WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nedbank Limited v. Online Promotions LTD, Anthony Brown
Case No D2012-1465
1. The Parties
The Complainant is Nedbank Limited of Sandton, Johannesburg, South Africa, represented by Adams & Adams Attorneys, South Africa.
The Respondent is Online Promotions LTD, Anthony Brown of Cape Town, Western Cape, South Africa.
2. The Domain Name & Registrar
The disputed domain name <nedbank.info> (the “Domain Name”) is registered with eNom (the “Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration & Mediation Center ("the Center") on July 19, 2012. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 19, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent, listed as the registrant, included both Organization name: Online Promotions LTD and the name: Anthony Brown. As such, the Complainant was requested to file a short amendment to the Complaint, adding Online Promotions LTD as Respondent.
The Center verified that the 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 August 15, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 4, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 14, 2012.
The Center appointed Archibald Findlay SC as the sole panelist in this matter on September 28, 2012. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality & Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The following facts and circumstances are to be found in the Complaint and its Annexures and, in the absence of challenge, can be accepted as background.
The Complainant is a leading financial services provider of a diverse and extensive range of financial and banking products and services.
The Complainant is one of the five largest banks in South Africa and operates across the African continent.
The Complainant’s Nedbank business has been in existence since 1831.
The Complainant was named South African Bank of the Year for 2011 at a Gala Function in London on November 30, 2011, by The Bankers’ Magazine, which is a global banking publication.
The Complainant is the registered proprietor of a variety of registered trade marks worldwide for the name NEDBANK and marks incorporating NEDBANK in a range of classes which include financial services.
The Complainant is the registrant of a portfolio of over 160 domain names incorporating its NEDBANK mark. The Complainant uses these domain names to promote and offer its banking and financial related goods and services.
The Domain Name was registered on November 9, 2011.
5. Parties’ Contentions
The Complainant’s Complaint is as follows:
As appears from the factual background, the Complainant’s NEDBANK trade mark is known throughout the world.
The Domain Name is, save for the “.info” suffix, identical to the NEDBANK trade mark.
The Complainant’s trade mark cannot be used in a domain name lawfully without authorization from the Complainant. Such authorization has not been given. The Respondent is not associated with the Complainant in any way.
Moreover, the Complainant had no knowledge of the Respondent until it learnt of the Domain Name registered in the Respondent’s Domain Name.
As appears from the schedules annexed to the Complaint, the Complainant’s registered trade marks and its ownership of its several domain names pre-dated the registration of the Domain Name by the Respondent.
There is no evidence that the Respondent has been known by the name Nedbank or that it has acquired any trade mark or service mark rights in Nedbank.
A Google search on the Internet provides the results for <nedbank.co.za> (which is one of the Complainant’s domain names) and it reflects the message “Did you mean: nedbank.co.za”. Entry of the Domain Name in the Internet toolbar results in the following message: "Internet explorer cannot display the webpage", nor does the Domain Name resolve to any website which may have provided a bona fide interest by the Respondent therein.
On the basis of the evidence set out above, the Complainant contends that the NEDBANK trade mark is a well-known trade mark.
The Respondent is not the legitimate registrant of the Domain Name and appropriated it purely to derive a financial benefit. This is confirmed by the Respondent’s answer in an email dated January 15, 2012 in response to the Complainant’s letter of demand of January 12, 2012. The Respondent stated in the email that the Domain Name was for sale for (South African Rand) R6000 (approximately USD 722).
Despite being aware of the Complainant’s rights, the Respondent has not offered transfer of the Domain Name to the Complainant.
The registration could only have been primarily for selling the Domain Name to the Complainant for an amount exceeding out-of-pocket expenses directly related to the Domain Name, which would have been no more than R100 (South African Rand) or approximately USD 12. This alone constitutes bad faith, having regards to the Policy.
By its failure to respond, the Respondent is in default in terms of paragraphs 5(e) and 14 of the Rules and paragraph 8(c) of the Supplemental Rules, with the result that the Panel must now deal with the matter on the Complaint.
6. Discussion & Findings
A. Substantive Elements of the Policy
Paragraph 15(a) of the Rules requires that:
“A panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
(i) That the domain name registered by the respondent is identical or confusingly similar to a trademark or a service mark in which the complainant has rights.
(ii) That the respondent has no rights or legitimate interests in respect of the domain name.
(iii) That the domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances or acts which would, for the purposes of paragraph 4(a)(iii) above, be evidence of the registration of a domain name in bad faith. These are non-exclusive.
Similarly, paragraph 4(c) of the Policy sets out three illustrative circumstances which would demonstrate the respondent’s rights or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii).
