WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ABSA Group Limited v. Domain Name Privacy Protection / Alejandro Angel Bleuzet, Grupo ABSA SA
Case No. D2019-0291
1. The Parties
The Complainant is ABSA Group Limited of Gauteng, Republic of South Africa, represented by Moore Attorneys Incorporated, South Africa.
The Respondent is Domain Name Privacy Protection of Santa Fe, Argentina / Alejandro Angel Bleuzet, Grupo ABSA S.A. of Ciudad de Buenos Aires, Argentina, represented by Richelet & Richelet, Argentina.
2. The Domain Name and Registrar
The disputed domain name <absainsurance.com> is registered with Dattatec.com SRL (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on February 7, 2019. On February 7, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 20, 2019, 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 February 21, 2019 providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant did not file an amended Complaint.
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 the Respondent of the Complaint, and the proceedings commenced on February 27, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 19, 2019. The Response was filed with the Center on March 18, 2019. In addition, Domain Name Privacy Protection filed a Response on March 22, 2019.
The Center appointed Luca Barbero as the sole panelist in this matter on March 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.
The Decision due date was extended to April 18, 2019.
4. Factual Background
The Complainant is a South African company which was founded in 1991 and is one of the African major financial service providers, offering under the trademark ABSA personal and business banking, credit cards, corporate and investment banking, wealth and investment management as well as insurance services.
The Complainant has over 31.000 employees throughout South Africa and operates about 700 branches of its banks as well as almost 9000 automated teller machines (ATMs). The Complainant’s marketing expenditure in respect of its ABSA trademarks amounted to 1.79 billion ZAR in 2017. The Complainant’s stock is publicly traded on the Johannesburg Stock Exchange.
The Complainant is present on various social media platforms, with over 400.000 likes and 420.000 followers to its Facebook page, 100.000 followers to its official Twitter account and over 130.000 followers to the LinkedIn profile and is the owner of several trademark registrations for ABSA in South Africa, including the following:
1991/01263 in class 35; 1991/01264 in class 36; 1991/07473 in class 36; 1991/10303 in class 9; 1991/10304 in class 16; 1991/10305 in class 36; 1991/10306 in class 39; 1991/10307 in class 41; 1991/10308 in class 42; 1991/00430 in class 36.
The Complainant also owns trademark registrations for ABSA in various additional jurisdictions, including Angola, Botswana, China, Egypt, Ethiopia, Ghana, India, Kenya, Mauritius, United Kingdom and Seychelles.
The Complainant operates a website at the domain name <absa.co.za>, which was registered on December 31, 1994, and is also the owner of the domain names <absa.mobi>, registered on September 27, 2006, and <absainsurance.co.za>, registered on May 24, 2008.
The disputed domain name <absainsurance.com> was registered on July 6, 2016 and does not resolve to an active website.
5. Parties’ Contentions
The Complainant states that, in light of its extensive trading activities for more than three decades under the trademark ABSA, it has acquired substantial reputation and goodwill in its trademark in relation to financial services within the banking industry and is one of the largest banks in South Africa and Africa. Therefore, it contends that the trademark ABSA represents the valuable and goodwill vested exclusively to the Complainant and its services.
The Complainant states that the disputed domain name amounts to an abusive registration in the hands of the Respondent, which registered it to confuse members of the public into believing that the disputed domain name is that of the Complainant.
The Complainant also indicates that the disputed domain name is confusingly similar to its trademark ABSA since it reproduces the trademark in its entirety with the addition of the descriptive term “insurance”, which increases the likelihood of confusion as the Complainant offers insurance products and services to its customers.
The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name because:
i) the Complainant became aware of the disputed domain name in November 2018 and, at that time, the disputed domain name diverted to a blank page. It thus sent a cease and desist letter to the Respondent, without receiving any reply;
ii) the Respondent has not been granted consent or permission to register the disputed domain name by the Complainant and there is no business relationship between the Complainant and the Respondent;
iii) the Respondent’s registration and use of the disputed domain name does not amount to a bona fide offering of goods or services, since its existence is likely to take unfair advantage of, and be detrimental to, the distinctive character and reputation of the Complainant’s acquired goodwill and reputation;
The Complainant asserts that the Respondent registered and used the disputed domain name in bad faith because:
i) the disputed domain name was registered in order to prevent the Complainant from reflecting its trademark in a corresponding domain name and the Respondent’s registration of the disputed domain name will lead to confusion, as people may believe that the disputed domain name is that of the Complainant, when it is not;
ii) the Respondent has not replied to the Complainant’s cease and desist letter, thereby failing to provide an explanation for the registration of the disputed domain name;
iii) the Respondent is not using the disputed domain name, as it is pointing it to a blank page which can be regarded as “passive holding”.
The Respondent states that it has a legitimate interest in the disputed domain name since it holds legitimate rights to its ABSA trade name and trademark. It also highlights that the Complainant has not provided evidence of ownership of trademark registrations or applications in Argentina, where the Respondent is located, and that the Complainant has no operations in Argentina neither in the financial business or in the insurance field.
