The Complainant is ABSA Bank Limited, South Africa, represented by KapdiTwala Inc. t/a Dentons South Africa, South Africa.
The Respondent is Domain Administrator, See PrivacyGuardian.org, United States of America (“United States”) / Sidoti Parmer, United States.
The disputed domain name <absa.website> is registered with NameSilo, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 9, 2020. On November 11, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 11, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 13, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on November 18, 2020.
The Center verified that the Complaint, together with the amendment to the Complaint, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 19, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 9, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 10, 2020.
The Center appointed Gareth Dickson as the sole panelist in this matter on December 21, 2020. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Complainant is a financial services provider, headquartered in Johannesburg, South Africa. It is the owner of a number of trade mark registrations for ABSA (the “Mark”) around the world, including the following word and device mark registrations in South Africa:
- Trade mark number 1991/01263, registered on January 5, 1994;
- Trade mark number 1991/10305, registered on August 4, 1994;
- Trade mark number 1991/07473, registered on August 3, 1995; and
- Trade mark number 2017/03520, registered on December 19, 2018.
The disputed domain name was created on October 25, 2019. Limited information is provided by the Complainant as to the nature of the activities carried out by the Respondent via the disputed domain name but it appears that, at least on occasion since registration, it has directed Internet users to a webpage featuring links to various other businesses, including those offering financial services.
The Complainant argues that it has rights in the Mark by virtue of its ownership of various trade mark registrations for the Mark around the world. It contends that the disputed domain name is confusingly similar to the Mark since it incorporates the Mark (which is recognisable within the disputed domain name), with no distinguishing elements, under the generic Top-Level Domain (“gTLD”) “.website”.
The Complainant refers the Panel to extracts of panels’ conclusions in four previous UDRP decisions. The reason for this is not clear. Although two of those proceedings feature domain names with a “.website” gTLD, none of them appear to involve any of the Parties to the present Complaint and none of the facts relied on by the panels are either set out, much less adopted, by the Complainant in this Complaint.
Nonetheless, and critically as explained below, the Complainant does argue that the use of the disputed domain name by the Respondent carries a high risk of implied affiliation between the parties, contrary to the fact. It also submits that the Respondent is not commonly known by the disputed domain name and confirms that the disputed domain name was registered by the Respondent without its permission. It alleges that the Respondent has not developed its own offering under the disputed domain name. The Complainant contends that together these facts indicate that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services and that it has no rights or legitimate interests in respect of the disputed domain name.
The Complainant submits that the Respondent must have known of the Complainant and the Mark when it registered the disputed domain name, in light of the fact that the Mark is protected by a multitude of trade mark registrations and was in use for many years prior to the registration of the disputed domain name. No other explanation for the use of “absa” in the disputed domain name is suggested or apparent.
Finally, the Complainant argues that the Respondent has used the disputed domain name to attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Mark, contrary to the Policy, and notes that the Respondent has used a privacy service to conceal its identity.
Together, the Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
Under paragraph 4(a) of the Policy, the Complainant bears the burden of proving that:
i. the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
ii. the Respondent has no rights or legitimate interests in respect of the disputed domain name; and,
iii. the disputed domain name has been registered and is being used in bad faith.
These criteria are cumulative. The failure of the Complainant to prove any one of these elements means the Complaint must be denied.
The Panel accepts that the Complainant is the owner of, and therefore has rights in, the Mark.
Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) provides that “[w]here a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”.
The Panel therefore finds that the disputed domain name is confusingly similar to the Mark, since the Mark is recognisable within the disputed domain name. The addition of the gTLD “.website” does not alter this conclusion.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.
Although a complainant is required to demonstrate that a respondent has no rights or legitimate interests in respect of the domain name, as explained in section 2.1 of the WIPO Overview 3.0, the consensus view of previous UDRP panels is that where a complainant establishes a prima facie case that the respondent lacks rights or legitimate interests the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
In the current proceeding, the Complainant has established its prima facie case. It has not done so through the mere quotation of conclusions reached by previous panels in unrelated proceedings: the contexts for those conclusions have been omitted from the Complainant’s submissions and they are of no assistance in the Panel’s determination of this Complaint. Instead, the Complainant has established its prima facie case by stating that it has not given the Respondent permission to use the Mark and by submitting that there is no evidence that the Respondent has been commonly known by the disputed domain name or has acquired any common law rights to use the Mark or is using the Mark in the disputed domain name in any manner that would establish rights or legitimate interests in respect of it.
The Complainant notes that the Respondent has used the disputed domain name to provide Internet users with access to links. While the Complainant does not fully explain its objection to this practice, and again relies on a previous panel’s conclusions on this point in an unrelated proceeding, it is well-established that the redirection of Internet users to a website offering pay-per-click links to competing services, as appears to be the case here, does not constitute a bona fide sale of goods or services or a legitimate noncommercial or fair use within the meaning of the Policy. Section 2.9 of the WIPO Overview 3.0 states that: “Panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users”.
By not participating in these proceedings, the Respondent has failed to refute the Complainant’s prima facie case that it has met its burden under the second UDRP element.
As clearly stated in section 2.1 of the WIPO Overview 3.0, “a panel’s assessment will normally be made on the basis of the evidence presented in the complaint and any filed response. The panel may draw inferences from the absence of a response as it considers appropriate, but will weigh all available evidence irrespective of whether a response is filed”. Having reviewed and weighed the available evidence, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Panel notes that the disputed domain name was registered many years after the Mark was registered and accepts that the disputed domain name was chosen by reference to the Mark.
As a result, and in the absence of evidence from the Respondent that the similarity of the disputed domain name to the Mark is coincidental or permitted, the Panel must conclude that the Respondent knew of the Complainant’s rights in the Mark when it registered the disputed domain name.
The Panel therefore finds that the Respondent’s registration of the disputed domain name was in bad faith since it attempted to appropriate for the Respondent, without the consent or authorisation of the Complainant, rights in the Complainant’s Mark.
The disputed domain name is also being used in bad faith since it is being used for a commercial purpose that involves providing Internet users (in particular those seeking the Complainant) with services which compete with the Complainant and are not authorised by it.
The Respondent has not sought to explain its registration and use of the disputed domain name, has attempted to conceal its identity, and has not participated in these proceedings. There is also no conceivable use of the disputed domain name by the Respondent that would not be illegitimate and therefore there is no basis for the Panel to conclude that the Respondent’s use of the disputed domain name is justified.
Therefore, and on the basis of the information available to it, the Panel must, and does, find that the Respondent’s use of the disputed domain name is without justification and is inconsistent with the Complainant’s exclusive rights in the Mark. Consideration of these and other factors militates in favour of a finding of bad faith.
The Panel finds that the Respondent has registered and is using the disputed domain name in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <absa.website> be transferred to the Complainant.
Gareth Dickson
Sole Panelist
Date: January 4, 2021