WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Macquarie Bank Limited v. Mike Smith
Case No. D2003-0890
1. The Parties
The Complainant is Macquarie Bank Limited of Sydney, New South Wales, Australia, represented by Toby Roberts of Sydney, New South Wales, Australia.
The Respondent is Mike Smith, of Top, Banana, Piggabeen, New South Wales, Australia also known as Oxford University and David Seagle.
2. The domain name and Registrar
The disputed domain name <macquarie-bank.net> is registered with iHoldings.com Inc. d/b/a DotrRgistrar.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 7, 2003. On November 10, 2003, the Center transmitted by email to iHoldings.com Inc. d/b/a DotrRgistrar.com a request for registrar verification in connection with the domain name at issue. On November 10, 2003, iHoldings.com Inc. d/b/a DotrRgistrar.com, transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform domain name Dispute Resolution Policy (the "Policy"), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 11, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was December 1, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 4, 2003.
The Center appointed David Levin QC as the Sole Panelist in this matter on December 10, 2003. 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.
In response to notification of the appointment of the Panel by email dated December 10, 2003, the Panel received an email reply from the Respondent in breach of paragraph 8 of the Rules. The email was ‘signed’ ‘Oxford (aka Macquarie Westpac Bank, ZardAus, …as noted in your transmission to me)’. No suggestion is made in the reply that the Respondent had any excuse for failing to submit his Response by the due date or at all. The Panel draws the inference from the transmission of the reply email that the Complaint has come to the notice of the Respondent and the Respondent has chosen not to put forward any facts or submissions in response to it.
4. Factual Background
The Complainant is an investment bank based in Australia. It is a listed company with over 5000 employees, having an annual profit in the last financial year in excess of AUD$330m. It trades extensively in every facet of the financial services market in Australia and selectively in 17 other countries. Since January 29, 1985, it has been trading under the name ‘Macquarie Bank Limited’ and has a substantial reputation in that name.
The Complainant has a number of trademark registrations and applications in Australia and other countries including the words MACQUARIE BANK and MACQUARIE. It is the owner of the Australian registered trademarks nos. 805905, 415326 and 805900; it has submitted an Australian trademark application no. 805904 which is under examination. In addition it has registered trademarks in the name MACQUARIE with the Macquarie circular logo device in the United States of America (75/936759/ 2539228); United Kingdom (2163321); China (2000020299); Germany (30018747.5 36/30018747); Hong Kong (2000/3417/ 12310(A-B) of 2000); Japan (2000-15617/ 4479833); Indonesia (J00-3434/ 473620); Singapore (T00/ 02974G) and in the name MACQUARIE BANK with the Macquarie circular logo device in Brazil (824200179).
The Complainant is also the registered holder of various domain names under which it operates its on-line banking business. These include <macquarie.com>, <macquarie.com.au>, and others. It registered <macquarie.com> in September 1998.
5. Parties’ Contentions
The Complainant claims that the Respondent, as registrant of the domain name <macquarie-bank.net> has submitted to the Policy. The Complainant contends that the Respondent’s domain name <macquarie-bank.net> is confusingly similar to all of the trademark registrations and applications registered by the Complainant, particularly trademark registration 805905 in Australia for the words MACQUARIE BANK. It submits that the inclusion in the domain name of the hyphen between ‘macquarie’ and ‘bank’ and the addition of the suffix ‘net’ are non-distinctive alterations for the purpose of determining whether a domain name is identical or confusingly similar to a registered mark.
Further it contends that the Respondent has no rights or legitimate interests in the domain name. It maintains that he has had no authorisation from the Complainant entitling him to the use of the name; he is not using it in connection with a bona fide offering of goods or services; and there is no evidence of his intention to do so in the future.
It also contends that the Respondent registered the domain name and is using it in bad faith. The Complainant maintains that the Respondent registered the name on May 7, 2003, a few days before the Complainant initiated a WIPO complaint, pursuant to which the domain name <macquarie-bank.com> was ultimately transferred to it. After the commencement of the WIPO complaint referred to above, Oxford University indicated that he was adopting the personal name "Macquarie" from then on. A copy of an email from ‘Oxford University’ to the Complainant, showing the adoption of the name "Macquarie" by ‘Oxford University’, is provided by the Complainant to support its contentions.
