WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
National Australia Bank Limited v Quality Systems Consulting – QSC Pty Ltd
Case No. D2000-0765
1. The Parties
The Complainant is National Australia Bank Limited (ACN 004 044 937), a company incorporated in Australia and having its principal place of business at 500 Bourke Street, Melbourne, Victoria, 3000, Australia.
The Respondent is Quality Systems Consulting – QSC Pty Limited, a company incorporated in Australia and having its principal place of business at 10 Wisebeach Street, Balmain, 2041, Australia.
2. The Domain Names and Registrar
The Domain Names at issue are:
The Registrar with which the Domain Names are registered is Internet Domain Registrars, 475 Sansome Street #1730, San Francisco, California 9411, USA.
3. Procedural History
A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on July 12, 2000, the signed original in hard copy form having been received by the WIPO Center on July 10, 2000. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant on July 13, 2000.
On July 13, 2000, a Request for Registrar Verification was transmitted to the Registrar, Internet Domain Registrars, requesting it to: (1) confirm that the Domain Names at in issue were registered with the Registrar; (2) confirm that the person identified as the Respondent is the current registrant of the Domain Names; (3) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)) available in the Registrar’s "Whois " database for the registrant of the disputed Domain Names, the technical contact, the administrative contact and the billing contact; (4) confirm that the Uniform Domain Name Dispute Resolution Policy (the "Policy") is in effect; and (5) indicate the current status of the Domain Names.
On July 18, 2000, the Registrar confirmed by e-mail that the Domain Names are registered with the Registrar, are currently under a registrar-hold status pending resolution of this dispute and that the Registrant for each of the Domain Names is identified in the Register as:
"Quality Syatems Consulting (sic), PO Box 242, North Sydney, New South Wales, 2049, Australia."
The Registrar also forwarded the requested "Whois" details. The Registrar did not in its Response deal with the question of whether the Policy was in effect.
The Complaint has addressed the question of apparent incomplete identification of the Registrant in the "Whois" details and the apparent miss-spelling. Annex 2 to the Complaint is an extract from the database of the Australian Securities and Investment Commission identifying the company "Quality Systems Consulting – QSC Pty Limited (Australian Company Number 061978710)" having a registered office of 10 Wisebeach Street, Balmain, NSW 2041.
Annex 3 to the Complaint comprised a copy of the Policy and the registration agreement pursuant to which the present Domain Names are subject.
The WIPO Center determined that the Complaint satisfies the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 (the "Policy"), the Uniform Rules, and the Supplemental Rules. The required fees for a single member Panel were paid on time and in the required amount by the Complainant.
No formal deficiencies having been recorded, on July 18, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, the Registrar and ICANN), setting a deadline of August 6, 2000, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by e-mail to the e-mail addresses indicated in the Complaint and specified in the Registrar’s confirmation. In addition, the Complaint was sent by courier to the postal address given.
On August 6, 2000, the WIPO Center received a Response on behalf of the Respondent and on August 10, 2000, the WIPO Center received a reply on behalf of the Complainant to the Response by fax by way of confirmation of an e-mail version of the Response transmitted August 9, 2000.
On August 23, 2000, in view of the Respondent’s acceptance of a single member panel, WIPO Center appointed John Terry to serve as sole Panelist.
On June 9, 2000, the WIPO Center notified the parties that John Terry had been appointed as the Panel and set the projected decision date as September 5, 2000.
4. Factual Background
The present Domain Names were registered on January 21, 2000.
The certified Complaint states that the Complainant is Australia largest bank and is the parent company of an international financial services group with interests in United Kingdom, Ireland, Asia, Australia, New Zealand and United States. The before-tax operating profit in 1999 was stated to be A$4,141 million. The Complainant is the successor entity to the National Bank of Australasia Limited which commenced operation in 1858. In 1983 a merger of this entity with another banking company took place and the new entity operated under the business name "National Australia Bank" and a formal change of the corporation name to match the business name took place in 1984.
For present purposes, it is sufficient to note that the Complaint summarizes the extensive business of the Complainant and states that since October 1998 the Complainant’s products and services have been offered under or by reference to the trade mark "National" and particularly during the period to October 1998, the principal identifier of the services of the Complainant was by the designation "National Australia Bank" or "National Australia".
The Complaint summarizes activities of the Complainant and concludes with an assertion, which is not denied by the Respondent and which the Panel accepts, that in relation to the Complainant "No resident in Australia could be unaware of its identity in connection with the trade mark ‘National Australia Bank’. The unregistered trade mark ‘National Australia Bank’ is instantly recognizable as describing the National Australia Bank both in Australia and overseas due to the National Australia Bank’s extensive trading and significant advertising expenditure."
