WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sabanci Holding A.S. v. Sabanci Holding Inc.
Case No. D2001-0942
1. The Parties
The Complainant is Sabanci Holding A.S., Sabanci Center, Kule 2, K.20.4 Levent, Istanbul, Turkey 80745 and is represented by Arnold & Porter, 777 South Figueroa Street, 44th floor, Los Angeles, CA 90017-5844, USA.
The Respondent is Sabanci Holding Inc., 1475 Terminal Way Suite E, Reno, Nevada 89602, USA, represented by Dogan L. Gozet
2. The Domain Name and Registrar
The Domain Name at issue is <sabanci.com>. The Registrar is Registrars.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the Center) by e-mail on July 21, 2001, and a hardcopy was received by the Center on July 23, 2001. The Center acknowledged the receipt of the Complaint on July 25, 2001.
On the same day the Center sent to Registrars.com. a request for verification of registration data. After repeated requests, on August 14, 2001, Registrars.com. confirmed to be the Registrar, that Sabanci Holding Inc. is the Registrant of the domain name <sabanci.com>, and that the administrative, technical and billing contact is email@example.com., 1475 Terminal Way Suite E, Reno, Nevada 80502 USA.
WIPO verified that the Complaint satisfies the Rules and the Supplemental Rules and that payment was properly made. The Panel is satisfied this is the case.
On August 10, 2001, the Complaint was properly notified in accordance with the Rules, paragraph 2(a), and the administrative proceedings commenced. On August 16, 2001, Mr. Dogan Gozet, the manager of the Respondent sent an e-mail to the Center and on August 29, 2001, he confirmed that this e-mail should be considered to be his Response. On August 30, 2001, the Center acknowledged receipt of the Response.
On September 11, 2001, the Center notified the Parties that an Administrative Panel, composed of a single member, Dr. Gerd F. Kunze, had been appointed and that the Panelist had duly submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the Center.
No further submissions were received by the Center or the Panel. The date scheduled for issuance of the Panel’s decision is September 25, 2001.
4. Factual Background
The Complainant is the parent of the Sabanci Group, one of the two largest industrial and financial conglomerates in Turkey, which is also affiliated to the Sabanci University and the Sabanci Museum in Istanbul. Many of the more than 50 companies of the Complainant are market leaders in their respective sectors, including financial services, polyester, cement, automotive, tire and tire cord, food and retailing, textiles, Internet and information technology. The group operates in ten countries and exports products throughout Europe and the Middle East, parts of Asia, North Africa and North America. Since 1980, the Complainant has been doing business in the United States.
The Complainant is the owner of many trademark registrations for marks, consisting of the word SABANCI, of the SABANCI logo (specific script of the word sabanci, showing the letters S and A in white, surrounded by - blue - circles, followed by the letters B,A,N,C and I in black) and of the SA logo (letters S and A in white, surrounded by circles), for goods and services in many classes of the International Classification, thus covering the different activities of the group. In particular the word SABANCI is registered in Turkey as wordmark under No. 170885 for services in classes 35,36,38,41 and 42 (registration date April 2, 1996) and the SABANCI logo is registered as Community Trade Mark No. 262675 with filing date of May 27, 1996 for services in classes 35, 36, 38, 41 and 42.
These facts are evidenced by the attachments to the Complaint and, in the absence of any submission of the Respondent to the contrary, the Panelist is satisfied that the documents submitted by the Complainant are truthfully reflecting the factual circumstances of the case. Furthermore, the Panelist is satisfied that at least in Turkey, the trademark SABANCI is a well-known mark.
The Complainant administers an informative website under the domain name <sabanci.com.tr> on which the SABANCI logo, as registered as a Community Trade Mark, combined with the word HOLDING is shown prominently. The website may be read in either Turkish or English.
On April 24, 2001, Counsel of Complainant wrote a letter to Mr. Gozet requesting that the Respondent transfer the domain name <sabanci.com> to the Complainant (evidenced by Annex Q to the Complaint).
