WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Suncorp-Metway Limited v. Trent MacDonald

Case No. DCO2010-0030

1. The Parties

The Complainant is Suncorp-Metway Limited of Brisbane, Queensland, Australia, represented by Melbourne IT Digital Brand Services, Australia.

The Respondent is Trent MacDonald of Kenmore East, Queensland, Australia.

2. The Domain Names and Registrar

The disputed domain names <suncorpbank.co> and <suncorpmetway.co> are both registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 11, 2010. On October 11, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On the same date and on October 22, 2010, 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. On October 26, 2010, the Complainant filed an amendment to the Complaint to clearly identify that GoDaddy.com, Inc. as the registrar of the disputed domain names. The Center verified that the Complaint and the amendment thereto 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 October 26, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 15, 2010. The Response was filed with the Center on November 14, 2010.

The Center appointed James A. Barker as the sole panelist in this matter on November 29, 2010. 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

For the purpose of this proceeding, the Panel has accepted the following facts.

The Complainant is a diversified financial services group. The Complainant’s businesses are well known. The Complainant’s business lies in general insurance, banking, life insurance and wealth management. The Complainant operates in Australia and New Zealand and is a top 25 Australian Securities Exchange (“ASX”)-listed company with over $95 billion in assets. The Complainant has more than 16,000 employees and relationships with over seven million customers. The Complainant has five operating divisions managing its various brands supported by corporate and shared services divisions.

The Complainant is Australia’s 5th largest listed bank. The Complainant’s banking activities date back to 1902. The Complainant services nearly one million customers. The Complainant’s customers have access to branches, agencies and business banking centres across Australia and an ATM network. The Complainant’s personal lending includes home and personal loans, savings and transaction accounts, margin lending, credit cards and foreign currency services.

The Complainant is the owner of trademarks for SUNCORP and SUNCORP METWAY, registered in Australia as early as in 1998. The Complainant is the owner of more than 70 domain names containing the term SUNCORP, METWAY and SUNCORP METWAY.

The Respondent registered the disputed domain names on July 29, 2010. The Response provides little information or evidence about the business of the Respondent.

From evidence in the Complaint, it appears that the disputed domain names (at some time not identified in the Complaint) reverted to a portal or pay-per-click landing website. That website included links apparently associated with the Complainant, its field of business, or its competitors, such as ‘Suncorp Bank eOptions’, ‘Commonwealth Bank Card’, and ‘Savings Interest Rates’.

5. Parties’ Contentions

A. Complainant

The Complainant claims that the dominant part of the disputed domain names is identical to its registered marks for SUNCORP and SUNCORP METWAY. The disputed domain name <suncorpmetway.co> is identical to the registered trademark SUNCORP METWAY owned by the Complainant. The disputed domain name <suncorpbank.co> is confusingly similar to the registered trademark SUNCORP. Adding a word such as “bank,” that is descriptive of the goods offered by the Complainant under its marks, does not distinguish the disputed domain name <suncorpbank.co> from the marks but rather supports a finding of confusing similarity. Anyone who sees the disputed domain names is bound to mistake them for domain names related to the Complainant.

The Complainant says that the Respondent has no rights or legitimate interests in the disputed domain names. The Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the disputed domain names. No license or authorization of any other kind, has been given by the Complainant to the Respondent, to use the trademarks.

Earlier this year the “.co” domain space was liberalized and the space became available for anyone in the world to register “.co” domain names available to the public based on the chronological order of registrations on a first come, first served basis. The Complainant claims that the Respondent took advantage of the liberalization and registered the disputed domain names.

The Respondent has intentionally chosen disputed domain names based on registered trademarks in order to generate traffic to websites that contains sponsored links. By doing this, the Respondent is using the trademarks and misleading Internet users to commercial web sites and consequently, the Respondent is

tarnishing the trademarks.

The Complainant says that the disputed domain names were registered and have been used in bad faith. The Respondent approached the Complainant and made an unsolicited offer to sell the disputed domain name <suncorpmetway.co> for a substantial sum of money, being AUD 17,650.00.

The Complainant sent an official cease and desist letter to the Respondent on August 23, 2010 in regards to the disputed domain names asking for a voluntarily transfer. The Respondent made a phone call to the Complainant’s representative the same day asking why it was seen as unfair registrations since he had registered the domain names under the Colombian ccTLD and the Complainant only had Australian registered trademark rights to SUNCORP and SUNCORP METWAY. The Complainant’s representative explained the rules of the Policy and guided the Respondent to the World Intellectual Property Organization website to learn more about the rules and polices behind the UDRP and applicable disputes. A few days later, the Complainant’s representative received two letters from the Respondent via email. The first letter was in reference to the disputed domain name <suncorpbank.co>. The Respondent puts its case on the basis that it proposes to establish a website with the intention to build an information wiki about astrology. The Complainant does not put any weight to the credibility of this story and considers this to be fabrication of the truth to find some sort of legitimacy in the disputed domain names. The second letter was in relation to the disputed domain name <suncorpmetway.co>. The story behind this domain name registration was to create a website about birth stones for a hobby website. The lack of credibility to the two stories further strengthens the bad faith registrations and lack of legitimacy to the domain names. These letters combined with the initial letter sent to the Complainant shows that the disputed domain names were registered and are being used in bad faith.

