The Standard Bank of South Africa Limited v. Tunji Kuforiji
Claim Number: FA2301002027198
Complainant is The Standard Bank of South Africa Limited (“Complainant”), represented by Robert White of Lexsynergy Limited, United Kingdom. Respondent is Tunji Kuforiji (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <stabicibtcbank.com>, registered with Google LLC.
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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to Forum electronically on January 12, 2023; Forum received payment on January 11, 2023.
On January 12, 2023, Google LLC confirmed by e-mail to Forum that the <stabicibtcbank.com> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google 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 January 13, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 2, 2023 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@stabicibtcbank.com. Also on January 13, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On February 9, 2023, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, Forum appointed Steven M. Levy, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that 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, 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
Established in 1862, Complainant offers banking products and related financial services as one of the largest banks in South Africa and with approximately 1100 branches in the African continent. Complainant asserts rights to the trademarks STANBIC and STANBIC IBTC based upon its use in commerce as well as registrations with the trademark offices of South Africa in 1993, the United Kingdom in 1993, the European Union in 2008, Nigeria in 2010, and with other trademark agencies in other countries. In Nigeria, the country in which Respondent resides, Complainant operates under the name STANBIC IBTC Bank PLC. Respondent’s <stabicibtcbank.com> domain name is confusingly similar to Complainant’s mark as it contains the STANBIC mark in its entirety, merely misspelling the mark and adding the generic top-level domain “.com” to form the disputed domain name.
Respondent does not have rights or legitimate interests in the <stabicibtcbank.com> domain name. Respondent is not licensed or authorized to use Complainant’s STANBIC mark and is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services nor does it make a legitimate noncommercial or fair use of the domain name. Respondent uses the disputed domain name to potentially attract and profit from internet users seeking the Complainant and potentially for fraudulent purposes. Additionally, Respondent’s use of the disputed domain name constitutes typosquatting.
Respondent registered and uses the <stabicibtcbank.com> domain name in bad faith. First, Respondent has made no website use of the disputed domain name. Second, Respondent has used a privacy shield to conceal its identity. Third, Respondent’s registration and use of the disputed domain name constitutes typosquatting for the purpose of impersonating Complainant. Fourth, Respondent could potentially use the Domain Name to send phishing related communications to the Complainant’s customers or for distributing malware. Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the STANBIC mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
- Complainant has demonstrated its rights to the trademarks STABIC and STABIC IBTC through registration with the trademark authorities of various countries and the <stabicibtcbank.com> domain name is confusingly similar to these marks;
- Respondent has no rights or legitimate interests in the disputed domain name where it is not commonly known by the domain name and the domain name, which is a typosquatted variation of Complainant’s marks, does not resolve to any website content; and
- Respondent has registered and uses the disputed domain name in bad faith where it engages in typosquatting of Complainant’s well-known mark, resolves the domain name to a blank website and may also have sent illicit emails, and used a Whois privacy shield in an effort to hide its identity.
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. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant asserts rights to the STANBIC and STANBIC IBTC marks based upon registration with various trademark agencies dating back to 1993. Registration of a mark with multiple international trademark authorities conveys rights in that mark under Policy ¶ 4(a)(i). See Red Hat, Inc. v. Muhammad Shahzad, FA 1787738 (Forum June 19, 2018) (“Registration of a mark with multiple trademark agencies is sufficient to demonstrate rights to a mark per Policy ¶ 4(a)(i).”); see also Emerson Electric Co. v. Cai Jian Lin / Shen Zhen Shi colorsun Zi Dong Hua You Xian Gong Si, FA 1798802 (Forum Aug. 31, 2018) (“Registering a mark with multiple trademark agencies around the world is sufficient to establish rights in a mark for the purposes of Policy ¶ 4(a)(i).”) Here, Complainant has provided copies of some of its Registration Certificates and so the Panel finds that Complainant has rights in its asserted marks under Policy ¶ 4(a)(i).
