Investec Bank Limited v Mei Wang

WIPO Case No. D2024-2608

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Investec Bank Limited v. Mei Wang

Case No. D2024-2608

1. The Parties

The Complainant is Investec Bank Limited, United Kingdom, represented by CSC Digital Brand Services

Group AB, Sweden.

The Respondent is Mei Wang, China.

2. The Domain Name and Registrar

The disputed domain name <investec.shop> is registered with Dynadot Inc (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 26, 2024. connection with the disputed domain name. On June 27, 2024, 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.

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 of the Complaint, and the proceedings commenced on July 2, 2024. In accordance with the Rules, paragraph 5, the due date for Response was July 22, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 23, 2024.

The Center appointed Ganna Prokhorova as the sole panelist in this matter on August 2, 2024. 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

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4. Factual Background

The Complainant is an international banking and wealth management group, founded in 1974 and headquartered in London, United Kingdom. The Complainant engages in the provision of financial products and services operating through asset managements, wealth and investment, and specialist banking.

The Complainant owns several trademark registrations for INVESTEC, particularly:

- United Kingdom Trademark No. UK00001583072 for INVESTEC, registered on March 8, 1996 for

services in class 36;

- European Union Trade Mark No. 000537712 for INVESTEC, registered on March 29, 2001 for

services in class 36; and

- China Trademark Registration No. 1707710 for INVESTEC, registered on January 28, 2002 for

services in class 35.

The Complainant has a brand presence online since 1995 from its main website under the domain name
<investec.com>.

The disputed domain name was registered on December 15, 2023. It redirects to “ website, where the disputed domain name is offered for sale.

On April 29, 2024, the Complainant issued a cease-and-desist letter to the Respondent. No response was received.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainant contends that:

(1) The disputed domain name is identical to the Complainant’s trademark since it consists solely of the

Complainant’s INVESTEC trademark, and the Top-Level Domain (“TLD”), which is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.

(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not sponsored by or affiliated with the Complainant in any way. The Complainant has not given the Respondent permission to use the Complainant’s trademarks in any manner, including in domain

names. The Respondent is not commonly known by the disputed domain name. The Complainant has not of the disputed domain name’s website and has not demonstrated any attempt to make legitimate use of the disputed domain name and website. The disputed domain name is being offered for sale in an amount that far exceeds the Respondent’s out-of-pocket expenses in registering the disputed domain name.
licensed, authorized, or permitted the Respondent to register domain names incorporating the Complainant’s
trademark. The Respondent is using the disputed domain name to redirect Internet users to a “Dan.com For

(3) The Complainant and its INVESTEC trademark are known internationally, with trademark registrations

across numerous jurisdictions. The composition of the disputed domain name makes it illogical to believe
that the Respondent registered it without specifically targeting the Complainant. The disputed domain name
is currently used to redirect to a “Dan.com For Sale” page and is not being used beyond the use to advertise

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the disputed domain name for sale. The Respondent has previously been involved in UDRP disputes, which

provides evidence of a pattern of cybersquatting in which the Respondent is engaging.

The Complainant requests the transfer of the disputed domain name to it.

B. Respondent

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

6. Discussion and Findings

To succeed, in a UDRP complaint, a complainant must demonstrate that all the elements listed in paragraph

4(a) of the Policy have been satisfied, as following:

(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.

The Respondent had 20 days to submit a response in accordance with paragraph 5(a) of the Rules and failed to do so. Paragraph 5(f) of the Rules establishes that if a respondent does not respond to the Complaint, the Panel’s decision shall be based upon the Complaint. The Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complainant’s contentions.

However, concerning the uncontested information provided by the Complainant, the Panel may, where
relevant, accept the provided reasonable factual allegations in the Complaint as true. See, section 4.3 of the
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

It is further noted that the Panel has taken note of the WIPO Overview 3.0 and, where appropriate, will decide consistent with the consensus views captured therein.

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview 3.0, section 1.7.

The Complainant has shown rights in respect of the trademark INVESTEC for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is identical to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

The addition of the TLD “.shop” shall be disregarded for the purposes of assessing confusing similarity, as it is a standard requirement of registration. WIPO Overview 3.0, section 1.11.1.

