WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Australia and New Zealand Banking Group Limited v. James D’Souza
Case No. D2007-0801
1. The Parties
Complainant is Australia and New Zealand Banking Group Limited, Melbourne, Australia, represented by Andrew Carnegie, Australia.
Respondent is James D’Souza, Mumbai, Maharashtra, India.
2. The Domain Name and Registrar
The disputed domain name <anzcards.com> is registered with Lead Networks Domains Pvt. Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 1, 2007. On June 4, 2007, the Center transmitted by email to Lead Networks Domains Pvt. Ltd. a request for registrar verification in connection with the domain name at issue. On June 5, 2007, Lead Networks Domains Pvt. Ltd. transmitted by email to the Center its verification response confirming that Click Cons. Ltd was not currently listed as the registrant. Instead, Respondent is listed as the registrant and provided the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on June 12, 2007. The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on August 1, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 21, 2007. The Response was filed with the Center on August 21, 2007, in electronic format.
The Center appointed Susanna H.S. Leong as the sole panelist in this matter on September 11, 2007. 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.
4. Factual Background
Complainant is Australia and New Zealand Banking Group Limited and is one of Australia’s largest banking corporation which traces it origins over 150 years. The name ANZ Bank was first adopted by one of Complainant’s predecessors in title in 1951 upon the merger of the Bank Australasia and the Union Bank of Australia. Complainant’s current corporate entity was established in 1970 upon the merger of the ANZ Bank and the English, Scottish and Australian Bank Limited.
The name ANZ Bank and ANZ have been used continuously by Complainant since 1970 in Australia and other countries around the world. Complainant offers its consumers customers a wide range of credit card facilities, including ANZ First; ANZ Gold; ANZ Frequent Flyer Gold; ANZ Frequent Flyer VISA; ANZ Frequent Flyer Visa Platinum; ANZ Diners Club Card; Low Rate Mastercard; ANZ Everday Visa Debt. In addition, Complainant offers a wide range of Commercial Cards which provide businesses the convenience of using a VISA credit card to make their business purchases. These cards are also marketed using the ANZ name such as ANZ Business One; ANZ Corporate Card; and ANZ Visa Purchasing Card.
Complainant’s banking and credit card businesses extend beyond Australia into numerous countries throughout the world, including Asia, the Pacific, United Kingdom/Europe and the United States of America. It also has a technology and operations centre in Bangalore, India. More specifically, Complainant has extensive operations in New Zealand and is currently the number one bank in New Zealand, after having acquired the National Bank of New Zealand in 2004.
Complainant is the owner of the registered Australian trademarks in ANZ BANK; ANZ BANKING GROUP; ANZ; and ANZ.COM in class 36. The earliest Australian registered trademark ANZ BANK was filed on February 1, 1979. Furthermore, Complainant is also the owner of registered trademarks that correspond to the Australian registered trademarks in other jurisdictions including New Zealand; the United Kingdom; Hong Kong, SAR of China; and the European Union.
Complainant has operated its website at “www.anz.com” since 1996. Through this website, which is accessible from anywhere in the world, Complainant has started to offer Internet based banking services under or by the reference to the name ANZ and ANZ Internet Banking since 1999.
5. Parties’ Contentions
Identical or Confusingly Similar
Complainant asserts that it has registered trademark rights in the marks ANZ BANK; ANZ BANKING GROUP; and ANZ. Furthermore, Complainant asserts that by the extensive and long use of the marks ANZ and ANZ CARDS, it has generated significant reputation and goodwill in these marks over many years of business operations in Australia and other countries around the world. Consequently, Complainant asserts that it enjoys common law rights in the marks ANZ and ANZ CARDS due to the significant reputation and goodwill associated with them.
Complainant contends that the disputed domain name is identical to, or confusingly similar with, Complainant’s registered trademarks and also the common law name ANZ and ANZ CARDS in which it also enjoys significant reputation. Complainant contends that the composition of the domain name is confusingly similar to its ANZ mark on the basis that the addition of the word CARDS in the disputed domain name suggests that the domain name is used in the course of, in relation to support services offered by Complainant i.e. ANZ to its customers. Consequently, Complainant submits that this creates a false impression that the disputed domain name is used for the provision of services by or with the approval or affiliation with Complainant.
Rights or Legitimate Interests
Complainant contends that Respondent has no right or legitimate interest in the disputed domain name. Specifically, Complainant contends that Respondent should not be considered to have any right or legitimate interests in this disputed domain name for the following reasons:
- The content on the website refers to financial services products which are not directly linked to either ‘Australia’ or ‘New Zealand’; and
- Respondent has failed to respond to the letter of demand dated April 26, 2007 and this failure to respond creates a presumption that Respondent has no rights or legitimate interest in the domain name.
