WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Commonwealth Bank of Australia v. Gaurav Kumar, 360 Digital Marketing Services / Bankwest Financial Loan
Case No. D2020-1362
1. The Parties
Complainant is Commonwealth Bank of Australia, Australia, represented by Wrays, Australia.
Respondent is Gaurav Kumar, 360 Digital Marketing Services, India / Bankwest Financial Loan, India.
2. The Domain Name and Registrar
The disputed domain name <bankwest.info> (the “Domain Name”) 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 May 29, 2020. On May 29, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 30, 2020, the Registrar transmitted by email to the Center its verification response confirming that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 4, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 24, 2020. Respondent did not submit any response.
Accordingly, the Center sent a commencement of Panel appointment on June 25, 2020.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on June 30, 2020. 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 a well-known Australian bank. Complainant (and its predecessors in interest) have provided financial services in Australia since 1894 under, inter alia, the previous name, the Agricultural Bank of Western Australia. Complainant’s predecessor changed its name to Rural and Industries (“R&I”) Bank of Western Australia in 1944. On December 7, 1990, the Bank of Western Australia Ltd, trading as “Bankwest” (and the predecessor in interest to the BANKWEST trade marks and Bankwest name) was incorporated under the previous name of R&I Bank of Western Australia Ltd. In 1994, the R&I Bank of Western Australia Ltd formally changed its name to Bank of Western Australia Ltd and rebranded as “Bankwest”. In October 1996, Complainant’s predecessor in interest had over 600,000 customers, over 100 service centers and the largest network of automatic teller machines in Western Australia.
On December 19, 2008, after 114 years of business in the financial services sector, Complainant’s predecessor-in-interest was acquired by Complainant and became part of Australia’s largest provider of financial services. It is currently operated as a semi-autonomous business division of Complainant. Complainant is listed on the Australian Stock Exchange. Complainant’s 2017 annual report records an annual income of AUD 1.89 billion and, in particular, an annual profit of AUD 699 million with respect to its BANKWEST branded operations.
Complainant and its predecessors in interest to the BANKWEST trade mark have a long association with the mark. The first BANKWEST trade mark (reg. no. 628382) was registered in Australia with effect from April 26, 1994. Complainant has submitted copies of numerous trademark registrations for the BANKWEST mark dating from as early as 1994. Each of these registrations comprises the word mark BANKWEST, or is a mark of which the primary and most significant element is BANKWEST. The services provided under the BANKWEST trade mark include banking services (including online banking), financial and financing services and the provision of information services and business services relating to banking and finance.
Complainant (and its predecessors in interest) has registered and used numerous top-level and second-level domain names incorporating the BANKWEST marks and Bankwest name. Complainant has provided a list of domain names owned by Complainant, which comprise or include the word “Bankwest”.
Complainant provides and promotes a full range of services and products, including online banking services, under its BANKWEST trade mark via its website at “www.bankwest.com.au” and by way of various other websites under its domain names.
The Complaint is also based on the “Bankwest” name and the registered business name of Complainant (Commonwealth Bank of Australia trading as “Bankwest”). The Bankwest name has been used and continues to be used by Complainant in relation to financial services.
The Bankwest division of Complainant was named ”Bank of the Year” in 2017 by Money Magazine, as part of its annual Consumer Finance Awards program. Money Magazine has a readership of 157,000 across Australia. Complainant’s ”Business Zero Transaction Account” was named Money Magazine’s cheapest business transaction account in 2018.
Complainant has provided evidence of marketing and promotional activities for its BANKWEST trade mark. For example, in the 2015/2016 financial year ending June 31, 2016, those marketing activities totaled AUD 7,705,000 in expenditure. Complainant has provided samples of printed marketing collateral dating back to 2005. Complainant has also submitted samples of digital marketing banners incorporating the BANKWEST trade mark appearing on the Internet in 2005, 2015, and 2016. Complainant has also referenced copies of Complainant’s predecessor in interest’s television advertising from 1994, which features the BANKWEST trade mark, as published on YouTube. Complainant promotes its services in connection with the BANKWEST trade mark via social media platforms including Facebook (which currently has 91,449 likes) and Twitter (which currently has approximately 21,100 followers).
