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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Tãrkiye Д°Еџ BankasД± A.Ећ v. PrivacyProtect.org/ TTR Bilisim, Hizmetleri San.Tic.Ltd.Sti.

Case No. D2009-1393

1. The Parties

The Complainant is Tãrkiye Д°Еџ BankasД± A.Ећ. of Istanbul, Turkey, represented internally.

The Respondent is PrivacyProtect.org/ TTR Bilisim, Hizmetleri San.Tic.Ltd.Sti. of Moergestel, Netherlands and Istanbul, Turkey, respectively, represented internally.

2. The Domain Name and Registrar

The disputed domain names <istekobi.com> and <istekobi.net> are registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 20, 2009. On October 20, 2009, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain names. On October 23, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 27, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complainant on October 27, 2009. The Center verified that the Complaint together with the amendment to 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").

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 30, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 19, 2009. The Response was filed with the Center on November 19, 2009.

The Center appointed Nasser A. Khasawneh as the sole panelist in this matter on November 24, 2009. 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.

Following the Panel`s appointment, the Center informed the Panel of a number of supplemental electronic communications between the Parties. On December 1, 2009, following the Panel`s appointment, the Center also confirmed receipt of a supplemental filing from the Respondent. In this case the Panel has decided to consider the supplemental communications as well as the filing from the Respondent. The Panel believes that the powers enumerated under paragraph 10 and paragraph 15 of the Rules permit it to consider these submissions.

4. Factual Background

The Complainant in this instance is Tãrkiye Д°Еџ BankasД± A.Ећ. a Turkish bank which has existed within Turkey since 1924. The Complainant`s head office is located in Turkey where the Complainant has over 1,000 bank branches, however the Complainant also operates within Cyprus, England, Bahrain and Shanghai.

As shown by Annex 9 the Complainant registered the domain name of <istekobi.com.tr> on January 10, 2008. The Complainant also has a number of trademarks registered with the Turkish Patent Institute between late 2007 and 2009 which include "Д°Ећ`TE KOBД°" and "Д°STE KOBД°".

The Respondent in this instance is TTR Bilisim, Hizmetleri San.Tic.Ltd.Sti. The disputed domain names of <istekobi.com> and <istekobi.net> were created on October 2, 2004 by the Respondent.

5. Parties` Contentions

A. Complainant

In arguing its case under paragraph 4 of the Policy, the Complainant first evidences that it has been operating in Turkey since 1924 and contends it is one of Turkey`s most notable private banks. The Complainant avers that the term "istekobi" is written as "iste kobi" in Turkish and that the term "kobi" refers to small and medium term enterprises ("SMEs"). The Complainant thereafter indicates that the term "is`te kobi" is being used to refer to an Internet service within the Complainant`s bank. The Complainant has provided Annex 9 which shows that the Complainant registered the domain name <istekobi.com.tr> for the use of SME`s in Turkey.

The Complainant notes that they have registered two trademarks with the Turkish Patent Institute for the terms "Д°Ећ`TE KOBД°" and "Д°STE KOBД°" on or around December 11, 2007 and that a third one for "Д°Ећ`TE KOBД°" was pending. The Complainant argues that the Respondent`s domain names of <istekobi.com> and <istekobi.net> are identical or confusingly similar to the Complainant`s registered and pending trademark applications for "Д°Ећ`TE KOBД°" and "Д°STE KOBД°". The Complainant also notes that they have used the trademark "Д°Ећ`TE KOBД°" in Turkey since 2007 and that a certain degree of distinctiveness has been acquired through their use of the trademark according to Article 15 of the Agreement on Trade-Related Aspects of Intellectual Property Rights.

The Complainant next argues under paragraph 4(a)(ii) of the Policy that they are the sole and exclusive owner of the trademarks "Д°Ећ`TE KOBД°" and "Д°STE KOBД°" and that the Respondent has no rights or legitimate interests in the disputed domain names or the trademarks. Furthermore, the Complainant avers that the Respondent is not a licensee of the Complainant and additionally has not obtained the permission to use the trademarks.

The Complainant provides a number of Annexes that evidence their association with the "Д°Ећ`TE KOBД°" and "Д°STE KOBД°" trademarks in Turkey. The Complainant also argues that the Respondent has never been known by the trademarks or associated with the disputed domain names. As of January 10, 2008, the Complainant was the legal owner of the domain name of <istekobi.com.tr> and is still using that domain name to the present date.

