Kocbank AS v. N&K Danismanlik Ltd.

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Kocbank A.S. v. N&K Danismanlik Limited

Case No. D2001-0849

1. The Parties

The Complainant is Kocbank A.S. a Turkish Corporation with address

in Barbaros Bulvari, Morbasan Sokak, Koza Is Merkezi C Blok, Balmumcu, 80700

Besiktas, Istanbul, Turkey represented by Mr. Aykut Cangul and Mr. Osman Bosna.

The Respondent is N&K Danismanlik Limited, a Turkish Corporation with address

in Inönü Caddesi No.78/6, Bursa, 16220, Turkey.

2. The Domain Name and Registrar

The domain name at issue is <kocbank.com> and the corresponding registrar

with which the domain name is registered is Network Solutions, Inc. (hereinafter

"Network Solutions"), 505 Huntmar Park Drive, Herndon, Virginia 20170-5139,

USA.

3. Procedural History

The Complaint was submitted in hard copy on July, 3, 2001, and via e-mail on

July 5, 2001, to the World Intellectual Property Organization Arbitration

and Mediation Center (hereinafter the "WIPO Center").

On July 4, 2001, the WIPO Center requested the Registrar, Network Solutions,

pursuant to Paragraphs 2(a) and 4 of the Rules for Uniform Domain Name Dispute

Resolution Policy (hereinafter the "Rules"): (1) to confirm that a copy of the

Complaint had been sent to Network Solutions by the Complainant; (2) to confirm

that the domain name at issue was registered with Network Solutions, (3) to

confirm that the person identified as the respondent is the current registrant

of the domain name; (4) to provide the full contact details (i.e., postal address(es),

telephone number(s), facsimile number(s), e-mail address(es) available in the

registrar's Whois database for the registrant of the disputed domain name, the

technical contact, the administrative contact and the billing contact); (5)

to confirm that the Uniform Domain Name Dispute Resolution Policy (hereinafter

the "Policy") applies to the domain name, and (6) to indicate the current status

of the domain name.

On July 6, 2001, Network Solutions replied that: (1) Network Solutions was

in receipt of the Complaint sent to them by the Complainant; (2) Network Solutions

was the Registrar of the domain name registration; (3) N&K Danismanlik Limited

was the current registrant of the <kocbank.com> domain name registration.

Network Solutions also provided the full contact details as requested noting

, however, a discrepancy in the data regarding the administrative, technical

and billing contacts, and confirmed that Network Solutions' 5.0. Service Agreement

was in effect and the domain name registration <kocbank.com> in "Active"

status.

On July 9, 2001, WIPO Center requested the Complainant to amend the Complaint

in order to reflect the modification of the administrative, technical and billing

contact information. On July 10, 2001, Complainant amended the Complaint, remarking,

however, that the modification of the administrative, technical and billing

data had been changed subsequently to the filing of the Original Complaint.

In light of the above and according to the documents filed with the Panel,

the Complaint appears to have been filed in accordance with the requirements

of the Rules and of the World Intellectual Property Organization Supplemental

Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter the "Supplemental

Rules"). The Panel finds that the payment was properly made and agrees

with the WIPO Center’s assessment concerning the Complaint’s compliance with

the formal requirements: in accordance with Paragraph 2(a) of the Rules, the

Complaint was properly notified on July 12, 2001, to the Respondent who did

not file any Response and was notified of his default on August 1, 2001. On

August 7, 2001, the Parties were informed that in accordance with Paragraph

6(f) of the Policy an Administrative Panel consisting of a single Member had

been appointed. The sole Panelist submitted a Statement of Acceptance and Declaration

of Impartiality and Independence and the date scheduled for the issuance of

the Panel’s decision was set for August 21, 2001.

Finally, in accordance with Paragraph 11 of the Policy, since the Parties to

the present administrative proceeding have not agreed otherwise, and since the

registration agreement that relates to the domain name in question does not

specify otherwise, the language of the administrative proceeding will be the

language of the relevant registration agreement, i.e. English.

4. Factual Background

According to the Complaint, Kocbank is a wholly-owned subsidiary of the Koc

Group, one of the largest industrial and commercial corporations in the world

with 13 billion US Dollars combined turnover. The foundations of Kocbank, which

now totals 87 branch offices, reach back to 1981 with the opening of the American

Express Bank branch, an American Bank specialized in wholesale corporate banking

services with an emphasis on international trade finance in Istanbul. In 1985,

the Koc Group and American Express became partners and formed Koc-American Bank,

with 51% and 49% shares, respectively. The Koc Group increased its holdings

in the Bank to 100% at the end of 1992, making the Bank a wholly-owned subsidiary

of the Group. The name "Kocbank" was adopted in 1993 and registered as trademark

in 1996 along with other Kocbank-formative trademarks such as Alokocban, Fonokocbank,

Atmkocbank and Otokocbank.