Complainant has numerous physical branches around Australia for customers to visit for their banking needs. The BANKWEST trade mark is prominently featured on the external shop fronts of these branches.
The Domain Name was registered on April 23, 2020.
The Center received an email apparently from or on behalf of Respondent on June 4, 2020, stating:
“Kindly note the domain owner is:
Bankwest Financial Loan
Ex Part-2, Ayur Vigyan Nagar New Delhi, Delhi 110049 India
[ ] (Office telephone)
[ ]@gmail.com [ ]@bankwest.info
We are a website design company and the associated website is operated by the client above. It cannot be transferred our cancelled without his/her consent.
Kindy send all your communications to the client directly with regards to domain dispute.”
5. Parties’ Contentions
(i) Identical or confusingly similar
Complainant has submitted evidence of it registered and unregistered rights in the BANKWEST trade marks and Bankwest name. Complainant claims it has built a strong reputation in its BANKWEST mark through its substantial marketing and promotional activities in association with the mark. As a result of Complainant’s extensive use of the BANKWEST mark, Complainant has developed common law rights with respect to the BANKWEST mark in relation to its financial services.
Complainant states that the Domain Name is identical or confusingly similar to the BANKWEST trade mark. Complainant contends that the propriety of a domain name registration can be questioned under the Policy by comparing it to a trade mark registered in any country. For the purposes of this Complaint, Complainant refers to its Australian trade mark registrations.
Complainant contends it is well established that the inclusion of a generic Top-Level Domain (“gTLD”) must be disregarded for the purposes of comparing a disputed domain name and a trade mark. If the gTLD “.info” is disregarded, the Domain Name consists solely of the BANKWEST trade mark. The incorporation of a trade mark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to Complainant’s registered mark. Complainant states that the Domain Name uses the BANKWEST mark in its entirety and is therefore identical to the BANKWEST trade mark.
(ii) Rights or legitimate interests
Complainant states that Respondent has no rights or legitimate interests in respect of the Domain Name. Respondent has never been authorized by Complainant to register a domain name incorporating the BANKWEST trade mark, and has never been authorized by Complainant to use the BANKWEST trade mark in any way whatsoever. Further, the mark BANKWEST is a coined mark, does not constitute a common phrase, and has no dictionary meaning. Thus, there is no legitimate reason for Respondent choosing to adopt it other than to take unfair advantage of Complainant’s existing trade mark rights.
Complainant contends that Respondent has adopted the Domain Name after having become aware of Complainant and its BANKWEST trade mark, in order take unfair advantage of Complainant’s reputation in the BANKWEST mark and attract Internet users to Respondent’s website for commercial gain.
Complainant states that for the purposes of this element, it is sufficient for Complainant to demonstrate a prima facie case that Respondent has no rights or legitimate rights in the Domain Name. If Complainant is able to do this, then the burden of production is shifted to Respondent.
The Domain Name first came to Complainant’s attention as a result of ongoing domain name monitoring efforts. Complainant has submitted screenshots from the website hosted on the Domain Name captured on April 29, 2020, and May 22, 2020. On April 29, 2020, the operator of the website represented itself as an investment company with an office based in London, United Kingdom, known as “Bankwest Financial Loan”, offering: (a) investment and trading portfolio services; (b) lending services, including funding for insurance policies; (c) insurance advisory services, including marine insurance, money insurance, jeweler’s block insurance; and (d) taxation services. However, parts of the website appeared to be incomplete or in draft form, with content consisting of placeholder “filler” text – e.g., in the body text of the website’s “ABOUT US” page and links to the registrant’s social media pages redirecting to the website (rather than any social media page). On May 22, 2020, the website remained incomplete; however, the operator now represented itself as an investment company known as “Bankwest Financial Loan” based in India, although still displaying a photograph of London’s iconic “Big Ben” tower.
