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#Netbank .Online : Trademark holder failed to snatch #domain at the #WIPO

ZFBot

Nedbankwith a “d” – is one of the five largest banks in South Africa and has been in existence since 1831.

They operate from the domain Nedbank.co.za, and filed a UDRP against the registrant of Netbank.Online spelled with a “t.”

According to the UDRP, the Complainant is the proprietor of various NEDBANK trademarks in many African countries and also around the world, including in China, where the Respondent resides. They also own trademarks for NETBANK.

And yet, they managed to lose the UDRP on some strange technicalities! For example, the Complainant’s submission of evidence that the domain was offered for sale for 5,000 euro, did not sway the panelist to their direction.

The Respondent laid out their arguments as such:

(1) The Respondent registered the disputed domain name on January 29, 2019.

(2) “Netbankonline” is a generic term used in the online banking industry. Even if the Complainant registered its trademark NETBANK in a particular country, the trademark rights cannot be admitted in China or internationally.

(3) “Nedbank” is a common combination of the letters “N/E/D” and the word “Bank” having no literal meaning, and has no association with “netbank”.

(4) The Respondent has rights and legitimate interests in the disputed domain name. Since the term “netbank” is a generic term meaning “online bank”, anyone can register freely and legally relevant domain names incorporating the term and different Top-Level Domains on a first-come, first-served basis. The Respondent did not receive, and it was impossible for the Respondent to receive any reminder or warning against the registration of the disputed domain name when registering. The Respondent legally and reasonably registered and used the disputed domain name. The disputed domain name does not resolve to any website and the Respondent has no intention to distract the attention of consumers nor to damage the Complainant’s reputation. The Respondent only plans to use the disputed domain name for the purpose of news relating to online banking technology or software development.

According to the sole panelist at the WIPO, the issue is with the use of the NETBANK mark not being used solely by the Complainant; other banks do.

In our opinion, this decision did not deliver an accurate depiction of the Complainant’s rights, as it denied the domain’s transfer. How is this possible?

Details on this decision follow:

The domain transfer was denied.

Nedbank Limited v. Zhang Guo Jie
Case No. D2019-1183

1. The Parties

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

The Respondent is Zhang Guo Jie, China, self-represented.

2. The Domain Name and Registrar

The disputed domain name <netbank.online> is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the “Registrar”).

3. Procedural History

The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 23, 2019. On May 23, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 24, 2019, 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 May 29, 2019, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Respondent requested that Chinese be the language of the proceeding on May 30, 2019. The Complainant requested that English be the language of the proceeding on May 30, 2019.

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 June 5, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 25, 2019. The Respondent sent email communications on June 5, 13, 18, and 19, 2019. The Response in Chinese was filed with the Center on June 20, 2019 and an amended Response in Chinese was filed on June 21, 2019. In reply to the Amended Response, the Complainant sent an email communication on June 27, 2019, inquiring about whether it would be allowed to amend the Complaint or to file a supplemental filing, and submitted a supplemental filing on July 9, 2019. On the same day, the Respondent sent an email claiming again that the Complaint was brought in an attempt at Reverse Domain Name Hijacking.

The Center appointed Douglas Clark as the sole panelist in this matter on July 13, 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

The Complainant is a South African public company with its registered address in Johannesburg, South Africa. It is a provider of financial and banking products and services. Its “Nedbank” business is one of the five largest banks in South Africa and has been in existence since 1831. The Complainant is the proprietor of various NEDBANK trademarks in many African countries and also around the world, including in China. The Complainant is also the proprietor of South African registered trademark no. 1996/16368 for the word mark NETBANK, registered on October 7, 1999 in respect of various financial services.

The Complainant’s website for online banking services is found at “www.netbank.nedsecure.co.za”. The Complainant has been the registrant of the domain name <netbank.co.za> since January 11, 1997. In addition, the Complainant’s primary website is situated at “www.nedbank.co.za”. The domain name <nedbank.co.za> was registered on June 9, 1996.

The Respondent is an individual resident in China. The Respondent registered the disputed domain name on January 29, 2019. The disputed domain name does not resolve to any active website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name <netbank.online> is identical with the trademark NETBANK and also confusingly similar to the trademark NEDBANK, both in which the Complainant owns rights.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. Neither the Respondent was authorized by the Complainant to use the NETBANK/NEDBANK trademark as part of the disputed domain name nor did he have any association with the Complainant in any way.

