WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Capitec Bank Limited v. WhoisSecure, WhoisSecure / Caleb blessing, every life beat
Case No. D2021-2014
1. The Parties
The Complainant is Capitec Bank Limited, South Africa, represented by Werksmans Attorneys, South Africa.
The Respondent is WhoisSecure, WhoisSecure, United States of America (“United States”) / Caleb blessing, every life beat, Nigeria.
2. The Domain Name and Registrar
The disputed domain name <capitecbnk.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 June 25, 2021. On June 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 10, 2021, 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. On August 2, 2021, the Registrar transmitted by email to the Center its clarification of the Registrar verification. The Center sent an email communication to the Complainant on August 2, 2021 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 August 4, 2021.
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 August 6, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 26, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 30, 2021.
The Center appointed Mathias Lilleengen as the sole panelist in this matter on September 9, 2021. 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 was established in South Africa in March 2001. It is a large retail bank rendering banking, financial services and related goods and services under its name and trademark CAPITEC. The Complainant has over 15.8 million active clients, 857 branches and 14 672 employees.
The Complainant owns numerous trademark registrations for marks that incorporate the word “Capitec” for a broad range of goods and services, the first one having been registered in South Africa in August 2000. The Complainant is registrant of around 90 different domain names that contain the word “Capitec”, including <capitec.com>.
According to the Registrar, the Domain Name was registered on May 5, 2021. At the time of the Complaint and the time of drafting the Decision, the Domain Name resolved to an error web page.
5. Parties’ Contentions
The Complainant provides evidence of trademark registrations. The Complainant argues that the Domain Name is confusingly similar to the Complainant’s trademark. The only difference is the inclusion of the word “bnk” which is an abbreviation of “bank”, a description of the service offered by the Complainant. The Complainant states that “Capitec” is an invented word with no dictionary meaning, and the Complainant’s trademark is well-known.
The Complainant asserts that the Respondent is not authorized to use the Complainant’s trademark. The Respondent is not commonly known by the Domain Name. The Respondent cannot establish rights in the Domain Name, as it has not made any use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services. The Domain Name does not resolve to an active website.
The Complainant believes the Respondent must have known of the Complainant’s well-known and distinctive trademark when the Respondent registered the Domain Name. The Complainant documents that the Respondent has been in a previous and is in a pending domain name dispute. The non-use of the Domain Name does not prevent a finding of bad faith use, as CAPITEC mark is comprised of a very distinctive and made up word and has high repute in relation to banking and financial services. Further, the Respondent has failed to respond to the Complainant’s cease and desist letter, the Respondent has made use of a privacy shield to conceal his identity, and it is inconceivable that the Respondent can have rights or legitimate interests in CAPITEC mark. Therefore, the registration and the non-use of the Domain Name were in bad faith.
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 CAPITEC. 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 with the addition of the term “bnk”. The addition does not prevent a finding of confusing similarity; see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8. For the purpose of assessing under paragraph 4(a)(i) of the Policy, the Panel may ignore the generic Top-Level Domain (“gTLD”) “.com”; see 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 trademark or otherwise make use of its mark. There is no evidence that the Respondent has registered the Domain Name as a trademark or acquired unregistered trademark rights. The Respondent cannot establish rights in the Domain Name, as it has not made use of, or demonstrable preparations to use, 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 is confusingly similar to the Complainant’s well-known trademark. The Respondent must have been aware of the Complainant when the Respondent registered the Domain Name. The Panel finds it is likely that the Respondent has registered the Domain Name to resell it, and/or to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark. Moreover, the Respondent has been involved a previous UDRP case (See Capitec Bank Limited v. Caleb Blessing, every life beat, WIPO Case No. D2021-2160). This indicates bad faith pattern pursuant to the Policy paragraph 4(b)(ii).
UDRP panels have found that the mere registration of a domain name that is identical or confusingly similar to a widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. See WIPO Overview 3.0, section 3.1.4.
The Panel notes that the Domain Name does not resolve to an active website. Under the circumstances of this case, the Panel finds that the non-use of the Domain Name does not prevent a finding of bad faith under the doctrine of passive holding. See section 3.3 of the WIPO Overview 3.0. Moreover, the Respondent’s use of a privacy service to hide its identity is in this context further evidence of bad faith.
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 <capitecbnk.com> be transferred to the Complainant.
Date: September 13, 2021