WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Commonwealth Bank of Australia v. Jojo Portano
Case No. D2019-1044
1. The Parties
Complainant is Commonwealth Bank of Australia, Australia, represented by Wrays, Australia.
Respondent is Jojo Portano, Italy.
2. The Domain Name and Registrar
The disputed domain name <bankwest-au.com> is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 7, 2019. On May 7, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 7, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on May 13, 2019 providing the registrant and contact information disclosed by the Registrar and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on May 9, 2019. Complainant filed a second amended Complaint on May 14, 2019.
The Center verified that the Complaint together with the amended Complaint and the second amended 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 15, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 4, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 5, 2019.
The Center appointed David Perkins as the sole panelist in this matter on June 12, 2019. 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
4.A.1 Complainant is a well known Australian bank, which trades under the BANKWEST name and mark. Complainant and its predecessors have provided financial services in Australia since 1894. From 1923, it traded as the Agricultural Bank of Western Australia until changing its corporate name in 1944 to Rural and Industrial Bank of Western Australia. Then in 1994, Complainant changed its name to Bank of Western Australia and rebranded as “Bankwest”.
4.A.2 In December 2008, the bank was acquired by Complainant and became part of Australia’s largest provider of financial services. Exhibited to the re-amended Complaint is Complainant’s 2018 Annual Report which records income of AUD $1.78 billion with respect to its BANKWEST operations.
The BANKWEST trade mark
4.A.3 Exhibited to the re-amended Complaint are particulars of the 16 registered Australian BANKWEST trade marks. They consist of Registration Nos. 628,382 to 628,388 for the BANKWEST mark and logo in Classes 6; 9; 16; 25; 35; 36; and 41 and Registration nos. 628,389 to 628,395 for the BANKWEST wordmark simpliciter in the same classes, all registered on April 26. 1994. As noted in paragraph 4.A.1 above, the rebranding to “Bankwest” was adopted in 1994. Two further registrations of the BANKWEST and logo mark were registered on June 22, 2007 in the same classes with the addition of Class 38.
4.A.4 Also exhibited are a further 23 Australian registered trade marks where the first word and dominate feature is BANKWEST. For example, BANKWEST BUSINESS SOLUTIONS, BANKWEST TELENET SAVER etc. All, but one, are registered in Class 36, the earliest dating from May 1999. The exception is BANKWEST FOUNDATION registered on March 20, 2014 in Classes 35; 36; and 41. There is also a pending trade mark application for BANKWEST HALO in Classes 9; 14; and 36 filed on March 8, 2018.
4.A.5 Complainant also asserts common law trade mark rights in the BANKWEST name and mark for banking services, financial and financing services, securities brokerage and the provision of information services and business services relating to banking and finance. In support of that claim, exhibited to the re-amended Complaint is evidence of banking awards, BANKWEST marketing material dating from 2005, examples of digital marketing banners incorporating the BANKWEST trade mark also dating from 2005, television advertising dating from 1994, promotion of its services on Complainant’s Facebook and Twitter accounts, and an illustration of how the BANKWEST trade mark and logo is prominently used on the frontage of what it describes as shop fronts.
The BANKWEST domain names
4.A.6 Exhibited to the re-amended Complaint are 59 domain names registered by Complainant of which BANKWEST is the dominant feature. For example, <bankwest.com>; <bankwest.org>; <bankwest.net.au>; <bankwest.biz>; <bankwest.mobi>; <bankwest.com.au>; and <bankwest-com.au>.
4.B.1 In the absence of a Response, what is known of Respondent is contained in the re-amended Complaint and its annexes.
4.B.2 The disputed domain name was created on March 13, 2019.
4.B.3 Exhibited to the re-amended Complaint is a printout of the website to which the disputed domain name resolved in March 2019. It presents an online banking login page, which prominently features at its head the BANKWEST trade mark and logo, followed by the words “Bankwest Online Banking” requesting completion of a personal access number (“PAN”) and secure code. Also exhibited is the equivalent legitimate Bankwest login page to be found at Complainant’s website. As will be noted below, the two login pages are virtually identical.
4.B.4 Complainant states that, upon discovering that the disputed domain name was hosting a phishing website, it notified various third-party blocking services. As a result, when accessing the disputed domain name on May 6, 2019 using a browser with a blocking service enabled, the web browser returned a warning message headed “Deceptive site ahead” with the following wording:
“Attackers on www.bankwest-au.com may trick you into doing something dangerous like installing software or revealing your personal information (for example, passwords, phone numbers, or credit cards).”
A printout of that warning message is exhibited to the re-amended Complaint.
4.B.5 Also exhibited is a printout of the error message displayed in Internet Explorer when the disputed domain name was addressed on May 6, 2019. That message is headed “This page cannot be displayed” and, in a bullet point below, continues:
“Make sure the web address http://www.bankwest-au.com is correct.”
5. Parties’ Contentions
Identical or Confusingly Similar
5.A.1 First, as already noted, the re-amended Complaint exhibits particulars of Complainant’s Australian registered trade marks for the BANKWEST mark. Complainant further asserts that it has common law trade mark rights in that name and mark for banking and financial services: see, paragraph 4.A.5 above.
5.A.2 Second, the disputed domain name contains the BANKWEST trade mark in its entirety.
