UDRP: Loss for the Respondent.
Capitec.com, a domain registered in 1999, ended up in the hands of New Ventures Services, a subsidiary of Web.com.
In 2001, a company trademarked the CAPITEC mark, and a year ago, the domain Capitec.com moved to a private investor in Panama.
The new owner wanted $49,999 dollars via Afternic, and that’s when Capitec Bank Limited filed the UDRP.
There was no response by the Respondent, and the case was decided in favor of the Complainant:
Capitec Bank Limited v. Admin, Domain
Case No. D2018-04901. The Parties
Complainant is Capitec Bank Limited (“Complainant”) of Stellenbosch, South Africa, represented by Werksmans Attorneys, South Africa.
Respondent is Admin, Domain of Chitre, Panama.
2. The Domain Name and Registrar
The Disputed Domain Name <capitec.com> is registered with Network Solutions, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 5, 2018. On March 5, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 5, 2018, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on March 7, 2018. The Center received email communications from a third party on February 12, 2018, and February 14, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 27, 2018. Respondent did not submit any Response.
The Center appointed Richard W. Page as the sole panelist in this matter on April 16, 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
Complainant was established in South Africa on March 1, 2001, was registered as a bank controlling company on June 29, 2001 and was listed in the banks sector of the Johannesburg Stock Exchange on February 18, 2002.
Complainant is a registered financial services provider recognized and registered under the South Africa Reserve Bank. It focuses on providing accessible and affordable banking services to clients via the innovative use of technology in a personalized and convenient manner.
According to the financial report for the year 2016, which was issued prior to the transfer of the Disputed Domain Name to Respondent, Complainant had 11,440 employees, its revenue was ZAR 18.3billion (USD 1.5 billion), it had 720 branches and 7.3 million clients.
In 2016, Complainant was named as the world’s best bank in the inaugural Lafferty Bank Quality ratings and in 2017 was awarded this prestigious accolade for the second year running. The Lafferty Group is a global banking advisor group with a footprint in 150 countries over the past thirty years. Of the 100 of the world’s largest quoted banks included in their first independent star rating are HSBC, Deutsche Bank, Goldman Sachs, JP Morgan Chase. In addition to Complainant, the other major South African banks included in their ratings are Nedbank, Standard Bank, Barclays, ABSA and First Rand.
According to the 2017 Integrated Annual Report, Complainant has over 8.6 million clients, 796 branches and 13,069 employees.
Complainant is a retail bank rendering banking, financial services and related goods and services under its name and registered trademark CAPITEC. Complaint has trademark registrations for CAPITEC and trademarks incorporating CAPITEC, including CAPITEC & Device, CAPITEC ONE WORLD & Device, CAPITEC BANK GLOBAL ONE FACILITY, CAPITEC BANKING MADE EASY, and CAPITEC BANK BANK BETTER LIVE BETTER & Device (collectively the “CAPITEC Mark”).
The first trademark applications for the CAPITEC Mark were filed in South Africa in classes 9, 16, 35, 36 and 42 on August 11, 2000. Registration certificates for nos. 2000/15984-15989 together with the Certificates of Renewal which are valid until May 26, 2020 were attached as annexes to the Complaint. In terms of the International Nice Classification System the CAPITEC Mark is registered in Classes 9, 16, 35, 36, 38 and 42. In addition to its extensive trademark portfolio in South Africa, Complainant has registered its CAPITEC Mark throughout Africa, Europe, North America, South America, Australia and Asia.
Complainant is the registrant of over 76 generic and country code domain names. Over 40 of these domain names include the term “Capitec.” The domain name <capitec.co.za> was first registered on August 21, 2000.
Complainant launched its website “www.capitec.co.za” in 2006, introducing Complainant’s product and services from that time to the public. Complainant’s current principal website can be found at “www.capitecbank.co.za”.
The Disputed Domain Name was registered on May 16, 2018. Currently, the Disputed Domain Name resolves to a website displaying pay-per-click links to services related to the Complainant’s area of business.
5. Parties’ Contentions
A. Complainant
Complainant contents that it has numerous registrations of the CAPITEC Mark in South Africa and internationally. Complainant further contents that it has over the years advertised extensively through print, digital and in-store advertising, television and radio advertisements. It has made extensive use of its CAPITEC Mark in relation to financial services and related services in South Africa and elsewhere for at least seventeen years resulting in a substantial reputation and goodwill in and to such mark vesting in Complainant, to which it is entitled to protection.
Complainant alleges that Capitec is an invented word with no dictionary meaning and, as a consequence of Complainant’s extensive use and repute, is well-known. Complainant further alleges that first page of Google search results for the term “capitec” lists all references to Capitec in relation to Complainant. Complainant further alleges that the registration and use of the Disputed Domain Name by Respondent is use of an identical trademark that belongs to Complainant.