Next, Complainant contends that Respondent’s <stabicibtcbank.com> domain name is confusingly similar to Complainant’s mark as it contains the STANBIC and STANBIC IBTC marks in their entirety, merely misspelling the STANBIC mark[1], adding the word “bank”, and adding the generic top-level domain “.com” to form the disputed domain name. Such a subtle misspelling and the addition of a generic top-level domain (“gTLD”) is typically insufficient to distinguish a disputed domain name from an asserted trademark under Policy ¶ 4(a)(i). See Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) (“The [<morganstonley.com> and <morganstainley.com>] Domain Names are confusingly similar to Complainant’s marks, as they fully incorporate the MORGAN STANLEY mark, varying it only by subtle misspellings, omitting a space between the words, and adding the generic top-level domain (“gTLD”) ‘.com.’”); see also Vanguard Trademark Holdings USA LLC v. Shuai Wei Xu / Xu Shuai Wei, FA 1784238 (Forum June 1, 2018) (“Respondent arrives at each of the disputed domain names by merely misspelling each of the disputed domain names and adding the gTLD ‘.com.’ This is insufficient to distinguish the disputed domain names from Complainant’s trademark.”).
The Panel notes that the <stabicibtcbank.com> domain name omits the letter “n” from Complainant’s STANBIC and STANBIC IBTC marks, adds the generic word “bank” which is highly relevant to Complainant’s field of industry, and employs the “.com” gTLD. As these are minor changes which do not alter the essential character of Complainant’s marks, the Panel finds that the disputed domain name is confusingly similar to both of the marks under Policy ¶ 4(a)(i).
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). Should it succeed in this effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent does not have rights or legitimate interests in the <stabicibtcbank.com> domain name because Respondent is not licensed or authorized to use Complainant’s STANBIC or STANBIC IBTC marks and is not commonly known by the disputed domain name. It is accepted that WHOIS information may be considered when determining whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA 1613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA 1574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The WHOIS information for the disputed domain name lists the registrant as “Tunji Kuforiji” and Respondent has not filed a Response or made any other submission in this case to claim that it is known otherwise or that it has any authorization to use Complainant’s marks. Therefore, the Panel finds no evidence upon which to base a conclusion that Respondent is commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Next, Complainant asserts that Respondent does not use the disputed domain name for any bona fide offering of goods or services and that it does not make a legitimate noncommercial or fair use thereof as there is no website associated with the domain name. Where a disputed domain name resolves to a blank webpage, panels have found that there is no bona fide offering of goods or services nor a legitimate noncommercial or fair use. See Société Air France v. Gary Van Til, Response Science Ltd, D2017-0203 (WIPO Mar. 15, 2017) (no rights or legitimate interest found where “the websites to which the Disputed Domain Names resolve are blank.”); Victoria’s Secret Stores Brand Management, Inc. v. Travis Martin c/o Dynadot Privacy, FA 1250363 (Forum Apr. 22, 2009) (“the failure of Respondent’s confusingly similar <victoriassecrret.com> domain name to resolve to any website is evidence that Respondent has not made a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”) Complainant has provided a screenshot of the disputed domain name’s resolving webpage which displays only a blank page. The Panel therefore finds that Complainant has made an unrebutted prima facie case and holds, by a preponderance of the presented evidence, that Respondent is not making a bona fide offering of goods or services under ¶ 4(c)(i) nor a legitimate noncommercial or fair use thereof under ¶ 4(c)(iii).
