The Complainant is Capitec Bank Limited, South Africa, represented by Werksmans Attorneys, South Africa.
The Respondent is Caleb Blessing, every life beat, Nigeria.
The disputed domain name <capitecbnk.online> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 6, 2021. On July 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 7, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 July 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 5, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 12, 2021.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on August 25, 2021. 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 South African retail bank which was established on March 1, 2001. It was registered as a bank controlling company on June 29, 2001 and listed on the Johannesburg Stock Exchange on February 18, 2002.
It renders banking, financial services and related goods and services under its name and registered trade mark CAPITEC. It focuses on providing accessible and affordable banking services to clients via the innovative use of technology in a personalized and convenient manner.
According to its audited financial statements for 2021 it has over 15.8 million active clients, 857 branches and 14,672 employees. A copy of its 2021 annual report is exhibited at Annex 5 to the Complaint.
In February 2020 it was named as the third strongest bank in the world by Brand Finance and in August 2020 as the “coolest bank in South Africa” at the Sunday Times Gen Next Awards. At Annex 7 to the Complaint is exhibited a summary of its awards achievements between 2018 and 2019 including receiving the Sunday Times Top Brands Award for retail banks.
It has advertised extensively through print media, digital media, instore advertising, TV and radio advertisements. Since the commencement of the Covid-19 pandemic its online banking facilities have expanded so that its active digital clients have increased from 6.7 million in 2020 to 8.6 million in 2021.
It has made extensive use of its trade mark CAPITEC in relation to financial services in South Africa resulting in a substantial trading reputation and goodwill in the mark.
It has a large portfolio of registered trade marks for the mark CAPITEC and marks incorporating CAPITEC, which are set out in the Complaint including, for example, CAPITEC plus device and CAPITEC BANK FACILITY. At Annex 10 to the Complaint is a schedule with particulars of all CAPITEC trade marks registered by the Complainant in South Africa.
In particular the Complainant relies upon the trade marks CAPITEC registered in South Africa on August 11, 2000 in classes 9, 16, 35, 36, 38 and 42. Copies of the registration certificates for those marks, nos.2000/15984 to 15989, together with corresponding renewal certificates, are exhibited at Annex 9 to the Complaint. The renewed registrations are valid until August 11, 2030. The dates of registration are 21 years before the registration of the disputed domain name on May 11, 2021. The disputed domain name does not resolve to any active website.
In addition, the Complainant has registered the mark CAPITEC throughout Africa, Europe, North America, South America, Australia and Asia. Copies of the registration certificates for these marks are exhibited at Annex 11 to the Complaint.
The Complainant has also registered over 89 domain names incorporating the mark CAPITEC as can be seen from Annex 12 to the Complaint. For example, the domain name <capitec.co.za> was first registered on August 21, 2000. The website “www.capitec.co.za” was launched in 2006 to introduce the Complainant’s products. The website may be accessed by using the domain name <capitec.co.za>.
In the absence of a Response the Panel finds the above evidence adduced by the Complainant to be true.
The Complainant submits:
(i) The disputed domain name is confusingly similar to the trade mark CAPITEC in which it has registered rights;
(ii) On the evidence the Respondent has no rights or legitimate interests in respect of the disputed domain name;
(iii) On the evidence the disputed domain name was registered by and is being used by the Respondent in bad faith.
The Respondent did not reply to the Complainant’s contentions.
The Complainant submits that the disputed domain name is “virtually identical” to the Complainant’s name and registered trade mark CAPITEC but with the addition of the word “bnk”. The disputed domain name consists of CAPITEC in its entirety together with the suffix “bnk”.
The use of the word “bnk” is an abbreviation for the word “bank”. The Complainant points out that it has acquired the domain name <capitecbnk.co.za> which recognizes that “bank” and “bnk” are indistinguishable as references to “bank”. In support of this submission the Complainant refers to earlier panel decisions including Boursorama S.A. v. Iliassou Assou Assou, WIPO Case No. D2020-3440 in which the panel found that “Banking is the Complainant’s primary business; therefore, the addition of the term ‘bnk’ did not avoid a finding of confusing similarity.” This Panel also finds that the addition of the word “bnk” does not prevent a finding of confusing similarity.
It is well established that the generic Top Level Domain (“gTLD”), in this case “.online”, should be disregarded in evaluating confusing similarity.
It follows that the disputed domain name <capitecbnk.online> is confusingly similar to the mark CAPITEC in which the Complainant owns registered rights within paragraph 4(a)(i) of the Policy.
The Complainant relies upon the following evidence:
(i) As can be seen from the WhoIs search exhibited at Annex 1 to the Complaint the registrant and the Respondent is Caleb Blessing, every life beat. The email address for the Respondent is everylifeglobal@[...], which bears no similarity to the disputed domain name or the identity of the Respondent.
