WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hacı Ömer Sabancı Holding A.Ş. v. peaceofmind peaceofmind and venturesabanc venturesabanc
Case No. D2021-0821
1. The Parties
The Complainant is Hacı Ömer Sabancı Holding A.Ş., Turkey, represented by Bozoğlu İzgi Attorney Partnership, Turkey.
The First Respondent is peaceofmind peaceofmind, Nigeria and the Second Respondent is venturessanbanc venturessanbanc, Nigeria.
2. The Domain Names and Registrars
The disputed domain name <venturesabanci.com> is registered with NameCheap, Inc.
The disputed domain name <venturessabanci.com> is registered with PDR Ltd. d/b/a PublicDomainrRegistry.com (collectively referred to as the “Registrars”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 19, 2021 in relation to the disputed domain name <venturesabanci.com>. On March 19, 2021, the Center transmitted by email to NameCheap, Inc a request for registrar verification in connection with the disputed domain name <venturesabanci.com>. On March 19, 2021, NameCheap, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the <venturesabanci.com> 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 March 22, 2021 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 March 26, 2021.
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 First Respondent of the Complaint, and the proceedings commenced on March 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 15, 2021. The First Respondent did not submit any response. Accordingly, the Center notified the First Respondent’s default on April 16, 2021.
The Center appointed Zoltán Takács as the sole panelist in this matter on April 28, 2021. 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.
On May 6, 2021, the Complainant filed a Supplemental Filing with the Center. In the Supplemental Filing the Complainant notified the Center that after the present UDRP procedure has been started it found another domain name <venturessabanci.com>, which also uses its SABANCI trademark and is used for fraudulent activities. The Complainant stated that it is likely that the registrants of both domain names are either the same or closely connected and requested that the domain name <venturessabanci.com> is added to the Complaint.
On May 7, 2021, the Panel advised the Center that he would consider the Complainant’s request to add the second disputed domain name to this proceeding, and asked the Center to contact PDR Ltd. d/b/a PublicDomainrRegistry.com to verify ownership of the <venturessabanci.com> disputed domain name. On May 11, 2021, PDR Ltd. d/b/a PublicDomainrRegistry.com transmitted by email to the Center its verification response disclosing registrant and contact information for the <venturessabanci.com> disputed domain name, which differed from the First Respondent.
On May 14, 2021, the Panel issued Procedural Order No. 1, stating that the Complainant be given five days to amend the Complaint to include the registrant of the disputed domain name <venturessabanci.com> and file submissions on consolidation. The Panel further stated that upon receipt of the Complainant’s amended Complaint the Second Respondent be given five days to file a response.
On May 18, 2021, the Complainant filed an amended Complaint adding the disputed domain name <venturessabanci.com> and registrant of it as Second Respondent to the Complaint and submitted arguments concerning its request for consolidation.
The due date for the Second Respondent to respond to the amended Complaint was May 24, 2021. The Second Respondent did not submit any response. Accordingly, the Center notified the Second Respondent’s default on May 25, 2021.
4. Factual Background
The Complainant is the parent company of Sabanci Group, which is one the largest group of companies in Turkey doing business since 1925. The Complainant’s multinational business partners include prominent global companies such as Aviva, Bridgestone, Carrefour, and Philip Morris.
The Complainant has an extensive portfolio of trademarks consisting of or comprising the SABANCI trademark, including:
- Turkish Trademark Registration No. 170885 for the word mark SABANCI registered on May 13, 1997 for services of classes 35, 36, 38, 41, and 42 of the Nice Agreement Concerning the International Classification of Good and Services for the Purposes of the Registration of Marks (“Nice Agreement”) and
- International Trademark Registration (“IR”) No. 1273407 for the word mark SABANCI registered on March 18, 2015 in multiple classes of the Nice Agreement.
Since September 6, 1996 the Complainant owns the domain name <sabanci.com> and the sub domain <ventures.sabanci.com>.
The First Respondent registered the <venturesabanci.com> disputed domain name on December 2, 2020, and has used it for sending fraudulent emails to third parties falsely impersonating the Complainant.
