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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

AKBANK TURK A.S. v. Set Computer

Case No. D2008-1735

1. The Parties

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

The Respondent is Set Computer, of Kagithane, Istanbul, Turkey^{1 2}.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 11, 2008. On November 12, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On November 12, 2008, 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 November 24, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 14, 2008. The Response was filed with the Center on November 12, 2008.

The Center appointed Gökhan Gökçe as the sole panelist (“the Panel”) in this matter on January 12, 2009. 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.

No further submissions were received by the Center or the Panel.

Finally, in accordance with paragraph 11 of the Policy, the language of the administrative proceeding will be the language of the registration agreement (i.e. English) since the Parties have not agreed otherwise and since the registration agreement, which the present dispute is based upon, does not provide otherwise.

4. Factual Background

Akbank Türk A.Ş., widely known and recognized as “Akbank”, was founded in 1947 and is one of the leading banks in Turkey. Akbank is affiliated with a number other companies operating in various sectors such as investment, insurance, leasing etc.

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 added that it has a number of national registrations.

Finally, the Complainant stated that it has three (3) international registrations under the Madrid Agreement and 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 Respondent is the registrant of the domain name <akbanktas.com>. The domain name was registered on July 17, 2008 and according to the Registrar’s WhoIs records, it is going to expire on July 17, 2009. When one visits “www.akbanktas.com”, he is forwarded to an URL address:

“http://www.setbilgisayar.com/satilik.html” which has the following expressions:

Not Found

The requested document was not found on this server.

Web Server at setbilgisayar.com”

The Panel notes in Turkish, “Setbilgisayar” means “Set Computer” and “satilik” means “for sale”.

5. Parties’ Contentions

A. Complainant

The Complainant bases its arguments on paragraph 4(a) of the Policy and alleges that;

1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

2. The Respondent has no rights or legitimate interests in respect of the domain name; and

3. The domain name was registered and is being used in bad faith by the Respondent.

1 The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

It is stated that Akbank is the legal owner of the domain name <akbank.com.tr> since December 9, 1996 and the name AKBANK is also both the trademark and commercial title of the Complainant. It is contended that the disputed domain name <akbanktas.com> is a combination of two separate terms, namely “Akbank” and “tas”. The Complainant conducts all of its trade operations, advertisements and promotions under the mark AKBANK. As for “tas”, it is alleged that the word is an abbreviation for the second part of the Complainant’s trade name TURK A.Ş. where Türk stands for “Turk” and A.Ş. stands for “Anonim Şirket” which is the Turkish equivalent of incorporation (“Inc.”). The Complainant asserts that;

The disputed domain name incorporates the mark AKBANK, which constitutes their most significant meaningful portion. The domain name comprises of the additional descriptive term “tas”=T.A.Ş.=Turk A.Ş.=Turk Inc., added after AKBANK.

It is additionally added that;

Using English equivalent of the word <tas> - which is also the Complainant’s trade name’s second part - with the Complainant’s main trademark AKBANK does not eliminate the visual and conceptual identity with the Complainant’s <Akbank> trademark. Based on the overall visual and conceptual impression and expected Internet user association, the disputed domain name is confusingly similar to Complainant’s “AKBANK” marks.

2. The Respondent has no rights or legitimate interests in respect of the domain name.

The Complainant states that it has not granted any licenses or otherwise permitted the Respondent to use the mark AKBANK.. The Respondent does not make any commercial or noncommercial use of the disputed domain name, it is not commonly known by the disputed domain name and therefore it has no legitimate interests in using the disputed domain name save for the fact that it wants to create a connection with the Complainant and its trade mark.

The Respondent appears to be a computer company and has never been licensed or granted permission from the Complainant to use its mark.

As a Turkish citizen, it is improbable for the Respondent not to be aware of the Complainant’s goodwill and reputation in its services and trademark AKBANK..

When the Respondent registered the disputed domain name, it was well aware of the name AKBANK and its reputation as a trademark.

Finally, the Complainant has the right to control how its trademark is used on the Internet by third parties.

3. The disputed domain name was registered and is being used in bad faith by the Respondent.

The Complainant alleges that;

…the domain name was registered primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the owner of the trademark for valuable consideration in excess of the domain name registrant’s out-of-pocket costs…Complainants argue 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 any actual use of the registered domain name without infringing on the trademark owner’s rights.