(ii) The disputed domain name does not resolve to an active website. Rather, as can be seen from Annex 2 to the Complaint, it resolves to an error page.
(iii) The Complainant confirms that it does not know the Respondent and has not licensed or otherwise authorized the Respondent to utilize the trade mark CAPITEC. There is no evidence that the Respondent has any rights or interests in CAPITEC and is not using the disputed domain name in connection with any bona fide offering of goods or services.
(iv) On May 20, 2021, the Complainant sent a demand letter to the Registrar Abuse Contact, abuse@[...]. A copy of the demand letter and covering email is exhibited at Annex 16 to the Complaint. At Annex 17 to the Complaint is exhibited a response from the Abuse Mitigation Team of the Registrar to the demand letter indicating that the disputed domain name has been suspended. Further correspondence followed which resulted in a search by the Complainant which identified details of the Respondent. On June 21, 2021, the Complainant sent a demand letter to the Respondent exhibited as Annex 20 to the Complaint. The Respondent has not responded to the letter.
The Complainant submits that the above evidence shows that the Respondent has no rights or legitimate interests in the disputed domain name based upon the following reasons:
(i) The failure of the Respondent to reply to the demand letter raises suspicions as to its rights or legitimate interests in the disputed domain name.
(ii) The disputed domain name is misleading in that customers and potential customers of the Complainant could believe that it is an online offering of the Complainant’s services.
(iii) The disputed domain name is inactive.
(iv) There is no evidence of the Respondent having acquired or owned trade mark rights in CAPITEC nor is it commonly known by the name Capitec or disputed domain name.
(v) On the evidence the Respondent is making neither a bona fide offering of goods or services under the disputed domain name nor is it using the disputed domain name for a legitimate noncommercial or fair use.
Having considered the Complainant’s evidence and in the absence of a Response the Panel agrees with the Complainant’s submission and finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name within paragraph 4(a)(ii) of the Policy.
The Complainant submits that the Respondent must have known of the Complainant’s “well known and distinctive” name and trade mark and yet chose to register the disputed domain name without authorization to do so. By doing so it is seeking to frustrate the Complainant’s rights to its mark and its associated business. It is seeking to gain commercial benefit from the Complainant’s reputation and goodwill.
The Complainant relies upon the fact that the disputed domain name was registered using the mark CAPITEC in its entirety together with a descriptive suffix “bnk” representing banking services, i.e., the Complainant’s commercial activity.
The Complainant refers to earlier panel authorities including Valero Energy Corporation, Valero Marketing and Supply Company v. Redacted for Privacy, WhosiGuard Inc./ David Killam, Killam Companies, WIPO Case No. D2021-0911 in which the panel finds that “By registering the Domain Name that comprises the Complainant’s VALERO trademark in its entirety, together with terms that are descriptive of the Complainant’s business, the Respondent has demonstrated a knowledge of and familiarity with Complainant’s brand and business. […] it is ‘not possible to conceive of a plausible situation in which the Respondent would have been unaware of’ the Complainant’s brand at the time the Domain Name was registered.” That is the position in this case. It can be inferred that the Respondent was aware of the Complainant when it registered the disputed domain name.
The Complainant also relies upon the fact that the Respondent had employed a privacy shield to conceal its identity. In this regard, the Panel notes that Annex 15 to the Complaint (WhoIs record of June 1, 2021) shows that the Respondent’s contact details have been partially redacted, however, the registrant organization is listed as “every life beat”. Further, Annex 1 to the Complaint (WhoIs record of June 13, 2021) shows the registrant and the Respondent is “Caleb Blessing, every life beat” including contact details. Therefore, there is no evidence on record showing that the Respondent had employed any privacy service to register the disputed domain name. The Complainant further submits, after finding the Respondent’s contact email details and sending a demand letter, the letter went unanswered.
In summary the Complainant’s evidence shows:
(i) The trading name CAPITEC is very distinctive being a made-up word with no dictionary meaning, and of high repute particularly in relation to banking and financial services, as evidenced by its numerous trade mark registrations worldwide and evidence of its extensive reputation, size and reach.
(ii) The Respondent failed and/or refused to respond to the demand letter.
(iii) The Respondent registered the disputed domain name some 21 years after the Complainant’s registration of its CAPITEC trade mark.
(iv) The Respondent has no rights in or legitimate interest to the Complainant’s trade mark CAPITEC.
Having considered the Complainant’s evidence and in the absence of a Response the Panel finds that on the evidence the disputed domain name was registered and is being used by the Respondent in bad faith within paragraph 4(a)(iii) of the Policy.
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 <capitecbnk.online> be transferred to the Complainant.
Clive Duncan Thorne
Sole Panelist
Date: September 8, 2021