The Complainant contends that the disputed domain name was registered and is being used in bad faith. The Respondent appropriated the disputed domain name purely to derive a benefit from the Complainant’s substantial reputation by misleading people and/or business to believe that the disputed domain name is registered to, operated or authorized by, or otherwise connected to the Complainant. The fact that the disputed domain name does not resolve to any active website does not mean that it was not registered in bad faith because there can be no explanation as to why its use could ever be in good faith. Further, the Complainant had in December 2018 sent a warning letter to the previous owner of the disputed domain name and the registrant of the disputed domain name changed soon thereafter. The Complainant also submits that the registrant has registered or acquired the disputed domain name primarily for the purpose of selling or otherwise transferring the disputed domain name for a valuable consideration in excess of the registrant’s out-of-pocket costs directly related to the disputed domain name. There is further a real risk that the Respondent may decide to sell the disputed domain name to a competitor of the Complainant. Given the nature of the services offered by the Complainant using its trademarks NEDBANK and NETBANK, being banking services which includes online services, the importance of the disputed domain name being owned and controlled by the Complainant, is self-evident, especially when the Complainant already owns and uses the domain names <nedbankonline.co.za> and <nedbankonline.com>.

The Complaint further submitted a supplemental filing responding to the Respondent’s Response and stating that the Respondent’s suggestion made in an email to the Centre that he may consider transferring the disputed domain name if a payment of at least EUR 5,000 was made was obviously in bad faith. The Complainant also made the following submissions to seek to establish the bad faith of the Respondent: (a) that the Respondent had been ordered to transfer the domain name <klarna.online> in Klarna AB v. Guo Jie Zhang, Zhang Guo Jie, WIPO Case No. D2017-0734; (b) that the Respondent has registered other 7,000 domain names incorporating other well-known trademarks, and the number has increased since the decision of Klarna AB v. Guo Jie Zhang, Zhang Guo Jie, supra, which revealed over 5,000 domain names registered in his name; (c) the Respondent is engaged in a pattern of registration of a series of well-known marks, which as was concluded in the decision of Virgin Enterprises Limited v. Zhang Guo Jie, WIPO Case No. D2018-0530.

B. Respondent

The Respondent replied as follows:

(1) The Respondent registered the disputed domain name on January 29, 2019.

(2) “Netbankonline” is a generic term used in the online banking industry. Even if the Complainant registered its trademark NETBANK in a particular country, the trademark rights cannot be admitted in China or internationally.

(3) “Nedbank” is a common combination of the letters “N/E/D” and the word “Bank” having no literal meaning, and has no association with “netbank”.

(4) The Respondent has rights and legitimate interests in the disputed domain name. Since the term “netbank” is a generic term meaning “online bank”, anyone can register freely and legally relevant domain names incorporating the term and different Top-Level Domains on a first-come, first-served basis. The Respondent did not receive, and it was impossible for the Respondent to receive any reminder or warning against the registration of the disputed domain name when registering. The Respondent legally and reasonably registered and used the disputed domain name. The disputed domain name does not resolve to any website and the Respondent has no intention to distract the attention of consumers nor to damage the Complainant’s reputation. The Respondent only plans to use the disputed domain name for the purpose of news relating to online banking technology or software development.

(5) The Complainant has no rights or legitimate interests in the domain name <netbank.com> itself, and “netbank.online” is not registered as a trademark in China. Besides, <netbank.cn> has already been registered by a company in Hangzhou, China, and thousands of domain names incorporating the word “netbank”, e.g., <netbank.wang>, <netbank.top>, <netbank.com.cn>, etc., have already been registered by other companies. The fact that the Complainant owns the domain names <netbank.co.za> and <netbank.org> cannot support the Complaint. The term “netbankonline” has not been registered in China as a trademark. The Complainant cannot prohibit legitimate registrants like the Respondent from using the disputed domain name. (The evidence submitted by the Respondent did, however show that 杭州网银互联科技有限公司 and the Commonwealth Bank of Australia had registered NETBANK as a trademark in China.)

(6) The Respondent did not register and use the disputed domain name in bad faith. The Respondent did not seek to sell, rent or transfer the disputed domain name. The Respondent was not a competitor with the Complainant.

(7) Doman names incorporating “netbank” are open for registration internationally. The Complainant’s domain name <nedbank.online> was registered after the disputed domain name <netbank.online>, and therefore the Respondent cannot possibly create a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation of the Respondent’s website or location.

