The Standard Bank of South Africa Limited v. Software Testing Solutions (Pty) Ltd / Sadiyya Nosarka
Claim Number: FA1410001587686
Complainant is The Standard Bank of South Africa Limited (“Complainant”), represented by Daniel Greenberg of Lexsynergy Limited, United Kingdom. Respondent is Software Testing Solutions (Pty) Ltd / Sadiyya Nosarka (“Respondent”), South Africa.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <standardbankmall.com>, registered with TUCOWS, 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 October 30, 2014; the National Arbitration Forum received payment on October 30, 2014.
On October 31, 2014, TUCOWS, INC. confirmed by e-mail to the National Arbitration Forum that the <standardbankmall.com> domain name is registered with TUCOWS, INC. and that Respondent is the current registrant of the name. TUCOWS, INC. has verified that Respondent is bound by the TUCOWS, 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 October 31, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 20, 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@standardbankmall.com. Also on October 31, 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 December 1, 2014, 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
Complainant operates a banking, insurance, and financial services institution under the STANDARD BANK mark. This mark has been registered in various jurisdictions, including without limitation: South Africa (e.g., Reg. No. 78/1184, registered July 9, 1979); the Benelux Office (Belgium, the Netherlands, and Luxembourg) (e.g., Reg. No. 539,411, no registration date provided). The <standardbankmall.com> domain name is confusingly similar to Complainant’s mark because the term “mall” describes shopping malls, a location where Complainant operates most of its branches.
Respondent has no rights or legitimate interests in the <standardbankmall.com> domain name. There is no evidence that Respondent has been commonly known by the name <standardbankmall.com>. The use of the domain name is not bona fide or legitimate.
Respondent registered and is using the <standardbankmall.com> domain name in bad faith. Respondent might be phishing for the banking information of unsuspecting Internet users. Further, Respondent had to have known of Complainant’s rights in the STANDARD BANK mark prior to registering and using this confusingly similar domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, The Standard Bank of South Africa Limited, operates a banking, insurance, and financial services institution under the STANDARD BANK mark. This mark has been registered in various jurisdictions, including: South Africa (e.g., Reg. No. 78/1184, registered July 9, 1979); the Benelux Office (Belgium, the Netherlands, and Luxembourg) (e.g., Reg. No. 539,411, no registration date provided).
Respondent, Software Testing Solutions (Pty) Ltd / Sadiyya Nosarka, registered the <standardbankmall.com> domain name on July 10, 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 has rights in the STANDARD BANK mark under Policy ¶ 4(a)(i) through registration with trademark authorities in various jurisdictions. See, e.g., Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (registration with national trademark authorities shows a prima facie case of the Complainant’s rights in the mark under Policy ¶ 4(a)(i).
The <standardbankmall.com> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i) because the term “mall” describes shopping malls, a location where Complainant operates most of its branches.
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 is not commonly known by the name <standardbankmall.com> under Policy ¶ 4(c)(ii). The WHOIS information lists “Sadiyya Nosarka” as the registrant of the domain name. See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Respondent’s use of the <standardbankmall.com> domain name 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). The domain name resolves to a “Coming Soon” website, with little other content ascertainable. Such a parking website on a generic template is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See, e.g., Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent 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).”).
The record does not show a legitimate reason that Respondent has the word “bank” as part of its domain name. Respondent might be phishing for the banking information of unsuspecting Internet users which would be Policy ¶ 4(a)(iii) bad faith.See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (“The domain name <billing-juno.com> was registered and used in bad faith by using the name for fraudulent purposes.”).
Respondent had actual knowledge of Complainant’s rights in the STANDARD BANK mark prior to registering and using the <standardbankmall.com> domain name. Therefore, Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See 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).
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 <standardbankmall.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: December 15, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page