WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kleinwort Benson Group Limited and Société Générale v. Cenk Erdogan, Trnames Domain Name Services
Case No. D2016-2377
1. The Parties
The Complainants are Kleinwort Benson Group Limited (“Kleinwort Benson”) of London, United Kingdom of Great Britain and Northern Ireland, and Société Générale of Paris, France, represented by Nameshield, France.
The Respondent is Cenk Erdogan, Trnames Domain Name Services of Ankara, Turkey.
2. The Domain Name and Registrar
The disputed domain name <kleinworthambros.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 23, 2016. On November 23, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 28, 2016, 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 Complainant filed an amendment to the Complaint on December 1, 2016.
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 December 1, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 21, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 22, 2016.
The Center appointed Olga Zalomiy as the sole panelist in this matter on January 6, 2017. 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 Complainants are part of the same financial services group. In this regard, the bank Kleinwort Benson was acquired by Société Générale in March 2016, and Société Générale had previously acquired SG Hambros (SG Hambros Bank Limited) in 1988.
Kleinwort Benson is the owner on record of European Union trademark KLEINWORT, number 8,648,421, registered on March 30, 2010 in classes 16, 35 and 36, whereas its parent company Société Générale is the owner of the European Union trademark HAMBROS, number 209,254, registered on September 23, 1998 in class 36.
On March 15, 2016 information about the Kleinwort Benson’s acquisition by Société Générale and a possibility of changing its brand to integrate the HAMBROS mark appeared in the news.
The Respondent registered the Domain Name on October 11, 2016, the same day that Société Générale filed an application for registration of the KLEINWORT HAMBROS trademark with the European Union Intellectual Property Office. The Domain Name directs to a Godaddy webpage offering the Domain Name for sale at USD 2,850.
5. Parties’ Contentions
The Complainants claim that the Domain Name is confusingly similar to their trademarks KLEINWORT and HAMBROS because the Domain Name includes in its entirety the above mentioned trademarks without any adjunction of letter or word. The Complainants argue that the addition of the a generic Top-Level Domain (“gTLD”) suffix “.com” is not sufficient to escape the finding of the confusing similarity. The Complainants allege that news about the merger of the KLEINWORT and HAMBROS brands was announced several months before the registration of the Domain Name.
The Complainants contend that the Respondent has no rights or legitimate interests in respect of the Domain Name and it is not related in any way with the Complainants’ business. The Complainants claim that they do not carry out any activity for, nor have any business with the Respondent. The Complainants allege that they neither licensed nor granted any authorization to the Respondent to make any use, or apply for registration of the Domain Name. The Complainants claim that the Respondent tried to profit from the goodwill and reputation attached to the Complainants’ trademarks because the Domain Name redirects to a Godaddy webpage, in which the domain name is offered for sale at USD 2,850.
The Complainants allege that the Respondent has registered and used the Domain Name in bad faith because the Domain Name is confusingly similar to the Complainants’ trademarks and because the Respondent has engaged in a pattern of registering domain names incorporating trademarks of third parties.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the UDRP, to succeed in this proceeding, the Complainants must prove each of the following elements with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
A. Identical or Confusingly Similar
The Panel accepts that the Complainants are the owners of the European Union trademark registration KLEINWORT Number. 8,648,421, registered on March 30, 2010, and the European Union trademark registration HAMBROS Number. 209,254 registered on September 23, 1998.
The Panel finds that the Domain Name is confusingly similar to the Complainants’ KLEINWORT and HAMBROS marks because the Domain Name combines the Complainant’s KLEINWORT and the HAMBROS trademarks. The Complainants’ trademarks are incorporated into the Domain Name in their entirety and are easily recognizable as such in the Domain Name. The addition of a gTLD suffix such as “.com” is to be generally disregarded under the confusing similarity test (as the gTLD is a technical requirement of registration)1 .
Therefore, the first UDRP element has been satisfied.
B. Rights or Legitimate Interests
The Complainants contend that the Respondent has no rights or legitimate interests in respect of the Domain Name. It is undisputed that neither the Respondent, nor its organization is related in any way with the Complainants’ businesses. Nor have the Complainants authorized or granted the Respondent any permission to register the Domain Name incorporating the Complainants’ trademarks. There is not any evidence that the Respondent is making a legitimate noncommercial or fair use of the Domain Name insofar as the Domain Name redirects to a Godaddy webpage, in which the Domain Name is on sale for USD 2,850.
The Complainants, therefore, have made out a prima facie case in respect of the lack of rights or legitimate interests of the Respondent and the Respondent has failed to rebut it. Therefore, the second UDRP element has been satisfied.2
C. Registered and Used in Bad Faith
The Panel finds that the Respondent registered the Domain Name in bad faith, with the Complainants in mind and in order to take advantage of the confusion between the Domain Name and any potential rights of the Complainants. The Complainants first registered the KLEINWORT trademark on March 30, 2010 and the HAMBROS trademark on September 23, 1998, many years prior to the Domain Name registration. In addition, the evidence on the case file shows that on March 15, 2016, information about Kleinwort Benson’s acquisition by Société Générale and a possibility of changing its brand to integrate the HAMBROS mark was discussed in the news. It cannot be a coincidence that the Respondent registered and listed the Domain Name for sale for USD 2,850 on the same day Société Générale applied for registration of the KLEINWORT HAMBROS mark. Also, the evidence shows that the Respondent has engaged in a pattern of registering domain names on the same day trademark applications were filed with the European Union Intellectual Property Office and then offering such domain names for sale at a price far exceeding the Respondent’s out-of-pocket costs directly related to their registration. See, Unipol Gruppo Finanziario S.p.A. v. Cenk Erdogan, Trnames Domain Name Services, WIPO Case No. D2016-1127; and Covestro Deutschland AG v. Cenk Erdogan, This domain name is for sale, WIPO Case No. D2016-1886. Under Paragraph 4(b)(ii) of the UDRP, such pattern of conduct represents evidence of bad faith registration and use.
Therefore, the Panel finds that the Complainants satisfied the third UDRP element.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <kleinworthambros.com> be transferred to the Complainant.
Date: January 17, 2017
1 Paragraph 1.2, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).