Bid Industrial Holdings (Proprietary) Limited v. Johnson
Claim Number: FA1302001486845
Complainant is Bid Industrial Holdings (Proprietary) Limited (“Complainant”), represented by Daniel Greenberg of Lexsynergy Limited, United Kingdom. Respondent is Johnson (“Respondent”), South Africa.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bidvest-bank.com>, registered with Melbourne IT, Ltd. d/b/a Internet Names Worldwide.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 25, 2013; the National Arbitration Forum received payment on February 25, 2013.
On February 26, 2013, Melbourne IT, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <bidvest-bank.com> 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 28, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 20, 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@bidvest-bank.com. Also on February 28, 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 29, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant owns South African trademark 2007/12920 dated 2 July 2007 for the word mark & device BIDVEST BANK in class 36 in respect of "Insurance services; financial affairs; monetary affairs; real estate affairs; financial services, provision of credit, credit card services, financial guarantees, financial transactions, leasing and financing of credit to wholesale; preparation of reports." Additionally, BIDVEST BANK trademarks are registered in Lesotho, Malawi, Botswana, Swaziland and Zambia.
As of December 15, 2009 the at-issue domain name addressed a website comprising pay-per-click advertising links to various financial service providers and banks, which compete with the Complainant’s businesses.
Complainant sent several cease and desist letters to Respondent; they were never answered.
Respondent set out to attract business intended for the Complainant. Such activity by the Respondent presupposes that the Complainant's business was known and identified by the marks BIDVEST and BIDVEST BANK.
The Complainant's trademark rights in BIDVEST have been established in previous UDRP proceedings.
The Complainant has no association with the Respondent and has never authorized or licensed the Respondent to use its trademarks.
The Respondent has used the at-issue domain name and the Complainant's trademarks to attract, confuse and profit from Internet users seeking the Complainant. Such use of the Domain is not "bona fide".
There is no evidence that the Respondent has been commonly known by the name comprised in the at-issue domain name.
The website at the at-issue domain name was essentially a scheme adopted by the Respondent to confuse, attract and profit from internet users who are searching for the Complainant's business in search engines, web browsers and otherwise on the internet.
Respondent had the Complainant and its business in mind when registering and using the at-issue domain name. Respondent registered a domain name that was identical to the Complainant's trademark BIDVEST BANK; the Respondent is located in the same country as the Complainant (the Republic of South Africa) and it would be difficult to imagine that the Respondent would not have been aware of the Complainant's trademark rights given the extensive exposure and size of the Complainant's operations in that country. Furthermore, Complainant is internationally well-known and is a major participant in business activities within South Africa.
Respondent’s use of the at-issue domain name is intended by the Respondent to create a likelihood of confusion in the minds of the public as to an association between the Respondent and the Complainant.
It is clear that Respondent was out for commercial gain by means of affiliate sponsored links and advertising. At least one of the Respondent's purposes was to attract and profit from internet users seeking the Complainant's website.
There can be no possible legitimate basis for the Respondent independently deriving at a domain name that is identical to the BIDVEST BANK trademark. Respondent would have come across the Complainant's domain names during its Whois searches prior to registering the at-issue domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds numerous national trademark registrations for its BIDVEST BANK.
Respondent is not authorized to use Complainant’s trademark in any capacity.
Respondent registered the at-issue domain name after Complainant acquired rights in the BIDVEST BANK mark.
Respondent used the <bidvest-bank.com> domain name to host a website comprising pay-per-click advertising links to various financial service providers and banks, which compete with the Complainant.
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 at-issue domain name is identical to a trademark in which Complainant has rights.
Complainant shows via its South African and other national trademark registrations concerning BIDVEST BANK that it has rights in a mark under Policy ¶4(a)(i). See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (finding that the complainant’s various trademark registrations with agencies around the world serve to secure its rights in the claimed mark under the Policy).
Respondent’s <bidvest-bank.com> domain name is, pursuant to Policy ¶ 4(a)(i), identical to Complainant’s BIDVEST BANK mark. The difference between Respondent’s domain name and Complainant’s mark is the mere addition of “.com” and placement of a hyphen between the elements of the BIDVEST BANK mark. The resulting slight variance between the at-issue domain name and Complainant’s trademark is irrelevant to Policy ¶ 4(a)(i) analysis. 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).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond and as discussed below there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights or interests in respect of the at-issue domain name, Complainant’s prima facie showing acts conclusively.
WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Johnson” and the record before the Panel contains no evidence that might otherwise tend to prove, contrary to the WHOIS information, that Respondent is commonly known by the at-issue domain name. The Panel therefore concludes that Respondent is not commonly known by the at-issue domain name for the purposes of 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).
Respondent is using the at-issue domain name to trick consumers into visiting its website so that they may utilize the pay-per-click advertising links found there. Unsuspecting consumers attempting to visit Complainant’s website may inadvertently visit Respondent’s site and while there may navigate via one or more of the displayed pay-per-click links. Respondent, in turn, profits from the pay-per-click advertising. Respondent’s intent in registering and using the <bidvest-bank.com> domain name was thus to divert traffic away from Complainant and to Respondent. Using the at-issue domain name in this manner is neither a bona fide offering of services or goods under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See 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 at-issue domain name was registered is being used in bad faith. As discussed below, multiple Policy ¶4(b) bad faith circumstance are present and there is additional non-Policy ¶4(b) evidence from which the Panel may independently conclude under Policy ¶4(a)(iii) that Respondent acted in bad faith in registering and using the at-issue domain name.
Respondent registered and used the at-issue domain name for commercial gain by creating a false association between the at-issue domain name and Complainant and then capitalizing on such association via the pay-per-click links placed on the at-issue domain name’s website. As part of Respondent’s scheme Internet users seeking Complainant were diverted away from Complainant’s authorized website and unwittingly delivered to Respondent’s website where they were exposed to links to Complainant’s competitors. These circumstances disrupt Complainant’s business and thereby demonstrates bad faith registration of the domain name under Policy ¶ 4(b)(iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Additionally, using the confusingly similar domain name in this manner demonstrates bad faith under Policy ¶4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Finally, in light of Respondent’s registration and use of a domain name that is identical to Complainant's BIDVEST BANK mark, Respondent’s residence in the same geopolitical area as Complainant, the notoriety of Respondent’s mark and the links to Complainant’s competitors that are displayed on Respondent’s <bidvest-bank.com> website, it is inconceivable that Respondent could have registered the at-issue domain name without having actual knowledge of Complainant's rights therein. Respondent’s prior knowledge of Complainant's rights in the <bidvest-bank.com> domain name further suggests Respondent’s bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bidvest-bank.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: April 1, 2013
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