The Complainant is Nedbank Limited of Johannesburg, South Africa, represented by Adams & Adams Attorneys, South Africa.
The Respondent is Zhou Jing of Beijing, China.
The disputed domain names <nedbank.online> and <nedbank.site> are registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”).
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on October 9, 2018. On October 9, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 9, 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.
On October 15, 2018, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On October 18, 2018, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
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 in English and Chinese, of the Complaint, and the proceedings commenced on October 23, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 12, 2018. The Respondent did not submit any response. On October 23, 2018, the Center received a communication from someone apparently connected with the Respondent.1 Accordingly, the Center notified the Respondent’s default on November 14, 2018. The Center also received communications from the Complainant on October 18, 2018, October 23, 2018, and November 14, 2018.
The Center appointed Rachel Tan as the sole panelist in this matter on November 23, 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.
Headquartered in Johannesburg, the Complainant is one of the largest banks in South Africa. The Complainant provides a range of banking and financial products and services to individuals, businesses and corporates. The Complainant had a market capitalization of USD12.3 billion in March 2018.
The Complainant is the owner of a large number of registrations comprising or containing the trade mark NEDBANK worldwide, including South Africa, China and the European Union (e.g., Chinese Trade Mark Registration No. 1121817, registered on October 21, 1997 and European Union Trade Mark Registration No. 340968, registered on May 18, 1998). The registrations mainly cover insurance and financial services in class 36.
The Complainant is the registrant of the domain name <nedbank.co.za> registered on June 8, 1996. The Complainant also owns a large number of domain names incorporating “Nedbank”, including <nedbank.com>, <nedbankonline.co.za> and <nedbankonline.com>.
The disputed domain names were registered on February 8, 2018, and subsequently transferred to the Respondent. The disputed domain names do not point to active websites.
The Complainant contends that the disputed domain names are identical or confusingly similar to the NEDBANK trade mark, the Respondent has no rights or legitimate interests with respect to the disputed domain names, and that the disputed domain names were registered and are being used in bad faith. The Complainant requests transfer of the disputed domain names.
The Respondent did not reply to the Complainant’s contentions. The Center received an informal communication from someone apparently connected with the Respondent.
The Panel must address the language of the proceeding. Paragraph 11(a) of the Rules provides that the language of the administrative proceeding shall be the language of the Registration Agreement unless otherwise agreed by the parties, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceeding. The panel may choose to write a decision in either language, or request translation of either party’s submissions.
In this case, the Registrar has confirmed to the Center that the language of the Registration Agreement is Chinese. However, the Complainant has requested that English be adopted as the language of the proceeding. The Respondent did not comment on the language of the proceeding. The Center proceeded to issue its case-related communications to the Parties in both English and Chinese. The Center decided to accept the Complaint as filed in English, accept a Response in either English or Chinese, and appoint a Panel familiar with both languages.
The Panel having considered the circumstances finds that English shall be the language of this proceeding. The reasons are set out below:
(a) The Complainant is a South African company. Requiring the Complainant to submit documents in Chinese would lead to delay and cause the Complainant to incur translation expenses;
(b) The Respondent’s choice of English words for the disputed domain names indicates some familiarity with the English language;
(c) Even if the Respondent does not possess a sufficient command of English to understand the Complaint, there were ample opportunities for the Respondent to raise an objection. The Center notified the Parties in English and Chinese of the Complainant’s request for English to be the language of the proceeding, but the Respondent did not protest against this request; and
(d) The Respondent has failed to reply to the Complainant’s contentions. The Complaint has been submitted in English. No foreseeable procedural benefit may be served by requiring Chinese to be used. On the other hand, the proceeding may proceed expeditiously in English.
On the basis of the facts and evidence introduced by the Complainant, and with regard to paragraphs 4(a), (b) and (c) of the Policy, the Panel concludes as follows:
The Panel is satisfied that the Complainant has adduced sufficient evidence to demonstrate its established rights in the NEDBANK trade mark.
The disputed domain names replicate the Complainant’s NEDBANK trade mark in its entirety. The addition of “.online” or “.site”, both of which are generic Top-Level Domains (“gTLDs”), “is a technical requirement of every domain name registration”. Groupon, Inc. v. Whoisguard Protected, Whoisguard, Inc. / Vashti Scalise, WIPO Case No. D2016-2087.
Therefore, the Panel finds that the disputed domain names are identical to the Complainant’s NEDBANK trade mark. Accordingly, the Complainant has satisfied the first element under paragraph 4(a) of the Policy.
The Complainant contends that the Respondent has not been authorized to make use of the NEDBANK trade mark or to register the disputed domain names, nor is the Respondent associated with the Complainant in any way. The Complainant further contends that the Respondent is not “commonly known” by the name “Nedbank” nor has it acquired any trade mark rights in this name.
In circumstances where the Complainant possesses exclusive rights to the NEDBANK trade mark whereas the Respondent seems to have no trade mark rights, the Panel is satisfied that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, and the burden of production shifts to the Respondent. See International Hospitality Management ‑ IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683.
The Respondent however has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, nor of any other circumstances giving rise to rights or legitimate interests in the disputed domain names. The disputed domain names have been inactive since creation. Thus, there is no evidence that the Respondent has any demonstrable plans to offer goods or services in good faith under the disputed domain names, or to support a recognition of a legitimate claim to the disputed domain names.
The Panel thus concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
The Complainant has been trading under the “Nedbank” name for decades. The NEDBANK trade mark has been registered and used around the world, including in China. The disputed domain names were registered well after the first registration of the Complainant’s NEDBANK trade mark and <nedbank.co.za> domain name.
The Respondent is based in China. The term “Nedbank” has no meaning in the Chinese language and would be considered distinctive in this territory. By registering a domain name entirety composed of the term “Nedbank”, the Respondent cannot credibly claim not to have been aware of the Complainant’s trade mark.
The disputed domain names currently resolve to inactive websites. The “passive holding” of a domain name does not prevent a finding of bad faith. See, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Based on the above facts, it is implausible to contemplate of any bona fide use to which the disputed domain names may be put by the Respondent.
Considering all the circumstances of the case, the Panel finds that the Respondent must have known of the Complainant before registering the disputed domain names and, the lack of a plausible reason for the Respondent’s passive holding of the disputed domain names leads the Panel to infer that the Respondent has registered and used the disputed domain names in bad faith.
Therefore, the Panel concludes that the Complainant has satisfied the third element under paragraph 4(a) 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 disputed domain names <nedbank.online> and <nedbank.site> be transferred to the Complainant.
Rachel Tan
Sole Panelist
Date: December 7, 2018
1 While the communication was from a third-party email address, it referred to the Notification of Complaint and Commencement of Administrative Proceeding, which was notified to the Parties.
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