national arbitration forum

 

DECISION

 

The Standard Bank of South Africa Limited v. tel4rent c/o abdallah el-khoury

Claim Number: FA1212001475705

 

PARTIES

Complainant is The Standard Bank of South Africa Limited (“Complainant”), represented by Daniel Greenberg of Lexsynergy Limited, United Kingdom.  Respondent is tel4rent c/o abdallah el-khoury (“Respondent”), represented by Shantanu Sood, India.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <standardbank.tel>, registered with NAME.COM.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on December 13, 2012; the National Arbitration Forum received payment on December 13, 2012.

 

On December 17, 2012, NAME.COM confirmed by e-mail to the National Arbitration Forum that the <standardbank.tel> domain name is registered with NAME.COM and that Respondent is the current registrant of the name.  NAME.COM has verified that Respondent is bound by the NAME.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 December 18, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 7, 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@standardbank.tel.  Also on December 18, 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.

 

A timely Response was received and determined to be complete on January 7, 2013.

 

Complainant submitted a timely Additional Submission on January 10, 2013.

 

On January 16, 2013, 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

  1. Complainant
    1. Complainant owns the STANDARD BANK mark with the following trademark authorities, among others:

                                          i.    South Africa’s Companies and Intellectual Property Registration Office (“CIPRO”) (Reg. No. 1978/01182 registered Sept. 7, 1979);

                                         ii.    Argentina’s National Institute of Industrial Property (“NIIP”) (Reg. No. 2.233.147 registered Dec. 19, 2008); and

                                        iii.    United Arab Emirates Ministry of Economy (“UAEME”) (Reg. No. 115997 registered Mar. 1, 2011).

    1. Complainant was established on October 15, 1862 as a limited liability company and is now a global banking system.  Complainant has extensive common law rights in the STANDARD BANK mark.
    2. Respondent registered the <standardbank.tel> domain name on August 4, 2011.  Respondent’s disputed domain name has directed Internet users to the finance pages located at <finance.yahoo.com>. See Complainant’s Annex 12, pg. 2. Respondent’s website was updated on June 22, 2012 by replacing the financial links with information relating to blood banks, donor banks, and sperm banks. See Complainant’s Annex 13, pg. 8. 
    3. Respondent’s <standardbank.tel> domain name is identical to Complainant’s STANDARD BANK mark, only adding the top-level domain “.tel.” 
    4. Respondent has no rights or legitimate interests in the disputed domain name.

                                          i.    There is no evidence that Respondent has been commonly known by the name comprised in the domain name.  Complainant has no association with Respondent and has never authorized or licensed Respondent to use its marks.

                                         ii.    Respondent previously used the disputed domain name to display financial information and links.

                                        iii.     Respondent changed its website to provide information relating to blood banks, donor banks, and sperm banks.

                                       iv.    Respondent has clearly used the domain name for commercial gain.

    1. The disputed domain name should be considered as having been registered and used the <standardbank.tel> domain name in bad faith.

                                          i.    Respondent has registered the disputed domain name in order to prevent Complainant from reflecting its mark in a corresponding domain name and has engaged in a pattern of such conduct.  Respondent has registered several domain names that are identical to or include other well-known South African marks.  See Complainant’s Annex 17, pgs. 1-13.  Respondent has been cited in another UDRP Complaint, under the name “FoodDiz” for which it was ordered to transfer the disputed domain names to that complainant.  See ACCOR/SoLuxury HMC v. FoodDiz , D2012-0140 (WIPO Mar. 13, 2012).

                                         ii.    Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor.  Respondent is a competitor with Complainant and had previously used the disputed domain name to provide financial listings and links to resources from the financial and banking industry that also contained advertisements for competing services.

                                        iii.    Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.  Respondent has used the disputed domain name to provide links in both the financial services industry and for blood banks, sperm banks, and others.  Respondent has monetized all of its “.tel” domain names in a similar manner.

 

B. Respondent

1.    Respondent is an individual who is legitimately engaged in the preparation of online content and directories for Internet users on a variety of topics.  Since the introduction of the “.tel” domain in 2008, Respondent “saw an opportunity of creating website directories that could be easily accessed over a number of mobile platforms without need of fast wireless/cellular networks.” 