The Second Respondent registered the <venturessabanci.com> disputed domain name on March 4, 2021, and is using it to host a copycat version of the Complainant’s website.
5. Parties’ Contentions
The Complainant contends that the disputed domain names are confusingly similar to its SABANCI trademark, since they are composed of the SABANCI trademark and the descriptive terms “venture” and “ventures”.
The Complainant further alleges that the Respondents have no rights or legitimate interests in respect of the disputed domain names and are unable to rely on any of the circumstances set out in paragraphs 4(c)(i), (ii), or (iii) of the Policy.
The Complainant claims that the Respondents were aware of the Complainant and its activities and have registered the disputed domain names to take unfair advantage of the Complainant’s SABANCI trademark and reputation attached to it.
The Complainant claims that the Respondents’ use of the disputed domain names to falsely impersonate the Complainant and its employees is further evidence of bad faith registration and use of the disputed domain names.
The Complainant requests that the disputed domain names be transferred from the Respondents to the Complainant.
The Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Preliminary procedural issues – Consolidation of Multiple Domain Names and Respondents
The initial Complaint was filed regarding the disputed domain name <venturesabanci.com>. Following the Complaint notification the Complainant became aware of the disputed domain name <venturessabanci.com> registered by a differently named registrant and requested addition of it to this proceeding.
According to section 4.12.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) requests for addition of domain names to a complaint after it has been notified to the respondent and the proceedings have formally commenced would be addressed by the panel on appointment. In cases where the complainant holds relevant trademark rights and the proposed additional domain name is prima facie registered by the same or related respondent UDRP panels would grant such a request on partial or full re-notification of the proceeding.
Under paragraph 10(e) of the Rules, UDRP panels have the authority to order the consolidation of multiple domain names involving differently named domain name holders.
According to section 4.11.2 of the WIPO Overview 3.0, where a complaint is filed against multiple respondents, UDRP panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties.
In deciding whether to accept the addition of the disputed domain name <venturessabanci.com> to this proceeding, the Panel considered the following:
- the Complainant holds relevant trademark rights regarding both disputed domain names;
- the Respondents’ use of different fictitious names and sharing the same address (No. 3 ogadimma, Aba, Abia State, Nigeria) suggest to this Panel that they are either the same person or entity or closely connected at least. Previous UDRP panels have concluded that in situations where it is clear that the same person is registering domain names using different fictitious names, it is appropriate to proceed in a single Complaint against multiple registrant names (see Adobe Systems Incorporated v. Domain OZ, WIPO Case No. D2000-0057 and Yahoo!, Inc. v. Somsak Sooksripanich and Others, WIPO Case No. D2000-1461);
- the Respondents have been given proper notice of proceedings initiated against them, fair opportunity to present their case and challenge the allegations and evidence submitted by the Complainant, as well as to object to the Complainant’s request for consolidation but have decided not to do so;
- the closely similar factual background regarding registration and use of both disputed domain names justifies hearing and determining them together in order to avoid incurring additional unnecessary costs for the Complainant.
Based on the above discussed facts and circumstances, the Panel grants the Complainant’s request to consolidate both disputed domain names in one proceeding.
6.2. Substantive issues
Paragraph 15(a) of the Rules requires that the Panel’s decision be made “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”.
It has been a consensus view in UDRP decisions that a respondent’s default (i.e., failure to submit a response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true (see section 4.3 of the WIPO Overview 3.0).
A complainant must evidence each of the three elements required by paragraph 4(a) of the Policy in order to succeed on the complaint, namely that;
(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 in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, there are two requirements which the Complainant must establish, first that it has rights in a trademark or service mark, and second that the disputed domain names are identical or confusingly similar to the trademark or service mark.
It has been a consensus view among UDRP panels that if the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights.
The Complainant produced proper evidence of having registered rights in the SABANCI trademark.
For the purpose of this proceeding, the Panel finds that the Turkish Trademark Registration No. 170885 and IR No. 1273407 for the word mark SABANCI satisfy the requirement of having trademark rights for the purpose of the Policy.
