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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Akbank Turk A.S. v. Beroca Holdings B.V.I. Limited

Case No. D2008-0572

1. The Parties

Complainant is Akbank Turk A.S. of Istanbul, Turkey, represented by Istanbul Patent & Trademark Consultancy Ltd., Turkey.

Respondent is Beroca Holdings B.V.I. Limited of London, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <akbank.mobi> (the “Domain Name”) is registered with EuroDNS S.A., Luxembourg (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 14, 2008. On April 15, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 15, 2008, the Registrar transmitted by email to the Center its verification response confirming that 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”), 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 Respondent of the Complaint, and the proceedings commenced on May 6, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 26, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 27, 2008.

The Center appointed Assen Alexiev as the sole panelist in this matter on June 10, 2008. 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

Complainant is one of the largest banks in Turkey. It has registered numerous trademarks incorporating the “AKBANK” word element in various countries around the world, including, by way of example, the following:

- the trademark AKBANK, registration No.180391, registered on June 24, 1996 for the territory of Turkey, for services in International Class 36; and

- the trademark AKBANK, International registration No.IR750014, registered on October 19, 2000 for the territories of 45 countries, including the United Kingdom of Great Britain and Northern Ireland, for services in International Class 36.

5. Parties’ Contentions

A. Complainant

Complainant carries out its business under the trade name and mark AKBANK. It was established in 1947, and is now the largest bank in Turkey in terms of assets, and one of the largest banks in Turkey in terms of loan volume. At the end of 2007, Complainant’s net profit reached USD 1.76 billion, its asset size amounted to USD 62.2 billion, and its loan portfolio reached USD 35.2 billion. Complainant’s shares are traded on the Istanbul Stock Exchange, and its market capitalization is USD 22.5 billion.

Together with its core banking activities, Complainant offers a wide range of retail, commercial, corporate, private banking and international trade finance services. Complainant provides services also through retail and corporate Internet branches, its telephone banking center, and high-tech channels such as cell phones and web-based platforms.

Complainant’s foreign operations are carried out through Akbank NV in the Netherlands, Akbank AG in Germany, and a branch in Malta. In 2007, Citigroup acquired a 20% equity stake in Complainant. In the same year, Complainant developed new products and delivery channels such as “smsCredit”, enabling customers to apply for consumer loans solely with their citizenship number via an SMS message, the “Credit Express” consumer loan program, the “Credit Machine” loan program, and the “Wings” mileage program credit card.

According to Complainant, the Domain Name is identical to Complainant’s AKBANK trademarks.

Complainant asserts that Respondent has no rights or legitimate interests in respect of the Domain Name. Complainant has not licensed or otherwise permitted Respondent to use the AKBANK trademark, or to register or use any domain name incorporating that mark. Respondent has no relationship with Complainant, or permission from it to use its marks. Complainant has prior rights in the trademark AKBANK, which precede Respondent’s registration of the Domain Name. The only interest to register the Domain Name which can be imagined for a party, not having any apparent particular connection with the trademark AKBANK, is to create a connection with Complainant and its AKBANK trademark. Respondent does not use the Domain Name, and has not been commonly known by it. Further, Respondent has acquired no trademark or service mark rights in the Domain Name.

Complainant submits that Respondent registered and is using the Domain Name in bad faith, 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 its out-of-pocket costs. AKBANK is a well-known mark and it is difficult to imagine that Respondent would not have been aware of that mark, when it registered the Domain Name.

According to Complainant, Respondent registered the Domain Name in order to prevent Complainant from reflecting the mark in a corresponding domain name and from offering online services through the Domain Name. Respondent has engaged in a pattern of registering domain names that infringe trademarks of third parties. In several proceedings under the Policy, Respondent was found to have registered the respective domain names in bad faith.

There is no active website at the Domain Name. As found in prior proceedings under the Policy, the incorporation of a famous mark into a domain name, coupled with an inactive website associated to the domain name, may be evidence of bad faith registration and use. Taking all this together, it is impossible to imagine any future active use of the Domain Name by Respondent that would be legitimate, rather than an infringement of Complainant’s trademark rights, an act of unfair competition, or a violation of consumer protection legislation.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Pursuant to Policy, Paragraph 4(a), Complainant must prove each of the following to justify the transfer of the Domain Name:

(i) That the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) That Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) That Respondent has registered and is using the Domain Name in bad faith.

By Rules, paragraph 5(b)(i), it is expected of a Respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain-name holder) to retain registration and use of the disputed domain name…”

In this case, the Center has employed the required measures to achieve actual notice of the Complaint to Respondent, in compliance with Rules, Paragraph 2(a), and Respondent was given a fair opportunity to present its case.

