The Standard Bank of South Africa Limited v. Knight Anderson
Claim Number: FA1302001483626
Complainant is The Standard Bank of South Africa Limited (“Complainant”), represented by Daniel Greenberg of Lexsynergy Limited, United Kingdom. Respondent is Knight Anderson (“Respondent”), Indiana, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <stanbic-ibtc.net>, registered with MELBOURNE IT, LTD. D/B/A INTERNET NAMES WORLDWIDE.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 5, 2013; the National Arbitration Forum received payment on February 5, 2013.
On February 6, 2013, MELBOURNE IT, LTD. D/B/A INTERNET NAMES WORLDWIDE confirmed by e-mail to the National Arbitration Forum that the <stanbic-ibtc.net> domain name is registered with MELBOURNE IT, LTD. D/B/A INTERNET NAMES WORLDWIDE and that Respondent is the current registrant of the name. MELBOURNE IT, LTD. D/B/A INTERNET NAMES WORLDWIDE has verified that Respondent is bound by the MELBOURNE IT, LTD. D/B/A INTERNET NAMES WORLDWIDE 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 7, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 27, 2013 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-ibtc.net. Also on February 7, 2013, 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 March 13, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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.
Complainant’s Contentions
Policy ¶ 4(a)(i)
1. Complainant has rights in the STANBIC mark by way of trademark registrations of the mark with the South African Department of Trade and Industry (“SADTT”) (E.g. Reg. No. 93/5749 registered on July 8, 1993).
2. Respondent’s domain name is confusingly similar to the STANBIC mark. Respondent has merely added the term “ibtc” which is both descriptive of Complainant’s d/b/a in Nigeria, and seeks to replicate a pending trademark application for the STANBIC IBTC mark in Nigeria. The insertion of a hyphen and the generic top-level domain (“gTLD”) “.net” does nothing to cure the confusing similarity.
Policy ¶ 4(a)(ii)
3. is no evidence at all that Respondent was commonly known by the disputed domain name.
4. Respondent made no bona fide offering of goods or services, nor is there any apparent legitimate noncommercial or fair use of the domain name occurring.
Policy ¶ 4(a)(iii)
5. Respondent sought to confuse Internet users into believing that communications or other interactions between Respondent and the Internet user would be misconstrued as legitimate dealings with Complainant.
6. Respondent’s bad faith is illustrated by its inactive use of the disputed domain name.
7. Alternatively, if there is some use of this domain name it is most likely in the form of using the domain name to host e-mail addresses with which Respondent can carry out scams and phishing schemes.
8. Respondent had actual knowledge of Complainant’s rights in the mark. This is evident from Complainant’s international status as a major participant in the bank and financial services industry.
Respondent’s Contentions
1. Respondent did not submit a Response. The Panel notes that the <stanbic-ibtc.net> domain name was registered on March 17, 2012.
1. Respondent’s <stanbig-ibtc.net> domain name is confusingly similar to Complainant’s STANBIC mark.
2. Respondent does not have any rights or legitimate interests in the <stanbig-ibtc.net > domain name.
3. Respondent registered and used the <stanbig-ibtc.net > 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 has rights in the STANBIC mark by way of trademark registrations of the mark with the SADTT (E.g. Reg. No. 93/5749 registered on July 8, 1993). The Panel notes that Complainant’s record also illustrates rights to the STANBIC mark within the E.U. Office for Harmonization in the Internal Market (“OHIM”) (E.g. Reg. No. 7,406,283 registered on May 27, 2009). The Panel agrees that evidence of trademark registration with multiple trademark agencies is a satisfactory showing of Complainant’s rights under 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). Further, the Panel finds that Complainant need not own a trademark registration in the country of Respondent. 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).
Complainant further argues that Respondent’s <stanbic-ibtc.net> domain name is confusingly similar to the STANBIC mark. Complainant observes that Respondent has merely added the term “ibtc,” which is both descriptive of Complainant’s d/b/a name in Nigeria, and seeks to replicate a pending trademark application for the STANBIC IBTC mark in Nigeria. Complainant disposes of the remaining additions by noting that the insertion of a hyphen and the gTLD “.net” does nothing to cure the confusing similarity. The Panel agrees that neither a descriptive term, hyphen, or gTLD make this domain name different from the STANBIC mark in any meaningful way under Policy ¶ 4(a)(i). See Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); 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).
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 maintains that there is no evidence at all that Respondent was commonly known by the disputed domain name. The Panel notes that the WHOIS information lists one “Knight Anderson” as the registrant of the <stanbic-ibtc.net> domain name. The Panel agrees that in the absence of any other evidence, it is safe to conclude that Respondent is not commonly known as the <stanbic-ibtc.net> domain name under Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Complainant generally argues that Respondent made no bona fide offering of goods or services, nor is there any apparent legitimate noncommercial or fair use of the domain name occurring. Complainant suspects that the domain name may be involved in some sort of phishing scheme in which Respondent is using the domain name for purposes of hosting e-mail addresses that will deceive Internet users into believing they are communicating with Complainant. The Panel notes that the domain name presently resolves to a website devoid of practically any meaningful content with a broken webpage icon. See Complainant’s Ex. 12. The Panel agrees that whether the domain name is being used to phish for Internet user’s information via an e-mail scam, or is merely sitting unused, there is no bona fide offering under Policy ¶ 4(c)(i) and no legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) in either case. See 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).”); 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).”).
The Panel notes that while Complainant references Policy ¶ 4(b)(iv) in passing, it makes no clear arguments under any of the ¶ 4(b) examples of bad faith. The Panel agrees however that it is unnecessary for Complainant to do so, as the list in Policy ¶ 4(b) is intended to serve as a guidepost and is not an exclusive list of bad faith under the Policy. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith).
Complainant alleges that Respondent’s bad faith is illustrated by its inactive use of the disputed domain name. The Panel notes that the domain name does appear to resolve to a website that is a “template” or other form of default that is hosted when a domain name resolves to an inactive or undeveloped website. See Complainant’s Ex. 12. The Panel agrees that Respondent’s failure to put the domain name to an active use after nearly a year of registration is evidence of bad faith under 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).
Alternatively, Complainant claims that if there is some use of this domain name it is most likely in the form of using the domain name to host e-mail addresses with which Respondent can carry out scams and phishing schemes. The Panel believes Complainant’s accusations, and it agrees with other panels in finding that the use of a domain name to create e-mail accounts that assist in the swindling of personal information through a phishing scheme constitutes bad faith use and registration under Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers).
Complainant finally contends that Respondent had actual knowledge of Complainant’s rights in the mark. Complainant claims that this knowledge is evident from Complainant’s international status as a major participant in the bank and financial services industry. The Panel here concludes that 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).
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-ibtc.net> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: March 26, 2013
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