WIPO Domain Name Decision D2003-0250 for westpac-bank.com

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Westpac Banking Corporation v. Sir Oxford University aka David Seagle Doc Seagle and Mr Oxford University

Case No. D2003-0250

 

1. The Parties

The Complainant is Westpac Banking Corporation, Sydney, NSW, of Australia, represented by Mallesons Stephen Jaques of Australia.

The Respondent is Sir Oxford University aka David Seagle Doc Seagle and Mr. Oxford University, Piggabeen, New South Wales, of Australia.

 

2. The Domain Name and Registrar

The disputed domain name is registered with iH Inc. d/b/a DotR.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 2, 2003. On April 2, 2003, the Center transmitted by email to iH Inc. d/b/a DotR a request for registrar verification in connection with the domain name at issue. On April 2, 2003, iH Inc. d/b/a DotR transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on April 8, 2003. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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 April 8, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was April 28, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent�s default on April 29, 2003.

The Center appointed Simon Minahan as the sole panelist in this matter on May 5, 2003. 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.

On May 6, 2003, the Respondent forwarded a submission by e-mail to the Center. The Rules for the Uniform Domain Name Dispute Resolution Policy provide for the submission of the Complaint by the Complainant and the Response by the Respondent. No express provision is made for Supplemental Filings by either party, except in response to a deficiency notification or if requested by the Center or the Administrative Panel. On May 7, 2003, the Center acknowledged receipt of the supplemental filing to the parties and forwarded to the Panel. The Panel has read it and had regard to it in its deliberation and decision.

 

4. Factual Background

- The domain name the subject of this dispute, , is registered with DotR in Miami Florida, USA and was registered by the Respondent on July 1, 1999, and continues to be owned by him.

- The Complainant is a long established and well-known bank in Australia and the region. It has traded as "Westpac Banking Corporation" since 1982, and operates a website "".

- The Complainant is also the owner of 25 registered Australian trade marks consisting of or containing the word WESTPAC ("the Mark"). Some of the Complainant�s registered trademarks include:

(a) Australian registered trade mark no. 369,128 for the word "WESTPAC" and registered trade mark no. 369,129 Westpac "W" logo, registered on December 7, 1981, in classes 16 and 36 (banking and financial services, including insurance services); and

(b) Australian registered trade mark no. 819,241 for the word "WESTPAC", registered on January 6, 2000, in classes 9, 35, 36, 38, 41 and 42 (i.e. computer programs and equipment used in provision of banking and financial services, business advisory and consulting services, among other things); and

(c) other registered trade marks incorporating the Mark including "Westpac handycash", "Westpac Options" and "Westpac Flexi Loans".

- The Complainant enjoys substantial reputation in its "Westpac" marks in Australia and the Australiasian region.

- The Respondent has a history of registering domain names which incorporate famous marks: The Chancellor, Masters and Scholars of the University of Oxford v. DR Seagle, WIPO Case No. D2000-0308 (May 30, 2000); Harvey Norman Retailing Pty Ltd v Oxford-University WIPO Case D2000-0944 (September 25, 2000); Texas Instruments Incorporated v. DM, WIPO Case No. D2000-1448 (December 20, 2000); Imperial Chemical Industries, PLC v. Oxford University, WIPO Case No. D2001-0292 (May 11, 2001); The Chancellor, Masters and Scholars of the University of Oxford v. DR Seagle t/a Mr. Oxford-University, WIPO Case No. D2001-0746 (August 14, 2001); America Online, Inc. v. Oxford University, NAF Claim Number FA0201000104132 (March 19, 2002); America Online, Inc. v. Oxford University a/k/a Oxford U - Domains for Sale Domain-M, NAF Claim Number FA0206000114654 (August 21, 2002); and Imperial College of Science, Technology and Medicine v. Oxford University WIPO Case No. D2002-1050 (December 24, 2002).

- The Respondent repeatedly and persistently offered the domain name in dispute for sale to the Complainant.

Other findings of fact relevant to the reasoning are set forth in the relevant sections of this decision.

 

5. Parties� Contentions

A. Complainant

The Complainant contends that it is the owner of 25 registered Australian Trade marks containing the word "Westpac" and that is conducts a well established and high profile business as a banker in Australia and Australasia in connection with that mark.

It further contends that the Complainant contends that the domain name the subject of the Complaint , namely is confusingly similar to its own trade marks, that the Respondent has no legitimate interest in the domain name and that the Respondent has registered and used the name in bad faith in so far as he has used it for commercial purposes and offered to sell the domain name to the Complainant and also, has been motivated to cause harm and damage to the Complainant�s reputation.

Insofar as it makes further contentions which are not material to this decision I have made no findings concerning the same and make no mention of such contentions here.

