The Complainant is Hacı Ömer Sabancı Holding A.Ş. of Istanbul, Turkey, represented by Gün Avukatlik Bürosu Mehmet Gün & Partners, Turkey.
The Respondent is Mejia, John of New York, New York, United States of America (“USA”) / Sedesco, Inc. of New York, New York, USA. 2. The Domain Names and Registrar
The disputed domain names , , ,
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, and are registered with Network Solutions, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 14, 2013. On March 14, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 14, 2013, 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 Center verified that 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 25, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 14, 2013.
The Response was filed with the Center by Sedesco, Inc. (“Sedesco”) on April 12, 2013. Sedesco claims to be the proper Respondent in these proceedings rather than John Mejia as Mr. Mejia was hired by Sedesco to provide information technology services for the company. Thus, when Mr. Mejia registered the disputed domain names that are the subject of this dispute, Mr. Mejia did so on behalf of, and at the request of Sedesco. The Center acknowledged receipt of the Response on April 14, 2013 indicating that the Panel upon appointment has the sole discretion to decide the proper Respondent(s) in this case.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on April 19, 2013. 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 April 25, 2013, the Complainant filed a Supplemental Filing by email. On April 29, 2013, the Respondent filed a reply to the Complainant’s Supplemental Filing. The Complainant indicated that it was filing documents in support of its said Supplemental Filing by way of attachments to its email of April 25, 2013 however such documents (consisting of some 224 pages of evidence) were not received by the Center until May 2 and 3, 2013. 4. Factual Background
The Complainant was founded in 1967 by a family with the surname Sabancı and is the parent company of the Sabancı Group, a leading Turkish industrial and financial conglomerate. The Complainant’s group companies are market leaders in their respective sectors which include financial services, energy, cement, retail, tire, tire reinforcement materials and automotive. The Complainant is listed on the Istanbul Stock Exchange and has controlling interests in eleven other companies also listed on the said Exchange. The Complainant’s group companies operate in 18 countries across various regions in Europe, Asia and South America. In 2010, the consolidated revenues of the Complainant were USD 13 billion with earnings before interest, taxes, depreciation and amortization (EBITDA) of USD 3 billion.
The Complainant is the owner of multiple trademark registrations in Turkey and elsewhere in the world, for the word mark SABANCI, including for example Turkish Trademark No. 170885 registered on April 2, 1996 for services in International Classes 35, 36, 38, 41 and 42. The SABANCI trademark has been recorded as a well-known trademark before the Turkish Patent Institute under No. private/1590. The Complainant is also the owner of various trademark registrations in respect of its SABANCI device mark, being a stylized script of the word SABANCI, in many International Classes covering the different activities of its corporate group, including for example European Community Trademark No. 262675 registered on August 26, 1998 in International Classes 35, 36, 38, 41 and 42.
The First Respondent is an IT services provider for the Second Respondent. The Second Respondent is a Delaware, USA Corporation formed by Mr. Demir Sabancı, its President and Chief Executive Officer, in June 2009 primarily for the purpose of engaging in real estate business in the New York City metropolitan area of the USA. Mr. Demir Sabancı is a cousin of Ms. Güler Sabancı, who is the current chairperson of the Complainant. On September 27, 2010, the First Respondent registered the disputed domain names for and at the request of the Second Respondent.
On June 7, 2011, the Second Respondent filed trademark applications with the USA Patent and Trademark Office in respect of the word marks SABANCI PLACE, SABANCI TOWER, SABANCI CENTER, SABANCI HOUSE, SABANCI PARK, and SABANCI PLAZA, all in class 36 (real estate services). On June 7, 2012, the Complainant filed oppositions to the said applications with the USA Trademark Trial and Appeal Board (“TTAB”). On October 5, 2012, the Second Respondent filed trademark applications with the USA Patent and Trademark Office in respect of the word marks SABANCI BUILDING and SABANCI PROPERTIES, both in class 36 (real estate services). On March 28, 2013, the Complainant filed oppositions to the said applications with the TTAB. The Panel understands that all of the Complainant’s said oppositions remain pending with the TTAB as at the date of this Decision. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain names are confusingly similar to a trademark in which the Complainant owns rights; that the Respondent has no rights or legitimate interests in the disputed domain names; and that the disputed domain names were registered and are being used in bad faith.