B. Effect of Default
Notwithstanding the fact that a respondent may be in default, the complainant bears the burden of proof in respect of each of the three main elements in terms of paragraph 4(a) of the Policy referred to above. Such default does not, per se, entitle the complainant to a finding in its favor by reason thereof, as failure by the complainant to discharge the burden of proof will still result in the complaint being denied (M Corentin Benoit Thiercelin v. CyberDeal Inc., WIPO Case No. D2010-0941). It follows that such default does not, of itself, constitute an acceptance or an admission of any of the averments or contentions put forward, or of the supporting evidence put up (Standard Innovation Corporation v. Shopintimates USA, WIPO Case No. D2011-0049). The Panel is nevertheless not bound to accept all that has been put up by the Complainant but must evaluate it as it stands (Brooke Bollea, aka Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383; San Lameer (Pty) Ltd & Sanlam Ltd v. Atlantic Internet Services (Pty) Ltd, WIPO Case No. D2010-0551).
However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inference as it considers appropriate from the failure of a party to comply with the provisional requirement of the Rules (Allianz Compañia de Seguros y Reaseguros S A v. John Michael, WIPO Case No. D2009-0942).
In the present instance, the Panel finds that there are no exceptional circumstances for the failure of the Respondent to submit a response, particularly in the light of the fact that the Complainant wrote on several occasions to the Respondent, as did the Center when dealing with procedural matters and advising the Respondent of time limits, as against the Respondent’s failure entirely to respond to any such correspondence.
Following this, the Panel considers that it may accept that the Respondent does not deny the facts asserted and contentions made by the Complainant based on such facts (Reuters Ltd v. Global Net 2000 Inc., WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross-Simons Inc v. Domain.Contact, WIPO Case No. D2003-0994; Standard Innovation Corporation, supra; VKR Holding A/S c Above.com, Domain Privacy/Host Master, Transure Enterprise Ltd, WIPO Case No. D2012-0040).
Thus, in the view of the Panel, it may accept asserted facts that are not unreasonable, with the consequence that the Respondent will be subjected to inferences that flow naturally from the information provided by the Complainant (Reuters, supra; RX America LLC v. Matthew Smith, WIPO Case No. D2005-0540; Allianz, supra; Standard Innovation Corporation, supra; VKR Holdings A/S, supra; Groupe Auchan v. Anirban Mitra WIPO Case No. D2012-0412; Barclays Bank PLC v. Miami Investment Brokers Inc., WIPO Case No. D2012-1213).
C. Domain Name is Identical or Confusingly Similar
The Complainant put up an extensive list of its registered trade marks and the domain names which it owns in many countries. In addition, as appears from the factual background, the Complainant has set out details of the extent to which it carries on business in many countries in Africa. It is a financial services provider of the many and extensive services referred to in South Africa and elsewhere on a large scale.
On the basis of its evidence and contentions, the Panel considers that on the factual background relied upon by it, particularly as it is unchallenged by the Respondent, the Complainant has rights which fall within the provisions of Article 6 bis of the Paris Convention for the Protection of Industrial Property of March 20, 1893, as revised, and as confirmed and extended by Articles 6.2 and 6.3 of the GATT Agreement of Trade-Related Aspects of Intellectual Property Rights (commonly referred to as the "TRIPS Agreement"). These treaties enable the owner of a well-known trademark to seek protection not only in respect of products which might be marketed under an offending trademark in the same class, but outside that class as well (V&S Vin & Spirit v. Young Nah, WIPO Case No. D2004-0961; Groupe Auchan v. Anirban Mitra, WIPO Case No. D2012-0412).
In the present matter, the Complainant’s trademarks are in fact, in many instances, registered for several different classes. In particular, since the Complainant and the Respondent are based in South Africa, they may fall within the provisions of the South African Trade Marks Act of 1995 relative to well-known trade marks in this regard but it is unnecessary for the Panel to decide this.
The fact that the word mark has been incorporated entirely into the Domain Name is sufficient to establish that it is identical or confusingly similar to the Complainant’s registered mark (Quixtar Investments Inc v. Dennis Hoffmann, WIPO Case No. D2000-0253; Universal City Studios Inc v. David Burns & Adam-12 Dot Com, WIPO Case No. D2001-0784; Lilly ICOS LLC v. John Hopkin/NeoNet Ltd, WIPO Case No. D2005-0694; SOCIÉTÉ DES PRODUITS NESTLÉ SA v. Mustafa Yakin/Moniker Privacy Services, WIPO Case No. D2008-0016).
The addition of the specific top level domain “.info” is not an element of distinctiveness able to prevent confusing similarity of Domain Name with the Complainant’s trademark (Magnum Piering Inc v. The Mudjackers and Garwood S Wilson Sc, WIPO Case No. D2000-1525; Rollerblade Inc v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374; Qantas Airways Limited v. Minh Huynh, WIPO Case No. D2008-1382). In these circumstances the Panel has no difficulty in concluding that the Complainant has established the first element under paragraph 4(a)(i) of the Policy.
D. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the Respondent, shall demonstrate its rights to or legitimate interests in the Domain Name for the purposes of Paragraph 4(a)(ii) of the Policy, namely:
(i) before any notice to the Respondent of the dispute, the use by the Respondent of, or demonstrable preparations to use, the Domain Name; or
or a name corresponding to the Domain Name in connection with the bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business or other organization) has been commonly known by the Domain Name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert customers or to target the trademark or service mark at issue.
Although paragraph 4(a)(ii) requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the Domain Name, once the Complainant establishes a prima facie case that the Respondent has no rights or legitimate interests in the Domain Name, the burden of production of evidence on this factor shifts to the Respondent to rebut the showing, despite the overall burden of proof remaining upon the Complainant to prove each of the three elements of paragraph 4(a) of the Policy. (Document Technologies Inc v. International Electronic Communications Inc., WIPO Case No. D2000-0270; University City Studios Inc, supra).
Having defaulted, the Respondent has placed itself in a position that it has not produced any evidence to rebut such prima facie case as may have been established by the Complainant, and the enquiry must therefore focus upon what is said by the Complainant in order to determine whether or not it has been so established.
The Complainant contends that it is the sole proprietor of the trade mark NEDBANK and associated domain name in question and that the Respondent has not been given any permission to register or use any domain name incorporating the trade mark of the Complainant. It follows, therefore, that the Respondent has no right to the use of that mark as part of the Domain Name and that any unauthorized use for commercial purposes would violate the exclusive trade mark rights enjoyed by the Complainant. (Caesar’s World Inc & Park Place Entertain Corporation v. Japan Nippon, WIPO Case No. D2003-0615; AT&T Corp v. Roman Abreu d/b/a Smartalk Wireless, WIPO Case No. D2002-0605; America Online Inc v. Xianfeng Fu, WIPO Case No. D2000-1374; Sybase Inc v Analytical Systems, WIPO Case No. D2004-0360; San Lameer, supra).
Apart from there being no authorization on the part of the Complainant, there is no relationship or association between the Complainant and the Respondent, whether by license or otherwise, which also militates against the Respondent having rights or legitimate interests in or other entitlement which might fall within that purview (Sybase Inc, supra).
In view of the facts and circumstances put up on this ground and which are unchallenged, the Panel is of the view that the Complainant should therefore succeed on this ground as well.
The Panel is therefore satisfied that, in the circumstances, the Complainant has established the second element under paragraph 4(a)(ii) of the Policy.
E. Registration & Use in Bad Faith
Paragraph 4(b) of the Policy provides that for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:
"(i) circumstances indicating that the Respondent registered or the Respondent acquired the Domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the Respondent’s documented out of pocket costs directly related to the Domain Name; or
(ii) the Respondent registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding Domain Name, provided that the Respondent engaged in a pattern of such conduct; or
(iii) the Respondent registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the Respondent intentionally attempted to attract, for commercial again, Internet users to the Respondent’s website or other on-line 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 produce or service on the Respondent’s website or location."
The Complainant, in its Complaint, contends that there had been no use, and supports its contention by pointing out that the Respondent seeks considerably more than out-of-pocket expenses for the purchase by a Complainant of the Domain Name. This is itself evidence sufficient to justify a finding of bad faith under paragraph 4(b)(i) of the Policy.
The Panel agrees with this contention (Allianz Ag And Dresdner Bank Ag v. Comofer SL, WIPO Case No. D2001-1398; The South African Football Association (SAFTA) v. Fairfield Tours (Pty) Ltd, WIPO Case No. D2009-998).
The implication arising from the Domain Name, in the mind of a would-be customer, is therefore clearly that it is either of or in some way associated with the Complainant, which in turn, in the view of the Panel, leads to the inescapable conclusion that such potential customer is invited to do business with either the Complainant itself or someone authorized on its behalf in relation to its goods. That would, by application of paragraph 4(b)(iv) of the Policy, constitute bad faith. (Media 24 Limited v Llewellyn Du Randt, WIPO Case No. D2009-0699; San Lameer, supra).
The selection of a domain name that is the same as, or confusingly similar to, the Complainant’s is trade mark and the Complainant’s domain names, particularly in the absence of any explanation, leads to the conclusion, in the view of the Panel, that the Respondent must have known of the reputation of the Complainant in the market and therefore it selected the Domain Name in circumstances where it must have been was very well aware of the Complainant’s reputation and intended to benefit therefrom. (Deutsche Post AG v. MailMij LLC, WIPO Case No. D2003-0128; Barclays Bank PLC supra).
The Panel is therefore satisfied that the Complainant has established the third element under paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraph 4(a) of the Policy and paragraph 15 of the Rules, the Panel orders that the Domain Name <nedbank.info> be transferred to the Complainant.
Archibald Findlay SC
Dated: October 12, 2012