The Standard Bank of South Africa Limited v. Domain Admin / Private Registrations Aktien Gesellschaft
Claim Number: FA1501001598676
Complainant is The Standard Bank of South Africa Limited (“Complainant”), represented by Daniel Greenberg of Lexsynergy Limited, United Kingdom. Respondent is Domain Admin / Private Registrations Aktien Gesellschaft (“Respondent”), St. Vincent and the Grenadines.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <stanbicbankgh.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 8, 2015; the National Arbitration Forum received payment on January 8, 2015.
On January 8, 2015, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <stanbicbankgh.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.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 January 9, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 29, 2015 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@stanbicbankgh.com. Also on January 9, 2015, 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 February 6, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn 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 uses STANBIC to promote its vast banking services, which are provided to consumers and business concerns throughout Africa and beyond. The mark is registered with the South African Department of Trade and Industry (Reg. No. 93/5749, registered July 8, 1993) and with the European Union’s Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 7,406,283, registered May 27, 2009). The <stanbicbankgh.com> domain name merely adds the descriptive term “bank” and the geographic country-code “gh” (Ghana) to the mark.
Respondent has no right or legitimate interest in the <stanbicbankgh.com> domain name. First, Respondent has never been commonly known as the domain name and is not licensed to use the STANBIC mark in Internet domain names.
Respondent has registered and is using the <stanbicbankgh.com> domain name in bad faith. Respondent is attempting to profit from a likelihood that Internet users will associate the content seen on the domain name’s website with Complainant’s STANBIC mark. Further, Respondent had to have had actual notice of Complainant’s rights when registering and using this <stanbicbankgh.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding. The Panel notes that the <stanbicbankgh.com> domain name was registered April 8, 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 uses STANBIC to promote its banking services, which are provided to consumers and business concerns throughout Africa and beyond. The mark is registered both with the South African Department of Trade and Industry (Reg. No. 93/5749, registered July 8, 1993) and by the OHIM (Reg. No. 7,406,283, registered May 27, 2009). This Panel agrees that registration of the mark with the various trademark registrars constitutes sufficient evidence of Complainant’s rights 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).”).
Complainant claims that the <stanbicbankgh.com> domain name merely adds the descriptive term “bank” and the geographic country-code “gh” (Ghana) to the mark. The Panel finds that the addition of the term “bank” and of the country code “gh” does not alleviate and may actually enhance the confusing similarity as it implies a STANBIC bank branch or location within the country of Ghana. 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).
Thus, Complainant has satisfied Policy ¶ 4(a)(i).
Complainant claims that Respondent has never been commonly known as the domain name and is not licensed to use the STANBIC mark in Internet domain names. The Panel notes that Respondent has listed “Domain Name of Private Registrations Aktien Gesellschaft” as the registrant of record for the WHOIS information. The Panel concludes that Respondent is not known by this disputed domain name as intended under Policy ¶ 4(c)(ii), based on the lack of evidence to establish such a connection. See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (finding that a respondent had 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).
The Panel notes that the domain name’s website is used to promote hyperlinks to various loan and finance related websites. In Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007), the panel agreed that using a confusingly similar domain name to promote the sale of competing services is neither a Policy ¶ 4(c)(i) bona fide offering, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. Similarly, this Panel finds that Respondent’s use of this domain name for competing loan and banking service advertisements is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant has thus also satisfied Policy ¶ 4(a)(ii).
Complainant asserts that Respondent is attempting to profit from a likelihood that Internet users will associate the content seen on the domain name’s website with Complainant’s STANBIC mark. The Panel notes evidence provided by Complainant showing how Respondent uses the domain name to link web users to a website that is used to promote an array of hyperlink advertisements to competing third parties. The Panel finds that Respondent is able to profit from this use in Policy ¶ 4(b)(iv) bad faith as Internet users may click on the links in confusion, thereby generating pay-per-click referral fees for Respondent. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”).
Complainant claims that Respondent must have had actual notice of Complainant’s rights when registering and using this <stanbicbankgh.com> domain name. The Panel infers that, due to the widespread use of Complainant's mark and further due to the fact that Complainant’s mark is completely subsumed in Respondent’s domain name, Respondent had actual knowledge of the mark and of Complainant's rights. Thus, the Panel finds that Respondent registered the disputed domain name in bad faith under 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 <stanbicbankgh.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: February 18, 2015
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