Complainant is ABSA Bank Limited of Johannesburg, Gauteng, South Africa, represented by Moore Attorneys Incorporated, South Africa.
Respondent is Domain ID Shield Service of Hong Kong, China / Roy Chika, Roy Chika Investment of Ikeja, Lagos, Nigeria.
The disputed domain name <absaprivatebank.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 19, 2018. On June 19, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 22, 2018, 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 Complainant on June 26, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on June 28, 2018.
The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on July 4, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 24, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 25, 2018.
The Center appointed Yijun Tian as the sole panelist in this matter on July 31, 2018. 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.
Complainant, ABSA Bank Limited, is a company incorporated in Johannesburg, Gauteng, South Africa. Founded in 1991, Complainant is one of Africa’s major financial service providers offering personal and business banking, credit cards, corporate and investment banking, wealth and investment management, and insurance. It is one of South Africa’s biggest retail banks with an estimate of 42,000 employees throughout South Africa. It operates and manages about 1,251 branches of its banks and more than 10,378 automated teller machines (“ATMs”). As of 2017 Complainant has over 1,753,000 customers who utilize its Internet banking service and has over 9,400,000 customers in South Africa.
Complainant has registered a number of ABSA-related trademarks in South Africa, such as ABSA (since 1991, South Africa trademark registration number 1991/01263), and ABSA PRIVATE BANK (since 1998, South Africa trademark registration number 1998/13132. 857230) (Annexure I to the Complaint). Complainant also owns many domain names, which contain ABSA or ABSA PRIVATE BANK trademarks, such as <absa.co.za> (registered on January 1, 1995), and <absaprivatebank.co.za> (registered on August 29, 2006)
Respondent is Domain ID Shield Service of Hong Kong, China / Roy Chika, Roy Chika Investment of Ikeja, Lagos, Nigeria. Respondent registered the disputed domain name <absaprivatebank.com> on October 6, 2015, which is long after Complainant’s registration of the ABSA trademarks (since 1991), and ABSA PRIVATE BANK trademark (since 1998) in South Africa. The disputed domain name does not resolve to an active website.
Complainant contends that the disputed domain name is identical or confusingly similar to the ABSA-related marks in which Complainant has rights.
Complainant contends that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant contends that the disputed domain name was registered and is being used in bad faith.
Complainant requests that the disputed domain name <absaprivatebank.com> be transferred to it.
Respondent did not reply to Complainant’s contentions.
Paragraph 4(a) of the Policy requires that Complainant prove each of the following three elements to obtain an order that the disputed domain name should be transferred:
(i) The disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) 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.
On the basis of the evidence introduced by Complainant and in particular with regards to the content of the relevant provisions of the Policy (paragraphs 4(a) - (c)), the Panel concludes as follows:
The Panel finds that Complainant has rights in the ABSA-related marks acquired through registration. The ABSA marks and ABSA PRIVATE BANK marks have been registered in South Africa since 1991 and 1998 respectively, and Complainant has a widespread reputation in banking and finial service industry in South Africa.
The disputed domain name <absaprivatebank.com> comprises the ABSA mark and ABSA PRIVATE BANK mark in their entirety. The disputed domain name only differs from Complainant’s ABSA PRIVATE BANK trademarks by the addition of the generic Top-Level-Domain (“gTLD”) suffix “.com”. It only differs from Complainant’s ABSA trademarks by the suffix “private bank”, and the gTLD suffix “.com” to the ABSA marks. This does not eliminate the identity between Complainant’s registered trademarks and the disputed domain name. In relation to the gTLD suffix, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) further states:
“The applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.” (WIPO Overview 3.0, section 1.11)
Thus, the Panel finds that disregarding the gTLD suffix “.com”, the disputed domain name is confusingly similar to the ABSA mark and identical to the ABSA PRIVATE BANK mark.
The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent has been commonly known by the disputed domain names, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish Complainant’s trademarks.
The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to respondent to rebut complainant’s contentions. If respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; WIPO Overview 3.0, section 2.1 and cases cited therein).