The Respondent registered on January September 6, 1996, the domain name <sabanci.com> with Registrars.com. It established a website under which over the years it promoted different activities, using prominently a logo which is identical with the Complainant's SABANCI HOLDING logo. The Complainant has submitted three Printouts of Respondent's website taken on different dates. The first printout (Annex K to the Complaint) shows the website as designed on December 21, 2000, indicating in English as activities: Export, Import, Agriculture, Information Technologies and Human Resources. Furthermore this website contains a text-block, written in the Turkish language. The website gives the impression the Respondent is a group of companies. Under the heading "Human resources" it even expressly speaks about a management development program designed for the Sabanci Group. The website also contains an e-mail address (firstname.lastname@example.org), an address (the Respondent's registered address) and mentions: "Sabanci Holding Inc. a Nevada Company. Copyright (c) Sabanci Holding, Inc., and Sabanci Holding Logo are registered trademark". A second printout dated January 24, 2001 (Annex I to the Complaint) also shows a very well designed website, which is very similar to the website as used by the Respondent still recently. On that website the Respondent essentially offered three activities: "Legal Professionals protect your trademarks globally", "Marketing Professionals promote your services worldwide", and "IT Professionals secure and manage your domain names". Furthermore, a picture of 50 flags is shown, as well as the company name Sabanci Holding, Inc., with the address as registered, combined with the reference to a Nevada Company and the reference to Respondent's service marks. Apparently, the website of the Respondent later on was slightly changed and, according to the Complainant, discontinued to show the flags. The Panelist visited the Respondent's website on September 14, 2001 and is satisfied that the Complainant's submission is correct. On September 14, 2001 the website contained a reference to a website "Sadece", which is in Turkish and may be found under "http://haydiamenckaya.com". Furthermore, as also submitted by the Complainant, the Respondent's address, as indicated on the website, had changed to 350 South Center Street, Suite 500 Reno NV 89501" (without changes of the Telephone and Fax numbers).
The submissions of the Complainant as concerns Respondent's website are not contested by the Respondent whose manager, in his Response, stated that he had established a website in 1996.
On July 7, 2000, Sabanci Holding Inc., a corporation under the laws of the State of Nevada, USA with a Resident Agent: "Corporate Service Center, Inc, 1475 Terminal Way, Suite E, Reno" (the address is identical with Respondent's domain name registration address) was established. President, Secretary, Treasurer and Director is Dogan Level Gozet, a national of Turkey (see copies of the Nevada company register, Annex N to the Complaint). Furthermore, on August 30, 2000, that company registered the service mark SABANCI HOLDING in classes 35 and 42 as a state trademark in the State of Nevada. That Sabanci Holding Inc. is not the Registrant (it cannot be the registrant, since it did not exist, when in 1996 the domain name <sabanci.com> was registered).
On April 25, 2001, Mr. Gozet, Sabanci Holding Inc., replied to Complainant's letter dated April 24, 2001, requesting the transfer of the domain name <sabanci.com>, as follows (Annex R to the Complaint): "Our Company had been established under the force of the United States trade law and also have right to use the mentioned trademark, according to the trademark articles of the law".
5. Parties’ Contentions
The Complainant submits that (1) the domain name <sabanci.com> 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; (3) the domain name was registered and is being used in bad faith.
According to the Complainant, Respondent's principal, Mr. Gozet, contacted the Complainant and offered to sell the Domain name <sabanci.com> for $10,000.
The Complainant believes that the Respondent, despite all the promotions made over the years on his website, has never operated a business under the Sabanci Holding, Inc., name or under the <sabanci.com> domain. It has submitted evidence showing that the Respondent cannot be contacted by phone (also the telephone line is connected to a fax machine) and that apparently there exists no business at the address in the WhoIs record for Respondent. Actually, a company named Corporate Service Center is situated at this location, of which Respondent is one of the customers (see attachment M to the Complaint).
As evidenced by the Complainant (Annex L to the Complaint), the Respondent on or about March 14, 2001 posted an advertisement on its website advertising the Domain name <sabanci.com> for sale. Complainant also submits that according to the Turkish news report "Barometre" of September 18, 2000, Mr. Gozet, acting for the Respondent, was seeking $ 5 millions for the purchase of his company (Annex H 3 to the Complaint).
Complainant believes that Mr. Gozet is living in Turkey and not in the USA.
Complainant also refers to several interviews which Mr. Gozet has given to the press and to Television in Istanbul (copies in Turkish and translations are attached to the Complaint). I will come back to these interviews under 6.
Mr. Gozet, acting for the Respondent, in a response which does not comply with the Rules as set out in paragraph 5, submits essentially the following arguments:
1. The real name of the Complainant is not "Sabanci Holding A.S" but "Haci Omer Sabanci Holding A.S."
2. Sabanci means a man/farmer who uses a plow. Everybody can use that generic name.
3. ICANN has defined the domain .tr for Turkish companies.
4. Turk.net is an ISP company in Turkey, which belongs to the Complainant. "Turk.Net stole my domain 3 times from October 1999 to December 1999. This process is illegal…".
