WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Absa Group Limited v. Johnson Clarke, Absa International
Case No. D2018-2664
1. The Parties
The Complainant is Absa Group Limited of Johannesburg, South Africa, represented by Moore Attorneys Incorporated, South Africa.
The Respondent is Johnson Clarke, Absa International of Umuebulu, Nigeria.
2. The Domain Name and Registrar
The disputed domain name <absa-bank.com> (the “Domain Name”) is registered with OwnRegistrar, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 21, 2018. On November 21, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 27, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On December 10, 2018, the Complainant filed an amendment to the Complaint.
The Center verified that the Complaint together with the amendment to 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 the Respondent of the Complaint, and the proceedings commenced on December 11, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 31, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 2, 2019.
The Center appointed Mathias Lilleengen as the sole panelist in this matter on January 9, 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
The Complainant is a well-known company known for more than three decades under its ABSA trademarks. Through its extensive trading activities, the Complainant has acquired a reputation and goodwill, in relation to financial services within the banking industry. It is one of the biggest banks in Africa. The Complainant is listed on the Johannesburg Stock Exchange.
The Complainant has registered trademarks for ABSA in South Africa in different classes, such as trademark registration No. 1991/01263 (registered on January 5, 1994), No. 1991/01264 (registered on December 30, 1993) and No. 1991/07437 (registered on March 3, 1994). The trademarks have been recognized in numerous decisions under the South African Institute of Intellectual Property Law (“SAIIPL”) and UDRP.
The Complainant is present on various social media platforms.
According to the Registrar, the Domain Name registration was created on May 12, 2018. At the time of filing the Complaint, and at the time of drafting the Decision, the Domain Name resolved to an error page.
5. Parties’ Contentions
The Complainant provides evidence of trademark registrations. The Complainant argues that the Domain Name replicates the Complainant’s registered trademarks under which the Complainant provides banking services. The dominant and distinctive portion of the Domain Name is ABSA the Complainant submits that confusing similarity is further exacerbated by the addition of “bank” as the Complainant offers banking services to its clients.
The Complainant argues that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant asserts that the Respondent is not affiliated with the Complainant, nor is the Respondent an authorized distributor or reseller of the Complainant’s products. The Respondent has not been granted any license to use the Complainant’s trademarks. There is no evidence of the Respondent’s use of the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services. The Complainant finds it implausible that the Respondent registered the Domain Name without knowledge of the Complainant's business activities. The Complainant asserts that the Respondent intention is to take unfair advantage of and be detrimental to the distinctive character and reputation of the Complainant's acquired goodwill and reputation.
The Complainant documents that the Respondent has listed false contact information with the Registrar. In the Complainant’s view, the Domain Name was registered in order to prevent the Complainant from acquiring it. The Complainant registered the domain name <absa-bank.co.za> in South Africa on July 20, 2000, eighteen (18) years before the Respondent registered the Domain Name. Further, the registration by the Respondent of the Domain Name will lead to confusion in that people may believe that the Domain Name belongs to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has established that it has rights in the trademark ABSA. The test for confusing similarity involves the comparison between the trademark and the Domain Name. In this case, the Domain Name incorporates the Complainant’s trademark. The hyphen and the word “bank” does not avoid a finding of confusing similarity. For the purpose of assessing confusing similarity, it is permissible for the Panel to ignore the gTLD “.com”, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.
The Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has made unrebutted assertions that it has not granted any authorization to the Respondent to register the Domain Name containing the Complainant’s trademarks or otherwise make use of its marks. Based on the evidence, the Respondent is not affiliated or related to the Complainant. There is no evidence that the Respondent has registered the Domain Name as a trademark or acquired unregistered rights. There is no evidence of the Respondent’s use or 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.
The Panel finds that the Complainant has made out an unrebutted prima facie case. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Domain Name incorporates the trademark ABSA. It seems more likely than not that the Respondent knew of the Complainant and its business when it registered the Domain Name. The incorporation of the Complainant’s trademark with the descriptive term “bank” and the Respondent’s absence of rights or legitimate interests, indicate bad faith. As a consequence of the Respondent’s registration, the Complainant is deprived of the use of the Domain Name.
The Respondent’s non-use of the Domain Name does not prevent a finding of bad faith, see WIPO Overview 3.0 section 3.3. The Complainant’s trademark has a degree of distinctiveness and it is well known. The Respondent has listed false contact details. The Respondent has not provided any evidence of good faith use. Taking into account the Complainant’s trademark and the other circumstances of this case, the Panel finds it implausible that there could be any good faith use to which the Domain Name may be put.
For the reasons set out above, the Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning of paragraph 4(a)(iii) of the Policy.
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-bank.com> be transferred to the Complainant.
Date: January 11, 2019