WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ING Bank (Australia) Limited, ING Groep N.V. v. Chillax Finance Group, Jason Dullard

Case No. DAU2019-0012

1. The Parties

The Complainant is ING Bank (Australia) Limited, Australia (“First Complainant”) and ING Groep N.V., Netherlands (“Second Complainant”), both represented by CSC Digital Brand Services Group AB, Sweden.

The Respondent is Chillax Finance Group, Jason Dullard, Australia, self-represented.

2. The Domain Name and Registrar

The disputed domain name <ingaustralia.com.au> is registered with GoDaddy.com, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 9, 2019. On the same day, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain name. On the same day, GoDaddy.com, LLC 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 .au Dispute Resolution Policy (the “auDRP”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au 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 April 16, 2019. In accordance with the Rules, paragraph 5(a), the due date for Response was May 6, 2019. The Response was filed with the Center on May 3, 2019. The Complainant made an unsolicited supplemental filing on May 10, 2019. The Respondent replied on the same day.

The Center appointed Matthew Kennedy as the sole panelist in this matter on May 20, 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

The Complainants are banks that use the ING brand in connection with their services. The First Complainant is a wholly owned Australian subsidiary of the Second Complainant, a Dutch company. The First Complainant has held an Australian banking licence since 1994 and the Australian Business Name “ING” since 2011 and has won multiple awards, including Australian Financial Institution of the Year – Non‑Big 4 at the RFi Australian Retail Banking Awards 2016. The Second Complainant holds Australian trademark registration number 849264 for ING, registered from September 5, 2000 and specifying services in classes 35 and 36, including business management, financial affairs and banking. That trademark registration remains current. The Second Complainant also registered the domain name <ing.com> on February 23, 1999, that it uses in connection with an official website where it provides information about itself and its services. ING Corporate Services Pty Ltd is the registrant of the domain name <ing.com.au>.

The Respondent is an Australian company and its contact person, Jason Dullard. Mr. Dullard was a customer of the First Complainant in 2018. Mr. Dullard registered the business name “International Networking Group Australia” on April 23, 2019, after the commencement of this proceeding.

According to searches of the auDA WhoIs registration data database provided by the Complainants, the disputed domain name was registered in the name of the Second Complainant as recently as March 18, 2012 and it was acquired by the Respondent no later than October 21, 2017.

According to a search of the Internet archive provided by the Complainants, on January 18, 2018 the disputed domain name redirected to <chillaxfinancegroup.com.au>, which resolved to a website for the Respondent, where it offered mortgage broker services for home loans. The Complainant’s representative sent cease-and-desist letters by email to the Respondent on December 4, 2018, December 17, 2018 and December 28, 2018. At the time of this proceeding, the disputed domain name does not resolve or redirect to any active website; rather, it is passively held.

5. Parties’ Contentions

A. Complainants

The disputed domain name is identical or confusingly similar to the Complainants’ ING mark. The disputed domain name wholly incorporates that mark and adds the descriptive term “Australia”.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not commonly known by the disputed domain name. The Respondent is not sponsored by or affiliated with the Complainants in any way. The Complainants have not licensed, authorized, or permitted the Respondent to register domain names incorporating the Complainants’ trademark. The Respondent is making neither a bona fide offering of goods or services nor a legitimate, noncommercial fair use of the disputed domain name. Rather, the Respondent offered and attempted to sell products that directly competed with the Complainants’ own offerings.

The disputed domain name has been registered or subsequently used in bad faith. At the time of registration of the disputed domain name, the Respondent knew, or at least should have known, of the existence of the Complainants' trademarks. The disputed domain name currently resolves to an inactive site. Due to the fame of the Complainants’ trademarks, it must also be held that the Respondent has intentionally misappropriated the Complainants’ trademarks as a way of attracting Internet users to the Respondent’s website. The Respondent’s use of the disputed domain name, prior to receiving the Complainants’ cease-and-desist letters, constituted a disruption of the Complainants’ business and qualified as bad faith registration and use. The disputed domain name can only be taken as intending to cause confusion among Internet users as to the source of the disputed domain name.

B. Respondent

The Respondent understands that if a domain name is unregistered, it is available for anyone to purchase. It is ridiculous that anyone would have to search international trademarks before knowing if they are entitled to purchase a domain name. The Respondent has only heard of ING as “ING Direct”, and in more recent years “ING”, but never as “ING Australia”. The Respondent submits a bank statement that displays the ING logo rather than “ING Australia”. If the disputed domain name was so important to the Complainants, they should have reserved it. This is a case of a large corporate trying to bully a small businessman. ING Australia is not known at all in the Australian market and, if they have recently rebranded or are planning to do so, they should have purchased the disputed domain name.

