The Standard Bank of South Africa Limited v. ABC CO
Claim Number: FA1206001447801
Complainant is The Standard Bank of South Africa Limited (“Complainant”), represented by Daniel Greenberg of Lexsynergy Limited, United Kingdom. Respondent is ABC CO (“Respondent”), Maryland, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <stanbic-bank-gh.com>, registered with GoDaddy.com, LLC.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 8, 2012; the National Arbitration Forum received payment on June 8, 2012.
On June 11, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <stanbic-bank-gh.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 June 12, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 2, 2012 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@stanbic-bank-gh.com. Also on June 12, 2012, 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 July 6, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant made the following allegations:
1. Complainant is a company incorporated in accordance with the laws of the Republic of South Africa.
2. Complainant is one of the largest banks in South Africa with a presence in 18 African countries and 13 countries outside the African continent.
3. Complainant owns trademark registrations for the STANBIC mark with South Africa Department of Trade and Industry (“SADTI”) (Reg. No. 93/5749 issued July 8, 1993), the Singapore Registry of Trademarks (“SRT”) (Reg. No. 6239/93 issued August 14, 1993), and the Swiss Federal Institute of Intellectual Property (“SFIIP”) (Reg. No. 414,488 issued August 6, 1993), among many other trademark authorities.
4. Complainant also owns trademark registrations for the STANBIC BANK mark with the Botswana Office of the Registrar of Patents, Marks and Designs (“BORPMD”) (Reg. No. BW/M/2006/00712 issued November 2, 2006) and the Ghana Registrar General’s Department (“GRGD”) (Reg. No. 37,669 issued November 14, 2006).
5. Complainant has also registered numerous domain names that are identical to and/or incorporate the STANBIC or STANBIC BANK marks.
6. Respondent registered the <stanbic-bank-gh.com> domain name on October 15, 2011.
7. Respondent’s disputed domain name resolves to a Google Apps holding page, which allows Respondent to configure the disputed domain name to use a suite of Google-related services, such as e-mail services, Google Talk, and Google Docs.
8. Respondent’s <stanbic-bank-gh.com> domain name is confusingly similar to Complainant’s STANBIC and STANBIC BANK marks.
9. Respondent has no rights or legitimate interests in the disputed domain name because Complainant has no association with Respondent and has not licensed or authorized Respondent to use the trademark and Respondent is not commonly known by the disputed domain name.
10. Complainant’s trademark is well-known throughout Africa and thus it is inconceivable that Respondent registered the disputed domain name independently without knowledge of Complainant, which is evidence that Respondent registered the disputed domain name in bad faith.
11. Respondent registered the disputed domain name in bad faith as the disputed domain name could potentially be used to send phishing related communications to Complainant’s customers, ultimately misappropriating money and tarnishing Complainant’s trademark and business.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1.Complainant is a South African company that is one of the largest banks in South Africa with a presence in 18 African countries, including Ghana .
2.Complainant owns trademark registrations for the STANBIC mark with South Africa Department of Trade and Industry (“SADTI”) (Reg. No. 93/5749 issued July 8, 1993) and for the STANBIC BANK mark with the Ghana Registrar General’s Department (“GRGD”) (Reg. No. 37,669 issued November 14, 2006) as well as other trademark registrations.
3.Respondent registered the <stanbic-bank-gh.com> domain name on October 15, 2011. It resolves to a Google Apps holding page, which allows Respondent to configure the disputed domain name to use a suite of Google-related services, such as e-mail services, Google Talk, and Google Docs.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant argues that it has registered its STANBIC and STANBIC BANK marks with various trademark authorities around the world as follows:
STANBIC
SADTI Reg. No. 93/5749 issued July 8, 1993;
SRT Reg. No. 6239/93 issued August 14, 1993;
SFIIP Reg. No. 414,488 issued August 6, 1993;
STANBIC BANK
BORPMD Reg. No. BW/M/2006/00712 issued November 2, 2006; and
GRGD Reg. No. 37,669 issued November 14, 2006.
The Panel finds that these numerous trademark registrations clearly show that Complainant has established rights in the STANBIC and STANBIC BANK marks pursuant to Policy ¶ 4(a) (i). See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world). The Panel also finds that these trademark registrations suffice for the purposes of Policy ¶ 4(a) (i), even though Complainant does not own a trademark in Respondent’s country. 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).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’ STANBIC and/or its STANBIC BANK s mark.
