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Turkiye Is Bankasi A.S. v. Ali Nail Kocyigit Case No. D2004-0825 [2004] GENDND 1474 (22 November 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Turkiye Is Bankasi A.S. v. Ali Nail Kocyigit

Case No. D2004-0825

1. The Parties

The Complainant is Turkiye Is Bankasi A.S., Levent, Istanbul, Turkey represented by Ms. Nihan Isidan, Turkey.

The Respondent is Ali Nail Kocyigit, Mecidiyeköy, Istanbul, Turkey, represented by himself.

2. The Domain Name and Registrar

The disputed domain name <isbank.com> is registered with Tucows.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 8, 2004. On October 8, 2004, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On October 8, 2004, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 October 13, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was November 2, 2004. The Response was filed with the Center on November 2, 2004.

The Center appointed Ms. Dilek Ustun as the sole panelist in this matter on November 8, 2004. 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.

On November 8, 2004, the Center received a supplemental filing from the Complainant and on the same day the Center requested if the Panel was willing to review it. On November 12, 2004, the Center received the Respondent’s submission in reply to Complainant’s Supplemental Filing. On November 15, 2004, the Center requested if the Panel was willing to review it. On November 18, 2004, the Center received the second supplemental filing from the Complainant and on the same day the Center requested if the Panel was willing to review it. The Panel has accepted to review the Parties’ Supplemental Filings.

4. Factual Background

The Complainant Turkiye Is Bankasi A.S. is one of the well-known Turkish Banks that is established in Turkey on August 26, 1924, and has been operating for over 80 years.

Turkiye Is Bankasi A.S. operates through its Head Office in Istanbul and it has 850 branch offices in Turkey and 5 branches in Cyprus (1 branch in Lefkosa since February 2, 1955, 1 branch in Gazimagusa since October 16, 1959, 1 branch in Girne since November 1, 1977, 1 branch in Guzelyurt since June 18, 2001, 1 branch in Küçükkaymaklı/Lefkoşa since June 18, 2001), 1 branch in England (London) since June 22, 1983, and 1 branch in Bahrain since April 17, 2001. Complainant has an affiliate in Germany, called “Isbank GmbH” fully owned by Complainant. Isbank GmbH has 16 branches in Europe (12 branches in Germany in various German cities since July 1, 1992, 1 branch office in France (Paris) since May 18, 1998; 2 branches in The Netherlands (Amsterdam) since July 1, 1998; 1 branch office in Switzerland (Zürich) since April 10, 2000), and a further affiliate in Ireland (Is-Dublin Financial Services Plc) since January 10, 2000.

The Complainant’s domain name <isbank.com.tr> was registered on June 16, 1997, by “Middle East Technical University, the country code ‘.tr’ Domain Name Administration” Authority and this domain name has been used legally since then.

The Complainant, Turkiye Is Bankasi A.S. has the following trademarks registered by the Turkish Patent Institute.

The Complainant TURKIYE IS BANKASI A.S. has filed trade and service mark applications for the following trademarks before the Turkish Patent Institute.

Application No:	Trade and Service marks:	Classes:	Application Dates:
2004/11034	TURKIYE IS BANKASI	06,09,16,18, 24 35,36,38, 41,42	21.04.2004
2004/11035	IS BANKASI	06,09,16,18,2435, 36,38,41, 42	21.04.2004
2004/11036	ISBANK	06,09,16,18,24,35,36,38,41, 42	21.04.2004

The Complainant Türkiye Is Bankasi A.S. has filed Community Trademark (CTM) applications for the following trademarks before the Office for Harmonization in the Internal Market (OHIM).

Application No:	Trade and Service marks:	Classes:	Application Dates:
003765823	TURKIYE IS BANKASI	06,09,16,18,24,35,36,38, 41,42	27.04.2004
003766375	IS BANKASI	06,09,16,18,24,35,36,38, 41,42	27.04.2004
003766391	ISBANK	06,09,16,18,24,35,36,38, 41,42	27.04.2004

Complainant’s affiliate Isbank GmbH has the following trademark registered by the German Patent and Trademark Office (Deutsches Patentamt)

Registration No:	Trade and Service Marks:	Classes:	Registration Dates:
2 064 956	ISBANK GmbH	36	27.08.1992 31.08.1992 (renewal date)

5. Parties’ Contentions

A. Complainant

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

(Policy, paragraph 4(a)(i), Rules, paragraphs 3(b)(viii), (b)(ix)(1))

The Complainant asserts that the Respondent’s domain name <isbank.com> is identical or confusingly similar to their registered trade and service marks and their trade and service marks which are in the application phase that they have the right to use. They have used the trademark “ISBANK” in Turkey and in Europe for many years and their trademark has distinctiveness acquired through use according to the Article 15 of TRIPS Agreement.

