WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Macquarie Group Limited v. Michael Ambury
Case No. D2011-1517
1. The Parties
The Complainant is Macquarie Group Limited of New South Wales, Australia, represented by Griffith Hack Patent and Trade Mark Attorneys, Australia.
The Respondent is Michael Ambury of New South Wales, Australia.
2. The Domain Names and Registrar
The disputed domain names <macquariebankblogspot.com>, <macquariebankcomplaints.com> and <macquariebankharrassment.com> are registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 9, 2011. On September 9, 2011, the Center transmitted by email to the registrar. a request for registrar verification in connection with the disputed domain names. On September 9, 2011, GoDaddy.com, Inc. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 21, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 11, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 13, 2011.
The Center appointed Desmond J. Ryan as the sole panelist in this matter on November 4, 2011. 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
The disputed domain name <macquariebankblogspot.com> was created on August 24, 2011. The disputed domain names <macquariebankcomplaints.com> and <macquariebankharrassment.com> were each created on August 25, 2011.
The Complainant is a global provider of banking and other financial services founded in 1969 and currently employing 15,500 employees in over 28 countries. It operates a website at “www.macquariebank.com” and a number of other country-specific websites and currently has in excess of 300 billion dollars under management. It has numerous registrations of trademarks in Australia, New Zealand, the European Community and the United States of America, consisting of, or including, the words "macquarie" or "macquarie bank". All of these registrations predate the date of creation of the disputed domain names.
On June 18, 2010 the Respondent entered into a commercial hire purchase agreement with a subsidiary of the Complainant, Macquarie Leasing. The Complainant defaulted upon the agreement notice of termination of the agreement was sent to the Respondent on March 8, 2011. A chain of correspondence ensued between the Macquarie Leasing and the Respondent; in it the Respondent made statements which were hostile and abusive. On August 5, 2011 the agreement was terminated by the Complainant.
5. Parties’ Contentions
The Complainant submits that:
Its trademarks MACQUARIE and MACQUARIE BANK are highly distinctive and globally well-known in the field of financial services.
The addition of the generic terms "blogspot", "complainants" and "harassment" respectively do not serve sufficiently to distinguish the disputed domain names from the Complainant's trademarks.
Consumers viewing the disputed domain names are highly likely to expect an association with the Complainant and to assume that the disputed domain names were registered by or with the authority of the Complainant to host a "blogspot" and to address complainants or allegations of harassment from third parties.
The Complainant is not commonly known by any of the disputed domain names and they are not similar to, or in any way connected with the name under which the Complainant holds the registrations.
The use which the Respondent is making of the disputed domain names to resolve to linking pages containing sponsored links is not legitimate, non-commercial nor fair.
The Complainant is intentionally engaging in conduct which is misleading to consumers and that he is attempting to generate business by exploiting confusion among consumers as to the association or affiliation of the websites with the services of the Complainant.
The Complainant enjoys a worldwide reputation in its MACQUARIE and MACQUARIE BANK trademarks and that it may be inferred from the Respondent's registration of confusingly similar domain names that the disputed domain names were registered in bad faith. The Complainant cites Zwack Unicum Rt. v. Erica J. Duna, WIPO Case No. D2000-0037 and The Nasdaq Stockmarket v. Act One Internet Solutions, WIPO Case No. D2001-1492 in support of its submission.
Having regard to the prior dealings between the Respondent and the Complainant's subsidiary, Macquarie Leasing, the Respondent may have been motivated to seek to disrupt Macquarie Leasing's business.
The sponsored links may have been set up by the Respondent in an intentional attempt to attract commercial gain of Internet users to his website by creating a likelihood of confusion with the Complainant's trademarks.