The Respondent is in bad faith since it has placed no content on the site at “www.akbanktas.com” relating to any of its commercial and/or noncommercial activities; and

The Respondent’s inactive holding of the disputed domain name suggests that it registered the domain name <akbanktas.com> for selling it to the Complainant.

B. Respondent

The Respondent states that a payment has been made for the disputed domain name <akbanktas.com> and all of the Respondent’s actions are legitimate. It is added that “ak” means white, “bank” means bank and “tas” means stone, all being generic words.

The Respondent contends, with reference to the Complaint, that the Complainant not registered “akbanktas” as a trademark opposes the Complainant’s explanation of “tas” by alleging that the letter “t” in the word “tas” may be interpreted as “ticaret” (commerce, trade) instead of “Turk” and one can choose to use A.Ş. or L.T.D.

It is declared that the Complainant may buy and use the disputed domain name <akbanktas.com> but the Respondent appears to refuse to sell. The Respondent’s intention is to prepare a website under the disputed domain name <akbanktas.com> and post “strong and clear banking, finance, exchange etc. information on the site”.

6. Discussion and Findings

Paragraph 4(a) of the Policy sets forth the following three elements which the Complainant must prove, during the administrative proceedings, to merit a finding that the domain name of the respondent be transferred to the complainant:

(a) The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

(b) The respondent has no rights or legitimate interests in respect of the domain name; and

(c) The domain name has been registered and is being used in bad faith.

Pursuant to paragraph 15(a) of the Rules, the panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

a. Identical or Confusingly Similar

The Complainant has proven that it owns the trademark and service mark(s) AK, AKBANK and a number of combinations comprising the marks AK and AKBANK (see Annex 4 of the Complaint); See also Akbank v. Dr. Mehmet Kahveci, WIPO Case No. D2001-1488. The Panel is in recognition of the Complainant’s reputation in its field of activities and is satisfied with the view that it is not probable for the Respondent to be unaware of the trademark AKBANK. Furthermore, the Complainant established satisfactory evidence that the terms “ak” and “akbank” correspond to registered marks of the Complainant, both nationally and internationally. The Panel does not share the Respondent’s view for the interpretation of this hybrid word. Although it is true that each of “ak” “bank” and “tas” terms might be dictionary words and have meaning on their own, it is not possible to accept that “akbanktas”, as a combination of these three words, has a generic meaning. See Coca-Cola v. F. Cade & Sons Limited [1957] I.R.196, Sabel BV v. Puma AG (Case C-251/95), 1998 R.PC.199.

In this context, it has been stated in several decisions by other UDRP administrative 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. See Bayerische Motoren Werke AG, Sauber Motorsport AG v. Petaluma Auto Works, WIPO Case No. D2005-0941; Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358; Toyota France and Toyota Motor Corporation v. Computer-Brain, WIPO Case No. D2002-0002; Pfizer, Inc. v. Seocho and Vladimir Snezko, WIPO Case No. D2001-1199.

The Panel also disagrees with the interpretation of the word “tas” since the Respondent failed to provide plausible evidence related thereto. While affirming that a company can use A.Ş. (abbreviation for anonim şirket meaning joint stock corporation) or LTD (abbreviation for limited şirket meaning limited liability partnership), the Respondent contests that the letter “t” does not stand for “Turk” but “ticaret” (meaning trade, commerce).

Pursuant to paragraph 15(a) of the Rules, the Panel is not satisfied with the Respondent’s approach considering the evidence submitted by the Complainant and shares the same view with the Complainant. Accordingly, it is the Panel’s view that the term “tas” stands for “Turk A.Ş.”.

There are several decisions by prior UDRP panels that incorporating a trademark into a domain name can be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark. See Bayerische Motoren Werke AG, Sauber Motorsport AG v. Petaluma Auto Works, WIPO Case No. D2005-0941; Sabanci v. iu, WIPO Case No. D2003-0498.

On this background, it is the view of this Panel that the domain name <akbanktas.com> is confusingly similar to the trademarks owned by the Complainants.

b. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, the Respondent may exhibit that it has rights or legitimate interests in the domain name by showing one or more of the following circumstances:

(i) before any notice to the respondent of the dispute, the respondent’s 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) the respondent (as an individual, business, or other organization) has been commonly known by the 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 domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Complainant has never licensed or otherwise authorized or permitted the Respondent to use any of the Complainant’s trademarks or to register the disputed domain name. Therefore, the Respondent is not in a position to refer to such trademark use right. Further, in this case, the Respondent has no rights or legitimate interests to establish and have a domain name with a word combination which is the abbreviation of the commercial title of the Complainant.

