WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hacı Ömer Sabancı Holding A.Ş v. GZuelfikar
Case No. D2011-1891
1. The Parties
The Complainant is Hacı Ömer Sabancı Holding A.Ş of Istanbul, Turkey, represented by Mehmet Gun & Co., Turkey.
The Respondent is GZuelfikar of Koeln, Germany.
2. The Domain Name and Registrar
The disputed domain name <sabanciholding.com> (the “Domain Name”) is registered with GoDaddy.com, Inc. (the “Registrar”)
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 1, 2011. On November 1, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 1, 2011, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 November 4, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 24, 2011. The Response was filed with the Center on November 24, 2011.
The Center appointed Tony Willoughby as the sole panelist in this matter on December 1, 2011. 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 heads the Sabanci Group, a leading Turkish industrial and financial conglomerate, which was founded in 1967 by a Turkish family of that name.
The Complainant is the registered proprietor of a number of trade mark registrations of or including SABANCI. These include Turkish registration No. 170885 dated April 2, 1996 SABANCI (word) for various services including commercial, investment, telecommunications and legal services in classes 35, 36, 38, 41 and 42 and Community Trade Mark No. 000262675 dated May 27, 1996 (registered August 26, 1998) SABANCI (figurative mark) in the same classes for a wide variety of services ranging from advertising services to the provision of food and drink and including, in class 36, insurance services and other services relating to financial affairs and capital investment.
In 2007 the Turkish Patent Institute certified SABANCI to be a trade mark well-known to the Turkish public.
The Domain Name was registered on September 14, 2006 and currently resolves to a pay-per-click parking page featuring links to sites concerned mainly with financial services. From evidence filed by the Complainant (Annex 10) taken from the Internet Archive WayBackMachine it appears that in the early part of 2011 the Domain Name resolved to a website connected to the domain name <kirkisrak.com>, a Turkish language site which is concerned with a place in Turkey named “Kirkisrak”. It also appears from the same Annex 10 that in 2007 and 2008 the Domain Name resolved to a site or sites concerned with “International Charity – World Charity – Hope for Children”. It features a link entitled “Sabancilar Village”, but neither party has seen fit to indicate where that link leads (or led). One of the sites in question features a link to “Sabanci Holding”, but again the Panel does not know where that link leads (or led).
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to its SABANCI trade mark, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered and is being used in bad faith.
The Complainant contends that the Respondent, although resident in Germany, nonetheless has strong Turkish connections evident from his name and the content of the websites to which the Domain Name once resolved (see section 4 above) and will certainly have been aware of the fame of the Complainant’s name and trade mark when he registered the Domain Name. The Complainant contends that Internet users seeking the Complainant in the “.com” domain by reference to its name, “Sabanci Holding”, will find not the Complainant, but the Respondent’s website.
The Respondent contends that the name “Sabanci Holding” is commonplace, incorporating as it does the name “Sabanci”, which the Respondent contends is a surname used by others, and the word “Holding”, which is a popular word worldwide. The Respondent concedes that if the Complainant’s name was “Sabanci Holding”, he could understand the basis for the Complaint, but he contends that the Complainant’s name is not “Sabanci Holding” but its registered corporate name “Hacı Ömer Sabancı Holding A.Ş”.
The Respondent states that the Turkish word “sabanci” means a farmer who uses a plough and as a generic name is available for use by anyone. He states that “Sabancilar” which is the plural form of “sabanci” is a Turkish village and that his grandfather “was a Sabanci and lived in Sabancilar Village in Turkey”.
The Respondent contends that “it is very hard to say” that “Sabanci Holding” is confusingly similar to the full registered corporate name of the Complainant.
The Respondent states that he purchased the Domain Name in good faith in a public auction on September 17, 2006 and that as the first person to register the Domain Name, a generic name, he has a legitimate interest in respect of it.
In response to the allegation of bad faith registration and use the Respondent states: “I bought this domain (SabanciHolding.com) because I had got a project to build a Village finance and culture website between Sabancilar and Kirkisrak in the future. Still I have got this project, I completed some Village websites… I would like to start this project after 4 months.”
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
B. Identical or Confusingly Similar
The Domain Name comprises (a) the Complainant’s trade mark, SABANCI, which the Panel accepts on the evidence of the Complainant will have been well-known in Turkey when the Domain Name was registered; (b) the word “Holding”, which follows the name “Sabanci” in the Complainant’s corporate name; and (c) the generic “.com” domain suffix, which may be ignored for the purpose of assessing identity and confusing similarity under this element of the Policy.
The Panel is satisfied that in this context the word “Holding” is insufficient to diminish the distinctiveness of the Complainant’s trade mark; indeed, the Panel believes it probable that the presence of the word will increase the likelihood of confusion. The Complainant asserts (and the Panel accepts it as very likely) that in Turkey the Complainant is well-known under and by reference to “Sabanci Holding”, it being an obvious abbreviation of the Complainant’s full corporate name.
