The Standard Bank of South Africa Limited v. Michelle Zimmerman
Claim Number: FA1403001547346
Complainant is The Standard Bank of South Africa Limited (“Complainant”), represented by Daniel Greenberg of Lexsynergy Limited, South Africa. Respondent is Michelle Zimmerman (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <stanbiconline.com>, registered with Melbourne IT Ltd.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 7, 2014; the National Arbitration Forum received payment on March 7, 2014.
On March 13, 2014, Melbourne IT Ltd confirmed by e-mail to the National Arbitration Forum that the <stanbiconline.com> domain name is registered with Melbourne IT Ltd and that Respondent is the current registrant of the name. Melbourne IT Ltd has verified that Respondent is bound by the Melbourne IT Ltd 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 14, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 3, 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@stanbiconline.com. Also on March 14, 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 11, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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.
Complainant’s Contentions
1. Complainant is the Standard Bank of South Africa Limited, and has operated as a company in some form since 1862. Complainant has used the STANBIC mark in connection with “insurance, financial and banking services of all descriptions” pursuant to its South African trademark registration. Complainant has also registered the mark in other jurisdictions.
2. Respondent’s <stanbiconline.com> domain name is confusingly similar to the STANBIC mark.
3. There has been no evidence to suggest Respondent has ever been known as the <stanbiconline.com> domain name. Complainant has never authorized or licensed the Respondent’s use of the STANBIC mark in Internet domain names.
4. Respondent is using the <stanbiconline.com> domain name to forward Internet users to one of Complainant’s websites. This enables Respondent to legitimize any “phishing” attempts it may take, as consumers may mistakenly believe the redirection of the domain name to Complainant’s websites is tantamount to Complainant’s own control of the domain name.
5. Respondent is profiting from the likelihood that Internet users will associated the <stanbiconline.com> domain name with Complainant.
6. Respondent could not conceivably have registered this domain name without knowledge of the STANBIC mark. Respondent’s knowledge is apparent in Respondent’s decision to use the domain name to forward users to Complainant’s own websites.
Respondent’s Contentions
Respondent did not submit a response.
1. Respondent’s <stanbiconline.com> domain name is confusingly similar to Complainant’s STANBIC mark.
2. Respondent does not have any rights or legitimate interests in the <stanbiconline.com> domain name.
3. Respondent registered or used the <stanbiconline.com> domain name in bad faith.
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 states it is the Standard Bank of South Africa Limited, and has operated as a banking company in some form since 1862. Complainant has used the STANBIC mark in connection with “insurance, financial and banking services of all descriptions” pursuant to its South African trademark registration. See Republic of South Africa Department of Trade and Industry (“SADTI”) Reg. No. 93/5749 registered July 8, 1993. Complainant notes that it has also registered the mark in other jurisdictions. See Compl., at Attached Annexure 1. The Panel agrees that Complainant’s trademark registrations serve as adequate evidence of Policy ¶ 4(a)(i) rights in the mark. See, e.g., Teck Res. Ltd. v. Amexa Ltda., FA 1420960 (Nat. Arb. Forum Jan. 27, 2012) (finding that a trademark registration with the [Mexican Institute of Industrial Property] was sufficient to establish rights in a mark under Policy ¶ 4(a)(i)).
Complainant further states that Respondent’s <stanbiconline.com> domain name is confusingly similar to the STANBIC mark. Complainant argues that the addition of the descriptive word “online” does little to enhance the domain name as distinct from the trademark. Complainant alleges that the addition of the generic top-level domain is likewise a trivial difference. The Panel agrees here that both the generic term “online” and the generic top-level domain (“gTLD”) “.com” are insufficient to avoid a finding of Policy ¶ 4(a)(i) confusing similarity. See Cargill, Incorporated v. Domain Privacy Grp., FA 1501652 (Nat. Arb. Forum Jul. 5, 2013) (determining that the disputed domain name, which contains the complainant’s mark, along with two generic terms and a generic top-level domain, is the equivalent of the mark itself for the purposes of Policy ¶ 4(a)(i)).