5. Asking for $ 10,000 from lawyer Mr. Cuneyt Yuksel was unreal statement.
6. Complainant has to prove that I had profit by using their name.
7. Our company has been established under the force of the United States Trade Law and also have right to use the mentioned trademark, according to the trademark articles of the Law.
8. The press news are on the responsibility of the related media group. I did not sk directly or indirectly any money from any one.
To the extent that the Response does not comply with the Rules, the Panelist will draw his conclusions according to Rule 14(b).
6. Discussion and findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the domain name of the Respondent be transferred to the Complainant:
1) The domain name is identical or confusingly similar to a trademark or service mark ("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 has been registered and is being used in bad faith.
1) Confusing similarity with a mark in which the Complainant has rights
The domain name <sabanci.com> is identical with the registered wordmark SABANCI of the Complainant, which is well-known at least in Turkey. Phonetically it is also identical with the Complainant's registrations of the SABANCI logo. The generic top level domain indicator ".com", cannot be taken into consideration when judging confusing similarity. Based on general principles of trademark law, that domain name is therefore at least confusingly similar, if not identical, with the Complainant's trademarks. This is also the case, when considering the particular circumstances of use on the Internet. Persons searching for the Complainant on the Internet will normally expect to find the Complainant under its principal identifier and trademark "sabanci" in the .com domain. However, when attempting to find the Complainant in that domain, they will reach the website of the Respondent. In view of the importance of the .com domain, the Respondent cannot argue that ICANN has defined the domain .tr for Turkish companies. The Complainant has submitted evidence that the Respondent has repeatedly admitted that numerous visits have been made at its website seeking to make business with the Complainant (see attachments H1, H2 and H 3 to the Complaint). Consequently there is not only a risk of confusion with the Complainant and its principal mark, confusion has actually often occurred.
The domain name <sabanci.com> is therefore confusingly similar with a mark in which the Complainant has rights in many countries. For the Policy to apply, the Complainant need not have rights in his mark in the country, where the Respondent's site is hosted or where the Respondent is located.
In that context the argument of the Respondent that "sabanci" has the meaning of a man who is plowing, is totally irrelevant. Whether a term is descriptive or even generic must always be considered in relation to the goods and services for which it is used. If the Respondent was right, the Apple Computer Company could have no trademark rights in its well-known APPLE trademark, and Philip Morris could not have rights in the trademark CAMEL. It is also irrelevant in our context whether the correct name of the Complainant is Sabanci Holding A.S., or Haci Omer Sabanci Holding A.S. The Respondent's submission may be correct, in which case the Complainant has used a shorter trade name instead of its company name as registered; the Complainant may also have changed its name recently. Be it as it may, the Respondent does not argue that the Complainant is a third company, which would not be the holder of the rights in the trademark SABANCI and in the trade name SABANCI HOLDING in Turkey and in other countries (except the USA). It simply argues that the name of the Complainant as used in the Complaint is not correct. However, this aspect does not relate to the facts to be considered in the present case. What counts is that the Complainant is known under its trade name SABANCI HOLDING and under its registered trademark SABANCI. Both are being used by the Respondent in a manner which causes confusion with Internet users.
2) Legitimate rights or interests in respect of the domain name
The Respondent has no connection or affiliation with the Complainant, who has not consented to the Respondent's use of the domain name. It has registered the domain name in 1996, when even its name as registrant was fictitious, since there existed no Sabanci Holding, Inc., in the United States or in any other country. As it is known from evidence submitted by the Complainant and also admitted by Mr. Gozet in his Response for the Respondent, the registration in 1996 was made by Mr. Gozet under the name Sabanci Holding, Inc., Only in July 2000, Mr. Gozet tried to legalize his use of that corporate name and of the registered domain name by registering in Reno, Nevada a business under that name.
Whilst the Respondent over the years offered many activities, such as cement and textile import and export and services for IT professionals as well as other businesses similar to activities operated by the Complainant, the Complainant has submitted evidence that in reality the Respondent apparently has never exercised any such business activity. In particular, Complainant has submitted evidence that no such business was exercised by the Respondent after incorporation of the company "Sabanci Holding Inc.," in 2000. Actually, not only Mr. Gozet's address is indicated in the company register as "1475 Terminal Way, Suite E, Reno", but also "Corporate Service Center" is named as a duly appointed Resident Agent under the same address. The Respondent, in its response, has not contested this evidence and has given no indication whatsoever about its activities. In an article published by "Barometre" on September 18, 2000, which was based on an interview with Mr. Gozet, the latter is cited as saying that he is making preparations for and in the near future he will be able to meet demands (Annex H3 to the Complaint). This statement can only be interpreted in the sense that at least until that date the Respondent had not been able to meet any demand of potential clients.
