Akbank Turk A.S. v. Ridvan Uctuk
Claim Number: FA0806001211477
PARTIES
Complainant is Akbank Turk A.S.,
(“Complainant”), represented by Dilek
Ustun, of Istanbul Patent &
Trademark Consultancy Ltd.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <akbank.us>,
registered with GoDaddy.com, Inc.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
David S. Safran, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
(the “Forum”) electronically on June 20, 2008; the Forum received a hard copy
of the Complaint on June 27, 2008.
On June 30, 2008, GoDaddy.com, Inc. confirmed by e-mail to the Forum
that the domain name <akbank.us>
is registered with GoDaddy.com, Inc. and that the Respondent is the current registrant
of the name. GoDaddy.com, Inc. has
verified that Respondent is bound by the GoDaddy.com, Inc. registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with the U. S. Department of Commerce’s usTLD
Dispute Resolution Policy (the “Policy”).
On July 7, 2008, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of July 28, 2008 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules
for usTLD Dispute Resolution Policy (the “Rules”).
A timely Response was received and determined to be complete on July
28, 2008.
On July 31, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the Forum
appointed David S. Safran as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends that it is the largest bank in Turkey, having been
founded in 1947, and has obtained several service mark/trademark registrations
with the Turkish Patent Office and in other national offices prior to
registration of the <akbank.us> domain
by Respondent and has been the owner of the domain name <akbannk.com.tr>
since 1996. Complainant also asserts that respondent has
not licensed or otherwise authorized Respondent to use the “AKBANK” trademark
or to use a domain name incorporating same. Still further, Complainant contends that
Respondent is not using domain name, the website at the domain being used
solely to generate “click-through” revenue, and Respondent is not commonly
known by the domain name <akbank.us>. Additionally, as a Turkish citizen,
Respondent would have to have been aware of Complainant’s well-known “AKBANK”
marks.
B. Respondent
Respondent contends that the domain name <akbank.us> is composed of an abbreviation and a generic
term, AK being the abbreviation for the
State of Alaska in the USA, and “bank” being a generic term for: a
business establishment in which money is kept for saving or commercial purposes
or is invested, supplied for loans, or exchanged, and also the offices or
building in which such an establishment is located so that the <akbank.us> domain name needs to
be considered as Alaska Bank or Alaska Banks in USA rather than complainant’s
claim for trade mark “AKBANK.”
Respondent also asserts that its intent
in registering the at-issue domain name <akbank.us>
was to register a possible name for a website which features an online
directory of banks in the State of
FINDINGS
Complainant had established trademark rights
in the mark AKBANK long prior to registration of the domain <akbank.us> and that Respondent,
being a Turkish citizen residing in
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel
to “decide a complaint on the basis of the statements and documents submitted
in accordance with the Policy, these Rules and any rules and principles of law
that it deems applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove
each of the following three elements to obtain an order that a domain name
should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or
confusingly similar to a trademark or service mark in which the Complainant has
rights;
(2) the Respondent has no rights or legitimate interests in respect of
the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution
Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent
as applicable in rendering its decision.
Identical
and/or Confusingly Similar
Complainant asserts its rights in AKBANK
through registration of the mark with numerous governmental trademark
authorities worldwide. Complainant also
registered its mark with the Turkish Patent Office (“TPO”) (Reg. No. 2001/11692 issued June 19, 2001). Thus,
the Panel finds that Complainant has sufficient rights in the mark under Policy
¶ 4(a)(i), and that it is not necessary for Complainant to file for trademark
registration in a country in which Respondent resides. See
Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum
Nov. 11, 2003) (“Complainant's federal trademark registrations establish
Complainant's rights in the BLIZZARD mark.”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7,
2001) (finding that the Policy does not require that the mark be registered in
the country in which the respondent operates; therefore it is sufficient that
the complainant can demonstrate a mark in some jurisdiction); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628
(WIPO Aug. 11, 2000) (finding the complainant has rights to the name when the
mark is registered in a country even if the complainant has never traded in
that country).
Complainant argues that the <akbank.us>
domain name is identical to
its AKBANK mark. The Panel finds that
the addition of the country-code top-level domain (“ccTLD”) “.us” is irrelevant
under Policy ¶ 4(a)(i), and that the <akbank.us>
domain name is identical to the AKBANK mark under Policy ¶ 4(a)(i). See
Future Steel Holdings Ltd. v. Majercik,
FA 224964 (Nat. Arb. Forum Mar. 15, 2004) (“The <steelmaster.us> domain
name is identical to the STEEL MASTER mark.