Kocbank's operations have expanded beyond the national borders: Kocbank Nederland

N.V. was incorporated in May 1996 as a fully-licensed bank in the Netherlands

with headquarters in Amsterdam. Kocbank Azerbaijan Ltd. became operational in

2000, with the IFC as a 20% shareholder and in an effort to establish additional

presence in international markets, a Bahrain branch office was opened in 2001,

so that as of today, Kocbank is a well known international bank with six participations

(two are in the Netherlands and Azerbaijan) and 87 branches (one located in

Bahrain). In addition to its sound existence in international markets, Kocbank

ranks among the upper echelon banks in Turkey, enjoying a prestigious status

gained through depositor confidence, customer loyalty and strong support from

its shareholders.

These statements are not only uncontested but supported by ample documents

and therefore the Panel takes the view that they are a fair representation of

the Complainant’s activities.

5. Parties’ Contentions

A. Complainant

According to the Complainant, the domain name at issue is identical to the

registered trademark KOCBANK (reg. n. 180284) in which Complainant only has

rights. KOCBANK is a fully valid trademark since following the take over of

the remaining shares from the American Express Bank in 1992, the trademark was

actively used and promoted both via press (newspapers; magazine ads; printed

materials and TV commercials). As a result of above mentioned publicity, the

Bank has been known, identified and referred accordingly (as Kocbank).

In addition, the domain name, <kocbank.com> is confusingly similar to

the most of other registered Kocbank trademarks such as Alokocbank (reg. n.

199270), Fonokocbank (reg. n. 197617), Atmkocbank (reg. n. 197662), Otokocbank

(reg. n. 199240) and Kocaracbank (reg. n. 197715).

The Complainant also alleges that Respondent has no rights or legitimate interests

in respect of the domain name that is the subject of the Complaint because the

Complainant is the sole and exclusive owner of the trademark KOCBANK. As represented

by the data of whois database of Network Solutions, the registrant of the domain

is not related with the Bank, or with any other business or person named (or

that has a confusingly similar name to) Kocbank. Furthermore, the results of

the search conducted by Ankara Patent Bureau Limited shows that the only registration

record for the trademark KOCBANK was in the name of the Complainant.

Finally, the Complainant alleges, on the basis of several concurring arguments,

that the domain name <kocbank.com> appears to be registered and to have

been used in bad faith.

The first reason arises out of the circumstance that the domain name was registered

primarily for the purpose of selling. Evidence of such an intention is in the

respondent’s messages which indicate that the domain at issue was being marketed

by the registrant with the purpose of reselling for a price extremely high and

in excess of the domain name registrant’s out-of-pocket costs directly related

to the domain name.

The second reason arises out the webpages of "www.kocbank.com" which indicate

no intention of using, or demonstrable preparations to use, the domain name

or a name corresponding to the domain name in connection with a bona fide offering

of goods or services, but simply the purpose to sell the domain.

The third reason lies in the fact that the domain name was diverted to a Competitors’

web site to put pressure on Kocbank and force for reaching a settlement. Kocbank,

as one of the leading banks in the sector, faces

a fierce competition. Garanti Bankası is one of the main competitors of

Kocbank and it belongs to Doğuş Holding, another Group with activities

in various sectors. In order to push Kocbank for a settlement, the domain name

at issue was and is being diverted to the

website of Garanti Bankası.

The fourth reason is that the Respondent intentionally attempted to attract

financial gain. The current homepage of Complainant’s (at "www.kocbank.com.tr")

receives 50,000 hits per week on the average. The domain at issue is also estimated

to receive 25,000 – 30,000 hits per week. It is the Complainant’s belief that

the Respondent, hoping to take the advantage of the traffic and attract financial

gain, diverted the domain name <kocbank.com> to a commercial website named

BilgisayarMarket (which translates into Computer Market) at "www.bilgisayarmarket.com"

which, according to the WHOIS database of Network Solutions is administrated

by a certain Hasan Yagiz, the administrator of <kocbank.com> at the time.

Furthermore, according to the information given at bilgisayarmarket.com, BilgisayarMarket

is a trademark registered by N&K Danismanlik Limited, registrant of the

domain name at issue.

The fifth reason is to be found in Respondent’s attempt to erode the customers’

and <kocbank.com> visitors’ perception of Kocbank image. Driven by the

purpose of increasing the pressure for settlement, the registrant diverted the

Internet users accessing the web pages under "www.kocbank.com" to websites that

include explicit sex materials.

The sixth and last reason would be that Respondent, by including the word "bank"

in a domain name, violates provisions of the Turkish Banking Law which forbids

use of the word "bank" in names, documents, advertisements etc. by

persons who are not licensed to establish and operate banks.

B. Respondent

The Respondent did not submit any response.

