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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Hacı Ömer Sabancı Holding A.Ş. v. Onofeghara Wisdom

Case No. D2020-1046

1. The Parties

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

Respondent is Onofeghara Wisdom, Nigeria.

2. The Domain Name and Registrar

The disputed domain name <sabancislamicinvestment.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 28, 2020. On April 29, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 29, 2020, 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. On May 1, 2020, Complainant submitted an amended Complaint adding a second disputed domain name. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the latter disputed domain name. On May 1, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the additional disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on May 4, 2020, providing the registrant and contact information disclosed by the Registrars, and inviting Complainant to amend the Complaint adding the Registrar-disclosed registrants as formal Respondents and provide relevant arguments or evidence demonstrating that all named Respondents are, in fact, the same entity and/or that all domain names are under common control; and/or file a separate complaint. Complainant filed an amendment to the Complaint on May 4, 2020, removing the second disputed domain name from the dispute.

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 Respondent of the Complaint, and the proceedings commenced on May 13, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 2, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 3, 2020.

The Center appointed Lynda J. Zadra-Symes as the sole panelist in this matter on June 11, 2020. 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

Complainant is a Turkish conglomerate, established in 1925. Its main business areas are banking, insurance, energy, industrials, cement and retail. Complainant has eight global partnerships, 12 public companies, over 62 thousand employees and has active operations in 12 countries.

Complainant is the owner of numerous registrations for the trademark SABANCI in Turkey and many other countries, including the following:

- Turkish trademark Registration No. 170885, registered May 13, 1997;
- Turkish trademark Registration No. 2015 00400, registered October 20, 2015;
- European Union Trade Mark (“EUTM”) Registration No. 1273407, registered March 18, 2015;
- EUTM Registration No. 1287321, registered October 7, 2015;
- EUTM Registration No. 000262675, registered August 26, 1998.

In addition, Complainant owns and uses numerous domain names that include its SABANCI marks, including <sabanci.com>, (since 1996), <sabanci.com.tr>, <sabanci.cn>, <sabanci.cn.com>, <sabanci.com.tw>, <sabanci.jp>, <sabanciholding.com.tr>, <sabanci.info> and many others.

The disputed domain name was registered on April 10, 2020, and it resolves to a website offering financial services with Complainant’s logo displayed on the heading of the page.

Complainant contacted Respondent on April 17, 2020, using the email address provided in the disputed domain name registration and asked Respondent to cease infringement of Complainant’s trademark rights. Respondent did not answer Complainant’s email.

5. Parties’ Contentions

A. Complainant

Complainant contends that the disputed domain name is confusingly similar to Complainant’s mark, that Respondent has no rights or legitimate interests in the disputed domain name and that the disputed domain name has been registered and is being used in bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

In order to succeed in its claim, Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests with respect to the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

Paragraph 15(a) of the Rules instructs the Panel to decide a complaint “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

A. Identical or Confusingly Similar

Complainant has demonstrated that it has rights in the trademark SABANCI in connection with banking and insurance services, and related services. The disputed domain name incorporates Complainant’s mark in its entirety, with the addition of the terms “islamic investment”. The trademark SABANCI is the dominant element of the disputed domain name, and the terms “islamic investment” are merely descriptive and related to Complainant’s field of activity. The addition of these terms do not prevent a finding of confusing similarity between the disputed domain name and Complainant’s trademark.

Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark.

B. Rights or Legitimate Interests

Complainant contends that Respondent is not affiliated with or connected to Complainant in any way. At no time has Complainant licensed or otherwise endorsed, sponsored or authorized Respondent to use Complainant’s mark or to register the disputed domain name. The record is devoid of any facts that establish any rights or legitimate interests of Respondent in the disputed domain name. There is no evidence that Respondent has been commonly known by the disputed domain name or that it has any rights that might predate Complainant’s adoption and use of the SABANCI trademark. Complainant’s first use of the SABANCI trademark dates back to as early as 1996, more than two decades ago and well before the registration of the disputed domain name on April 10, 2020.

Respondent has not made, and is not making, a legitimate noncommercial or fair use of the disputed domain name. Respondent has not used the disputed domain name in connection with the bona fide offering of goods or services. The disputed domain name resolves to a website displaying Complainant’s trademark and logo and offering investment services, as if such services were actually provided by Complainant’s group of companies.

Indeed, the record indicates that Respondent is deliberately impersonating Complainant by including photos and names of Complainant’s employees and managers on its website. This is not a bona fide offering of goods or services. Respondent has knowingly adopted Complainant’s mark in the disputed domain name in an effort to create the false impression that Respondent is associated with Complainant and is an authorized representative of Complainant to defraud unsuspecting consumers into providing their financial information, or providing payment, to Respondent for Respondent’s personal profit and gain.

The Panel finds that Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Respondent was clearly aware of Complainant and its SABANCI trademark. Respondent is using Complainant’s SABANCI trademark and logo on its website and also displays photos and names of Complainant’s directors and employees in a clear attempt to create a likelihood of confusion and obtain fraudulent financial benefit from Complainant’s mark by luring consumers into believing that Respondent’s website is associated with Complainant.

The record indicates that Respondent had actual knowledge of Complainant’s rights in the SABANCI trademark prior to registering the disputed domain name and that Respondent registered and uses the disputed domain name in order to intentionally create a likelihood of confusion with Complainant’s mark.

In addition, Respondent appears to be involved in a previous UDRP case, namely Nationwide Mutual Insurance Company v. WhoisGuard, Inc. / Onofeghara Wisdom, Onofegharawisdom Company lmt, WIPO Case No. D2019-0748. In that case, as in this one, Respondent did not reply to the complainant’s contentions and the Panel ordered that the disputed domain name be transferred to complainant. The latter demonstrates Respondent’s pattern of bad faith registration of the domain names.

Accordingly, the Panel finds that Respondent has registered and used the disputed domain name in bad faith.

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 <sabancislamicinvestment.com> be transferred to Complainant.

Lynda J. Zadra-Symes
Sole Panelist
Date: June 23, 2020

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