The Complainant asserts that each of the disputed domain names contains the Complainant’s registered and well-known trademark as its dominant component. The Complainant notes that the additional components thereof are descriptive terms which do not differentiate the disputed domain names from the Complainant’s trademark. The Complainant asserts that the disputed domain names will cause the consuming public to mistakenly presume a connection between them and the Complainant by virtue of the Complainant’s prominence and reputation in the relevant circles.
The Complainant notes that through wide-ranging pursuits its SABANCI trademark has become synonymous with the Complainant in the minds of a broad range of consumers globally. The Complainant states that it has developed and maintains its worldwide headquarters at a prominent real estate complex in Levent, Istanbul, consisting of two skyscrapers (with a third, larger building already slated and approved for development), and which is commonly referred to as Sabancı Center and/or Sabancı Tower (evidence provided). The Complainant adds that it has been successful in earlier complaints before the Center relating to and .
The Complainant notes that the disputed domain names are not being actively used although they were created in September 2010. The Complainant submits that the Respondent should not be considered to have any legitimate interests in the disputed domain names given that these consist of the Complainant’s trade name and well-known trademark. The Complainant contends that SABANCI is not a widely used generic name but on the contrary is a famous trademark throughout Turkey. The Complainant concludes that it is most probable that the Respondent does not have any rights in respect of the disputed domain names nor can the Respondent be commonly known thereby. The Complainant states that given the Complainant’s reputation it is very unlikely that traders would legitimately choose to use the Complainant’s trademark and trade name however it is more likely that the purpose is to create an impression of an association with the Complainant.
The Complainant notes that the websites associated with the disputed domain names present a list of links which redirect the user to other websites generally of a commercial nature. The Complainant submits that people searching for the Complainant on the Internet will normally expect to find the Complainant under the SABANCI name and trademark, which is its principal identifier, but that, when attempting to find the Complainant in the disputed domain names, such people will reach the websites of the Respondent and thus the said commercial links. The Complainant states that it may reasonably be argued that the Respondent registered the disputed domain names with intent to passively hold them and that such passive holding may constitute evidence of bad faith where the Respondent can demonstrate no rights or legitimate interests in the disputed domain names, and where the disputed domain names are confusingly similar to the Complainant’s trademark. The Complainant also submits that the fact that the disputed domain names were registered in bulk containing the Complainant’s well-known trademark demonstrates bad faith on the Respondent’s part. B. Respondent
The following contentions are made by the Second Respondent, Sedesco, described here for convenience as “the Respondent”. The Respondent submits that it is the proper Respondent in this matter and not Mr. Mejia. The Respondent points to a signed affidavit from Mr. Mejia confirming that he registered the disputed domain names on behalf of the Respondent in terms of his provision of IT services thereto. The Respondent submits that the Complaint should be denied.
The Respondent states that its primary areas of business since 2009 are real estate development and property management in New York City, USA. The Respondent notes that it also has a sourcing and business development division that supplies goods to retailers in Turkey, however this division is operated by an affiliate under its own and separate name. The Respondent explains that the disputed domain names were registered for the Respondent's USA real estate business, and do not involve its said affiliate or its operations in Turkey.
The Respondent notes that the Complainant has failed to provide English translations of its evidence of rights to the SABANCI trademark in Turkey. The Respondent argues that the disputed domain names and the Complainant’s trademarks are not identical and that the Complainant must establish that the disputed domain names and the Complainant’s trademarks are confusingly similar. The Respondent submits that the Complainant has failed in that endeavor in that it has provided no reason why the Panel should consider words such as “pavilion” or “park” as a crucial component of the SABANCI mark; or why a domain name with the words “hotel group” would necessarily cause confusion when coupled with the word "sabanci." The Respondent asserts that the Complainant’s argument on confusing similarity is restricted to the submission that the additional components of the disputed domain names are descriptive terms, yet the Complainant does not explain exactly how and why each of the disputed domain names are confusingly similar, and has thereby failed to satisfy the burden of proof.
