The Complainant is ABSA Group Limited of Johannesburg, South Africa, represented by Moore Attorneys Incorporated, South Africa.
The Respondent is Domain Administrator, WDAPL of the Hague, Netherlands. 2. The Domain Name and Registrar
The disputed domain name is registered with A, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 5, 2018. On September 5, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 6, 2018, 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 September 18, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 8, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 9, 2018.
The Center appointed Alistair Payne as the sole panelist in this matter on October 23, 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. 4. Factual Background
The Complainant is a publicly-listed South African bank and is one of the biggest retail banks in the country with more than 1,250 branches, approximately 420,000 employees, more than 1.7 million customers that use its Internet service and more than 9.4 million customers in South Africa. It was founded in 1991 and owns various trade mark registrations for its ABSA mark including South African word mark registration 1991/07473 filed on September 6, 1991 and registered on August 3, 1995 and trade mark registration 1991/07437 for ABSA BANK that was filed on September 6, 1991 and registered on March 3, 1994. The Complainant operates its websites from various domain names that incorporate the mark ABSA BANK in various Top-Level Domain name spaces and the first of these, was registered in July 2000.
The disputed domain name was registered on October 4, 2005 and resolves to a pay-per-click parking page featuring links to the businesses of other financial services providers. 5. Parties’ Contentions A. Complainant
The Complainant submits that it owns registered trade mark rights as set out above and that the disputed domain name wholly incorporates the ABSA and ABSA BANK marks and is therefore confusingly similar.
It says that as a consequence of the very substantial use of its marks that it has made in South Africa for more than ten years prior to the registration of the disputed domain name, that a very high degree of renown attaches to its marks. As a consequence, the Complainant says that the ABSA and ABSA BANK marks are widely known in South Africa and the registration of the disputed domain name in 2005 was an abusive registration intended to trade off the goodwill attaching to the Complainant’s marks and to confuse and divert internet users looking for the Complainant on the Internet.
The Complainant says that it has not consented to or given permission for the Respondent to use its marks or to register the disputed domain name and there is no business relationship between the Parties. It submits further that the Respondent does not operate a bona fide business under the disputed domain name but is rather using it as an advertising platform to advertise the services of the Complainant’s competitors in the banking industry. The Complainant further says that the Respondent is not commonly known by the disputed domain name and further there is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name. As a consequence, says the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant notes that it registered on July 20, 2000, some five years before the Respondent registered the disputed domain name. It says that the Respondent’s registration will prevent the Complainant from registering its mark in a corresponding domain name with the generic Top-Level Domain (“gTLD”) “.com” and that the Complainant sought to do this by registering the disputed domain name. The Complainant says further that the registration of the disputed domain name will lead to confusion in that people may believe that the disputed domain name is that of the Complainant, when it is not, which will result in confusing and falsely diverting internet users, all of which amounts to bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns registered trade mark rights for its ABSA and ABSA BANK marks including South African word mark registration 1991/07473 filed on September 6, 1991 and registered on August 3, 1995 and South African trade mark registration 1991/07437 for ABSA BANK that was filed on September 6, 1991 and registered on March 3, 1994. The disputed domain name is identical to the Complainant’s trade mark registration 1991/07437 and wholly incorporates the ABSA mark. As a result, the Panel finds that the disputed domain name is identical or confusingly similar to a mark in which the Complainant owns registered rights and the Complaint succeeds under this element of the Policy. B. Rights or Legitimate Interests
The Complainant has submitted that it has not consented to or given permission for the Respondent to use its marks or to register the disputed domain name and that there is no business relationship between the Parties. It has also submitted that the Respondent does not operate a bona fide business under the disputed domain name but is rather using it as an advertising platform to advertise the services of the Complainant’s competitors in the banking industry. The Complainant has also asserted that the Respondent is not commonly known by the disputed domain name and further there is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has failed to rebut the case made out by the Complainant and for this reason and for the reasons set out under Part C below, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and the Complaint also succeeds under this element of the Policy. C. Registered and Used in Bad Faith
The Complainant registered its South African trade mark rights in 1991 long before the registration of the disputed domain name in 2005. Considering the size of the Complainant’s retail banking business in South Africa and the degree of renown attaching to the Complainants ABSA and ABSA BANK marks by 2005 as a consequence of very substantial use in the marketplace, it is very difficult to believe that the Respondent could have been unaware of the Complainant’s marks and banking business when it registered the disputed domain name.
The Complainant has submitted that the Respondent’s registration will prevent the Complainant from registering its mark in a corresponding domain name with the gTLD “.com” and that the Complainant sought to register the disputed domain name purposefully with this aim in mind. Apart from inferences to be drawn from the fact that the website to which the disputed domain name resolves features links to other financial services sites, there is no other evidence that the Respondent acted purposefully in this regard under paragraph 4(b)(iii) of the Policy. There is also nothing to suggest that the Respondent embarked upon a pattern of conduct as required under paragraph 4(b)(ii) of the Policy.
However, it is clear that with knowledge of the Complainant’s ABSA mark, the Respondent has used the disputed domain name to resolve to a website that features pay-per-click links to financial services businesses, including some that according to the Complainant, are its competitors. The Panel finds that such use amounts to intentionally attempting to attract for commercial gain, internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the affiliation or sponsorship of the Respondent’s website under paragraph 4(b)(iv) of the Policy and this amounts to evidence of registration and use of the disputed domain name in bad faith.
As a result, the Panel finds that the Respondent has both registered and used the disputed domain name in bad faith and that the Complaint also succeeds under this element of the Policy. 7. Decision
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 be transferred to the Complainant.
Alistair Payne
Sole Panelist
Date: November 9, 2018
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