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

(Policy, paragraph 4(a)(ii), Rules, paragraph 3(b)(ix)(2))

The Complainant states that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant also states that the Respondent is neither a licensee of Türkiye Is Bankasi A.S., nor has obtained a permission to use Türkiye Is Bankasi A.S.’s trademarks. The Complainant adds that the Respondent has not registered the name “isbank” as a trademark in Turkey or elsewhere and the Respondent has never been known by this name

C. The domain name was registered and is being used in bad faith.

(Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))

The Complainant states that the domain name <isbank.com> was registered primarily for the purpose of selling.

The Complainant’s trademark has long been established in the market and is widely known. The Respondent Ali Nail has also registered the <ziraatbank.com> domain name corresponding to a well-known and successful public bank “Ziraat BANKASI A.S.” It should be taken into consideration that the Respondent intends to register some of domain names, which can be identical to various well-known companies’ names by knowing that these names are trademarks of those well-known companies.
Additionally, the Complainant asserts that by including the word “bank” in a domain name the Respondent also violates the provisions of Turkish Banking Law No.4389.

B. Respondent

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

(Policy, paragraph 4(a)(i))

The Respondent does not contest that Turkiye Is BANKASI A.S. is one of the largest financial institutions in Turkey and possibly in the world. The domain name <isbank.com> is identical or confusingly similar to a trademark or service mark in which Turkiye Is BANKASI A.S. has rights.

B. Whether the Respondent has rights or legitimate interests in respect of the domain name;

(Policy, paragraph 4(a)(ii))

The Respondent asserts that the word “IS” means “work” in Turkish and he acquired this domain name to build a human resource, career development web site for prospective employers and job seekers. The Respondent also stated that merely obtaining a trademark does not negate everybody else’s legitimate interest on a common word.

C. Whether the domain name has been registered and is being used in bad faith.

(Policy, paragraph 4(a)(iii))

The Respondent asserts that he purchased the disputed domain name from its previous owner in good faith. He does not intend to sell it. He paid a lot of money for this domain name and has every intention to create a successful business built around this domain name.

The Respondent adds that the has no intention to profit by creating confusion or misleading consumers and he feels very strongly that people in Turkey will try to visit a site with a domain name <isbank.com> instinctively to look for a job as would people in the United States look for a site named “www.workbank.com” or “www.employmentbank.com”.

6. Discussion and Findings

Effect of prior legal proceedings

According to paragraph 18(a) of the Rules, in the event of any legal proceedings initiated prior or during an administrative proceeding in respect of a domain name dispute that is the subject of the Complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding or to proceed to a decision.

In the present case, a criminal proceeding was initiated in Turkey prior to this administrative proceeding against the former registrant. In any event, the Panel does not consider that the existence of interim orders or of ordinary proceedings initiated to obtain the confirmation of such orders would justify a suspension or termination of the administrative proceeding. Indeed, the Respondent was not a party to the provisional proceedings initiated by the Complainant, and the object of such proceedings was not cancellation or transfer of the domain name. Therefore, the Panel shall proceed to a decision on the administrative proceeding.

General:

According to paragraph 4(a) of the Policy, the Complainant must prove that;

(i) The 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 interest in respect of the Domain Name; and

(iii) The Domain Name has been registered in bad faith and is being used in bad faith.

A. Identical or Confusingly Similar

Complainant has proven that it owns the trademark/service mark(s) comprising of the marks “ISBANK”, “IS BANKASI” and “TURKIYE IS BANKASI”.

The trademark ISBANK is included in the disputed domain name. The suffix “.com” is incidental to domain name and cannot serve to distinguish it. Additionally, by the time the Respondent registered the subject domain name in his own name, the Complainant was already a well-known establishment in Turkey.

It is generally understood that an exclusive right in a trademark can be acquired with, or without, registration. This is the case when the mark has been established on the market (Reference to: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and ASSA ABLOY AB v. P D S AB, WIPO Case No. D2000-0442). Therefore, the Respondent’s arguments in relation to the trademark applications(s) of the Complainant within the past few months are not accepted.

The Panel finds that the Complainant has trademark/service mark(s) and trade name rights in the name “ISBANK”. Since the Domain Name comprises the Complainant’s trademark and the generic ‘.com’ suffix, the Panel finds that the Domain Name is identical to a trademark/service mark and a trade name in which the Complainant has rights.

