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August 16, 2010 / Nate Harris

Akbank Turk A.S. v. Justin McDermott

Summary of Akbank Turk A.S. v. Justin McDermott
(
WIPO Case No. D2010-0999)
Filed June 17, 2010; Decided July 29, 2010 (Panelist: Isabel Davies)

Domain Name: <akbanknv-uk.com>

The Parties

Complainant Akbank Turk A.S. is a “top-tier privately owned Turkish bank with an extensive branch network.” It is the owner of hundreds of trademarks in Turkey, with roughly half of them including the formative AKBANK. Akbank owns several subsidiary banks, including Akbank NV in the Netherlands.

The Respondent Justin McDermott “appears to be operating a computer company,” according to the Complainant. However, Mr. McDermott responded to the complaint by claiming that he had no interest in the domain name and had never registered it. He pointed out that while his name and postal address were listed with the registrar, the email address and phone number listed were not his.

Discussion

The Panel begins by noting it “has no reason to doubt” Mr. McDermott’s claim that a third party had apparently used his personal information to conceal the true identity of the registrant. Even so, “the Complainant must still establish each of the three elements required by paragraph 4(a) of the policy,”  i.e., identity or confusing similarity, no rights or legitimate interest, and bad faith.

Identity or confusing similarity

The domain name consists of Akbank (the Complainant’s mark) plus the descriptives “NV” (a Dutch abbreviation for a public limited-liability company) and “UK” (an abbreviation for the United Kingdom). Additionally, Akbank has rights in “Akbank NV” by owning a subsidiary by that name. Therefore, the domain name is confusingly similar to Complainant’s mark.

Rights or legitimate interest

The panel accepts the “third party registrant” explanation offered by the Respondent. It notes that the Complainant need not perform “the impossible task of proving a negative” when the true identity of the registrant is unknown since, obviously, the Complainant has no information about the registrant’s right to register and use the domain name.

Paragraph 4(c) lists some factors that can be used by a Respondent to demonstrate rights or legitimate interest in the domain name. The factors include (i) use of the domain name in connection with a bona fide offering of goods or services; (ii) that the Respondent has been commonly known by the domain name; and (iii) that the Respondent is making legitimate non-commercial or fair use of the domain name. Here, the domain name does not resolve to a live website, so there is no offering (bona fide or otherwise) of goods or services, or legitimate non-commercial use. There is also no evidence that the Respondent (or the true registrant) has been known by the domain name. Therefore, there is no evidence of the Respondent’s (or the third party registrant’s) rights or legitimate interest in the domain name.

Registered and Used in Bad Faith

The Respondent claimed to have no interest in the domain name. Therefore, if he had registered the mark, the registration would have been in bad faith. On the other hand, if a third party had registered the domain using the Respondent’s information as the Respondent claimed, concealing the identity of the registrant was in bad faith. Thus, in either case, the domain was registered in bad faith.

As the panel points out, the domain name must be both registered and used in bad faith. Here, the domain was not actually in use. However, the fact that the domain consists of Complainant’s well-known mark, that the true registrant did not respond [how could it have?], and the concealed identity of the registrant constituted a sort of “ongoing bad faith” that constituted a use in bad faith.

Decision

The Panel ordered the domain name be transferred to the Complainant.


Commentary

Mr. McDermott’s role in the case appears to be that of a somewhat helpful, somewhat bewildered onlooker. I don’t understand why he didn’t just offer to transfer the domain to Akbank when he received the complaint. Did Akbank sent a cease-and-desist letter before going to the expense of preparing a complaint? This seems like a dispute that could have been easily avoided.

Epilogue

8/15/2010: akbanknv-uk.com returns a “Server not found” error, as it apparently always has.

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