In conclusion, the Panelist is satisfied that the Complainant has submitted convincing evidence that the Respondent has never exercised a real business in relation to the activities and services promoted on its website.
Furthermore, none of the circumstances listed under paragraph 4(c) of the Policy, possibly demonstrating rights or legitimate interests, are given. Even if the Respondent offered for years goods or services on a website under the domain name <sabanci.com>, this was no bona fide offering since, as explained before, it apparently did not really exercise such business. Clearly, the Respondent has not been commonly known by the domain name. Visitors to its website generally expected to contact the Complainant and not the Respondent.
Finally, the Respondent itself has not submitted to make or to intend to make a legitimate noncommercial use of the domain name.
The establishment of a company by Mr. Gozet in 2000, years after the registration of the domain name <sabanci.com> in the name of a registrant called "Sabanci Holding Inc.", that company again bearing the name Sabanci Holding Inc. (identical with Respondent's name), and the registration of a State Service mark in the name of that company, which is identical with Complainant's well-known mark, cannot justify or even legitimate the originally illegitimate registration of the domain name <sabanci.com>. If it were possible to legitimate domain name registrations of well-known marks by later establishing a company under the registrant's name and by registering somewhere a trademark, which is identical or confusingly similar with the Complainant's mark, the Policy could easily be undermined. Such registrations are easy to make and it is only a question of some money to invest for that purpose to achieve these results (according to Mr. Gozet in the interview evidenced by Annex H1 to the Complaint he invested $ 6000 in total).
This is the more true in the present case where the Company Sabanci Holding Inc, which according to the submission of Mr. Gozet for the Respondent "has been established under the force of the United States Trade Law and also have right to use the mentioned trademark, according to the trademark articles of the Law" is clearly not identical with the Respondent, even if the names and the addresses are identical, since the Respondent registered the domain name <sabanci.com> in 1996, and the Nevada company was established in 2000 only. The fact that even the addresses are identical is strong evidence that Mr. Gozet already since 1996 used the company, Corporate Service Center, Inc, which is the Resident Agent of the Nevada Company, for his purposes of being represented in the USA. Mr. Gozet overlooks that there are two units legally to be distinguished, both of which he uses for his purposes, without distinguishing them: The fictitious name business "Sabanci Holding Inc", containing the abbreviation "Inc", normally in the USA standing for an incorporated company, and used by Mr. Gozet as Registrant of the domain name <sabanci.com> in 1996 on the one hand, and the Nevada Company, having an identical name and having been established in 2000, on the other. Mr. Gozet even did not attempt to have the Nevada Company become Registrant of the domain name <sabanci.com> by transferring that name from the 1996 Registrant Sabanci Holding Inc. to the 2000 Nevada Company Sabanci Holding Inc.
Therefore, in the absence of any submission of the Respondent, which would show a present or future legitimate interest in the domain name, the Panel concludes that the Respondent has no rights or legitimate interests in the domain name <sabanci.com>.
3) Registration and use in bad faith
For a Complainant to succeed, the Panel must be satisfied that a domain name has been registered and is being used in bad faith. As an example, the Policy section 4(b)(i) mentions registration of 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 a mark or to a competitor of that Complainant for valuable consideration in excess of out-of-pocket costs directly related to the domain name.
1. A generally applied test is therefore whether a Respondent has attempted to sell the domain name for a sum in excess of the Respondent’s out of pocket expenses in registering the domain name.
