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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Commonwealth Bank of Australia v. Qian Li

Case No. D2014-2033

1. The Parties

The Complainant is Commonwealth Bank of Australia of Perth, Australia, represented by Wrays, Australia.

The Respondent is Qian Li of Guangzhou, Guangdong, China.

2. The Domain Name and Registrar

The disputed domain name <bankwest.mobi> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 19, 2014. On November 19, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 20, 2014, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 26, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 16, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 17, 2014.

The Center appointed Jonathan Agmon as the sole panelist in this matter on December 24, 2014. 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 Complainant, Commonwealth Bank of Australia, is a well-known Australian bank. The Complainant provides financial services in Australia since 1984 under, inter alia, its previous name, The Agricultural Bank of Western Australia. In 1994, The Agricultural Bank of Western Australia changed its name to Bank of Western Australia Ltd, and rebranded as "Bankwest". In 2008, Bank of Western Australia Ltd was acquired by the Complainant and became a part of Australia's largest provider of financial services. Currently, it operates as a semi-autonomous business division of the Complainant.

The Complainant is the owner of numerous trademark registrations for the mark BANKWEST in block letters and as design marks in Australia and elsewhere. For example: Australian trademark registration No. 628382 BANKWEST with the "&" design filed on April 26, 1994 and entered into registry on December 11, 1995.

According to the WhoIs Registry, the disputed domain name was registered on September 28, 2010.

The disputed domain name resolves into an inactive page featuring the words "bankbest 3G" and Chinese characters welcoming Internet users to the Bankwest 3G web site.

5. Parties' Contentions

A. Complainant

The Complainant argues that the disputed domain name is identical or confusingly similar to the Complainant's trademark; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the Respondent has registered and is using the disputed domain name in bad faith.

The Complainant argues that it owns registered and unregistered rights in the trademark BANKWEST since at least of 1994. The Complainant also argues that it acquired strong reputation in the trademark BANKWEST with respect to financial services through substantial use, marketing and promotional activities.

The Complainant argues that the disputed domain name comprises the Complainant's trademark BANKWEST in full, and is therefore identical or confusingly similar to its trademark.

The Complainant further argues that it had never authorized the Respondent to register or use the disputed domain name and that the Respondent is not making any use of the disputed domain name that establishes any rights or legitimate interests in the disputed domain name.

The disputed domain name resolves to a page optimized for mobile phone users. The page features the words "bankwest 3G" and "bankwest.mobi 3g version" in English, and also Chinese characters which are translated to "welcome to bankwest 3G version of the site". The Complainant argues that the said page appears to be for promoting ".mobi" domain names but the Respondent does not appear to be selling any goods or services on the site to which the disputed domain name resolves.

The Complainant further argues that the disputed domain name is likely to confuse consumers as to whether the Respondent is connected or affiliated with the Complainant and that the use of the disputed domain name suggests that it was chosen and is used in an attempt to benefit from the association with its trademark BANKWEST.

For all of the above reasons, the Complainant requests the transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

A. Language of the Proceedings

Paragraph 11(a) of the Rules provides that:

"Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding."

The language of the Registration Agreement for the disputed domain name is English. Accordingly, the Panel determines that the language of this administrative proceeding be English.

B. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant is the owner of trademark registrations for the mark BANKWEST in Australia. For example: Australian trademark registration No. 628382 BANKWEST with the "&" design filed on April 26, 1994 and entered into registry on December 11, 1995.

The disputed domain name integrates the Complainant's trademark BANKWEST in its entirety, as a dominant element, with the addition of the generic top-level domain (gTLD) ".mobi" which does not serve to distinguish or differentiate the disputed domain name from the Complainant's trademark.

As noted, the addition of a gTLD such as ".mobi" to the disputed domain name does not avoid confusing similarity. See F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Thus, the gTLD ".mobi" is without legal significance since use of a gTLD is technically required to operate the disputed domain name and it does not serve to identify the source of the goods or services provided by the registrant of the disputed domain name.

Consequently, the Panel finds that the Complainant has shown that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

C. Rights or Legitimate Interests

Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name. Paragraph 2.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").

In the present case, the Complainant has demonstrated that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests.

The Panel finds that the Complainant has established a prima facie case in this regard, inter alia, due to the fact that the Complainant has not authorized or otherwise permitted the Respondent to use the BANKWEST trademark, or a variation thereof, and the evidence presented indicates that the Respondent is not engaged in a bona fide offering of goods or services, as discussed further below.

The Respondent has not submitted any response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

D. Registered and Used in Bad Faith

The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii) of the Policy.

The Complainant submitted evidence, which shows that the Respondent registered the disputed domain name long after the Complainant registered its trademark. According to the evidence filed by the Complainant and an independent trademark search performed by the Panel, the Complainant owns a registration for the BANKWEST trademark since the year 1994 in Australia. It is suggestive of the Respondent's bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735).

The Complainant also provided evidence to demonstrate its trademark's vast goodwill. The Panel cites the following with approval: "The Respondent's selection of the disputed domain name, which wholly incorporates the Trade Mark, cannot be a coincidence […]. Given the fame of the Trade Mark, there is no other conceivable interpretation of the Respondent's registration and use of the disputed domain name other than that of bad faith." (Swarovski Aktiengesellschaft v. Zhang Yulin, WIPO Case No. D2009-0947). The Panel finds accordingly that the registration of the disputed domain name was in bad faith. See Herbalife International, Inc. v. Surinder S. Farmaha, WIPO Case No. D2005-0765, stating that "the registration of a domain name with the knowledge of the complainant's trademark registration amounts to bad faith."

With respect to the bad faith use, paragraph 4(b)(iv) of the Policy provides that it will be evidence of bad faith registration and use by a Respondent, if by using the domain name it had intentionally attempted to attract, for commercial gain, Internet users to the websites or other on-line locations to which the disputed domain name is resolved to, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the websites or locations or of a product or service on the websites or locations to which the domain name resolved to.

In this case, the disputed domain name resolves to a page optimized for mobile phone users. The page features the words "bankwest 3G" and "bankwest.mobi 3g version" in English, and also Chinese characters which are translated to "welcome to bankwest 3G version of the site". The words "bankwest" and "3G" are in the English language. Although the page appears to be for promoting ".mobi" domain name, the Respondent does not appear to be selling any goods or services on the site to which the disputed domain name resolves. The Respondent has not shown any rights or legitimate interests in the disputed domain name and is therefore using it to benefit from the association with Complainant's trademark BANKWEST. The Respondent's use therefore constitutes bad faith.

Furthermore, the disputed domain name is confusingly similar to the Complainant's trademark. Previous UDRP panels ruled that "a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant's site to the Respondent's site." (See Edmunds.com, Incv. Triple E Holdings Limited, WIPO Case No. D2006-1095).

Based on the evidence presented to the Panel, including the late registration of the disputed domain name, the insertion of the Complainant's trademark in the disputed domain name and the similarity between the disputed domain name and the Complainant's mark, the Panel draws the inference that the disputed domain name was registered and used in bad faith.

Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.

7. Decision

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 name <bankwest.mobi> be transferred to the Complainant.

Jonathan Agmon
Sole Panelist
Date: January 14, 2015

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