The only difference is the omission of the space between the words and
the addition of the ccTLD “.us,” which does not significantly distinguish the
domain name from the mark.”); see also
Mattel, Inc. v. Unknown, FA 490083 (Nat. Arb. Forum July 11, 2005) (“The
domain name is identical to the trademark “Barbie”, as it uses the trademark in
its entirety. The only difference is the addition of the country code “us”
which for this purpose is insufficient to distinguish the domain name from the
trademark.”).
While Respondent contends that the <akbank.us>
domain name is comprised of common, descriptive terms and as such
cannot be found to be identical to Complainant’s mark, the Panel finds that
such a determination is not necessary
under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether
Complainant has rights in the mark and whether the disputed domain name is
identical or confusingly similar to Complainant’s mark. See Vance Int’l, Inc. v. Abend, FA
970871 (Nat. Arb. Forum June 7, 2007) (finding that because the complainant had
received a trademark registration for its VANCE mark, the respondent’s argument
that the term was generic failed under Policy ¶ 4(a)(i)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA
915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each
individual word in the mark is unprotectable and therefore the overall mark is
unprotectable is at odds with the anti-dissection principle of trademark
law.”).
Rights
or Legitimate Interests
The Panel is aware
that Complainant must first make a prima facie case that Respondent
lacks rights and legitimate interests in the disputed domain name under Policy
¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have
rights or legitimate interests. See
Hanna-Barbera
Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that
the complainant must first make a prima facie case that the respondent
lacks rights and legitimate interests in the disputed domain name under UDRP ¶
4(a)(ii) before the burden shifts to the respondent to show that it does have
rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb.
Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that
Respondent does not have rights or legitimate interest in the subject domain
names, which burden is light. If Complainant
satisfies its burden, then the burden shifts to Respondent to show that it does
have rights or legitimate interests in the subject domain names.”).
Complainant has asserted that Respondent could not have acquired rights in the domain name since it has not authorized the use of its trademark, and that Respondent has not used it commercially. Furthermore, Respondent’s sole basis for contending it has rights and legitimate interests set forth in its response has been found by the Panel not to be credible as indicated in the Findings above. Therefore, the Panel finds that Respondent is not the owner or beneficiary of a trade or service mark under Policy ¶ 4(c)(i) based on the lack of evidence within the record. See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that Respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.com> domain name); see also Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because Respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Complainant asserts
that Respondent is not commonly known by the disputed domain name, and that
Respondent has never received license or authorization to use Complainant’s
mark in any fashion. Therefore, the
Panel finds that Respondent is not commonly known by the disputed domain name
under Policy ¶ 4(c)(iii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21,
2007) (concluding a respondent has no rights or legitimate interests in a
disputed domain name where there is no evidence in the record indicating that
the respondent is commonly known by the disputed domain name); see also Educ. Broad. Corp. v. DomainWorks
Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the
respondent was not commonly known by the <thirteen.com> domain name based
on all evidence in the record, and the respondent did not counter this argument
in its response).
Moreover, Complainant argues that Respondent
only uses the disputed domain name to resolve to a website featuring commercial
“click-through” links unrelated to Complainant.
The Panel finds that such use does not constitute a bona fide
offering
of goods or services pursuant to Policy ¶ 4(c)(ii) or a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iv). See
Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006)
(finding that the respondent’s use of a domain name to redirect Internet users
to websites unrelated to a complainant’s mark is not a bona fide use
under UDRP ¶ 4(c)(i)); see also Vance
Int’l, Inc. v. Abend, FA 970871
(Nat. Arb. Forum June 8, 2007) (concluding that the operation of a
pay-per-click website at a confusingly similar domain name does not represent a
bona fide offering of goods or
services or a legitimate noncommercial or fair use, regardless of whether or
not the links resolve to competing or unrelated websites or if the respondent
is itself commercially profiting from the click-through fees).
Registration
and Use in Bad Faith
Complainant asserts
that Respondent’s use of a parked website to host third-party links unrelated
to Complainant for commercial profit via “click-through” fees constitutes bad
faith registration or use given Respondent’s incorporation of the mark in its
disputed domain name. The Panel finds
that Respondent engaged in bad faith registration or use under Policy ¶
4(b)(iv). See Ass’n of Junior Leagues
Int’l Inc. v. This Domain Name My Be For
Complainant argues
that Respondent had actual or constructive notice given the alleged identical
nature of the disputed domain name and the mark, as well as Complainant’s
predating trademark registrations and the widespread use of the trademark
AKBANK in Respondent’s country of residence and citizenship since well prior to
registration of the domain name at issue.
In reply, Respondent put forth no reasonable explanation as to how it
could not have been aware of Complainant’s well-known trademark in his country
of residence and citizenship, i.e.,
DECISION
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <akbank.us> domain name be TRANSFERRED from Respondent to Complainant.
David S. Safran, Panelist
Dated: August 14, 2008
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