The disputed domain names are currently connected to web sites containing sponsored links. Consequently, the Respondent is using the disputed domain names to intentionally attempt to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement of the websites.

The Complainant claims that the Respondent is engaged in a pattern of abusive registrations, predominantly targeting Australian registered brands such as MACQUAIRE and RETRA VISION.

B. Respondent

The Respondent says that the Complainant only owns a trademark in Australia and New Zealand. The Respondent claims to have purchased the disputed domain names for Colombian use. The Respondent says that he has been developing a website but does not have the time or money to have it up and working yet. He also says that Suncorp’s trademark is registered for goods and services, while his website does not sell anything, and that his purpose is to establish an information website for people in Colombia.

The Respondent says that he was sent an email originally from the Complainant to notify him that they would like the domain names and he responded with a very cheap price. The Respondent says that he has received no commercial gain or revenue from owning the disputed domain names. The Respondent believes that the URL is very relevant for the websites content as it will provide people the tool be able to search for different places and names in the world mainly to search for places called Suncorp, Metway, Bank, Macquarie and lots more names and places and other information about things he has for a hobby. The Respondent says that the website would be only for information and would have no advertisements, and would also be for the Respondent to practice his skills as a website developer.

The Respondent says that the Complainant does not have the rights to the disputed domain names because it does not own a trademark in the region for which these domain names will be used (Colombia) and because the Complainant’s trademarks are for good and services whereas the Respondent intends to provide only an information website.

The Respondent denies sending the letter offering to sell the disputed domain names. The Respondent says that he only ever offered to sell the disputed domain names for AUD 940. The Respondent denies breaching any trademark laws, and denies seeking to mislead anyone by purchasing the disputed domain names.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) the disputed domain names were registered and are being used in bad faith.

These elements are discussed below. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.

A. Identical or Confusingly Similar

The Complainant has clearly established that it has trademark rights in SUNCORP and SUNCORP METWAY. Having established such rights, the issue is whether the disputed domain names, <suncorpbank.co> and <suncorpmetway.co> are identical or confusingly similar to the Complainant’s marks for the purpose of paragraph 4(a)(i) of the Policy. For the purpose of comparison under paragraph 4(a)(i) of the Policy, it is well-established that the ccTLD extension is to be disregarded, being a necessary functional element of the domain name. The Panel also notes that there is no evidence in this case that the terms “suncorp” or “suncorp metway” have any association other than with the Complainant, or that these are descriptive terms.

The disputed domain name <suncorpbank.co> is not identical to either of the Complainant’s marks. However, the Complainant’s SUNCORP mark is entirely incorporated in that domain name, without change, and with only the descriptive term “bank” added. The term “bank” is directly related to the Complainant’s business of financial services. The addition of a term that is descriptive of the Complainant’s services, to a mark that distinctively associated with the Complainant, creates an obvious likelihood of confusion. In similar cases where a mark has been combined with the word “bank”, panels have found confusing similarity to be manifestly obvious. See e.g., N.M. Rothschild & Sons Ltd. v. Fine Art Investments Ltd., WIPO Case No. D2001-1029.

The domain name <suncorpmetway.co> is relevantly, and self-evidently, identical to the Complainant’s SUNCORP METWAY mark.

For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(i) of the Policy.

The Respondent’s argument – that the Complainant’s marks are only registered in Australia – does not affect these findings. It is not a requirement of paragraph 4(a)(i) of the Policy that a complainant have trademark rights in more than one jurisdiction. As noted by the panel in Riyad Bank v J. Boschert, WIPO Case No. D2001-1235, “there is abundant authority for the proposition that paragraph 4(a)(i) of the Policy is intended to protect trademarks that have not been registered in any particular jurisdiction.” In any case, a domain name that can be accessed in the Complainant’s own jurisdiction has the potential to affect the Complainant’s mark. In this case, it cannot be a relevant consideration, as the Respondent implies, that the ccTLD relates to a jurisdiction (Colombia) in which the Complainant does not have a registered mark.

B. Rights or Legitimate Interests

In relation to paragraph 4(a)(ii) of the Policy, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The consensus view of WIPO panelists is that, once a complainant has established such a case, “the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” See paragraph 2.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions.

The Respondent claims that his intention in registering the disputed domain names was variously to establish an “information” website for people in Colombia (the ccTLD of the disputed domain names); to allow people to search “for places called Suncorp, Metway, Bank, Macquarie”; and for him to practice his skills as a web developer. The Panel finds that these explanations are not credible. The Respondent does not explain why a resident of Colombia would have any particular interest in the terms incorporated in the disputed domain names “suncorpmetway” and “suncorpbank”. The PPC website to which the disputed domain names reverted contained links in English – which is self-evidently inapposite for Spanish-speaking residents of Colombia. The Respondent is a resident of Australia and also provides no explanation as to his connection with Colombia. The Respondent does not suggest that the “places” to which he refers - Suncorp, Metway, Bank, Macquarie – are places in Colombia, or for that matter any other country.