Complainant asserts that Respondent selected the Domain Name with the intention to take advantage of Complainant’s reputation by registering a Domain Name fully containing Complainant’s trade name with the intent to attract Internet users for commercial gain. Respondent is also making an illegitimate use of the Domain Name which incorporates Complainant’s well-known BANKWEST trade mark. The operator’s provision of financial, investment, insurance and related services, if directed to consumers in Australia, would infringe Complainant’s registered trade marks.
Complainant states that Respondent’s use of the Domain Name further has the potential to create confusion among users of Complainant’s services looking for Complainant. Those who attempt to visit Respondent’s website hosted on the Domain Name, thinking it belongs to Complainant, may be put at risk of identity theft and/or bank fraud.
To the best of Complainant’s knowledge, Respondent is not commonly known by the Domain Name and so may not claim any rights established by common usage. The limited registrant details available on the WhoIs record identify the registrant as “360 Digital Marketing Services” located in Maharashtra, India.
Respondent has no rights or legitimate interests in the Domain Name because Complainant did not license, permit or authorize Respondent to use the Bankwest name or the BANKWEST trade mark, or represent that Respondent is affiliated with Complainant.
The word “bankwest” does not constitute a common phrase and has no dictionary meaning. For example, neither the online Oxford Dictionary, nor the online Cambridge Dictionary return any result for the word “bankwest”. Instead, the word has developed a meaning within Australia where Complainant operates its business using BANKWEST as a badge of origin referring to Complainant and its bank. Complainant submits that the BANKWEST trade mark has no value apart from its association with Complainant and Complainant’s trade marks.
By reason of the above, Complainant submits it has established a prima facie case against Respondent demonstrating that Respondent has no legitimate rights or interests in the Domain Name, such as to satisfy the requirements of paragraph 4(a)(ii) of the Policy.
(iii) Registered and used in bad faith
Complainant contends that Respondent registered and has used, and is continuing to use, the Domain Name in bad faith, by intentionally attempting to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.
Complainant states the objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trade mark of another. Here, Respondent registered the Domain Name in bad faith. It is so obviously connected with the trade mark and company name of Complainant; Respondent has no connection to Complainant and therefore, use of the Domain Name by someone with no connection with Complainant suggests opportunistic bad faith.
Respondent has demonstrated bad faith use by: (a) registering Complainant’s trade mark in a Domain Name to mislead the public and create a false association with Complainant; and (b) using the Domain Name to intentionally attempt to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s mark as to source, sponsorship, affiliation, or endorsement of Respondent’s website.
The Domain Name is likely to confuse consumers as to whether Complainant is the source of, has sponsored or endorsed, or is affiliated with Respondent’s website, because the Domain Name is confusingly similar to the BANKWEST trade mark.
Further, Complainant states that Respondent registered the Domain Name in bad faith on April 23, 2020, because Respondent knew, or ought to have known, about the existence of the BANKWEST trade marks. Complainant’s first BANKWEST trade mark was filed for registration (with effect from April 26, 1994) 26 years before the Domain Name was registered. A Google search would have revealed Complainant’s trade mark rights to Respondent immediately.
When all of the circumstances of Respondent’s actions are considered cumulatively, a finding of bad faith is clearly open to the Panel. To summarize the salient points:
(a) the Domain Name comprises Complainant’s well-known brand and registered BANKWEST trade mark;
(b) the Domain Name features the word “bankwest” which has no meaning or common use, other than as a reference to Complainant and its product and services;
(c) Respondent refers to itself as “Bankwest Financial Loan” and represents itself as an investment company providing various financial, investment, insurance and related services;
(d) Respondent is hosting a website on the Domain Name to deliberately deceive unsuspecting users into dealing with Respondent when looking for Complainant; and
(e) Respondent registered the Domain Name 26 years after Complainant’s predecessor in interest first commenced using the Bankwest name.
In all of the circumstances, Complainant submits that each of the elements of paragraph 4(a) of the Policy is satisfied, and respectfully requests that the Domain Name be transferred to Complainant.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
In order to succeed on its Complaint, Complainant must demonstrate that the three elements set forth in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith.
