WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
FirstRand International Limited, FirstRand Bank Limited v. Virtual Sky
Case No. D2007-0701
1. The Parties
The Complainants are FirstRand International Limited, Sandton, South Africa (“Complainant FirstRand International”), and FirstRand Bank Limited, Sandton South Africa (“Complainant FirstRand Bank”), represented by Adams & Adams Attorneys, South Africa.
The Respondent is Virtual Sky, George Town, Grand Cayman, Cayman Islands, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <ebuks.com> (the “Domain Name”) is registered with Moniker Online Services, LLC (“Moniker”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 10, 2007. On May 11, 2007, the Center transmitted by email to Moniker a request for registrar verification in connection with the domain name at issue. On May 14, 2007, Moniker 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”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 31, 2007. In accordance with the Rules, paragraph 5(a), the due date for the Response was June 20, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 21, 2007.
The Center appointed Dana Haviland as the sole panelist in this matter on July 2, 2007. 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 FirstRand International is the owner of registered trademarks for the mark eBucks (the “eBucks Mark”) in numerous countries and licenses the use of the eBucks Mark to Complainant FirstRand Bank for use in connection with the latter’s banking activities and financial reward program for bank credit and debit card use.
Respondent has registered the Domain Name <ebuks.com> and uses it for a website which consists of sponsored links which vary from time to time but include links to online banking and financial sites.
5. Parties’ Contentions
(1) Identical or confusingly similar
The Complainants assert that they have registered and common law user rights in various trademarks including the trademark eBucks, own numerous domain names including eBucks, and operate a website at “www.ebucks.com”. Complaint Annex EB4 sets out a schedule of the registered trademarks of Complainant FirstRand International, consisting of or including the trademark eBucks, most filed in the year 2000, in numerous countries of the world including the USA, European Union, South Africa and elsewhere. Complaint Annex EB5 sets out particulars of various domain name registrations by Complainant FirstRand Bank which include the trademark eBucks owned by Complainant FirstRand International.
According to the Complaint, Complainant FirstRand Bank, under the licence and authority of Complainant FirstRand International, has made and makes widespread use in the banking field of the trademark eBucks and trademarks including the trademark eBucks in relation to its financial rewards program. Complaint Annex EB6 sets out promotional and advertising material for the eBucks program.
Complainants are both subsidiaries of FirstRand Limited, a company incorporated in the Republic of South Africa and having its principal place of business at Sandton, Gauteng, South Africa, and are among the various companies constituting the FirstRand Group. First National Bank is an operating division of Complainant FirstRand Group. Complaint Annex EB7 is a diagram of the operations and subsidiaries of the FirstRand Group. Complainants state that the FirstRand Group is well-known in South Africa, many African countries and also in certain European countries including the United Kingdom. According to Complainants, the FirstRand Group conducts business in the banking, financial services and insurance fields, and First National Bank is one of South Africa’s and Africa’s best known banks, serving millions of clients around the world.
According to Complainants, in 2000, First National Bank introduced its eBucks reward program, which is available to First National Bank clients as well as the general public, and has approximately 1.1 million registered members. Essentially, eBucks members who spend money at certain retail partners using a linked credit card, and/or an eBucks card, earn credits, or “eBucks”. For every South African Rand spent, 10 eBucks points are awarded to the spender. The program is linked to a large number of retailers and companies. Once sufficient eBucks credits are accumulated by a member, these can be exchanged for a number of rewards, ranging from household items, computers, fashion items and gifts to holidays and hampers. eBucks can also be used to donate to charities or to purchase vouchers for any of the retailers linked to the eBucks program. Since 2000, the total South African Rand value of eBucks credits allocated (October 2000 to March 2007) has been R830 million. It is therefore submitted that the Complainants have established and own significant rights in eBucks as trademarks (registered and as goodwill under the common law) and domain names.
Complainants assert that the domain name <ebuks.com> is confusingly or deceptively similar to the various eBucks trademarks and domain names in which the Complainants have rights. According to Complainants, the words “ebucks” and “ebuks” are phonetically identical and convey the same meaning. Furthermore, they assert, particularly in the context of South Africa, the English word “bucks” will often be rendered or written in the Afrikaans language (a major language in the country) as “buks”. Typically, in Afrikaans, the letter “c” is not used with the letter “k” and is omitted from words which, in the English equivalent, would include the letters “ck”. Examples are “shock” and “skok”, “truck” and “trok” and “clock” and “klok” (all of which have the same meaning in English and Afrikaans). Thus, Complainants contend, an Afrikaans speaking person who was looking for a website for “ebucks”, might well type the word as “ebuks”.