The Complainant certifies it is the owner of several Domain Names, namely:
Solicitors representing the Complainant sent letters of demand to the Respondent and its directors in March 2000 shortly after the Complainant first became aware of two of the present Domain Names. The Complainant’s solicitors received in an e-mail reply on or about March 23, 2000. This correspondence is annexed to the Complaint. The letter of demand on behalf of the Complainant demanded transfer of two identified Domain Names and stated that after transfer "the National Australia Bank will reimburse you for your reasonable registration costs". The e-mail received March 24, 2000 by the Complainant’s solicitors has stated the reply was on behalf of the Respondent, provided assurances and undertakings and stated that "We are more than happy to transfer the domain names "nationalaustraliabank.net" and "nationalaustraliabank.org" at a reasonable fee as offered by you".
Following a "without prejudice" discussion between the solicitor representing the Complainant and a director of the Respondent, the Complainant’s solicitors in a letter forming an annex to the Complaint affirmed that the Complainant was prepared to reimburse the Respondent for its "reasonable costs in having registered the domain names" in issue and requested copies of proof of payment of the registration cost and stated:
"If you consider there are other reasonable costs involved with the registration of each of these domain names, we suggest you submit details of those as well."
This letter was apparently sent by fax, e-mail and registered post on March 27, 2000 and concluded:
"Please note that if you do not provide this information within 7 days of the date of this letter, our client will assume that you no longer intend to transfer the domain names and will take action accordingly."
The Complaint states that on or about April 3, 2000, the Complainant’s solicitor received a reply letter from the Respondent purporting to be on a "without prejudice" basis and setting out purported registration costs which the Complainant could not accept and this letter further revealed the existence of the three additional ones of the present Domain Names.
The Response, as will be discussed below in more detail, contends that the Complaint should be dismissed inter alia as lacking jurisdiction. A factual basis for this contention is that the Respondent did not receive a Response in relation to its offer made on or about April 3, 2000 and dealing with the reasonable reimbursement issue and the next communication was a copy of the present Complaint. The legal submission was made that a binding agreement was in place relating to transfer of the Domain Names at issue.
The solicitor for the Complainant filed a reply to the Response by e-mail and fax respectively on August 9 and August 10, 2000. That reply contained various contentions and legal submissions which will be dealt with below. This reply added to the factual background to this matter by certifying that a representative of the Respondent, in the telephone discussion with the Complainant’s solicitor on or about March 24 2000, stated that $2,000 was a reasonable sum for the transfer of the Domain Names and the Complainant’s solicitor stated that the Respondent was asking for an unreasonable sum and that the Respondent should not expect to make a profit from this transaction. A copy of a letter dated April 3, 2000 from the Respondent to the Complainant’s solicitor is reproduced as an annex to the Reply and stated to be in terms of a "without prejudice" offer to accept $2,350 as reimbursement of costs and expenses in respect of registering the present Domain Names. Itemization was provided that included just US$300 as the out-of-pocket expense in registering the present Domain Names.
The Complainant’s solicitor certified that a copy of this reply was served on the legal representative of the Respondent. No further materials or submissions have been received on behalf of the Respondent.
5. Parties’ Contentions
Firstly, the Complainant contends the present Domain Names are identical with or confusingly similar to the trademark "National Australia Bank" in respect of which the Complainant has certified it has established a very substantial reputation.
Secondly, the Complainant contends that it has not licensed or authorized the Respondent to use or register any name which is or contains "National Australia Bank", that the Respondent has not carried on any business under or by reference to the name "National Australia Bank" prior to registering the present Domain Names and accordingly that the Respondent has no rights or legitimate interests in "National Australia Bank".
Thirdly, the Complainant contends the Respondent satisfy the requirement of paragraph 4(a)(iii) of the Policy, namely that the Domain Names have been registered and are being used in "bad faith".
Fourthly, the Complainant contends that the Domain Names should be transferred to the Complainant.
Fifthly, the Complainant in its reply to the Response contends that there is a power and this is a proper case to admit materials in the reply, that there was no binding settlement agreement relating to the matters in dispute and that "without prejudice" letters written in the course of negotiation are admissible as evidence of the existence of a binding agreement and accordingly, the additional annexure Annex 14 should be admitted.
The Respondent firstly contends that the WIPO Center does not have the jurisdiction pursuant to the Rules as there exists a binding agreement between the parties prior to the commencement of these proceedings and contends that the Complaint should be dismissed.
Secondly and in the alternative, the Respondent contends the Complaint should be dismissed because the Respondent stated that "there was no intention to either assert any rights" in "National Australia Bank" and has provided an undertaking to the Complainant not to use or register the names "National Australia Bank", "National Bank", or "anything confusingly similar" and that in fact the Respondent did not carry on business under or by reference to the name "National Australia Bank" prior to registering the Domain Names.
