WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Nedbank Limited v. KRYPTEUM PTY LTD

Case No. D2018-2025

1. The Parties

1.1The Complainant is Nedbank Limited of Johannesburg, South Africa, represented by Adams & Adams Attorneys, South Africa (the “Complainant”).

1.2 The Respondent is KRYPTEUM PTY LTD of Durban, South Africa (the “Respondent”).

2. The Domain Name and Registrar

2.1 The disputed domain name <nedbank.app> (the “Disputed Domain Name”) is registered with Marcaria.com International, Inc. (the “Registrar”).

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 5, 2018. On September 5, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 5, 2018, 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.

3.2 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”).

3.3 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 18, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 8, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 9, 2018. An email communication was received by the Center on October 9, 2018, from the Respondent, indicating that they would communicate with the Complainant’s representative.

3.4 The Center appointed Ike Ehiribe as the sole panelist in this matter on November 2, 2018. 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

4.1 The Complainant is NEDBANK Limited, a South African public company incorporated in accordance with the laws of South Africa. The Complainant is said to be a well-known provider of a diverse range of financial and banking products and services, including individual and business banking and specifically services relating to everyday banking, home and personal loans, vehicle finance, foreign exchange and student loans, small business services, private wealth management, wills estates and trust services, financial planning, insurance, unit trusts, trading and sales, funding and advisory, risk management and treasury. The Complainant it is said has been in existence since 1831 and operates across the African continent as one of the 5 largest banks in South Africa.

4.2 The Respondent is a South African entity known as KRYPTEUM PTY LTD and is said to engage in the trading of cryptocurrency in South Africa. According to the WhoIs records attached to this proceeding, the Respondent created the Disputed Domain Name on May 8, 2018. The Disputed Domain Name does not resolve to an active website. As the language of the registration agreement is English, the language of the proceeding shall be in the English language.

5. Parties’ Contentions

A. Complainant

5.1 The Complainant is the proprietor of various trademark registrations and applications world-wide for the trademark NEDBANK and marks incorporating NEDBANK.

5.2 The Complainant’s primary website is situated at “www.nedbank.co.za” and the Complainant currently owns over 250 domain names incorporating the NEDBANK trademark including <nedbank.com>, <nedank.org>, <nedbank.net>, <nedbankonline.co.za> and <nedbankonline.com>. The Complainant also operates and has made available various mobile banking applications, including Nedbank App Suite and Nedbank Money App, on platforms such as App Store (IOS), Google Play Store (Android) and blackberry App World. It is said that the Complainant’s mark NEDBANK has acquired a substantial reputation in South Africa as envisaged by Article 6b of the Paris Convention for the Protection of Industrial Property. Therefore, the Complainant asserts that the Disputed Domain Name, except the “.app” indicator, is confusingly similar or identical to the Complainant’s NEDBANK trademark in that the Disputed Domain Name wholly incorporates the Complainant’s NEDBANK name and mark.

5.3 The Complainant also contends that the Respondent has no rights or legitimate interest in respect of the Disputed Domain Name in that the Complainant did not authorise the Respondent’s use of the NEDBANK trademark as part of a domain name or otherwise. Also it is argued that the Respondent is not in any way associated with the Complainant and that the Complainant only got to know of the Respondent when it discovered that the Disputed Domain Name had been registered. It is also said that there is no evidence that the Respondent has been or is commonly known by the name NEDBANK, or that it acquired any trademark or service mark rights in the NEDBANK mark. The Complainant states further that when the Disputed Domain Name is entered into the Internet tool bar, the domain name does not resolve to an active website. The Complainant therefore asserts that the Respondent has no right or legitimate interest in the Disputed Domain Name.

5.4 On the question of bad faith use, the first argument in support of bad faith use is that the Respondent merely appropriated the Complainant’s trademark purely to derive benefit from the Complainant’s substantial reputation. Secondly, the Complainant submits bad faith use is established as the use of the Disputed Domain Name will lead Internet visitors to believe that the domain name is connected with the Complainant by reason of the similarity between the Disputed Domain Name, <nedbank.app> and the Complainant’s NEDBANK trademark. Thirdly, the Complainant asserts that the mere registration of the Disputed Domain Name has the effect of preventing the Complainant from registering or using an identical domain name which in effect is tantamount to preventing the Complainant from exercising its rights in the NEDBANK trademark and therefore amounts to an unfair disruption of the Complainant’s business. Fourthly, that when a cease and desist letter was sent to the Respondent, the Respondent gave an unsatisfactory response, stating that the Disputed Domain Name was registered in order as to support a project for one of its clients located in China. In this regard the Complainant asserts that this response is similar to a response given by the respondent trading as Kagiso Interactive CC in the case of Comair Limited v. Kagiso Interactive RSA, WIPO Case No. 2018-1396 where the respondent registered a well-known trademark of another party as a domain name and submitted as justification that the domain name was used in relation to services to be rendered by a client in China. It is further stated that the sole director for the Respondent in this matter is also recorded as the sole member of Kagiso Interactive RSA in the person of Mr. Reddy. Fifthly, following the Complainant’s further investigations, it became clear that Kagiso Interactive RSA is related to the Respondent in this matter, and has been involved in the registration of domain names incorporating well-known trademarks in the finance industry in South Africa such as <capitec.app>, <standardbankthoughtleaders.co.za> and <cashsend.app> thereby indicating a pattern of abusive registrations which is clearly demonstrative of bad faith.

