WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Commonwealth Bank of Australia v. Howard Johns Consultancy P/L
Case No. DCO2014-0033
1. The Parties
The Complainant is Commonwealth Bank of Australia of Perth, Australia, represented by Wrays, Australia.
The Respondent is Howard Johns Consultancy P/L of Macgregor, Canberra, Australia.
2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) <bankwest.co> is registered with Crazy Domains FZ-LLC (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 24, 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 Complainant filed an amended Complaint on December 5, 2014.
The Center verified that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 8, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 28, 2014. On December 9, 2014, the Respondent submitted informal email communication to the Center expressing its willingness to transfer the Disputed Domain Name to the Complainant. On the same date, the Center invited the Complainant to consider requesting a suspension of the proceedings to explore a possible settlement between the parties. The Complainant did not request a suspension. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent’s default on December 29, 2014.
On December 30, 2014, the Center received an email communication from the Respondent. On the same date, the Center invited the Complainant to consider requesting a suspension of the proceedings to explore a possible settlement between the parties. On January 6, 2015, the Complainant confirmed to the Center that it wishes to proceed to Panel Appointment.
The Center appointed Nicholas Weston as the sole panelist in this matter on January 14, 2015. 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.
The language of this administrative proceeding is English, being the language of the registration agreement.
4. Factual Background
The Complainant operates a financial services business in Australia with more than 1.3 million customers conducting their banking through the BANKWEST branded division of the company. The Complainant holds registrations for the BANKWEST trademark and variations of it in Australia, which the Complainant uses to designate a niche retail and commercial banking business. In 2008, the Complainant acquired Bank of Western Australia Ltd which had been trading as “Bankwest” since 1994. In 2014, its “Bankwest” branded operations recorded a AUD 680million profit.
The Complainant conducts business on the Internet using a number of domain names containing the word “bankwest”, including <bankwest.com.au> with a banking website resolving from that domain name. The Complainant also sells its financial services through numerous branches.
The Respondent registered the Disputed Domain Name <bankwest.co> on February 21, 2014. The Respondent uses the Disputed Domain Name for a parking page containing sponsored links or sponsored advertisements. In this case, when the Disputed Domain Name <bankwest.co> is typed in, it redirects traffic to a parking page containing links advertising the Registrar.
5. Parties’ Contentions
The Complainant cites its trademark registrations of the trademark BANKWEST in Australia as prima facie evidence of ownership.
The Complainant submits that the mark BANKWEST is well-known in Australia. The Complainant submits that its rights in that mark predate the Respondent’s registration of the Disputed Domain Name <bankwest.co>. It submits that the Disputed Domain Name is confusingly similar to its trademark, because the Disputed Domain Name incorporates in its entirety the BANKWEST trademark (citing Autoscout24 GmbH v. Nextone Media Ltd., WIPO Case No. DCO2012-0014) and that the similarity is not removed by the addition of the country code Top-Level Domain suffix (“ccTLD”) “.co”.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because the Respondent has no trademark rights in or license to use the Complainant’s trademark (presumably alluding to Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055). The Complainant also contends that use which intentionally trades on the fame of another can not constitute a bona fide offering of goods or services (presumably alluding to Drexel University v. David Brouda, WIPO Case No. D2001-0067, “rights or legitimate interests cannot be created where the user of the Domain Names at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant”).
Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to paragraphs 4(a)(iii) and 4(b) of the Policy, and paragraph 3(b)(ix)(3) of the Rules, as using the Complainant’s BANKWEST mark in the Disputed Domain Name, “will lead to confusion on the part of internet users” (citing Paris Hilton v. Deepak Kumar, WIPO Case No. D2010-1364). The Complainant further contends that the Respondent’s “passive holding” of the Disputed Domain Name is another factor indicating bad faith.
The Respondent did not formally reply to the Complainant’s contentions. However, by emails sent on December 9, 2014 and again on December 30, 2014 the Respondent expressed willingness to “transfer the domain name across” and to “let it go” respectively.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the complainant has the burden of proving the following:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark BANKWEST in Australia. The Panel finds that the Complainant has rights in the mark BANKWEST in Australia, pursuant to Australian Trade Marks Registration Nos. 628389 through to 628395, both registered on April 26, 1994. In any event, the propriety of a domain name registration may be questioned by comparing it to a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358). The Panel finds that the Complainant has rights in the mark BANKWEST.
Turning to whether the Disputed Domain Name is identical or confusingly similar to the BANKWEST trademark, the Panel observes that the Disputed Domain Name comprises (a) an exact reproduction of the Complainant’s trademark (b) followed by the ccTLD suffix “.co”.
It is well established that the country code level designation used as part of a domain name might be disregarded (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374; Autoscout24 GmbH, v. Nextone Media Ltd, supra). The relevant comparison to be made is with the second level portion of the Disputed Domain Name “bankwest”.
It is also well established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it is confusingly similar to that mark despite the addition of a word or, in this case, the ccTLD suffix “.co” (see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Wal Mart Stores, Inc. v. Kuchora, Kal, WIPO Case No. D2006-0033).
Following the approach in Yell Ltd. v. Ultimate Search, WIPO Case No. D2005-0091, in the present case, the overall impression of the trademark is the word “bankwest” and the Disputed Domain Name consists entirely of that word.
In Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698, the panel held that “[t]he use to which the site is put has no bearing upon the issue whether the domain name is confusingly similar to the trademark, because by the time Internet users arrive at the Website, they have already been confused by the similarity between the domain name and the Complainant’s mark into thinking they are on their way to the Complainant’s Website”.
