1.1 The Complainant is ABSA Group Limited of Johannesburg, South Africa, represented by Moore Attorneys Incorporated, South Africa (the “Complainant”).
1.2 The Respondent is Domain Administrator, PrivacyGuardian.Org of Phoenix, Arizona, United States of America / Peterson Malvern of Cape Town, South Africa (the “Respondent”). 2. The Domain Name and Registrar
2.1 The disputed domain name (the “Disputed Domain Name”) is registered with NameSilo, LLC (the “Registrar”). 3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 14, 2019. On February 14, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 14, 2019, 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 the Complainant on February 22, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 11, 2019.
3.2 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”).
3.3 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 12, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 1, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 2, 2019.
3.4 The Center appointed Ike Ehiribe as the sole panelist in this matter on April 24, 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
4.1 The Complainant in this administrative proceeding is ABSA Group Limited, a company incorporated in South Africa and having its principal place of business in Johannesburg, South Africa. The Complainant is said to have been founded in 1991 and is quoted on the Johannesburg Stock Exchange in South Africa. The Complainant is described as one of South Africa’s biggest retail banks and as of 2018 is reported to have an estimated number of employees numbering 31,317 throughout South Africa. The Complainant is said to operate and manage 698 branches and 8,917 Automated Teller Machines (ATMs). The Complainant is also said to have over 675,000 customers who utilize its Internet banking service as of 2018 and as of 2016 the Complainant had an estimate of 9,400,000 customers in South Africa.
4.2 The Respondent according to the WhoIs record is Peterson Malvern of Cape Town, South Africa.
4.3 The Respondent registered the Disputed Domain Name on September 5, 2018. 5. Parties’ Contentions A. Complainant
5.1 The Complainant is said to be a well-known and highly profitable company known for more than three decades with its ABSA trademarks. It is also said that through its extensive trading activities the Complainant has acquired a substantial reputation and goodwill in its ABSA trademarks in relation to financial services provided within the banking industry, being one of the largest banks in South Africa and in Africa. The Complainant also owns ABSA trademarks in classes 9, 16, 35, 36, 39, 41, and 42 as evidenced by the South African online Trademark registry printouts attached to this proceeding (e.g., South African trademark registration No. 1991/01263, registered on January 5, 1994). The Complainant also owns ABSA trademarks in other jurisdictions such as Angola, Botswana, China, Egypt, Ghana, India, Kenya, Mauritius, United Kingdom and Seychelles etc. according to a schedule of the Complainant’s international ABSA trademarks attached to this proceeding. Furthermore, it is said the Complainant’s holding company Barclays Africa Group is the Registrant of the following domain names, namely; , , , and amongst others.
5.2 The Complainant therefore asserts that the Disputed Domain Name is identical or confusingly similar to the Complainant’s “ABSA” registered trademark in that the Disputed Domain Name wholly incorporates the Complainant’s trademarks. Furthermore, it is argued that the addition of the country code “ZA” creates the false impression that the Disputed Domain Name is connected to and or associated with the Complainant. The Complainant argues that the Disputed Domain Name in the hands of the Respondent is tantamount to an abusive registration considering that the purpose of registering the Disputed Domain Name is to confuse members of the public into believing that the Disputed Domain Name is that of the Complainant. Following previous decisions in The Vanguard group, Inc v. Lorna King,WIPO Case No. D2002-1064, Multi Media, LLC v. Sven Torvik,WIPO Case No. D2018-0043, and Cisco Technology, Inc v. Akin Demirci,WIPO Case No. D2018-0092, the Complainant asserts that the mere addition of descriptive or non – distinctive elements to a trademark in which the Complainant has rights is insufficient to avoid a conclusion of confusing similarity. Therefore, the mere addition of the suffix “.net” may be disregarded when conducting a confusing similarity test.
5.3 The Complainant also contends that the Respondent has no rights or legitimate interests in the Disputed Domain Name in that the Respondent has not responded to a letter of demand issued by the Complainant’s attorneys since September 2018 and neither has the Respondent been granted consent and/or permission to register the Disputed Domain Name by the Complainant. In addition it is argued that there is no business relationship between the Complainant and the Respondent. It is also contended that the Respondent is not commonly known by the Disputed Domain Name. Following the decision in Inventio AG v. Nexperian Holding Limited / Zhou Yun,WIPO Case No. D2018-0091 the Complainant contends that there is no actual bona fide offering of goods and services or legitimate use of the Disputed Domain Name because the Disputed Domain Name is inactive which indicates that the Respondent does not operate a genuine business.
