The Standard Bank of South Africa Limited v. chenshang c/o chen shang
Claim Number: FA1102001373687
Complainant is The Standard Bank of South Africa Limited (“Complainant”), represented by Daniel Greenberg of Lexsynergy Limited, United Kingdom. Respondent is chenshang c/o chen shang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <standardbank.cc>, registered with Web Commerce Communications Limited d/b/a Webnic.cc.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 18, 2011; the National Arbitration Forum received payment on February 18, 2011.
On February 18, 2011, Web Commerce Communications Limited d/b/a Webnic.cc confirmed by e-mail to the National Arbitration Forum that the <standardbank.cc> domain name is registered with Web Commerce Communications Limited d/b/a Webnic.cc and that Respondent is the current registrant of the name. Web Commerce Communications Limited d/b/a Webnic.cc has verified that Respondent is bound by the Web Commerce Communications Limited d/b/a Webnic.cc 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 18, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 10, 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.cc. Also on February 18, 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 17, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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 <standardbank.cc> domain name is identical to Complainant’s STANDARD BANK mark.
2. Respondent does not have any rights or legitimate interests in the <standardbank.cc> domain name.
3. Respondent registered and used the <standardbank.cc> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Standard Bank of South Africa Limited, was established in 1862 and provides banking services in South Africa and around the world. Complainant owns the STANDARD BANK mark and uses the mark in connection with its banking and financial services. Complainant also holds trademark registration for its STANDARD BANK mark with the South African Companies and Intellectual Property Registration Office (“CIPRO”) (e.g., Reg. No. 1978/01182 issued September 7, 1979).
Respondent, chenshang c/o chen shang, registered the <standardbank.cc> domain name on May 26, 2010. The disputed domain name resolved to a financial website and displayed advertisements. The website content has currently been removed.
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 contends that it has established rights in the STANDARD BANK mark. Previous panels have determined that a complainant can establish rights in a mark through federal trademark registration. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). Complainant is not required to register its mark within the country of Respondent. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Here, Complainant holds a trademark registration for its mark with CIPRO (e.g., Reg. No. 1978/01182 issued September 7, 1979). Therefore, the Panel finds that Complainant has demonstrated its rights in the STANDARD BANK mark through its trademark registration pursuant to Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <standardbank.cc> domain name is identical to its STANDARD BANK mark. The disputed domain name incorporates the mark in its entirety and merely deletes a space between the words of the mark and adds the country-code top-level domain (“ccTLD”) “.cc.” The Panel concludes the deletion of a space and the affixation of a ccTLD do not properly distinguish the disputed domain name to avoid a finding that it is identical to Complainant’s mark. See 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); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that eliminating the space between terms of a mark still rendered the <gwbakeries.mobi> domain name identical to the complainant’s GW BAKERIES mark); see also Europcar Int’l SA v. New Media Research in Romania SRL, FA 123906 (Nat. Arb. Forum Nov. 4, 2002) (“Respondent’s <europcar.ro> domain name is identical to Complainant’s EUROPCAR mark. Respondent’s domain name incorporates Complainant’s mark in its entirety, and only deviates with the addition of the Romanian country-code of “.ro.” Because top-level domains are required of domain name registrants, their addition has been determined to be inconsequential when conducting an identical analysis under Policy ¶ 4(a)(i).”). The Panel finds that Respondent’s <standardbank.cc> domain name is identical to Complainant’s STANDARD BANK mark according to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been met.
Complainant argues that Respondent has no rights or legitimate interests in the <standardbank.cc> domain name. In Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008), the panel stated that once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy. Here, Complainant has made a prima facie showing in support of its claims against Respondent. Respondent did not submit a response to the Complaint, therefore, Complainant may assume that it lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name). However, the Panel chooses to look to the record first in order to determine whether Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant alleges that Respondent is not commonly known by the <standardbank.cc> domain name. The WHOIS information identifies Respondent as “chenshang,” which is not similar to the disputed domain name. Complainant further alleges that it has never authorized or licensed Respondent to use its STANDARD BANK mark within the disputed domain name. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii), as there is no additional information in the record that would indicate otherwise. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent previously used the disputed domain name to redirect Internet users to a financial website with advertisements and links that may have been in competition with Complainant’s business in banking and finances. Respondent likely received click-through fees from these links. The Panel finds that Respondent’s use of the identical disputed domain name to host a website for the purpose of redirecting Internet users in order to generate revenue from advertisements is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also 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)).
The disputed domain name currently resolves to an inactive website because after receiving the cease and desist notice, Respondent took down the resolving website. The Panel concludes that such inactive holding of the disputed domain name is further evidence that Respondent has no rights or legitimate interests in the <standardbank.cc> domain name according to Policy ¶ 4(a)(ii). See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“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).”); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for 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).