Complainant contends that the Disputed Domain Name is identical to Complainant’s corporate name and to the CAPITEC Mark, thus in violation of paragraph 4(a)(i) of the Policy. Complainant further contends that the suffix “.com” only serves to indicate that the Disputed Domain Name is registered under this gTLD and should be disregarded in evaluating confusing similarity.
Complainant argues that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy.
Complainant asserts that the Whois email addresses for “registrant,” “admin,” and “tech” are all <[…]@newmediainvestments.net>.
Complainant further asserts that the Disputed Domain Name resolves to a website that is active. On November 16, 2017 the home page hosted a landing page with links including: Banking Jobs; Global Online Business Directory; Capitec Bank; Loan Services Mobile Banking Service; Online Banking; and Credit Card Services.
Complainant further asserts that on January 23, 2018, Respondent’s home page hosted a landing page with links to Banking Jobs; Capitec Bank; Top Companies to Work For; Credit Services; Loan Services; and Mobile Banking Services. Each of the foresaid links on the landing page resolves to further pages containing links to third party websites unrelated to Complainant.
Complainant avers that there is no information on the website to identify Respondent. The words “New Media Investments” is contained in the email addresses on the WhoIs search results. When searching “New Media Investments” on the website to which the Disputed Domain Name resolves, the search function resolves to a page with links to third party websites, named “www.banyanbill.com”, “www.moneymorning.com”, “www.money-a2z.com”, and “www.safepcexpert.com”.
Complainant explains that in an effort to identify Respondent, a Google search for New Media Investments reveals New Media Investments, Inc. which is a United States of America holding company incorporated on June 18, 2013 which owns, operates and invests in local media assets. The contact details of New Media Investments, Inc. do not correspond with the WhoIs search results.
Complainant contends that Respondent has registered and is using the Disputed Domain Name in bad faith pursuant to paragraph 4(a)(iii) of the Policy. Complainant further contends that by diverting traffic to third parties using paid link advertisements, Respondent is using the Disputed Domain Name to create a likelihood of confusion for its own commercial purposes. As a result, the principal use of the Disputed Domain Name is to host a landing page designed to produce pay-per-click revenue from the sponsored links thereon that click through to advertisements and sponsored links resolving to third party websites. Complainant submits that Respondent can have no legitimate reason to utilize Complainant’s trademark and was not authorized to do so. Respondent is using the Disputed Domain Name for commercial gain misleadingly to divert customers or to tarnish the CAPITEC Mark.
Further indicative of Respondent’s bad faith is the banner on the landing page of its website and each page to which the links resolve stating that the owner of the Disputed Domain Name is looking to sell the Disputed Domain Name for the asking price of USD 16,128. When clicking on this link, it further resolves to a page stating that the Disputed Domain Name may be available for sale inviting the submission of an offer to purchase. Respondent’s asking price on Network Solutions is USD 49,999.
A report of the historical WhoIs information recorded between 2001 and December 6, 2016 shows the first registrant was Capitec.Inc., in California from August 8, 1999 until April 8, 2016. The Disputed Domain Name was updated pending renewal or deletion on April 9, 2016. The registrant was updated to New Ventures Services, Corp. on May 16, 2016 and most recently updated on December 6, 2017 to show Admin Domain located in Panama.
On May 16, 2016, Respondent registered the Disputed Domain Name when it became available pending deletion for failure to renew. In June 2016, the registration was updated to a private registration with the result that the identity of Respondent is hidden.
Complainant notes that Respondent acquired the Disputed Domain Name less than two years ago on May 16, 2016, notably fifteen years after Complainant’s first trademark applications for the CAPITEC Mark were registered.
Complainant further notes that Respondent Admin, Domain shows as the respondent in fourteen previous domain name decisions which are listed in an annex to the Complaint. Complainant contends that Respondent Admin Domain has, since at least 2002, engaged in a pattern of registering various domain names incorporating third party trademarks.
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.”
A respondent is not obliged to participate in a domain name dispute proceeding, but if it fails to do so, asserted facts that are not unreasonable would be taken as true and the respondent would be subject to the inferences that flow naturally from the information provided by the complainant: See Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441.
Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
i) that the Disputed Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and,
ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and,
iii) that the Disputed Domain Name has been registered and is being used in bad faith.
It is well established that the transfer of a domain name to a third party does amount to a new registration. See section 3.8.1 of WIPO Overview 3.0. Therefore, the date of registration of the Disputed Domain Name by Respondent is May 16, 2016.
A. Identical or Confusingly SimilarComplainant contends that it has numerous registrations of the CAPITEC Mark and that its trademark registrations are valid and subsisting and serve as prima facie evidence of its ownership and the validity of the CAPITEC Mark. Prior UDRP decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption. See, EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047.
Respondent has not contested Complainant’s assertion of trademark rights.