The Complainant submits that the Respondent in 1996 had offered to sell the domain name <sabanci.com> for $ 10,000. The Complainant also submits that the Respondent had on or about March 14, 2001, posted an advertisement on its website advertising the domain name <sabanci.com> for sale (a printout of the respective page of Respondent's website is submitted as Annex L to the Complaint). Complainant also submits evidence (Annex H 3 to the Complaint) that according to the Turkish news report "Barometre" of September 18, 2000, Mr. Gozet of the Respondent was seeking $ 5 millions for the purchase of his company. Since that company is apparently doing no business, this statement is a further strong indication of Mr. Gozet's attempt to sell the domain name for an amount which no doubt is in excess of his out of pocket expenses. Consequently, the Complainant has submitted and evidenced strong indications that the Respondent has complied with that test. Mr. Gozet, acting for the Respondent, contests Complainant's allegations. Mr. Gozet's response to the first allegation is: "Asking for $ 10.000 from lawyer Mr. Cuneyt Yuksel was unreal statement" and his response to the third allegation is: "The press news are on the responsibility of the related media group. I did not ask directly or indirectly any money from any one". However, Mr. Gozet does not contest the evidence that on Respondent's website an offer for sale "of all licensed active Company, registered trademark and logo, domain - website" was made. In that context the submission of Mr. Gozet, according to which "Turk.net", an affiliate company of the Complainant, had stolen his domain 3 times from October 1999 to December 1999, cannot be considered in favor of the Respondent, since it is not clear what is meant with that submission and no evidence which would clarify its meaning was submitted. The Panelist is therefore inclined to accept Complainant's submission that the Respondent attempted to sell the domain name <sabanci.com> for an amount in excess of his out-of-pocket expenses.
However, there is no need to base the decision on this argument alone, since the Complainant has submitted and evidenced further arguments documenting bad faith of the Respondent:
2. The Turkish newspaper Gozcu published on November 23, 2000, an article based on an interview with Mr. Gozet, reporting that Mr. Gozet is the owner of the domain name <sabanci.com> and citing Mr. Gozet as follows: My aim is to draw the attention of all Turkish companies. "This is why I chose Sabanci with its sales volume of 10 billion dollars". The Panelist is satisfied that this is clear evidence that Mr. Gozet intentionally chose a domain name, of which he knew that it was the trademark of the Complainant, in which he had no rights. Mr. Gozet even did not undertake this registration in his own name rather in the name of a fictitious company, which he chose to be the trade name of the Complainant, simply substituting the suffix "Inc", wrongly indicating the character of the Registrant as being an incorporated company, for the suffix A.S., standing for the Complainant's incorporation in Turkey.
The Panelist concludes from this evidence that the Registrant has registered the domain name <sabanci.com> in order to prevent the Complainant from reflecting his trademark in a corresponding domain name in the .com domain.
3. As said before, the Respondent at least until very recently entertained a website under the domain name <sabanci.com> in which it offered various activities similar to those of the Complainant, apparently without having ever exercised a real business and without ever having been able to serve visitors of its website. On this website the Respondent used prominently a logo which is identical with the SABANCI logo of the Complainant, and also the SA logo of the Complainant. Repeatedly Respondent also provided varying text-blocks in Turkish language on its website, giving strong evidence that it intended to attract visitors from Turkey. Consequently, the Respondent had deliberately designed its website in a manner which was dedicated to make visitors believe that they visited Complainant's website or at least a website of a company somehow related to the Complainant.
In the interviews given to the Turkish press and to the Turkish CNN Mr. Gozet also repeatedly admitted that Respondent's website was very often visited and mostly by - Turkish - clients of the Complainant. In the interview with the Turkish CNN he said: "Most of the business proposals are from Turkey. Frankly speaking, it must be pretty difficult to be Sabanci, for most peoples are asking for money in some way or another".
From these facts the Panelist concludes that the Respondent has registered the domain name <sabanci.com> primarily for the purpose of disrupting the business of the Complainant, and that by using that domain name in the described manner, over the years it has intentionally attempted to attract 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 its website, and the products and services on that website. Even if the Respondent apparently was not able to respond to the demands submitted to it, the Panelist is satisfied that this was done for commercial gain. This follows from the contents of the website, clearly promoting a variety of businesses, and from Mr. Gozet's interviews. Under the Policy, it is not necessary (as the Respondent believes) that the Complainant proves that the Respondent had profit by using Complainant's name.
Taking all these factors, as discussed under 1, 2 and 3, and as demonstrated and evidenced by the Complainant, together, the Panelist is satisfied that the Respondent has registered and is using the domain name <sabanci.com> in bad faith. In particular the contents of the interviews given by Mr. Gozet are convincing evidence, and Mr. Gozet in his Response for the Respondent cannot decline responsibility for these interviews by simply stating that the press news are on the responsibility of the related media group.
The Panel decides that the Complainant has proven each of the three elements of paragraph 4(a) of the Policy.
Pursuant to paragraph 4(I) of the Policy and paragraph 15 of the Rules, the Panel requires that the registration of the domain name <sabanci.com> be transferred to the Complainant.
Dr. Gerd F. Kunze
Dated: September 25, 2001