The Complainant is African Bank Limited, Midrand, South Africa, represented by Bowman Gilfillan Inc., South Africa.
The Respondent is Domain Retail Park Ltd, Ammar Al-Baldaw of Macclesfield, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name (The “Disputed Domain Name”) is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 1, 2010. On November 1, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On November 1, 2010, eNom 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 19, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 9, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 10, 2010.
The Center appointed Payne, Alistair as the sole panelist in this matter on December 15, 2010. 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.
On December 29, 2010, the Panel issued the following Panel Order:
“The Panel requests that the Complainant provides additional evidence relevant to this case as follows:
1. Copies of trade mark registrations for the various word mark registrations for AFRICAN BANK referred to in the Complaint in Zimbabwe and in Angola;
2. Any further evidence that is available to the Complainant concerning the scope of its use of the AFRICAN BANK name or mark, such as confirmation of advertising spend figures, details of advertising undertaken, details of the number of its account holders and customers, details of the number of branches or of other distribution methods, market penetration and further such information as may support its claim to common law rights in the name or mark AFRICAN BANK;
3. Details of the Complainant's size and market penetration and to the extent possible of advertising and promotion undertaken under the name or mark African Bank by 29 May 2000, both nationally and internationally.
In view of the Christmas/New Year holiday period the Complainant should file its additional evidence with the Center by January 10, 2010. The Respondent may file any further submission concerning the additional evidence by January 21, 2010 and the Panel reserves its’ discretion whether to accept the Respondent's submission in the circumstances of its late filing of the Response.
Such materials should be submitted to the WIPO Arbitration and Mediation Center (“The Center) by email to domain.disputes@ with a copy to the other party.
The date for issue of the Panel’s decision is extended to January 28, 2010.”
Following a request from the Complainant for suspension to afford the parties time to discuss possible settlement the Panel issued Panel Order No 2 on January 21 suspending the proceedings until February 4, 2011 and extending timeframes accordingly and indicating to the parties that there would be no further extensions. Following further requests from the Complainant, the suspension was however extended to facilitate ongoing negotiations and timeframes were again extended accordingly and finally based on the Respondent’s failure to request a further suspension, the Panel confirmed by further order that it would issue its decision by February 23, 2011. The Complainant filed no further evidence as requested by the Panel under Panel Order No. 1. 4. Factual Background
The Complainant was formed in 1994 and subsequently changed its name to African Bank Investments in 1999 following the merger of several businesses and the acquisition of African Bank. The Complainant has subsequently merged a further financial services business into its operations with approximately 1.3 million active clients.
The Respondent is based in the United Kingdom and registered the Disputed Domain Name on May 29, 2000. 5. Parties’ Contentions A. Complainant
The Complainant asserts that it commenced trading as AFRICAN BANK in 1999 when it acquired full ownership of African Bank Limited. It says that it owns numerous trade mark registrations and applications for AFRICAN BANK or incorporating that mark including trade mark registrations in South Africa under numbers 2004/16075, 2004/16075/ 2001/12800, 2001/12801 and 1984/00299, in Zimbabwe under numbers 999/2008, 1012/2008, 1020/2008 and 1013/2008 and in Angola registrations 20253, 20252, 20250 and 20251 but has not provided copies of relevant trade mark certificates in evidence.
The Complainant further says that it owns common law rights in the AFRICAN BANK mark due to its considerable use of the mark and the renown that it has built up in the mark to the extent that it is well-known in relation to financial services. In particular it notes that it has spent approximately USD 74,665 on advertising and promoting its mark on Google Advertisements between March 1, 2006 and September 30, 2008 and has expended considerable amounts on printed promotional brochures and print advertising, examples of which have been provided by way of evidence. It further says that it has received approximately 18,500 website visits and not less than 51,746 clicks through to the Complainant’s website during the period March 2007 – April 2010.
As far as rights and legitimate interests are concerned the Complainant says that the Disputed Domain Name points to a parking page and that the Respondent appears to be offering no bona fide goods or services under it and is not commonly known by the name AFRICAN BANK and that its use has not been authorised by the Complainant. The Complainant says that it demanded by letter in 2009 that the Respondent’s use should cease and that it should transfer the Disputed Domain Name to the Complainant but it received no response. Finally the Complainant says that its AFRICAN BANK trade mark is so well-known in relation to financial services that it must be inferred that the Respondent knew of the Complainant’s mark prior to registration of the Disputed Domain Name.
