Garanti Bilişim Teknolojisi ve Ticaret Türk Anonim Şirketi ve Türkiye Garanti Bankasi Anonim Şirketi v. Mehmet Fatih Akgun
Case No. D2014-1632
1. The Parties
The Complainants are is Garanti Bilişim Teknolojisi ve Ticaret Türk Anonim Şirketi ve Türkiye Garanti Bankasi Anonim Şirketi of Istanbul, Turkey, represented by Dericioğlu & Yaşar Law Office, Turkey.
The Respondent is Mehmet Fatih Akgun of Istanbul, Turkey.
The disputed domain names and are registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 21, 2014. On September 22, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 23, 2014, the Registrar 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”).
The Center received an informal communication from the Respondent on September 29, 2014, which it acknowledged on October 1, 2014.
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 September 30, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 20, 2014. The Respondent did not submit any formal response. Accordingly, the Center notified the parties about the commencement of panel appointment process on October 21, 2014.
The Center appointed Emre Kerim Yardimci as the sole panelist in this matter on October 29, 2014. 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 First Complainant, Garanti Bilişim Teknolojisi ve Ticaret Türk Anonim Şirketi, is a subsidiary company of the Second Complainant, Türkiye Garanti Bankası Anonim Şirketi, provides IT services such as software development, Internet applications, integration, system administration, security management, project management and office applications to companies operating banking and financial as well as automotive, construction, media and tourism sectors and uses the trademark registration GARANTI TEKNOLOJI owned by the Second Complainant.
The Second Complainant is a leading Turkish bank offering a wide range of banking and financial products and services.
The Second Complainant has been using GARANTI indication continuously since 1946 as its trade name and holds a considerable number of trade and service marks registrations in Turkey including GARANTI trademark. The oldest of the Turkish registrations dates back 1996. It also holds the stylized trademark registration GARANTI TEKNOLOJI applied for in 2007.
The disputed domain names were created on April 25, 2013. According to the current record, the Respondent is a physical person of Turkish origin domiciled in Istanbul.
5. Parties’ Contentions
The Complainants request the transfer of the disputed domain names. The Complainants assert that the disputed domain names are identical to the Second Complainant’s registered trademark GARANTI TEKNOLOJI and confusingly similar to registered GARANTI trademark which is qualified and enjoy protection as well-known trademark by the Turkish Patent Institute.
The Complainants consider that the Respondent has no rights or legitimate interests in respect of the disputed domain names, mainly because the Complainants have neither licensed nor otherwise authorized the Respondent to use its marks or to apply for or use any domain name incorporating the trademark GARANTI TEKNOLOJI.
Finally, in addressing the question of registration and use of the disputed domain names in bad faith, the Complainants argue that the Respondent could not ignore the Complainants’ trademarks.
Though the Respondent did not formally reply to the Complainants’ contentions, it sent an email communication on September 29, 2014, stating the following:
“The Domain which is about abjected domain was bought for the case of by me in 2013. There hasn't been any publication related the company. The documents that the company offered in the attachment don't belong to them, these document belong to Garanti Bank .There is no trademark or patent aplication. They want to close or take over our domain maliciously. We demand the rejection of application because of insufficient evidence and document”.
6. Discussion and Findings
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Second Complainant owns numerous Turkish trademark registrations with GARANTI indication first filed in 1996, including Turkish registration No. 2000/10404 for the mark GARANTI, registered on May 30, 2000 and Turkish Registration No. 2007/36555 for the mark GARANTI TEKNOLOJI, registered July 3, 2007 covering the services in Nice classes 38 and 42 among others.
The disputed domain names and integrate the Second Complainant’s GARANTI TEKNOLOJI trademark in its entirety and GARANTI trademark as their dominant element. As regards the gTLDs “.com” and “.net”, these are typically disregarded under the confusing similarity test.
Consequently, the Panel finds that the Complainants have shown that the disputed domain names are on the one hand all identical to GARANTI TEKNOLOJI trademark and on the other hand confusingly similar to GARANTI trademark in which the Second Complainant has rights.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] 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) Where [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) Where [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.
The consensus view of UDRP panels on the onus of proof under paragraph 4(a)(ii) of the Policy, is summarized at paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview, 2.0”) as follows:
“… a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If a respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP. If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
In this case, the Respondent has not submitted any formal Response. The disputed domain names are identical to the Second Complainant’s GARANTI TEKNOLOJI trademark and the Complainants have not authorized the Respondent to use that mark, whether in a domain name or otherwise. Moreover, paragraph 4(c)(iii) of the Policy cannot apply as the Respondent’s use of the disputed domain names appears to have been in connection with commercial purposes and for the reasons set out in Section 6.C of this decision this commercial purpose cannot be interpreted as “legitimate”.
Although, the Respondent did not submit any response, the paragraph 4(c)(ii) of the Policy requires a particular attention on whether the Respondent (or any business run by it) is commonly known by the disputed domain names.
The Panel is of the opinion, due to the fact that the Respondent failed to submit any allegations and/or evidence, that the Respondent’s use of the disputed domain name is not in connection with a bona fide offering of goods or services. In these circumstances, there can be no rights or legitimate interests under paragraph 4(c)(i) of the Policy.
In the Panel’s view the Complainants have made out its prima facie case under this element of the Policy and the Respondent has failed to file a formal Response. In the circumstances of this case, and in view of the Panel’s discussion below, the Panel finds that the second element of the Policy has been established.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant’s trademark or service 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online 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.
The Complainants argue that the disputed domain names were registered and used in bad faith. The Complainants argue that the Respondent was well aware of GARANTI and GARANTI TEKNOLOJI trademarks at the time it registered the disputed domain names, as the Respondent is located in Turkey.
The Complainants also claim that the Respondent refers to other Turkish bank names and third party trademarks in meta-tags such as “Akbank”, “Albaraka”, “Alliance” in the website “www.garanti-teknoloji.com” and that the Second Complainant is one of the most prestigious banking and finance companies in Turkey and the Respondent does not have any connection with those banks and does not provide any banking or financial services. All these facts corroborate that the Respondent was aware of the Complainants when it registered the disputed domain names.
The Complainants’ contention of bad faith is based on the argument that at the time of registration of the disputed domain names the Respondent knew, or at least should have known, about the existence of the Second Complainant and that registration of a domain name containing the Second Complainant’s well-known trademark constitutes bad faith per se.
The Panel finds that the Second Complainant’s well-known trademark GARANTI and the First Complainant’s presence on the Internet for more than 12 years indicate that Respondent was or should have been aware of the marks prior to registering the disputed domain names (Caesar World, Inc. v. Forum LLC, WIPO Case No. D2005-0517).
The Panel observes that the Respondent is offering on the websites at the disputed domain names services which are in competition with the Complainants’ services and products and therefore it is very unlikely that the Respondent had never heard of GARANTI TEKNOLOJI and GARANTI.
The Panel finds that the Respondent is using the disputed domain names to intentionally attempt to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainants’ trademarks because it would easily be confused by consumers in the field of information technology or at least suggest an association with GARANTI TEKNOLOJI and GARANTI marks, with the intent to exploit the Complainants’ reputation.
Therefore, in the view of cumulative circumstances, the Panel finds that the requirement of registration and use in bad faith is satisfied, according to the Policy, paragraph 4(b)(iv) and 4(a)(iii).
For the foregoing reasons, in accordance with paragraphs 4 of the Policy and 15 of the Rules, the Panel orders that the disputed domain names and be transferred to the Complainants.
Emre Kerim Yardimci
Date: November 12, 2014