6. Discussion and Findings

According to Paragraph 4(a) of the Policy, in an administrative proceeding,

the Complainant must prove that each of following three elements are present:

(1) the domain name is identical or confusingly similar to a trademark or service

mark in which the Complainant has rights; and (2) the Respondent has no rights

or legitimate interests in respect of the domain name; and (3) the domain name

was registered and is being used in bad faith.

1) The Panel believes that it is indisputable that the domain name at issue

<kocbank.com> is identical to the trademark in which the Complainant has

rights. Therefore, the Panel is satisfied that the first condition is met.

2) The Panel finds that the Respondent has neither rights nor legitimate interests

in respect of the domain name.

Complainant has alleged, by reference to a number of circumstances (which Respondent

has failed to deny) that Respondent has no legitimate interests in respect of

the domain name at issue.

The Panel takes the view that the circumstances indicated by Complainant create

a prima facie inversion of the burden of proof. Respondent's default is therefore

a further evidence of the Respondent's lack of any right or legitimate interest

in the domain name (see Ermenegildo Zegna Corporation, Lanificio Ermenegildo

Zegna & Figli S.p.A., Consitex S.A v. Steven Shiekman, WIPO

Case No. D2000-1375).

Therefore, this Panel is satisfied that the second condition is met.

3) This Panel finds that the domain name was registered and is being used in

bad faith.

In order to reach this conclusion, the Panel examined separately two issues:

1) whether or not bad faith existed when the domain name was registered; and

2) whether or not the domain name was used in bad faith.

As far as the first issue is concerned, the Panel finds that Complainant has

given enough and supported evidence of the recognition and renown which the

name KOCBANK has gained throughout the years in Turkey, country where the Respondent

resides. In light of such recognition and taking into account that no rights

or legitimate interests with respect to the name KOCBANK could be established

on the side of Respondent, the Panel believes that it is not credible that when

Respondent applied for registration of the domain name at issue (December 31,

1997) Respondent was not aware of Complainant’s rights over KOCBANK.

Having deemed satisfied the first condition, the Panel must now establish whether

or not there has been use in bad faith.

Once again there are two conditions to be met: actual use and bad faith in

such actual use.

The Panel finds that both conditions are satisfied for a number of reasons.

According to the circumstances alleged in the Complaint and duly supported

with the appropriate evidence, the domain name was used in various manners (to

redirect the Internet user to the website of a competitor, to take advantage

of the traffic generated by the Complainant’s potential and actual consumers,

and to host pornographic material) with the apparent intent to damage Complainant’s

business.

The Panel sought in Internet the domain name at issue, which now so appears:

(click to see

full-size image)

(click to see

full-size image)

The Panel cannot but notice that the counter (on the bottom of the webpage)

showed, on August 11, 2001, quite an impressive number of visitors: 97745, an

evident admission of the frequency with which Internet users are attracted to

the website and therefore an incontrovertible (although inductive) evidence

of the damages that Complaint’s business may have suffered from Respondent’s

registration and use.

Furthermore, as indicated in the Complaint, Respondent never denied its intention

to gain financial advantages, well in excess of the reasonable costs for registration,

from the sale of the domain name at issue. On the contrary, the Complainant

produced copy of correspondence incurred with Mr. Yagiz, the former Administrative,

Technical and Billing Contact of the disputed domain name, proving the intention

of selling the domain name for a valuable consideration in excess of the Respondent’s

documented out-of-pocket costs directly related to the domain name. Furthermore,

Mr. Yagiz actually stated in a newspaper interview "we have been holding

Kocbank’s name right for three years. The transfer fee we claim is a 100 thousand

dollars. If they wish to buy the name right, they have to pay this amount first.

Well, it is their choice and all is up to them. It is their image we are taking

about, not ours".

It is the Panel's view that the Respondent's overall conduct, from the frequent

shifting of content of the website with the deliberate intent to disrupting

the business of the Complainant, to the request of a considerable amount of

money, to the actual use of the domain name at issue, shows that the Respondent

registered the domain name primarily for the purpose of selling, renting, or

otherwise transferring the domain name registration to the Complainant who is

the owner of the trademark for valuable consideration in excess of its documented

out-of-pocket costs directly related to the domain name, and intentionally attempted

to attract for commercial gain, Internet users to its website by creating a

likelihood of confusion with the Complainant's mark as to the source, sponsorship,

affiliation, or endorsement of Respondent's website or a product or service

on its website.

Therefore this Panel is satisfied that also the third condition is met.

7. Decision

In light of the foregoing, the Panel finds that Respondent’s disputed domain

name <kocbank.com> is identical to Complainant’s trademark, that Respondent

has no legitimate rights or interests in the disputed domain name, and that

Respondent has registered and made use of the domain name in bad faith. Accordingly,

pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders

that the disputed domain name <kocbank.com> be transferred to the Complainant.

Angelica Lodigiani

Sole Panelist

Dated: August 21, 2001