Thirdly, the Respondent denies acting in bad faith on several grounds, but principally that there is no evidence that the Respondent was carrying on business under or by reference to the name "National Australia Bank" and no evidence of any plausible, actual or contemplated active use of the Domain Names by the Respondent. The Response does not include any submissions with regard to the principles to be applied to the present matters and does not refer to any prior Administrative Panel decision. In particular, the Complainant relies on the WIPO Administrative Panel decision of Telstra Corporation Limited v Nuclear Marshmallows, case No D2000-003. The Response does not include any submissions on this point.
6. Discussion and Findings
The Respondent does not deny that the Policy is in effect in relation to the Domain Names in issue; the Panel holds that on the materials filed, the Policy is in force and applies.
The Respondent does not challenge the Complaint in establishing that the correct identification of the Registrant is the party named as Respondent. The Panel holds that the register is in error in identifying the Registrant.
Admission of any material beyond the Complaint and the Response is a matter for the general discretion of the Panelist under Rule 10 (see WIPO Administrative Panel decision Telstra Corporation Limited v Barry Cheng Kwok Chu, case No D2000-0423.) In this case, the Panelist is satisfied that the Respondent, through its legal representative, has been given notice of the reply material and has had an adequate opportunity to seek the admission of any further materials in rebuttal but has not elected to do so. The circumstances of this case are unusual and particularly in view of the very prompt submission of reply material on behalf of the Complainant and the potentially significant content of the reply, the Administrative Panel accepts introduction of the reply material in this matter.
A contention in the Response is that material constituting "without prejudice" negotiations is not admissible, but the reply contends that such materials in the course of negotiation are admissible as evidence of the existence of a binding agreement, relying on the authority of Tomlin v Standard Telephone Cables Pty Ltd (1969) 3 AU (sic) ER 201 and Quad Consulting v David Bleakley (1991) 27 FLR 86 (sic) but reported at (1991) 27 FCR 86. The Administrative Panel accepts this submission and particularly in the light of Annex 14 attached to the reply holds that no binding agreement had ever come into place between the parties in relation to these matters as the letter of April 3, 2000 included particularisation of more than out-of-pocket costs and included purported "professional fees and time" of the Respondent. The Panel holds this to be of a nature of a counter-offer and is convincing evidence that there was no legal or binding agreement between the parties.
Even without this additional material in the reply, the Administrative Panel holds that the materials in the Complaint and Response would lead to the conclusion that there was a critical lack of clarity as to precisely the nature or manner of calculating the offered reimbursement and the Respondent had not discharged the onus upon it to establish that a legally binding arrangement had come into existence.
The Administrative Panel therefore holds that this proceeding is not to be dismissed and is to be determined on its merits.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
that the Domain Names registered by the Respondent are identical or confusingly similar to trade marks or service marks in which the Complainant has rights; and,
that the Respondent has no rights or legitimate interests in respect of the Domain Names; and,
the Domain names have been registered and used in bad faith.
The Panel holds that the Complainant has rights in trade marks or service marks comprising "National Australia Bank" and "National Australia Bank Limited" and the Domain Names at issue are identical to one or other of these trade marks since in the context of Domain Names, punctuation issues should be considered irrelevant and the only relevant portion of the Domain Names in the comparison is the second level indicator, i.e. preceding the generic top level domain identifiers ".net", ".org", and ".com". In any event, the present Domain Names are all confusingly similar with the trade marks or service marks in which the Complainant has established has acquired rights by usage. Accordingly the Panel holds the Complaint has made out element 10 of paragraph 4(a) of the Policy.
Paragraph 4(c) of the Policy sets out three circumstances and if the Respondent demonstrates that any one of them applies then this is deemed to demonstrate relevant rights and legitimate interest in a Domain Name. In this case the Respondent has not established any of the circumstances since in accordance with the complaint and on their own admissions, the Respondent has, shortly stated:
not used or made any demonstrable preparations for use of any of the Domain Names;
not been commonly known by any of the Domain Names; and
not made any legitimate non-commercial or fair use of any of the Domain Names.
Furthermore, the Respondents do not point to any other factual circumstances which could otherwise come within the ambit of establishing that the Respondents have rights or legitimate interests in respect of any of the Domain Names. Accordingly, the Complainant has made out element (ii) of paragraph 4(a) of the Policy.
