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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

KOC Holding A.S. v. WhoisGuard Protected / David Baro

Case No. D2020-1776

1. The Parties

The Complainant is KOC Holding A.S., Turkey, represented by June Intellectual Property Services Inc., Turkey.

The Respondent is WhoisGuard Protected, Panama / David Baro, Canada.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 8, 2020. On July 8, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 8, 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. The Center sent an email communication to the Complainant on July 10, 2020 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 amended Complaint on July 15, 2020.

The Center verified that the Complaint together with the amended 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 July 17, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 6, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 7, 2020.

The Center appointed Lynda M. Braun as the sole panelist in this matter on August 21, 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

Founded in 1926, the Complainant is one of Turkey’s largest industrial and services group in terms of revenue, exports, share in the Istanbul Stock Exchange and number of employees. The Complainant ranks as one of the 50 largest publicly traded companies in Europe and among the largest 200 companies in the world. The Complainant provides services in the energy, automotive, consumer durables and finance sectors.

The Complainant has been using the KOÇ trademark since at least 1938 and owns registered trademarks for KOÇ in Turkey through the Turkish Patent and Trademark Office, registered on December 15, 1999, with the Registration No. 99 021873; in Azerbaijan, Registration No. N2007 1034; in Bulgaria, Registration No. 51042; and as a European Union Trademark, through the European Union Intellectual Property Office, European Union Trade Mark Registration No. 003428513. The aforementioned trademarks will hereinafter collectively be referred to as the “KOÇ Mark”. The Complainant has been using the KOÇ Mark continuously and extensively and is well known in Turkey and in certain other jurisdictions in Asia and Europe. In addition, the Complainant holds domain name registrations for <koc.com> and <koc.com.tr>, which resolve to its official websites.

The Disputed Domain Name was registered on May 4, 2020, and resolved to the Respondent’s website that displayed the Complainant’s KOÇ Mark and logo, the Complainant’s address and a WhatsApp phone number so that potential investors could contact the Respondent to open an account.1

The Respondent also apparently configured the Disputed Domain Name for email functions, since it used the email address “[...]@kocholdinginvestment.com”, to impersonate the Complainant and to contact potential investors to request that they invest in the Complainant and eventually receive a large profit. The individuals contacted by the Respondent were the targets of the Respondent’s email fraudulent phishing scheme, as they were asked to send money as an investment to the Respondent. Copies of the emails from potential investors were submitted by the Complainant as annexes to the Complaint.

5. Parties’ Contentions

A. Complainant

The following are the Complainant’s contentions:

- the Disputed Domain Name is confusingly similar to the Complainant’s trademark.
- the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
- the Disputed Domain Name was registered and is being used in bad faith.
- the Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.

B. Respondent

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

6. Discussion and Findings

In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)(i-iii)):

(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark. The Panel concludes that the Disputed Domain Name is confusingly similar to the KOÇ Mark.

It is uncontroverted that the Complainant has established rights in the KOÇ Mark based on its years of use as well as its registered trademarks for the KOÇ Mark in various jurisdictions worldwide. The general rule is that “registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. See CWI, Inc. v. Domain Administrator c/o Dynadot, WIPO Case No. D2015-1734. The Respondent has not rebutted this presumption, and therefore the Panel finds that the Complainant has rights in the KOÇ Mark.

The Disputed Domain Name <kocholdinginvestment.com> consists of the KOÇ Mark (with the Turkish letter “ç” written in ASCII letter “c”, just like the Complainant’s own domain name <koc.com>) in its entirety followed by the dictionary terms “holding” and “investment”, followed by the generic Top-Level Domain (“gTLD”) “.com”. It is well established that a disputed domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of a descriptive or dictionary word. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo, WIPO Case No. D2011-0795; see also Hoffmann-La Roche, Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923. As stated in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”.

Finally, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182. Thus, the Disputed Domain Name is confusingly similar to the Complainant’s KOÇ Mark.

Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.

B. Rights or Legitimate Interests

Under the Policy, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production of evidence to demonstrate rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.

The Complainant has not authorized, licensed, or otherwise permitted the Respondent to use its KOÇ Mark. The Complainant does not have any type of business relationship with the Respondent, nor is the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Name. Instead, the Panel finds that the Respondent is improperly using the Disputed Domain Name for a fraudulent purpose and for commercial gain. The Respondent registered the Disputed Domain Name in an attempt to appear associated or affiliated with Complainant and to use the emails it created from the Disputed Domain Name in connection with a phishing scheme. Thus, the Respondent did not use or have an intention to use the Disputed Domain Name in connection with a bona fide offering of goods or services and has no rights or legitimate interests in the Disputed Domain Name. There is also no evidence that the Respondent is commonly known by the Disputed Domain Name or by any name similar to it.

Finally, where a respondent has registered and is using a domain name in bad faith (see the discussion below), the respondent cannot be reasonably found to have made a bona fide offering of goods or services. In this case, 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 not submitted any substantive arguments or evidence to rebut the Complainant’s prima facie case.

Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.

C. Registered and Used in Bad Faith

The Panel finds that based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy.

First, the Disputed Domain Name was registered after the Complainant first began using its KOÇ Mark. The Panel finds it likely that the Respondent had the Complainant’s KOÇ Mark in mind when registering the Disputed Domain Name.

Second, the Respondent used the Disputed Domain Name to impersonate the Complainant and perpetrate a phishing scheme directed at the Complainant, a strong indication of bad faith. The Respondent’s phishing scheme to send fraudulent emails purporting to come from the Complainant, seeking money for investment and to turn a profit, evidences a clear intent to disrupt the Complainant’s business, deceive individuals, and trade off the Complainant’s goodwill by creating an unauthorized association between the Respondent and the Complainant’s KOÇ Mark. See Banco Bradesco S.A. v. Fernando Camacho Bohm, WIPO Case No. D2010-1552. Such conduct is emblematic of the Respondent’s bad faith registration and use of the Disputed Domain Name. See Petróleo Brasileiro S.A. - Petrobras v. AK Bright, WIPO Case No. D2013-2063 (considering the reputation of the complainant and the emails sent by the respondent using the complainant’s trademark, the respondent is held to have registered and used the disputed domain name in bad faith). Further, UDRP panels have found that email-based phishing schemes that use a complainant’s trademark in the disputed domain name are evidence of bad faith. See, e.g., DeLaval Holding AB v. Registration Private, Domains By Proxy LLL / Craig Kennedy, WIPO Case No. D2015-2135.

Finally, the registration of a domain name that reproduces a trademark in its entirety (being identical or confusingly similar to such trademark) by an individual or entity that has no relationship to that mark, without any reasonable explanation on the motives for the registration, may be sufficient in certain circumstances to infer an opportunistic bad faith. See Ebay Inc. v. Wangming, WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163. Based on the circumstances here, the Respondent registered and is using the Disputed Domain Name in bad faith to target the Complainant’s KOÇ Mark for commercial gain.

Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant.

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 <kocholdinginvestment.com> be transferred to the Complainant.

Lynda M. Braun
Sole Panelist
Date: August 27, 2020

1 As of the writing of this decision, the Disputed Domain Name resolves to an inactive landing page that states: “This site can’t be reached. kocholdinginvestment.com’s server IP address could not be found.”

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