2.    Respondent acquired a number of “.tel” domain names when they became publicly available on March 23, 2009 with the intention of building interlinked directory databases that could be easily accessed by mobile phones and similar mobile platforms.

3.    Respondent registered the disputed domain name with the intention of creating a directory of a number of donor banks catering to a variety of activities.  Respondent got the idea for the disputed domain name from an article he happened upon about a blood bank equipment supplier.  See Respondent’s Annex 5.

4.    Respondent commenced work on the structure and content of the website in March-April 2012, and began testing the website the first week of May of 2012.  See Respondent’s Annex 6.  During the testing phase, Respondent used “automatic generic news feeds from Yahoo.com.”  Respondent’s domain name did not refer to any banking or financial institution.  See Respondent’s Annex 11. 

5.    Complainant does not have broad exclusivity over the disputed term as claimed.  The “Standard Bank” term is a “very descriptive term with limited trade mark value in its own right as a word mark.”  Further, Complainant only operates in the financial area and has no interests outside of banking.  Complainant has entered disclaimers for STANDARD and/or BANK in Egypt, Singapore, and Zambia.  Therefore, Complainant’s rights in the mark are clearly limited.

6.    Complainant’s claimed common law rights in the term are also much narrower than Complainant’s assertions.  Even within the banking industry, Complainant is not the exclusive owner of the term “Standard Bank,” as many other financial institutions use such a term.

7.    Respondent’s background and explanations for its registration of the disputed domain name establish Respondent’s rights and legitimate interests in the domain name. 

                                       iv.    The disputed domain name’s registration was not predicated on Complainant’s alleged trademark.

                                        v.    Respondent has never claimed any association/authorization/endorsement by Complainant.

                                       vi.    Respondent has made demonstrable preparations to use the domain name. 

8.    Complainant has not provided any substantial evidence of bad faith and illegitimacy on Respondent’s part and has failed to meet the burden of proof. 

                                      vii.    Complainant’s theory that Respondent is a cyber-squatter that routinely registers domain names that are identical to or include well-known trademarks relies on three domain names: <danette.co>, <appletablet.tel>, and <iafrica.tel>.  Complainant’s reliance on those domain names is “conjectural at best and completely irrelevant to the present proceeding.  No adverse inference can be drawn in this regard.”  Complainant’s pointing to Respondent’s prior UDRP dispute does not evidence bad faith.  In that instance Respondent registered the domain names for what it believed was a “permitted fair use,” and the panel there found against Respondent based on other WIPO cases, not on national law allowing such nominative fair use.  No findings were made that Respondent attempted to sell the domain names in question or that it was a cyber-squatter, but the panel made a finding on a genuine legal issue.

                                     viii.    Complainant has not supported its statement, apart from making incorrect generic statements about sponsored links and advertising, that “at least one of Respondent’s purposes was to attract and profit from internet users seeking Complainant’s website…”  Complainant does not describe exactly how Respondent intended to do so and has not met the evidentiary threshold required to establish bad faith.

                                       ix.    Complainant also does not describe how Respondent is Complainant’s competitor as Complainant is a banking institution and Respondent is an individual.

                                        x.    Complainant makes the argument that because Respondent is making commercial use of the disputed domain name that bad faith must follow.  However, Complainant has misinterpreted the intent of the Policy.  Complainant must show that Respondent has no rights in the domain name and has attempted to profit off of Complainant’s mark, which Complainant has not done.

                                       xi.    Complainant relies on indirect evidence to attempt to show Respondent’s bad faith.  Complainant’s Annexure 21 contains sponsored links in a webpage that is twice removed from the disputed domain name website.  Complainant argues that Respondent is responsible for and/or derives benefit from such sponsored links, which is untrue.

