DECISION

 

Yapi Ve Kredi Bankasi A.S. v. Fatih

Claim Number: FA0107000098245

 

PARTIES

The Complainant is Yapi Ve Kredi Bankasi A.S., Istanbul, Turkey (“Complainant”).  The Respondent is Fatih, San Diego, CA (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <yapikredionline.com>, registered with Network Solutions.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.

 

Judge Irving H. Perluss (Retired) is the Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on July 20, 2001; the Forum received a hard copy of the Complaint on July 31, 2001.

 

On July 24, 2001, Network Solutions confirmed by e-mail to the Forum that the domain name <yapikredionline.com> is registered with Network Solutions and that the Respondent is the current registrant of the name.  Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On August 1, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 21, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@yapikredionline.com by e-mail.

 

An incomplete response was received on August 21, 2001.  Nevertheless, the Response was considered by the Panel.

 

On August 28, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Irving H. Perluss (Retired) as Panelist.

 

RELIEF SOUGHT

The Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

            1.         The Complainant Yapi Kredi Bankasi A.S. was founded in 1944, and is the second largest private bank in Turkey.  Complainant does business not only in Turkey, but also in other countries around the world.

 

            2.         “Yapi Kredi” has been registered with the Turkish Patent Office.  Complainant, in addition, has the following trade/service marks registered with the Turkish Patent Office:

 

Registration No:                        Service Marks:             Intl. Classes      Registration Dates:

171378                   alocard                             36                11.01.1996

170932                   sts                                   36                11.01.1996

171420                   telekasa                            36                11.01.1996

171377                   telecard                            36                11.01.1996

170933                   tele-alışveriş                       36                11.01.1996

171352                   kasa24                             36                11.01.1996

177764                   tele24                               36                11.01.1996

170432                   otobanka                          36                11.01.1996

171430                   telecard                            36                11.01.1996

171498                   genç telecard                     36                11.01.1996

177763                   tele24 bordro                     36                11.01.1996

171383                   alo banka çağdaş                36                11.01.1996

173612                   teleservis                          36                11.01.1996

199553                   yapi kredi university worldcard36                09.07.1997

184339                   yapı kredi sigorta güvencesi   36                09.07.1997

206284                   yapı kredi supercard            36                09.07.1997

199442                   yapı kredi otomatik ödeme    36                09.07.1997

210012                   yapı kredi taksitcard             36                15.10.1998

204568                   yapı kredi world card            36                09.07.1997

209722                   yapı kredi hedef puan          36                03.06.1999

99 014098               yapı kredi teletel şekil           36                27.08.1999   

99 014097               yapı kredi telerom şekil         36                27.08.1999

99 022146               teleweb şekil                      36                17.12.1999

2000 05031             yapı kredi sınırsız bankacılık    36                23.03.2000

            3.         The disputed domain name is confusingly similar to Complainant’s service mark and company name.  The disputed domain name consists of Complainant’s Yapi Kredi service mark with the word “online” appended.  The word “online” is an additional element and merely descriptive of the online environment in which any domain name is used.  It does not prevent or even diminish the confusion otherwise arising from use of Complainant’s service mark and company name.

 

            4.         Respondent does not claim that he is using the disputed domain name in connection with a bona fide offering of goods and services Policy 4(c)(i).  The disputed domain name <yapikredionline.com> was registered with the registrar on August 14, 2000.  At that time, Complainant had been involved in banking and financial services for more than fifty years and had acquired registered service marks and common law rights to its name.

 

            5.         The domain name in question is not a mark by which the Respondent is commonly known Policy 4(c)(ii).

 

            6.         Respondent has made no legitimate, non-commercial or fair use of the domain name Policy 4(c)(iii).

 

            7.         Respondent registered and purports to use the disputed domain name in bad faith.  Through the use of the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website.  Respondent has unfairly taken advantage of the undisputed fame of the service mark/company name “Yapi Kredi” associated directly with the Complainant.

 

B. Respondent

            1.         It is not contended that the disputed domain name is not confusingly similar to the service mark/company name of Complainant.

 

            2.         Complainant was contacted by Respondent who offered to give Complainant the disputed domain name, but there was no reply.

 

            3.         Respondent did not register or purport to use the disputed domain name in bad faith.  He assumed that since Complainant did not reply to his offer, that he could use the disputed domain name with Complainant’s news about economy and finance.  He also did not act in bad faith because he used his correct name in his registration.

 

DISCUSSION, FINDINGS AND DETERMINATIONS

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 and is being used in bad faith.

 

The Panel finds that the disputed domain name is confusingly similar to Complainant’s YAPI KREDI registered Turkish service mark under Paragraph 4(a)(i) of the Policy as it wholly contains Complainant’s well-known service mark combined with the generic word “online.”[1]  Indeed, Respondent does not attempt to argue to the contrary.

 

It is to be noted, further, under paragraph 4(a)(ii) of the Policy, that Respondent is not using nor does it intend to use the disputed domain name in connection with a bona fide offering of goods or services or for a legitimate non-commercial or fair use without intent for commercial gain.  Thus, it has not demonstrated in any way that it has rights or a legitimate interest in the disputed domain name.[2]

 

Finally, the Panel rejects Respondent’s contention that it did not register or use the disputed domain name in bad faith, because it offered to give the name to Complainant and received no reply.  Further, it is immaterial that Respondent claims it did not act in bad faith because it used its correct name in registration of the disputed domain name.

 

Rather, to the contrary, the Panelist finds that Respondent has registered and used the disputed domain name in bad faith under Paragraph 4(a)(iii) of the Policy.  This is because, by registering the disputed domain name and placing advertisements on its corresponding website, Respondent intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s well-known service mark.[3]

 

DECISION

Based on the above findings, conclusions and determinations, it is decided that the domain name <yapikredionline.com> registered by Respondent Fatik, San Diego, CA, United States of America, shall be and the same is transferred to Complainant Yapi Ve Kredi Bankasi A.S., Istanbul, Turkey.

 

 

JUDGE IRVING H. PERLUSS (Retired), Panelist

 

Dated:  September 10, 2001

 

 


[1] See Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001)(finding the <broadcomonline.com> domain name confusingly similar to Complainant’s BROADCOM mark); see also, Westfield Corp., Inc. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD MARK was the dominant element).

[2] See Body Shop Int’l PLC v. CPIC NET & Hussain, D2000-1214 (WIPO Nov. 26, 2000) (finding “that on the evidence provided by the Complainant and in the absence of any submissions from the Respondents, that the Complainant has established that (i) the Respondents are not using and have not used, or are not demonstrating and have not demonstrated, an intent to use the said domain name in connection with a bona fide offering of goods or services; (ii) the Respondents are not and have not been commonly known by the said domain name; and (iii) the Respondents are not making legitimate noncommercial or fair use of the said domain name, without intending to mislead and divert consumers or to tarnish Complainant’s <THE BODY SHOP> trademark and service mark”).

[3] See Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that confusion would result when Internet users intending to access Complainant’s website, think that an affiliation of some sort exists between the Complainant and the Respondent, when in fact, no such relationship would exist.>

 

 

Click Here to return to the main Domain Decisions Page.

Click Here to return to our Home Page