The Standard Bank of South Africa Limited v. N/A / mark gersper
Claim Number: FA1210001467014
Complainant is The Standard Bank of South Africa Limited (“Complainant”), represented by Daniel Greenberg of Lexsynergy Limited, United Kingdom. Respondent is N/A / mark gersper (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <stanbicibplc.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 12, 2012; the National Arbitration Forum received payment on October 12, 2012.
On October 12, 2012, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <stanbicibplc.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.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 October 15, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 5, 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@stanbicibplc.com. Also on October 15, 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 November 19, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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
(i) Complainant
Domain Top Level Domain Registration Date
stanbic.co.za South Africa 24 November 1996
stanbic.com Generic 13 October 1998
stanbicbank.com Generic 25 June 2004
stanbicbank.co.ke Kenya 26 July 2004
stanbicibtcbank.com Generic 31 January 2008
Website 2008 2009 2010 2011
Stanbicbank.co.bw 29,893 37,108 54,505 56,252
Stanbicbank.co.ke 24,577 17,983 70,122 85,452
Stanbicbank.co.zw 8,875 3,750 8,745 11,795
Stanbicbank.co.zm 6,417 8,729 18,541 27,676
Stanbicbank.co.ug 27,082 28,176 45,071 56,967
Stanbic.com.gh 20471 23,053 28,125 39,909
Year Total Income (million)
2006 R 26 635 (approximately $ 3 330)
2007 R 32 564 (approximately $ 4 072)
2008 R 38 342 (approximately $ 4 780)
2009 R 39 127 (approximately $ 4 890)
2010 R 38 699 (approximately $ 4 840)
(ii) Respondent
[a.] The manner in which the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. ICANN Rule 3(b)(ix)(1); ICANN Policy ¶4(a)(i).
(i) Rights
(ii) Identical or Confusing Similarity
[b.] Respondent has no rights or legitimate interests in respect of the domain name that is the subject of the complaint. ICANN Rule 3(b)(ix)(2); ICANN Policy ¶4(a)(ii).
(i.) Whether, before any notice to the Respondent of the dispute, Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name is in connection with a bona fide offering of goods or services; or
(ii.) Whether Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if Respondent has not acquired trademark or service mark rights; or
(iii.) Whether Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
[c.] The domain name should be considered as having been registered and being used in bad faith. ICANN Rule 3(b)(ix)(3); ICANN Policy ¶4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant to prove the following three elements to obtain an order cancelling or transferring a domain name:
(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 owns trademark registrations for its STANBIC mark with the trademark offices of multiple countries worldwide, some of which include South Africa’s Companies & Intellectual Property Commission (“SACIPC”), Argentina’s National Institute of Industrial Property (“ANIIP”), Botswana’s Registrar of Companies and Intellectual Property (“BRCIP”), the European Union Office for the Harmonization of the Internal Market (OHIM), Ghana’s Registrar General’s Department (“GRGD”), the Intellectual Property Office of Singapore (“IPOS”), and Zambia’s Patent and Companies Registration Agency (“ZPCRA”):
Trademark Office Reg. No. Reg. Date
SACIPC 93/5749 July 8, 1993;
ANIIP 2,281,286 April 17, 2009;
BRCIP BW/M/97/00136 May 23, 1997;
OHIM 7,406,283 May 27, 2009;
IPOS S/6239/93 August 14, 1993;
ZPCRA 253/93 July 22, 1993;
GRGD 25,656 July 14, 1993.
Evidence of registration with a national trademark authority is adequate evidence of rights in a mark 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 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). It is irrelevant whether Complainant has registered its trademark in the country of Respondent’s residence. See 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); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the complainant has rights to the name when the mark is registered in a country even if the complainant has never traded in that country). The question is not whether Complainant has better rights than Respondent, but merely whether Complainant has rights. Complainant has adequately established rights in its STANBIC mark pursuant to Policy ¶4(a)(i).