(8) The Respondent responded to the Complainant’s supplemental filing that “Netbank” was a generic term and the Respondent confirmed again that he wished to bring a claim for reverse domain name hijacking.

Further, as noted above, the Respondent responded to the Center’s email of notification of the Complaint that he could have considered transferring the disputed domain name to the Complainant with friendly negotiation and a compensation of at least EUR 5,000.
6. Discussion and Findings
A. Language of the Proceeding

Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

The Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese. The Complainant requested the language of the proceeding to be English on the ground that (1) the service agreement found on the registrant’s website is in English, (2) the previous letter sent to the prior registrant of the disputed domain name was in English, and (3) English is the Complainant’s working language and the dominant language of business and international communications.

The Respondent was invited to submit his language request regarding the language of the proceeding by the Center’s email in English and Chinese. The Respondent replied in Chinese on a number of occasions requesting the language of the proceeding to be Chinese as he could not understand English.

The Respondent however ultimately filed his Response in Chinese which showed he had sufficiently understood the Complaint. The Complainant responded to the Response in English showing it had been able to understand (or had translated) the Response. Further, the Panel notes that the Respondent was involved in two previous UDRP proceedings in which the panels had decided that the language of the proceeding should be in English. See Klarna AB v. Guo Jie Zhang, Zhang Guo Jie, supra, and Virgin Enterprises Limited v. Zhang Guo Jie, supra.

In light of the above, the Panel accepts the Complaint filed in English and the Response filed in Chinese.

The Panel will render its decision in English.

B. Admission of Supplemental Filings

Paragraphs 10 and 12 of the Rules, in effect, grant the Panel sole discretion to determine the admissibility of Supplemental Filings (including further statements or documents) received from either Party.

The submission regarding the possible price of Euro 5,000 being evidence of bad faith was apparent to the Panel. However, it was a matter that arose after the Complaint was filed so it was appropriate for the Complainant to make this submission. The Panel further notes that at the time when the Complaint was filed, the Respondent’s contact details were not available in the public WhoIs database. They were only revealed by the Registrar after the complaint was filed. As a result, the Complainant was not able to use the Respondent’s email address to conduct a reverse WhoIs search before filing the Complaint.

In light of the above, the Panel accepts the Complainant’s supplemental filing of July 9, 2019, which would not cause any prejudice to the Respondent noting the Respondent replied to this supplemental filing on the same day by reiterating that “Netbank” was generic and again making a claim for Reverse Domain Name Hijacking. The Panel also admits this response from the Respondent.

C. Substantive Decision

Paragraph 4(a) of the Policy sets out three elements that must be established by a complainant to obtain relief. These are:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(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.

Identical or Confusingly Similar

The disputed domain name <netbank.online> is, other than the generic Top-Level Domain (“gTLD”) “.online”, identical with the Complainant’s trademark NETBANK. In general, the gTLD may be ignored when considering identity or confusing similarity.

The Panel notes that on the evidence filed the Complainant has only registered NETBANK as a trademark in South Africa. The ownership of a trademark is generally considered to be a threshold standing issue. The location of the trademark, its date of registration (or first use) and the goods and/or services for which it is registered, are all irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP. These factors may however bear on a panel’s further substantive determination under the second and third elements. (See section 1.1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

With regards to the Complainant’s trademark NEDBANK, the one letter difference between the term “netbank” and NEDBANK establishes confusing similarity for the purposes of the first element of paragraph 4(a) of the Policy.

The first element of paragraph 4(a) of the Policy is therefore satisfied.

Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires a Panel to determine that a Respondent has no rights or legitimate interests in the disputed domain name. The burden of proof is to make this element out, however if a Complainant can make out a prima facie case the Respondent has no rights or legitimate interests the burden of proof is reversed. (See Section 2.1 of the WIPO Overview 3.0)

The Complainant’s case as set out in its Complaint is that it would not be lawful for the Respondent to use “NETBANK” without the authorization of the Complainant.

The Complainant has submitted evidence that it has a very extensive portfolio of trademark registrations for NEDBANK around the world. However, and importantly, the Complainant has only produced evidence that it holds one trademark registration for NETBANK. That registration is in its home country, South Africa.

