WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Türkiye Cumhuriyeti Ziraat Bankası Anonim Şirketi v. 王彬 (wang bin)

Case No. D2020-0670

1. The Parties

The Complainant is Türkiye Cumhuriyeti Ziraat Bankası Anonim Şirketi, Turkey, represented by Grup Ofis Marka Patent Inc., Turkey.

The Respondent is 王彬 (wang bin), China.

2. The Domain Name and Registrar

The disputed domain name <ziraatpay.com> is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed in Turkish with the WIPO Arbitration and Mediation Center (the “Center”) on March 19, 2020. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 20, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on the same day providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same day, the Center also sent a communication to the Parties, in Turkish and Chinese, regarding the language of the proceeding. On March 23, 2020, the Complainant requested that the language of the proceeding be Turkish or English. On March 25, 2020, the Complainant filed an amended Complaint in Turkish. The Respondent did not comment on the language of the proceeding. On March 27, 2020, the Center sent an email communication to the Complainant requesting an English translation of the Complaint. On April 6, 2020, the Complainant provided the Center with the translated Complaint in English.

The Center verified that the Complaint together with the amended 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 in English and Chinese of the Complaint, and the proceedings commenced on April 14, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 4, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 6, 2020. On May 12, 2020, due to an administrative oversight, the Center sent a further message in English and Chinese to the Respondent via the Registrar’s online contact form confirming that it had notified the Respondent of the Complaint on April 14, 2020, and giving the Respondent a further five days to indicate whether it would like to participate in the proceeding. No communication was received from the Respondent.

The Center appointed Matthew Kennedy as the sole panelist in this matter on May 20, 2020. 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 Complainant is a State-owned Turkish bank established in 1888. The Complainant is the holder of multiple trademark registrations including:

a) Turkish trademark registration number 2005 58096 for ZİRAAT BANKASI and device, registered on January 8, 2007, specifying goods and services in classes 9, 36 and 38;

b) Turkish trademark registration number 2019 61259 for ZİRAAT PAY, applied for on June 27, 2019 and registered on October 17, 2019, specifying goods and services in classes 9, 36 and 42; and

c) International trademark registration number 1081848 for a device including the letters and words T.C. ZİRAAT BANKASI A.Ş., registered on April 12, 2011, designating multiple jurisdictions and specifying services in class 36. The translation of the mark notes, inter alia, that “ZİRAAT” means “agriculture” while the word “BANKA” means “bank” and “BANKASI” is related to the word “ZİRAAT” and thereby, has a possessive suffix at the end of the word.

The above trademark registrations remain in effect. The Complainant has also registered several domain names that begin with the word “ziraat”, including <ziraatbank.com.tr> and <ziraat.com.tr> that it registered on June 11, 1997 and July 30, 1997, respectively, which it uses in connection with a website in Turkish and English where it provides information about itself and its services.

The Respondent is an individual resident in China.

According to the Registrar’s public WhoIs database, the disputed domain name was created on June 27, 2019. According to the Registrar’s confirmation email, the Respondent registered, or acquired the registration of, the disputed domain name on June 28, 2019. The disputed domain name does not resolve to any active website; rather, it is passively held.

5. Parties’ Contentions

A. Complainant

The disputed domain name is identical or confusingly similar to the Complainant’s ZİRAAT PAY, ZİRAAT BANKASI and T.C. ZİRAAT BANKASI A.Ş. marks.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has never consented or granted any right or authorization to the Respondent for the use

of any registered, unregistered and well-known marks which are owned by the Complainant and which constitute the disputed domain name.

The disputed domain name was registered and is being used in bad faith. The Complainant’s T.C. ZİRAAT BANKASI A.Ş. mark is well known. It is impossible for the Respondent to be unaware of the Complainant’s marks. It is no coincidence that the disputed domain name was registered on the same day that the Complainant applied for the trademark ZİRAAT PAY, which supports a finding of bad faith.

B. Respondent

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

6. Discussion and Findings

6.1. Language of the Proceeding

Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.

The Complainant requests that the language of the proceeding be Turkish or, in the alternative, English. Its main arguments are that the Complainant’s main language of communication is Turkish and that the disputed domain name is identical or confusingly similar to Turkish trademarks, which indicates that the Respondent has a good command of Turkish, while the disputed domain name also includes the English word “pay”, which indicates that the Respondent has a command of the English language.

Paragraph 10(b) and (c) of the Rules requires the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the Parties. See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293.

The Panel observes that in this proceeding the Complaint was filed in Turkish with a translation into English. The Respondent has not commented on the language of the proceeding, filed a Response or otherwise expressed any interest in participating in this proceeding despite having received notice from the Center in English and Chinese. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay. The Panel understands English and considers that accepting the English translation of the Complaint and rendering this decision in English will not cause unfairness to either Party.

Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. The Panel also understands Chinese and would have accepted a Response in Chinese, but none was filed.

