The Standard Bank of South Africa Limited v. GOLDBERG STEVEN c/o STEV INT
Claim Number: FA1408001576853
Complainant is The Standard Bank of South Africa Limited (“Complainant”), represented by Daniel Greenberg of Lexsynergy Limited, England. Respondent is GOLDBERG STEVEN c/o STEV INT (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <stanbicgha.com>, registered with eNom, Inc.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 26, 2014; the National Arbitration Forum received payment on August 26, 2014.
On August 26, 2014, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <stanbicgha.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. 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 August 26, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 15, 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@stanbicgha.com. Also on August 26, 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 September 23, 2104, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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.
A. Complainant
Policy ¶ 4(a)(i)
Complainant owns the STANBIC mark through its trademark registration with the Intellectual Property Offices in South Africa (Reg. No. 93/5749, registered July 8, 1993). Complainant also relies on common law rights, in that its extensive use of the STANBIC mark has made it recognizable by the public. Complainant uses the mark in connection with its business as one of the largest banks in South Africa. Complainant operates online through numerous domain names. The <stanbicgha.com> domain name is confusingly similar to Complainant’s STANBIC mark, because Respondent has simply added the suffix “GHA” to the mark. “GHA” is an alternative geographical abbreviation for the country code of The Republic of Ghana, which causes confusion.
Policy ¶ 4(a)(ii)
Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the <stanbicgha.com> domain name. Respondent is neither licensed nor authorized to use the STANBIC mark. Respondent registered the disputed domain name to potentially attract and profit from Internet users searching for Complainant through the act of phishing. Respondent uses the disputed domain name to attract confused Internet users for its own commercial gain.
Policy ¶ 4(a)(iii)
Complainant’s STANBIC mark is so well-known, that it is inconceivable that Respondent created the disputed domain name without actual and/or constructive knowledge of Complainant’s mark. Respondent could use the disputed domain name to send phishing related communications to Complainant’s customers.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the STANBIC mark through its trademark registration with the Intellectual Property Offices in South Africa (Reg. No. 93/5749, registered July 8, 1993). Complainant also relies on common law rights, in that its extensive use of the STANBIC mark has made it recognizable by the public. Complainant uses the mark in connection with its business as one of the largest banks in South Africa.
Respondent, GOLDBERG STEVEN c/o STEV INT, registered the disputed domain name on September 16, 2013. Respondent has no legitimate reason for registering and using Complainant’s STANBIC mark.
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 has rights in the STANBIC mark under Policy ¶ 4(a)(i).through its trademark registration with the Intellectual Property Offices of South Africa. 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).
Respondent’s <stanbicgha.com> domain name is confusingly similar to Complainant’s STANBIC mark under Policy ¶ 4(a)(i). Respondent has simply added the suffix “GHA” to the mark. “GHA” is an alternative geographical abbreviation for the country code of The Republic of Ghana. The disputed domain name differs from the mark by the affixation of the generic top-level domain (“gTLD”) “.com.” A domain name differing from a mark by only the addition of a descriptive geographic suffix is confusingly similar, and the affixation of gTLD is irrelevant to the Policy ¶ 4(a)(i) analysis. See Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
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).
Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the <stanbicgha.com> domain name under Policy ¶ 4(c)(ii). The WHOIS information identifies “Goldberg Steven” as the registrant of the disputed domain name. Respondent is neither licensed nor authorized to use the STANBIC mark. See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
Respondent has not provided any bona fide offering of goods or services, or made a legitimate noncommercial or fair use of the disputed domain name. Respondent is not a bank and has no legitimate reason for using a bank trademark in a domain name. Complainant contends that the Respondent could potentially use the disputed domain name in a phishing system, where it would capitalize on confused Internet users entering in their personal information. Phishing is 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 Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Nat. Arb. Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
The Panel may find bad faith according to the additional factors not necessarily listed under Policy ¶ 4(b). See Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar. 7, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in [¶ 4(b)], does not mean that the domain names at issue were not registered in and are not being used in bad faith.”).
Respondent has no legitimate reason for registering and using a domain name containing the trademark of a bank. See Nike, Inc. v. Azumano Travel, D2000-1598 (WIPO Feb. 17, 2001) (“No plausible explanation exists as to why Respondent selected the name NIKE as part of the Domain Names other than to trade on the goodwill of Nike.”). Furthermore, Respondent could potentially use the disputed domain name for phishing, which is evidence of bad faith under Policy ¶ 4(a)(iii). See 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).
Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name which is evidence of 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)."
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 <stanbicgha.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: October 7, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page