Further, and as other panels have noted, “the burden of production on this factor shifts to the Respondent to rebut the [prima facie] showing by providing concrete evidence that it has rights to, or legitimate interests in the domain name.” AIB-Vincotte Belgium ASBL, AIB-Vincotte USA Inc./Corporation Texas v. Guillermo Lozada, Jr., WIPO Case No. D2005-0485. In this case, the Respondent has provided no evidence to support his claims. Neither has the Respondent provided a more detailed explanation to explain his activities, from which some reasonable or credible inferences of rights or legitimate interests might be drawn.

It is relevant in this case that, as noted above, the Complainant’s marks appear to be distinctively associated with the Complainant. The Complainant is well-known in its industry. The Complainant and Respondent are also both based in Australia. The disputed domain names each entirely incorporate the Complainant’s distinctive marks and, in the case of <suncorpbank.co>, a term that is closely associated with the Complainant’s business. The disputed domain names have also reverted to a “PPC” or ”landing” website containing links relating to the Complainant or its business. These circumstances are strongly suggestive that the Respondent registered and has used the disputed domain names with the intent of exploiting and profiting from the Complainant’s marks. Such a use cannot be the basis for a right or legitimate interest under paragraph 4(a)(ii) of the Policy.

There is no other evidence of the Respondent having rights or legitimate interests in the disputed domain names. Paragraph 4(c) of the Policy sets out examples of ways in which a respondent may demonstrate rights or legitimate interests. These include evidence that:

(i) before any notice to [the Respondent] of the dispute, the Respondent’s 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) the Respondent has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence or argument that supports the first two of these examples. While the Respondent’s claims are somewhat suggestive of the third of these examples, they are not however supported with any credible evidence for the reasons set out above. For these reasons, the Panel finds that the Complainant has established that the Respondent does not have any rights or legitimate interests in the disputed domain names for the purpose of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four illustrative circumstances of bad faith for the purpose of paragraph 4(a)(iii). One of those is, under paragraph 4(b)(iv), “circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online 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 or service on its website or location.” The Panel finds that the Respondent has relevantly acted in bad faith as described in this paragraph.

Given the reputation of the Complainant, its registered marks, and the failure of the Respondent to provide a plausible explanation of a bona fide reason for the registration of the disputed domain names, the Panel considers it unlikely that the Respondent was unaware of the Complainant’s marks when he registered the disputed domain names. As explained above, those domain names are either identical (in the case of <suncorpmetway.co>) or confusingly similar (in the case of <suncorpbank.co>) to the Complainant’s marks. The Complainant provides evidence of the Respondent using the disputed domain names in connection with a PPC or landing website. Former decisions under the Policy have found that this type of use is indicative of bad faith. See e.g., Dormeuil Freres v. Private, WIPO Case No. DCO2010-0006. As noted by the panel in that case, it “is now well-established that the use of a parking page in this manner is strong evidence of bad faith.” (citing Serta Inc. v. Charles Dawson, WIPO Case No. D2008-1474; and Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415.)

The Complainant also refers to an unsolicited offer from the Respondent to sell the disputed domain name <suncorpmetway.co> for AUD 17,650, and provides a letter in evidence in the name of the Respondent. The Respondent denies that such an offer was made or that he authorized that letter, and relies on the fact that the letter is not signed. However, a signature is only one aspect of the evidentiary weight to be attributed to the document. The lack of a signature is not, by itself, determinative of whether it was authorized by the Respondent. In the circumstances - of a direct conflict between this aspect of the Complainant’s case and the Respondent’s - the Panel prefers the Complainant’s case. The Complainant’s case is, on the whole, credible and careful. The Panel therefore thinks it unlikely that the Complainant would fabricate evidence. On the contrary, the Respondent’s case lacks any real plausibility or evidence.

The Panel considers that the overall credibility of the Complainant’s case, and the overall implausibility of the Respondent’s, supports a finding in favour of the Complainant on this particular aspect of the evidence. This provides support for an additional finding of bad faith under paragraph 4(b)(i) of the Policy. That paragraph provides that bad faith may be found in circumstances indicating that the Respondent registered the disputed domain names primarily for the purpose of selling the registrations to the Complainant for valuable consideration in excess of the Respondent’s out-of-pocket costs.

The Panel therefore finds that the disputed domain names were registered and have been used in bad faith, for the purpose of paragraph 4(a)(iii) of the Policy.

7. Decision

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 names, <suncorpbank.co> and <suncorpmetway.co>, be transferred to the Complainant.

James A. Barker
Sole Panelist
Date: December 13, 2010