The Respondent is a small entrepreneur and purchased the disputed domain name because he is a member of BNI (an international business networking organisation) and has an idea to launch a similar concept within Australia and then hopefully one day globally. The Respondent acquired the disputed domain name so that this business model could come under International Networking Group Australia, as the domain name would be too long to contain the full words. The Respondent organization recently registered the business name “International Networking Group Australia”.

6. Discussion and Findings

6.1 Procedural Issues

A. Multiple Complainants

The Complaint was filed by two complainants against a single respondent. Both Complainants form part of the same corporate group, as the First Complainant is a wholly owned subsidiary of the Second Complainant. The First Complainant operates in Australia and holds the Australian business name “ING”, while the Second Complainant holds the ING trademark registration. The Panel finds that the Complainants have a common grievance against the Respondent and that it is efficient to permit the consolidation of their complaints. Therefore, the Complainants are referred to below collectively as “the Complainant” except as otherwise indicated.

B. Supplemental Filings

The Complainant made an unsolicited supplemental filing on May 10, 2019, in reply to the Response. The Respondent sent an email communication to the Center in rejoinder on the same day.

Paragraph 12 of the auDRP Rules provides that “[i]n addition to the complaint and the response, the Panel may request or permit, in its sole discretion, further statements or documents from either of the Parties”. At the same time, paragraph 10(b) and (c) require the Panel to ensure that “each Party is given a fair opportunity to present its case” and that “the administrative proceeding takes place with due expedition”. The purpose of the auDRP is “to provide a simple, inexpensive and quick administrative procedure for dealing with domain name entitlement disputes”. See Brilliance Publishing, Inc. v. My Brilliance Pty Ltd / Ceinwen Schneider, WIPO Case No. DAU2013-0007.

Accordingly, the Panel will only permit the supplemental filings in exceptional circumstances, such as new facts, newly available evidence, or a material allegation in a later filing that could not reasonably have been anticipated at the time of the Complaint or Response.

Neither Party alleges any exceptional circumstances that would justify accepting its supplemental filing. The Panel has reviewed both supplemental filings and can see no such circumstances. Moreover, there is nothing in either supplemental filing that would alter the Panel’s conclusions on any element of the dispute.

The Panel finds that the Parties were already given a fair opportunity to present their respective cases in the Complaint and the Response. In the interests of ensuring that this administrative proceeding takes place with due expedition, the Panel declines to accept the Parties’ respective supplemental filings as part of the record of this proceeding.

6.2 Substantive Issues

Paragraph 4(a) of the auDRP provides that a complainant must prove each of the following elements:

(i) the disputed domain name is identical or confusingly similar to a name, 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 name; and

(iii) the disputed domain name has been registered or subsequently used in bad faith.

The burden of proof of each element is borne by the Complainant.

A. Identical or Confusingly Similar

Based on the evidence presented, the Panel finds that the Complainant has rights in the ING trademark.

The disputed domain name wholly incorporates the ING trademark as its initial and only distinctive element.

As the Respondent notes, the disputed domain name also includes the country name “Australia”. However, a geographical term is generally incapable of dispelling confusing similarity between a domain name and a trademark for the purposes of the auDRP. See, for example, Jaguar Land Rover Limited v. The Trustee for the Trivett Family Trust, WIPO Case No. DAU2016-0033. In the present case, the combination of the ING mark and the country name “Australia” gives the false impression that the disputed domain name is used by an Australian affiliate of the Complainant or an Australian company endorsed by the Complainant.

The disputed domain name also includes the Second-Level Domain (“2LD”) and country code Top-Level Domain (“ccTLD”) “.com.au”. The 2LD and ccTLD are generally disregarded in an assessment of identity or confusing similarity for the purposes of the auDRP. See BT Financial Group Pty Limited v. Basketball Times Pty Ltd, WIPO Case No. DAU2004-0001.

Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the auDRP.

