The Complainants are Bendigo and Adelaide Bank Limited of Bendigo, Victoria, Australia, Homesafe Solutions Pty Ltd of Bendigo, Victoria, Australia, Sandhurst Trustees Ltd of Bendigo, Victoria, Australia, Community Sector Banking Pty Ltd of Bendigo, Victoria, Australia and Rural Bank Limited of Adelaide, South Australia, Australia, represented by Switch Legal, Australia.
The Respondent is Milton Wilde of Mitcham, Victoria, Australia. 2. The Domain Names and Registrar
The disputed domain names , , , , , , , , , , , , , , , , , , and are registered with TPP Wholesale Pty Ltd, which is part of the Netregistry Group Ltd (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2013. On December 23, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 24, 2013, Netregistry Group Ltd transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details1.
The Center verified that the 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 January 10, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was February 2, 2014. On January 31, 2014, the Respondent sent an email communication to the Center and on February 5, 2014, the Center notified the parties of commencement of panel appointment process.
The Center appointed Andrew F. Christie as the sole panelist in this matter on February 14, 2014. 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 five Complainants (hereafter collectively the “Complainants”) joined in this proceeding are related to each other and are involved in the banking industry, providing a wide range of products and services, including personal and business banking, financial planning, commercial mortgages and unsecured loans, investment products, margin lending, insurance and superannuation.
The Complainant Bendigo and Adelaide Bank Limited (hereafter “Bendigo”) was formed in 2007 when Adelaide Bank and Bendigo Bank joined to form the sixth largest Australian-owned bank. It has a number of brands including “Bendigo Bank”, “Adelaide Bank”, “Delphi Bank”, “Community Sector Banking”, and “Bendigo Wealth”. It also has a number of wholly-owned subsidiary companies, which include the Complainant Rural Bank Limited (hereafter “Rural”) and the Complainant Sandhurst Trustees Ltd (hereafter “Sandhurst”). In addition, the Complainant Bendigo is involved in a number of joint venture arrangements with companies that are not part of the Bendigo group, including between Bendigo and Athy Pty Ltd for the operation of the Homesafe Solutions Pty Ltd (hereafter “Homesafe”) business, and a joint venture between Bendigo and Community 21 Limited, for the operation of the Community Sector Banking Pty Ltd (hereafter “Community”) business. The Complainant Bendigo holds a significant voting interest in both these joint venture arrangements.
The Complainants own, among them, a large number of registered trademarks (word only, and word and image), including BENDIGO AND ADELAIDE BANK, B BENDIGO BANK, B BENDIGO BANK COMMUNITY BANK BRANCH, BENDIGO BANK B, B COMMUNITY BANK, COMMUNITY BANK, D DELPHIBANK, BENDIGOWEALTH, BENDIGO WEALTH SOLUTIONS, ADELAIDEBANK, ADELAIDE BANK, HOMESAFE SOLUTIONS, SANDHURSTTRUSTEES, BANK RURAL, and R RURAL BANK, the earliest registration for which dates from March 31, 1995.
The disputed domain names were registered between November 19, 2013 and November 28, 2013. As of December 21, 2013, the disputed domain name and, it appears, each of the other disputed domain names, resolved to a website titled “Bendigo Community Bank Warning Alert”, containing various statements including: “Warning to people signing Bendigo and Adelaide Bank documents. If you sign loan documents with the Bendigo Bank, you could lose everything. If you take out Bendigo Bank’s “Homesafe” (Reverse Mortgage), you could lose everything”; and “Stick with, or move your loans to one of the big four NAB, Westpac, CBA or ANZ”. The website to which the disputed domain names resolved listed brands associated with the Complainant Bendigo and all of the other Complainants.
