The Standard Bank of South Africa Limited v. Fundacion Private Whois c/o Domain Administrator
Claim Number: FA1403001549386
Complainant is The Standard Bank of South Africa Limited (“Complainant”), represented by Daniel Greenberg of Lexsynergy Limited, United Kingdom. Respondent is Fundacion Private Whois c/o Domain Administrator (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <standardbankinternet.com>, registered with Internet.bs Corp.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 19, 2014; the National Arbitration Forum received payment on March 19, 2014.
On March 19, 2014, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <standardbankinternet.com> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 21, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 10, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@standardbankinternet.com. Also on March 21, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 16, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <standardbankinternet.com> domain name, the domain name at issue, is confusingly similar to Complainant’s STANDARD BANK mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is one of the largest banks in South Africa and is considered a leader in banking products and financial services and owns registrations for its STANDARD BANK mark in countries around the world. Some notable countries include: Argentina’s National Institute of Industrial Property (“NIIP”) (Reg. No. 2,233,147 registered December 19, 2006); Botswana Registrar of Companies and Intellectual Property (“RCIP”) (Reg. No. SA12399 registered October 22, 1992; Peru’s Presidency of the Council of Ministers (“PCM”) (Reg. No. 47,441 registered September 17, 2007; South Africa’s Department of Trade and Industry Companies and Intellectual Property (“CIPC”) (Reg. No. 78/1184 registered September 7, 1979).
Respondent’s <standardbankinternet.com> domain name is confusingly similar to Complainant’s STANDARD BANK mark. Respondent merely adds the descriptive word “internet” to Complainant’s STANDARD BANK mark and also adds the generic top-level domain (“gTLD”) “.com.”
Respondent is not commonly known by the disputed domain name. Complainant has never authorized Respondent to use its trademark in any way. There is no evidence indicating that Respondent was or is commonly known by the disputed domain name. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Respondent registered the disputed domain name in order to confuse and commercially profit from Internet users searching for Complainant’s business.
Respondent registered the disputed domain name for the purpose of disrupting Complainant’s business and does this by unfairly diverting business intended for Complainant to Respondent’s website, and this is significant because Respondent is a competitor of Complainant’s. Respondent uses the disputed domain name to attract Internet users to Respondent’s resolving website by using a confusingly similar domain name featuring Complainant’s STANDARD BANK mark. Respondent registered the <standardbankinternet.com> domain name with Complainant’s mark in mind.
The <standardbankinternet.com> domain name was registered on April 4, 2012.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant is one of the largest banks in South Africa and is considered a leader in banking products and financial services in that region. Complainant owns registrations for its STANDARD BANK mark in countries around the world, including Argentina’s NIIP (Reg. No. 2,233,147 registered December 19, 2006); see also Botswana RCIP (Reg. No. SA12399 registered October 22, 1992); see also Peruvian PCM (Reg. No. 47,441 registered September 17, 2007); see also South African CIPC (Reg. No. 78/1184 registered September 7, 1979). Prior panels have concluded that a complainant has rights in a given mark when it provides evidence of a registration with a recognized trademark authority. See The Standard Bank of South Africa Ltd. v. Frank Anderson, FA 1327168 (Nat. Arb. Forum July 16, 2010) (finding that Complainant has rights in the STANDARD BANK mark through its multiple trademark registrations worldwide including with the CIPRO). It is irrelevant whether a complainant registers a mark in respondent’s location. Id. (Concluding that complainant does not need to show that it owns trademark registrations in the country of respondent’s residence to establish rights under Policy ¶ 4(a)(i)). Accordingly, the Panel finds that Complainant has rights in the STANDARD BANK mark under Policy ¶ 4(a)(i).