The Respondent informs the Panel that it started its business under the company name Alejandro Bleuzet S.A. in 1994 and that its company name was changed into Grupo ABSA S.A. in 2000.
The Respondent submits that the “absa” portion of its trade name derives from the first initials of the main shareholder name in combination with the initials of “Sociedad Anonima”, which is the Spanish for “incorporation”. The Respondent points out that it is one of the most prestigious and recognized insurance broker in Argentina, working with the best known and reliable insurance companies in the market, such as Zurich, Allianz and QBE, from which it was also granted several awards for the quality of its services.
The Respondent further asserts that it is recorded within the Insurance Superintendence and the local Internal Revenue Service (IRS) (Administration Federal de Ingresos Publicos or AFIP) in Argentina.
The Respondent also states that it is the owner of several trademark registrations in Argentina and submits as attachment to the Complaint the registration certificate for the trademark No. 2.283.246 for GRUPOABSA (combined mark), filed on April 22, 2008 and registered on April 23, 2009, in the name of the Respondent’s founder Alejandro Angel Bleuzet, in class 36. The Respondent underlines that, although the trademark was applied in 2008, as of its initial existing days back in 1994, the Respondent has been commercially operating under the trade name Grupo Absa.
The Respondent operates its main website at the domain name <grupoabsa.com.ar>, registered on December 2, 2000, and registered also additional domain names incorporating the element “absa”, including <absanet.com>, registered on July 8, 2010, <absanet.net>, registered on April 12, 2016, <absaseguros.com>, registered on July 5, 2016, and the disputed domain name.
The Respondent’s domain name <absanet.net> is used to host the Respondent’s web platform ABSANET, created and developed by the Respondent to enable a better administration of the client portfolio and benefit from special commercial opportunities. Such platform, managed since 2015 by the Respondent’s sister company Absanet S.A., won the talent award granted by the Government of the City of Buenos Aires, which is a program for medium sized companies located in the city aimed at the growth and internationalization of the companies.
The Respondent explains that it registered <absaseguros.com> (combining the element “absa” with the descriptive term “seguros”, meaning “insurance” in Spanish) and the disputed domain name since it intends to use them for operations in South American countries, United States of America and United Kingdom. In particular, the domain name <absaseguros.com> would be used to promote its Latin American business while the disputed domain name would be used for English and non-Spanish speaking jurisdictions (such as United States of America, United Kingdom and Brazil).
The Respondent’s business under the trade name Grupo ABSA has been promoted through social media channels, general and specialized press. The Respondent was also ranked 14th in the 2018 edition of the Estratega’s ranking of national brokers. The Respondent further states that, by the time of its initial incorporation or its name change, the Respondent ignored the existence of the Complainant and its activities, which are limited to the Respondent’s country of origin and neighbouring African nations.
The Respondent denies that it registered the disputed domain name in bad faith, stating that:
i) it did not need the Complainant’s permission to register the disputed domain name, as the Respondent owns its own ABSA trademark and trade name, which were in use for many years in Argentina before the registration of the disputed domain name;
ii) the Complainant has no goodwill or reputation worldwide especially with regard to insurance services;
iii) the Respondent’s registration does not amount to passing off or unlawful competition;
iv) the Respondent did not register the disputed domain name with the purpose of selling it, disrupting the Complainant’s activities or within the frame of a pattern of bad faith registrations;
v) the Respondent registered the disputed domain name through a privacy service since it was an option provided by the concerned Registrar;
vi) the disputed domain name is currently not pointed to an active website but it will be used as soon as the Respondent’s activities will be permitted in the United Kingdom and United States of America.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these 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 disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Preliminary procedural issues
i) Language of the proceeding
Pursuant to paragraph 11(a) of the Rules, “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.
In the case at hand, the language of the Registration Agreement of the disputed domain name is Spanish. The Complaint was filed in English. Upon completing the Registrar’s verifications, the Center sent an email communication to the parties about the language of the proceeding requesting them to comment on the issue.
The Complainant submitted a request for English to be the language of the proceeding stating that the incorporation of the English word “insurance” in the disputed domain name demonstrates that the Respondent can understand and communicate in English language.
The Respondent did not comment on the language issue but, upon receipt of the Center’s Written Notice notifying the filing of the Complaint and subsequent correspondence with the Center, filed its Response in English, submitting however some documents in Spanish as Annexes to the Response.
In view of the circumstances of the case, the Panel finds procedurally efficient and equitable to the parties to admit in this proceeding all the documents submitted by the Complainant and the Respondent, including the attachments in Spanish, which this Panel was able to review being familiar with such language. However, since both the Complaint and the Response were filed in English, the Panel understands that the parties are both able to understand and communicate in English and thus deems appropriate to render the Decision in such language.
ii) Identity of the Respondent
The Complaint was filed against the privacy service “Domain Name Privacy Protection”, which was indicated as registrant in the public WhoIs records of the disputed domain name at the time of the filing of the Complaint and is still listed as registrant in the online Registrar’s database at the time of the drafting of the present Decision.