The Respondent submits that the Complainant provides no evidence that the disputed domain names would be identified with the Complainant’s particular products or services and notes that prior panels have held that in demonstrating confusing similarity a complainant would have to show at least that the use is focused on the activities to which the trademark relates. The Respondent contends that the Complainant's allegations do not show that its SABANCI mark would be identified with the Eastern United States real estate industry in which the Respondent operates, nor with the world-wide real estate industry in general. The Respondent asserts that the prior cases cited by the Complainant involving and are not in point because these involved domain names that were identical to the Complainant’s trademark, unlike the present case where none of the disputed domain names are identical to the said mark. The Respondent submits that the Complainant has provided no evidence of the use of the phrase “Sabancı Tower” and that its claim of confusing similarity thereby lacks supporting evidence.
With regard to its alleged rights and legitimate interests in the disputed domain names, the Respondent contends that many of the disputed domain names relate to a specific building or real estate development, currently owned by, or planned to be acquired by the Respondent. The Respondent provides addresses of four such properties in New York, USA which it states correlate to the terms “Sabancı Place”, “Sabancı House”, “Sabancı Plaza” and “Sabancı Tower” along with examples of development analyses for one of these properties. The Respondent states that it has developed a variety of promotional items, including calendars, tote bags, key chains, pens and mugs and provides images of such items bearing the names “Sabancı Plaza” and “Sabancı Tower”. The Respondent concludes that its efforts and future plans reflect its use or intent to use the disputed domain names in connection with its bona fide real estate business. The Respondent states that previous panels have rejected an argument based on bare allegations of non-use when a respondent presents sufficient evidence of the use and planned use of domain names in connection with a bona fide business.
The Respondent notes that the Complainant has not alleged that the Respondent has violated any of paragraphs 4(b)(i) to (iv) inclusive of the Policy and submits that the Complainant has failed to prove that the Respondent has engaged in any conduct falling within the four circumstances enumerated therein. The Respondent states that it has not offered the disputed domain names for sale to the Complainant or its competitors, that it has neither prevented the Complainant from using its trademark in a corresponding domain name nor engaged in a pattern of such conduct, that the Parties are not competitors and that the Complainant has failed to prove that the Respondent has intentionally attempted to attract visitors to the Respondent’s websites by creating a likelihood of confusion with the Complainant’s mark. The Respondent refers to the existence of ongoing trademark opposition proceedings noted in the Factual Background section above and explains that the development of its websites is on hold pending the outcome of such proceedings. The Respondent adds that the non-use of the disputed domain names does not on its own constitute bad faith.
The Respondent notes that paragraph 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states, inter alia, that the location of the trademark, its date of registration (or first use) and the goods and/or services for which it is registered may have a bearing on the question of bad faith. With regard to such considerations, the Respondent asserts that the following factors demonstrate that there is no bad faith on the part of the Respondent, namely (i) the geographical distance between the parties' businesses, (ii) the fact that the Parties are engaged in different industries, and (iii) the lack of evidence that the SABANCI mark is well-known in the USA. The Respondent states that the Parties are involved in different industries altogether and that the Complainant’s mark does not apply to real estate business. The Respondent contends that it is therefore unreasonable for the Complainant to argue that the Respondent registered the disputed domain names in bad faith under the belief that the “sabanci” element would confer an advantage to the Respondent's real estate business. C. Complainant’s Supplemental Filing
The Complainant denies that Sedesco is the proper Respondent in this proceeding. The Complainant points out that Mr. Mejia was shown as the registrant of the disputed domain name and argues that in terms of paragraph 4.9 of the WIPO Overview 2.0 the Complainant has the right to initiate the proceeding against Mr. Mejia as the Complainant was not in a position to know the “underlying the registrant” [sic] of the disputed domain names. The Complainant notes however that now that the underlying registrant has been disclosed it wishes to make additional points in light of the pending conflict between the Complainant and the Respondent.