Additionally, Complainant contends that Respondent’s use of the disputed domain name constitutes typosquatting. Typosquatting of a mark, which takes advantage of internet users’ typographical errors, demonstrates a lack of rights or legitimate interests in a disputed domain name pursuant to Policy ¶ 4(a)(ii). See Chegg Inc. v. yang qijin, FA 1610050 (Forum Apr. 23, 2015) (“Users might mistakenly reach Respondent’s resolving website by misspelling Complainant’s mark. Taking advantage of Internet users’ typographical errors, known as typosquatting, demonstrates a respondent’s lack of rights or legitimate interests under Policy ¶ 4(a)(ii).”); see also Robert Half International Inc. v. Yang Zhi Chao, FA 1935178, (Forum Mar. 8, 2021) (Finding a lack of rights or legitimate interest where the disputed domain names appeared to be typosquatting versions of Complainant’s official domain name). Here, the disputed domain name omits a single letter from Complainant’s well-known marks and so the Panel agrees that typosquatting has occurred and this support the finding that Respondent is not using the disputed domain name for a bona fide offering of goods or services under Policy ¶ 4(a)(ii) nor is it making a legitimate noncommercial or fair use under ¶ 4(c)(iii).
Finally, Complainant claims that “Respondent’s intention for registering a domain that is almost identical to the Complainant’s official domain could have been to carry a fraudulent phishing attack (via email and/or online) by masquerading as the Complainant.” The Panel notes that there are Mail Exchange (MX) records associated with the <stabicibtcbank.com> domain name and this, combined with the reputation of Complainant’s marks, indicates a possibility that it may be used for nefarious email purposes. Tosara Pharma Ltd. v. Carolina Rodrigues, Fundacion Comercio Electronico, D2022-5036 (WIPO Feb. 9, 2023) (finding of no rights or legitimate interests supported by a possible “attempt of the Respondent to defraud prospective customers by the use of the email, as evident from active MX records…”) Although no evidence has been presented that emails have actually been sent using the disputed domain name, the existence of MX records combined with the above finding of typosquatting lends further support to the conclusion that Respondent has no rights or legitimate interests in the domain name.
Complainant contends that Respondent registered the <stabicibtcbank.com> domain name with actual knowledge of Complainant’s rights in the STANBIC and STANBIC IBTC marks. A respondent’s actual knowledge can form a solid foundation upon which a case for bad faith may be built under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“the Panel here finds actual knowledge through the name used for the domain and the use made of it.”) To support this contention, Complainant points to the goodwill and reputation it has developed in its mark as well as, the misspelling of Complainant’s mark in the disputed domain name. It submits significant evidence of its use of the STANBIC and STANBIC IBTC marks including copies of its own website and annual report, screenshots of news articles and sports sponsorships, and of online searches for the terms “Stanbic”, the results of which refer exclusively to Complainant Based upon this demonstrated reputation and the close typosquatting of Complainant’s marks, the Panel finds it highly likely that Respondent did have actual knowledge of Complainant’s rights in its marks at the time that it registered the disputed domain name.
Next, Complainant argues that Respondent registered and uses the <stabicibtcbank.com> domain name in bad faith as the disputed domain name does not resolve to any website content. As the examples set out in Policy ¶ 4(b) are not exclusive, bad faith may be found where respondent has made no website use of a disputed domain name and there are no indications that respondent could have registered and used the disputed domain name for any non-infringing purpose. Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000). See also Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where the respondent made no use of the domain name in question and there are no other indications that the respondent could have registered and used the domain name in question for any non-infringing purpose). Complainant offers, as support, its screenshot of the blank page to which the disputed domain resolves and Respondent has not participated in this case to explain its actions. This lack of web content combined with the fact that it is difficult to conceive of, and Respondent has not suggested, any good-faith use to which a domain name may be put when it consists of a close misspelling of a well-known mark followed by a generic term that directly relates to the services provided under such mark, leads to the conclusion that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
It is further contends that Respondent’s registration and use of the <stabicibtcbank.com> domain name constitutes typosquatting. Typosquatting itself is very often an indicator of bad faith, particularly when it seeks to mimic a very distinctive trademark. See Cost Plus Management Services, Inc. v. xushuaiwei, FA 1800036 (Forum Sep. 7, 2018) (“Typosquatting itself is evidence of relevant bad faith registration and use.”); see also Gap Inc. and its subsidiary, Old Navy (Apparel), LLC v. Jiri Capcuch, FA 1562139 (Forum July 2, 2014) (“Respondent adds an additional letter ‘v’ to Complainant’s OLD NAVY mark in the <oldnavvy.com> domain name, a classic example of typosquatting. Respondent’s typosquatting is, in itself, evidence of bad faith under Policy ¶ 4(a)(iii).”). The Panel notes the one character difference between Complainant’s mark and the disputed domain name. Thus, it finds further support for the conclusion that Respondent registered and uses the disputed domain name in bad faith.
