The Complainant is ABSA Group Limited, South Africa, represented by Moore Attorneys Incorporated, South Africa.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., United States of America (“United States” or “U.S.”) / Supriadi Supriadi, Indonesia. 2. The Domain Name and Registrar
The disputed domain name is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 5, 2019. On June 5, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 5, 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 June 19, 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 June 21, 2019.
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 of the Complaint, and the proceedings commenced on June 24, 2019. The Respondent did not submit a formal response. The Respondent sent various emails about being willing to transfer the disputed domain name to the Complainant. Accordingly, The Center sent a possible settlement email to the Parties on May 9, 2019. On July 1, 2019 the proceeding was suspended for settlement discussions. On July 16, 2019, the Complainant requested for the Reinstitution of Proceeding. The proceeding was reinstituted on July 19, 2019. In accordance with the Rules, paragraph 5(a), the due date for Response was July 24, 2019. On July 25, 2019, the Center notified the Parties about the Commencement of Panel Appointment Process.
The Center appointed Alexandre Nappey as the sole panelist in this matter on July 29, 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
The Complainant is a banking group based in South-Africa since 1991, which offers personal and business banking, credit cards, corporate and investment banking, wealth and investment management and insurance.
The Complainant is the owner of ABSA trademark in various jurisdictions, including inter alia, the following:
- ABSA (& Design) African trademark, Registration No. 1991/01263, registered on January 5, 1994; and
- ABSA (& Design) African trademark, Registration No. 1991/01264, registered on December 30, 1993.
Moreover, the Complainant is the owner of the following domain names:
- , registered on January 1, 1995,
- , registered on July 30, 2004,
- , registered on July 30, 2004, and
- , registered on March 16, 2009.
The disputed domain name was registered on December 23, 2018.
The disputed domain name resolves to an inactive website only displaying the message “What you search?”. 5. Parties’ Contentions A. Complainant
The Complainant states that the disputed domain name is confusingly similar to its prior trademark ABSA as it is an exact replication of it, as it wholly incorporates it. The addition of the generic Top-Level Domain name extension “.me” will most likely increase the likelihood of confusion
Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name since:
- the disputed domain name was registered on December 23, 2018, 27 years after the Complainant first trademark ABSA registration;
–the Respondent’s use is not connected with a bona fide offering of goods and services: the disputed domain name remains largely inactive and there can thus be no doubt that the domain name was registered merely to interfere with the business of the Complainant and to confuse members of the public into believing that the domain name belongs to the Complainant, when it does not;
- the Respondent is not commonly known by the domain name; and
- there is no evidence that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name: the disputed domain name diverts to an inactive website displaying the message “What you search?”.
The Complainant submits that the Respondent has registered and use the disputed domain name in bad faith:
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 as a result of the goodwill and reputation inhering in the Complainant’s ABSA trademarks.
The Complainant is of the opinion that the Respondent has registered the domain name in bad faith. The domain name in question was registered in order to interfere with the business of the Complainant as well as the Complainant’s online presence. The registration of the Respondent’s domain name may lead to confusion in that people may believe that the Respondent’s domain is that of the Complainant, when it is not, and unfairly disrupt the business of the Complainant.
By registering the domain name the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 Respondent’s website or location or of a product or service on the Respondent’s website or location. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which the Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel concludes that the Complainant has rights in the marks ABSA through registration and use.
The Panel also finds the disputed domain name to be identical to the mark.
The Complainant has established Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence of the existence of any of those rights or legitimate interests in this case. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the disputed domain name or to use the trademark in the disputed domain name.
In addition, the Complainant has previously sent a demand letter to the Respondent which was never replied.
The Respondent has failed to show that it has acquired any rights with respect to the disputed domain name. Moreover, it had the opportunity to demonstrate its rights or legitimate interests, but it chose not to reply to the Complaint.
As such the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include without limitation:
(i) circumstances indicating the disputed domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain name; or
(ii) circumstances indicating that the disputed domain name was registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding disputed domain name, provided there is a pattern of such conduct; or
(iii) circumstances indicating that the disputed domain name was registered primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the disputed domain name has intentionally been used in an attempted to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on that website or location.
The Complainant’s trademark registration for ABSA predates the registration of the disputed domain name .
The Panel observes that the Complainant’s trademark ABSA has been considered well-known according to several UDRP decisions cited by the Complainant.
There is no evidence in the case record indicating that the disputed domain name has resolved to an active website nor that the Respondent has made any legitimate use of the disputed domain name.
As stated in section 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, passive holding as such does not prevent a finding of bad faith. In the absence of any evidence to the contrary, the Panel agrees with the Complainant that the disputed domain name was registered by the Respondent with the Complainant’s trademark ABSA in mind.
There is no evidence in the case record that refutes the Complainant’s submissions.
Furthermore, the Panel notes that the Respondent spontaneously offered to transfer the disputed domain name to the Complainant during the present proceedings. For reasons which remain unknown to the Complainant the case could not be settled by the Parties.
The Panel concludes that the Complainant has proved the requirements under paragraph 4(b) of the Policy and that the disputed domain name has been registered and used in bad faith. 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.
Alexandre Nappey
Sole Panelist
Date: August 12, 2019
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