The Complainant confirms that it has filed opposition against the various trademark applications by Sedesco as noted in the Factual Background section above. The Complainant states that in such proceedings it argues that Sedesco is attempting to take “an unfair advantage of the well-reputation of Sabancı name” [sic] by implying that the marks and Sedesco are associated with the Complainant. The Complainant submits that it has filed much evidence in such proceedings supporting the fact that Sabanci name is also very well known among the relevant business circles in the USA.
The Complainant submits that although the Respondent argues that the addition of descriptive terms to the Sabancı trademark does not necessarily create confusion, the Respondent has failed to demonstrate how the addition of terms such as “pavilion”, or “park” or “hotel groups” can sufficiently differentiate the disputed domain names from the word Sabancı and prevents any likelihood of confusion with the Complainant among the public. The Complainant asserts that the Respondent has failed to demonstrate why it chose the Sabancı name as the main component of the disputed domain names. The Complainant notes that the term “Sabancı” is a Turkish word that originated as the surname of the family that founded and has always controlled the Complainant. The Complainant states that this word has long since acquired a strong, unique, and unmistakable secondary meaning and association throughout the world as the trade name of the iconic SABANCI conglomerate of companies. The Complainant asserts that the fact that the Respondent has chosen the term “Sabancı” as the main component of the disputed domain names should also be taken into account as an indicator of the well-known status of SABANCI mark outside Turkey.
The Complainant states that the SABANCI mark has a worldwide reputation including within the relevant business circles in the USA. The Complainant states that it has been present in, and via several affiliates has marketed to, the USA since the early 1980s and that its SABANCI mark has been used prominently in the USA since then in connection with relations with its numerous affiliates, corporate business partners and joint venturers, alumni, and investors. The Complainant notes that it has established and maintains partnerships with a variety of prominent USA companies and institutions, including Citigroup, Hilton International, E. I. Du Pont de Nemours and Company, International Paper, Bridgestone, and Philip Morris, as well as the Massachusetts Institute of Technology (“MIT”) and the Brookings Institution.
The Complainant states that the Sabancı University, which was founded by the Complainant, was modeled after USA institutions of higher learning and since its inception has used the SABANCI trade name in connection with partnerships with respected and influential USA institutions. The Complainant notes that the said University has also partnered with USA institutions for fundraising and the presentation of international conferences and entrepreneurship programs. The Complainant states that graduates from the said University continue their academic pursuits at leading USA universities and are employed by leading USA companies. The Complainant notes that it and the Sabancı Foundation have operated a museum named the Sakip Sabancı Museum since 1998. The said museum has exhibited in the USA and has lent collections to USA institutions.
The Complainant adds that it has been publicly identified as Sabancı in the USA as the focus of numerous media and industry reports including articles published by the Financial Times, TIME, Newsweek, The Economist, Bloomberg, Fortune, and The Wall Street Journal Europe. The Complainant states that it has repeatedly been named among Fortune magazine’s “The Fortune Global 500,” which celebrates the world’s top industrial corporations, and notes that Fortune magazine published extended articles celebrating the Complainant’s 75-year legacy in the international business community in 1994 and 1995.
The Complainant notes that its chairperson Ms. G. Sabancı, and her predecessor, the late Mr. S. Sabancı, have been recognized repeatedly by media in the USA by virtue of the Complainant’s enterprises and that Ms. G. Sabancı is an exceptionally well-known business person in the USA and globally. The Complainant asserts that Ms. G. Sabancı has been recognized by various international periodicals as a prominent and powerful businesswoman, has been awarded a “Clinton Global Citizen Award” and has been appointed to the Global Compact Board, the United Nations’ highest-level advisory body.
The Complainant asserts that while the Respondent has noted that the Complainant has no real estate business, it is widely known that a well-known status acquired in one business can also be transferred to another and that consequently even if the Complainant has no business in real estate services, this does not mean that the Respondent’s use of the SABANCI mark in connection with such services would never create a likelihood of confusion. The Complainant submits that on the contrary because of the world wide recognition of the SABANCI mark in various different industries it is likely that the disputed domain names can create the impression that the Complainant has entered that field of business.
