permission from the Complainant for use of its marks. The Complainant has prior rights in those trade/service marks, which precede the Respondent’s registration of the disputed domain names.

The Respondent has no legitimate interest in using the disputed domain names in connection with AKBANK and AK trademarks.

The Respondent has not been commonly known by the disputed domain names.

b. The disputed domain names are not the marks by which the Respondent is commonly known (Policy, paragraph 4(c)(ii)).

The Respondent has acquired no trademark or service mark rights and he has no common knowledge (as an individual, business, or other organization) that he is known by the disputed domain names.

The disputed domain names are not a mark by which the Respondent is commonly known.

The Respondent has never been licensed or granted permission from the Complainant to use its marks.

Registered and Used in Bad Faith

With respect to paragraphs 4(a)(iii) and 4(b) of the Policy and paragraph 3(b)(ix)(3) of the Rules, the Complainant contends that:

AKBANK and AK are well-known marks and it is difficult to imagine that the Respondent would not have been aware of these marks, when he registered the disputed domain names <akbankfaktoring.com> and <akfaktoring.com>. Moreover, he used two of the related trademarks of the Complainant. Therefore, it is not possible that the Respondent was not aware of the Complainant’s trademarks and its “factoring” services before he registered the disputed domain names.

The Respondent has placed no content on the sites at “www.akbankfaktoring.com” and “www.akfaktoring.com” that relates to a business or has been created by the Respondent. As prior UDRP panels have held, the incorporation of a famous mark into a domain name, coupled with an inactive website, may be evidence of bad faith registration and use.

The Respondent registered the disputed domain names in order to prevent the owner of the mark from reflecting the mark in corresponding domain names and from offering online services through said domain names.

When the Respondent registered the disputed domain names, he knew that the names AKBANK and AK were the well-known trademarks of the Complainant.

The Complainant’s trademark is long established and widely known.

The Respondent has displayed no evidence whatsoever of any good faith use of or intention to use the disputed domain names <akbankfaktoring.com> and <akfaktoring.com>.

It is not possible to imagine any future bona fide use of the disputed domain names by the Respondent that would not be illegitimate, such as being infringement of the Complainant’s well-known marks or an act of unfair competition and infringement of consumer protection legislation.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy states that the Complainant must prove these three elements in the administrative proceedings:

(i) The disputed domain names are 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 names; and

(iii) The disputed domain names were registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the disputed domain names, <akbankfaktoring.com> and <akfaktoring .com>, are a combination of the trademarks AKBANK and AK with the addition of a generic word “factoring” along with the gTLD “.com”. It is well established that the inclusion of a gTLD such as “.com” is irrelevant in determining whether the domain name is identical or similar to a complainant’s trademark, see Ticketmaster Corporation v. DiscoverNet, Inc., WIPO Case No. D2001-0252 (<ticketmaster.net>).

The distinctive part of the disputed domain names are the trademarks AKBANK and AK which may cause the public to be misled that the disputed domain names are in some manner connected to the AKBANK and AK marks. (See Daimler Chrysler AG v. James Cruz, WIPO Case No. D2000-1554; America Online, Inc. v. Yeteck Communication Inc., WIPO Case No. D2001-0055). The addition of a generic term particularly in the field of banking where the Complainant operates, does not distinguish the disputed domain names from the Complainant’s famous registered trademarks. The Panel finds it is likely that the public and Internet users, in particular, may be attracted to the disputed domain names by the words “akbank” or “ak”, which correspond exactly to the Complainant’s marks. The Panel also notes that the addition of the word “factoring” fails to reduce the confusing similarity between the disputed domain names and the Complainant’s marks, as the term “faktoring” specifically refers to the products and services in which the Complainant has interests through its operations.

Following Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, a domain name that reproduces the trademark in its entirety is confusingly similar to the mark. It has been stated in several decisions by other UDRP panels that incorporating a trademark in its entirety into a domain name can be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark.

The Panel recognizes the Complainant’s rights and concludes that the disputed domain names are identical or confusingly similar with the Complainant’s AKBANK and AK trademarks.

The Complainant has established, as per paragraph 4(a)(i) of the Rules that the disputed domain names are confusingly similar to the trademarks in which the Complainant has rights.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes:

(1) the use of the domain name in connection with a bona fide offering of goods and services; or

(2) being commonly known by the domain name; or

(3) the making of a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.

The Complainant has asserted that the Respondent has no rights or legitimate interests to the disputed domain names for the following reasons:

The Respondent has acquired no trademarks and service mark rights and the Complainant has no knowledge that he (the Respondent) is commonly known by the disputed domain names. The Respondent has no license or permission from the Complainant to use its trademarks. The Respondent has no legitimate interest in using the disputed domain names in connection with AKBANK and AK trademarks.

Through these contentions the Panel finds that based on all of the evidence in the record the Complainant has succeeded in establishing a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The Respondent has failed to rebut this case with appropriate reaction or evidence. The Respondent has failed to submit any evidence that he is using the disputed domain names in connection with a bona fide offering of goods or services in satisfaction of the criterion listed in paragraph 4(c)(i) of the Policy, or indeed under paragraphs 4(c)(ii) or (iii).

Thus, in view of all the evidence submitted by the Complainant and in the absence of a Response by the Respondent, the Panel accepts the Complainant’s factual allegations as true. Therefore the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain names and the Complainant has established the second element of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

According to paragraph 4(a)(iii) of the Policy, in order to find the Respondent’s bad faith in registration and use of the disputed domain names, the Complainant must prove one of the following circumstances, in particular but without limitation:

(i) circumstances indicating that the Respondent has registered or acquired 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; or

(ii) the Respondent has registered the 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 domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s web site or other on-line 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.

In this sense the Panel finds that the Complainant’s commercial activities began in 1947 and today it is one of the leading companies in financial/banking industry in Turkey with its several service mark registrations before Turkish Patent Institute (TPI), national trademark offices of different countries and international registrations registered under International Madrid Protocol.

Moreover, the Panel is satisfied with the relevant evidence filed by the Complainant showing that it owns trademark registrations for AKBANK and AK, which have been registered long before the Respondent’s registration of the disputed domain names on December 27, 2010. Under this circumstance the Respondent must have been aware of the Complainant’s trade and service marks AKBANK and AK before registering the disputed domain names <akbankfaktoring.com> and <akfaktoring.com>, which evidences bad faith registration and therefore the Complainant has met the requirements of paragraph 4(a)(iii) of the Policy.

The Panel finds the Respondent’s registration of the disputed domain names <akbankfaktoring.com> and <akfaktoring.com>, shows the intention of the Respondent that he would like to create a relationship with the Complainant’s trademarks. Therefore the Panel is satisfied that the defaulting Respondent likely has the intention of misleading the public to believe that there was some affiliation or business relationship with the Complainant.

The Respondent has also made no active use of the disputed domain names. In a number of previous cases, passive holding of a domain name was construed to fall within the meaning of paragraph 4(a)(iii) of the Policy, evidencing bad faith use in light of the circumstances. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 (<telstra.org>).

In view of the foregoing, and in the absence of a rebuttal from the Respondent, the Panel finds that the Complainant has sustained its burden of proof in showing that the disputed domain names were registered and are 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 disputed domain names <akbankfaktoring.com> and <akfaktoring.com> be transferred to the Complainant.

Ugur G. Yalçiner
Sole Panelist
Dated: March 7, 2011