The Complainant is ABSA Group Limited of Johannesburg, Gauteng, South Africa, represented by Moore Attorneys Incorporated, South Africa.
The Respondent is Masayo Kosedo, Get Group of Osaka, Japan. 2. The Domain Names and Registrar
The disputed domain names and are registered with GMO Internet, Inc. d/b/a Discount-D and O (the “Registrar”). 3. Procedural History
The Complaint was filed in English 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 names. On February 15, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 18, 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 February 28, 2019.
On February 18, 2019, the Center sent a communication to the Parties, in English and Japanese, regarding the language of the proceeding. On February 20, 2019, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
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”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent, in English and Japanese, of the Complaint, and the proceedings commenced on March 1, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 21, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 22, 2019.
The Center appointed Haig Oghigian as the sole panelist in this matter on April 22, 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
As there is no submission from the Respondent, the facts are taken from the Complaint and generally accepted as true.
The Complainant is a publicly-listed South African bank, previously called ABSA Bank Limited, and is one of the biggest retail banks in the country with approximately 700 branches, approximately 31,000 employees, more than 675,000 customers that use its Internet service and approximately 9.4 million customers in South Africa. It was founded in 1991 and owns various trademark registrations for its ABSA mark including Japanese trademark registration No. 4348007 filed on August 6, 1998 and registered on December 24, 1999. The Complainant operates its websites from various domain names that incorporate the mark ABSA in various Top-Level Domain name spaces and the first of these, was registered in December, 1994.
The disputed domain name was registered on December 29, 2013 while the disputed domain name was registered on May 2, 2014. 5. Parties’ Contentions A. Complainant
The Complainant submits that it owns registered trademark rights as set out above and that the disputed domain names wholly incorporate the ABSA mark and are therefore confusingly similar.
It says that through its extensive trading activities, the Complainant has acquired a substantial reputation and goodwill in its ABSA trademarks, in relation to financial services within the banking industry. The Respondent’s registration of the disputed domain names are more than 25 years after the Complainant first applied for registration of its ABSA trademarks in South Africa and more than 15 years after the Complainant applied for trademark in Asia. As a consequence, the Complainant is of the view that the disputed domain names amount to an abusive registration by the Respondent and says that the purpose of registering the disputed domain names is to confuse members of the public into believing that the disputed domain names are those of the Complainant.
The Complainant submits that the disputed domain names do not represent a bona fide service offering and has been registered using the Complainant’s trademark to take unfair advantage of the goodwill and reputation that has been acquired by the Complainant over the years. It says further that it has not granted consent and/or permission for the Respondent to register the disputed domain names and there is no business relationship between the Parties. The Complainant further says that there is no evidence that the Respondent is making legitimate noncommercial or fair use of the disputed domain names.
The Complainant says that the registration of disputed domain names will prevent the Complainant from registering domain names which reflecting its trademark in respect of the Complainant’s Asian operations. It further says that the registration of the disputed domain names will likely lead to confusion in that people may believe that the disputed domain names are those of the Complainant, when they are not. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Language
Paragraph 11(a) of the Rules gives the Panel discretion to decide the language of this proceeding:
“(a) Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
According to information the Center has received from the concerned Registrar, the language of the registration agreements for the disputed domain names is Japanese.
Following the Center’s instructions to the Complainant, it has submitted a request that English be the language of the proceedings, on which the Respondent did not comment.
Given the provided submissions and circumstances of this case, the Center has decided to:
1) accept the Complaint as filed in English;
2) accept a Response in either English or Japanese;
3) appoint a Panel familiar with both languages mentioned above, if available.
The Complainant argued that the Respondent is familiar with the English language because (i) the name of the Respondent’s Organization, Get Group, is in English words; (ii) the Respondent has made an effort to express the full words of the abbreviation in both Japanese and English; and (iii) the Respondent’s website allows for translation of the Respondent’s page from Japanese to English. While the Panel does not agree that the degree of familiarity with the English language demonstrated by the Complainant’s examples would necessarily justify depriving the Respondent of its right to conduct the proceedings in the language of registration agreement, the Respondent had ample opportunity to raise objections in relation to the language of the proceeding or make known her preference, but she did not.
Accordingly, the Panel chooses to write the decision in English. 6.2 Substantive Findings
Paragraph 4(a) of the Policy requires that the complainant prove each of the following elements:
(i) The respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) The respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The respondent’s domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The disputed domain names and are made up of the Complainant’s registered and distinctive trademark ABSA with the addition of the geographical indicators “-jp” (i.e., Japan) and “-asia” respectively and the generic Top-Level Domain (“gTLD”) “.com”. The addition of “-jp” or “-asia” does not avoid a finding of confusing similarity between the disputed domain names and the Complainant’s registered trademark ABSA. The Panel finds that the disputed domain names are confusingly similar to the Complainant’s registered tradename ABSA.
Accordingly, the first part of paragraph 4(a) of the Policy is satisfied. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives a non-exhaustive list of circumstances that may be brought forward by the Respondent in order to demonstrate its rights or legitimate interests. Such circumstances include:
(i) Use of demonstrable preparation to use the domain name in connection with a bona fide offering of goods or services prior to notice of the dispute;
(ii) An indication that the registrant has been commonly known by the domain name even if it has not acquired trademark rights; or
(iii) Legitimate noncommercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark.
Further, section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides in pertinent part:
“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 the Complainant has made out a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain names. Therefore, the burden of production shifts to the Respondent to come forward with evidence demonstrating its rights or legitimate interests in the disputed domain names.
There is no evidence to suggest that the Respondent has been or is commonly known by the disputed domain names. No evidence has been submitted that establishes the existence of a relationship between the Complainant and the Respondent that would give rise to any license, permission or authorization by which the Respondent could use the name “Absa” or any mark confusingly similar thereto as a domain name or otherwise. The Respondent has failed to rebut the Complainant’s prima facie showing.
Accordingly, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain names. The Complainant has therefore satisfied the second part of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The Complainant contend that the Respondent has registered the disputed domain names in order to prevent the trademark owner from reflecting their marks in domain names. Also, the registration of the disputed domain names will likely lead to confusion in that people may believe that the Respondent’s domain names are those of the Complainant, when they are not.
The Respondent does not appear to have made any legitimate use of the disputed domain names. While the disputed domain name currently directs to a page with message in Japanese to the effect “SWBS Website is currently under maintenance. We apologize for inconvenience but please understand”, the disputed domain name currently leads to an error message “DNS error (the host name of the page you are looking for does not exist). Please check that the host name has been spelled correctly”.
Use of disputed domain names in such way constitutes bad faith.
On this basis, the Panel finds that the disputed domain names were registered and are being used in bad faith.
The Panel finds that the third part of paragraph 4(a) of the Policy is satisfied. 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 names and be transferred to the Complainant.
Haig Oghigian
Sole Panelist
Date: April 25, 2019
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