The Disputed Domain Name is therefore identical or confusingly similar to the BANKWEST trademark.
Accordingly, the Panel finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or legitimate interests in the disputed domain name:
(i) before any notice of the dispute, respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if it 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 Policy places the burden on the complainant to establish the absence of the respondent’s rights or legitimate interests in the disputed domain name. Because of the inherent difficulties in proving a negative, the consensus view is that the complainant need only put forward a prima facie case that the respondent lacks rights or legitimate interests. The evidential burden then shifts to the respondent to rebut that prima facie case. See World Wrestling Federation Entertainment, Inc v. Ringside Collectibles, WIPO Case No. D2000-1306; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, (“WIPO Overview 2.0”), paragraph 2.1.
It is well established that a respondent has a right to register and use a domain name to attract Internet traffic based solely on the appeal of a commonly used descriptive phrase, even where the domain name is confusingly similar to the registered mark of a complainant (see EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047; Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031; T. Rowe Price Associates, Inc. v. J A Rich, WIPO Case No. D2001-1044; Private Media Group, Inc., Cinecraft Ltd. v. DHL Virtual Networks Inc., WIPO Case No. D2004-0843; National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424). However, this business model is legitimate only if the domain name was registered because of its attraction as a descriptive phrase comprising dictionary words, and not because of its value as a trademark and that web site is then used to post links that are relevant only to the common meaning of the phrase comprising dictionary words. (See National Trust for Historic Preservation v. Barry Preston, supra; The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340; WIPO Overview 2.0, paragraph 2.2).
However, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because the passive holding of a domain name has been held not to create rights or legitimate interests in the domain name. The Complainant also has not licensed, permitted or authorized the Respondent to use the Complainant’s trademark.
On any objective view, the Respondent is not a reseller with a legitimate interest in a domain name incorporating a manufacturer’s mark, such that it could meet the tests set out in Oki Data Americas, Inc. v. ASD, Inc., supra. Nor, alternatively, is the Respondent commonly known by the Disputed Domain Name.
This Panel finds that the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. By misleadingly diverting consumers, it can be inferred that the Respondent is opportunistically using the Complainant’s well-known mark in order to attract Internet users to its website and has been using the Disputed Domain Name to divert Internet traffic to its web page.
The Panel finds for the Complainant on the second element of the Policy.
C. Registered and Used in Bad Faith
The third element of the Policy that the Complainant must also demonstrate is that the Disputed Domain Name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both.
“b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, 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, (relevantly):
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The examples of bad faith registration and use in paragraph 4(b) are not exhaustive of all circumstances from which such bad faith may be found (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). 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 trademark of another. (See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230).
The evidence supports the Complainant’s contention that the Respondent registered and is using the Disputed Domain Name in bad faith. The onus is on the Respondent to make the appropriate enquiries. Paragraph 2 of the Policy clearly states: “It is your [domain-name holder’s] responsibility to determine whether your domain name registration infringes or violates someone else’s rights”. The apparent lack of any good faith attempt to ascertain whether or not the Respondent was registering and using someone else’s trademarks, such as by conducting trademarks searches or search engine searches, supports a finding of bad faith (see Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; L’Oréal v. Domain Park Limited, WIPO Case No. D2008-0072; BOUYGUES v. Chengzhang, Lu Ciagao, WIPO Case No. D2007-1325; Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964; mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141).
The trademark BANKWEST is so well-known in Australia for financial services that it is inconceivable that the Respondent might have registered a domain name similar to or incorporating the mark without knowing of it.
Further, a gap of ten years between registration of the Complainant’s trademark and the Respondent’s registration of the Disputed Domain Name (containing the trademark) can in certain circumstances be an indicator of bad faith. (See Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415). In this case, the Complainant holds Australian registrations for the trademark BANKWEST since 1994, predating its rights from the Respondent’s registration by over 20 years.
A further conclusion can be drawn about the Respondent from its use of the Disputed Domain Name that the Panel considers as resolving to a parking web page containing links and advertisements. The diversion of Internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous decisions. (See L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 and Hoffmann-La Roche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814).
The Panel further notes the Complainant’s claim that inaction in the form of passive holding of a domain name registration can, in certain circumstances, constitute a domain name being used in bad faith (e.g.: Telstra Corporation Limited v. Nuclear Marshmallows, supra; Guerlain S.A. v. Peikang, supra; Mandarin Oriental Services B.V. v. Control Alt Delete, WIPO Case No. D2000-1671). This Panel finds that if one would consider the facts of this case as passive holding of the Disputed Domain Name, this would constitute evidence of the Respondent acting in bad faith under paragraph 4(b) of the Policy.
This Panel also finds that the Respondent’s emails to the Center in December 2014 evidencing its consent to transfer the Disputed Domain Name have played no part in this finding of bad faith. It is not the function of a panel, once appointed, to accede to any request the parties make simply because they make such request, or to assume that preliminary undertakings that a party may appear to have made will be consummated in a timely way or at all, or to draw inferences from matters on which the parties have not been able to reach agreement in relation to issues that the panel is to consider under the Policy, Rules and Supplemental Rules. The Parties have not demonstrated any commitment to the timely resolution of this dispute. It is entirely proper that the Complainant ignored the Respondent’s emails and chose to press the case.
This Panel finds that the Respondent has taken the Complainant’s well-known trademark BANKWEST and incorporated that mark into the Disputed Domain Name without the Complainant’s consent or authorization, and is holding it passively in bad faith.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 Disputed Domain Name <bankwest.co> be transferred to the Complainant.
Date: January 27, 2015