Element (iii) of paragraph 4(a) of the Policy to be proven by the Complainant is that the Domain Name has been registered and is being used in bad faith. In the Telstra decision (supra) and many other later decisions under the Policy it is well established that mere inactive holding of a Domain Name in circumstances where the Respondent cannot or does not show any rights or legitimate interest can be sufficient to establish "use in bad faith". Active use is not required. Furthermore, the circumstances in the present matter closely parallel those on which the Administrative Panel in the Telstra case found for the Complainant, namely Domain Names characterised by words forming the name or part of the name and trade mark in respect of which great fame exists at least in Australia and no plausible reason whatsoever is advanced by the Respondent for it having registered Domain Names so characterized.
Taking into account the materials in the Complaint and Response, but setting aside entirely the Complainant’s reply to the Response, the evidence filed fully demonstrates that the Domain Names include or comprise a famous trade mark of the Complainant and the facts set out are sufficient to establish such a prima facie case of bad faith registration and use as to shift the burden to the Respondent to rebut, if it can, the prima facie case. The Response notes that the Respondent has stated to the Complainant that the Respondent never had any intention either to assert any rights or making representations to the public by virtue of registering the present Domain Names and that it has not carried on a business under or by reference to the name " National Australia Bank"; furthermore the Respondent had provided an undertaking not to use or register the names "National Australia Bank", "National Bank" or "anything confusingly similar". It follows that in these circumstances, continuing to hold the Domain Names constitutes use in bad faith and a fortiori in circumstances where agreement in principle to transfer is made by the Respondent, but the Respondent then engages in without prejudice negotiations in relation to payment of money, there is use in bad faith within the meaning of paragraph 4(a)(iii) of the Policy and furthermore the original registrations of the Domain Names are held to be in bad faith.
Paragraph 9 of the Response is a denial of "acting in bad faith" and for the reasons stated above none of the points of submission are held by the Panel to be effective rebuttal. Indeed the points deal with issues not relevant and do not establish the absence of bad faith by the Respondent. For example, in paragraph 9(a) the Response asserts that there is no evidence that the Respondent was carrying on business under or by reference to the name "National Australia Bank". That statement is true but irrelevant to the issue of firstly registration and secondly use in bad faith of a Domain Name when applying the principles from the Telstra case (supra).
Paragraph 4(b) of the Policy provides four circumstances and if any one is established by the Complainant, there is deemed to be registration and use in bad faith by the Respondent, thereby establishing paragraph 4(a)(iii) of the Policy.
Circumstance (i) applies where the Respondent registered a domain name primarily for the purpose of selling, renting or otherwise transferring the name of the registration for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name. Having regard to the evidence in the Complaint only, the Panel holds that a rebuttable inference must be drawn that circumstance (i) applies; having regard to the evidence in the Response, there is nothing in rebuttal in that there is no statement as to the intentions or purposes of the Respondent in registering the present Domain Names. There was an opportunity in the Response, not taken, to prove, if that were the case, that the Respondent sought only out-of-pocket costs to be reimbursed. Accordingly, the Panel finds that circumstance (i) of paragraph 4(b) is made out and that is sufficient as an additional and alternative basis to establish the third element to the paragraph 4(a).
Furthermore, in addition and in the alternative, the Panel holds that circumstance (ii) of paragraph 4(b) is established since the Response does not rebut the prima facie case that there is here a series of Domain Names for extremely famous names and marks of the Complainant and the Panel is satisfied that in the context by registering a series of five such Domain Names, the Respondent is engaged in a pattern of conduct which prevents the Complainant from reflecting its mark in a corresponding domain name. Thus, an alternative basis for finding the establishment of circumstance (iii) of the paragraph 4(a) of the Policy applies.
Even if the contrary view were taken as to the establishment of the circumstances in paragraph 4(b)(i) and/or (ii) as discussed above, it is still sufficient for the Complainant to establish a case within the general requirement of paragraph 4(a)(iii), namely that otherwise the Domain Name has been registered and is being used in bad faith. Cases have been decided in which this general provision has applied even where none of the four exemplary circumstances in paragraph 4(b) are established (see for example Telstra Corporation Limited v Barry Cheng Kwok Chu WIPO case No. D2000-0423). Applying that approach to the present case, the Panel holds that the materials in the Complaint and the Response lead to the conclusion that the requirements of paragraph 4(a)(iii) of the Policy are made out.
Having found jurisdiction and that all the three elements of paragraph 4(a) are established, the Panel holds that the Complaint is made out.
For all of the foregoing reasons, the Panel decides that the Domain Names at issue are identical to or confusingly similar to the trade mark or service mark which had previously been used by the Complainant, that the Respondent has no rights or legitimate interests in respect of the Domain Names at issue, and that the Domain Names at issue have been registered and are being used in bad faith. Accordingly, the Panel requires, pursuant to paragraph 4(i) of the Policy, that the Domain Names at issue be transferred to the Complainant.
Dated: August 31, 2000