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.”).
Complainant suggests there has been no evidence to suggest Respondent has ever been known as the <stanbiconline.com> domain name. Complainant notes that it has never authorized or licensed the Respondent’s use of the STANBIC mark in Internet domain names. The Panel observes the only identifying information in the record, the WHOIS information, lists the registrant of record for the disputed domain name as “Michelle Zimmerman.” Based on the available information as to Respondent’s identity, the Panel agrees Respondent is not commonly known as the <stanbiconline.com> domain name for purposes of Policy ¶ 4(c)(ii). See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
Complainant argues that Respondent is using the <stanbiconline.com> domain name to forward Internet users to one of Complainant’s websites. Prior panels have found that a respondent cannot claim to have rights in a domain name merely by temporarily setting the domain name to send Internet users to the complainant’s own websites. See Direct Line Ins. plc v. Low-cost-domain, FA 1337658 (Nat. Arb. Forum Sept. 8, 2010) (“The Panel finds that using Complainant’s mark in a domain name over which Complainant has no control, even if the domain name redirects to Complainant’s actual site, is not consistent with the requirements of Policy ¶ 4(c)(i) or ¶ 4(c)(iii) . . .”). The Panel here agrees that Respondent’s use of the <stanbiconline.com> domain name is not within the scope of Policy ¶¶ 4(c)(i), (iii), even if Respondent uses the domain name to send users to Complainant’s own websites.
Complainant suggests that this redirection to Complainant’s own website enables Respondent to legitimize any phishing attempts it may take, as consumers may mistakenly believe the redirection of the domain name to Complainant’s websites is tantamount to Complainant’s own control of the domain name. The Panel notes that Complainant implies this behavior may occur, but is not stating that Respondent is currently phishing for personal information. As such, the Panel elects to disregard this statement, while noting that phishing is indeed nefarious conduct that is not protectable by Policy ¶ 4(a)(ii). See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Nat. Arb. Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Complainant claims Respondent is profiting from the likelihood that Internet users will associated the <stanbiconline.com> domain name with Complainant. Complainant believes this is truer when the domain name is currently used to send Internet users to Complainant’s own websites. Previous panels have found that there is a level of bad faith that might be inferred when a respondent appears to be using a domain name to build consumer confidence in that domain name’s relationship to a complainant’s business, when that same respondent can later prey upon these consumers by sending them to other websites. See Altavista Co. v. Brunosousa, D2002-0109 (WIPO Apr. 3, 2002) (finding, when a domain name is used to redirect to the complainant’s website, that “such redirection will allow the Respondent to divert future users to competing web sites after having built up mistaken confidence in the source of the content,” which constitutes bad faith registration and use). The Panel agrees, and believes that Respondent here can commercially gain from such activity, and elects to infer a level of Policy ¶ 4(b)(iv) bad faith from Respondent’s conduct.
Complainant again states that Respondent may in the future use the <stanbiconline.com> domain name for phishing. Complainant also explains that phishing is a process whereby Internet users are led to believe they are giving their personal or financial information to a trusted source, when really it is all a façade wherein an unwanted third-party (such as Respondent) collects this compromising information. Again the Panel agrees that there is no evidence of phishing in this proceeding, although this is not to say that phishing is acceptable conduct by any means. See Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (determining that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name).
Complainant finally argues that Respondent could not conceivably have registered this domain name without knowledge of the STANBIC mark. Complainant suggests that Respondent’s knowledge is apparent in Respondent’s decision to use the domain name to forward users to Complainant’s own websites. The Panel agrees that Respondent’s actual knowledge of Complainant’s STANBIC mark can be inferred from the constant use of the disputed domain name for the purpose of sending Internet users to Complainant’s own websites. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize “constructive notice” as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <stanbiconline.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: April 23, 2014
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