WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Capitec Bank Limited v. Rakesh Gajjar
Case No. D2019-0609
1. The Parties
The Complainant is Capitec Bank Limited of Stellenbosch, South Africa, represented by Werksmans Attorneys, South Africa.
The Respondent is Rakesh Gajjar of Nashik, India.
2. The Domain Name and Registrar
The disputed domain name <capitec.app> 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 March 20, 2019. On March 20, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 21, 2019, 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.
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 March 28, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 17, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 18, 2019.
The Center appointed Antony Gold as the sole panelist in this matter on May 1, 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 bank, established in South Africa in March 2001, which provides banking, financial services and related goods and services. As at February 2018, it had 9.9 million active clients and employed over 13,333 employees. It has received a number of awards relating to the quality of its services.
The Complainant’s primary trading style is CAPITEC. Its first trade mark applications for CAPITEC were filed in South Africa on August 11, 2000. The Complainant now owns numerous trade marks for CAPITEC including, by way of example only;
- South African trade mark no. 2000/15984 for CAPITEC in class 9, registered on August 11, 2000;
- Indian trade mark no. 1943916 for CAPITEC and device in class 36, registered on March 31, 2010.
In addition, the Complainant owns many trade marks which incorporate CAPITEC, including CAPITEC ONE WORLD (and device) and CAPITEC BANKING MADE EASY. Furthermore, it has registered over 40 domain names which incorporate its CAPITEC trade mark. The domain name which resolves to its principal website, <capitecbank.co.za>, was registered on August 21, 2000. The Complainant also registered the domain name <capitec.com> on April 8, 1999 (Annex 7 of the Complaint).
The Complainant has developed various software applications, including a Remote Banking App, which provide its clients with online banking and related services.
The disputed domain name was first registered on May 8, 2018, by an unconnected third party, and transferred to the Respondent on October 7, 2018. It does not resolve to a website. The Complainant’s representatives sent a cease and desist letter to the Respondent on January 29, 2019, requesting the transfer of the disputed domain name to the Complainant but did not receive a reply.
5. Parties’ Contentions
The Complainant says that the disputed domain name is identical or similar to a trade mark or service mark in which it has rights. The generic Top-Level Domain (“gTLD”) suffix, “.app” is disregarded when making the comparison between the disputed domain name and the Complainant’s mark. The remaining element of the disputed domain name, “capitec”, is identical to the Complainant’s CAPITEC trade mark.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The fact that the trade mark CAPITEC is an invented word with no dictionary meaning makes it unlikely that the Respondent will have chosen this word unless seeking to create an impression of an association with the Complainant. The Respondent’s name bears no resemblance to the disputed domain name.
The passive holding of a domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use: FXCM Global Services LLC v. WhoisGuard Protected, Whoisguard Inc. / Jenny Sohia, WIPO Case No. D2018-1111. In the absence of any licensce or permission from the Complainant to use such a widely-known and well-known trade mark, no actual or contemplated bona fide or legitimate use of the disputed domain name can reasonably be found. If the Respondent were to use the disputed domain name, he would take unfair advantage of the Complainant’s rights in its trade mark and misleadingly divert Internet users to his website. This would be neither a legitimate nor a fair use of the disputed domain name; see FIL Limited v. Fidelity Inc, WIPO Case No. D2013-1921. Furthermore, the Respondent’s passive holding of the disputed domain name prevents the Complainant from legitimately registering and using it.
Lastly, the Complainant says that the disputed domain name was registered and used in bad faith. The Complainant believes it has located two possible individuals in India, who might be the Respondent, both of whom have a connection in corporate and information technology environments. As the Complainant’s CAPITEC mark is well-known and has been associated with the Complainant’s business for at least 18 years, it is likely that the Respondent was aware of the Complainant’s rights as at the date of registration. The fact that the Complainant produces banking apps for its customers and that a search on Google for “capitec app” produces results which (on the first page, at least) all reference the Complainant, provides further support for this assertion. Accordingly the Respondent’s registration of the disputed domain name is in bad faith; see Advance Magazine Publishers Inc. and Les Publications CondéNast S.A. v. ChinaVogue.com, WIPO Case No. D2005-0615.
The Respondent’s passive holding of the disputed domain name prevents the Complainant from owning the disputed domain name in order to create a centralized point for users of its online banking and related services apps. In Skyscanner Limited v. Egor Kargapolov, WIPO Case No. D2018-0692, the panel found that the passive holding of a domain name which cannot be used legitimately by anyone other than the trade mark holder is registration and use in bad faith. See also Petroleo Brasileiro S.A - Petrobras v. Banty Group/ Bestia Ghenda, WIPO Case No. D2014-1069; the passive holding of a domain name that coincides with a known, well-known or renowned trade mark owned by someone else indicates bad faith in the sense of paragraph 4(b) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Dealing, first, with the Respondent’s failure to file a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.