B. Respondent

The Respondent did not reply to the Complainant�s contentions as provided for within the UDRP however a Supplemental Filing from the Respondent dated May 6, 2003, was received and read by the panel. The Panel has taken relevant aspects of it into account in making the decision. In particular the Panel notes that in the Supplemental Filing the Respondent:

(a) admits that, despite previous suggestions he would do so, he decided not to change his name by deed poll to Mr. Westpac Bank (for reasons of �woosey-ness�) and claims that he has more recently "announced" a further name change to "Mr. Macquarie Westpac Bank";

(b) asserts that the Complainant has previously indicated that they wished to buy the rights to the disputed domain name from him and that the Complainant should buy the rights to the disputed domain name rather than using the UDRP process;

(c) asserts that he runs a web-site "" and intends "talking to and of banking there".

Other than these matters the contents of the Supplemental Filing are not relevant to the UDRP process and have been disregarded in making this decision.

 

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds that the domain name is confusingly similar to the Complainant�s various "Westpac" marks.

The disputed domain name is inherently similar to the mark � indeed it is as close to identical as may be without actually being so, in the panel�s view. The entirety of the "Westpac" mark is present in the domain name and the addition of the word "bank", does nothing to distinguish the domain name from the Complainant in any respect, the term being descriptive of the Complainant�s business. Neither does the insertion of a hyphen operate to distinguish the domain name in any way. At face value therefore the domain name is confusingly similar to the Complainant�s marks. To the extent that support for this proposition is necessary the panel was directed to and notes previous UDRP decisions supporting this conclusion including N.M. Rothschild & Sons Ltd. v. Fine Art Investments Ltd. WIPO Case No. D2001-1029 (October 1, 2001) and Teradyne, Inc. v 4Tel Technology WIPO Case No. D2000-0026 (May 9, 2000) and The Chancellor, Masters and Scholars of the University of Oxford v DR Seagle t/a Mr Oxford-University WIPO Case No. D2001-0746 (August 14, 2001).

Further, the Complainant has a well established presence and reputation in the "Westpac" mark in Australia and elsewhere, as evidenced by its more than 7 million customers and high profile in the region. In the circumstances the disputed domain name is inherently similar to the Complainant�s mark and likely to be confusing to the public on face value as suggesting either an operation of the Complainant or one associated with or endorsed by it. The Panel has particular regard to and agrees with the comments made in this regard in the UDRP decisions AT&T Corp. v. John Zuccarini d/b/a RaveClub Berlin, WIPO Case No. D2002-0666, at 4 (September 5, 2002),; Telstra Corp. Ltd. v. 11/Shinpyo Kang, WIPO Case No. D2001-0623, at 5 (June 28, 2001); and Pivotal Corp. v. Discovery Street Trading Co., WIPO Case No. D2000-0648, at 5 (August 14, 2000).

The Panel is further of the view that, on the basis of the Complainant�s uncontradicted evidence (annexure 6) that the Respondent had the domain name resolve to a page promoting his views and other domain names and then resolve to the Complainant�s own site, the confusion inherent in the domain name was not merely hypothetical nor a matter of so-called "initial interest confusion". Indeed the initial interest confusion, rather than being dispelled by visiting the sites linked to the domain name, would likely have been enhanced on occasions.

In any event the Panel acknowledges the Ticketmaster Cases as establishing that initial interest confusion is sufficient for the purposes of a Complainant under this limb of the UDRP ( see eg: Ticketmaster Corp. v. Iskra Service, WIPO Case No. D2002-0165 (April 8, 2002); Ticketmaster Corp. v. Polanski, WIPO Case No. D2002-0166 (April 8, 2002); Ticketmaster Corp. v. Dotsan, WIPO Case No. D2002-0167 (April 8, 2002).

B. Rights or Legitimate Interests

The Panel concludes that the Respondent has no rights or legitimate interests in the domain name.

There is no evidence of the Respondent having any common law or registered trade mark interests which would amount to a right for the purposes of the UDRP. Neither is there any evidence of any bona fide use or offering of goods on the site prior to notice of the Complainant�s claim as contemplated by paragraph 4 (.c)(i) of the UDRP. Further in this regard, the Panel notes the Complainant�s submission as to the effects of Section 66 of the Australian Banking Act 1959 (Cth) on the possibility of the Respondent making a legitimate commercial use of the domain name. While the Panel accepts the Complainant�s analysis of the law, it should be noted that there is no evidence of any attempt by or intent of the Respondent to use the name for conducting financial services, to date.