 

  1. Complainant’s Additional Submission
    1. The legitimate use of a few domain names alleged by Respondent does not justify the infringement or water down the severity of cybersquatting.
    2. The disputed domain name was originally used to direct users to financial resources.
    3. Since receiving the Response, one of Complainant’s suppliers attempted to purchase the domain name from Respondent.  Upon this inquiry, Respondent offers to sell the domain name for $75,000, which was rejected, and Respondent also offered to rent the domain name.  See Complainant’s Additional Submission Annex 1, pg. 1-3. 
    4. Respondent appears to have manipulated its screenshot evidence by changing the date on his computer to show a date in the screenshot that does not match Complainant’s information.
    5. Respondent’s contrived donor bank story was only thought out after the infringement was brought to his attention due to the prior use of the domain name in relation to financial services.

 

FINDINGS

1.  Complainant has rights in its STANDARD BANK mark.

2.  Respondent’s <standardbank.tel> domain name is identical 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.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant claims that it was established on October 15, 1862 as a limited liability company and is now a global banking system.  Complainant contends that it has extensive common law rights in the STANDARD BANK mark.  Further, Complainant claims that it owns the STANDARD BANK mark with the following trademark authorities, among others:

CIPRO (Reg. No. 1978/01182 registered Sept. 7, 1979);

NIIP (Reg. No. 2.233.147 registered Dec. 19, 2008); and

UAEME (Reg. No. 115997 registered Mar. 1, 2011).

 

See Complainant’s Annex 1; see also Complainant’s Annex 21.  Complainant further asserts, within its Additional Submission, that it has trademark rights in the STANDARD BANK mark in more than 45 countries, but that it would be implausible to submit evidence of all of its trademark registrations.  The Panel  finds that Complainant’s trademark evidence establishes its rights in the STANDARD BANK mark under Policy ¶ 4(a)(i).  See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”).

 

Further, Complainant argues that Respondent’s <standardbank.tel> domain name is identical to Complainant’s STANDARD BANK mark, only adding the top-level domain “.tel.”  The Panel notes that the disputed domain name also removes the space from between the terms of the mark.  Nonetheless, the Panel  finds that Respondent’s <standardbank.tel> domain name is identical to Complainant’s STANDARD BANK mark under Policy ¶ 4(a)(i).  See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”); see also Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding that the domain name <wembleystadium.net> is identical to the WEMBLEY STADIUM mark).

 

While Respondent contends that the <standardbank.tel> domain name is comprised of common and generic/descriptive terms and as such cannot be found to be identical/confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark.  See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).

 

Rights or Legitimate Interests

 

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 contends that there is no evidence that Respondent has been commonly known by the name comprised in the domain name.  Further, Complainant asserts that it has no association with Respondent and has never authorized or licensed Respondent to use its marks.  The Panel notes that the WHOIS information for the <standardbank.tel> domain name identifies the registrant as “Abdallah el-khoury / tel4rent.”  The Panel finds that, based upon the WHOIS information, 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, within its Complaint and Additional Submission, that Respondent previously used the disputed domain name to display financial information and links.  See Complainant’s Annex 12, pg. 2.  Complainant notes that Respondent’s disputed domain name has directed Internet users to the finance pages located at <finance.yahoo.com>. See Id.  Complainant asserts generally throughout its submissions that Respondent benefitted commercially from this prior use.  The Panel finds that the article links may be competitive with Complainant’s offerings as Complainant is a banking institution.  Therefore, the Panel finds that Respondent’s prior use of the disputed domain name to direct Internet users to the finance newsfeed at <finance.yahoo.com> does not amount to 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).  See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”).

 

Further, Complainant notes that Respondent’s website was updated on June 22, 2012 by replacing the financial links with information relating to blood banks, donor banks, and sperm banks. See Complainant’s Annex 13, pg. 8.  Again, Complainant states that Respondent has clearly used the domain name for commercial gain.  The Panel agrees that Respondent’s updated use of the disputed domain name is also 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).  See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)).