A. Identical or Confusingly Similar
The Panel finds that Complainant has established rights in its BANKWEST trade mark, based on longstanding use of the mark in Australia and ownership of trade mark registrations in that country. Further, the Panel determines that the Domain Name is identical to the BANKWEST mark. Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), states that the test of confusing similarity “typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name”. Here, the Panel determines that Domain Name, which is comprised of the word “bankwest”, is identical to Complainant’s BANKWEST trademark. The use of the gTLD “.info” does not alter this analysis.
Accordingly, the Panel finds that that the Domain Name is confusingly similar to a trade mark in which Complainant has rights, in accordance with paragraph 4(a)(i) of the Policy. Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
Regarding the second element of the Policy, WIPO Overview 3.0, section 2.1, states that “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”.
Here, the Panel determines that Complainant has made out a prima facie case, while Respondent has failed to reply to Complainant’s contentions. The Panel finds that Complainant has not authorized Respondent to use its distinctive BANKWEST trademark in the Domain Name or otherwise; that Respondent is not commonly known by the Domain Name; that Respondent has not used the Domain Name for a legitimate noncommercial or fair use, nor used it in connection with a bona fide offering of goods or services. Instead, the Domain Name was registered 26 years after Complainant’s predecessor in interest first registered the BANKWEST trade mark and has been used to resolve to a website that purports to offer financial services similar to those offered by Complainant. The website itself, as viewed by the Panelist, is incomplete and contains links that do not work and text that is nonsensical. The evidence submitted by Complainant shows that Respondent, between April and May 2020, changed its website so that its claimed location moved from the United Kingdom to India. All of this evidence in this case suggests, and there is nothing to rebut, that the website is fraudulent and thus poses a risk to Complainant’s customers or to those whom might be looking for Complainant’s genuine website. Respondent’s use of the Domain Name in this manner does not give rise to any right or legitimate interest in it.
Accordingly, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in respect of the Domain Name, which has not been rebutted by Respondent. The Panel therefore finds that Complainant has established the second element of the Policy in accordance with paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Name in bad faith. WIPO Overview 3.0, section 3.1, states that “bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark”.
Here, the Panel determines that the Domain Name was registered and is being used in bad faith. Based on the evidence, there is little doubt that Respondent was aware of Complainant and its BANKWEST mark, and intentionally targeted that mark, when registering the Domain Name. Complainant’s trade mark, as noted by Complainant, is unique and distinctive. The mark does not correspond to a common word, phrase or name used by third parties; instead, it is a term coined by Complainant’s predecessor in interest and owing to its longstanding use by Complainant, it is highly distinctive and unique. The Panel observes that Respondent registered the Domain Name, which incorporates Complainant’s distinctive BANKWEST trade mark in its entirety. Given the reputation of the BANKWEST trade mark and the fact that the Domain Name is so obviously connected with Complainant’s mark, the Panel considers that the only logical conclusion is that Respondent targeted Complainant and its BANKWEST mark when registering the Domain Name. See Accenture Global Services Limited v. ICS Inc./PrivacyProtect.org, WIPO Case No. D2013-2098 (finding that it was unlikely that the respondent was unaware of complainant and its ACCENTURE mark at the time the disputed domain name was registered).
This point is further confirmed by Respondent’s use of the Domain Name in connection with a website impersonating a financial services company purporting to offer services competitive with those of Complainant, as discussed above. In these circumstances, it is clear that the Domain Name has been registered in bad faith and that Respondent is acting in bad faith by purposefully creating a likelihood of confusion with the BANKWEST trade mark as to the source, sponsorship, affiliation, or endorsement. Respondent had an opportunity to submit a Response in this case in which it could deny these contentions; instead, it failed to provide a Response.
In conclusion, in this case, where Respondent moreover failed to submit a reply to Complainant’s contentions, the Panel determines that, for all of the above reasons, the Domain Name was registered and is being used in bad faith. Accordingly, Complainant has satisfied the third element of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <bankwest.info>, be transferred to Complainant.
Christopher S. Gibson
Date: July 21, 2020