The Respondent has responded that “netbank” is made up of two generic terms “net” and “bank”; that many other companies use the term “netbank”; and, that “netbank” is not exclusive to the Complainant worldwide. The Respondent submitted evidence that, for example, <netbank.cn> is owned by 杭州网银互联科技股份有限公司 (“Hangzhou Netbank”). The Respondent further submitted evidence that the trademark “NETBANK” has been registered in China in Class 36 (which covers banking services) by the Commonwealth Bank of Australia and in Class 38 by Hangzhou Netbank.

A cursory Google search also reveals the use of “netbank” by other banks either as a brand name or as the name of a service. These include the Commonwealth bank of Australia with a link to “log in to my Netbank”; “www.netbank.de” which is a link to a “Netbank” service provided by Augsburger Aktienbank AG; a link to “Nordea Corporate Netbank; a link to “Netbank – Trust Merchant Bank S.A” in Belgium; as well as links to services under the word Netbank in Hungary, Turkey, Greenland and the Carribean region. (See section 4.8 of the WIPO Overview 3.0 for the power of the Panel to conduct independent research. The Panel notes that in Nedbank Limited v. Domain Flipper / Super Privacy Service Ltd c/o Dynadot / Rathish, WIPO Case No. D2018-2632, the Complainant – who was represented by the same attorneys as in this case – did submit a Google search results for “Netbank”, but elected not to in this case. In this case, they did submit Google search results for “Nedbank”).

This evidence is that many companies around the world use “netbank”.

The Complainant does have extensive rights in the trademark NEDBANK, including in China. However, in this case the difference between NETBANK and NEDBANK is important. In the context of online banking “netbank” is made up of two generic words. While NEDBANK is distinctive and similar to “netbank”, given the descriptive nature of “netbank” and the widespread use of “netbank” by other companies the similarity between NEDBANK and “netbank” is not sufficient in the Panel’s view and based on the evidence before it for internet users to automatically assume there is a link between “netbank” and NEDBANK so as to mean that the Respondent cannot use “netbank” without the authorization of the Complainant.

The Complainant has, therefore, failed to establish that the Respondent has no rights or legitimate interests in the disputed domain name. “netbank” is not exclusively owned or used by the Complainant as either a trademark or domain name and its registrations for NEDBANK are not, in this Panel’s view sufficient to exclude the Respondent from using “netbank”.

The second element of paragraph 4(a) of the Policy is not satisfied.

Registered and Used in Bad Faith

Given the finding in relation to rights or legitimate interests, the Panel does not, strictly speaking, need to deal with the question of registration and use in bad faith. Nevertheless, because the Panel needs to consider whether to make a finding of Reverse Domain Name Hijacking, the Panel will consider the arguments of the Complainant.

The Complainant relied on a warning letter sent to the previous domain name owner as actual notice of the Complainant’s rights. However, there is no evidence of any link between the previous owner and the Respondent. The Panel cannot therefore rely on the warning letter as notice to the Respondent.

The Respondent has not used the disputed domain name. There is no evidence that the Respondent specifically targeted the Complainant in registering the disputed domain name or that he knew of the Complainant’s rights in NETBANK when registering the disputed domain name.

To establish bad faith, there needs to be some evidence of a link between the registration and use of the domain name and the trademark holder. There was none shown in the initial Complaint. In its supplemental filing, the Complainant relies on three points to establish bad faith. These are:

(a) That the Respondent registered 7,000 other domain names. A reverse WhoIs search for the email address for the Respondent that was provided by the Registrar of the disputed domain name was exhibited with a list of domain names including numbers and commencing with the letters “a” and “b” exhibited.

(b) That in Klarna AB v. Guo Jie Zhang, Zhang Guo Jie, supra and Virgin Enterprises Limited v. Zhang Guo Jie, supra, the panels in those case ruled against the Respondent in relation to the domain name <klarna.online> and <virginmobile.online>;

(c) That the mention by the Respondent in an email of EUR 5,000 as a possible price to sell the disputed domain name to the Complainant was clear evidence of bad faith.

The fact the Respondent has registered over 7,000 domain names is not evidence of bad faith in itself. In order to rely on paragraph 4(b)(ii) of the Policy it is necessary to establish a pattern of conduct in registering the trademarks of others as domain names. No submission has been made (other than the <klarna.online> and <virginmobile.online> cases dealt with below) that any of these domain names infringe other parties’ rights. The Panel did review the list itself and notes that many of the domain names appear to be entirely generic, such as, <5179.online>, <aimei.tech> and <appcloud.online>, but that others may be considered to include the trademarks of well-known trademark owners, for example, <applepay.top> and <airbnb.online>.