It may be inferred from the Respondent's conduct that he was aware of the Complainant's well-known trademarks and that this creates a presumption that the disputed domain names were registered in bad faith. The Complainant cites Autosales Incorporated, dba Summit Racing Equipment v. Domain Active Pty Ltd, WIPO Case No. D2004-0459 in support of this submission.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant is the owner of several trademarks registered in Australasia, the United States and Europe, comprising the words “macquarie” and “macquarie bank”. It has longstanding and widespread use of those trademarks and has established rights in them. The disputed domain names wholly contain the Complainant's MACQUARIE BANK trademark with the addition of the descriptive words "blogspot", "complaints" and "harassment". Those descriptive words do nothing to distinguish the disputed domain names from the dominant and first occurring particular of the disputed domain names the word "macquariebank" (see for example Société AIR FRANCE v. Angelika Freitag, Angelika Freitag Company, WIPO Case No. D2008-1219). Furthermore, those words could each be regarded as apposite to the business of the Complainant and are likely to lead consumers to believe that those domain names will lead to the Complainant's blog or to websites at which the Complainant deals with complaints or allegations of harassment respectively.
The Panel therefore finds that the disputed domain names are confusingly similar to the trademark MACQUARIE BANK in which the Complainant has demonstrated well-established rights.
B. Rights or Legitimate Interests
The Complainant has made a prima facie showing that the Respondent is not authorized to use its MACQUARIE BANK trademark, that the Complainant is not commonly known by any of the disputed domain names and that the Respondent's use of the disputed domain names to point to a portal page with links to third party websites, including those of the Complainant's competitors, is a use which is commercial but not use in connection with the bona fide offering of goods or services. The Respondent's only use of the domain names has been to direct to portal sites and it is reasonable to assume that the Respondent receives pay-per-click royalties from traffic generated from the sites. It is well recognized that in cases where the use of a domain name takes advantage of the reputation of the Complainant's trademark, such use is not use in connection with the bona fide offering of goods or services (see for example Paris Hilton v. Deepak Kumar, WIPO Case No. D2010-1364). The Respondent had an opportunity to contest that the Complainant's prima facie showing but has failed to do so.
The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of any of the disputed domain names.
C. Registered and Used in Bad Faith
The Complainant has shown that it is very well-known in Australia and elsewhere under its name and trademark MACQUARIE BANK. It is in fact one of Australia's major financial institutions. The Respondent is an Australian resident and has had commercial dealings with the Complainant's subsidiary, Macquarie Leasing. The Respondent must therefore have known of the Complainant and of its business and its trademarks at the time when he registered the disputed domains. That he proceeded to register domain names, each of which has as its dominant particular the Complainant's MACQUARIE BANK trademark, in the light of that knowledge clearly evidences bad faith. The Respondent proceeded to use the domain names to link to third party sites, including the websites of major Australian banks which operate in competition with the Complainant. As noted in paragraph 6B above, there is a strong inference that he has done so for the purpose of earning royalties on a pay-per-click basis by creating a likelihood of confusion with the Complainant's well-known MACQUARIE BANK trademark. In the particular circumstances of this case there is also a high probability that the Respondent's registration of the disputed domain names and their subsequent use was motivated by a desire to damage or disrupt the Complainant's business. Whilst the Respondent is not a competitor of the Complainant and accordingly, his conduct does not fall with the specific instance of bad faith set out in paragraph 4(b)(iii) of the Policy, his registration of the disputed domain names only ten days after the termination of his contract with Macquarie Leasing strongly suggests that he acted out of malice. The categories of bad faith listed in paragraph 4(b)are not exhaustive and are stated specifically to be without limitation.
The Panel concludes from the evidence presented by the Complainant that the Respondent's use and registration of the disputed domain names was motivated by a desire to derive revenue from confusion created by the inclusion of the Complainant's trademark in the disputed domain names and also by a desire to harm the Complainant and its business. The Respondent has presented no evidence or argument to the contrary. He had the opportunity to do so and he did not take that opportunity.
The conclusions reached above apply equally to each of the disputed domain names and the Panel therefore finds that each of the disputed domain names was registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names, <macquariebankblogspot.com>, <macquariebankcomplaints.com> and <macquariebankharrassment.com> be transferred to the Complainant.
Desmond J. Ryan AM
Dated: November 18, 2011