DECISION

 

The Standard Bank of South Africa Limited v. xxxx / BAFF MARK

Claim Number: FA1602001659136

 

PARTIES

Complainant is The Standard Bank of South Africa Limited (“Complainant”), represented by Lexsynergy Limited, UK.  Respondent is xxxx / BAFF MARK (“Respondent”), Nigeria.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <stanbiclbtcbank.com>, registered with Domain.com, LLC.

 

PANEL

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.

 

Debrett G. Lyons as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on February 2, 2016; the Forum received payment on February 2, 2016.

 

On February 2, 2016, Domain.com, LLC confirmed by e-mail to the Forum that the <stanbiclbtcbank.com> domain name is registered with Domain.com, LLC and that Respondent is the current registrant of the name.  Domain.com, LLC has verified that Respondent is bound by the Domain.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 February 3, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 23, 2016 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@stanbiclbtcbank.com.  Also on February 3, 2016, 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 Forum transmitted to the parties a Notification of Respondent Default.

 

On February 29, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant

Complainant asserts trademark rights in STANBIC, STANBIC BANK and STANBIC IBTC and alleges that the disputed domain name is confusingly similar to one or more of its trademarks. 

 

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.

 

Complainant alleges that Respondent registered and used the disputed domain name in bad faith.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The factual findings pertinent to the decision in this case are that:

1.    Complainant is a South African based business which provides banking and financial services;

2.    Complaint is the registered proprietor of South African trademark registration 2006/25776 for the mark STANBIC BANK & Device;

3.    Complaint is the registered proprietor of South African trademark registration 93/5749 for the mark, STANBIC;

4.    Complainant is the applicant for registration of pending application 2010/0115 in Nigeria;

5.    In Nigeria[1], Complainant trades under the name STANBIC IBTC BANK PLC;

6.    the disputed domain name was registered on May 30, 2015;

7.    the domain name resolves to a website with links to third party providers of financial services; and

8.    There is no relationship between the parties and Complainant has not authorized Respondent to use its trademark or register any domain name incorporating its trademark.

 

DISCUSSION

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(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. 

 

Trademark Rights / Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.

 

It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights.  In this case Complainant provides proof of registration of the trademarks STANBIC and STANBIC BANK with the national authority in South Africa.  Panel is therefore satisfied that it has trademark rights in those marks.

 

On the other hand, Panel finds that Complaint has no trademark rights in STANBIC IBTC.  The pending application in Nigeria does not give rights[2] and the common law claim is based on an unsupported assertion of “extensive use”.[3]

 

For those reasons Panel must disregard submissions on confusing similarity which depend on rights in the expression, STANBIC IBTC.  Panel accepts that for the purposes of comparison, the gTLD, “.com”, can be disregarded in this case.  The relevant comparisons resolve to the term, stanbiclbtcbank, with the trademarks STANBIC and STANBIC BANK.

 

Complainant’s submissions, redacted so as to focus them so far as possible, are that “[T]he term ‘STANBIC-LBTC’ is confusingly similar to the Complainant’s trademarks STANBIC and STANBIC BANK…”  “The term ‘STANBIC LBTC BANK” remains the dominant feature of the Domain.”

 

Panel notes that absent any proven rights in STANBIC IBTC (still less in “IBTC” on its own) and in the absence of any shown meaning in the letters, “ibtc”, there is no imperative to deconstruct the term, “stanbiclbtcbank”, in the way Complainant has done, namely, STANBIC-LBTC or STANBIC LBTC BANK.

 

In the absence of any shown meaning (as a trademark, or otherwise) in the letters, “ibtc”, Panel finds that there is a not insignificant percentage of English speaking internet users who might only identify the word “bank” and treat the remaining letters as gibberish.

 

Nonetheless, there remains an argument that since there is no shown meaning in the letters “ibtc” and no obvious meaning in the used letters “lbtc” then, when the trademark STANBIC BANK and the term “stanbiclbtcbank” are viewed as wholes, those letters are likely to be disregarded with the result that that there is a level of confusingly similarity.  Panel finds there is just enough to indicate that the compared terms are confusingly similar.

 

Rights or Legitimate Interests

Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:

 

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;  or

 

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights;  or

 

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

 

Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see Do The Hustle, LLC v. Tropic Web, D2000- 0624 (WIPO Aug. 21, 2000)).

 

The publicly available WHOIS information identifies “BAFF MARK” as the registrant of the domain name and so there is no prima facie evidence that Respondent might be commonly known by the disputed domain name.  There is no evidence that Respondent has any trademark rights. 

 

Complainant asserts that there has been neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name.  Complainant refers to a claim of “phishing” and directs Panel to its submissions under paragraph 4(a)(iii) of the Policy.

 

Under paragraph 4(a)(iii) of the Policy, Complainant states that “respondent’s website is littered with a variety of affiliate links relating to the banks and the financial services sector, the Complainant, the Complainant’s competitors and other businesses.”

 

There is no further reference to phishing.  Another Panel might have reasoned that Complainant has not properly addressed paragraph 4(a)(ii) of the Policy and had not made a prima facie case.

 

Exhibit 12 to the Complaint shows the resolving website.  There is a reference to Complainant.  There are links such as “Claim Bank Fees Back”, “How to Claim PPI Back” and “PPI Insurance Claim”, all being financial services of a kind.  Panel takes that evidence into account in drawing its own findings for the purposes of paragraph 4(a)(ii) of the Policy.

 

Such use shows neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use (see Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”).

 

Accordingly, Panel finds that Complainant has established a prima facie case and so the onus shifts to Respondent to establish a legitimate interest in the domain name.

 

In the absence of a Response there is nothing on which a claim to rights or interests in the domain name can rest and so finds that Complainant has satisfied the second limb of the Policy.

Registration and Use in Bad Faith

Complainant must then prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being or was used in bad faith.

 

Complainant contends that Respondent has attempted to attract Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website.  Complainant submits that Respondent most likely gains commercially through “pay-per-click” referral fees.

 

Paragraph 4(b) of the Policy sets out four circumstances which are to be taken to be evidence of the registration and use of a domain name in bad faith if established. Paragraph 4(b)(iv) states:

 

(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’

 

Panel finds that Respondent’s actions fall squarely under paragraph 4(b)(iv) above.  Panel has already found the domain name to be confusingly similar to the trademark.  Panel accepts as more likely than not to be true, Complainant’s claim that Respondent is commercially benefiting somehow from the use of the domain name.  In terms of the Policy, Panel finds that Respondent is using the domain name to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.

 

Panel finds registration and use in bad faith and the third limb of the Policy established.

 

DECISION

Complainant has done just enough to establish the three elements of the ICANN Policy and so Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <stanbiclbtcbank.com> domain name be TRANSFERRED from Respondent to Complainant.

Debrett G. Lyons, Panelist

Dated: March 12, 2016