The Complainant submits in relation to bad faith that in view of the degree of renown attaching to its AFRICAN BANK mark since 1999 it can only be inferred that the Respondent knew of the Complainant’s mark and purposefully registered the Disputed Domain Name with a view to misleadingly diverting Internet users to its website. The Complainant says that this inference is only reinforced by the fact that the Disputed Domain Name was registered four years after the Complainant registered and one year after the Complainant first commenced use in the market place. Further the Complainant says that the Respondent’s website offers financial services which are in direct competition with the Complainant’s services and that this is consistent with a finding of registration and use in bad faith. Finally, the Panel should make negative inferences from the Respondent’s failure to respond to the Complainant’s original letter of demand. B. Respondent
The Respondent did not reply to the Complainant’s contentions within the required time frame. It subsequently submitted a response 2 days later on the basis that it had not recognized the Center’s email. However the Respondent was also notified by courier and fax and the Center’s usual procedure and formalities appear to have been complied with. Accordingly the Panel will not consider the Respondent’s late Response in making its decision below. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant submits that it owns relevant trade mark rights in the AFRICAN BANK name or mark which is identical or confusingly similar to the Disputed Domain Name.
Although the Complainant submits that it owns relevant trade mark registrations and has noted the numbers of these registrations, it has not provided copies of the certificates of registration or even extracts from the relevant trade mark registries. The only evidence put before the Panel is a listing from the records of the Complainant’s trade mark representative which does not include full details of these registrations. The Panel notes that some of the references to the entries in this listing appear to be to combined word and device marks and in other cases the alleged registrations are entered as trade mark applications. The Panel notes that this is wholly insufficient as evidence of the Complainant’s registered trade mark rights in AFRICAN BANK and also that trade mark applications are insufficient on their own for the purposes of finding trade mark rights under the first element of the Policy. As a consequence there is insufficient evidence before the Panel to support a finding of registered trade mark rights in the Complainant’s AFRICAN BANK mark.
The Complainant also submits it owns common law rights in its AFRICAN BANK name or mark. Previous UDRP panels have amongst other things required detailed evidence of renown including of sales, the nature and extent of advertising, media recognition of the name or mark and evidence of customer recognition whether by surveys or otherwise. In relation to cases such as this which concern a name or mark comprised of a geographic term and a generic word some UDRP panels have found that a higher standard is required and that there is a greater onus on the complainant to present compelling evidence of secondary meaning and distinctiveness through use.(For example, see: Amsec Enterprises, L.C. v. Sharon McCall, WIPO Case No. D2001-0083 (); Alpine Entertainment Group Inc v. Walter alvarez,WIPO Case No. D2006-1392 (); Continental Casualty Company v. Andrew Krause/Domains by Proxy, Inc.,WIPO Case No. D2008-0672 ().
In this case the Complainant has submitted comparatively little evidence to support its claim that its AFRICAN BANK name or mark has the requisite reputation to support a claim to common law rights and even less so that it was well-known in the financial services industry when the Respondent registered the Disputed Domain Name. Essentially the Complainant has noted that it has spent approximately USD 74,665 on advertising and promoting its mark on Google Advertisements between March 1, 2006 and September 30, 2008 and has expended considerable amounts on printed promotional brochures and print advertising, some examples of which have been provided by way of evidence. It further says that it has received approximately 18,500 website visits and approximately 51,700 clicks through to the Complainant’s website during the period March 2007 – April 2010. Notably there is no in depth evidence of products, sales, revenues, market penetration, the numbers of printed materials distributed to customers or of scope of other advertising, or of the business’s branch network or reach. The Panel finds that this level of evidence is insufficient to support the Complainant’s claim to common law rights for the purposes of the Policy and neither does it support the Complainant’s assertion that its AFRICAN BANK mark was well-known when the Respondent registered the Disputed Domain Name.
The Panel notes that the Complainant was given ample opportunity to provide further evidence, as noted above. However, the Complainant chose not to supplement its evidence whether concerning registered or unregistered trade mark rights. As a consequence the Panel infers that the Complainant had no further evidence to submit in support of its case that it owns registered or unregistered rights in its AFRICAN BANK mark. Accordingly the Panel finds that there is insufficient evidence before it to support a finding of either registered or unregistered trade mark rights by the Complainant in the AFRICAN BANK mark and the Complaint fails in relation to the first element of the Policy. B. Registered and Used in Bad Faith
The Panel notes that even had it found that the Complainant owned trade mark rights for the purposes of the first element of the Policy, it would not have found that the Complainant succeeded in relation to the third element of the Policy because it has not demonstrated that the Respondent registered the Disputed Domain Name in bad faith.
The Panel notes that the AFRICAN BANK mark is a combination of both a commonly used geographical and generic term which the Respondent was fully entitled to register provided that it was no attempting to trade on another party’s reputation or goodwill in doing so. The Respondent registered the Disputed Domain Name in 1999, the same year that the Complainant asserts that it commenced trading. The Respondent used the Disputed Domain Name to resolve to a placekeeper site for 10 years before the Complainant issued its letter of demand. The Panel finds that there is insufficient evidence before it to find that the Complainant’s AFRICAN BANK name or mark was well-known in 1999 and consequently to infer that the Respondent, based in the United Kingdom, knowingly registered the Disputed Domain Name in bad faith. Further, the Complainant’s ten year delay in attempting to assert rights in the AFRICAN BANK name or mark is inconsistent with its claim that the Respondent has registered or indeed used the Disputed Domain Name in bad faith. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Alistair Payne
Sole Panelist
Dated: February 20, 2011
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