According to the Complaint, Complainant is one of Africa’s major financial service providers offering personal and business banking, credit cards, corporate and investment banking, wealth and investment management, and insurance. It is one of South Africa’s biggest retail banks with an estimate of 42,000 employees throughout South Africa. Complainant has rights in the ABSA marks and ABSA PRIVATE BANK marks since 1991 and 1998 respectively in South Africa, which long precede Respondent’s registration of the disputed domain name (in 2015).
Moreover, Respondent is not an authorized dealer of “ABSA” or “ABSA Private Bank”-branded products or services. The Panel finds that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby shifts the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:
(i) There has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the words “absa” or “absa private bank” in the disputed domain name and in its business operation. There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the ABSA or ABSA PRIVATE BANK marks or to apply for or use any domain name incorporating the ABSA or ABSA PRIVATE BANK marks, and Respondent has, through the use of an identical domain name created a likelihood of confusion with the ABSA marks and ABSA PRIVATE BANK marks. Potential end users are led to believe that the website “www.absaprivatebank.com” is either Complainant’s site or a site of an official authorized partner of Complainant, which it is not.
(ii) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain name. Respondent registered the disputed domain name in 2015, long after the ABSA marks and ABSA PRIVATE BANK marks became widely known. The disputed domain name is identical or confusingly similar to Complainant’s ABSA and ABSA PRIVATE BANK marks.
(iii) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. The website resolved by the disputed domain name is inactive.
The Panel finds that Respondent has failed to produce any evidence to rebut Complainant’s prima facie showing on Respondent lack of rights or legitimate interests in the disputed domain name. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on the website or location.
The circumstances referred to in paragraph 4(b) of the Policy are not exhaustive. As noted in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, passive holding of a domain name would not prevent a finding of bad faith.
Registered in Bad Faith
The Panel finds that Complainant has a widespread reputation in the ABSA and ABSA PRIVATE BANK marks with regard to its products and services. Founded in 1991, Complainant is one of Africa’s major financial service providers offering personal and business banking, credit cards, corporate and investment banking, wealth and investment management, and insurance. Complainant has registered its ABSA related marks since 1991. It operates and manages about 1,251 branches of its banks and more than 10,378 ATMs. As of 2017 Complainant has over 1,753,000 customers who utilize its Internet banking service and has over 9,400,000 customers in South Africa. It is not conceivable that Respondent would not have had actual notice of Complainant’s trademark rights at the time of the registration of the disputed domain name (in 2015). The Panel therefore finds that the ABSA and ABSA PRIVATE BANK marks are not ones that traders could legitimately adopt other than for the purpose of creating an impression of an association with Complainant (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).
Moreover, Respondent has chosen not to respond to Complainant’s allegations. According to the panel’s decision in The Argento Wine Company Limited v. Argento Beijing Trading Company, supra, “the failure of the Respondent to respond to the Complaint further supports an inference of bad faith”. See also Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787.
Thus, the Panel concludes that the disputed domain name was registered in bad faith.
Used in Bad Faith
The disputed domain name <absaprivatebank.com> is inactive.1 In terms of an inactive domain name, the WIPO Overview 3.0 provides: “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding.” (Section 3.3, WIPO Overview 3.0).
The WIPO Overview 3.0 further states:
“While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.”
As discussed above, Complainant’s ABSA-related marks, arguably, are widely known. Taking into account all the circumstances of this case, the Panel concludes that the current inactive use of the disputed domain name by Respondent is in bad faith also.
In summary, Respondent, by choosing to register and use a domain name, which is confusingly similar to Complainant’s well-known trademarks, intended to disrupt Complainant’s business. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain name and the conduct of Respondent are indicative of registration and use of the disputed domain name in bad faith.
The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy.
For all 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 <absaprivatebank.com> be transferred to Complainant.
Yijun Tian
Sole Panelist
Dated: August 13, 2018
1 See “www.absaprivatebank.com”.