The Standard Bank of South Africa Limited v. Star Holdings c/o Sinjin Tiwali
Claim Number: FA1102001372010
Complainant is The Standard Bank of South Africa Limited (“Complainant”), represented by Lexsynergy Limited, United Kingdom. Respondent is Star Holdings c/o Sinjin Tiwali (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <standardbank.co>, registered with eNom.com.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 9, 2011; the National Arbitration Forum received payment on February 9, 2011.
On February 9, 2011, eNom.com confirmed by e-mail to the National Arbitration Forum that the <standardbank.co> domain name is registered with eNom.com and that Respondent is the current registrant of the name. eNom.com has verified that Respondent is bound by the eNom.com 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 February 16, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 8, 2011 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@standardbank.co. Also on February 16, 2011, 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 March 14, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <standardbank.co> domain name is identical to Complainant’s STANDARD BANK mark.
2. Respondent does not have any rights or legitimate interests in the <standardbank.co> domain name.
3. Respondent registered and used the <standardbank.co> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Standard Bank of South Africa Limited, is a global bank that offers banking products and financial services in South Africa, 17 other countries in Africa, and in 15 countries outside Africa. Complainant owns a trademark registration for the STANDARD BANK mark with the South African Companies and Intellectual Property Registration Office (“CIPRO”) (Reg. No. 1978/01182 dated March 9, 1978).
Respondent, Star Holdings c/o Sinjin Tiwali, registered the <standardbank.co> domain name on September 14, 2010. The disputed domain name does not currently resolve to an active website, and Respondent, through an alias, attempted to sell the disputed domain name to Complainant for $1,000.
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.
Complainant owns a trademark registration for the STANDARD BANK mark with the South African CIPRO (Reg. No. 1978/01182 dated March 9, 1978). The Panel finds that this registration with the trademark authority of South Africa demonstrates that Complainant has rights in the mark, even though the mark is registered in a different country than Respondent resides or operates in. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant alleges that Respondent’s <standardbank.co> domain name is identical to Complainant’s STANDARD BANK mark because the only modifications are the elimination of the space between terms and the attachment of the country code top-level domain (“ccTLD”) “.co.” The Panel finds that removing the space from Complainant’s mark does not create a distinct domain name. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). The Panel also finds that the presence of a ccTLD is not a distinguishing factor. See Kohl’s Dept. Stores, Inc. v. Dhukka / SoftDot Tech., LLC, FA 1360851 (Nat. Arb. Forum Jan. 10, 2011) (concluding that appending the ccTLD “.co” is not a distinguishing modification); see also El Dorado Furniture Co. v. Chorens, FA 135 2412 (Nat. Arb. Forum Nov. 29, 2010) (finding that a disputed domain name remains identical or confusingly similar to Complainant’s mark, despite the addition of the ccTLD “.co.”). The Panel concludes that Respondent’s <standardbank.co> domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
In determining when to shift the burden to show rights and legitimate interests to Respondent, Policy ¶ 4(a)(ii) requires that Complainant first put forth a prima facie case against Respondent. As Complainant has satisfied this obligation in the instant proceeding, the burden now transfers to Respondent. In defaulting, however, Respondent has not indicated or shown any rights and legitimate interests in the disputed domain name, and thus the Panel concludes that Respondent has none. The Panel may also, due to Respondent’s silence, take all of Complainant’s allegations as true. See Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth . . . as true.”); see also Pavilion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondent’s failure to respond can be construed as an admission that they have no legitimate interest in the domain names). The Panel will nevertheless consider the full record according to Policy ¶ 4(c) factors to make an independent determination on Respondent’s rights and legitimate interests.
Complainant argues that it has no association with Respondent and has not authorized or licensed Respondent to use its mark. The WHOIS information for the <standardbank.co> domain name indicates that the registrant is “Star Holdings c/o Sinjin Tiwali.” The Panel holds that the WHOIS information, along with the lack of other affirmative evidence in the record showing a connection between Respondent and the disputed domain name, supports a finding that Respondent is not commonly known by the disputed domain name and lacks rights and legitimate interests under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002) (finding that the respondent was not commonly known by <aolcamera.com> or <aolcameras.com> because the respondent was doing business as “Sunset Camera” and “World Photo Video & Imaging Corp.”).
Respondent’s <standardbank.co> domain name does not currently resolve to an active website displaying any original content. The Panel finds that Respondent’s failure to actively use the disputed domain name indicates a lack of rights and legitimate interests pursuant to Policy ¶ 4(a)(ii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question); see also Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
Complainant contends that Respondent, through an alias, offered the sell the <standardbank.co> domain name to Complainant for $1,000 in a series of email communications. Complainant argues that this price is well in excess of Respondent’s documented out-of-pocket costs incurred in registering the disputed domain name. The Panel thus finds that Respondent’s offer to sell the disputed domain name shows Respondent’s lack of rights and legitimate interests in the disputed domain name according to Policy ¶ 4(a)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges that Respondent uses an alias, under which it offered to engage in negotiations with Complainant to sell the <standardbank.co> domain name to Complainant. Complainant contends that Respondent ultimately offered the disputed domain name for sale to Complainant in exchange for $1,000. As Complainant asserts that this price is in excess of Respondent’s documented out-of-pocket costs associated with the domain name, the Panel finds this offer to be evidence of Respondent’s bad faith registration and use according to Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name); see also Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain name for $2,000 sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(i)).
Respondent’s <standardbank.co> domain name does not currently resolve to an active website. The Panel thus finds that Respondent’s inactive use of the disputed domain name reveals bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <standardbank.co> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: March 17, 2011
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