The Standard Bank of South Africa Limited v. ICS INC.
Claim Number: FA1211001470083
Complainant is The Standard Bank of South Africa Limited (“Complainant”), represented by Daniel Greenberg of Lexsynergy Limited, United Kingdom. Respondent is ICS INC. (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <stanbicibtcpensionmanagers.com>, registered with Tucows, 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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 7, 2012; the National Arbitration Forum received payment on November 7, 2012.
On November 7, 2012, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <stanbicibtcpensionmanagers.com> domain name is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc. 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 November 8, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 28, 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@stanbicibtcpensionmanagers.com. Also on November 8, 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 December 13, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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. Respondent has not been commonly known by the disputed domain name. Complainant has never authorized or licensed Respondent to use its trademarks.
ii. Respondent registered the disputed domain name for its own commercial gain and to tarnish Complainant’s trademark.
i. Respondent had knowledge of Complainant’s rights in the STANBIC mark at the time that it created the disputed domain name.
ii. Respondent has placed the disputed domain name for sale with the domain name broker <domainsponsor.com>, setting the minimum offer value at $50. Respondent’s minimum offer is in excess of its documented out-of-pocket expenses.
iii. Respondent is a well-known serial cybersquatter and typosquatter which is evident by Respondent having over 28 UDRP cases decided against it.
iv. Respondent has registered the disputed domain name to confuse, attract, and profit from Internet users who are searching for Complainant’s business. Respondent intended to attract and profit from Internet users seeking Complainant’s website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant has rights in its STANBIC mark.
2. Respondent’s <stanbicibtcpensionmanagers.com> domain name is confusingly similar to Complainant’s mark.
3. Respondent has no rights to or legitimate interests in the domain name.
4. Respondent registered and used the domain name 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 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.”).
Complainant, The Standard Bank of South Africa Limited, contends that it is one of largest banks in South Africa and is considered to be a leader in banking products and related financial services in South Africa. Complainant asserts that it trades under the name STANBIC IBTC BANK in Nigeria through its local company STANBIC IBTC BANK PLC. Complainant contends that it owns and shows evidence of trademark registrations with the CIPC for the STANBIC mark (e.g., Reg. No. 93/5749, registered July 8, 1993). See Complainant’s Annex 1. Complainant also owns several trademark registrations from numerous countries throughout the world. See Complainant’s Annex 1. The Panel notes that Complainant claims to have trademarks for the STANBIC IBTC mark, but it does not provide evidence of trademark registrations for the mark. The Panel notes that while Respondent appears to reside in the Cayman Islands, Policy ¶ 4(a)(i) only requires that Complainant register in some jurisdiction to establish its rights in the STANBIC mark. See 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 and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, the Panel determines that Complainant established its rights in the STANBIC mark under Policy ¶ 4(a)(i) by registering with various trademark offices throughout the world. 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)).
Complainant argues that Respondent’s <stanbicibtcpensionmanagers.com> disputed domain name is confusingly similar to Complainant’s STANBIC mark as it is identical to Complainant’s STANBIC mark and Complainant’s Nigerian subsidiary STANBIC IBTC Pension Managers. Complainant contends that Respondent has added the descriptive words “pension managers” to the disputed domain name, which adds to the confusing similarity as these descriptive words are used by Complainant on its website <www.ibtcpension.com>. The Panel notes that the disputed domain name also adds the term “IBTC” to the mark, which Complainant asserts to be part of its subsidiary’s name. The Panel finds that Respondent’s addition of “IBTC” and “pension managers” to the STANBIC mark is confusingly similar as the added words relate directly to Complainant’s business. See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business). The Panel notes that Respondent has added the generic top-level domain (“gTLD”) “.com” to the end of the disputed domain name. The Panel finds that the addition of a gTLD does not distinguish Respondent’s <stanbicibtcpensionmanagers.com> domain name from Complainant’s STANBIC mark under Policy ¶ 4(a)(i). See Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Nat. Arb. Forum Sept. 6, 2007) (“Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.”). Therefore, the Panel concludes that there is confusing similarity between Respondent’s <stanbicibtcpensionmanagers.com> domain name and Complainant’s STANBIC mark under Policy ¶ 4(a)(i).
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.”).
Complainant argues that Respondent has not been commonly known by the disputed domain name. The Panel notes that the WHOIS information identifies “ICS INC.” as the registrant of the disputed domain name. See Complainant’s Annex 12. Complainant contends that it has never authorized or licensed Respondent to use its trademarks. The Panel notes that Respondent has not provided any additional evidence showing that it is commonly known by the disputed domain name. Therefore, the Panel concludes that Respondent is not commonly known by the disputed domain name 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).
Complainant asserts that Respondent has registered the disputed domain name for its own commercial gain and to tarnish Complainant’s trademark. The Panel notes that Respondent’s disputed domain name resolves to a website which features links to third-party websites such as “Internet Banking Bank,” “Banking and Finance,” and “Bad Credit – Need a Loan?” See Complainant’s Annex 12. The Panel notes that the third-party links on Respondent’s website may directly compete with Complainant’s business. The Panel determines that Respondent’s use of the disputed domain name is not a bona fide offering of goods under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Complainant argues that Respondent has placed the disputed domain name for sale with the domain name broker <domainsponsor.com>, setting the minimum offer value at $50. See Complainant’s Annex 12. Complainant contends that the average cost of a “.com” domain name is $10, making Respondent’s minimum offer value of $50 in excess of its documented out-of-pocket expenses. The Panel finds that Respondent primarily intended to offer the disputed domain name for sale to the public at the time of its registration. The Panel finds that Respondent’s offer for sale of the disputed domain name evidences that the disputed domain name was registered in bad faith under Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”).
Complainant contends that Respondent is a well-known serial cybersquatter and typosquatter which is evident by Respondent having over 28 UDRP cases decided against it. See Complainant’s Annex 13. Complainant argues that Respondent has an extensive domain name portfolio that includes domain names incorporating well-known trademarks which point to affiliate/sponsored links. The Panel finds that evidence of Respondent’s prior UDRP proceedings shows bad faith and registration under Policy ¶ 4(b)(ii). See Azar Int’l Inc. v. Texas Int’l Prop. Assocs., FA 1122600 (Nat. Arb. Forum Feb. 18, 2008) (determining that the respondent’s forty-one prior UDRP rulings were evidence of bad faith registration under Policy ¶ 4(b)(ii)).
Complainant argues that Respondent has registered the disputed domain name to confuse, attract, and profit from Internet users who are searching for Complainant’s business. Complainant further argues that Respondent could potentially use the disputed domain name to ultimately misappropriate money from consumers and thus tarnish Complainant’s STANBIC trademark. The Panel notes that Respondent’s disputed domain name resolves to a website featuring links to third-party websites such as “Internet Banking Bank,” “Banking and Finance,” “Bad Credit – Need a Loan?,” and various other websites. See Complainant’s Annex 12. The Panel notes that the links featured on Respondent’s website may directly compete with Complainant. Therefore, the Panel concludes that Respondent has registered the disputed domain name to attract Internet users for its own commercial gain, showing bad faith use and registration under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
Complainant contends that Respondent had knowledge of Complainant’s rights in the STANBIC mark at the time that it created the disputed domain name. Complainant asserts that its STANBIC trademark is internationally well-known and its STANBIC IBTC trademark is well known throughout Nigeria. The Panel finds that, due to the fame of Complainant's STANBIC and STANBIC IBTC marks, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <stanbicibtcpensionmanagers.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: December 27, 2012
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