On May 26, 2003, the Complainant sent a letter by email to the Respondent setting out its rights in the ‘Macquarie Bank’ name, requesting the transfer of the domain name <macquarie-bank.net>, and offering to pay the Respondent’s registration costs and other incidental expenses. On May 26, 2003, Oxford University/Macquarie replied by email on behalf of the Respondent stating that he was acting on the Respondent’s behalf and stated that the asking price for the domain name <macquarie-bank.net> was AUD$5,000. The email indicates and the Panel finds that the Respondent’s motivation for registering and using the domain name <macquarie-bank.net> is to pressure the Complainant into paying significantly more money than the mere costs of the Respondent’s registration expenses for the transfer of the domain name.
The Complainant submits in the alternative that the reputation and distinctiveness of the Macquarie Bank name in Australia is such that an Australian trader would not choose to register a domain comprising those words unless that trader sought to:
(a) create an impression of an association with the Complainant;
(b) create an impression of an association with Macquarie Bank financial services;
(c) attract business from the Complainant;
(d) misleadingly direct members of the public onto the trader’s website; and/or
(e) damage the reputation and business of the Complainant;
all of which demonstrate bad faith on the part of the Respondent, particularly when placed in the context of the Respondent’s association with Oxford University whose past pattern of conduct has been documented in earlier WIPO UDRP panel decisions.
The Respondent did not reply to the Complainant’s contentions. As noted above, the Respondent’s reply to notification of the appointment of the Panel did not contain any submissions of fact or contentions contradicting the submissions of the Complainant nor did it provide any explanation or submissions for his failure to avail himself of the opportunity of submitting a response to the Complaint. Accordingly, and based on Paragraph 14(b) of the Rules, the Panel will draw such inferences from this default of Respondent as it considers appropriate.
6. Discussion and Findings
According to Paragraph 4(a) of the Policy, the Complainant must establish that:
A. The domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
B. The Respondent has no rights or legitimate interests in respect of the domain name; and
C. The domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the domain name <macquarie-bank.net> is confusingly similar to trademark registration 805905 in Australia for the words MACQUARIE BANK. The inclusion of a hyphen between the words comprising the trademark does nothing to create a distinction or difference: see, for example, Columbia Sportswear Company v. Mahlon Keeler, WIPO Case No. D2000-0206, where the domain name in question was <columbia-sports-wear-company.com>.
The suffix ".net" is a generic top level domain, which in the view of the Panel is without legal significance and does not render a domain dissimilar or to prevent consumer confusion. Decisions of previous panels have established that a suffix or any series of suffixes applied to the mark are ignored. So ".com" is ignored: see Casa Editorial El Tiempo S.A. v Spider Webs Ltd, WIPO Case No. D2000-1757, as was <med.new.net> in the Blue Cross and Blue Shield Association v. Imaad Zuberi, WIPO Case No. D2003-0130, where the challenged domain names were <bluecross.med.new.net> and <blueshield.med.new.net>.
The domain name is confusingly similar to the Complainant’s trademark: see The Chancellor, Masters and Scholars of the University of Oxford v. DR Seagle t/a Mr. Oxford-University, WIPO Case No. D2001-0746.
In circumstances where the Complainant operates as an investment bank of substantial size in Australia and some 17 other countries, which the Panel accepts, the use of a domain name so similar to the trademark under which the Complainant operates its business is likely to cause confusion in the minds of members of the public suggesting that the operator of any domain under the name of <macquarie-bank.net> is associated with or authorised by the Complainant to operate such a site. In the circumstances, the first criterion, as per Paragraph 4(a) of the Policy, is established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides examples of circumstances which, if proved, establish a registrant’s rights or legitimate interests to a disputed domain name. No endeavour has been made by the Respondent to prove any of the type of circumstances exemplified in Paragraph 4(c) nor any other exculpatory facts.
The Panel therefore accepts the Complainant’s submission and finds as a fact that the Respondent has no rights or legitimate interests in the domain name <macquarie-bank.net>. The second criterion of Paragraph 4(a) of the Policy is therefore satisfied.