B. Rights or Legitimate Interests

Paragraph 4(c) of the auDRP sets out circumstances which, without limitation, if found by the Panel to be proven based on its evaluation of all evidence presented, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the auDRP:

(i) before any notice to [the respondent] of the subject matter of the dispute, [the respondent’s] bona fide use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with an offering of goods or services (not being the offering of domain names that you have acquired for the purpose of selling, renting or otherwise transferring); or

(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] 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 [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondent is not currently using the disputed domain name in connection with any active website. However, prior to this proceeding it used the disputed domain name – which is confusingly similar to the Complainant’s ING trademark – to redirect to a website where it offered home loan brokerage services that competed with the Complainant’s services. That does not constitute a bona fide use of the disputed domain name in connection with an offering of goods or services within the terms of paragraph 4(c)(i) of the auDRP. Moreover, as a commercial use, that does not constitute a legitimate noncommercial or fair use of the disputed domain name within the terms of paragraph 4(c)(iii) of the auDRP either.

The Respondent is named “Chillax Finance Group” and its contact person is “Jason Dullard”, not “ING Australia”. There is no evidence that the Respondent has been commonly known by the disputed domain name within the terms of paragraph 4(c)(ii) of the auDRP.

Based on the above, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

Turning to the Respondent, Mr. Dullard submits that he proposes to use the disputed domain name in connection with a business networking organization. He provides evidence that he has registered the Australian business name “International Networking Group Australia”.

The Panel has reviewed the Respondent’s evidence. A mere business name registration does not constitute evidence of “demonstrable preparations” to use a domain name in connection with an offering of goods or services. In any case, this business name registration post-dates the Respondent receiving notice of the subject matter of the dispute and may be disregarded. Accordingly, the Panel finds that the Respondent has failed to rebut the Complainant’s prima facie case.

Therefore, the Panel finds that the Respondent has no rights to, or legitimate interests in, the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the auDRP.

C. Registered or Subsequently Used in Bad Faith

The Panel notes that the third element of the auDRP uses the word “or” which means that it is sufficient for the Complainant to demonstrate either that the disputed domain name has been registered in bad faith, or that it has been subsequently used in bad faith, but not necessarily both.

Paragraph 4(b) of the auDRP provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, although it is not an exhaustive list of such circumstances. The fourth circumstance is as follows:

(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the complainant's name or mark as to the source, sponsorship, affiliation, or endorsement of that website or location or of a product or service on that website or location.

The Respondent acquired the disputed domain name many years after the Complainant obtained its Australian trademark registration for ING in 2000, and many years after the Complainant began using that trademark in Australia, although the date on which the Respondent acquired the disputed domain name is not disclosed on the record of this proceeding. Mr. Dullard was a customer of the Complainant as recently as 2018 and aware of the Complainant’s ING trademark. The disputed domain name wholly incorporates the Complainant’s ING trademark and merely combines it with a geographical term (i.e. “Australia”) and a 2LD and ccTLD suffix. This creates a likelihood of confusion with the Complainant’s ING mark as it gives the false impression that a website to which the disputed domain name resolves is operated by the Australian affiliate of the Complainant, or an Australian company endorsed by the Complainant. The Respondent used the disputed domain name as recently as January 2018 to redirect to a website that offered home loan brokerage services that competed with the Complainant’s services. Therefore, the Panel finds that, by using the disputed domain name, the Respondent intentionally attempted to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of that website within the terms of paragraph 4(b)(iv) of the auDRP.

The change in the Respondent’s use of the disputed domain name after receipt of the Complainant’s cease and desist letters does not alter the Panel’s conclusion. It may actually constitute further evidence of bad faith.

The Respondent submits that if a domain name is unregistered, it is available for anyone to purchase. However, the Panel notes that the Respondent’s Registration Agreement incorporated the auDRP, which includes a reminder in paragraph 2 that it was the Respondent’s responsibility to determine whether the disputed domain name registration infringed or violated someone else's rights.

The Respondent argues that if the disputed domain name was so important to the Complainant, the Complainant should have reserved it. The Panel notes that the Second Complainant is indeed a former registrant of the disputed domain name. However, a failure by a trademark owner to renew a domain name registration does not constitute a relinquishment or waiver of its trademark rights.

Therefore, the Panel finds that the disputed domain name has been used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the auDRP.

D. Reverse Domain Name Hijacking

The Respondent describes the Complaint as harassment and bullying and asks to be allowed to operate its business in peace. Given that the Panel has found in favour of the Complainant, the Panel does not find that the Complaint was brought in bad faith or that it constitutes an abuse of the administrative proceeding.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the auDRP and 15 of the Rules, the Panel orders that the domain name <ingaustralia.com.au> be transferred to the Complainant.

Matthew Kennedy
Sole Panelist
Date: May 27, 2019