Complainant asserts that Respondent’s <stanbic-bank-gh.com> domain name is confusingly similar to Complainant STANBIC and STANBIC BANK marks. The Panel chooses to conduct its analysis solely with regard to the STANBIC BANK mark as that is all that is necessary to decide the issue under consideration. Complainant alleges that Respondent’s disputed domain name adds the geographical abbreviation “gh” for “Ghana” to Complainant’s mark in the disputed domain name, as well as hyphens between the terms. The Panel notes that the disputed domain name also attaches the generic top-level domain (“gTLD”) “.com” to Complainant’s mark and deletes the space between the terms of Complainant’s mark. The Panel determines that adding a geographical abbreviation, inserting hyphens, removing a space, and attaching a gTLD all fail to distinguish the disputed domain name from the mark. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy); see also Skype Ltd. & Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”); see also 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 therefore concludes that Respondent’s <stanbic-bank-gh.com> domain name is confusingly similar to Complainant’s STANBIC BANK mark according to Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s STANBIC BANK mark and in substance to add to it the letters “gh” which would be taken by internet users to refer to Ghana and thus as a reference to the operations of Complainant in Ghana and to use the expression as its domain name;
(b) The disputed domain name resolves to a Google Apps holding page, which allows Respondent to configure the disputed domain name to use a suite of Google-related services, such as e-mail services, Google Talk, and Google Docs.
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant also contends that there is no evidence that Respondent has been commonly known by the disputed domain name. Complainant argues that it has no association with Respondent and has never authorized or licensed Respondent to use Complainant’s trademark in any way. The Panel notes that the WHOIS information for the disputed domain name identifies the registrant as “ABC CO.” Based on the WHOIS information, Complainant’s assertions, and the lack of other evidence in the record, the Panel finds that Respondent is not commonly known by the disputed domain name and thus lacks rights and legitimate interests under Policy ¶ 4(c) (ii). See 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).
(e) Complainant also submits that Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services and that Respondent has clearly attempted to use the disputed domain name for commercial gain and to tarnish Complainant’s trademarks. Complainant argues that Respondent’s disputed domain name resolves to a Google Apps holding page, which Complainant submits allows Respondent to configure the disputed domain name to use a suite of Google-related services, such as e-mail services, Google Talk, and Google Docs. The Panel finds that the resolving website is essentially an inactive website, which the Panel determines qualifies as neither a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel therefore holds that Respondent’s failure to use the disputed domain name actively reveals that Respondent has no rights or legitimate interests in the disputed domain name according to Policy ¶¶ 4(c) (i) and (iii). 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).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent’s registration and use of the disputed domain name indicates bad faith because Respondent could potentially use the disputed domain name to send phishing-related communications to Complainant’s customers due to the format of the disputed domain name. It is difficult to speculate on the consequences of Respondent’s actions in that regard, but the Panel draws the inference on the balance of probabilities that Respondent registered and uses the disputed domain name as a part of a potential phishing scheme. The Panel therefore concludes that in this manner Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a) (iii).
Secondly, Complainant submits that Respondent’s disputed domain name resolves to a Google Apps holding page, which allows Respondent to configure the disputed domain name to use a suite of Google-related services, such as e-mail services, Google Talk, and Google Docs. The Panel finds that this holding page is very similar to an “under construction” website, which the Panel determines is evidence that Respondent has failed to use the disputed domain name actively. The Panel holds that Respondent’s inactive use of the website supports a finding of bad faith registration and use pursuant to 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).
Thirdly, Complainant also contends that its marks are well-known throughout Africa and that, therefore, it is inconceivable that Respondent independently, without knowledge of Complainant, created the disputed domain name. Although constructive notice of Complainant’s mark is regarded as inadequate as the basis for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant’s mark prior to the disputed domain name’s registration. The Panel therefore concludes that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a) (iii). See Nat’l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) (“[C]onstructive notice does not support a finding of bad faith.”); see also Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) (“That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant’s mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).”).
Fourthly, in addition and having regard to the totality of the evidence, the
Panel finds that, in view of Respondent’s registration of the disputed domain
name using the STANBIC BANK mark and in view of the conduct that Respondent
engaged in after registering the domain name, Respondent registered and used
the disputed domain name in bad faith within the generally accepted meaning of
that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <stanbic-bank-gh.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: July 9, 2012
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