The Standard Bank of South Africa Limited v. stanbicint c/o Bradley hamed
Claim Number: FA1402001544072
Complainant is The Standard Bank of South Africa Limited (“Complainant”), represented by Daniel Greenberg of Lexsynergy Limited, United Kingdom. Respondent is stanbicint c/o Bradley hamed (“Respondent”), Malaysia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <stanbicint.com>, registered with Internet.bs Corp.
The undersigned certifies that he acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 18, 2014; the National Arbitration Forum received payment on February 18, 2014.
On February 19, 2014, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <stanbicint.com> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. 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 19, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 11, 2014 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@stanbicint.com. Also on February 19, 2014, 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 17, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 makes the following assertions:
1. Respondent’s <stanbicint.com> domain name, the domain name at issue, is confusingly similar to Complainant’s STANBIC mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Standard Bank of South Africa Limited, 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 holds a trademark registration with South Africa’s Companies and Intellectual Properties Commission (“CIPC”) for the STANBIC mark (Reg. No. 93/5749, registered July 8, 1993).
There is no evidence that Respondent has been commonly known by the name comprised in the domain name. Respondent could potentially use the domain name to send phishing related communications to Complainant’s customers ultimately misappropriating money and tarnishing Complainant’s trademarks and business. The trademarks STANBIC and STANBIC BANK are well-known internationally.
Respondent registered the <stanbicint.com> domain name on February 1, 2013.
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 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 holds a trademark registration with South Africa’s CIPC for the STANBIC mark (Reg. No. 93/5749, registered July 8, 1993). Respondent appears to reside in Malaysia. However, it is irrelevant whether Complainant has registered its mark in the country in which Respondent resides under Policy ¶ 4(a)(i). 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). Thus, Complainant’s registration of the STANBIC mark with South Africa’s CIPC suffices to show rights in the mark under Policy ¶ 4(a)(i). See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through the complainant’s national trademark registrations).
The term STANBICINT in the domain name at issue is confusingly similar to Complainant’s STANBIC mark. The relevant part of the domain name is STANBIC, and the addition of the descriptive abbreviation “int” for “International” is often used to refer to a multi-national company such as Complainant. Respondent’s inclusion of a descriptive term is inconsequential to a Policy ¶ 4(a)(i) confusingly similar analysis. 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”). Respondent includes the generic top-level domain (“gTLD”) “.com” in its <stanbicint.com> domain name. Such inclusion of a gTLD does not differentiate the disputed domain name from Complainant’s mark enough as to avoid a finding of confusing similarity under Policy ¶ 4(a)(i). See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD is “unable to create a distinction capable of overcoming a finding of confusing similarity”). Thus, Respondent’s <stanbicint.com> domain name is confusingly similar to Complainant’s STANBIC mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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.”).
There is no evidence that Respondent has been commonly known by the name comprised in the <stanbicint.com> domain name. Complainant has no association with Respondent and has never authorized or licensed Respondent to use its mark. Respondent is identified as “stanbicint c/o Bradley hamed” in the WHOIS record. However, the Panel observes that Respondent provides no other evidence, other than the WHOIS record, that it is commonly known by the disputed domain name. Therefore, although it may appear that Respondent is commonly known by the <stanbicint.com> domain name based on the WHOIS information, the Panel finds that Respondent’s lack of evidence showing that it is known by the disputed domain name demonstrates that it is not known by the <stanbicint.com> domain name under Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”).
Complainant contends that Respondent could potentially use the <stanbicint.com> domain name to send phishing related communications to Complainant’s customers ultimately misappropriating money and tarnishing Complainant’s trademarks and business. Such phishing can be carried out via email or through a website. An unsuspecting client of Complainant might assume that an email from <info@stanbicint.com> originates from Complainant’s website, and therefore disclose their confidential information. Respondent has been able to send and receive emails from the domain name. The Panel agrees with Complainant and holds that Respondent is using the disputed domain name to phish for confidential information, finding a lack of bona fide offering of goods or services under Policy ¶ 4(c)(i) or a lack of a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Allianz of Am. Corp. v. Bond, FA 690796 (Nat. Arb. Forum June 12, 2006) (holding that the respondent’s use of the <allianzcorp.biz> domain name to fraudulently acquire the personal and financial information of Internet users seeking Complainant’s financial services was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)).
Respondent has not yet put the domain name to an active use. Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii) may be traced to the fact that Respondent has yet to make an actual use of the domain name. See Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Apr. 12, 2007) (finding that the respondent lacked rights or legitimate interests in a confusingly similar domain name that it had not made demonstrable preparations to use since its registration seven months prior to the complaint).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Registration of the disputed domain name by Respondent is explicable only as a deliberate attempt to cause and/or create a likelihood of confusion in the minds of the public as to an association between Respondent and Complainant. Respondent could potentially use the <stanbicint.com> domain name to send phishing related communications to Complainant’s customers ultimately misappropriating money and tarnishing Complainant’s trademarks and business. The Panel accepts Complainant’s reasonable conjecture that Respondent is using the disputed domain name to attempt to phish personal information and finds that Respondent is trying to divert Internet users from Complainant’s website to its own website, for which it may commercially benefit, and finds bad faith under Policy ¶ 4(b)(iv). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (determining that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name). While Complainant has not provided evidence of Respondent’s use of the disputed domain name, the Panel notes that Respondent has failed to make an active use of the <stanbicint.com> domain name and as such the Panel infesr 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).
Complainant's trademarks STANBIC and STANBIC BANK are well-known internationally, because it is a major participant in the banking and financial services industry. Complainant’s registered trademark rights predate Respondent’s registration of the disputed domain name by at least twenty years. Therefore, it is doubtful that Respondent independently, without knowledge of Complainant, created the <stanbicint.com> domain name. While panels have concluded that constructive notice alone is not sufficient to find bad faith, this Panel holds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights and that Respondent registered the <stanbicint.com> domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); 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).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <stanbicint.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: March 18, 2014
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