Decisión del Panel Administrativo nº D2016-0515 of WIPO Arbitration and Mediation Center, May 18, 2016 (case Nedbank Limited v. Gregg Ostrick, GNO, Inc.)

Resolution DateMay 18, 2016
Issuing OrganizationWIPO Arbitration and Mediation Center
DecisionComplaint denied
DominioGeneric Domains

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Nedbank Limited v. Gregg Ostrick, GNO, Inc.

Case No. D2016-0515

1. The Parties

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

The Respondent is Gregg Ostrick, GNO, Inc. of New Orleans, Louisiana, United States of America (“United States”), represented by John Berryhill, Ph.d. esq., United States.

2. The Domain Name and Registrar

The disputed domain name [greentrust.com] (the “Disputed Domain Name”) is registered with eNom, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 16, 2016. On March 16, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 17, 2016, 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 March 21, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 10, 2016. On April 6, 2016, the Respondent requested the extension of the Response due date. In accordance with the Rules, paragraph 5(b), the Center extended the Response due date until April 14, 2016.

The Response was filed with the Center on April 14, 2016.

The Complainant submitted a Supplemental Filing on April 22, 2016.

The Center appointed Nick J. Gardner, Tony Willoughby and Richard G. Lyon as panelists in this matter on May 4, 2016. The Panel finds that it was properly constituted. Each member of 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 bank incorporated in South Africa. Its origins date back to 1888. It trades under its own name. It also operates or promotes what it refers to as “The Green Trust” – further details of this appear under the Complainant’s Contentions, below. It owns a number of registered trademarks for the words “The Green Trust” which date from 1990 – for example South African trademark 1990/4674 registered with effect from June 8, 1990. These trademarks disclaim any rights in the words “green” and “trust” singly. It has in total 49 such trademarks all of which are registered in southern African countries (South Africa, Namibia, Lesotho and Botswana). The Complainant also owns a number of domain names including the words “green” and “trust”. These are discussed further below.

The Disputed Domain Name was originally created on August 18, 2004. It has been used to resolve to a parking page containing sponsored links. The content of this page is discussed further below.

The Respondent is an individual based in the United Sates who is in the business of trading in domain names. He owns a large portfolio of domain names.

The Complainant’s legal advisers have written letters of complaint to the Respondent but received no reply.

5. Parties’ Contentions

A. Complainant

The Complainant says that the Disputed Domain Name is identical to its registered trademark GREEN TRUST.

It then says that the Respondent has no rights or legitimate interests in the term “Green Trust”. The Complainant says that its use of the term “Green Trust” commenced in 1990 whilst the Disputed Domain Name was not registered until 2004. The Complainant describes its “Green Trust” as follows:

“THE GREEN TRUST funds a broad range of conservation projects from species-focused projects to urban greening projects. All these projects retain a significant focus on community-based conservation. THE GREEN TRUST supports projects which focus on the prevention of degradation of the South African natural environment, the conservation of biodiversity and the sustainable use of natural resources. This is achieved through financing, networking, programme management and project development by engaging effectively with strategic partners to access and share resources.”

And

“In 1991, the Complaint partnered with the World Wildlife Federation (“WWF”) in a joint initiative geared towards providing support and finance for programmes focused on the conservation of biodiversity in South Africa and the preservation of South Africa’s natural resources for the benefit of its people. This joint venture was named the WWF Nedbank Green Trust, and in 2016 the Complainant will be celebrating 25 years of its partnership with the WWF.”

The Complainant says it owns a number of domain names that incorporate the words “green” and “trust”, namely [greentrust.co.za], [thegreentrust.co.za], [nedbankgreentrust.co.za], [nedbankgreentrust.com], [wwfnedbankgreentrust.co.za], [wwfnedbankgreentrust.com], [wwfnedbankgreentrust.org], and [wwfnedbankgreentrust.net].

The Complainant has provided examples of promotional material and website content that it publishes. These are discussed further below.

The Complainant says that a Google search for “The Green Trust” revealed 148,000,000 results with the first 4 results and many later ones referring to the Complainant’s “The Green Trust”. It provides a print out of the first three pages of these results.

The Complainant has not provided any financial information about its “Green Trust”.

The Complainant says that the website associated with the Disputed Domain Name features various topics associated with banking and finance, such as loans, credit and banking. Furthermore, it says that when one accesses the Financing tab, for example, a number of sponsored listings related to this subject are reflected. Screen-prints of the landing page and Financing page are provided by the Complainant. It says that the selection of financial and banking related topics for the website was clearly with the Complainant in mind. It also says that it is noteworthy that many of the sponsored listings on the Financing tab (and also the Banking and Credit tabs) reference websites in South Africa, where the Complainant is located. One of the listings also features the Complainant. It says that this shows clearly the Respondent had knowledge of the Complainant’s GREEN TRUST marks and no doubt adopted the Disputed Domain Name to...

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