Respondent’s <standardbankinternet.com> domain name is confusingly similar to Complainant’s STANDARD BANK mark. Respondent merely adds the descriptive word “internet” and adds the gTLD “.com” to Complainant’s mark. Panels have previously found that adding generic words and a gTLD does not distinguish a disputed domain name from a given mark. See AOL Inc. v. Morgan, FA 1349260 (Nat. Arb. Forum Nov. 4, 2010) (concluding that the addition of the generic top-level domain (“gTLD”) “.com” does not distinguish the disputed domain name from the mark); see also Victoria’s Secret v. Plum Promotions, FA 96503 (Nat. Arb. Forum Feb. 27, 2001) (“The mere addition of the generic term “tv” does not reduce the likelihood of confusion under Policy 4(a)(i).”). Further, Respondent removes the space between the components of Complainant’s registered mark, which prior panels have found to be an irrelevant variation. see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). The Panel therefore concludes that Respondent’s <standardbankinternet.com> domain name is confusingly similar to Complainant’s STANDARD BANK mark.
The Panel finds that Policy ¶ 4(a)(i) has been established
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Respondent is not commonly known by the disputed domain name, and Complainant has never authorized Respondent to use its trademark in any way. There is no evidence indicating that Respondent was or is commonly known by the disputed domain name. The WHOIS information for Respondent’s disputed domain name lists “Domain Administrator” as registrant of record. Panels have previously found that a respondent is not commonly known by a domain name where there is no evidence suggesting that respondent is commonly known by the disputed domain name. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question). The Panel concludes that Respondent is not commonly known by the <standardbankinternet.com> domain name under Policy ¶ 4(c)(ii) because there is no evidence to support such a conclusion.
Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Respondent registered the disputed domain name in order to confuse and commercially profit from Internet users searching for Complainant’s business. The Panel notes that Respondent’s <standardbankinternet.com> domain name resolves to a website displaying a variety of advertisements and links, some of which include: “Bank Customer Care,” “ICIB Business Banking,” “Internet Banking Payment,” “Pay Online Now with PayU,” and “Sanlam Funeral Cover.” Previous UDRP panels have found that using a confusingly similar domain name to resolve to a website displaying links that compete with complainant does not convey rights or legitimate interests in disputed domain name. See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also The Standard Bank of South Africa Ltd. v. dalvinder dhillon, FA 1527717 (Nat. Arb. Forum December 10, 2013) (finding that respondent’s use of the <standardbankofindia.com> domain name to resolve to a website featuring competing third-party links did not convey rights or legitimate interests in the disputed domain name.). The Panel finds that Respondent’s use of the <standardbankinternet.com> domain name does not convey rights or legitimate interests to Respondent.
The Panel finds that Policy ¶ 4(a)(ii) has been established
It appears to the Panel that Respondent registered the disputed domain name for the purpose of disrupting Complainant’s business. Respondent does this by unfairly diverting business intended for Complainant to Respondent’s website. Prior panels have found bad faith use and registration when a respondent uses a confusingly similar domain name to resolve to a website featuring a list of third-party links that compete with complainant. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”); see also The Standard Bank of South Africa Ltd. v. dalvinder dhillon, FA 1527717 (finding bad faith when respondent used the <standardbankofindia.com> domain name to resolve to a website featuring links to complainant’s competitors.). The Panel concludes that Respondent registered and is using the <standardbankinternet.com> domain name in bad faith under Policy ¶ 4(b)(iii).
Further, Respondent uses the disputed domain name to attract Internet users to Respondent’s resolving website by using a confusingly similar domain name featuring Complainant’s STANDARD BANK mark. Complainant explains that once Internet users enter Respondent’s resolving website, Respondent’s goal appears to be to confuse Internet users as to Complainant’s relationship with Respondent’s disputed domain name and resolving website, and result in commercial gain for Respondent. Respondent displays links and advertisements on its resolving website. Prior panels have found that using a domain name to resolve to a website that provides links to complainant’s competitors in order to earn revenue for respondent indicates bad faith use and registration under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”). Accordingly, on this basis as well, the Panel concludes that Respondent registered and is using the <standardbankinternet.com> domain name in bad faith under Policy ¶ 4(b)(iv).
The Panel finds that Policy ¶ 4(a)(iii) has been established
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <standardbankinternet.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: April 17, 2014
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