The Panel finds that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights.
C. Rights or Legitimate Interests
While the Complainant is required to prove all three elements of paragraph 4(a) of the Policy, under this element it is sufficient in the first instance if the Complainant is able to satisfy the Panel that it has a prima facie case. The rationale for this is explained in paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”):
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP [see also paragraph 4.6 below in relation to respondent default]. If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
The Complainant has demonstrated to the satisfaction of the Panel that the Respondent has strong Turkish connections and that the Complainant’s name and trade mark must have been well-known to the Respondent when he registered the Domain Name. The Complainant has also satisfied the Panel on the evidence provided by the Complainant that the use made of the Domain Name to date gives no indication as to why the Respondent could reasonably be said to have a right or legitimate interest in respect of the Domain Name. In the view of the Panel, the Respondent has a case to answer.
As indicated in paragraph 5 above, the Respondent’s answer is that the name, “Sabanci Holding”, is generic, nobody can have any exclusive right to it and as the first time registrant, he has a legitimate interest in respect of it. He also claims to have plans to use the Domain Name for “a Village finance and culture website” concerning two Turkish villages, Sabancilar and Kirkisrak.
Aside from the fact that the Domain Name does not seem to the Panel to be a particularly apt name to choose for a website devoted to two villages, neither of which is named “Sabanci”, the Respondent has put nothing before the Panel to demonstrate the nature or extent of his expressed plans. Moreover, while it is clearly the case that “Sabanci” is a surname in Turkey and may also be a dictionary word for a farmer, the Panel does not regard the combination, “Sabanci Holding”, to be generic. “Holding” is not a word that sits easily with “farmer” and the combination is one that one would expect to be the name of a company. The evidence before the Panel suggests to the Panel that there is only one company in Turkey which is known and recognized by that name. The Panel does not regard the Respondent’s response a sufficient answer to the Complainant’s prima facie case.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
D. Registered and Used in Bad Faith
The Complainant contends that the Respondent registered the Domain Name with knowledge of the Complainant and its trade mark and with the intention of diverting Internet users to the Respondent’s website.
Paragraph 4(b) of the Policy sets out a non-exhaustive list of examples of what shall be evidence of bad faith registration and use for the purposes of paragraph 4(a)(iii) of the Policy. Of these examples, that set out in paragraph 4(b)(iv) is the one in point here, namely:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The Respondent has strong Turkish connections. He mentions that his grandfather is a “Sabanci” and lived in Sabancilar village (see section 5 above) and his websites in the past and as proposed have Turkey as their subject. The Respondent nowhere denies the Complainant’s assertion that the Complainant is a major Turkish industrial conglomerate and has long been well-known in Turkey. The Panel is persuaded that on the evidence before him the Respondent must have registered the Domain Name with the name of the Complainant in mind.
The Panel finds it inconceivable that the Respondent will not have appreciated that, by adopting for the Domain Name the abbreviated version of the Complainant’s name, confusion of Internet users is inevitable. In the view of the Panel a significant proportion of Internet users entering the Domain Name in their browsers are likely to be doing so in the belief that they will be visiting a website of the Complainant.
In the view of the Panel the Respondent must be taken to have intended the natural and probable consequences of his action in this regard and must therefore be taken to have intended to take advantage of the Complainant’s name and trade mark. The Panel notes from the Complainant’s annex 10 that one of the links featured on the Respondent’s website of 4 or 5 years ago (featuring a copyright notice dated 2007) is entitled “Sabanci Holding”
In the 6 years which have transpired since the Domain Name was registered the use made of the Domain Name has been inconsistent. Currently, the Domain Name appears to the Panel to be linked to a pay-per-click parking page, but the Panel is conscious that this was not the case when the Complaint was lodged and the Panel places no reliance upon it, save that as is already apparent in the evidence of the Complainant the use has been erratic and, insofar as the Panel has been able to judge, having little to do with Sabancilar village (see section 4 above). The fact that the current parking page features links primarily concerned with financial services bears out what appears on the Complainant’s website, namely that financial services are a major core activity of the group.
The most recent evidence as to what the Respondent plans for the Domain Name is set out in the Response. He states that he proposes to use the Domain Name for “a Village finance and culture website”. Given the Panel’s view that confusion with the Complainant’s name and trade mark is inevitable and that the Complainant’s enterprise includes financial services, the Panel believes that there is a very real risk that not only will Internet users be likely to visit the Respondent’s website believing it to be a website of the Complainant, they are also likely to associate the Complainant with any financial services or information provided by or though the website.
The current use is unacceptable on any basis, but in the view of the Panel, so is the proposed use as disclosed by the Respondent. To the extent that the Respondent’s proposed use can currently be said to be a non-use, it nonetheless represents an unacceptable threat hanging over the head of the Complainant and, as such, a bad faith use for the purposes of paragraph 4(a)(iii) of the Policy.
The Panel finds that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <sabanciholding.com>, be transferred to the Complainant.
Dated: December 3, 2011