(2) Rights or legitimate interests
The Respondent operates a website at “www.ebuks.com”. According to Complainants, the layout and graphic design of this website changes frequently between two or three different designs. Complaint Annexes EB12 and EB13 show extracts from the website and examples of the various designs.
Complainants assert that the Respondent’s business conducted through the website seems solely to relate to the provision of links to a variety of other websites, including a significant number of South African websites, and some even linking to the Complainants. For example, they state, one of the links leads users to the website “www.homeloans-sa.com”, and the Complainants’ First National Bank division is listed on this website. Complainants assert that the Respondent’s website and use of a confusingly similar domain name <ebuks.com> to <ebucks.com> is a deliberate attempt to attract persons from South Africa (or elsewhere) who misspell “ebucks” as “ebuks”. They further contend that presumably, the Respondent is able to derive some form of benefit or financial gain through the “click-through” linking throughout its website to those of others.
According to the Complaint, it may be seen from the extracts of the Domain Name website that the Respondent also uses eBuks as a trademark, which is nearly identical to the Complainants’ eBucks trademark, in its website banner in conjunction with the phrase “What you need, when you need it”.
The Complainants are not aware of any rights or legitimate interests in respect of the domain name <ebuks.com> in the name of the Respondent and submit that there are none.
Complainants contend that the use by the Respondent of the <ebuks.com> domain name demonstrates a clear intent to mislead in the above manner and that consequently, there is an overt lack of legitimate interest or any right in the name of the Respondent in the light of the renown and goodwill associated with the eBucks trademarks and business.
(3) Registered and used in bad faith
Complainants assert that the Respondent’s registration and use of the domain name <ebuks.com> and of the trademark eBuks in respect of a website offering links to numerous other websites, many of which are South African, relating to the activities in which the Complainants are involved, cannot be coincidental, and that the only reasonable inference to be drawn from this conduct is that it is an intentional imitation to attempt to attract, for commercial or other gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainants’ trademarks as to the source, sponsorship, affiliation or endorsement of its website or location.
Complainants further contend that the Respondent has a clear and proven history of acting in bad faith in such a manner, citing several WIPO and National Arbitration Forum domain name proceedings in which the administrative panels in question determined that the Respondent Virtual Sky acted in bad faith and transferred the domain names in question to the respective complainants, including CCP, Inc. v. Virtual Sky, WIPO Case No. D2006-0201, in which the panel, in finding bad faith on the part of the Respondent, described the Respondent’s activity as “typosquatting”, and Flowers Bakeries Brands, Inc. v Virtual Sky, WIPO Case No. D2006-1545 (panel found that respondent acted in bad faith, as there existed a high probability that the respondent knew of the complainant’s mark and its reputation and deliberately adopted the domain name in question, and was using it for the purpose of attracting Internet users to its website and to thereby generate income on a per click basis from persons accessing the site). Other cases cited by Complainants as finding Respondent Virtual Sky had registered and used the domain names in question in bad faith include Phil Town v Virtual Sky, NAF Case No. FA0602000648207, HerbaSway Laboratories, LLC v Virtual Sky, NAF Case No. FA0606000724588, Charleston Alexander Jewelers Inc. v Virtual Sky, NAF Case No. FA0504000452231, A Retired Collection, LLC v Virtual Sky c/o domain support, NAF Case No. FA0508000535461, Rose Displays, Ltd v domain support d/b/a Virtual Sky, NAF Case No. FA0508000537465, SharedBook LTD v Virtual Sky c/o domain support, NAF Case No. FA0512000610708, The Leather Factory, Inc. v Virtual Sky c/o domain support, NAF Case No. FA0512000611781, Grant Lloyd Berry, Inc. v Virtual Sky, NAF Case No. FA0512000616661, The Royal Bank of Scotland Group, plc, Direct Line Insurance plc, and Privilege Insurance Company Limited v Virtual Sky, NAF Case No. FA 0605000715060, and Calliope Media LP v Virtual Sky, NAF Case No. FA0703000931676. Thus, Complainants contend, in regard to the domain name <ebuks.com>, the Respondent is obviously again engaging in “typosquatting” and its conduct can only be described as highly suspicious and mala fide.
The Complainants state that they have determined that the Respondent’s specific IP address for its website at “www.ebuks.com” is 220.127.116.11, and that an Internet search conducted on May 8, 2007 (“http://www.robtex.com/ip/18.104.22.168.html”) revealed several hundred other domains sharing this IP address. Complaint Annex EB24 sets forth the results of this search. According to Complainants, when one visits any one of these websites, they all have the same layout and design as at “www.ebuks.com” and, like the “www.ebuks.com website”, they all also contain the words “What you need, when you need it” as a banner in the top left corner of the home page. Complainants assert that many of these are or are similar to well-known trademarks, and provide examples in Complaint Annexes EB25 – EB28. Thus, they conclude, the only reasonable inference to be drawn from this conduct and obfuscation is that the Respondent is clearly acting in bad faith.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Respondent has not objected to nor provided any evidence in opposition to Complainants’ assertion and evidence of their rights to the eBucks Mark.
