WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ABSA Group Limited (previously ABSA Bank Limited) v. Above.com Domain Privacy / Host Master, Transure Enterprise Ltd

Case No. D2019-0499

1. The Parties

The Complainant is ABSA Group Limited (previously ABSA Bank Limited) of Johannesburg, Gauteng, South Africa, represented by Moore Attorneys Incorporated, South Africa.

The Respondent is Above.com Domain Privacy of Beaumaris, Australia / Host Master, Transure Enterprise Ltd of Wilmington, Delaware, United States of America (“USA”).

2. The Domain Name and Registrar

The disputed domain name <absamobi.com> is registered with Above.com, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 5, 2019. On March 5, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 6, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 7, 2019 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 March 14, 2019.

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 March 21, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 10, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 10, 2019.

The Center appointed Mladen Vukmir as the sole panelist in this matter on April 24, 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

(i) The disputed domain name was registered on June 29, 2011 (Annex A to the Complaint);

(ii) The Respondent is the registrant of the disputed domain name (confirmed by the Registrar in verification response as of March 6, 2019);

(iii) The Complainant is one of South Africa’s biggest retails banks, with 31,317 employees, 698 bank branches, 8,917 ATM’s, 675,000 customers who use its Internet banking service, and as of 2016 it had an estimate of 9.4 million customers in South Africa. It was founded in 1991 and is listed on the Johannesburg Stock Exchange in South Africa (Annex G and Annex E to the Complaint);

(iv) UDRP panels have recognized the Complainant’s ABSA trademark in numerous decisions. See, e.g., ABSA Group Limited v. Kabelo Molefi, WIPO Case No. D2018-2294; ABSA Group Limited v. Domain Administrator, WDAPL, WIPO Case No. D2018-2026; ABSA Group Limited v. Dvlpmnt Marketing, Inc.,WIPO Case No. D2019-0290;

(v) The Complainant registered the ABSA trademarks in South Africa in different classes, inter alia, the trademark registration No. 1991/01263 (registered on January 5, 1994), No. 1991/01264 (registered on December 30, 1993) and No. 1991/07437 (registered on March 3, 1994) (Annex I and Annex J to the Complaint);

(vi) The Complainant’s holding company Barclays Africa Group is the registrant of various domain names that incorporate the ABSA trademark, including <absa.mobi> that was registered on September 27, 2006, <absabank.mobi> that was registered on April 16, 2009 and the first domain name <absabank.co.za> was registered on July 20, 2000;

(vii) The disputed domain name is being used in connection with a pay-per-click (“PPC”) website that, at the time of drafting the Decision, includes following links: “cellphone banking” and “Buy this domain”.

5. Parties’ Contentions

A. Complainant

The Complainant essentially asserts that:

- it is “one of Africa’s major financial service providers offering personal and business banking, credit cards, corporate and investment banking, wealth and investment management, and insurance”;

- as of 2018, it had over 675,000 customers who used its Internet banking service and, as of 2016, it had an estimate of 9,400,000 customers in South Africa;

- it is a well-known and highly profitable company for more than three decades, in which period it has acquired a substantial reputation and goodwill in its ABSA trademark relating to the financial services within the banking industry;

- the ABSA trademark is predominantly associated with the Complainant and its services;

- it has rights in and to its ABSA trademarks applied for and/or registered in various jurisdictions;

- the disputed domain name fully incorporates its ABSA trademark (under which the Complainant provides financial services) and domain names, together with the descriptive and generic word “mobi” and the generic Top-Level Domain (“gTLD”) “.com” extension;

- the disputed domain name is being used as a PPC service which directs the user to a website containing a link to “cellphone banking” and, among others, a direct link to Capitec Bank, one of the Complainant’s competitors (Annex K to the Complaint);

- the Respondent did not respond to the Complainant’s cease and desist letter of October 5, 2018;

- it has not granted the Respondent its consent and/or permission to register the disputed domain name and there is no business relationship between the Complainant and the Respondent;

- the disputed domain name has been registered in order to prevent the Complainant from reflecting the trademark in corresponding domain name;

- the disputed domain name will lead to confusion (as Internet users may believe that it belongs to the Complainant), in addition, it is likely that a consumer who intends to visit the Complainant’s website will accidentally type in “absamobi” instead of “absa.mobi” and thus will be directed to the Respondent’s webpage;

- the Respondent was clearly aware of the Complainant’s ABSA trademark and the disputed domain name has been registered in bad faith with the intention of gaining financial advantage by infringing the Complainant’s trademark rights;

- the disputed domain name has been registered using an identity shield service offered by its service provider Above.com Pty Ltd. to conceal the identity of the true owner.

In summary, the Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s trademark, that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that the disputed domain name has been registered and is being used in bad faith. Therefore, the Complainant requests that the disputed domain name <absamobi.com> be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

The Panel now proceeds to consider this matter on the merits in light of the Complaint, the lack of Response, the Policy, the Rules, the Supplemental Rules and other applicable legal authority pursuant to paragraph 15(a) of the Rules.

Paragraph 4(a) of the Policy provides that a complainant must prove, with respect to the disputed domain name, each of the following:

(i) the disputed domain name is identical or confusingly similar to a trademark 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

Primarily, the Panel emphasizes that under general consensus view, the fact of ownership of a registered trademark by the Complainant is generally sufficient to satisfy the threshold requirement of having trademark rights (see section 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDPR Questions, Third Edition (“WIPO Overview 3.0”)).

The Complainant has submitted evidence to show that it is the owner of a number of ABSA trademarks.