In the event of a default, under Rules, paragraph (14)(b): “…the Panel shall draw such inferences therefrom as it considers appropriate.”

As stated by the Panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004: “Here, the potential evidence of good faith registration and use was in respondent’s control. Respondent’s failure to present any such evidence or to deny complainant’s allegations allows an inference that the evidence would not have been favorable to respondent.” As stated by the Panel in Viacom International Inc. v. Ir Suryani, WIPO Case No. D2001-1443: “Since the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, this Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant. … In the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended for factual and legal conclusions as proven by such evidence.”

In this administrative proceeding, Respondent’s default entitles the Panel to conclude that Respondent has no arguments or evidence to rebut the assertions of Complainant. The Panel has to take his decision on the basis of the statements and documents submitted by Complainant and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

A. Identical or Confusingly Similar

Complainant has provided evidence of numerous registrations of the trademark AKBANK in various countries around the world, and has thus established its rights in this trademark.

It is widely accepted to disregard the suffixes such as “.mobi” for the purposes of the comparison under Policy, paragraph 4(a)(i), so the relevant part of the Domain Name to be considered, is the sequence “akbank”. This sequence is identical to the AKBANK trademark of Complainant. Therefore, the Panel finds the Domain Name to be identical to a trademark, in which Complainant has rights.

B. Rights or Legitimate Interests

Complainant has contended that Respondent has no rights or legitimate interests in the Domain Name, stating numerous arguments in this regard.

Thus, Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name.

Once Complainant makes out a prima facie case under Policy, paragraph 4(a)(ii), the burden shifts to Respondent to rebut the showing by providing evidence that it has rights to or legitimate interests in the Domain Name.

Respondent, by its default, has chosen not to present to the Panel any allegations or documents in its defense despite its burden under the Rules, paragraph 5(b)(i) and 5(b)(ix), or the consequences that a Panel may extract from the fact of a default (Rules, paragraph 14). If Respondent had any justification for the registration or use of the Domain Name, it could have provided it. In particular, Respondent has failed to contend that any of the circumstances described in Policy, Paragraph 4(c) or any other circumstance is present in its favour.

In fact, the only information available about Respondent is the Whois information, provided by the Registrar.

The WHOIS information contains no evidence of rights or legitimate interests of the Respondent in the Domain Name, apart from its rights as registrant of the latter.

According to the evidence available before the Panel, there is no website available under the Domain Name. There are no indications that Respondent has commenced the development of any website under the Domain Name or the establishment of any other online presence under it.

Therefore, and in the absence of any evidence to rebut Complainant’s prima facie case, the Panel accepts that Respondent is not using, and has not demonstrated that it is preparing to use, the Domain Name in connection with a bona fide offering of goods or services.

On these grounds, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

Complainant has registered its AKBANK trademark in many countries, including the United Kingdom of Great Britain and Northern Ireland, where Respondent is located. Complainant contends to have used the trademark for many years to designate itself and its banking business, and to have reached a prominent place in this business in Turkey. This information, unchallenged by Respondent, is sufficient for the Panel to accept that Complainant and its trademark AKBANK are well-known on the Turkish market, and quite possibly on the other markets where Complainant is active. In addition, Complainant’s trademark rights were acquired prior to the registration of the Domain Name.

Respondent has made an unusual, and meaningless in English, choice of the word combination “akbank” for a domain name, and has provided no explanation for such choice.

These circumstances are supportive of a finding that Respondent must have been aware of Complainant and its AKBANK trademark at the time of registration of the Domain Name.

Respondent has not established itself online in any way under the Domain Name.

Various Panels acting under the Policy have ruled that passive holding of a domain name, coupled with a complainant having valid trademark rights commencing prior to the date on which the domain name was registered, and where the registrant has actual or imputed knowledge of these rights, may constitute sufficient evidence of bad faith (both registration in bad faith and use in bad faith). See, e.g., Jones Apparel Group Inc. v. Robin Sousa, WIPO Case No. D2001-1308 and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

Respondent’s default in this administrative proceeding further supports an inference of bad faith registration and use of the Domain Name. Had Respondent have any legitimate reason for registering and using the Domain Name, it would presumably have brought it to the attention of the Panel.

In the light of all said above, and in the absence of any explanation by Respondent in support of the legitimacy of his actions, the Panel concludes that Respondent has registered and used the Domain Name 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 <akbank.mobi> be transferred to Complainant.

Assen Alexiev
Sole Panelist

Dated: June 23, 2008