The Respondent is known to the Complainants, and has a history of disputes with the Complainant Bendigo. As of November 15, 2006, the Respondent was a Director of Art Pacific Pty Ltd (hereafter “ART”), and ART obtained a commercial loan from the Complainant Bendigo on that date. The loan was supported by various securities, including a registered mortgage over a property in Ringwood, Victoria, Australia (herafter “the Property”) which was owned by ART. The Complainant Bendigo alleged ART was in breach of its loan with the Complainant Bendigo for several reasons, including non-payment of its contractual payments under the loan, exceeding its approved credit limit and being in arrears on its land tax payments. On March 20, 2012, the Complainant Bendigo issued to ART a letter outlining the breach of its loan conditions and requiring ART to refinance or repay amounts owing to the Complainant Bendigo. On or about October 15, 2012, the Complainant Bendigo issued to ART legal demands for repayment of the debt. The demand was not satisfied and the Complainant Bendigo took over the Property as Mortgagee in Possession. The Respondent, together with ART, commenced legal action against the Complainant Bendigo in the Supreme Court of Victoria, Australia on June 12, 2013, to restrain the sale of the Property by the Complainant Bendigo. This action was dismissed by the Court on June 27, 2013. 5. Parties’ Contentions A. Complainants
The Complainants contend that each disputed domain name is identical or confusingly similar to a trademark in which one or more of the Complainants has rights because: (i) the Complainant Bendigo owns, amongst others, the registered trademarks BENDIGO AND ADELAIDE BANK, B BENDIGO BANK COMMUNITY BANK BRANCH (and other trademark registrations containing BENDIGO BANK and COMMUNITY BANK), D DELPHIBANK, BENDIGOWEALTH, ADELAIDEBANK, and has filed an Australian trademark application for COMMUNITY SECTOR BANKING which has been accepted and was pending registration at the time of filing of the Complaint (and which, according to the Panel’s consultation of IP Australia’s online database of Australian registered trademarks, was registered on January 23, 20142); (ii) the Complainant Community is the owner of the common law (i.e. unregistered) trademark COMMUNITY SECTOR BANKING; (iii) the Complainant Homesafe owns the registered trademark HOMESAFE SOLUTIONS; (iv) the Complainant Sandhurst owns the registered trademark SANDHURSTTRUSTEES; (v) the Complainant Rural owns the registered trademark R RURAL BANK; and (vi) each of the disputed domain names is either confusingly similar and/or identical to a trademark in which the Complainants have registered and/or common law rights as they contain variations of the Complainants’ trademarks.
The Complainants contend that the Respondent has no rights or legitimate interests in respect of the disputed domain names because: (i) at no time was the Respondent known by any of the disputed domain names; (ii) at no time has the Respondent provided goods or services under or by reference to any of the disputed domain names; (iii) the Respondent has no trademark rights in any of the disputed domain names; (iv) the Respondent is not a licensee or other authorized user of any of the Complainants’ trademarks; (v) all the disputed domain names resolve to the same website, which makes a number of highly damaging and unsubstantiated assertions against the Complainants and invites viewers to switch to other competing banks, which is using the disputed domain names in bad faith and, as such, is not a legitimate use; (vi) the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names; and (vii) by registering and using twenty domain names that include the Complainants’ trademarks, the Respondent is clearly intending to divert consumers to a website for the prime purpose of tarnishing the Complainants’ reputation and goodwill in its trademarks and to cause damage to the Complainants’ business.
The Complainants contend that the Respondent registered and is using each of the disputed domain names in bad faith because: (i) as the Respondent had earlier entered into a loan arrangement with the Complainant Bendigo and subsequently been involved in an on-going dispute with the Complainant Bendigo, it is implausible to suggest that the Respondent registered the disputed domain names by mere coincidence and without knowledge of the existence of the Complainants’ trademarks; (ii) the Respondent purposely registered the disputed domain names that consist solely of trademarks that are identical or confusingly similar to the Complainants’ trademarks in order to distribute malicious, damaging, untruthful and unsupported information to the public, to disrupt the Complainants’ business and tarnish the reputation and goodwill in their trademarks; (iii) the Respondent’s behavior of registering twenty domain names that are identical or confusingly similar to the Complainants’ trademarks for the purpose of inflicting maximum damage on the Complainants’ reputation and business is consistent with cybersquatting; and (iv) as the Respondent has failed to substantiate any of the claims made on the website to which the disputed domain names resolve, those claims are only intended to tarnish the Complainants and their trademarks. B. Respondent
The Respondent did not file a formal reply to the Complainant’s contentions. The Respondent did, however, send an email to the Center on January 31, 2014, stating, among other things, that: (i) the disputed domain names and were “registered for the purpose of our USA based Security firm”; (ii) the other disputed domain names “have been parked and are not presently being used. If we choose to not use them overseas, then we will most likely make them available for public sale at some stage”; (iii) those of the disputed domain names containing the words “communitysectorbanking” were registered “to establish a Community Sector Bank in the USA”; and (iv) “it is presumptive of [the Complainant Bendigo] to allege [it] ha[s] any ‘goodwill’ associated with [the disputed domain] names in Australia or elsewhere for that matter, given that [it] do[es] not operate outside Australia…”. 6. Procedural Issue – Consolidation of Multiple Complainants
The Complaint has been filed by multiple Complainants against a single Respondent in respect of multiple domain names. The Complaint contained a request to consolidate the multiple Complainants in the Complaint.
