The Complainant is Commonwealth Bank of Australia of Perth, Australia, represented by Wrays, Australia.
The Respondent is Rodica Ilea of Cluj-Napoca, Romania. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 19, 2013. On November 19, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 19, 2013, 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. On November 25, 2013, the Center informed the Complainant that its Complaint was administratively deficient and invited it to file an amended Complaint. On November 26, 2013, the Complainant filed an amended Complaint.
The Center verified that the Complaint together with 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 November 28, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 18, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 19, 2013.
The Center appointed Neil, J. Wilkof as the sole panelist in this matter on December 31, 2013. 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 disputed domain name (the “Disputed Domain Name”) was registered on August 14, 2013.
The Complainant has set out in Annexure 3 to the Complaint information about multiple trademark registrations in Australia for the mark BANKWEST (hereinafter “the Mark”), including the following registrations that consist solely of the Mark:
- Australian registration no. 628389 in class 6, registered on April 26, 1994;
- Australian registration no. 628390 in class 9, registered from April 26, 1994;
- Australian registration no. 628391 in class 16, registered on April 26, 1994;
- Australian registration no. 628392 in class 25, registered from April 26, 1994;
- Australian registration no. 628393 in class 35, registered on April 26, 1994;
- Australian registration no. 628394 in class 36, registered from April 26, 1994;
- Australian registration no. 628395 in class 41, registered on April 26, 1994
The Panel, within the scope of its authority, has conducted an independent search of the public database of the Trade Mark Registry of Australia, which search confirms these registrations (hereinafter “the Registrations”). 5. Parties’ Contentions A. Complainant
The Complainant has provided financial services in Australia since 1894, first under the name Agricultural Bank of Western Australia, then under the name Rural and Industries Bank of Western Australia (from 1944) and more recently under the name Bank of Western Australia Ltd. (from 1994), at which time the bank adopted the Mark. On December 19, 2008, Bank of Western Australia Ltd. was acquired by the Complainant, the largest provider of financial services in Australia and the Complainant is now operated as a semi-autonomous business division of the Complainant.
The services provided by the Complainant in association with the Mark include banking services, financial and financing services and the provision of information and business services in connection with banking and finance. The Complainant has recorded profits in the amount of AUD 56 million for the 2013 financial year for the services provided under the Mark. The Complainant provided business and corporate loans under the Mark in the 2013 financial year in the amount of AUD 172 billion.
The Complainant holds numerous registrations of marks in Australia that include or are comprised solely of the Mark. Moreover, the Mark has acquired significant goodwill and reputation in its relevant fields of activity.
The Disputed Domain Name, which contains the Mark in its entirety, is confusingly similar to the Mark. The addition of the element “-com” and the generic Top-Level Domain (gTLD) “.com” do not serve to distinguish the Disputed Domain Name from the Mark.
The Respondent does not have any right or legitimate interest in the Disputed Domain Name. The Complainant did not grant to the Respondent any license, permission, authorization or other form of consent to use the Mark. The Respondent is not making any bona fide offering of goods or services under the Disputed Domain Name. The Respondent is not making any legitimate noncommercial or fair use of the Disputed Domain Name.
The Disputed Domain Name was registered and is being used in bad faith. The Respondent registered the Disputed Domain Name to mislead the public and to create a false association with the Complainant, has passively held the Disputed Domain Name for no legitimate purpose from at least August 16, 2013. Since November 12, 2013, the Respondent has created links to services in the financial field provided by third parties, thereby misleading the public and creating a false association with the Complainant. The Respondent has a pattern of recidivist bad faith registration of domain names in the financial field, especially by the use of the element “-com” in conjunction with the name of various third-party financial institutions.
Based on the foregoing, the Complainant alleges the following:
1. The Disputed Domain Name is confusing similar to the Mark.
2. The Respondent has no rights or legitimate interests in the Disputed Domain Name.
3. The Disputed Domain Name was registered and has been used by the Respondent in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that the Disputed Domain Name should be cancelled or transferred:
(i) The Disputed Domain Name is identical or confusingly similar to a trademark 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;
(iii) The Disputed Domain Name has been registered and is being used in bad faith.
The Respondent has failed to respond to the Complaint. Therefore, the Panel may accept all reasonable allegations set forth by the Complainant as true and accurate. A. Identical or Confusingly Similar
The Panel finds that the Complainant has carried its burden of proof on this element and has demonstrated a prima facie case that the Disputed Domain Name is confusingly similar.