Having determined the presence of the Complainant’s trademark rights, the Panel next assesses whether the disputed domain names are identical or confusingly similar to the Complainant’s trademark.
According to section 1.7 of the WIPO Overview 3.0, the standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.
According to section 1.8 of the 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.
According to section 1.11.1 of the WIPO Overview 3.0, the applicable Top-Level Domain (“TLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is generally disregarded under the first element confusingly similar test.
The Complainant’s SABANCI trademark is clearly recognizable in the disputed domain names. The only difference between the Complainant’s trademark and the disputed domain names is addition of the terms “venture” and “ventures”, which are descriptive for new, risk involved business activity and describe the venture capital business of the Complainant.
In view of the Panel, addition of the descriptive words “venture” and “ventures” to the Complainant’s SABANCI trademark in the disputed domain names does not prevent a finding of confusing similarity and the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademark and that requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, a respondent may demonstrate its rights or legitimate interests in a domain name by showing any of the following circumstances, in particular but without limitation:
(i) its use of, or demonstrable preparation to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services;
(ii) it has been commonly known by the domain name;
(iii) it is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
In the present case, the Complainant has submitted sufficient and uncontested evidence that it holds well-established rights in the SABANCI trademark.
The Complainant has never authorized the Respondents to use its SABANCI trademark in any way, and its prior rights in the SABANCI trademark precede the date of registration of the disputed domain names.
According to section 2.1 of the WIPO Overview 3.0, while the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent.
As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with the relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
The Respondents failed to respond, and by doing so failed to offer the Panel any type of evidence set forth in paragraph 4(c) of the Policy, or otherwise counter the Complainant’s prima facie case.
The Panel finds that the Respondents have no rights or legitimate interests in the disputed domain names in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of factors which, if found by the panel to be present, shall be evidence of registration and use of a domain name in bad faith. This non-exclusive list includes:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.
The compelling evidence submitted by the Complainant, in particular at Annex 5 to the amended Complaint convinces the Panel that the Respondents have registered and used the disputed domain names in connection with extensive fraudulent activity.
The First Respondent created email addresses by using the Complainant’s inherently distinctive SABANCI trademark and fake names purporting to be the Complainant’s executives and sent such misleading letters and emails incorporating the disputed domain name <venturesabanci.com> to third parties all intended to obtaining fraudulent financial benefits.
When the Complainant became aware of these fraudulent activities of the First Respondent it requested the Turkish National Computer Emergency Response Center (USOM-TRCERT) to block the website to which the disputed domain name <venturesabanci.com> was pointing.
Two days after the USOM-TRCERT blocked the website to which the disputed domain name <venturesabanci.com> was pointing, on March 4, 2021 the Second Respondent registered the disputed domain name <venturessabanci.com> and used it to host a copycat version of the Complainant’s website. This copycat website lists “firstname.lastname@example.org” as the contact email address, which incorporates the <venturesabanci.com> disputed domain name registered and used by the First Respondent.
The Panel finds implausible that the Respondents would register separate domain names each fully reproducing the Complainant’s SABANCI trademark and adding the same word with one letter difference, with no awareness of the Complainant and its business.
These facts are in view of the Panel evidence that the Respondents acted in concert and with knowledge of the Complainant and its business and chose to register and use the disputed domain names to target the Complainant’s trademark and its business, which amounts to bad faith registration and use of a domain name within the meaning of paragraph 4(b)(iv) of the Policy.
In addition, registering and using domain names linked to the same fraudulent scheme under different, in this case evidently fake names is in the view of the Panel further evidence of bad faith.
Furthermore, the Respondents’ fraudulent, illegal acts directed against the Complainant are clearly capable to seriously damage the commercial reputation, credibility and image of the Complainant and fall within the terms of paragraph 4(b)(iii) of the Policy.
The fact that the disputed domain name <venturesabanci.com> now resolves to a website displaying an error message does not alter the Panel’s conclusion, since this change in use may itself be an indication of bad faith.
Noting the above discussed facts and circumstances the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied.
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 names <venturesabanci.com> and <venturessabanci.com> be transferred to the Complainant.
Date: May 31, 2021