WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Commonwealth Bank of Australia v. Wissam Bakri
Case No. DME2015-0001
1. The Parties
The Complainant is Commonwealth Bank of Australia of Perth, Western Australia, Australia, represented by Wrays, Australia.
The Respondent is Wissam Bakri of Guildford, New South Wales, Australia.
2. The Domain Name and Registrar
The disputed domain name <bankwest.me> is (the “Domain Name”) is with Crazy Domains FZ-LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 6, 2015. On January 6, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 7, 2015, the Registrar transmitted by email to the Center its verification response confirming the Respondent as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on January 12, 2015.
The Center verified that the amended Complaint the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”) as adopted by doMEn, d.o.o. (doMEn), the registry operator of the .ME TLD on April 30, 2008, the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) approved by doMEn on October 1, 2012, 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 proceeding commenced on January 15, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 4, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 9, 2015.
The Center appointed Debrett G. Lyons as the sole panelist in this matter on February 16, 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.
4. Factual Background
The facts relevant to the findings and decision in this case are that:
1. the Complainant provides banking and financial services by reference to the registered trade mark BANKWEST (“the Trade Mark”);
2. the Complainant’s predecessor in business, Bank of Western Australia Ltd, first provided banking and financial services by reference to the Trade Mark in 1994;
3. the Trade Mark is the subject, inter alia, of Australian trade mark registration 628390 dated April 26, 1994;
4. the disputed domain name was registered on November 26, 2014;
5. the disputed domain name is not in use and is parked with the Registrar; and
6. there has been no commercial or other relationship between the parties and the Complainant has not authorized the Respondent to use its Trade Mark or register any domain name incorporating its Trade Mark.
5. Parties’ Contentions
The Complainant asserts trade mark rights in BANKWEST and alleges that the disputed domain name is identical or confusingly similar to the Trade Mark.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant alleges that the Respondent registered and is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
It is the responsibility of the Panel to consider whether the requirements of the Policy have been met, regardless of the fact the Respondent failed to submit a response. According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(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 and is being used in bad faith.
Having considered the Complaint and the available evidence, the Panel finds the following:
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trade mark, followed by an assessment of whether the domain name is identical or confusingly similar to the trade mark.
For the purposes of paragraph 4(a)(i) of the Policy, it is accepted that a trade mark registered with a national authority is evidence of trade mark rights. The Panel therefore accepts that the Complainant has rights in the Trade Mark by reason of its national registrations in Australia.
The Panel finds the disputed domain name to be legally identical to the Trade Mark. The disputed domain name takes the Trade Mark and merely adds the country code Top-Level Domain, “.me”, which is typically of no distinctive value.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has the burden to establish that the Respondent has no rights or legitimate interests in the disputed domain name. Nevertheless, it is well-settled that the Complainant need only make out a prima facie case, after which the onus shifts to the Respondent to rebut such prima facie case by demonstrating rights or legitimate interests.
Notwithstanding the lack of a response to the Complaint, paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
“(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.”
The publicly available WhoIs database identifies the holder of the disputed domain name as “Wissam Bakri” and so does not support any conclusion that the Respondent might be commonly known by the disputed domain name. There is no evidence that the Respondent has trade mark rights in the disputed domain name, registered or not. There is no evidence that the Respondent has permission to use the Trade Mark and the Complainant expressly states that it has not authorized the Respondent to use the Trade Mark.
The disputed domain name is not in use and so there is no evidence of use of the disputed domain name in connection with a bona fide offering of goods or services.
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and that the Respondent in failing to reply has not rebutted such prima facie case.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and so the Complainant has satisfied the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out circumstances which shall be evidence of the registration and use of a domain name in bad faith. They are:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(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.
In this case, these four scenarios are of limited assistance to the Panel. Paragraph 4(b)(iv) depends on use and there has been none. Paragraphs 4(b)(i)-(iii) focus on a respondent’s primary motivation for registration but here there is nothing in evidence to reasonably support any of those grounds.
Nonetheless, the paragraph 4(b) examples are non-limiting and in this instance the Panel finds ample evidence of bad faith registration and bad faith use.
In particular, the Complainant’s evidence indicates that the Trade Mark has been used continuously since 1994 and in recent years has been promoted widely by the Complainant, Australia’s largest banking institution. The Panel concludes that, in Australia, the Trade Mark is broadly known in connection with banking and financial services.
In the absence of a response, the Panel draws the reasonable inference that the Respondent had the Complainant and its Trade Mark in mind when registering the disputed domain name. There is no plausible explanation for the Respondent’s adoption of the Trade Mark in a domain name. The Panel finds bad faith registration.
Albeit that there is no active use of the disputed domain name, the Panel also finds bad faith in line with the case of Telstra Corporation Limited v. Nuclear Marshmallow, WIPO Case No. D2000-0003 wherein a number of well-recited factors were laid out regarding passive holding of a domain name (and applied many times subsequently), all of which are satisfied on the facts before this Panel. In particular, there is no reasonable explanation as to why the Respondent would need to use the disputed domain name.
The Panel finds that the Respondent registered and is using the disputed domain name in bad faith and, accordingly, the Complainant has satisfied the third and final limb 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.me>, be transferred to the Complainant.
Debrett G. Lyons
Date: February 28, 2015