WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Koc Holding A.S. v. WhoisGuard Protected, WhoisGuard, Inc. / David Baro
Case No. D2020-2782
1. The Parties
The Complainant is Koc Holding A.S., Turkey, represented by June Intellectual Property Services Inc., Turkey.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / David Baro, Canada.
2. The Domain Name and Registrar
The disputed domain name <koctradeinvestment.com> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 22, 2020. On October 22, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 22, 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 October 26, 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 amendment to the Complaint on November 2, 2020.
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 November 13, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 3, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 4, 2020.
The Center appointed William R. Towns as the sole panelist in this matter on December 16, 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
The Complainant is a large industrial and services group founded in Turkey in 1926. The Complainant is a leading investment holding company in Turkey and the only Turkish company to date in the Fortune Global 500. The Complainant also ranks as one of the 50 largest publicly traded companies in Europe and among the largest 200 companies in the world.
The Complainant has used KOÇ as an indicator of source since as early as 1938. The Complainant holds multiple trademark registrations for the KOÇ mark, including the following: Turkish Registration No.99021873, registered by Turkish Patent and Trademark Office on December 15, 1999; Azerbaijan Registration No. N20071034, registered on October 17, 2007; Bulgaria Registration No. 51042; and European Union Trademark Registration No. 003428513, registered on January 21, 2009. The Complainant submits it uses the KOÇ mark extensively and as a result has become a well-known mark in Turkey as well as other jurisdictions in Asia and Europe. The Complainant also holds domain name registrations for <koc.com> and <koc.com.tr>, both of which are used with the Complainant’s official websites.
The disputed domain name <koctradeinvestment.com> was registered on August 6, 2020, according to the Registrar’s WhoIs records. The disputed domain name until recently resolved to a “clone site” prominently displaying the Complainant’s KOÇ mark and logo, and impersonating the Complainant. The disputed domain name presently resolves to an inactive English language landing page stating: “This site can’t be reached”. . . “[k]octradeinvestment.com’s server IP address could not be found.” The record reflects that at least one individual who invested money with the Respondent became suspicious of a scam and on May 30, 2020, contacted the Complainant’s representative. The Complainant’s representative replied to the individual on May 31, 2020, warning that the Respondent was operating a fraudulent scam and seeking to defraud unsuspecting investors.
5. Parties’ Contentions
A. Complainant
The Complainant submits that the disputed domain name <koctradeinvestment.com> is identical or confusingly similar to the Complainant’s KOÇ mark and clearly recognizable in the disputed domain name. The Complainant maintains that the inclusion in the disputed domain name of the descriptive words “investment” and “trade” do not serve to distinguish the disputed domain name from the Complainant’s mark.
The Complainant maintains it has generated significant goodwill in the KOÇ mark and has acquired a substantial reputation from the use of the mark over many years. The Complainant asserts that the disputed domain name undoubtably would be understood as referring to the Complainant and the Complainant’s KOÇ mark, thereby creating in a likelihood of confusion. The Complainant emphasizes that the Respondent has actively sought to create a likelihood of confusion with Internet users for the Respondent’s own benefit or profit.
The Complainant maintains that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant states that the Respondent has not been licensed or otherwise permitted to use the Complainant’s KOÇ mark or to register domain names incorporating the Complainant’s mark. The Complainant observes that the Respondent is not commonly known by the disputed domain name and is not making a legitimate noncommercial or other fair use of the disputed domain name.
The Complainant submits that the Respondent has not used or made demonstrable preparations to use the dispute domain name in connection with a bona fide offering of goods or services. To the contrary, the Complainant remarks that the Respondent has used the disputed domain name for illegal activities such as phishing and for fraudulent financial gain. The Complainant states it has received emails from several third parties confirming the Respondent’s fraudulent activities.
The Complainant submits that the Respondent registered and has used the disputed domain name in bad faith. The Complainant is adamant that the Respondent had the Complainant’s well-known KOÇ mark in mind when registering the disputed domain name, which the Complainant maintains the Respondent has deliberately used to impersonate the Complainant in the perpetration of a fraudulent investment scam.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) the 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 with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the view is that the burden of production shifts to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar
The Panel finds that the disputed domain name <koctradeinvestment.com> is confusingly similar to the Complainant’s KOÇ mark, in which the Complainant has established rights through registration and extensive use. In considering identity and confusing similarity, the first element of the Policy serves essentially as a standing requirement.1 The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the complainant’s trademark and the disputed domain name.
The Complainant’s KOÇ mark is clearly recognizable in the disputed domain name.2 The inclusion of the descriptive terms “trade” and “investment” in the disputed domain name does not serve to dispel the confusing similarity of the disputed domain name to the Complainant’s mark. When the relevant trademark is recognizable in the disputed domain name the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise), does not preclude a finding of confusing similarity under paragraph 4(a)(i) of the Policy.3 Generic Top-Level Domains (“gTLDs”) generally are disregarded when evaluating the identity or confusing similarity of the Complainant’s mark to the disputed domain name under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the gTLD.4
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been licensed or otherwise authorized to use the Complainant’s KOÇ mark. The Respondent notwithstanding registered the disputed domain name, which appropriates the Complainant’s mark in its entirety, and which the Respondent by all appearances has used with the aim of illicitly profiting from a fraudulent investment scam.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not submitted a response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. The Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.
The Panel concludes from the record in this case that the Respondent was aware of the Complainant and had the Complainant’s KOÇ mark in mind when registering the disputed domain name. The disputed domain name is confusingly similar to the Complainant’s mark, and the record clearly establishes that the Respondent registered the disputed domain name with the aim of exploiting and profiting from the Complainant’s mark, impersonating the Complainant in perpetration of a fraudulent investment scam .
Having regard to all of the relevant circumstances in this case, and in the absence of any explanation by the Respondent, the Panel concludes that the Respondent has not used or demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services, and that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. There is no indication that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy, and nothing in the record before the Panel supports a finding of the Respondent’s rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. As previously noted, the Panel finds that the Respondent clearly was aware of the Complainant and the Complainant’s KOÇ mark when registering the disputed domain name. The Respondent’s registration and use of the disputed domain name in the attendant circumstances suggests opportunistic bad faith. The record is convincing that the Respondent’s motive in relation to the registration and use of the disputed domain name was to capitalize on the Complainant’s trademark rights by creating a likelihood of confusion with the Complainant’s mark, with the ultimate objective of impersonating the Complainant in an attempt to profit illicitly therefrom.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
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 <koctradeinvestment.com> be transferred to the Complainant.
William R. Towns
Sole Panelist
Date: December 28, 2020
1 See WIPO Overview 3.0 , section 1.7 .
2 See WIPO Overview 3.0, section 1.8 and cases cited therein.
3 Id.
4 See WIPO Overview 3.0 , section 1.11 .