WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Nedbank Limited v. M TB

Case No. D2017-1566

1. The Parties

The Complainant is Nedbank Limited of Johannesburg, South Africa, represented by Adams & Adams Attorneys, South Africa.

The Respondent is M TB of Nevada, United States of America ("United States").

2. The Domain Name and Registrar

The disputed domain name <nedbank.xyz> is registered with eNom, Inc. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 11, 2017. On August 11, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 11, 2017, 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 August 18, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 7, 2017. A third party submitted three email communications to the Center on August 21, 22 and 23, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Parties that it would proceed to the panel appointment on September 8, 2017.

The Center appointed Tuukka Airaksinen as the sole panelist in this matter on September 20, 2017. 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, a South African provider of financial and banking services has operated under the name Nedbank Limited since 1971. The trademark NEDBANK has been registered by the Complainant in various countries and jurisdictions, including the European Union, where it was registered on May 18, 1998 under No. 340968. The Complainant also owns multiple domain names incorporating its trademark, including <nedbank.com>.

The disputed domain name was registered on August 13, 2015 and it does not resolve to an active website.

5. Parties' Contentions

A. Complainant

The disputed domain name is identical with the Complainant's trademark as the suffix ".xyz" is to be ignored in the comparison.

The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not authorized the Respondent to use its NEDBANK trademark or the disputed domain name. The Respondent is also not commonly known by the disputed domain name and it is not making a legitimate noncommercial or fair use of the disputed domain name.

Due to the substantial use of the Complainant's trademark by the Complainant, the Respondent could not have missed the existence of the Complainant's trademark when the disputed domain name was registered.

Passive holding of the disputed domain name to which the Respondent holds no rights or legitimate interests suggests it is using the disputed domain name in bad faith. The Respondent also was made aware of the Complainant's trademark before the Complaint was filed, but the Respondent did not answer the Complainant's letter.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

In order to obtain the transfer of a domain name, a complainant must prove the three elements of paragraph 4(a) of the Policy, regardless of whether the respondent files a response to the complaint. The first element is that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. The second element a complainant must prove is that the respondent has no rights or legitimate interests in respect of the domain name. The third element a complainant must establish is that the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires that the Complainant establishes that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. Consequently, the Complainant must prove that it has rights to a trademark, and that the disputed domain name is identical or confusingly similar to this trademark.

The disputed domain name consists entirely of the Complainant's trademark NEDBANK with the exception of the generic Top-Level Domain ("gTLD") ".xyz", which is to be disregarded when assessing the similarity of the trademark and the domain name. Thus, the disputed domain name is identical with the Complainant's trademark.

Accordingly, the Panel finds that the disputed domain name is identical with the Complainant's respective trademark and hence the first element of the Policy has been fulfilled.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires that the Complainant establish that the Respondent has no rights or legitimate interests to the disputed domain name.

The consensus view among UDRP panels is that once a complainant has made a prima facie showing indicating the absence of the respondent's rights or legitimate interests in a disputed domain name the burden of production shifts to the respondent to come forward with evidence of such rights or legitimate interests. If the respondent fails to do so, the complainant is deemed to have satisfied the second element of the Policy. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270 and section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0").

The Complainant has credibly submitted that the Respondent is not a licensee of the Complainant, nor has it been otherwise allowed by the Complainant to use the Complainant's trademark in a domain name or otherwise. The Complainant has also credibly submitted that the Respondent has no rights or legitimate interests to the disputed domain name.

Accordingly, the Panel finds that the Complainant has made a prima facie case that has not been rebutted by the Respondent. In light of the Panel's findings below, the Panel finds there are no other circumstances which provide the Respondent with any rights or legitimate interests in the disputed domain names. Therefore, the Panel finds that the second element of the Policy is fulfilled.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires that the Complainant establishes that each disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy provides that the following circumstances, in particular but 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:

"(i) circumstances indicating that [the respondent has] registered or has acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent's] documented out-of-pocket costs directly related to the domain name; or

(ii) [the respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or

(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business or competitor; or

(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the respondent's] website or location or of a product or service on [the respondent's] website or location."

The disputed domain name is not in use and it is seems that it has never been used. The disputed domain name does not resolve to any website.

However, considering that the Complainant's mark has been used since 1971, and that the Complainant operates a website at "www.nedbank.com", the Panel finds it unlikely that the Respondent would not have been aware of the Complainant when registering the disputed domain name.

The disputed domain name does not resolve to a website or a registrar parking site. According to section 3.3 of the WIPO Overview 3.0, the apparent lack of so-called active use (e.g., to resolve to a website) of the disputed domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith and the panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith.

In this case the Complainant's trademark had been used for almost 45 years before the disputed domain name was registered, the Respondent has not submitted a response to this Complaint, the Respondent did not answer the Complainant's pre-Complaint demand letter, and the disputed domain name is identical with the Complainant's trademark NEDBANK. On balance, this means that the fact that there is no active use of the disputed domain name does not mean it would not have been registered and used in bad faith.

Hence the Panel finds that the disputed domain name was registered and is being used in bad faith. Therefore, the Panel finds that the third element of the Policy is fulfilled.

7. Decision

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 <nedbank.xyz> be transferred to the Complainant.

Tuukka Airaksinen
Sole Panelist
Date: October 3, 2017