The Panel concludes that the domain name <isbank.com> is identical to Complainant’s trademark/service mark and as a consequence, the action brought by Complainant meets the requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Viewing this situation in light of paragraph 4(c) of the Policy, what Respondent has done to date is not a bona fide offering of goods or services. There is no evidence whatsoever that the Respondent has been commonly known by the domain name, nor has the Respondent demonstrated any trademark or service mark rights in the name. Further, the Respondent has made no non-commercial or fair use of the name.

The Respondent has not provided any evidence of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the domain name. The Complainant showed that the Respondent has neither a license nor any other permission to use the domain name in dispute.

The Panel therefore concludes that Respondent has no rights or legitimate interests in the domain name <isbank.com> and that the requirement of the Policy paragraph 4(a)(ii) is satisfied.

C. Registered and Used in Bad Faith

The Complainant provided evidence of facts which are clearly relevant to the issue of whether the Respondent registered and is using the domain name in bad faith.

The Panel has no doubt that these pre-requisites for cancellation or transfer of the domain name are fulfilled.

When the Respondent registered the disputed domain name, he knew that the name “isbank” was the name of the Complainant, a well-known Turkish association. The Respondent is a Turkish citizen residing in Turkey. He is therefore assumed to know as he declared in Section III-A of his Response that “ISBANK” is a well-known mark and the complainant’s products and services are widely publicized in the media and in the market, which includes the Respondent’s province of residence. This leads the Panel to conclude that the Respondent knew about the products or services of the Complainant and its fame in the Turkish market.

The Complainant’s trademark is long established and widely known. The bank was established by direct orders of the founder, Mustafa Kemal ATATURK, of the Turkish Republic. Therefore, the bank’s name is assumed to be known by 100% percent of the Turkish society. In the absence of evidence or even an assertion by the Respondent to the contrary, the Panel accepts as fact that the Respondent registered the domain names that are identical to various well-known Turkish companies’ names and registered the domain name <isbank.com> knowing that it was the trademark of the Complainant.

The Respondent Ali Nail Kocyigit has also registered the <ziraatbank.com> domain name, which is the trade name of another well-known Turkish bank, namely Turkiye Ziraat Bankasi A.S. The Panel finds that this registration is an indication of bad faith and the Respondent’s act of free-of-charge transfer does not prevent him from being in bad-faith in the present case.

When this pattern of conduct and knowledge is combined with the fact that the Respondent has no rights or legitimate interests in the domain name, there is ground on which the Panel can conclude that that the objective of the registration was to sell the domain name to the Complainant for valuable consideration well in excess of the Respondent’s out-of-pocket expenses or in order to prevent the Complainant from reflecting its trademark “ISBANK” in a corresponding domain name.

The fact that the domain is currently inactive does not prevent the Respondent from being in bad-faith. The act of keeping a domain name in an inactive state can constitute “bad faith”, where the Domain Name comprises a name which can only sensibly refer to the Complainant or where there is no obvious possible justification for the selection of the Domain Name (see Sony Kabushiki Kaisha v. sony.net, WIPO Case No. D2000 1074 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).

The Respondent willingly produced false or incomplete contact information for the Registrar’s database. The Panel agrees that the Respondent provided false contact information mainly for the purpose of remaining unreachable by all ways other than emails. While not an express ground of bad faith under paragraph 4(b), false contact information is widely recognized as an indication of bad faith in domain name registration. The Panel has confirmed the conclusion of other UDRP Panels: that the address provided by Respondent has no apparent connection to the Respondent. Grupo Televisa, S.A. v. Party Night, Inc. a/k/a Peter Carrington, WIPO Case No. D2003-0796; Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775.

The Complainant asserted that including the word “bank” in a domain name, the Respondent violated Art. 22/1 Turkish Banking Law No.4389. While this claim may or may not be true, the Panel did not find this claim relevant in establishing Respondent’s bad faith.

All the circumstances, taken together, need to be assessed in determining the question of bad faith. In this case, the following facts are considered relevant:

- that the mark is a well-known mark in multiple jurisdictions, including in Turkey and other Turkish and non-Turkish jurisdictions;

- that the Respondent has no legitimate claim, right or interest to the domain name;

- that there is no evidence of actual or intended use in good faith;

- that the Respondent provided false contact information mainly for the purpose of remaining unreachable by all ways other than (probably a web-based) e-mail obtained from a mail server in Singapore.

These facts, backed by Complainant’s evidence, form the ground on which the Panel can depend in concluding bad-faith of the Respondent. For the reasons outlined above, the Panel finds that the domain name <isbank.com> has been registered or used in bad faith by the Respondent.

The Panel finds that the Domain Name was registered in bad faith and is being used in bad faith within the meaning of paragraphs 4(a)(iii) and 4(b)(i) 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 domain name, <isbank.com> be transferred to the Complainant.

Dilek Ustun
Sole Panelist

Dated: November 22, 2004