Furthermore, the Panel has not accepted the defense of the Respondent that it aims to use this website to display “banking, finance, exchange etc. information”. Pursuant to Banking Law, No. 5411, it is required to obtain the permission of Banking Regulation and Supervision Agency (BRSA), the banking regulatory authority of Turkey, in order to establish a bank and perform banking activities. Therefore, it is not permissable under above referenced law for the Respondent, who appears to have no such license, to display such information with a domain name containing the word “bank”.

Furthermore, as stated above, there is no material information on the “www.akbanktas.com” website and no evidence has been submitted by the Respondent that it has used or made demonstrable preparations to use such in accordance with the above.

As stated above under part 1 of this decision, the commercial title of the Respondent could not be found. Nor is there such information in the Respondent’s Response. Considering the current information, it is understood that the Respondent seems to operate in the computer area and it has no other relation with banking or financial services. Therefore, the Panel could not establish any link between the name of the Respondent and the disputed domain name. Furthermore, there is no evidence in the file that shows that the Respondent is commonly known by the disputed domain name. On the contrary, it is widely known in the Turkish public that the Complainant is known by the disputed domain name.

The Response of the Respondent also does not contain any convincing information or evidence that the Respondent has made 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.

In the light of foregoing, none of the above mentioned paragraphs is applicable to the present dispute; thus the Respondent has no right or legitimate interest to use the disputed domain name.

On the basis of the foregoing, the Panel is of the view that the Respondent failed to prove any rights or legitimate interests in the domain name. See Akbank v. Dr. Mehmet Kahveci, WIPO Case No. D2001-1488; Dedeman Holding v. Dedeman Hakan, WIPO Case No. D2004-0573; Turkiye ss Bankasi A.S. v. Ali Nail Kocyigit, WIPO Case No. D2004-0825; Vestel Elektronik Sanayi ve Ticaret AS v. Mehmet Kahveci, WIPO Case No. D2000-1244.

c. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides the circumstances, in particular but without limitation, which will be evidence of the registration and use of a domain name in bad faith, that is to say:

(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 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 website 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 website or location or of a product or service on the respondent’s website or location.

In this respect, the Panel finds that the disputed domain name was registered and used in bad faith. In reaching this conclusion, the Panel observed whether bad faith existed when the domain name was registered and whether the domain name was used in bad faith.

As for the first point, the Panel is satisfied with the evidence submitted by the Complainant as to the recognition and reputation of the name AKBANK in Turkey, where the Respondent resides. Thus, the Panel is of the view that the Respondent was likely aware of the commercial title and trademark AKBANK. See Kocbank A.S. v. N&K Danismanlik Limited, WIPO Case No. D2001-0849.

As for the latter, the Panel sought on the Internet the domain name <akbanktas.com> which now appears as:

The Panel has not been provided with any information that the Respondent made a direct offer to sell the disputed domain name to the Complainant to date. However, as stated above, it is obvious that the Respondent is still offering this website for sale to a third persons, by directing the visitors to “http://www.setbilgisayar.com/satilik.html”.

Furthermore, the evidence submitted by the Complainant shows that the Respondent likely displayed information in this website to receive proposals to purchase the <akbanktas.com> domain name.

In addition, as stated above, the disputed domain name is not being used by the Respondent for any meaningful activity. Therefore, the Panel has found that the website is inactive.

In the light of foregoing, the Panel is of the view that the Respondent has registered and used the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring it to the Complainant or third parties. Thus, it acted 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 <akbanktas.com> be transferred to the Complainant.

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Gökhan Gökçe
Sole Panelist

Dated: January 22, 2009

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¹ The Panel would like to note that after careful examination of the Turkish Trade Registry Gazette and Istanbul Chamber of Commerce Trade Registry, the Panel was not able to find the full commercial title of the Respondent and could not reach any records with respect thereto. To the best knowledge of the Panel, the only publicly available information on the Respondent is found on “www.setbilgisayar.com” which is a website under construction, stating only “IT Solutions; being updated”.

² The address of the Respondent is not a full address as Kagithane is just the name of a district of Istanbul.