The Complainant produced some 224 pages of documentary evidence consisting inter alia of media reports concerning (1) Ms. G. Sabancı and her predecessor Mr. S. Sabancı, (2) the Complainant, (3) the Sabancı Museum and (4) the Sabancı University. D. Respondent’s Reply to Complainant’s Supplemental Filing
The Respondent, Sedesco, notes that it continues to assert that it is the proper Respondent in the present proceeding and that the fact that the trademark opposition proceedings between the Parties involve numerous marks that are identical to the disputed domain names strains credulity that the Complainant was not aware of the Respondent as the underlying registrant of the disputed domain names.
The Respondent submits that the Complainant’s Supplemental Filing fails to provide any new reason to find confusing similarity between the disputed domain names and the SABANCI mark. The Respondent asserts that the Complainant’s submission regarding how the Respondent has failed to demonstrate that the disputed domain names are differentiated from the SABANCI mark misses the point as it is the Complainant’s burden to prove the existence of confusing similarity.
The Respondent contends that under the Policy a complaint must be denied if the respondent demonstrates use, or preparations to use, the domain name in connection with a bona fide offering of goods or services. The Respondent states that the Complainant’s Supplemental Filing offers no response whatsoever to the Respondent’s evidence on legitimate interest in the disputed domain names despite the Response having set forth use and preparations to use the disputed domain names in the Respondent’s real estate business. The Respondent states that instead of meeting its burden of proof, the Complainant is asking the Panel to assume, without evidence, that any use of the word “Sabancı” in any context and by any business anywhere in the world, automatically satisfies the Complainant’s burden of proof.
The Respondent submits that the Complainant has presented a “hodgepodge” of information and anecdotes about the Complainant in its Supplemental Filing which demonstrates an aim “apparently to throw everything it has against the wall and hope that something will “stick.”” The Respondent asserts that the Complainant has failed to explain how such information is relevant to any of the elements of the Policy and notes that none connects the SABANCI mark to the USA real estate industry.
The Respondent notes that the Complainant has conceded that it has no real estate business. The Respondent asserts that it should not be prevented from using the disputed domain names as part of a bona fide USA real estate business based on the theoretical possibility that the Complainant may enter such business at some time in the future. The Respondent submits that the Complainant is asking the Panel to prevent the use of the word “Sabancı” in any domain name, in any context, in any industry and country, regardless of whether the Complainant operates in the particular industry. The Respondent submits that such unsupported allegations fail to satisfy the Complainant’s burden of proof under the Policy. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith. A. Preliminary Issue: Respondent Identity
As noted above, the Response in the present case has been filed by Sedesco. The WhoIs data discloses that the registrant is “Mejia, John” and this has been verified to the Center by the Registrar. Sedesco asserts and provides evidence, in the form of an affidavit from Mr. Mejia, that it appointed Mr. Mejia’s company to register the disputed domain names on Sedesco’s behalf.
Paragraph 4.9 of the WIPO Overview 2.0 notes that the Rules define the respondent as the holder of a domain name registration against which a complaint is initiated. The Rules also give the Panel power to conduct proceedings in such manner as it considers appropriate in accordance with the Policy and the Rules. As such, the Panel has discretion to determine the appropriate Respondent. In the case of ARN Industries, Inc. d/b/a Halco Lighting Technologies v. CFM Holdings Limited (on behalf of Just Raw Pte Ltd),WIPO Case No. D2011-1094, this Panel identified a similar situation to that of the present case and also referred to the circumstances described in the case of Akris Prêt-à-Porter AG v. Fresh Enterprise Limited and Andrew Kris,WIPO Case No. D2011-0366. In both such cases it was determined that it was appropriate for a third party to join the proceedings as a respondent in light of surrounding circumstances including, in particular, prior contact between the Complainant and such third party, and evidence of the third party’s beneficial interest in the domain names at issue.