5.4 It is the Complainant’s case that it believes that the Respondent registered the Disputed Domain Name in bad faith for the following reasons. Firstly, since the Respondent registered the Disputed Domain Name from South Africa and is likely to be a citizen or resident of South Africa, the Respondent must have been aware of the Complainant’s extensive banking business and trademarks at the time of registration of the Disputed Domain Name. Secondly, the Complainant contends that the Disputed Domain Name was registered in order as to prevent the Complainant from reflecting its trademark in a corresponding domain name and to interfere with the business of the Complainant as well as the Complainant’s presence online. Thirdly, considering that the Complainant registered its domain name at “www.” in South Africa on December 31, 1994, some 23 years before the Respondent registered the Disputed Domain Name; the Respondent’s registration of the Disputed Domain Name will prevent the Complainant from registering a “.net” domain name with the “za” country identifier in future. In this regard, it is submitted that the registration of the Disputed Domain Name will result in confusion in that people may believe that the Disputed Domain Name belongs to the Complainant when it is not which unfairly disrupts the Complainant’s business. Fourthly, it is asserted that the registration of the Disputed Domain Name is detrimental to the distinctive character and reputation of the Complainant’s acquired goodwill and reputation. B. Respondent
5.5 The Respondent did not reply to the Complainant’s contentions; therefore, the Panel shall draw such adverse inferences from the failure of the Respondent to reply, as it considers appropriate. 6. Discussion and Findings
6.1 Under paragraph 4 (a) of the Policy, to succeed in the administrative proceeding the Complainant must prove that:
i) The Disputed Domain Name is identical or confusingly similar to the trademark or service mark of the Complainant;
ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
iii) The Disputed Domain Name has ben registered and is being used in bad faith.
6.2 As expressly stated in the Policy, the Complainant must establish the existence of each of these three elements in any administrative proceeding. A. Identical or Confusingly Similar
6.3 The Panel without any equivocation accepts that the Complainant a well-known financial institution in South Africa, is the registered owner of several trademark registrations in South Africa for the unique ABSA trademark and the Registrant of several domain names incorporating the said ABSA trademark as evidenced by documents attached to this proceeding. The Panel therefore finds that upon a visual examination, the Disputed Domain Name is clearly confusingly similar to the Complainant’s trademark. In essence, the Disputed Domain Name wholly incorporates the Complainant’s trademark. The Panel finds also that the mere addition of the country identifier “-za” and the suffix “.net” does absolutely nothing to prevent a finding of confusing similarity when engaged in a confusing similarity test. See in support the detailed discussion on the test for confusing similarity as contained in sections 1.7, 1.8 and 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third edition (“WIPO Overview 3.0”). Also see the decisions in: Multi Media, LLC v. Sven Torvik, supra with respect to the transfer of, where the panel disregarded the suffix “.net” in the determination of confusing similarity with respect to the disputed domain name in question; and Cisco Technology, Inc v. Akin Demirci, supra with regards to the transfer of where the panel also disregarded the country abbreviations “tr” and “turk” in finding the disputed domain name in issue confusingly similar.
6.4 The Panel is therefore satisfied that the Complainant has established that the Disputed Domain Name is confusingly similar to the Complainant’s ABSA trademark. B. Rights or Legitimate Interests
6.5 On any view, the Panel finds that the Respondent has no rights or legitimate interests whatsoever in the Disputed Domain Name within the ambit of paragraph 4(c) of the Policy. This finding is supported by the Complainant’s discovery that the Disputed Domain Name resolves to an inactive website. See also Inventio AG v. Nexperian Holding Limited / Zhou Yun, supra, where the panel relied on inactivity of a disputed domain name to hold that the registrant of the disputed domain name in question had no rights or legitimate interests in the disputed domain name. The Panel also finds that the Respondent cannot be said to be engaging in any actual bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Disputed Domain Name within the ambit of paragraph 4(c) of the Policy. The Panel equally finds that the Respondent has no affiliation with the Complainant and has not been authorised or licensed by the Complainant to register any domain name incorporating the Complainant’s trademark; neither has the Respondent adduced any evidence to demonstrate that the Respondent has commonly been known by the Disputed Domain Name.
6.6 In the circumstances, the Panel finds that the Complainant has established that the Respondent does not possess any rights or legitimate interests in the Disputed Domain Name as specified in paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
6.7 On the question of bad faith registration and use, this Panel has taken into account a number of undisputed factors to conclude that the Respondent undoubtedly registered the Disputed Domain Name in bad faith and continued with bad faith use despite notification of ownership by the Complainant.
6.8 First of all the Panel has taken into account the failure of the Respondent to respond to the Complainant’s attorney’s letter of demand dated September 13, 2018 as evidence of intentional bad faith registration and continued bad faith use. Secondly, the Panel finds that the Respondent could not possibly be unaware of the Complainant’s extensive banking activity and the Complainant’s trademarks at the time of registering the Disputed Domain Name. The adduced evidence shows that the Complainant registered its trademark ABSA in January 5, 1994 and its domain name at “www.” in South Africa on December 31, 1994 which is more than 23 years before the Respondent elected to register the Disputed Domain Name in September 2018. Thirdly, the Panel finds that the registration of the Disputed Domain Name is capable of disrupting the Complainant’s business in that Internet visitors may believe that the Disputed Domain Name belongs to, or is associated with, the Complainant thereby damaging the Complainant’s goodwill and reputation. Fourthly, passive holding of the Disputed Domain Name is evidence of bad faith in the circumstances of this case. Fifth, as indicated in paragraph 5.5 above, the Panel has drawn adverse inferences from the failure of the Respondent to respond to the contentions of the Complainant.
6.9 Accordingly this Panel is satisfied that the Respondent registered and continued to use the Disputed Domain Name in bad faith. 7. Decision
7.1 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.
Ike Ehiribe
Sole Panelist
Date: May 8, 2019
Full & Egal Universal Law Academy