In terms of satisfying the third element of paragraph 4 of the Policy, the Complainant notes that the Respondent registered <istekobi.com> and <istekobi.net> for the primary purpose of reselling them. The Complainant avers that on April 8, 2009 the Respondent attempted to sell the disputed domain names to the Complainant for 10,500 Turkish Liras as evidenced by Annex 18. In its amended complaint, the Complainant also contends that an employee of the Respondent sent an email on October 26, 2009 offering to sell the disputed domain names for USD 1,000 + VAT.

The Complainant further argues that since the disputed domain names resolve to the same landing page and since they both relate to services for SMEs in Turkey, the disputed domain names are confusingly similar to the domain name of <istekobi.com.tr>. As a result, the Complainant contends that there is a likelihood of confusion between the Complainant`s registered trademarks and the Respondent`s domain name.

The Complainant argues that the Respondent registered the disputed domain names for the purpose of directing Internet users to its website by creating confusion regarding the Complainant`s sponsorship or affiliation with the Respondent`s domain name. This combined with the fact that the Respondent is using the disputed domain names for commercial purposes leads the Complainant to conclude that the Respondent`s conduct constitutes bad faith.

The Complainant avers that the trademarks "Д°Ећ`TE KOBД°" and "Д°STE KOBД°" are legally registered, recognized and associated with the Complainant. The Complainant also notes that the trademarks are well-known in both Turkey and around the world as well. As such, it is the Complainant`s belief that the Respondent registered the disputed domain names with the intent to disrupt the Complainant`s business and to intentionally attract, for commercial gain, Internet users to the disputed domain names by creating a likelihood of confusion with the Complainant`s trademarks or to show that the Complainant was in some way affiliated with the Respondent.

B. Respondent

The Respondent states that TTR Bilisim was established in 2000 and is a well-known company in the Turkish IT sector that provides domain name registrations, web hosting and web design and programming services to clients throughout Turkey. The Respondent further notes that its business targets SMEs and is also accredited and supported by the Turkish government.

The Respondent agrees that the disputed domain names are identical to the Complainant`s trademarks, but argues that the word "istekobi" is a generic term with "iste" meaning "here is" and "kobi" referring to SMEs in Turkish language. The Respondent has evidenced a number of websites starting with the word "iste" in their Annex A. Additionally, the Respondent notes that Akbank, another large bank in Turkey, has used the phrase "iste kobi" in its advertisements.

The Respondent provides an overview of generic trademarks and notes that if an authority allowed one company to control a generic term, the effect would be an unreasonable commercial advantage. The Respondent contends that although the Complainant has a lot of websites incorporating the term "iste", such a term stands apart from the trademarks relating to the Complainant`s business.

In responding to the Complainant`s contentions under paragraph 4(a)(ii) of the Policy, the Respondent notes that <istekobi.com> and <istekobi.net> were registered on October 2, 2004. The ".com" domain name was registered since the Respondent is a commercial entity and the ".net" domain name was registered because the Respondent hoped to build a community of SMEs. In response to the Complainant`s contention that both domain names were directed to the same landing page, the Respondent notes that due to certain reasons, the website for <istekobi.net> was still being completed so it made sense to redirect both to the same landing page.

The Respondent further notes that they are not competing with the business of the Complainant and that the Complainant`s domain name of <istekobi.com.tr> focuses on providing visitors with consultancy information while the Respondent`s use is primarily for selling support for pre-designed website templates.

In responding to the Complainant`s contention that the disputed domain names were registered and are being used in bad faith, the Respondent points out the both domain names were registered earlier than the Complainant`s trademark registrations. Additionally the Respondent alleges that there is no evidence that the disputed domain names were registered in bad faith.

The Respondent argues that they have over 10 years of experience with SMEs in Turkey and that they have worked to develop the disputed domain names for the purpose of selling pre-designed websites. The Respondent has offered evidence in the form of Annex E of brochures documenting these services.

According to the Respondent, the disputed domain names do not redirect Internet users to any competitors of the Complainant and do not disrupt any business that the Complainant may be undertaking. The Respondent even notes that by choosing the specific domain name of <istekobi.com.tr>, the Complainant is disrupting their business and as a result the Respondent has had to notify its visitors that it is not associated with the Complainant.

