WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
NEDBANK LIMITED v. Kenneth Dlomo
Case No. D2018-2604
1. The Parties
Complainant is NEDBANK LIMITED of Johannesburg, South Africa, represented by Adams & Adams Attorneys, South Africa.
Respondent is Kenneth Dlomo of Durban, South Africa.
2. The Domain Name and Registrar
The disputed domain name <nedbank.global> (the “Domain Name”) is registered with Instra Corporation Pty Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 14, 2018. On November 14, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 15, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on November 21, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on November 23, 2018.
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 Respondent of the Complaint, and the proceedings commenced on November 26, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 16, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 17, 2018.
The Center appointed Robert A. Badgley as the sole panelist in this matter on January 4, 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
Complainant, founded in 1831, is one of the five largest banks in South Africa, and has operations in several other African countries. Complainant provides various banking and financial services to consumers and businesses, and it maintains a “Global Trade Services” operation.
Complainant holds numerous trademark registrations in many countries for the mark NEDBANK, including some in South Africa which go back for decades. Complainant also has an Internet presence, with its main website located at “www.nedbank.co.za”, as well as an active social media presence.
Annexed to the Complaint are numerous exhibits establishing the substantial profile of Complainant in South Africa, the vast extent of its banking and financial activities in South Africa and elsewhere, and the prominence of the NEDBANK mark in Complainant’s Internet and social media activities. For instance, Complainant had more than 32,000 employees and operated more than 4,000 ATMs across Africa as of 2016, Complainant has nearly 300,000 Facebook followers, and a Google search for “NEDBANK” yields nearly 5 million hits.
The Domain Name was registered on May 22, 2018. The Domain Name resolves to the home page of the Africa registry, which page bears the text “You will be redirected to Africa Registry in [x] seconds”. Once redirected, the user is invited to “Make Your African Connection”.
Complainant learned of the Domain Name’s registration in July 2018, whereupon it sent a letter to the Registrar on July 23, 2018, and again on August 14, 2018, asking that the Registrar inform Respondent of Complainant’s objection to his registration of the Domain Name. On August 15, 2018, the Registrar confirmed that it had conveyed Complainant’s objection to Respondent. There were several follow-up communications between Complainant and the Registrar, with the upshot being that, through mid-September 2018, Respondent had not made any response to Complainant, directly or through the Registrar.
In November 2018, Complainant found evidence through a search that Respondent is an employee of Standard Bank of South Africa, which, like Complainant, is among the five largest banks in South Africa.
5. Parties’ Contentions
Complainant asserts that it has established the three elements required under the Policy for a transfer of the Domain Name.
Respondent did not reply to Complainant’s contentions.
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 NEDBANK 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 NEDBANK trademark in any manner. Respondent has not come forward in this proceeding, or in the context of the discussions from July 2018 to September 2018 outlined above, to articulate or prove his rights or legitimate interests vis-à-vis the Domain Name. Given the strength of Complainant’s mark and the undisputed record in this case (including the undisputed allegation that Respondent works for a competing bank in South Africa), it is clear that Respondent lacks rights or legitimate interests in respect of the Domain Name.
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 NEDBANK mark in mind when registering the Domain Name. The mark has been in use for decades and is clearly well known in South Africa, where Respondent works at a bank in competition with Complainant. Moreover, Respondent has not denied, either in this proceeding or in the communications prior to this proceeding, knowledge of that well-known mark.
The Panel also finds bad faith use here. Although the Domain Name is redirected to the Africa Registry site and it is unclear why Respondent chose to put the Domain Name to such use, the Panel can conceive of no good faith basis for doing so. The suspicious nature of Respondent’s conduct is underscored by his silence in the face of Complainant’s objection and the undisputed allegation that Respondent is employed by a bank in competition with Complainant. These circumstances suffice for the Panel to draw the inference that Respondent is in bad faith under either Policy paragraph 4(b)(iii) or 4(b)(iv), quoted above.
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 <nedbank.global> be transferred to Complainant.
Robert A. Badgley
Date: January 5, 2019