B. Respondent

5.5 The Respondent did not submit a formal response and did not reply to the Complainant’s contentions; therefore, the Panel shall draw such adverse inferences from the failure of the Respondent to reply, as it considers appropriate.

6. Discussion and Findings

6.1 Under paragraph 4(a) of the Policy, to succeed in the administrative proceeding the Complainant must prove that:

i) The Disputed Domain Name is identical and confusingly similar to the trademark or service mark of the Complainant;

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.

6.2 As expressly stated in the Policy, the Complainant must establish the existence of each of these three elements in any administrative proceeding.

A. Identical or Confusingly Similar

6.3 The Panel accepts that the Complainant, a well-known financial institution in South Africa, is the registered owner of several trademark registrations and applications worldwide for the NEDBANK trademark and marks incorporating NEDBANK as supported by the documents attached to this proceeding. The Panel therefore, has no hesitation in finding that upon a visual examination, the Disputed Domain Name <nedbank.app> is confusingly similar to the Complainant’s NEDBANK trademark. It is absolutely clear that the Disputed Domain Name wholly incorporates the Complainant’s trademark. The Panel also finds that the addition of the “.app” indicator does nothing to prevent a finding of confusing similarity when conducting a confusing similarity test. See the detailed discussion on the test for confusing similarity at sections 1.7, 1.8 and 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). See generally, Islamic Bank of Britain Plc v. Ifena Consulting, Charles Shrimpton, WIPO Case No. D2010-0509 in relation to the transfer of <islamic-bank.com>.

6.4 The Panel therefore finds that the Complainant has established that the Disputed Domain Name is confusingly similar to the Complainant’s NEDBANK trademark.

B. Rights or Legitimate Interests

6.5 This Panel also finds that the Respondent has no rights or legitimate interest whatsoever in the Disputed Domain Name within the ambit of paragraph 4(c) of the Policy. As argued by the Complainant, the Respondent has not been authorised or licensed by the Complainant to register any domain name incorporating the Complainant’s trademark; nor has the Respondent produced any evidence to demonstrate that the Respondent has commonly been known by the Complainant’s trademark NEDBANK or ever been affiliated or associated with the Complainant. The Panel finds also that the Complainant had no knowledge of the Respondent until the Complainant discovered that the Respondent had registered the Disputed Domain Name. The Panel also concludes that since the Disputed Domain Name resolves to a dormant website such conduct cannot be described as a bona fide offering of goods or services nor a legitimate noncommercial of fair use of the Disputed Domain Name within the ambit of paragraph 4(c) of the Policy. See generally, Paris Hilton v. Deepak Kumar, WIPO Case No. D2010-1364.

6.6 Accordingly, the Panel is satisfied that the Complainant has established that the Respondent does not possess any rights or legitimate interests in the Disputed Domain Name as specified in paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

6.7 With regards to the question of bad faith registration and use, the Panel has taken into account a number of irrefutable factors arising from the unchallenged contentions of the Complainant to conclude that the Respondent definitely registered the Disputed Domain Name in bad faith and has continued with bad faith use.

6.8 In the first instance considering that the Complainant has been in existence since 1831 and operates all over South Africa and beyond, a simple trademark or Google search would have revealed to the Respondent the existence of the Complainant and the NEDBANK trademark. Therefore, the failure to conduct that initial search is an indication of an intention to register and use the Disputed Domain Name in bad faith in order as to exploit the Complainant’s reputation for financial gain.

6.9 Secondly, the Respondent’s selection of the Disputed Domain Name is likely to induce people or business into believing that the Disputed Domain Name is connected with, or operated by, the Complainant considering the similarity between the Disputed Domain Name and the Complainant’s trademark.

6.10 Thirdly, the fact that the mere registration of the Disputed Domain Name prevents the Complainant from registering or using an identical domain name thereby preventing the Complainant from exercising its proprietary rights over its NEDBANK trademark is tantamount to disrupting the Complainant’s business.

6.11 Fourthly, following the facts of the case of Comair Limited v. Kagiso Interactive RSA, WIPO Case No. D2018-1396 the Panel finds that the Respondent and associated entities have been engaged in the systematic registration of domain names incorporating the well-known trademarks of financial institutions in South Africa such as Capitec Bank, Standard Bank and ABSA. The evidence shows that the Respondent and associated entities registered <capitec.app> and <cashsend.app> on the same date as the Disputed Domain Name thereby demonstrating a pattern of abusive registrations which is clearly indicative of bad faith use.

6.12 Fifthly, the Panel has drawn adverse inferences from the failure of the Respondent to formally respond to the weighty contentions of the Complainant.

6.13 Accordingly, this Panel is satisfied that the Respondent registered and used the Disputed Domain Name in bad faith.

7. Decision

7.1 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.app> be transferred to the Complainant.

Ike Ehiribe
Sole Panelist
Date: November 24, 2018.