In the present case, the Panel has considered the terms of Mr. Mejia’s affidavit and further notes that there is evidence of prior contact between the Complainant and Sedesco, given that the Complainant is actively engaged in trademark opposition proceedings with Sedesco. Those proceedings relate to Sedesco’s applications for eight trademarks, seven of which are substantially identical to ten of the disputed domain names. The Panel also notes that the Complainant has not sought to argue that Sedesco does not have any locus standi in the present proceedings. It appears to the Panel that Sedesco does indeed have a beneficial interest in the disputed domain names. Accordingly, the Panel determines in its discretion that notwithstanding the identity of the registrant on the WhoIs, Sedesco is a proper Respondent in this case. B. Preliminary issue: Parties’ Supplemental Filings
Paragraph 4.2 of the WIPO Overview 2.0 provides the following consensus view on the topic of Supplemental Filings:
“[…] Panels have discretion whether to accept an unsolicited supplemental filing from either party, bearing in mind the need for procedural efficiency, and the obligation to treat each party with equality and ensure that each party has a fair opportunity to present its case. The party submitting its filing would normally need to show its relevance to the case and why it was unable to provide that information in the complaint or response. Most panels that have allowed unsolicited filings have also tended to require some showing of “exceptional” circumstances. Panels which accept a supplemental filing from one side typically allow the other party the opportunity to file a reply to such supplemental filing. In either scenario, or on its own initiative, a panel may in its discretion request further evidence, information or statements from one or other of the parties by way of administrative panel order”.
Having reviewed the Complainant’s Supplemental Filing, the Panel notes that this seeks to address new matters raised by the Response which were apparently not in the Complainant’s contemplation when it filed the Complaint. While the Respondent argues that the Complainant should have known that the Respondent was the same party as that with which the Complainant was engaged in the trademark opposition proceedings noted in the Factual Background section above, and thus that the Complainant should have anticipated the Response in its entirety, the Panel considers that it is nevertheless conceivable that the connection might have been lost on the Complainant and that therefore it is in the interests of fairness that the Complainant’s Supplemental Filing be admitted. The Respondent has taken the opportunity to file a Reply to the said Supplemental Filing and likewise for the same reason the Panel has also admitted this. As noted above, the documents filed in support of the Complainant’s Supplemental Filing, running to some 224 pages, did not reach the Center or the Panel until May 2 and 3, 2013. Nevertheless, the Panel has reviewed and considered these in reaching its Decision. C. Preliminary issue: Suspension or Termination
The Parties’ disclosure that there are active trademark opposition proceedings between them requires further consideration in the context of suspension or termination of the present administrative proceeding. While neither party has sought such suspension or termination in either their principal or supplemental filings, the Panel has discretion to order either of these in terms of paragraph 18 of the Rules, which is headed “Effect of Court Proceedings”. Paragraph 18(a) of the Rules provides:
In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.
As the panel noted in Metropolitan Life Insurance Company v. HLP General Partners Inc.,WIPO Case No. D2005-1323, the text of the above provision refers more broadly to “legal proceedings” notwithstanding the heading “Effect of Court Proceedings”. As such, trademark opposition proceedings may be reviewed in the context of Rule 18. The facts and circumstances here are similar to Metropolitan, supra, in that the present case does not appear to involve a complex dispute over ownership rights. A TTAB decision in favor of registering the Respondent’s marks would strengthen its claims of legitimate rights in the corresponding ten domain names, although not necessarily in the case of the remaining eight. That said, a TTAB decision against such registration would not automatically lead to a conclusion that the Respondent registered and used any or all of the disputed domain names in bad faith in terms of the Policy.
In all of these circumstances, the Panel does not consider it appropriate to exercise its discretion to suspend or terminate the administrative proceeding. It is worth adding that the present Decision should not be regarded by either of the Parties to have any influence or bearing on the TTAB proceedings themselves. D. Identical or Confusingly Similar
The Panel first reminds itself that the generally accepted view of panels is that the test in paragraph 4(a)(i) of the Policy is “a relatively low threshold test for a complainant, the object of which is to establish that there is a bona fide basis for the complaint” (The Perfect Potion v. Domain Administrator,WIPO Case No. D2004-0743).
The Panel is satisfied that the Complainant has rights in the registered trademark SABANCI. While the Respondent is correct that the Complainant failed to supply an English translation of its Turkish trademark certificate, the Panel is broadly satisfied that it can make sense of this without requiring to know the Turkish language. Furthermore, even disregarding the Turkish trademark for the purpose of this element of the Policy, the Panel is content that the Complainant also has rights in its registered European Community trademark for the figurative mark SABANCI, in which the word element may readily be excised from the graphical component (on this subject, see paragraph 1.11 of the WIPO Overview 2.0).