The <klarna.online> case, Klarna AB v. Guo Jie Zhang, Zhang Guo Jie, supra, relates to what appears to be a distinctive trademark where it was open to the panel of infer bad faith because, as the panel held it that case, it was implausible “that the similarity between the disputed domain name and the Complainant’s trademark is coincidental.” Similarly, in the <virginmobile.online> case (Virgin Enterprises Limited v. Zhang Guo Jie, supra) the panel found the VIRGIN trademark to be “one of the world’s most well known trademarks” and that it was “implausible [the Respondent] was unaware of the Complainaint.”

The foregoing two paragraphs do, however, show that the Respondent appears to register domain names that are the brands of other companies. Paragraph 4(b)(ii) of the Policy provides that the following may be evidence of bad faith:

“you have 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 you have engaged in a pattern of such conduct”.

The Panel notes that the registration must be in “order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name.” Put simply, the question is: did the Respondent target a trademark owner?

The Respondent’s suggestion that the disputed domain name might be transferred for EUR 5,000 raises similar issues. Paragraph 4(b)(i) of the Policy provides the following may be evidence of bad faith:

“circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name.”

The mention of EUR 5,000 as a potential price for the disputed domain name is a circumstance that indicates the disputed domain name was acquired for the purpose of selling it. The key question is, however, was the disputed domain name registered for the purpose of selling it to a trademark owner?

This is indeed possible given the evidence that a number of other banks use the word “netbank” and at least one of them has registered NETBANK as a trademark in China. The Respondent’s case that he registered the disputed domain name because it is made up of two generic terms is believable even though the Respondent has not provided evidence as to his intended use of the disputed domain name. He may well be willing to sell the disputed domain name, but that is in itself not objectionable unless there is evidence a trademark owner has been targeted at the time the domain name was registered.

Without evidence the Respondent was targeting a trademark owner such as the Complainant at the time he registered the disputed domain name, given the generic nature of the disputed domain name and the possibility to use it for non-trademark purposes, on the evidence before it, the Panel is not able to find that the Respondent was either (i) trying to prevent the Complainant from registering its trademark as a domain name or (ii) intending to sell the disputed domain name to the Complainant (or, indeed, another trademark owner) at the time he registered the disputed domain name.

The Panel notes the Complainant did succeed in a complaint in relation to the domain name <netbank.org> in early 2019 Nedbank Limited v. Domain Flipper / Super Privacy Service LTD c/o Dynadot / Rathish, supra. However, in that case there was evidence that the Respondent had targeted the Complainant (as well as evidence to establish the lack of rights or legitimate interests of the respondent).

In this case, the Complainant has, however, failed to establish the disputed domain name was registered in bad faith.

The third element of paragraph 4(a) of the Policy is not satisfied.

7. Reverse Domain Name Hijacking

The Panel does not consider that the facts of this case establish the Complaint was filed in bad faith so as to justify a finding of Reverse Domain Name Hijacking. While finding against the Complainant, the matter was not so simple for the Panel to say the Complainant must have known it would not succeed in its Complaint.

8. Decision

For all the foregoing reasons, the Complaint is denied.

The Respondent’s request for a finding of Reverse Domain Name Hijacking is also denied.

Douglas Clark
Sole Panelist
Date: August 6, 2019


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Comments

2 Responses to “#Netbank .Online : Trademark holder failed to snatch #domain at the #WIPO”
  1. john andrews says:

    I don’t understand your comment “this decision did not deliver an accurate depiction of the Complainant’s rights, as it denied the domain’s transfer. How is this possible?”

    It’s all laid out in the decision. Specifically, that NedBank operates as Nedbank (not NetBank) despite owning a domain or two and a trademark limited to its home country. Since “generic” NetBank is eligible to be used by others (and is used by others), it can be used by the Respondent, too.

    A win for free markets, and a slap for overly-greedy TM holders (and their service-providing lawyers) who seem to want to stifle competition by “owning” generic terms, without having to do the corresponding work to earn market share/trademark status.

  2. DomainGang says:

    john andrews – Clearly they own NETBANK trademarks, the fact that there are other “netbank” operators around the globe does not lead to the genericide of the mark.

    Overly-greedy TM holders? I think you’re *slightly* operating with a touch of bias on that. Nobody wants serial TM-infringers to win either, surely.

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