According to the Center’s Registrar Verification, the underlying registrant of the disputed domain name is Alejandro Angel Bleuzet, Grupo ABSA SA.
Notwithstanding the Center’s notice informing of the identity of the actual underlying registrant of the disputed domain name, the Complainant elected not to amend the Complaint accordingly.
Although the Panel deems appropriate to formally maintain also the privacy service as one of the Respondents since it is still mentioned as registrant in the public WhoIs records, in light of the registrant information disclosed by the concerned Registrar and of the content of the Response filed by Registrardisclosed entity, the Panel finds that Alejandro Angel Bleuzet, Grupo ABSA S.A. is the actual holder of the disputed domain name for the purpose of this proceeding and, therefore, will conduct its assessment of the substantive requirements prescribed by the Policy with respect to such entity.
In view of the above, references made, in Sections 6 B, C and D, to “the Respondent” shall be read as referred to Alejandro Angel Bleuzet, Grupo ABSA S.A..
B. Identical or Confusingly Similar
The Panel finds that the Complainant has established rights in the trademark ABSA based on the several trademark registrations in South Africa and other countries cited in Section 4 above.
The disputed domain name incorporates the trademark ABSA in its entirety with the addition of the descriptive term “insurance” and the generic Top-Level Domain (“gTLD”) suffix “.com”, which the Panel finds insufficient to exclude the confusing similarity.
As found in a number of prior cases decided under the Policy, where a trademark is recognizable within a domain name, the addition of generic or descriptive terms does not prevent a finding of confusing similarity under the first element. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Therefore, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to a trademark in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
The Complainant is required to make a prima facie case that the Respondent lacks rights or legitimate interests and, once such prima facie case is made, the burden of production shifts to the Respondent to submit appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See, Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004‑0110; Banco Itau S.A. v. Laercio Teixeira, WIPO Case No. D2007-0912; Wal-Mart Stores, Inc. v. WalMart Careers, Inc., WIPO Case No. D2012‑0285.
In the case at hand, there is no relationship between the parties and the Complainant did not grant the Respondent any authorization to use its trademark ABSA and/or to register and use the disputed domain name.
The Complainant states that the Respondent does not have rights or legitimate interests in the disputed domain name because the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services and its registration is likely to take unfair advantage of, and be detrimental to, the distinctive character and reputation of the Complainant’s acquired goodwill and reputation.
However, the Panel finds that, based on the evidence on record, the Complainant has demonstrated that its use and the knowledge of its trademark ABSA appears to be limited to South Africa and other African countries, and that the Complainant does not own any trademark rights in Argentina, where the Respondent is based.
The Panel notes, as detailed in Section 6 B above and highlighted by the documents submitted as attachment to the Response, that the Respondent has been operating under the company name Grupo Absa S.A. in Argentina as of 2000. Furthermore, the Respondent has proven that its founder is the owner of a trademark registration for GRUPOABSA in Argentina for insurance services since 2008 and that the Respondent’s services are promoted also online through several domain names encompassing the element “absa”.
In view of the above and notwithstanding the current lack of use of the disputed domain name by the Respondent in connection with an actual offer of goods or services, the Panel finds that the Respondent has demonstrated for the purpose of this proceeding that it has a legitimate interest in the disputed domain name, as the disputed domain name incorporates the dominant portion of the Respondent’s trade name and trademark GRUPOABSA (as “grupo” may be regarded as a mere generic term, meaning “group” in Spanish) and combines the Respondent’s trademark with the word “insurance”, which is descriptive of the services rendered by the Respondent. Moreover, the explanation provided by the Respondent that it registered the disputed domain name to extend its insurance services to English speaking countries, when such services will be authorized by the competent authorities in the concerned countries, is certainly plausible.
The Panel notes that possible trademark disputes may arise should the Respondent start providing its services under the trademark ABSA in jurisdictions where the Complainant has already been granted trademark registrations and/or operates. However, this is not the appropriate venue to examine such issues.
In view of the above, the Panel finds that the Complaint fails under paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Although the analysis of this requirement would not be necessary in light of the finding under Section 6.C, the Panel deems appropriate to underline that also the Respondent’s registration and use of the disputed domain name do not amount to bad faith in the present case.
Indeed, based on the documents on records, the Panel is satisfied that, on balance of probabilities, the Respondent, which is based in Argentina and provides its insurance services under the company name Grupo Absa S.A. since 2000, did not register the disputed domain name with the Complainant’s trademark in mind and/or to trade off its goodwill but, most likely, with the genuine intention to promote its own business in the insurance sector without the specific intent to interfere with the Complainant’s business, which is mostly focused on the provision of banking and financial services in South African countries.
In view of the above, the Panel finds that also the current inactive use of the disputed domain name does not amount to bad faith.
For the foregoing reasons, the Complaint is denied.
Date: April 18, 2019