WIPO Case No. D2019-1183
August 6, 2019
It is easy to allege or assert bad faith. But how do you prove it? Often, complainants fail in their attempts to do so. In Nedbank Limited v. Zhang Guo Jie, where one of South Africa’s largest banks failed to obtain transfer of the domain name <netbank.online>, the decision has much to tell us about ‘bad faith’ registration of a domain name, which ultimately the bank was unable to show, and how it could have been proved had the facts been different.
Nedbank Limited owns the trademark NEDBANK in many countries including China and also owns NETBANK but only in South Africa. The domain name <netbank.online>, which does not resolve to an active website was registered by Jie in early 2019.
The domain name was confusingly similar to NEDBANK and identical to NETBANK, so the complainant won on the first element. But could you assume the Respondent did not have a right or legitimate interest in the domain name? No, you could not, because so many other parties were using NETBANK that you could not say the complainant had the exclusive right to use it and, moreover, it consisted of two generic words that were being combined in the domain name and when you put that together with the fact that there had been no targeting of the Complainant by Jie, you could not say he had no right to register the domain name.
But the real issue was whether there had been bad faith registration and use.
The Respondent’s intention is relevant to the ‘bad faith’ element of the claim but can be difficult for claimants to prove. Accordingly, like all courts and tribunals, a UDRP panel often has to resort to drawing inferences from whatever evidence there is. The problem in the present case was that there was nothing from which an inference of bad faith could be drawn.
Nedbank suggested that Jie did not have an active website at the domain name, but this too tenuous to prove bad faith a claim and was dismissed by the Panel. As the Panel said :“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” which had not been demonstrated, because there was no evidence that Jie had targeted Nedbank or even knew of its trademark at the time of registration.
Nedbank also relied on the fact that Jie had registered over 7000 domain names, and that it was possible that he intended to ‘squat and sell’ as a matter of course. But as the panel pointed out, this did not, by itself, show bad faith. In any case, many of the domain names registered were generic words, so the Respondent had a right to register them.
There was also evidence suggesting the Respondent might have sold the domain name for EUR 5000. But that also did not mean that the domain name was originally acquired for the purpose of selling it for profit to the Complainant or a competitor, which is bad faith under the policy.
Accordingly, there was really nothing that unequivocally showed bad faith. In other words, the evidence was not good enough, showing yet again that these cases are won- and lost- on the clarity and strength of the evidence.