The Panel finds that Policy ¶ 4(a)(ii) has been met.
Complainant argues that Respondent initiated negotiations in order to sell the <standardbank.cc> domain name to Complainant for not less than $25,000, which is in excess of the out-of-pocket costs incurred in registering the domain name. Complainant made other offers of $200 and $500, but Respondent rejected both of these offers. The Panel finds that Respondent’s attempt to sell the disputed domain name is evidence of bad faith use and registration under 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 Campmor, Inc. v. GearPro.com, FA 197972 (Nat. Arb. Forum Nov. 5, 2003) (“Respondent registered the disputed domain name and offered to sell it to Complainant for $10,600. This demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(i).”).
Complainant asserts that Respondent used the disputed domain name in order to disrupt its business. The <standardbank.cc> domain name resolved to a financial website with advertisements and links to some of Complainant’s potential competitors in the banking industry. Internet users intending to use the financial services of Complainant may have found Respondent’s website instead and opted for the similar services of a competitor as a result. The Panel finds that Respondent’s registration and use of the disputed domain name did disrupt Complainant’s business, which is evidence of bad faith use and registration 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 Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website).
Prior to this Complaint, Respondent used the disputed domain name to operate a financial website with links and advertisements potentially in competition with Complainant’s banking and financial services. The Panel may infer that Respondent received click-through fees from these links. Internet users searching for Complainant may have found Respondent’s website, and, because of the identical domain name, become confused as to Complainant’s sponsorship of the information on the website. Respondent tried to generate revenue from this confusion through the receipt of click-through fees. The Panel finds that such use of the disputed domain name is evidence of bad faith use and registration under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also 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).”).
Respondent’s website currently resolves to an inactive website. After receiving the cease and desist notice, Respondent took down the information and content on the resolving website and it resolves to an inactive site. The Panel finds that Respondent’s holding of the disputed domain name to operate an inactive website, with no demonstrable preparations to use the domain name, is considered bad faith use and registration under Policy ¶ 4(a)(iii). See L.F.P., Inc. v. B and J Props., FA 109697 (Nat. Arb. Forum May 30, 2002) (“A Respondent cannot simply do nothing and effectively ‘sit on his rights’ for an extended period of time when that Respondent might be capable of doing otherwise.”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that when the respondent declares its intent to develop a website, “[Policy ¶] 4(c)(i) requires Respondent to show 1) ‘demonstrable’ evidence of such preparations to use the domain name, and 2) that such preparations were undertaken ‘before any notice to [Respondent] of the dispute’”).
Complainant makes one more Bad Faith claim, which will not be determinative of the issue due to all prior findings of Bad Faith, nevertheless it deserves discussion. Commencing with a Cease and Desist letter negotiations were held for the sale of Respondent's domain name <standardbank.cc> to Complainant who offered to buy it for $ 500. Respondent rejected the offer and claimed that he paid $25,000 to the prior owner of the domain name and could not take less than his cost. Complainant contends Bad Faith by the Respondent has been established in that it demanded $25,000 which was more than his out-of-pocket costs. There was no contradiction of this sum by the Complainant other than the bare allegation in the complaint (paragraph "38") that this amount "is in excess of the out-of-pocket expenses incurred in registering the Domain." Complainant offered no proof or any other evidence as to the amount Respondent paid for the Domain name to give credence to its allegation. The Complainant's contention must fail. But even if it were sustained there remains an issue as to the intrinsic understanding of out-of-pocket. Does it relate to the initial cost by the original owner of the Domain, or does it mean the amount that a secondary owner (as Respondent) actually paid for the Domain? No cases could be found that define what constitutes out-of-pocket costs, but there is one matter that alludes to it: In Online , Inc. v. Prijic, FA 112639 (Nat. Arb Forum June 27, 2002) the panel found that "in determining whether Respondent sought a consideration in excess of its out-of-pocket costs, the Policy makes clear "that only costs related to the domain name are to be considered and not those related to the creation or maintenance of the connected website." Since Respondent was not the original owner, but a secondary one, the costs attributable to the domain name could not possibly apply for Respondent never paid it. However, his claim of the amount paid for the domain name as a secondary purchaser can be ascertained and that is the out-or -pocket expense incurred. If this reasoning is not applied then it follows that the secondary owner would not be entitled to receive any consideration for its sale of the name, regardless of the amount paid for it. To be sure the sum of
$ 25,000 for a domain name may seem an exaggeration, until it is realized some domain names have great value, and have been sold for more than five and ten times that amount.
The Panel finds that Policy ¶ 4(a)(iii) has been met.
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.cc> domain name be TRANSFERRED from Respondent to Complainant.
Hon Ralph Yachnin, Panelist
Justice, Supreme Court, NY
(Ret.)
Dated: March 24, 2011
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