6.2 Substantive Issues

Paragraph 4(a) of the Policy provides that a complainant must prove each of the following elements:

(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.

A. Identical or Confusingly Similar

Based on the evidence submitted, the Panel finds that the Complainant has rights in the ZİRAAT PAY mark.

The disputed domain name incorporates the Complainant’s ZİRAAT PAY mark, omitting only the space between the words for technical reasons.

The only other element in the disputed domain name is a generic Top-Level Domain (“gTLD”) suffix (“.com”), which is a technical requirement of domain name registration. A gTLD suffix may be disregarded in the comparison between a domain name and a trademark for the purposes of the first element of paragraph 4(a) of the Policy unless it has some impact beyond its technical function, which is not the case here.

Therefore, the Panel finds that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or

(iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

As regards the first and third circumstances set out above, the disputed domain name does not resolve to any active website. This is not a use of the disputed domain name in connection with a bona fide offering of goods or services, and there is no evidence of any demonstrable preparations to make such a use, within the terms of paragraph 4(c)(i) of the Policy. Nor does this constitute a legitimate noncommercial or fair use of the disputed domain name within the terms of paragraph 4(c)(iii) of the Policy.

As regards the second circumstance, the Registrar’s verification email indicates that the Respondent’s name is “王彬 (wang bin)”, not “ziraatpay”. There is no evidence that the Respondent has been commonly known by the disputed domain name within the terms of paragraph 4(c)(ii) of the Policy.

In view of the above circumstances, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent did not rebut that prima facie case because he did not respond to the Complaint.

Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that certain circumstances shall be evidence of the registration and use of a domain name in bad faith but these circumstances are not exhaustive.

With respect to registration, the Panel observes that the disputed domain name was registered before the Complainant’s trademark rights in ZİRAAT PAY accrued. The Complainant does not appear to assert any rights in ZİRAAT PAY prior to registration on the basis of use. Although the Complainant has demonstrated that it holds rights in prior registered trademarks that include the word “ziraat”, it is unnecessary to consider those rights due to the circumstances surrounding the application and registration of the ZİRAAT PAY mark.

The Panel recalls that, where a respondent registers a domain name before the complainant’s trademark rights accrue, UDRP panels will not normally find bad faith on the part of the respondent. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.8.1. However, there is an exception to that general proposition in certain limited circumstances where the facts of the case establish that the respondent’s intent in registering the disputed domain name was to capitalize unfairly on the complainant’s nascent trademark rights. See WIPO Overview 3.0, section 3.8.2 and, for example, MADRID 2012, S.A. v. Scott Martin-MadridMan Websites, WIPO Case No. D2003-0598; and Stoneygate 48 Limited and Wayne Mark Rooney v. Huw Marshall, WIPO Case No. D2006-0916.

The Panel considers that the circumstances of this case are exceptional. The Complainant has a reputation in Turkey and abroad in the banking and financial sector. The operative element of the disputed domain name is identical to the ZİRAAT PAY trademark, but for the omission of the space between the words for technical reasons. There is no apparent connection between the Turkish word “ziraat” and the English word “pay” other than insofar as that combination forms the Complainant’s ZİRAAT PAY trademark. The Respondent registered, or acquired the registration of, the disputed domain name on the day after the Complainant filed an application to register that trademark. The Panel finds it implausible that this was mere coincidence and that the Respondent was unaware of the Complainant’s potential rights in ZİRAAT PAY. Rather, it appears that the disputed domain name was registered in anticipation of the Complainant’s trademark rights and that its aim was to take unfair advantage of the reputation that would attach to that trademark when the Complainant used it. See, for example, BML Group Limited v. Rikard Beach, Proxy My Whois AB,WIPO Case No. D2015-1897. The Respondent provides no alternative explanation for his choice of the disputed domain name. Therefore, the Panel considers it more likely than not that the Respondent registered the disputed domain name in bad faith.

With respect to use, the Respondent currently makes only passive use of the disputed domain name but this does not preclude a finding of use in bad faith. See Telstra Corporation Ltd v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In the present dispute, the disputed domain name wholly incorporates the Complainant’s ZİRAAT PAY trademark, but for the space between the words, with no additional elements besides the gTLD suffix. The Complainant submits that it has never consented or granted any right or authorization to the Respondent for the use of any of the Complainant’s marks and which constitute the disputed domain name. The Respondent registered, or acquired the registration of, the disputed domain name on the day after the Complainant filed a trademark application for ZİRAAT PAY. In the circumstances, that is an indicator of bad faith. The Respondent provides no explanation of any intended use of the disputed domain name. In view of these circumstances, the Panel finds that the Complainant has discharged its burden of demonstrating that the disputed domain name is being used in bad faith.

Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy.

7. Decision

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 <ziraatpay.com> be transferred to the Complainant.

Matthew Kennedy
Sole Panelist
Date: May 28, 2020