As far as the Complainant`s contention that the Respondent offered to sell them the disputed domain names, the Respondent states that it merely told them that the disputed domain names were going to be used for a project, but that the Respondent would sell them if they were compensated for their expenses. The Respondent contends that the Complainant`s allegation that an employee offered to sell them the disputed domain names in October of 2009 is false. The Respondent also contends that the Complainant has tried to mislead the panel through the evidence that the Respondent registered and is using the disputed domain names in bad faith.

The Respondent notes that UDRP decisions in the past have required additional evidence of bad faith aside from registration when a common term is used. The Respondent notes that since there is no additional aspect of bad faith, they cannot be found liable for a bad faith use under the Policy. With respect to the similar look and feel of the two party`s websites, the Respondent argues that their websites were online first and that any similarity was not attributed to them. The Respondent also notes that the cases cited by the Complainant are not directly relevant to the case at hand. Since the Complainant has not proved all that they are required to prove under the Policy, the Respondent argues that the Panel should deny the Complainant any relief.

6. Discussion and Findings

Under the Rules, a panel is required to render its decision on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. (Rules, paragraph 15(a)).

Additionally, a complainant must establish each element of paragraph 4(a) of the Policy, which is as follows:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

(ii) the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

The complainant must establish these elements regardless of whether the respondent replies to the complaint. The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064.

A. Identical or Confusingly Similar

In order to establish the first element of the Policy, the Complainant must evidence that the disputed domain names are either identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

In this case the Complainant has evidenced that their business has existed throughout Turkey for the last 80 or so years. Additionally, the Complainant has evidenced through Annexes 10 and 11 that they have registered rights to the trademarks "Д°Ећ`TE KOBД°" and "Д°STE KOBД°" beginning in 2007. The Complainant has also held the right to the domain name of <istekobi.com.tr> since January of 2008. Based on the totality of this evidence, it is clear that the Complainant itself has some degree of rights and good will associated with the trademarks "Д°Ећ`TE KOBД°" and "Д°STE KOBД°".

The Panel is of the opinion that the disputed domain names of <istekobi.com> and <istekobi.net> wholly incorporate a trademark in which the Complainant has rights over. Additionally as many other UDRP panels have held, both the additional suffixes of ".com" and ".net" are irrelevant distinctions that do not alter the likelihood of confusion. Rolls-Royce PLC v. Hallofpain, WIPO Case No. D2000-1709.

In this instance however, the Panel would like to note that the Complainant did not register their rights to the "Д°Ећ`TE KOBД°" and "Д°STE KOBД°" trademarks until 2007 and additionally did not register the domain name of <istekobi.com.tr> until January of 2008. As held previously, paragraph 4(a)(i) of the Policy does not require that the trademark be registered prior to the disputed domain name(s) in order to meet this element of the Policy. See Digital Vision, Ltd v. Advanced Chemill Systems, WIPO Case No. D2001-0827; AB Svenska Spel v. Andrey Zacharov, WIPO Case No. D2003-0527. The fact that the disputed domain names in this case predate the registration of the Complainant`s trademarks as well as the Complainant`s domain name of <istekobi.com.tr> is relevant; however its relevance is more important to the second and third elements of the Policy. Id. The Panel addresses this issue accordingly below.

Based on the above factors, the Panel finds that the disputed domain names are identical to a trademark in which the Complainant has rights and finds that the Complainant has met the first element of the Policy.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant is next required to make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. Once a claim has been made by the Complainant, the Respondent must demonstrate that they have rights or a legitimate interest in the domain names. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case D2003-0455; Belupo d.d. v. WACHEM d.o.o, WIPO Case D2004-0110. The respondent is free to utilize the non-exhaustive list of circumstances provided under paragraph 4(c) of the Policy, as well as evidence of any other circumstances as well. The absence of rights or legitimate interests can also be established if the Complainant makes out a prima facie case and the Respondent enters no response. De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005.

In its Complaint the Complainant has sufficiently evidenced that they have some degree of rights and interest in the "Д°Ећ`TE KOBД°" and "Д°STE KOBД°" trademarks based on their registration and use of the terms in their business. The Complainant has also sufficiently evidenced that they have not provided the Respondent with a license or any other right to use the "Д°Ећ`TE KOBД°" and "Д°STE KOBД°" trademarks.