 

Respondent claims that it is an individual who is legitimately engaged in the preparation of online content and directories for Internet users on a variety of topics.  Respondent asserts that since the introduction of the “.tel” domain in 2008, Respondent “saw an opportunity of creating website directories that could be easily accessed over a number of mobile platforms without need of fast wireless/cellular networks.”  Respondent goes on to state that it acquired a number of “.tel” domain names when they became publicly available on March 23, 2009 with the intention of building interlinked directory databases that could be easily accessed by mobile phones and similar mobile platforms.  Respondent argues that it registered the disputed domain name with the intention of creating a directory of a number of donor banks catering to a variety of activities.  Respondent claims that it got the idea for the disputed domain name from an article he happened upon about a blood bank equipment supplier.  See Respondent’s Annex 5.  Respondent asserts that it commenced work on the structure and content of the website in March-April 2012, and began testing the website the first week of May of 2012.  See Respondent’s Annex 6.  During the testing phase, Respondent states that it used “automatic generic news feeds from Yahoo.com.”  Respondent claims that Respondent’s domain name did not refer to any banking or financial institutions.  See Respondent’s Annex 11.  Respondent argues that it has made demonstrable preparations to use the disputed domain name for a directory service of various donor banks.  See SFX Entm’t, Inc. v. Cushway, D2000-0356 (WIPO July 10, 2000) (finding that the respondent had rights and legitimate interests in the disputed domain name where he began demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services).  Further, Respondent asserts within its bad faith section, that its use of the domain name for a commercial online directory of donor bank services is not automatic evidence of illegitimate use.  The Panel does not agree that a links directory website can be a bona  fide offering of goods or services, and finds that Respondent has no rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(i). 

 

Respondent  argues that the terms of the <standardbank.tel> domain name are common and generic and/or descriptive, and therefore, Complainant does not have an exclusive monopoly on the terms on the Internet.  Respondent argues that many other entities, including those in the banking industry, use the term “Standard Bank,” for their services, and argues that Complainant’s rights cannot extend to every use of the terms “standard” and “bank” together.  The Panel does not agree with Respondent.

 

Registration and Use in Bad Faith

 

Within its Additional Submission, Complainant asserts that since receiving the Response, one of Complainant’s suppliers attempted to purchase the domain name from Respondent.  Upon this inquiry, Complainant contends that Respondent offered to sell the domain name for $75,000, which was rejected, and Respondent also offered to rent the domain name.  See Complainant’s Additional Submission Annex 1, pg. 1-3.  The Panel finds this to be true. The Panel  finds that Respondent has registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(i).  See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000)  (finding that the attempted sale of a domain name is evidence of bad faith).

 

Complainant claims that Respondent has registered the disputed domain name in order to prevent Complainant from reflecting its mark in a corresponding domain name and has engaged in a pattern of such conduct.  Complainant argues that Respondent has registered several domain names that are identical to or include other well-known South African marks.  See Complainant’s Annex 17, pgs. 1-13.  Further, Complainant argues that Respondent has been cited in another UDRP Complaint, under the name “FoodDiz” for which it was ordered to transfer the disputed domain names to that complainant.  See ACCOR/SoLuxury HMC v. FoodDiz , D2012-0140 (WIPO Mar. 13, 2012).  The Panel notes that Respondent agrees that it was the identified respondent in this prior case, regardless of the difference in names within the caption.  The Panel finds that Complainant’s evidence establishes Respondent’s bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(ii).  See Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks); see also Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005) (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another UDRP proceeding against the respondent to find that “this is part of a pattern of such registrations”).

 

Further, Complainant argues that Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor.  Complainant asserts that Respondent is a competitor with Complainant and had previously used the disputed domain name to provide financial listings and links to resources from the financial and banking industry that also contained advertisements for competing services.  The Panel notes that prior UDRP panels have held that the display of competing links at a website resolving from a disputed domain name is evidence of bad faith 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)).  The Panel agrees and finds as such in the current instance. The Panel finds that Respondent’s previously resolving website featured competing third-party hyperlinks.  

 

Lastly, Complainant argues that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.  Complainant asserts that Respondent has used the disputed domain name to provide links in both the financial services industry and for blood banks, sperm banks, and others, and that Respondent has monetized all of its “.tel” domain names in a similar manner.  The Panel finds that Respondent has intentionally used Complainant’s mark to attract Internet users to the resolving website, and that Respondent is commercially benefitting from such use of the disputed domain name. The Panel finds that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv).  See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees.   Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <standardbank.tel> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Tyrus R. Atkinson, Jr., Panelist

Dated:  January 29, 2013

 

 

 

 

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