Thus, Complainant contends that there is no evidence of Respondent’s legitimate interests, or demonstrations of any preparation to legitimately use, the name ANZ, or ANZ CARDS or any similar name at the time of filing of the Complaint.
Registered and Used in Bad Faith
Complainant contends that the disputed domain name was registered and was being used in bad faith by Respondent for the following reasons:
a. Respondent has failed to respond to the letter of demand dated November 28, 2006, from Complainant and the failure to respond to Complainant’s correspondence is indicative of Respondent’s intention to register and use the domain name in bad faith.
b. The disputed domain name is used for the purpose of obtaining click through revenue and that Respondent in the present circumstances clearly tried to misrepresent itself as being Complainant, or operating with Complainant’s authorization or approval, solely for the purpose of obtaining click through revenue.
c. Respondent ought to be deemed to have constructive knowledge of Complainant and its ANZ mark through Complainant numerous trademarks registrations worldwide, including those in Australia and worldwide. Complainant’s trademarks were registered many years before the disputed domain name registration, and remain current and in use.
d. The website used under the disputed domain name links to websites offering financial services and this use of the disputed domain name also indicates that Respondent is aware of Complainant and its mark ANZ.
e. Respondent has no rights or legitimate interests in the domain name and this fact is itself an indication that the domain name was registered and is being used in bad faith.
f. Respondent has registered the disputed domain name to prevent Complainant from using its trademark and or names in a corresponding domain name and this has the effect of disrupting Complainant’s legitimate business activities which amounts to the registration and use of the domain name in bad faith.
Respondent states that the disputed domain name was registered on June 11, 2007 and not September 20, 2006. He could not understand how Complainant could file a complaint before the domain name was registered by Respondent. Respondent contends that this amounted to gross procedural anomalies and on this ground the Complaint should be dismissed. Consequently, Complainant’s complaint should not be directed at Respondent but to some other person. The Respondent was of the opinion that the Center was wrong to allow the Complaint to continue with minor amendments. He further contends that the disputed domain name is not similar to the trademarks of Complainant and that he has legitimate interest in the domain name as he has registered the same and paid valuable consideration for it. Respondent contends that the disputed domain name was about to be put to use but he received the notice of the filing of the Complaint. On receiving the Complaint and in order not to get into any legal hassles, Respondent has offered to transfer the disputed domain name to Complainant on payment of documented out of pocket expenses. Respondent called Complainant and as requested by Complainant sent an email and the documents of out of pocket expenses to them on July 18, 2007.
6. Discussion and Findings
6.1 Identification of the Proper Respondent
After reviewing all the evidence adduced before the Panel, the Panel finds that Respondent is the proper Respondent in the present administrative proceeding. When the Complaint was filed on June 1, 2007, the Whois database search for the disputed domain name <anzcards.com> reflected that the domain name was registered in the name of Click Cons. Ltd. The Complaint was duly filed against Click Cons. Ltd. Upon receipt of the Complaint the Center sought verification of the registration of the disputed domain name from the Registrar and it was confirmed that Click Cons. Ltd was not the current registrant of the disputed domain name but a ‘James D’Souza’, the named Respondent in this proceeding. The Complaint was duly amended to reflect the change in accordance with the Rules and the Panel finds that Respondent is the proper respondent who must answer the Complaint filed against him.
6.2 Substantive Elements of the Policy
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, Complainant must establish that each of the three following elements is satisfied:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy clearly states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied in this proceeding.
Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.
On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows:
A. Identical or Confusingly Similar
Complainant has adduced evidence to demonstrate that it has registered trademark rights and continues to have such rights in the ANZ BANK; ANZ BANKING GROUP; ANZ; and ANZ.COM in class 36 marks in Australia and in many countries throughout the world since it first obtained registered trademark rights in 1979. With regard to the marks ANZ and ANZ CARDS, the Panel finds that although they are not registered trademarks, Complainant still has rights in them. Complainant has demonstrated that through long and extensive use in the credit card services sector, it has generated a significant reputation and goodwill in these marks and the Panel finds that Complainant has common law rights in them. Several panels under the Policy have decided that the Policy affords protection not only to those having rights in registered trademarks but also to those having common law rights in their trade or service marks. See Bennett Coleman & Co. Ltd v. Steven S. Lafwani, WIPO Case No. D2000-0014; Seek America Networks Inc. v. Tariq Masood, WIPO Case No. D2000-0131; Cedar Trade Associates, Inc. v. Gregg Ricks NAF Case No. 93633; and Passion Group Inc. v Usearch Inc., AF-0250.
