The Standard Bank of South Africa Limited v. Frank Anderson
Claim Number: FA1005001327168
Complainant is The Standard Bank of South Africa Limited (“Complainant”), represented by Daniel Greenberg, of Lexsynergy Limited, South Africa. Respondent is Frank Anderson (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <thestandardbank.com>, registered with GoDaddy.com, Inc.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 28, 2010.
On May 30, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <thestandardbank.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On June 10, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 30, 2010 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@thestandardbank.com by e-mail. Also on June 10, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 July 7, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. 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 <thestandardbank.com> domain name is confusingly similar to Complainant’s STANDARD BANK mark.
2. Respondent does not have any rights or legitimate interests in the <thestandardbank.com> domain name.
3. Respondent registered and used the <thestandardbank.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Standard Bank of South Africa Limited, was
established in 1862 and has expanded to 1,012 branches in Africa and offices in
many other countries around the world.
Complainant owns several trademark registrations with the South African Companies and Intellectual Property Registration Office
(CIPRO) for its STANDARD BANK mark (e.g.,
Reg. No. 1978/01182 issued Sept. 7, 1979), as well as trademark registrations
with more than thirty other governmental trademark authorities worldwide.
Respondent registered the <thestandardbank.com> domain name on September 24, 2009. Respondent’s disputed domain name resolves to a website that displays various third-party hyperlinks to websites unrelated and in competition with Complainant’s bank.
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."
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.”).
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.
The Panel finds that Complainant has submitted sufficient evidence to establish rights in its STANDARD BANK mark for the purposes of Policy ¶ 4(a)(i) through its multiple trademark registrations worldwide including with the CIPRO (e.g., Reg. No. 1978/01182 issued Sept. 7, 1979). The Panel further finds that Complainant does not need to show that it owns a trademark registration in the country of Respondent’s residence to establish rights under Policy ¶ 4(a)(i). See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Complainant asserts that Respondent’s <thestandardbank.com> domain name is
confusingly similar to Complainant’s STANDARD BANK mark. Complainant contends that the addition of the
prefix “the” and the generic top-level domain (“gTLD”) “.com” are not
sufficient to remove the disputed domain name from being confusingly
similar. The Panel finds that
Respondent’s disputed domain name is confusingly similar to Complainant’s mark
under Policy ¶ 4(a)(i). See John Fairfax Publ’ns Pty Ltd. v.
Pro-Life Domains Not for Sale, FA 213460 (Nat. Arb. Forum Jan. 6, 2004)
(“The addition of the article ‘the’ does not significantly distinguish the
domain name from the mark for purposes of Policy ¶ 4(a)(i).”); see also Marriott Int’l, Inc. v. Stealth
Commerce, FA 109746 (Nat. Arb. Forum May 28, 2002) (“[T]he addition of the
[article] ‘the’ to the beginning of the domain names fails to make them
separate and distinct, as distinguishable from Complainant’s marks.”); see also Trip
Network Inc. v. Alviera, FA 914943
(Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a
domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
The Panel finds that the requirements of Policy ¶ 4(a)(i) have been met.
Complainant alleges that Respondent does not have rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Complainant must produce a prima facie case in support of such allegations. Upon Complainant’s establishment of a prima facie case the burden of proof shifts to Respondent to show that it does have rights or legitimate interests in the disputed domain name. See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“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.”). The Panel finds that Complainant has produced a prima facie case in support of its allegations. Due to Respondent’s failure to respond to these proceedings the Panel finds that it may accept as true the allegations made by Complainant. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”). However, the Panel will continue to examine the evidence on record to determine whether Respondent has rights or legitimate interests in the <thestandardbank.com> domain name.
Complainant contends that Respondent is not commonly known by the disputed domain name, and that Complainant has not granted Respondent permission to use its STANDARD BANK mark in a corresponding domain name. The WHOIS information of the <thestandardbank.com> domain name identifies “Frank Anderson” as the registrant, and Respondent has not come forth with any evidence indicating that it is commonly known by the <thestandardbank.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant asserts that Respondent is using the <thestandardbank.com> domain name to operate a commercial link directory website that displays various third-party links to websites in competition with and unrelated to Complainant’s banking business. Complainant further alleges that Respondent receives click-through fees in association with the links displayed on Respondent’s website. The Panel finds that Respondent’s use of <thestandardbank.com> is not a use in connection with 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 Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites).
The Panel finds that the requirements of Policy ¶ 4(a)(ii) have been met.
Respondent’s disputed domain name resolves to a website that displays various third-party links to companies within the banking and insurance industry, in which Complainant also operates. The Panel finds that Respondent’s diversion of Internet users who are seeking Complainant’s banking and insurance products and services to the same services of Complainant’s competitors is evidence of Respondent’s bad faith registration and use under Policy ¶ 4(b)(iii). See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
Respondent is using the confusingly similar <thestandardbank.com> domain name to intentionally attract Internet users to Respondent’s website and collect click-through fees from the businesses that are advertised and linked by Respondent. Respondent’s use of the disputed domain name to redirect Internet users to various competing and unrelated websites for Respondent’s commercial gain is further evidence of Respondent’s bad faith registration and use. The Panel agrees and finds that Respondent has registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <thestandardbank.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: July 16, 2010
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