WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Absa Group Limited v. Kabelo Molefi
Case No. D2018-2294
1. The Parties
Complainant is Absa Group Limited of Johannesburg, South Africa, represented by Moore Attorneys Incorporated, South Africa.
Respondent is Kabelo Molefi of Gaborone, Botswana, self-represented.
2. The Domain Name and Registrar
The disputed domain name <absa.app> (the “Domain Name”) is registered with 101domain, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 10, 2018. On October 10, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 15, 2018, the Registrar transmitted by email to the Center its verification response confirming that 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” 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 Respondent of the Complaint, and the proceedings commenced on October 23, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 12, 2018. The Center received informal communications from Respondent on October 25, 2018. The Response was filed with the Center on November 1, 2018.
The Center appointed Robert A. Badgley as the sole panelist in this matter on November 22, 2018. 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 is a financial services firm based in South Africa. Complainant asserts, plausibly and with some record support, that it is “one of South Africa’s biggest retail banks,” with 42,000 employees, 1,251 branch locations, and more than 1.7 million customers.
For approximately 30 years, Complainant has offered various banking and insurance services under the mark ABSA. Complainant holds numerous registered trademarks in South Africa for the ABSA mark, including ten such registrations dating back to 1991.
Complainant maintains an active Internet presence in aid of its business, with more than 400,000 Facebook followers and 48,000 Twitter followers. Since 1995, Complainant has owned the domain name <absa.co.za>, and uses that domain name and others for its website.
Complainant alleges, based on various awards it has received, various prior tribunal decisions concerning its ABSA mark, and evidence of its annual advertising expenditures, that the ABSA mark is well known.
The Domain Name was registered on May 3, 2018. It does not resolve to an active website.
On June 13, 2018, Complainant’s counsel sent a cease-and-desist letter to Respondent, asserting Complainant’s rights in the ABSA mark, alleging that Respondent’s registration of the Domain Name is an improper and actionable attempt to pass Respondent off as Complainant, and demanding that Respondent transfer the Domain Name. There was no response to this cease-and-desist letter.
On November 1, 2018, Respondent sent the following email to the Center in response to the Complaint:
“Thank you for the email, I can firstly assure you that there was no malicious intent on the acquisition of this domain on our behalf. There is no ABSA bank in Botswana were [sic] our business in based, and logically we thought ABSA operates under the .CO.ZA domain which is the South African region.
We require that you please explain what we could have been the issue for our business to have acquired this domain so we could all be in the same page and resolved this matter as soon as possible as we have products that we a launching under our company?
For the matter to be resolved quickly, do you require us to get legal representation?
A brief synopsis of what we do as Absolute Business Southern Africa.
I will take this opportunity to formally introduce myself and our business.
We are Absolute Business Southern Africa (ABSA) our core business is focused on the ICT space within the SADC region, our regional head office is located in Gaborone, Botswana. We are not a financial institution not are we Fintech business.
Our services in the SADC region are primarily focused on the following
1. Facilitating the collaboration of ICT SME’s/startups in the SADC region.
2. We also assist SME’s/startups on taking advantage of the opportunities in the SADC region by helping them navigate the oldest customs union in the world, Southern African Customs Union (SACU).
3. We also assist SME/startups to take advantage of startup competitions in the SADC region and globally such as (we have had some successes)
TIA ICT startup challenge in the USA.
Swisscom startup challenge.
Absolute Business Southern Africa’s digital business directory is the future flagship software solution with features that include hosting of business profiles, product and services, and collaboration opportunities by the startup/SME registered with us.
The ABSA digital business directory is due to launch in the second quarter of 2019 in Botswana, Zambia, Zimbabwe, and South Africa.
We are open to ideas on the possible resolution of the matter, we now do have some level of appreciation for your concern even though we are in two very different industries.”
5. Parties’ Contentions
Complainant asserts that it has established the three elements required under the Policy for a transfer of the Domain Name.
The entirety of Respondent’s arguments is set forth above.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which 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 Complainant has rights; and
(ii) 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 Complainant has rights in the marks ABSA through registration and use. The Panel also finds the Domain Name to be identical to the mark.
Complainant has established Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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.
The Panel concludes that Respondent has no rights or legitimate interests in respect of the Domain Name. It is undisputed that Complainant never granted permission to Respondent to use its ABSA trademarks in any manner. Respondent is not commonly known by the Domain Name, since Respondent has not developed a website to date. Respondent does not assert that he is making a noncommercial or fair use of the Domain Name.
As respects the above-quoted Policy paragraph 4(c)(i), Respondent has provided no evidence that it has made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services. Bare assertions such as those contained in Respondent’s Response email, unaccompanied by any corroborating evidence, do not count for much. This is particularly true where, as here, Respondent had received a cease-and-desist letter from Complainant back in June 2018, and made no response to it. In the Panel’s experience, a legitimate business, whether fledgling or established, would have responded to the cease-and-desist letter to explain why it is not in violation of the other party’s asserted rights. Moreover, in the face of a cease-and-desist letter, an innocent party who had never heard of the other party or its trademarks would normally be expected to say so.
In sum, the Panel cannot credit Respondent’s unsubstantiated assertions articulated for the first time after this proceeding was initiated, when Respondent passed on the opportunity to explain its purportedly legitimate purposes when first confronted by Complainant.
Complainant has established Policy paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in bad faith:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has registered and used the Domain Name in bad faith.
The Panel first finds it more likely than not that Respondent had Complainant’s ABSA mark in mind when registering the Domain Name. Respondent did not deny knowledge of the mark when Complainant sent the June, 2018 cease-and-desist letter, and Respondent did not deny knowledge of the mark in response to the Complaint in this proceeding.
Further, there is sufficient evidence in the record that the mark ABSA is well known, at least in South Africa. Respondent is located in Gaborone, Botswana, a city less than ten miles from the border of South Africa. By Respondent’s own account, its purported business name is Absolute Business Southern Africa, and his “digital business directory” was set to launch in 2019 in Botswana, Zambia, Zimbabwe, and South Africa. Under these circumstances, it is reasonable to conclude that Respondent was aware of the ABSA mark when registering the Domain Name.
The Panel also finds bad faith use here. Although the Domain Name does not yet resolve to an active website, Respondent has stated his plan to reach into the South African market via the aforementioned directory, and to assist small business startups in the SADC region and globally. Once Respondent puts the Domain Name to use in furtherance of these ends, it will be in violation of the above-quoted Policy paragraph 4(b)(iv), as it will be seeking to attract Internet users, for commercial gain, by creating confusion between Complainant’s well-known ABSA mark and Respondent’s commercial activities.
Respondent asserts that his area of commerce is different from that served by Complainant. This may be true, but only to a point. It is conceivable that some small or startup businesses seeking services like those offered by Respondent might assume, mistakenly, that Complainant had expanded its small business banking platform to include additional, non-financial, services to small and startup firms, or that Complainant had partnered with Respondent to provide such services.
The Panel repeats, for emphasis, its earlier statement that Respondent’s failure to respond to the June, 2018 cease-and-desist letter seriously undermined his credibility in this proceeding. On this record, the Panel finds bad faith registration and use of the Domain Name under paragraph 4(b)(iv) of the Policy.
Complainant has established Policy paragraph 4(a)(iii).
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 <absa.app> be transferred to Complainant.
Robert A. Badgley
Date: November 25, 2018