The disputed domain name consists of Complainant’s mark ANZ with the addition of the word CARDS and the suffix ‘.com’. In assessing the degree of similarity between Complainant’s mark and Respondent’s domain name, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between Complainant’s mark and Respondent’s domain name is to be considered from the perspective of the average consumer of the goods or services concerned and in this case, the average consumer is the Internet user seeking to purchase or download Complainant’s banking and credit card services. In this regard, it is relevant to note that Complainant has started to offer via its domain name <anz.com> Internet based banking services under or by the reference to the name ANZ and ANZ Internet Banking since 1999. The Panel finds that ANZ is the distinctive and prominent portion in the disputed domain name that will attract customers’ attention. The mere addition of the word “cards” in the present case does not sufficiently distinguish Respondent’s domain name from Complainant’s mark. In fact, the Panel accepts Complainant’s contention that the addition of the word “cards” in the disputed domain name suggests that the domain name is used in the course of, in relation to support services particularly credit card services offered by Complainant to its customers and thus creates a false impression that the disputed domain name is used for the provision of services by or with the approval or affiliation with Complainant. Consequently, the Panel finds that the disputed domain is confusingly similar with Complainant’s ANZ marks.
The Panel finds for Complainant in the first part of the test.
B. Rights or Legitimate Interests
Based on the following reasons the Panel finds that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name:
1. Respondent has not provided evidence of a legitimate use of the domain name or reasons to justify the choice of the word “anzcards” in its business operations prior to notification of the present proceeding;
2. There was no evidence on the record to show that Complainant has licensed or otherwise permitted Respondent to use its trademark or to apply for or use any domain name incorporating the trademark;
3. There is no indication on the record that Respondent is commonly known by the disputed domain name and/or is using the domain name in connection with a bona fide offering of goods or services.
Respondent has contended that he has legitimate interest in the domain name as he has registered the same and paid valuable consideration for it. However, Respondent must be reminded that registration of the domain name is subject to subsequent challenges by persons claiming to have intellectual property rights and such disputes are to be resolved in accordance with the Policy as provided for in the registration agreement with the Registrar. According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.”
Unfortunately, the Panel finds that Respondent has not adduced any substantial evidence in his Response to show in a convincing manner that he has any rights or legitimate interests in the disputed domain name.
The Panel finds for Complainant in the second part of the test.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:
(i) circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product.
First, the Panel finds that Complainant enjoys a worldwide reputation in its ANZ marks and the banking and credit card services it provides. In this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks transcend national borders. Given the reputation of Complainant’s ANZ marks, the Panel finds that it is highly unlikely that Respondent would not have had actual notice of Complainant’s trademark right at the time of the registration of the domain name. In fact, Respondent did not in his Response deny that he has knowledge of Complainant’s marks before or at the time of the registration of the domain name. Consequently, in the absence of contrary evidence from Respondent, the Panel finds that the ANZ marks are highly unlikely to have been adopted other than for the purpose of creating an impression of an association with Complainant. Thus, it would have been pertinent for Respondent to provide an explanation of his choice in the disputed domain name. However, Respondent has not provided any plausible explanations of his choice of the domain name and did not adduce any substantial evidence to refute Complainant’s allegations in the Complaint suggesting to the Panel that the disputed domain name was registered by Respondent in bad faith. Consequently, the Panel finds that this was in the circumstances in all likelihood with the intent to create an impression of an association with Complainant and its products and services.
Second, Complainant has also adduced evidence to prove that by using confusingly similar disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website which are hosting advertising links to websites promoting or offering products or services of third parties, especially in the financial sector. Given the worldwide reputation of Complainant’s ANZ marks, the compelling conclusion is that Respondent, by choosing to register and use a domain name which is confusingly similar to Complainant’s widely known and distinctive marks, intended to ride on the goodwill of Complainant’s marks in an attempt to exploit, for commercial gain, Internet traffic destined for Complainant. Potential partners and end users may be led to believe that Respondent’s website is either Complainant’s site or the site of official authorized partners of Complainant, which it is not. Consequently, Respondent has, through the use of confusingly similar domain name, created a likelihood of confusion with Complainant’s ANZ marks and this constitutes a misrepresentation to the public that Respondent’s website is in one way or the other associated or connected with Complainant’s. In this way, Respondent may generate income for each click-through by online consumers of the sponsored links when in fact these consumers would not have done so if not for the presence of Complainant’s ANZ marks in the Internet address of the website. In the absence of evidence to the contrary and a convincing rebuttal from Respondent, the choice of the disputed domain name and the conduct of Respondent as far as the website on to which the domain name resolves are indicative of registration and use of the disputed domain name in bad faith.
Third, the Respondent has no qualms in offering to transfer the disputed domain name to Complainant in consideration of out-of-pocket expenses. Although this fact alone is not conclusive evidence that the Respondent “has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant” under paragraph 4(b)(i) of the Policy, it is nevertheless persuasive evidence that the Respondent has no real intention to use the disputed domain name in any genuine offer of goods or services on the Internet and is indicative of bad faith on the part of the Respondent.
The Panel finds for Complainant on the third part of the test.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <anzcards.com> be transferred to Complainant.
Susanna H.S. Leong
Dated: September 25, 2007