The Panel finds that Complainant has enforceable rights in the CAPITEC Mark for purposes of this proceeding.
Complainant further contends that the Disputed Domain Name is identical with and confusingly similar to the CAPITEC Mark pursuant to the Policy paragraph 4(a)(i).
Complainant argues that the entirety of the CAPITEC Mark is incorporated into the Disputed Domain Name. Complainant further argues that when a Disputed Domain Name incorporates an entire trademark with only the addition of a common word, it is still confusingly similar to the trademark as the addition of non-distinctive phrases does not eliminate the likelihood of confusion. See, F. Hoffmann-La Roche AG v. P Martin, WIPO Case No. D2009-0323; Dixons Group Plc v. Mr. Abu Abdullaah, WIPO Case No. D2001-0843; V&S Vin & Sprit AB v. Ooar Supplies, WIPO Case No. D2004-0962; Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227; Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign, WIPO Case No. D2004-0206; SoftCom Technology Consulting Inc. v. Olariu Romeo/Orv Fin Group S.L., WIPO Case No. D2008-0792.
The Panel finds that the entirety of the CAPITEC Mark is included in the Disputed Domain Name and that the addition of the “.com” gTLD is not distinctive.
Therefore, Complainant has demonstrated the necessary element of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy.
Section 2.1 of the WIPO Overview 3.0 states that once Complainant makes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, Respondent carries the burden of demonstrating it has rights or legitimate interests in the Disputed Domain Name. Where Respondent fails to do so, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
Paragraph 4(c) of the Policy allows three nonexclusive methods for the Panel to conclude that Respondent has rights or legitimate interests in the Disputed Domain Name:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Disputed Doman Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Disputed Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that the Disputed Domain Name resolves to a website that is active and at various times the landing page of this website has hosted links to categories of services relating to those banking services offered by Complainant. Each of the foresaid links on the landing page resolves to further pages containing links to third party websites unrelated to Complainant.
Complainant implies that any of the goods and services offered by Respondent cannot be bona fide or legitimate because they were designed to be misleading to Internet users searching for Complainant. Complainant alleges that this use is commercial because it is on a pay-per-click basis.
Complainant avers that there is no information on the website to identify Respondent. The words “New Media Investments” is contained in the email addresses on the Whois search results. When searching “New Media Investments” on the website to which the Disputed Domain Name resolves, the search function resolves to a page with links to third party websites, named “banyanbill.com”; “money morning.com”; “about.com” and “safepcexpert.com”.
Complainant explains that in an effort to identify Respondent, a Google search for New Media Investments reveals an unrelated company, which owns, operates and invests in local media assets. The contact details of the company do not correspond with the WhoIs search results for the disputed domain name.
Based upon this lack of information, Complainant alleges that Respondent is not commonly known by the Disputed Domain Name.
The Panel finds that Complainant has made a prima facie showing that each of the elements in paragraph 4(c) of the Policy is lacking and therefore Respondent has no rights or legitimate interests in the Disputed Domain Name.
Respondent has not contested this prima facie case and the Panel can find no facts in this record to support an assertion that Respondent has rights or legitimate interests in the Disputed Domain Name.
The Panel finds that Complainant has made an adequate showing for lack of rights or legitimate interests under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithComplainant contends that Respondent registered and is using the Disputed Domain Name in bad faith in violation of paragraph 4(a)(iii) of the Policy.
Paragraph 4(b) of the Policy sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names:
(i) circumstances indicating that you [Respondent] have registered or you have acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name to Complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Disputed Domain Name; or
(ii) you [Respondent] have registered the Disputed 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 you have engaged in a pattern of such conduct; or
(iii) you [Respondent] have registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Disputed Domain Name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the CAPITEC Mark as to the source, sponsorship, affiliation, or endorsement of your website or location of a product.
Complainant contends that Respondent has registered and is using the Disputed Domain Name in bad faith pursuant to paragraph 4(a)(iii) of the Policy. Complainant further contends that by diverting traffic to third parties using paid link advertisements, Respondent is using the Disputed Domain Name to create a likelihood of confusion for its own commercial purposes. As a result, the principal use of the Disputed Domain Name is to host a landing page designed to produce pay-per-click revenue from the sponsored links thereon that click through to advertisements and sponsored links resolving to third party websites. Complainant submits that Respondent can have no legitimate reason to utilize Complainant’s CAPITEC Mark and was not authorized to do so. Respondent is using the Disputed Domain Name for commercial gain misleadingly to divert customers or to tarnish the CAPITEC Mark.
Respondent has not contested the allegations of bad faith by Complainant.
Based upon the record, the Panel finds that Complainant has shown bad faith under paragraph 4(b)(iv) of the Policy and satisfied the requirements of paragraph 4(a)(iii).
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 <capitec.com> be transferred to Complainant.
Richard W. Page
Sole Panelist
Date: April 19, 2018