5.A.3 Third, addition to the suffix “-au” is, Complainant says, an obvious abbreviation of and reference to the country in which it primarily does business, namely Australia. For the purpose of assessing confusing similarity, Complainant’s case is that that suffix should be disregarded, the dominant element of the disputed domain name being “bankwest”, which is identical to its BANKWEST trade mark. Indeed, including “au” in the disputed domain name operates, Complainant says, as a descriptor of the place where it primarily does business and, consequently, is only likely to increase confusion.
5.A.4 In the light of the foregoing and citing decisions noted in paragraphs 1.7 and 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), Complainant asserts that the disputed domain name is confusingly similar to its BANKWEST trade mark.
Rights or Legitimate Interests
5.A.5 First, Complainant says that its has never licensed or otherwise authorised Respondent to use the BANKWEST trade mark.
5.A.6 Second, from the printout of the website to which the disputed domain name resolves (described in paragraph 4.B.3 above), Complainant asserts that the disputed domain name is being used to host a phishing website. In the that respect, Complainant points to the virtually identical content of that website to its own legitimate login page. Citing the Decision in Wikimedia Foundation, Inc. v. Walter Gerbert, WIPO Case No. D2016-1346 (listed in paragraph 2.13.1 of the WIPO Overview 3.0), that is not, Complainant says, use of that domain name for a bona fide offering of goods or services.
5.A.7 Nor, Complainant says, is it making a legitimate non-commercial or fair use of the disputed domain name. Indeed, given the similarities between Respondent’s phishing website and Complainant’s legitimate login page, it is clear – Complainant says – that such use of the disputed domain name is intended for commercial gain to misleadingly divert customers.
5.A.8 Third, Complainant says that, to the best of its knowledge, Respondent is not commonly known by the disputed domain name. Indeed, Respondent appears to have taken active steps to conceal his identity by using a privacy service for the disputed domain name. Further, Complainant points to the fact that BANKWEST is neither a common phrase nor does it have a dictionary meaning. Rather, as described in paragraphs 4.A.3 to 4.A.5 above, it has developed a meaning within Australia as a badge of origin referring to the banking and financial services which it provides.
5.A.9 Based on the foregoing, Complainant submits that Respondent cannot demonstrate rights to or legitimate interest in the disputed domain name.
Registered and Used in Bad Faith
5.A.10 First, again citing Wikimedia Foundation, Inc. v. Walter Gerbert, WIPO Case No. D2016-1346, Complainant relies on use of the disputed domain name to host a phishing website as evidence of Respondent’s bad faith under paragraph 4.b(iv) of the Policy. The website hosted at the disputed domain name – which it submits is confusingly similar to tits BANKWEST trade mark – is, Complainant says, a deliberate attempt by Respondent to deceive unsuspecting users into providing their login details for Complainant’s banking services.
5.A.11 Second, given the notoriety of the BANKWEST trade mark for banking and financial services, it cannot – Complainant says – have been registered in good faith.
5.A.12 Third, to the extent that the disputed domain name can be considered to be held passively – as to which, see the blocking measures described in paragraphs 4.B.A and 4.B.5 above – citing and quoting from Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, Complainant asserts that in the circumstances of this case inaction amounts to bad faith use. It is not possible, Complainant says, to conceive of any actual or contemplated active use of the disputed domain name by Respondent that would be legitimate. That case is cited in paragraph 3.3 of the WIPO Overview 3.0.
5.A.13 In the circumstances, Complainant’s case is that the disputed domain name has been registered and is being used in bad faith.
5.B.1 As noted, no Response has been filed.
6. Discussion and Findings
6.1 The Policy paragraph 4(a) provides that Complainant must prove each of the following in order to succeed in an administrative proceeding:
(i) that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which Complainant has rights; and
(ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate Respondent’s rights or legitimate interests in the disputed domain name in issue.
6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.
Identical or Confusingly Similar
6.5 On the basis of the evidence summarized in paragraphs 4.A.3 and 4.A.4 above, Complainant clearly has rights in the registered BANKWEST trade mark. Additionally, in the Panel’s view, considering the requirements to establish common law trade mark rights laid out in paragraph 1.3 of the WIPO Overview 3.0, the evidence summarised in paragraphs 4.A.5 and 4A.A.6 above is sufficient to establish Complainant’s common law trade mark rights in BANKWEST for banking and financial services.
6.6 For the reasons summarized in paragraphs 5.A.2 to 5.A.4 above the disputed domain name is clearly confusingly similar to Complaint’s BANKWEST trade mark.
6.7 Accordingly, the re-amended Complaint meets the requirements of paragraph 4.a(i) of the Policy.
Rights or Legitimate Interests
6.8 The Panel considers that the case summarised in paragraphs 5.A.5 to 5.A 8 above is well made out. Phishing is generally regarded as a fraudulent attempt by impersonating a legitimate entity to obtain sensitive information such as users’ names, online banking accounts, passwords and credit card details by disguising oneself as a trustworthy entity in an electronic communication. It is clear from the evidence summarised in paragraphs 4.B.3 to 4.B.5 above, that Respondent’s use of the disputed domain name is to host a phishing website and thereby mislead consumers and damage Complainant’s business.
6.9 Accordingly, the re-amended Complaint meets the requirement of paragraph 4.a(ii) of the Policy.
Registered and Used in Bad Faith
6.10 Again, the Panel finds Complainant’s case summarized in paragraphs 5.A.10 to 5.A.12 above well made out. Complainant has convincingly evidenced bad faith registration and use under paragraph 4.b(iv) of the Policy.
For all 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-au.com> be transferred to Complainant.
Date: July 2, 2019