WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dahabshiil Transfer Services Limited v. Domains by Proxy, Inc. / Somali Youth Club
Case No. D2011-1900
1. The Parties
The Complainant is Dahabshiil Transfer Services Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Bird & Bird, UK.
The Respondent is Domains by Proxy, Inc. of Scottsdale, Arizona, United States of America (“USA”) and Somali Youth Club of Chicago, Illinois USA.
2. The Domain Name and Registrar
The disputed domain name <dahabshiilbank.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 2, 2011. On November 2, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On the same date, GoDaddy.com, Inc. 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 November 9, 2011 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 November 11, 2011.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 14, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 4, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 5, 2011.
The Center appointed Sir Ian Barker as the sole panelist in this matter on December 12, 2011. 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 large financial organisation incorporated in the United Kingdom. It has some 24,000 branches and agents licensed to use its trademark in 144 countries. It employs more than 2,000 people.
The Complainant is duly licensed in the United Kingdom and elsewhere to operate as a provider of financial services and money transfers. It belongs to relevant industry organizations.
The Complainant’s customers are mainly Somalis, both within and outside Somalia. It provides its services to international agencies such as the United Nations and various aid agencies which need to have money sent to Somalia.
The Complainant is the owner of various registered trademarks for the word DAHABSHIIL, including registrations for money transfer services in the United Kingdom and the European Union.
The disputed domain name was registered by the Respondent on September 4, 2011 and resolves to a website which serves as a search engine. It contains numerous advertisements and links to other websites which offer money transfer services in competition with the Complainant.
The Complainant has not granted any rights to the Respondent to reflect its trademark in a domain name. The disputed domain name is prominently displayed at the top of the homepage of the disputed website.
5. Parties’ Contentions
The disputed domain name is confusingly similar to the Respondent’s registered trademark. The addition of the word “bank” (a generic word) is not sufficient to distinguish the disputed domain name from the trademark.
The Respondent has no legitimate rights or interests in respect of the disputed domain name. None of the situations under Paragraph 4(c) of the Policy applies to the Respondent.
The disputed domain name was registered and is being used in bad faith. The disputed domain name must have been chosen so as to confuse Internet users into thinking that the website had some connection or affiliation with the Complainant. The Respondent is misleading Internet users for commercial gain which is evidence of bad faith registration and use. The Respondent is disrupting the Complainant’s business by diverting Internet users to competitors of the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under Paragraph 4(a) of the Policy, in order to prevail, a complainant must prove the following elements of a claim for transfer or cancellation of a respondent’s domain name:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in the disputed domain name; and
(iii) that the respondent’s domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name is confusingly similar to the registered trademarks in which the Complainant has rights.
The addition of the generic word “bank” to the trademarked expression in the disputed domain name is not sufficient to distinguish the disputed domain name from the trademark. The whole of the registered trademark is incorporated in the disputed domain name. The addition of the word “bank” adds to the confusion because the registered trademark is associated with the provision of financial services.
Accordingly, the Complainant has satisfied Paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant gave the Respondent no license or authority to reflect its registered trademark in a domain name. In the absence of any Response from the Respondent, that fact is sufficient to establish Paragraph 4(b)(ii) of the Policy.
The Respondent could have pleaded one or more of the situations provided in Paragraph 4(c) of the Policy which indicate possible defences. However, it has not done so and therefore Paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
It is hard to think of a clearer case of blatant cybersquatting. The Respondent is an organisation for Somalis, if its name be any indication. The Complainant’s business is, inter alia, to provide financial and money transfer services to Somali people and to organizations with operations in Somalia. The disputed domain name incorporates the Complainant’s brand and trademark and adds the word “bank” to indicate, beyond a doubt, that its business is the provision of financial services.
The attempt on the Respondent’s website to divert customers away from the Complainant towards its competitors is obvious. The resultant disruption to the Complainant’s business, the tarnishing of the Complainant’s trademark and the clear impression from the website of affiliation to or authorization from the Complainant are all factors that point unerringly to the conclusion that this disputed domain name (registered as recently as September 2011) was registered and is being used in bad faith.
Accordingly, Paragraph 4(c)(iii) of the Policy has been satisfied.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <dahabshiilbank.com> be transferred to the Complainant.
Sir Ian Barker
Dated: December 15, 2011