However in the present case, the Panel is not convinced that the Complainant has established a prima facie case against the Respondent in the required manner. While the Complainant has shown that the Respondent did not have any rights from the Complainant to use the "Д°Ећ`TE KOBД°" and "Д°STE KOBД°" trademarks, this fact alone is not conclusive as to whether the Respondent`s use of the mark in their business was legitimate. Amscot Corporation v. Fibertech Columns, Inc., WIPO Case No. D2005-0656.

The Panel does not believe that the Complainant has presented the necessary information in order to establish a prima facie case that the Respondent lacked rights or a legitimate interest in the disputed domain names.

In this instance, while the Panel can agree that the Complainant`s business itself may be well known in Turkey, the Panel does not believe that the Complainant has sufficiently evidenced that the trademarks of "Д°Ећ`TE KOBД°" and "Д°STE KOBД°" were commonly associated with them prior to their registration in or around late 2007. In its supplemental filing, the Complainant has presented evidence in the form of registered trademarks relating to the term "Д°Ећ`TE" that date back to 2000. The Panel finds some support in the Complainant`s contention that they were associated with and developed a certain reputation with the term "iЕџ`te" within Turkey and additionally that they had registered rights to the "Д°Ећ`TE" trademark as of 2000.

The Panels finds however that, with respect to the "Д°STE" trademark, there is simply not enough evidence for it to conclude that the Complainant had rights to the trademark prior to 2007 to support its burden under this element of the Policy. The Panel takes note that the phrase "iste" in Turkey is a fairly generic term and finds support in the Respondent`s contentions that other parties have utilized this phrase in their advertisements.

The existing facts present a difficult case for the Complainant. The Respondent registered the two domain names of <istekobi.com> and <istekobi.net> in October of 2004. In this case the trademark incorporating both "Д°Ећ`TE KOBД°" and "Д°STE KOBД°" were not registered until 2007. Furthermore, the Complainant`s domain name of <istekobi.com.tr> which incorporates the trademark was not even registered until January of 2008. For the Complainant to argue that the Respondent had no rights or legitimate interests to the "Д°Ећ`TE KOBД°" and "Д°STE KOBД°" trademarks when the Complainant has not even evidenced that they asserted any right to the two trademarks before late 2007 (3 years after the Respondent registered the disputed domain names) makes even the establishment of a prima facie case extremely difficult.

There is little evidence that the Complainant was in any way associated with the "Д°Ећ`TE KOBД°" and "Д°STE KOBД°" trademarks prior to 2007 or had derived any goodwill from these trademarks aside from the reputation derived from the Complainant`s banking business. As a result, it is difficult to ascertain how the Complainant can argue that the Respondent did not have any rights or any legitimate interests in the disputed domain names when the Complainant has not evidenced that they had any right to their cited trademarks when the disputed domain names were registered in 2004. The opinion above takes into account the Panel`s finding that the Complainant had some association with the "Д°Ећ`TE" trademark itself.

Even assuming the Complainant has made out a prima facie case, the Panel finds some support in the Respondent`s contention that the domain names were being used in connection with a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy. After visiting the websites at the disputed domain names, the Panel found that a number of website templates were being offered in support of the Respondent`s contention of this. The disputed domain names also do not target the SME business of the Complainant`s banking business which is geared towards finance. Another relevant fact is that the disputed domain names utilize the term "iste" trademark and not the "Д°Ећ`TE" trademark which the Panel finds has some association with the Complainant. The Panel is also of the opinion that there is nothing on the pages at the disputed domain names to suggest that the Respondent is benefiting from the goodwill of the Complainant or directing Internet users to the Complainant`s competitors.

The Panel is of the opinion that the existing evidence does not establish a prima facie case for the Complainant.

As a result the Panel finds that the Complainant has failed to meet its burden under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

In light of the Panel`s finding under the second element above and the fact that the Complainant is required to establish all three elements under paragraph 4(a) of the Policy, the Panel need not make a finding under the third element.

7. Decision

For all the foregoing reasons, the Complaint is denied.

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Nasser A. Khasawneh
Sole Panelist

Dated: December 9, 2009