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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Hacı Ömer Sabancı Holding A.Ş. v. WhoisGuard Protected, WhoisGuard, Inc. / Umeokonkwo Stanley

Case No. D2021-0644

1. The Parties

The Complainant is Hacı Ömer Sabancı Holding A.Ş., Turkey, represented by BTS & Partners, Turkey.

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Umeokonkwo Stanley, Nigeria.

2. The Domain Name and Registrar

The disputed domain name <sabanciinvestment.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 3, 2021. On March 3, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 3, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 4, 2021 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 Complaint on March 4, 2021.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 11, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 31, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 1, 2021.

The Center appointed Alistair Payne as the sole panelist in this matter on April 12, 2021. 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

The Complainant was established in 1925 and is the parent of the Sabancı group of companies. The Sabanci Group is one of Turkey’s leading conglomerates and it operates in the banking, insurance, energy, industrials, cement, and retail sectors through nine global partnerships, 12 public companies on the Istanbul stock exchange with over 62,000 employees based in 12 countries in regions across Europe, the Middle East, Asia, North Africa, North and South America. In 2019, the Sabancı Group posted combined sales revenue of TRY 97.6 billion (USD 14 billion) and consolidated net profit of TRY 3.8 billion (USD 550 million). The Complainant owns numerous trade mark registrations globally for its SABANCI trade mark including Turkish registration 170885 registered on April 2, 1996 and the European Union designation of International trade mark registration 1273407 registered on March 18, 2015. It also owns numerous domain names that incorporate its SABANCI mark including <sabanci.com> registered in 1996 and from which it operates its main corporate website.

The disputed domain name was registered on November 30, 2020. It formerly resolved to an unnamed website headed “Index of/” which had four documents listed on it. It currently does not resolve to any website.

5. Parties’ Contentions

A. Complainant

The Complainant submits that it owns registered trade mark rights for SABANCI and that it is a coined highly distinctive term and is wholly incorporated into the disputed domain name. It says that the term “investment” is descriptive and that its addition does not detract from the fact that the disputed domain name is confusingly similar to its SABANCI trade mark.

The Complainant submits that the disputed domain name was registered on November 30, 2020 and based on a screenshot that it provided in evidence submitted that the website displayed the Complainant’s trade mark. It says that the Respondent has no rights or legitimate interests in the disputed domain name and was not authorised by the Complainant to use its SABANCI trade marks. It further says that the Respondent is not commonly known by the disputed domain name and is not making a bona fide offering of goods or services in relation to it. Nor, says the Complainant, is the Respondent making a legitimate noncommercial or fair use of the disputed domain name. The Complainant further submits that it has a variety of subsidiaries that operate in the financial, banking and investment sectors of which it has provided an overview. Accordingly, it suggests that the Respondent did not choose the disputed domain name for bona fide reasons and has no rights or legitimate interests in it.

Essentially the Complainant says that the Respondent has not demonstrated any actual or intended use of the disputed domain name. It submits that the Respondent has not actively used the disputed domain name but that it was clearly aware of the Complainant’s existence and wanted to create a risk of and benefit from confusion. It says that it is apparent that the Respondent was aware of the Complainant and chose the disputed domain name for its value in attracting Internet users familiar with the Complainant’s distinctive mark. It further says that the Respondent’s bad faith registration and use of the disputed domain name is demonstrated because this is a paragraph 4(b)(iv) of the Policy case in which the Respondent has sought to confuse and divert Internet users to a website that operates in relation to the same activity as the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has demonstrated that it owns the European Union designation of International word mark registration 1273407 for its SABANCI trade mark which was registered on March 18, 2015. The disputed domain name wholly incorporates this mark and even though it includes a Latin “i” rather than a Turkish dotless “I”, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s SABANCI mark. The fact that the disputed domain name also includes the common and dictionary English term “investment” does not detract from this finding.

As a result, the Complaint succeeds under this element of the Policy.

B. Rights or Legitimate Interests

The Complainant has submitted that the Respondent has no rights or legitimate interests in the disputed domain name and was not authorised by the Complainant to use its SABANCI trade marks. It has further submitted that the Respondent is not commonly known by the disputed domain name and is making neither a bona fide offering of goods or services under it, nor is the Respondent using the disputed domain name for a legitimate noncommercial or fair use. In addition, the Complainant has provided evidence of the variety of subsidiaries that it has operating in the financial services, banking and investment sectors and has submitted that on this basis the Respondent could not have chosen the disputed domain name incorporating its coined and distinctive trade mark together with the word “investment” for bona fide purposes and accordingly that the Respondent has no rights or legitimate interests in the disputed domain name.

The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has failed to rebut the Complainant’s case and for this reason and in view of the very high degree of distinctiveness of the Turkish based Complainant’s SABANCI trade mark and also for the reasons set out under part C below, the Panel finds that the Complaint succeeds under this element of the Policy.

C. Registered and Used in Bad Faith

The disputed domain name was registered on November 20, 2020 some 14 years after registration of the Complainant’s Turkish trade mark and <sabanci.com> domain name and five years after the registration of the European Union designation of its International word mark registration and many decades after the commencement by the Complainant of its global business under the SABANCI mark and name. The SABANCI mark is highly distinctive being a coined term and the Complainant SABANCI group of companies is very substantial and well established and has a significant global footprint. On this basis it would be extremely surprising if the Respondent who is based in Nigeria had independently conceived the disputed domain name in late 2020 and it seems more likely than not that it was aware of the Complainant and its SABANCI mark at the time of its registration.

It does not appear to the Panel that the disputed domain name has yet been used to date for any business related activity. Although the Complainant asserted that the unnamed website to which the disputed domain name formerly resolved featured the SABANCI mark the Panel can see no reference to it except in the URL for the disputed domain name. The minimal entries on the former web page consisting as they did of “Index of/” and four file names being “Final Project.zip”, “cgi-bin/”, “golfacademy.zip” and “marvelous.zip” shed no light as to the purpose for which the website at the disputed domain name had or had not been used. There was a suggestion in the Complainant’s submissions of “inaccessibility” and the Panel presumes that this related to the documents, which could not be opened. There being no evidence as to what those documents were, or whether they had a commercial nexus, the Panel does not find that this amounted to an unauthorised commercial use of the disputed domain name, as submitted by the Complainant, in terms of paragraph 4(b)(iv) of the Policy.

In any event, the Panel notes that the disputed domain name does not currently resolve to any website. On this basis it appears to the Panel that the Respondent is at this time making a passive use of the disputed domain name. Section 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition sets out the factors that have been considered relevant by previous UDRP panels in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.

In this case the Complainant’s SABANCI mark is a highly distinctive coined term to which a substantial degree of renown attaches as a consequence of the very established international business of the Complainant’s corporate group. The Respondent has failed to submit a response or to explain its use and has tried to conceal his identity by the use of a privacy service. Finally, the Panel finds it implausible that the Nigerian based Respondent would have conceived of the mark independently in late 2020, or would otherwise be intending to use the highly distinctive SABANCI mark in good faith, in circumstances that the mark could only refer to the Complainant and its group, that the Respondent had no authorisation to use it and no connection with the Complainant and that there is no evidence that the Respondent has used the disputed domain name for legitimate noncommercial or fair use purposes.

For these reasons the Panel finds that the disputed domain name was both registered and has been used in bad faith and the Complaint also succeeds under this element of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <sabanciinvestment.com> be transferred to the Complainant.

Alistair Payne
Sole Panelist
Date: April 23, 2021

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