Complainant is ABSA Group Limited of Johannesburg, South Africa, represented by Moore Attorneys Incorporated, South Africa.
Respondent is Dvlpmnt Marketing, Inc., of Nevis, Saint Kitts and Nevis. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with DNC Holdings, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on February 7, 2019. On February 7, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 7, 2019, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on February 21, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 13, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 14, 2019.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on March 20, 2019. 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
Complainant states that it 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 further states that it was founded in 1991 and is listed on the Johannesburg Stock Exchange in South Africa. Complainant further states that it is “one of South Africa’s biggest retails banks,” with 31,317 employees, 698 bank branches, 8,917 automated teller machines, 675,000 customers who use its Internet banking service and 9.4 million customers in South Africa.
Complainant states, and provides evidence to support, that it is the owner of multiple trademark registrations in South Africa, Angola, Botswana, China, Egypt, Ethiopia, Ghana, India, Kenya, Mauritius, the United Kingdom and Seychelles, that consist of the mark ABSA, including the following in South Africa: Reg. Nos. 1991/01263 (granted January 5, 1994), 1991/01264 (granted December 30, 1993), and 1991/07473 (granted August 3, 1995). These registrations are referred to herein as the “ABSA Trademark.”
The Disputed Domain Name was created on November 15, 2005, and is being used in connection with a website that includes various links, including links labeled “Job Vacancies,” “Bank Teller Jobs,” “Banking”, “Johannesburg,” and “Barclay Bank.”
Complainant states that it “was alerted to the existence” of the Disputed Domain Name in November 2018, and that it sent a demand letter to Respondent on November 13, 2018, but has not received a response. 5. Parties’ Contentions A. Complainant
Complainant contends, in relevant part, as follows:
- The Disputed Domain Name is confusingly similar to the ABSA Trademark because the Disputed Domain Name “wholly incorporates” the ABSA Trademark, which is “the dominant and memorable feature” of the Disputed Domain Name, and that the addition of the word “careers” “is not enough to distinguish between” the Disputed Domain Name and the ABSA Trademark because “[i]t is a well-established principle that the addition of the descriptive or non-distinctive elements to a trade mark in which the Complainant has rights is insufficient to avoid a conclusion [of] similarity.”
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, the Disputed Domain Name “is currently being used as a pay-per-click service and advertising available positions within the Complainant’s organization and also advertising positions available within the Complainant’s competitors”; Respondent has not responded to Complainant’s demand letter; Respondent “has not been granted consent and/or permission to register and/or use the [D]isputed [D]omain [N]ame by the Complainant, [and] there is no business relationship between the Complainant and the Respondent”; Respondent is using the Disputed Domain Name “with an intention to attract internet users for commercial gain by creating and using the domain name as a pay-per-click services thereby creating the likelihood of confusion with the ‘ABSA’ trademark as the source, sponsorship and affiliation to the website with the Complainant”; and “Respondent’s registration of the [D]isputed [D]omain [N]ame cannot amount to a bona fide use of goods and/or services, its existence is likely to take unfair advantage of and be detrimental to the distinctive character and reputation of the Complainant’s acquired goodwill and reputation.”
- The Disputed Domain Name was registered and is being used in bad faith because, inter alia, “Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor” by using it “to advertise the services and products offered by the Complainant’s competitors”; and “[b]y registering and utilizing the [D]isputed [D]omain [N]ame as a pay-per-click website the Respondent is intentionally attracting internet users for commercial gain to its website, thereby creating a likelihood of confusion with the Complainant’s trademarks as [to] the source sponsorship, affiliation, or endorsement of the disputed website.” B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name 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. Policy, paragraph 4(a). A. Identical or Confusingly Similar
Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the ABSA Trademark.
As to whether the Disputed Domain Name is identical or confusingly similar to the ABSA Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., “absacareers”) because “[t]he 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 of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.1.
The Disputed Domain Name contains the ABSA Trademark in its entirety, adding only the word “careers.” As set forth in section 1.7 of WIPO Overview 3.0, “in cases where 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.” Further, section 1.8 of WIPO Overview 3.0 states: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.” Therefore, inclusion of the word “careers” in the Disputed Domain Name is irrelevant. See, e.g., BARCLAYS BANK PLC v. BARCLAYSCAPITALCAREERS.COM Privacy--P / Milan Kovac,WIPO Case No. D2011-1015 (finding confusingly similar to the trademark BARCLAYS CAPITAL).
Accordingly, the Panel finds that Complainant has proven the first element of the Policy. B. Rights or Legitimate Interests
Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, the Disputed Domain Name “is currently being used as a pay-per-click service and advertising available positions within the Complainant’s organization and also advertising positions available within the Complainant’s competitors”; Respondent has not responded to Complainant’s demand letter; Respondent “has not been granted consent and/or permission to register and/or use the [D]isputed [D]omain [N]ame by the Complainant, [and] there is no business relationship between the Complainant and the Respondent”; Respondent is using the Disputed Domain Name “with an intention to attract internet users for commercial gain by creating and using the domain name as a pay-per-click services thereby creating the likelihood of confusion with the ‘ABSA’ trademark as the source, sponsorship and affiliation to the website with the Complainant”; and “Respondent’s registration of the [D]isputed [D]omain [N]ame cannot amount to a bona fide use of goods and/or services, its existence is likely to take unfair advantage of and be detrimental to the distinctive character and reputation of the Complainant’s acquired goodwill and reputation.”
WIPO Overview 3.0, section 2.1, states: “While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out 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.”
The Panel finds that Complainant has established its prima facie case and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has satisfied the second element of the Policy. C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the 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 the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).
Complainant does not specify which, if any, of the enumerated factors is applicable here. However, Complainant cites a previous decision under the Policy in a dispute also filed by Complainant involving the ABSA Trademark and a similar website. In that case, the panel found bad faith pursuant to Policy, paragraph 4(b)(iv), writing: “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.” This Panel agrees with this conclusion and finds it equally applicable here.
Accordingly, the Panel finds that Complainant has proven the third 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 Complainant.
Douglas M. Isenberg
Sole Panelist
Date: April 2, 2019
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