The Panel notes that the Complainant, in error (paragraph 7.3(a) of the Complaint), refers “to the Complainant’s UK trade mark registrations”, rather than to Australian trade mark registrations, as the basis for the Complainant’s rights in the mark. Nevertheless, as set out in paragraph 4 of the Decision above, the Panel has confirmed the accuracy of the Registrations. Based on the Registrations, the Panel rules that the Complainant has established rights in the Mark.
In determining whether there is confusing similarity between a domain name and a mark with respect to paragraph 4(a)(i) of the Policy, special attention should be paid to the mark as compared to the dominant part of the domain name. As the panel in Dr. Ing. h.c.F. Porsche AG v. Vasily Terkin,WIPO Case No. D2003-0888, noted “[…] a domain name that wholly incorporates a Complainant’s registered mark may be sufficient to establish confusing similarity for purposes of the UDRP.” Moreover, it is well-established that the presence of the generic Top Level Domain (gTLD) “.com” may be disregarded in comparing a domain name to a trademark.
The Disputed Domain Name fully incorporates the Mark together with the ordinary English word element “-com”. This combination of words does not serve to distinguish between the Disputed Domain Name and the Mark. As stated by the panel in Sony Kabushuki Kaisha (also trading as Sony Corporation) v. Inja, Kil,WIPO Case No. D2000-1409, “[n]either the addition of an ordinary descriptive word […] nor the suffix “.com” detracts from the overall impression of the dominant part of the name […], namely the trademark SONY […]”. The same applies to the instant situation.
For the foregoing reasons, the Panel rules that the Disputed Domain Name is confusingly similar to the Mark. B. Rights or Legitimate Interests
The Panel finds that the Complainant has carried its burden of proof on this element and has demonstrated a prima facie case that the Respondent has no rights or legitimate interests.
There is no evidence that the Respondent has registered any mark that consists of or contains the Mark, or any material portion thereof. There is no evidence that the Complainant has entered into any agreement, authorization or license with, or has secured any consent from the Complainant with respect to the use of the Mark. The name of the Respondent bears no resemblance to the Disputed Domain Name nor is there any evidence to support the conclusion that the Respondent is commonly known by the Mark or the Disputed Domain Name. There is no evidence that the Respondent is making legitimate noncommercial or fair use of the Disputed Domain Name. Accordingly, there is no basis to conclude, having regard to the three suggested grounds set out in paragraph 4(c) of the Policy, that the Respondent has rights or legitimate interests in the Disputed Domain Name.
For the following reasons, the Panel rules that the Respondent has no rights or legitimate interests in the Disputed Domain Name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that point to bad faith conduct on the part of the Complainant, as follows:
(i) Circumstances indicating that the Respondent has registered or acquired the Disputed Domain Name primarily for the purpose of selling it or otherwise transferring it to the Complainant who is the owner of the trademark or to a competitor of the Complainant for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the Disputed Domain Name.
(ii) The Disputed Domain Name has been registered to prevent the Complainant from reflecting its Mark in a corresponding domain name.
(iii) The Disputed Domain Name has been registered primarily for the purpose of disrupting the business of a competitor.
(iv) The use of the Disputed Domain Name indicates an intention to attract Internet users to the Respondent’s website, for commercial gain, by creating a likelihood of confusion with the Complainant’s Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.
The Panel believes that the circumstances described in paragraph 4(b)(iv) above of the Policy apply in this case and, as such, support the conclusion that the Respondent has acted in bad faith. The bad faith behavior of the Respondent is evidenced by the fact that at least since November 12, 2013, the Disputed Domain Name resolves to a page containing links to third-party financial service and related service providers. It is presumed that the Respondent benefits from the receipt of click-through advertising revenue by virtue of Internet users clicking on one of the links displayed on the page. It has been held that “[s]uch exploitation of the reputation of trademarks to obtain click-through commissions from the diversion of Internet users is an indication of use in bad faith according to previous case law [citations omitted].” Nine West Development Corporation v. Registrant [1168318] / Moniker Privacy Services / Registrant [1260512]: Domain Administrator,WIPO Case No. D2008-0154. As such, the Respondent is attempting to attract Internet users to the Respondent’s website by attempting to create a false association, sponsorship or endorsement with or of the Complainant.
For the foregoing reasons, the Panel rules that the Disputed Domain Name has been registered and is being used in bad faith. 7. Decision
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 be transferred to the Complainant.
Neil J. Wilkof
Sole Panelist
Date: January 14, 2014
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