Complainant claims Respondent’s <stanbicibplc.com> domain name is confusingly similar to Complainant’s STANBIC mark under Policy ¶4(a)(i). Complainant argues the <stanbicibplc.com> domain name incorporates Complainant’s STANBIC mark in its entirety with the addition of “ibplc.” The disputed domain name also attaches the generic top-level domain (gTLD) “.com” and omits the spaces between the words. These minor differences must be disregarded when determining confusing similarity because of the required character set and syntax to make a valid domain name. Spaces are not permitted in domain names. Domain names must contain a gTLD (or a ccTLD). Complainant claims the addition of “plc” is significant because it is an acronym for “public limited company” which Complainant claims is typically assigned to limited liability companies in the United Kingdom. Complainant argues the letters “IB” refer to part of a name that Complainant uses for its company in Nigeria, “Stanbic IBTC.” Based on Complainant’s evidence and the circumstances of this case, this Panel finds these variations are insufficient to differentiate the disputed domain name from Complainant’s registered trademark. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark); see also Am. Online, Inc. v. Amigos On Line RJ, FA 115041 (Nat. Arb. Forum Aug. 28, 2002) (finding that the <aolrj.com> domain name was confusingly similar to the complainant’s AOL mark because “…the addition of a string of indiscriminate letters to a famous mark in a second level domain does not differentiate the domain name from the mark.”) Respondent’s <stanbicibplc.com> disputed domain name is confusingly similar to Complainant’s STANBIC mark pursuant to Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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 has never associated itself with Respondent and never authorized nor licensed Respondent to use its STANBIC mark pursuant to Policy ¶4(c)(ii). Complainant points out there is no evidence Respondent is commonly known by the <stanbicibplc.com> domain name. The WHOIS information for Respondent lists “mark gersper” as registrant (once the privacy registration was pierced when this UDRP proceeding began). Previous panels have found a respondent does not have rights in a disputed domain name when the respondent is not known by the mark. This Panel concurs. See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because the respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response). Based upon this information, this Panel concludes Respondent is not commonly known by the <stanbicibplc.com> domain name according to Policy ¶4(c)(ii).
Complainant claims Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <stanbicibplc.com> domain name. Complainant argues it is clear Respondent had intentions of commercially gaining from the use of the <stanbicibplc.com> domain name, as well as attempting to tarnish Complainant’s STANBIC trademark. Complainant argues the confusion between its mark and the disputed domain name is a deliberate tactic that could be used to perpetrate phishing as a way to attempt to gain access to sensitive information such as passwords or usernames. Complainant contends this phishing could be carried out via email and not just through a website. Complainant has examined the domain name’s MX records and they apparently allow the transmission of email, which would not be necessary if the domain name was merely parked. The Panel finds Complainant’s allegations about the possibility of Respondent using the disputed domain name for phishing sufficient and finds Respondent has not made a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <stanbicibplc.com> domain name under Policy ¶4(c)(i) and Policy ¶4(c)(iii). See State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (“The unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services.”); see also 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).”)
Finally, Respondent cannot acquire rights to the domain name in the commercial context if the domain name was registered using a privacy service.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant uses additional factors to establish bad faith, arguing the four criteria set forth in Policy ¶4(b) are nonexclusive. Complainant claims other circumstances can be evidence that a domain name was registered and being used in bad faith and this Panel agrees. The totality of the circumstances will be considered without being limited to the enumerated factors in Policy ¶4(b). See Educ. Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that the Policy “indicates that its listing of bad faith factors is without limitation”); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (“The requirement in the ICANN Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names.”).
Complainant contends Respondent has registered and is using the <stanbicibplc.com> domain name in bad faith because the confusion between the disputed domain name and the mark could be used to phish for customer information. Complainant argues financial institutions are frequently the target for phishing schemes to defraud consumers. Complainant claims Respondent could potentially use the <stanbicibplc.com> domain name to send phishing related communications to Complainant’s customers, thereby misappropriating money and tarnishing Complainant’s business reputation. Respondent has done nothing to rebut these claims and the Panel finds Respondent registered and is using the <stanbicibplc.com> domain name in bad faith under Policy ¶4(a)(iii). 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 claims Respondent must have had actual notice of Complainant's rights in the STANBIC mark prior to registration of the domain name because of Complainant's widespread long term use of the mark. Complainant points out its trademark rights predate Respondent’s registration by at least nineteen years. Complainant claims it is inconceivable Respondent independently created the<stanbicibplc.com> domain name without knowing about Complainant’s mark. While constructive notice is generally regarded as insufficient to support a finding of bad faith, this Panel concludes Respondent had actual notice of Complainant's mark and thus registered the disputed domain names in bad faith under Policy ¶4(a)(iii). See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Finally, registering a domain name in a commercial context using a privacy service raises the rebuttable presumption of bad faith registration and use. Respondent has taken no action to rebut this presumption.
The Panel finds Policy ¶4(a)(iii) 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 <stanbicibplc.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Wednesday, December 5, 2012
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