Moreover, it is well established that the threshold test for confusing similarity under the UDRP involves a straightforward comparison between the complainant’s trademark and the disputed domain name. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the disputed domain name, and the addition of descriptive or geographical terms would not prevent a finding of confusing similarity under the first element. Application of the confusing similarity test under the UDRP typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name, and in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing (see sections 1.7 and 1.8 of WIPO Overview 3.0).

After performing the side-by-side comparison of the disputed domain name and the textual components of the relevant trademark, it is evident to the Panel that the disputed domain name incorporates the Complainant’s ABSA trademark in its entirety and that the same trademark is clearly recognizable as such within the disputed domain name.

Furthermore, the addition of the term “mobi” does not avoid a finding of confusing similarity between the disputed domain name and the Complainant’s ABSA trademark, but rather suggests that the disputed domain name relates to the offering of the Complainant’s digital/mobile banking services, which falsely suggests affiliation with the Complainant.

Also, from the evidence submitted by the Complainant and based on the Panel’s review of the information available on the Internet, it arises that on September 27, 2006, the Complainant’s holding company Barclays Africa Group registered the domain name <absa.mobi> and has been using it to date. This Panel upholds the Complainant’s contentions that this might lead to additional confusion as it is likely that a consumer who intends to visit the Complainant’s website will accidentally type in “absamobi” instead of “absa.mobi” and thus will be directed to the Respondent’s webpage.

With respect to the applicable gTLD “.com” suffix in the disputed domain name, it is generally accepted that it may be disregarded under the confusing similarity test (see section 1.11 of the WIPO Overview 3.0).

Accordingly, the Panel finds that the Complainant has established the first element.

B. Rights or Legitimate Interests

The Complainant has made an adequate prima facie showing that the Respondent does not have rights or legitimate interests in respect of the disputed domain name. The Complainant’s trademarks bear no resemblance to the Respondent’s name, and there are no indications that the Respondent would be commonly known by the disputed domain name. The Complainant further asserts that it has not licensed or otherwise granted the Respondent permission to use its marks. The web page to which the disputed domain name resolves demonstrates the Respondent’s intent to capitalize upon use of the Complainant’s trademark for commercial gain, rather than for any legitimate noncommercial or otherwise fair use.

Furthermore, section 2.1 of the WIPO Overview 3.0 provides: “While 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 “proving a negative”, 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.”

In line with the abovementioned and due to the fact that the Complainant has established its prima facie case and the Respondent did not come forward with any evidence that it has any rights or legitimate interests in respect of the disputed domain name, the Panel finds that the Complainant has established the second element.

C. Registered and Used in Bad Faith

For the purpose of paragraph 4(a)(iii) of the Policy, 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 the disputed domain name in bad faith:

(i) circumstances indicating that the holder 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 the complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or

(ii) the holder 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 holder has engaged in a pattern of such conduct; or

(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’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 holder’s website or location or of a product or service on the holder’s website or location.

Owing to any other evidence to the contrary, the Panel accepts the Complainant’s arguments substantiated by evidence that the Respondent has registered and used the disputed domain name in bad faith.

First, this Panel holds that the Respondent was well aware of the Complainant, its business and/or the Complainant’s ABSA trademark, because:

- the Complainant’s ABSA trademark is distinctive, well known in relevant circles and does not constitute a dictionary term in any of the languages known to the Panel, including English, which is spoken in the USA where the Respondent is apparently located;

- the Responded intentionally added the term “mobi” in order to make the disputed domain name confusingly similar to <absa.mobi>, which is the domain name registered by the Complainant’s holding company Barclays Africa Group.

- the disputed domain has been used to create a parking website containing sponsored (PPC) links, among others, link “cellphone banking”.

Second, it is obvious to this Panel that by using the disputed domain name, the Respondent has intentionally attempted to channel Internet traffic to the Respondent’s webpage, likely for the purpose of generating revenue by PPC advertising relating to the banking services and to attract Internet users by creating a likelihood of confusion with the Complainant’s ABSA trademark as to the source, sponsorship, affiliation, or endorsement of its website.

The presence of the link “cellphone banking” on the website “www.absamobi.com” highlights the intent of the Respondent to benefit from the reputation of the ABSA trademark without any right or legitimate interest.

For that reason, the Panel finds the provisions of paragraph 4(b)(iv) of the Policy to be especially applicable in this case since the Respondent’s registration and use of the disputed domain name interferes with the Complainant’s trademark and Internet users might be misled about the source, sponsorship, affiliation, or endorsement of the website created under the disputed domain name.

Third, the Respondent has made a regular practice of registering and using domain names that are a variation of known trademarks. Namely, according to the Panel’s search of UDRP records, the Respondent Host Master, Company Name Transure Enterprise Ltd has been named as a Respondent in numerous prior UDRP proceedings. See, e.g., F. Hoffman-La Roche AG v. Above.com Domain Privacy/Shu Lin, Shu Lin Enterprises Limited/Host Master, Transure Enterprise Ltd, WIPO Case No. D2010-1986; Intesa Sanpaolo S.p.A. v. Above.com Domain Privacy / Host Master, Transure Enterprise Ltd, WIPO Case No. D2011-0228; International Business Machines Corporation v. Above.com Domain Privacy / Host Master, Transure Enterprise Ltd, WIPO Case No. D2018-1174. This clearly indicates a pattern of registration and use in bad faith.

Given the above, the Panel determines that the disputed domain name has been registered and is being used in bad faith and that the Complainant has fulfilled the third element under paragraph 4(a) of the Policy.

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 <absamobi.com> be transferred to the Complainant.

Mladen Vukmir
Sole Panelist
Date: May 8, 2019