Respondent’s Domain Name <ebuks.com> is virtually identical to the Complainants’ eBucks Mark, differing only in the deletion of the letter “c”, which does not negate the visual and phonetic similarity of the Domain Name to the Complainant’s eBucks Mark. This is a clear example of typosquatting, “a practice by which ‘a registrant deliberately introduces slight deviations into famous marks’ for commercial gain”. ESPN, Inc. v. XC2, WIPO Case No. D2005-0444 (finding <espnn.com> confusingly similar to the ESPNEWS trademark); Marriott Int’l, Inc. v. Seocho, NAF Case No. FA 0303000149187 (Nat’l Arb. Forum April 28, 2003) (finding <marriottt.com> confusingly similar to Marriott).
This is not the first time Respondent has been found to be a typosquatter in a domain name proceeding. See, e.g., CPP, Inc. v. Virtual Sky, WIPO Case No. D2006-0201 (“Respondent is involved in ‘typosquatting’, the practice of using a domain name misspelling of Complainant’s well known trademark”. As is evident from review of the other domain name cases brought against Respondent Virtual Sky, cited by Complainants above in Section 5(A)(3), Respondent has engaged in a pattern of registration of domain names confusingly similar to well known trademarks in that they differ in spelling from the trademark by only a single letter or similar “typo”.
The Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainants have rights, within the meaning of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Complainants state that they are not aware of any rights or legitimate interests of the Respondent in the Domain Name, and assert that Respondent has none.
As noted in CPP, Inc. v. Virtual Sky, supra, it is difficult for a complainant to prove the negative that a respondent does not have any rights or legitimate interests in a domain name in dispute. Thus, “where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is uniquely within the knowledge and control of the respondent”. Diebold, Incorporated v. Paul Terwilliger, WIPO Case No. D2003-0416. Respondent has not asserted any right or interest in the Domain Name and has presented no evidence in opposition to Complainant’s assertions in this regard.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
The Panel finds that Complainants have shown bad faith registration and use under paragraph 4(b)(iv) of the Policy. It appears that Respondent has used the Domain Name in order to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with the Complainant’s Trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s website and the products or services offered there. As stated in Joe David Graedon v. Modern Limited - Cayman Web Development, WIPO Case No. D2003-0640, “the Respondent’s domain name points to a website which is a mere collection of links to other websites…[T]his website is obviously merely a vehicle for generating advertising revenue. By using the domain name, the Respondent therefore has intentionally attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant’s trademarks. Policy, paragraph 4(b)(iv) is therefore satisfied”.
In Deutsche Telekom AG v. Spiral Matrix, WIPO Case No. D2005-1145, the panel found that such activity constitutes bad faith: “As regards Respondent’s use of the domain names, it appears that under the websites that are connected with the Respondent’s domain names there is a list of sponsored links, thereby allowing the Respondent to make commercial gain. As stressed in Deutsche Telekom AG v. WWW Enterprise Inc., WIPO Case No. D2004-1078, ‘it is now a well known practice to display on a web page or search engine various links to other commercial websites, every link activated by an Internet user enables the host of the search engine to collect financial remuneration proportional to the number of connections.’ Therefore…it seems evident that the Respondent has registered and used the domain names with the intent to attract to his websites Internet users looking for the products and services of Complainant, thereby making commercial gain by the sponsored links.” Similarly, in Bilfinger Berger AG v. eService Finance Dept., WIPO Case No. D2003-0827, the Panel noted that “it appears that the Respondent, by using the Domain Name…tried to attract consumers seeking the Complainant’s official website to a website that did not correspond to their expectations, and from which they could be diverted to on-line locations without any relation whatsoever with the Complainant. In other words, the Respondent attempted to misleadingly divert Internet traffic that was initially intended for the Complainant…The websites to which the links in the directory resolve are commercial sites”. Such use of a domain name evidences bad faith under paragraph 4(b)(iv) of the Policy.
Moreover, in finding bad faith herein, the Panel takes note of the Respondent’s long history of “typosquatting”, as shown in the extensive list of cases cited above in which Respondent’s domain names have been transferred to aggrieved trademark owners on the grounds of Respondent’s bad faith registration and use on similar facts.
In conclusion, the Panel finds that the Domain Name is confusingly similar to the Complainants’ eBucks Mark, that the Respondent has not asserted or established any rights or interests in respect of the Domain Name, and that the Respondent has registered and used the Domain Name in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <ebuks.com> be transferred to the Complainants.
Dated: July 16, 2007