While the Respondent has contended that he styles himself "Mr. (Macquarie) Westpac Bank" as his individual name, in an apparent attempt to assert some legitimacy in the domain name, the Panel rejects that this is genuine or anything other than a somewhat cynical and childish ruse. Indeed the Panel notes that the Respondent has resorted to a similar strategy in the past since the Respondent apparently formalised his change of name to "Oxford University" by deed poll in relation to an earlier UDRP dispute (see eg: The Chancellor, Masters and Scholars of the University of Oxford v. DR Seagle, WIPO Case No. D2000-0308 (May 30, 2000)). Having been unsuccessful on that more committed effort, his half-hearted gesture in this instance is even less persuasive of the merits of his interest in the name. There is no basis to find the Respondent is commonly known as Westpac Bank as contemplated by paragraph 4(c.)(ii) of the UDRP.

Further, the Panel finds that, as a customer of a bank and a resident in Australia, the Respondent was well aware of the Complainant and its reputation in the "Westpac" mark. While evidence provided by the Complainant of the pages to which the domain name has resolved over the last few years suggests that the Respondent has used the name to conduct a site for the purposes of criticising the bank and its policies, it also establishes that the Respondent has simultaneously offered the domain for sale and holds it as part of a "portfolio" of domain names which are for sale.

In the circumstances the Panel is prepared to infer that the Respondent selected the domain name partly to spite the Complainant and partly because it represented a high profile target destination which would enhance the "visibility" of his domain name related enterprises. The Panel accepts that parties not having a clear trade mark interest in a domain name may nonetheless have a legitimate interest in such a name as the locus for a public forum concerning the entity.

However, in circumstances such as this case, where:

(a) the domain name chosen has no characteristic which would distinguish it as a criticism site, (such as a "sucks" suffix), and

(b) there is evidence of use of the domain name to resolve to a "billboard" or other unrelated commercial activity,

the Panel is of the view that the fact that the Respondent takes the opportunity to level criticism at the Complainant on the site as well, does not promote his interest therein to a legitimate one for the purposes of the UDRP. One colorable motive or interest will not supply legitimacy where it is otherwise patently wanting. Indeed offering criticism in conjunction with an offer to sell is more likely to require that the criticism is essentially being conducted as a means of coercing a target to but so as to limit the damage being done to it.

C. Registered and Used in Bad Faith

The Panel finds that the domain name was registered and is being used in bad faith.

The Panel finds on the basis of the evidence in annexure 6 of "screen-dumps" from the web-site maintained by the Respondent under the domain name that the Respondent, by his own admission in the Supplementary filing and by the offers by the Respondent to sell the domain name to the Complainant in correspondence, while to some degree open to interpretation as taunts, nonetheless clearly indicate that the primary purpose of the Respondent in registering and using the domain name was to sell the name to the Complainant. This clearly falls within paragraph 4(b)(i) of the UDRP definition .

The Panel also accepts the Complainant�s submission that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. The presence of a commercial message and links at the site to which the domain name has resolved from time to time has removed its use from the non-commercial sphere. Moreover, as noted earlier in this decision, the absence in the selected domain name of any indication that it is not a site associated with the Complainant but is rather a criticism site, means the Respondent may not rely on paragraph 4(c)(iii) to justify the use: Compagnie Générale des Matières Nucléaires v Greenpeace International WIPO Case No. D2001-0376 (May 17, 2001); Estée Lauder Inc. v. , and Jeff Hanna, WIPO Case No. D2000-0869 (September 29, 2000); Lloyds TSB Bank Plc v Paul Brittain, WIPO Case No. D2000-0231 (contra. Legal & General Group Plc v. Image Plus WIPO Case No. D2002-1019 (December 30, 2002)).

Further the Panel notes that the Respondent has a history of registering and using domain names in which he has no right or interest, which itself is evidence of bad faith: eg: Armstrong Holdings Inc v JAZ Association FA 95234 (Nat. Arb. Forum August 17, 2000).

Finally the Panel was directed to and has regard to the comments of the Panel in America Online, Inc. v. Oxford University a/k/a Oxford U - Domains for Sale Domain - M, NAF Claim Number FA0206000114654 (August 21, 2002) as being relevant to these proceedings:

"The Respondent is attempting to benefit indirectly from the fame and accompanying Internet traffic associated with the Complainant as an opportunistic attempt to profit from the Complainant�s marks. Respondent operates numerous argumentative websites containing disparaging remarks about various topics and relies on disseminating his views via Internet users. Respondent�s opportunistic registration and use of Complainant�s marks in the subject domain names is bad faith registration and use under the Policy."

While the Complainant urges further basis for holding bad faith, the Panel, in view of its findings, need go no further in this regard.

 

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant

 

 

Simon Minahan
Sole Panelist

Dated: May 16, 2003

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