The Complainant’s SABANCI mark is not identical to the disputed domain names however it is incorporated in its entirety as the first element of each, coupled with one or more additional elements which are of a generic or descriptive nature. Each of these additional elements can be broadly associated with real estate activities. The Respondent states that the SABANCI mark, when coupled with the additional elements cannot be confusingly similar because the Complainant has failed to show why confusion results from combining the mark and a real estate term. For its part, the Complainant states that its trademark is the dominant component of each of the disputed domain names and that the addition of descriptive terms do not cause the disputed domain names to be differentiated from the said mark.
The Panel considers that the Complainant’s approach is to be preferred on this particular question. Where a trademark is incorporated in its entirety in a domain name together with one or more additional generic terms it is not for the Complainant to demonstrate that the additional terms are a crucial component of such trademark but rather for the Panel to consider objectively whether the additional elements of such domain name are sufficient to distinguish it from the trademark. For example, paragraph 1.2 of the WIPO Overview 2.0 gives the example of the trademark HEAT incorporated within the domain name whereby the additional letters in the domain name give rise to a common term which leaves the incorporated trademark not recognizable as such. This is not a case of that nature and the Panel considers that the mark SABANCI is the dominant element of each of the disputed domain names and is individually recognizable within all of them.
Numerous previous decisions under the Policy have found that the use of descriptive or generic words in addition to a trademark in a domain name do not prevent the domain name from creating a likelihood of confusion. One or more descriptive elements cannot remove the overall impression made on the public by the trademark which is the dominant element of the domain name (Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil,WIPO Case No. D2000-1409).
In these circumstances, the Panel considers that the Complainant does have a bona fide basis for the Complaint, along the lines of The Perfect Potion, supra and also that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights. Accordingly, the Complainant has established the first element under the Policy. E. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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 Complainant in the present case makes the familiar submissions that the disputed domain names contain its trade name and well-known trademark, that the said mark is not a widely used generic name and that it is most probable that the Respondent does not have any rights in respect thereof. This is sufficient in the Panel’s view to constitute a prima facie case that the Respondent has no rights and legitimate interests in the disputed domain names. It is the consensus of previous decisions under the Policy that where a complainant makes such a prima facie case, the burden of production shifts to the respondent to bring forward evidence of its rights or legitimate interests in the domain names at issue.
The Respondent’s submissions are broadly directed to paragraph 4(c)(i) of the Policy, in that it is the Respondent’s case that, before notice of the dispute, the Respondent had made demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods and services, namely as identifiers of its real estate business and in some cases of certain real estate developments which it is planning. The Respondent provides evidence of merchandise which will be associated with the developments along with some sample computations of development costs and yields. The Respondent also states that its founder’s surname is Sabancı and that its founder is related to the family who founded the Complainant and after which the Complainant is named. The Complainant’s case in its Supplemental Filing is to the effect that the Respondent may not have a legitimate interest in using the name “Sabancı” because this has acquired a strong secondary meaning as the Complainant’s mark and corporate name. The Respondent counters that the Complainant has merely supplied a collection of uses of the term “Sabancı”, none of which prevent the Respondent from having acquired rights and legitimate interests therein.
The Panel is satisfied on the evidence presented by the Respondent, which is not challenged by the Complainant, that the Respondent has made demonstrable preparations to use the disputed domain names in connection with an offering of goods and services before notice of the dispute. The remaining question is whether the Respondent’s offering can be characterized as bona fide, bearing in mind the alleged fame and reputation of the Complainant and the well-known nature of its trademark in the USA as asserted in the Supplemental Filing. The Panel must first take into consideration the fact that the Respondent’s use of the name Sabancı arises from an unchallenged and, to the Panel, entirely genuine and legitimate connection to the name, in that it is the surname of the Respondent’s founder. Had there been no such link between the Respondent and the Sabancı name, the Panel might have been entitled to make an inference that it was selected for some reason arising from the Complainant’s activities. However, there is no such inference to be made here. In the Panel’s view, this indicates that an offering of goods and services by the Respondent may be considered to be bona fide.
