WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Absa Group Limited (previously ABSA Bank Limited) v. Registration Private / Abhi Raj
Case No. D2018-2767
1. The Parties
The Complainant is Absa Group Limited (previously ABSA Bank Limited) of Johannesburg, South Africa, represented by Moore Attorneys Incorporated, South Africa.
The Respondent is Registration Private of Scottsdale, Arizona, United States of America (“United States”) / Abhi Raj of Patna, India.
2. The Domain Name and Registrar
The disputed domain name <absashop.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2018. On December 5, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 5, 2018, the Registrar 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 December 10, 2018 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 December 12, 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 the Respondent of the Complaint, and the proceedings commenced on December 28, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 17, 2019. The Respondent submitted an informal email communication on January 3, 2019 but did not submit a formal response. Accordingly, the Center notified the Parties on January 18, 2019 that it would proceed to panel appointment.
The Center appointed Kaya Köklü as the sole panelist in this matter on January 25, 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 company providing inter alia financial and insurance services in South Africa. The Complainant was founded in 1991 and is one of the largest retail banks in South Africa with more than 40,000 employees and several million customers.
The Complainant owns various trademark registrations for its ABSA mark including South African word mark registration 1991/07473 filed on April 6, 1995 and registered on August 3, 1995.
The Complainant also owns and operates various domain names, which incorporate its trademark ABSA, such as <absabank.co.za> and <absagroup.com>.
The Respondent is apparently an individual from India.
The disputed domain name was registered on May 29, 2018.
The disputed domain name resolves to a website in English, where the Respondent operates an immature website with predominantly non-working links to alleged services in all kind of business areas, such as finance, health care, battery production, network solutions, education, schools, e-commerce, etc.
The Respondent did not reply to a letter of the Complainant’s attorneys from October 5, 2018, asking for a voluntary transfer of the disputed domain name.
5. Parties’ Contentions
The Complainant requests the transfer of the disputed domain name.
The Complainant is of the opinion that the disputed domain name is confusingly similar to its ABSA trademark.
Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It is rather argued that the disputed domain name falsely suggests that there is some official or authorized link with the Complainant.
Finally, it is argued that the Respondent has registered and is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
In its informal email communications of January 3, 2019, the Respondent merely indicated that it has difficulties to understand and communicate in English language.
6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complaint’s contentions. Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.
However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. See, section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Yet, it is noted that an independent search by visiting the Internet site linked to the disputed domain name has been performed by the Panel. The competence of the Panel to perform such independent search is undisputed and in line with previous UDRP decisions, e.g., Hesco Bastion Limited v. The Trading Force Limited, WIPO Case No. D2002-1038.
Further, it is stated that the Panel has taken note of the WIPO Overview 3.0 and, where appropriate, will decide consistent with the consensus views captured therein.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has registered trademark rights in the mark ABSA by virtue of various trademark registrations in South Africa (cf. Annex 5 to the Complaint).
The Panel further finds that the disputed domain name is confusingly similar to the Complainant’s registered ABSA trademark, as it fully incorporates the Complainant’s trademark. As stated at section 1.8 of the WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the additions of other terms would generally not prevent a finding of confusing similarity. The mere addition of the dictionary term “shop” does not, in view of the Panel, serve to prevent a finding of confusing similarity between the disputed domain name and the Complainant’s ABSA trademark.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel further finds that the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name.
While the burden of proof on this element remains with the complainant, previous UDRP panels have recognized that this would result in the often impossible task of proving a negative, in particular as the evidence in this regard is often primarily within the knowledge of the respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the burden of production of relevant evidence shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name in order to meet the requirements of paragraph 4(a)(ii) of the Policy. See, Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
The Panel finds that the Complainant has satisfied this requirement, while the Respondent has failed to file any relevant evidence to demonstrate rights or legitimate interests in the disputed domain name according to the Policy, paragraphs 4(a)(ii) and 4(c).
In its Complaint, the Complainant has provided uncontested prima facie evidence that the Respondent has no rights or legitimate interests to use the Complainant’s trademark ABSA in a confusingly similar way within the disputed domain name.
In the absence of a formal Response, there is no indication in the current record that the Respondent is commonly known by the disputed domain name. Furthermore, the Respondent has failed to demonstrate any of the other non-exhaustive circumstances evidencing rights or legitimate interests under the Policy, paragraph 4(c) or other evidence of rights or legitimate interests in the disputed domain name. The immature website linked to the disputed domain name with its non-working links to a large number of alleged services and offers does rather indicate that this is a website to mislead Internet users.
As a conclusion, the Panel finds that the Complainant has also satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel is further convinced that the Respondent has registered and is using the disputed domain name in bad faith.
The Panel is of the opinion that the Respondent had the Complainant’s ABSA trademark in mind when registering the disputed domain name. The website linked to the disputed domain name explicitly provides a (non-working) link to an “ABSA Bank”, as can be seen below from a screenshot taken and marked by the Panel:
It would be hard to believe that this happened without knowledge of the Complainant’s ABSA trademark.
In view of the Panel, the Respondent apparently tries to attract, for commercial or other illegitimate gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s ABSA trademark as to the source, sponsorship, affiliation or endorsement of its website. The Panel rather believes that the Respondent has intentionally embedded the use of the Complainant’s ABSA trademark into numerous (apparently fictional) fields of services in order to conceal potentially ill intentions. The Panel notes in this regard that hardly any of the indicated links is working at the time its decision.
Furthermore, the Panel finds that the Respondent’s failure to properly respond to the Complainant’s letter prior to these proceedings as well as to the contentions also supports the conclusion that it has registered and is using the disputed domain name in bad faith. The Panel believes that, if the Respondent did in fact have legitimate purposes in registering and using the disputed domain name, it would have probably responded. The Respondent’s allegation not being able to read and understand the English language is another indication for his bad faith and assessed by the Panel as a self-serving assertion only, particularly as the website linked to the disputed domain name is fully designed and operated in English.
All in all, the Panel believes that the indications within the case file suggest that the disputed domain name was registered and is used in bad faith and that the Complainant has also satisfied the third element of the Policy, namely, 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 disputed domain name <absashop.com> be transferred to the Complainant.
Date: February 6, 2019