C. Registered and Used in Bad Faith
The Panel makes no finding as to the date of initial registration of the domain name <macquarie-bank.net>; it can find no evidence supporting the submission of the Complainant in this regard. It therefore draws no conclusions from the alleged proximity of the date of first registration and the negotiations between the parties which ultimately led to the filing of a Complaint under the UDRP in relation to the domain name <macquarie-bank.com>.
However, the Panel accepts the evidence that the Respondent (either by itself or its agent) has sought to sell the domain name to the Complainant for a sum well in excess of the costs of registration and necessary ancillary expenses. The inference to be drawn from the fact that in April and May 2003, the same parties were engaged in a dispute in relation to the registration of the domain name <macquarie-bank.com> (a dispute which was ultimately resolved by a Panel decision adverse to the Registrant) is that the Respondent identified an opportunity to put further pressure on the Complainant for it to purchase from the Respondent a domain name which could only be of commercial value and legitimately used by the Complainant.
Although there is no evidence that a web site or other on-line presence is in the process of being established by the Respondent using the domain name <macquarie-bank.net> nevertheless, the Panel finds that the Respondent’s passive holding of a domain name confusingly similar to the Complainant’s trademarks is enough to constitute bad faith registration and use: see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000).
Enquiries undertaken on behalf of the Complainant have failed to reveal a person of the name of the Respondent at the address disclosed on the domain name registration. However, the same physical address and telephone number are registered for the Respondent as for ‘Oxford University/Macquarie’ in Macquarie Bank Limited v. Robert Seagle aka Oxford University, WIPO Case No. D2003-0374. The Panel finds that the present Respondent is either the same person as or the agent of the Respondent in a number of domain name disputes including:
(1) the National Arbitration Forum’s decision America Online Inc v. Oxford University a/k/a Oxford U - Domains for Sale Domain-Man.com, Claim No. FA0206000114654;
(2) Harvey Norman Retailing Pty Ltd v. Oxford-University, WIPO Case No. D2000-0944;
(3) The Chancellor, Masters and Scholars of the University of Oxford v. DR Seagle t/a Mr. Oxford-University, WIPO Case No. D2001-0746;
(4) Imperial Chemical Industries, PLC v. Oxford University, WIPO Case No. D2001-0292.
(5) Macquarie Bank Limited v. Robert Seagle aka Oxford University, WIPO Case No. D2003-0374.
The Panel agrees with the conclusion expressed by the panel in Macquarie Bank Limited v. Robert Seagle (supra) that the Respondent (acting under one or other of the names of Robert Seagle or Oxford University) has an established pattern of registering domain names that are uniquely related to other companies or institutions to capitalize on their reputation and goodwill.
Under these circumstances, and taking into consideration the fact that the Respondent failed to provide any evidence whatsoever of any actual or contemplated legitimate, good faith use by himself of the domain name, notwithstanding that he knew of the Complaint, the Panel considers that the Respondent has registered and used the domain name in bad faith, within the meaning of Paragraph 4(a)(iii). Thus the third criterion of Paragraph 4(a) of the Policy is satisfied.
The Complainant has complied with the formal requirements for this domain name dispute proceeding. The UDRP is incorporated into the Respondent’s agreement with its domain name registrar, iHoldings.com Inc. d/b/a DotrRgistrar.com. The Respondent has failed to provide a Response to the Complaint and has not sought to raise any exceptional circumstances as provided for in Paragraph 5(e) of the Rules. The evidence submitted by the Complainant satisfies its obligations and establishes each of the elements required by Paragraph 4(a)(i)(ii) and (iii) of the Policy. On the basis of the statements and documents submitted and in accordance with the Policy, the Rules and other applicable rules and principles of law, as directed by Paragraphs 14(a) and (b) and 15(a) of the Rules, the Panel finds:
(1) that the domain name is confusingly similar to the Complainant’s trademark;
(2) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) that the domain name has been registered and is being used in bad faith by the Respondent.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and Rule 15 of the Rules, the Panel orders that the domain name <macquarie-bank.net> be transferred to the Complainant.
David Levin Q.C.
Dated: December 16, 2003