The Panel is fortified in that view by virtue of the fact that none of the Complainant’s substantial materials demonstrate to the Panel’s satisfaction that the Complainant has such an extensive reputation and its mark is so well-known in the USA that no offering of goods and services of the kind proposed by the Respondent, and which the Complainant does not appear to provide in any country, could ever be regarded as bona fide. All of the materials provided by the Complainant demonstrate that its reputation stems from its activities in Turkey and certain other markets, but not in the USA per se. The Panel has seen no evidence that the Complainant engages in any substantive commercial activity within the USA itself and while the Panel accepts that the Complainant has pioneered joint ventures with leading USA companies, no examples have been given where such collaboration takes place in the USA. Likewise, neither the example of university collaborations, nor the hosting of museum exhibitions in the USA, nor the personal awards received in the USA by the Complainant’s current chairperson seem to the Panel to demonstrate a degree of fame or reputation in the USA that would be sufficient to displace the bona fide nature of the Respondent’s proposed offering of unrelated goods and services in that territory. Furthermore, in the Panel’s view, the fact that the Complainant has built a headquarters complex in Turkey and has named this “Sabancı Center” is of no significance to this question. There is no evidence before the Panel that the Complainant is using its name in that context as anything other than the address of its principal business premises in Turkey.
In summary, while the Complainant has provided extensive additional materials in its Supplemental Filing indicating that it has multi-faceted links with the USA, none of these appear to the Panel to contradict the Respondent’s case under paragraph 4(c)(i) of the Policy in such a way as to prevent the Respondent from claiming rights or legitimate interests in the disputed domain names on the basis contended for in the Response. In all of these circumstances, the Panel finds that the Complainant has failed to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain names and consequently that the second element under the Policy has not been established. F. Registered and Used in Bad Faith
For the same reasons as the Panel noted in the preceding section, concerning the evidence as to the Respondent’s intent in registering the disputed domain names, the Panel finds that the Complainant has failed to prove on the balance of probabilities that the disputed domain names have been registered and are being used in bad faith. The Complainant did not seek to revise its case on this element in its Supplemental Filing and thus continues to rely on a case of “passive holding” as described in the frequently cited case of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. However, in the Panel’s view the present dispute does not give rise to a finding of bad faith in the context of passive holding of the kind described in that case.
The panel in Telstra, supra noted various circumstances which led it to a finding of bad faith. However, in the Panel’s opinion these are not applicable to the present case. For example, in this case, the Panel notes that the Respondent has provided evidence of actual and contemplated good faith use of the disputed domain names, has not actively attempted to conceal its identity and has not provided false contact details. Furthermore, in contrast to Telstra, the Panel in the present case is able to conceive of plausible actual or contemplated active use of the disputed domain names by the Respondent that would not be illegitimate.
While the Respondent is likely to have known of the Complainant’s rights in its SABANCI trademark when arranging for the disputed domain names to be registered, given the Respondent’s founder’s admitted family connections to the Complainant, there is no evidence before the Panel that the Respondent intended to target such trademark in any bad faith manner. The Panel accepts the Respondent’s contention that the disputed domain names are merely a reflection of the Respondent’s reasonable desire to name its real estate developments after its founder, without intent to create a likelihood of confusion with the Complainant’s trademarks, reputation and/or commercial activities.
In these circumstances, the Panel finds that the Complainant has failed to demonstrate that the disputed domain names have been registered and are being used in bad faith and consequently that the third element under the Policy has not been established. For completeness, the Panel reminds the Parties that this Decision is based upon the Policy and Rules, and in no way should be considered as preventing either of the Parties pursuing or continuing to pursue matters relating to the Respondent’s trademark applications in the appropriate forum. As noted in Section C above, this Decision should not be considered to influence the outcome of any such proceedings in any manner whatsoever. 7. Decision
For the foregoing reasons, the Complaint is denied.
Andrew D. S. Lothian
Sole Panelist
Date: May 8, 2013
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