The Standard Bank of South Africa Limited v. dalvinder dhillon
Claim Number: FA1311001527717
Complainant is The Standard Bank of South Africa Limited (“Complainant”), represented by Daniel Greenberg of Lexsynergy Limited, United Kingdom. Respondent is dalvinder dhillon (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <standardbankofindia.com>, registered with GoDaddy.com, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 1, 2013; the National Arbitration Forum received payment on November 1, 2013.
On November 1, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <standardbankofindia.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 November 4, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 25, 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@standardbankofindia.com. Also on November 4, 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 November 27, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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
1. Complainant is one of the largest banks in South Africa with approximately 1,012 branches in Africa. Complainant has its own global site, <standardbank.com>, which launched on or about December 12, 1998.
2. Complainant has rights in the STANDARD BANK mark, used in connection with global banking and financial services. Complainant owns registrations for the STANDARD BANK mark with the Companies and Intellectual Property Commission (“CIPC”) in South Africa (e.g., Reg. No 1978/01182 registered March 9, 1978).
3. Respondent’s <standardbankofindia.com> domain name is confusingly similar to Complainant’s STANDARD BANK mark. The disputed domain name includes Complainant’s STANDARD BANK mark in its entirety while adding the term “of” and the geographical term “india.” The disputed domain name also adds the generic top-level domain (“gTLD”) “.com.”
4. Respondent is not commonly known by the dispute domain name, and Complainant has not authorized Respondent to use its STANDARD BANK mark in any way. The WHOIS information for the disputed domain name identifies Respondent as “dalvinder dhillon.”
5. The <standardbankofindia.com> domain name’s resolving website features competing third-party links.
6. Respondent offered to sell the disputed domain to Complainant for $3,300, which is in excess of the out-of-pocket expenses incurred in registering the disputed domain. Respondent also advertised the disputed domain name on the Go Daddy auction website for $5,000.
7. Respondent has registered several domain names that include well-known trademarks.
8. Respondent is disrupting Complainant’s business by diverting Complainant’s customers and potential customers to a website featuring links to Complainant’s competitors.
9. Respondent is attempting to attract, for profit, Internet users who are searching for Complainant’s business. Complainant presumes Respondent is receiving click-through revenue from the links that appear on the <standardbankofindia.com> domain name, and Respondent has created a likelihood of confusion with Complainant’s STANDARD BANK mark.
10. Respondent registered the <standardbankofindia.com> domain name on July 18, 2013.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the STANDARD BANK mark. Respondent’s domain name is confusingly similar to Complainant’s STANDARD BANK mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <standardbankofindia.com> domain name, and that Respondent registered and uses 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 owns registrations for the STANDARD BANK mark with the CIPC in South Africa (e.g., Reg. No 1978/01182 registered March 9, 1978). Although Respondent resides in a different jurisdiction than the one in which Complainant owns trademark registrations, a complainant need not own a registration in a respondent’s country of operation, and it is sufficient that a complainant own a registration in a different country. 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; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, the Panel finds that Complainant has rights in the STANDARD BANK mark under Policy ¶ 4(a)(i) via a valid trademark registration with the CIPC. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Complainant claims Respondent’s <standardbankofindia.com> domain name is confusingly similar to Complainant’s STANDARD BANK mark. The disputed domain name includes Complainant’s STANDARD BANK mark in its entirety while adding the term “of” and the geographical term “india.” The domain name also adds the generic top-level domain (“gTLD”) “.com.” First, the addition of a generic or descriptive term does not negate a finding of confusing similarity. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). Next, the addition of a geographic term does not sufficiently differentiate a domain name from a trademark. See Ticketmaster Corp. v. Kumar, FA 744436 (Nat. Arb. Forum Aug. 17, 2006) (finding that the <indiaticketmaster.com> domain name was confusingly similar to the complainant’s TICKETMASTER mark). Further, the addition of a gTLD is irrelevant for the purposes of confusing similarity analysis. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Therefore, the Panel finds that Respondent’s <standardbankofindia.com> domain name is confusingly similar to Complainant’s STANDARD BANK mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant claims Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its STANDARD BANK mark in any way. Complainant notes that the WHOIS information for the disputed domain name identifies Respondent as “dalvinder dhillon.” Panels look to the WHOIS record to determine whether a respondent is authorized to use the trademark, as well as the record as a whole, in determining whether the respondent is commonly known by the disputed domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Therefore, because Respondent was not authorized by Complainant to use the STANDARD BANK mark, and neither the WHOIS information nor the other evidence in the record indicates otherwise, the Panel finds that Respondent is not commonly known by the <standardbankofindia.com> domain name under Policy ¶ 4(c)(ii).
Complainant has shown that the resolving website features competing third-party links. The links on the resolving website include “Online Loan Application,” “Easy Personal Loans,” and “Loans for Blacklisted.” Using a domain name that is confusingly similar to a trademark to host third-party links to a complainant’s competitors does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. 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)). Therefore, the Panel finds that Respondent is not making 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) because the <standardbankofindia.com> domain name resolves to a website displaying links to Complainant’s competitors.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant claims Respondent registered and is using the <standardbankofindia.com> domain name in bad faith. Complainant asserts that Respondent offered to sell the disputed domain to Complainant for $3,300, which is in excess of the out-of-pocket expenses incurred in registering the disputed domain. Complainant notes that Respondent also advertised the disputed domain name on the Go Daddy auction website for $5,000. An offer to sell a domain name that is well beyond estimated out-of-pocket expenses incurred in registering the domain name demonstrates bad faith registration and use under Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name). Therefore, the Panel finds that Respondent’s offer to sell the <standardbankofindia.com> domain name for a price beyond its estimated out-of-pocket expenses connected to registering the domain name constitutes bad faith under Policy ¶ 4(b)(i).
Complainant states that Respondent is disrupting Complainant’s business by diverting Complainant’s customers and potential customers to a website featuring links to Complainant’s competitors. Links on the resolving website include “Online Loan Application,” “Easy Personal Loans,” and “Loans for Blacklisted.” Posting links to a complainant’s competitors via a confusingly similar domain name demonstrates bad faith pursuant to Policy ¶ 4(b)(ii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)). Therefore, the Panel finds that Respondent registered and is using the <standardbankofindia.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because the disputed domain features links to Complainant’s competitors, which is likely disrupting Complainant’s business.
Complainant alleges Respondent is attempting to attract and profit from Internet users who are searching for Complainant’s business. Complainant presumes Respondent is receiving click-through revenue from the links that appear on the <standardbankofindia.com> domain name, and Complainant asserts that Respondent has created a likelihood of confusion with Complainant’s STANDARD BANK mark. Using a confusingly similar domain name to display links from which a respondent presumably receives click-through revenue demonstrates bad faith pursuant to 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).”). Therefore, the Panel finds that Respondent registered and is using the <standardbankofindia.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the disputed domain name features competing third-party links from which Respondent is presumed to received click-through revenue.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <standardbankofindia.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: December 10, 2013
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