Paragraph 4(a) of the Policy provides that the Complainant shall prove each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(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.
A. Identical or Confusingly Similar
The Complainant has produced evidence of its trade mark registrations for CAPITEC, including the marks in respect of which full details are set out above.
As the Complainant has asserted, in considering whether a domain name is identical or confusingly similar to a complainant’s trade marks, it is established practice to disregard the applicable gTLD suffix, that is “.app” in the case of the disputed domain name, because it is a technical requirement of registration. The remaining element of the disputed domain name, “capitec”, is identical to the Complainant’s CAPITEC trade marks. The Panel accordingly finds that the disputed domain name is identical to a trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Policy sets out at paragraph 4(c) examples of circumstances, without limitation, by which a respondent may demonstrate rights or legitimate interests in a disputed domain name. In summary, these are if a respondent has used or prepared to use the domain name in connection with a bona fide offering of goods and services, if a respondent has been commonly known by the domain name, or if a respondent has made a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark in issue.
How these provisions are usually applied in practice is explained in section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). This explains that the consensus view of panelists is that “[w]hile the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ʻproving a negativeʼ, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
On the basis of the evidence before the Panel, none of the grounds set out at paragraph 4(c) of the Policy are applicable. First, as the disputed domain name does not resolve to an active website, it is evidently not being used in connection with a bona fide offering of goods and services, nor is there any evidence that the Respondent has made demonstrable preparations to do so. Second, there is no evidence that the Respondent has been commonly known by the disputed domain name. Third, as the disputed domain name does not resolve to an active website, the Respondent cannot be said to be making a legitimate, noncommercial or fair use of it. Moreover, the disputed domain name (identical to the Complainant’s trade mark) carries a high risk of implied affiliation; see section 2.5.1 of the WIPO Overview 3.0.
The Complainant has made out a prima facie case under this element of the Policy and the burden of production shifts to the Respondent. As the Respondent has failed to provide any form of response to the Complaint he has, self-evidently, not discharged it. The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out circumstances which, without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. These include (i) circumstances indicating that the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant or to a competitor of that complainant, for valuable consideration in excess of the respondent’s out-of-pocket costs directly related to the domain name; or (ii) registration of the domain name by a respondent in order to prevent the trade mark owner from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct. For completeness, the Panel notes that, when there has been the transfer of a domain name registration from a third party to a respondent, bad faith is assessed as at the date of acquisition by the respondent of the domain name; see section 3.9 of the WIPO Overview 3.0.
Although the Complainant asserts that the Respondent has prevented the Complainant from registering its CAPITEC trade mark in the “.app” gTLD, it has not produced evidence that the Respondent has engaged in a pattern of such conduct. The Panel does not therefore consider further the Complainant’s submissions in respect of paragraph 4(b)(ii) of the Policy.
Turning to paragraph 4(b)(i) of the Policy, the most plausible construction to place on the Respondent’s conduct is that the disputed domain name was registered with a view to sale, either to the Complainant or to a competitor of it. The fact that the disputed domain name is not being used does not preclude a finding of bad faith use. Section 3.3 of the WIPO Overview 3.0 considers passive holding by a respondent and explains that “While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.”
Applying these criteria to the circumstances of this case, at least three of them are fulfilled, namely; (i) the Complainant’s CAPITEC trade mark is a distinctive word, with no known identifiable English language meaning; (ii) the Respondent has provided no response and accordingly there is no evidence of any actual or contemplated good faith use by him of the disputed domain name; (iii) it is implausible to conceive of any good faith use to which the disputed domain name might be put by the Respondent.
So far as this last criterion is concerned, the Panel takes into account, in particular, the evidence the Complainant has provided establishing the repute of its CAPITEC trade mark. It is inherently improbable that the Respondent would register a domain name which incorporated that mark in its entirety, particularly the gTLD “.app”, which the Complainant’s customers are apt to associate with the Complainant, without having been aware of the Complainant’s mark and having intended to profit from the registration of the disputed domain name. As previously mentioned, the disputed domain name carries a high risk of implied affiliation. Such a registration is inherently in bad faith; see Skyscanner Limited v. Egor Kargapolov, supra and Petroleo Brasileiro S.A - Petrobras v. Banty Group/ Bestia Ghenda, supra. Moreover, to the extent that the Respondent’s passive holding of the disputed domain name does not fit precisely within the circumstances described at paragraph 4(b) of the Policy, those circumstances are expressly stated to be without limitation.
The Panel accordingly finds that the disputed domain name was registered and used in bad faith.
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 <capitec.app> be transferred to the Complainant.
Date: May 15, 2019