Next, Complainant asserts the possibility that Respondent may be engaged in phishing or other fraudulent online activity. The <stabicibtcbank.com> domain name has associated MX records and, depending on all of the facts of a given case, this may indicate nefarious action. In The Standard Bank of South Africa Limited v. N/A / mark gersper, FA 1467014 (Forum Dec.r 5, 2012), the Panel noted that the “Complainant contends this phishing could be carried out via email and not just through a website. Complainant has examined the domain name’s MX records and they apparently allow the transmission of email, which would not be necessary if the domain name was merely parked. The Panel finds Complainant’s allegations about the possibility of Respondent using the disputed domain name for phishing sufficient…”. This inference has been adopted in other decisions. See, e.g., Pepsico, Inc. v. Allen Othman, 102380 (CAC April 25, 2019) (“The Complainant submits, fairly, that the preparatory steps in relation to email addresses could enable the inappropriate sending or receipt of email communications purporting to emanate from, or intending to be received by, the Complainant. These preparatory steps (configuring ‘MX’ or mail exchange records) have [been] considered in relation to ‘use’ for the purposes of the Policy by other Panels, which the present Panel has considered of its own motion.”) The Complainant states that “Respondent could potentially use the Domain Name to send phishing related communications to the Complainant’s customers or for distributing malware….” In light of the reputation of Complainant’s marks, the typosquatting nature of the disputed domain name, and the existence of MX records, the Panel finds it probable that the <stabicibtcbank.com> domain name would be used for phishing, spam, malware, or some other improper purpose and this provides further support for its above finding of bad faith registration and use under Policy ¶ 4(a)(iii).
Finally, Complainant contends that Respondent registered and uses the <stabicibtcbank.com> domain name in bad faith as Respondent has used a privacy shield to conceal its identity. The use of a privacy registration service in an attempt to conceal a respondent’s identity can, when considered against all fo the circumstances of a given situation, be an indicator of bad faith under Policy ¶ 4(a)(iii). See Robert Half International Inc. v. robert arran, FA 1764367 (Forum Feb. 5. 2018) (“Respondent’s use of a privacy registration service in an attempt to conceal his identity, though not itself dispositive, is a further indication of bad faith.”); see also Phoenix Niesley-Lindgren Watt v. Contact Privacy Inc., Customer 0150049249, FA 1800231 (Forum Sep. 6. 2018) (“In a commercial context, using a WHOIS privacy service raises the rebuttable presumption of bad faith registration and use of the disputed domain name. An honest merchant in the marketplace does not generally try to conceal the merchant’s identity. Good faith requires honesty in fact. Respondent did nothing to rebut this presumption of bad faith. Therefore, the Panel will find bad faith registration and use for this reason.”) Here, Complainant offers a printout of the disputed domain name’s public WHOIS record showing the Registrant’s name as “Contact Privacy Inc. Customer 7151571251”. When viewed along with all of the other facts of this case, the Panel finds that Respondent’s use of a WHOIS privacy service further supports the conclusion that it has registered and used the disputed domain name in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <stabicibtcbank.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: February 21, 2023
[1] The Complaint states that the <stabicibtcbank.com> domain name is “substituting a letter ‘n’ for the letter ‘b’”. The Panel feels this description is inaccurate as the disputed domain name only removes a single letter “n” from the term STANBIC. Nevertheless, this has little bearing on the present decision as the domain name is clearly a close misspelling of Complainant’s marks.
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