The Panel therefore finds that the first element of the Policy has been established.

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B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although 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 difficult 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 (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

The Complainant has made out a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name, notably by:

1. demonstrating rights in the INVESTEC trademark and providing evidence on its goodwill which

supports the fact that the Respondent has no rights or legitimate interests in said mark;

(ii) confirming that the Respondent is neither affiliated with, nor has it been licensed or permitted to use

the Complainant’s INVESTEC trademarks or any domain names incorporating the INVESTEC trademarks;
and

1. underlining that the Respondent is not commonly known by the disputed domain name or that the

Respondent has relevant trademark rights.

The case file indicates no evidence that the Respondent has any bona fide use that would grant it rights or legitimate interests in the disputed domain name. Nor is there any evidence of the Respondent having made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, such as evidence of business formation-related due diligence/legal advice/correspondence, evidence of credible investment in website development or promotional materials such as advertising, letterhead, or business cards, proof of a genuine (i.e., not pretextual) business plan utilizing the disputed domain name, and credible signs of pursuit of the business plan, bona fide registration and use of related domain name, or other evidence generally pointing to a lack of indicia of cybersquatting intent; see WIPO Overview 3.0, section 2.2.

Additionally, the disputed domain name redirects to a “Dan.com” parking page where it is listed for sale. This suggests that the Respondent’s use of the disputed domain name is commercial and does not qualify as legitimate noncommercial or fair use under paragraph 4(c)(iii) of the Policy.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

Noting the above, the Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

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As evidenced by the Complainant, the Complainant and its INVESTEC trademark enjoy a worldwide
reputation. Therefore, under this Panel’s view, the Respondent’s choice of the disputed domain name
cannot have been accidental and must have been influenced by the fame of the Complainant and its earlier
INVESTEC trademark. Prior UDRP panels have consistently found that the mere registration of a domain
name that is identical or confusingly similar to a famous or well-known trademark by an unaffiliated entity can
by itself create a presumption of bad faith. See Carrefour SA v. Registration Private, Domains By Proxy,
LLC / 3232 33232, WIPO Case No. D2022-1952.

In light of the composition of the disputed domain name, the Panel considers that the Respondent’s redirection of the disputed domain name to “ website and offering it for sale supports the inference that the Respondent registered the disputed domain name opportunistically, primarily for the purpose of selling the disputed domain name to the Complainant, who is the owner of the INVESTEC trademark, or to a competitor of the Complainant, most likely for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name. Such registration and use of the disputed domain name constitutes bad faith pursuant to paragraph 4(b)(i) of the Policy.

More specifically, where the disputed domain name is solely comprised of the Complainant’s fanciful trademark, and is used for the sole purpose of advertising the disputed domain name for sale, there is no plausible good-faith reason or logic for the Respondent to have registered the disputed domain name. Rather, it is indicative of an intention to hold the disputed domain name for some future active use in a way which would be competitive with or otherwise detrimental to the Complainant.

Furthermore, according to the case file, the Respondent has engaged in a pattern of registering infringing domain names, preventing the rightsholders from reflecting their marks, which also prove bad faith from the part of the Respondent. Evidence of the Respondent’s pattern of bad faith registrations is shown through at least four past UDRP cases involving the Respondent, all of which found in favor of complainants. The above is sufficient evidence to demonstrate that the Respondent, displaying a pattern of such conduct, has registered domain names to prevent the owner of the respective trademarks from reflecting that mark in a corresponding domain name. See, e.g., Canva Pty Ltd. v. Nanci Nette, WIPO Case No. D2023-3651. As stated in WIPO Overview 3.0, section 3.1.2, “UDRP panels have held that establishing a pattern of bad faith conduct requires more than one, but as few as two instances of abusive domain name registration. This may include a scenario where a respondent, on separate occasions, has registered trademark-abusive domain names, even where directed at the same brand owner”.

The Panel therefore finds that the third element of the Policy has been established.

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 <investec.shop> be transferred to the Complainant.

/Ganna Prokhorova/
Ganna Prokhorova
Sole Panelist
Date: August 13, 2024