The Standard Bank of South Africa Limited v. zhang yushan c/o Dynadot Privacy
Claim Number: FA1304001495836
Complainant is The Standard Bank of South Africa Limited (“Complainant”), represented by Daniel Greenberg of Lexsynergy Limited, United Kingdom. Respondent is zhang yushan c/o Dynadot Privacy (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <standardbankinternetbanking.com>, registered with DYNADOT, LLC.
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.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 22, 2013; the National Arbitration Forum received payment on April 22, 2013.
On April 24, 2013, DYNADOT, LLC confirmed by e-mail to the National Arbitration Forum that the <standardbankinternetbanking.com> domain name is registered with DYNADOT, LLC and that Respondent is the current registrant of the name. DYNADOT, LLC has verified that Respondent is bound by the DYNADOT, 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 April 24, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 14, 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@standardbankinternetbanking.com. Also on April 24, 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 May 23, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.), 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.
i. There is no evidence that Respondent has been commonly known by the name comprised in the domain.
ii. Respondent has clearly registered and used the domain to attract, confuse, and profit from Internet users seeking the Complainant.
i. Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct.
ii. Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor.
iii. The website at the domain is essentially a scheme adopted by Respondent to confuse, attract, and profit from Internet users who are searching for Complainant’s business in search engines, web browsers, and otherwise on the Internet.
The domain name was registered on or about January 30, 2011
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds that the Complainant is entitled to the relief requested.
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, asserts that it is one of the largest banks in South Africa and is considered to be a leader in banking products and related financial services in South Africa. Complainant is the owner of trademark registrations with South Africa’s CIPC for the STANDARD BANK mark (Reg. No. 1978/01182, registered March 9, 1978). Therefore, the Panel holds that Complainant’s registration of the STANDARD BANK mark with the CIPC sufficiently establishes its rights in the mark under Policy ¶ 4(a)(i). See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (“Complainant has established rights in the AIM mark through its use and federal trademark registrations for purposes of Policy ¶ 4(a)(i).”).
Complainant asserts that the term “STANDARDBANKINTERNETBANKING” is confusingly similar to Complainant’s STANDARD BANK trademark. Complainant argues that the addition of the descriptive words “Internet” and “banking” refers to the service provided by the Complainant that allows its clients to access their online banking service facilities. The Panel finds that Respondent’s addition of descriptive terms does not distinguish Respondent’s domain name from Complainant’s marks under Policy ¶ 4(a)(i). See Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”). The Panel notes that Respondent removes the spaces in Complainant’s STANDARD BANK mark in its disputed domain name. Complainant contends that the addition to a trademark of a gTLD is disregarded as insignificant for purposes of determining the similarity between the domain and the trademark. The Panel determines that the removal of spaces and addition of a gTLD is inconsequential to a Policy ¶ 4(a)(i) analysis. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). Therefore, the Panel concludes that Respondent’s <standardbankinternetbanking.com> is confusingly similar to Complainant’s STANDARD BANKING mark pursuant to Policy ¶ 4(a)(i).
Complainant has proven this element.
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 asserts that there is no evidence that Respondent has been commonly known by the name comprised in the domain. Complainant argues that the WHOIS information identifies Respondent as “zhang yushan c/o Dynadot Privacy,” which is not similar to the disputed domain name. Complainant contends that it has no association with Respondent and has never authorized or licensed Respondent to use its trademarks. Thus, the Panel holds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant contends that Respondent has clearly registered and used the domain to attract, confuse, and profit from Internet users seeking the Complainant. The Panel notes that Respondent is using the disputed domain name to host a competing hyperlink directory. The Panel notes that Respondent’s hyperlink directory features competing links titled “Internetbanking,” “Internet Bank Account,” “Standard Bank,” and others. The Panel finds that Respondent’s use of the disputed domain name to host a competing hyperlink directory is not a bona fide offering of goods or services under Policy ¶ 4(a)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(a)(i). See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”).
Complainant has proven this element.
Complainant contends that Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name and that Respondent has engaged in a pattern of such conduct. Complainant asserts that Respondent was cited in three other UDRP Complaints, namely: Microsoft Corp. v. chen wenjie / Private Whois Service, FA 1384976 (Nat. Arb. Forum June 29, 2011); LEGO Juris A/S v. Chen Wenjie, D2012-1286 (WIPO September 4, 2011); LEGO Juris A/S v. chen wenjie c/o Dynadot Privacy, D2012-2439 (WIPO February 6, 2013). Complainant argues that Respondent was ordered to transfer all of the domain names that were the subject of the UDRP complaints. Consequently, the Panel determines that Respondent’s prior UDRP proceedings resulting in findings of bad faith evidence bad faith use and registration in the instant case under Policy ¶ 4(b)(ii). See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations).
Complainant contends that Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor. Complainant argues that Respondent unfairly diverts business intended for Complainant. Complainant argues that Respondent is a competitor as there was banking and financial service listings on the website linking to competitors and/or competing services from the financial and banking sector. The Panel notes that Respondent’s hyperlink directory features competing links titled “Internetbanking,” “Internet Bank Account,” “Standard Bank,” and others. Accordingly, the Panel finds that Respondent’s use of the disputed domain name disrupts Complainant’s business under Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant claims that the website at the domain is essentially a scheme adopted by Respondent to confuse, attract, and profit from Internet users who are searching for Complainant’s business in search engines, web browsers, and otherwise on the Internet. Complainant claims that it is well known that many directory websites generate revenue by directing traffic to other websites. Thus, the Panel finds that Respondent’s use of the disputed domain name to intentionally divert Internet users for its own commercial gain evidences bad faith use and registration pursuant to 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.’”).
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <standardbankinternetbanking.com> domain name be TRANSFERRED from Respondent to Complainant.
Karl V. Fink (Ret.), Panelist
Dated: May 24, 2013
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