This issue of when multiple complainants can file a single complaint was discussed at some length in National Dial A Word Registry Pty Ltd and others v. 1300 Directory Pty Ltd,WIPO Case No. DAU2008-0021 (a case brought under the .au Dispute Resolution Policy). The principles and reasoning elaborated by the Panel in the National Dial A Word case have been expressly approved and applied by subsequent panels in cases filed under the UDRP, and are summarized in paragraph 4.16 of the WIPO Overview 2.0. According to paragraph 4.16 of the WIPO Overview 2.0, multiple complainants may file a single complaint against a respondent in situations in which: (i) the complainants either have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants’ individual rights in a similar fashion; and (ii) it would be equitable and procedurally efficient to permit the consolidation.
The evidence provided by the Complainants establishes that: (i) the Complainants Bendigo, Homesafe, and Community have common legal interests in a number of the trademarks upon which the Complaint is founded, by virtue of the joint ventures operated by the Complainant Bendigo with the Complainant Homesafe and the Complainant Community, respectively; and (ii) the Complainants Bendigo, Sandhurst and Rural have a common legal interest in a number of the trademarks upon which the Complaint is founded, by virtue of the fact that the Complainants Sandhurst and Rural are wholly-owned subsidiaries of the Complainant Bendigo. Also, the evidence provided by the Complainants establishes that the Respondent has engaged in common conduct that has affected the Complainants in a similar fashion, by virtue of the Respondent using the disputed domain names to resolve to a website the content of which targets each of the Complainants. Furthermore, the circumstances of the case as set out in the Complaint are such as to satisfy the Panel that it is equitable and procedurally efficient to permit consolidation of the multiple Complainants. For these reasons, the Panel concludes that the multiple Complainants may consolidate their grievance against the Respondent in this single Complaint. 7. Discussion and Findings A. Identical or Confusingly Similar
The disputed domain names , and incorporate the whole word component of the Complainant Bendigo’s registered composite (i.e. word and image) trademarks ADELAIDE BANK and ADELAIDEBANK, and add only a generic Top-Level Domain (“gTLD”) identifier. The Panel finds that these disputed domain names are confusingly similar to a trademark in which the Complainant Bendigo has rights.
The disputed domain name contains the distinctive word component of the Complainant Bendigo’s registered composite trademark BENDIGO AND ADELAIDE BANK, omits the non-distinctive word “and”, and adds only a gTLD identifier. The Panel finds that this disputed domain name is confusingly similar to a trademark in which the Complainant Bendigo has rights.
The disputed domain names and contain the distinctive word component of the Complainant Bendigo’s registered composite trademark B BENDIGO BANK COMMUNITY BANK BRANCH, omit the non-distinctive letter “B”, word “bank” and word “branch”, and add only a gTLD identifier. The Panel finds that these disputed domain names are confusingly similar to a trademark in which the Complainant Bendigo has rights.
The disputed domain names , and incorporate the whole word component of the Complainant Bendigo’s registered composite trademark BENDIGOWEALTH, and add only a gTLD identifier. The Panel finds that these disputed domain names are confusingly similar to a trademark in which the Complainant Bendigo has rights.
The disputed domain names , , and incorporate the whole word component of the Complainant Bendigo’s registered composite trademark COMMUNITY SECTOR BANKING, and add only a gTLD identifier. The Panel finds that these disputed domain names are confusingly similar to a trademark in which the Complainant Bendigo has rights.
The disputed domain names and incorporate the distinctive word component of the Complainant Bendigo’s registered composite trademark D DELPHIBANK, omit the non-distinctive letter “D”, and add only a gTLD identifier. The Panel finds that these disputed domain names are confusingly similar to a trademark in which the Complainant Bendigo has rights.
The disputed domain names and contain the whole word component of the Complainant Homesafe’s registered word trademark HOMESAFE SOLUTIONS, and add only a gTLD identifier. The Panel finds that these disputed domain names are identical to a trademark in which the Complainant Homesafe has rights.
The disputed domain name contains the distinctive word component of the Complainant Rural’s registered composite trademark R RURAL BANK, omits the non-distinctive “R”, and adds only a gTLD identifier. The Panel finds that this disputed domain name is confusingly similar to a trademark in which the Complainant Rural has rights.
The disputed domain names and contain the whole word component of the Complainant Sandhurst’s registered composite trademark SANDHURSTTRUSTEES, and add only a gTLD. The Panel finds that these disputed domain names are confusingly similar to a trademark in which the Complainant Sandhurst has rights. B. Rights or Legitimate Interests
The Respondent is not a licensee of, or otherwise affiliated with, the Complainants, and has not been authorized by the Complainants to use their trademarks. The evidence provided by the Complainants shows that the disputed domain names have been used to resolve to a website that contains criticism of the Complainants and that exhorts consumers to use financial institutions operated by competitors of the Complainants. Consistent with WIPO Overview 2.0, paragraph 2.4, View 1, the Panel considers that the right to criticize does not generally extend to registering and using a domain name that is identical or confusingly similar to the complainant’s trademark, especially when the respondent is using the complainant’s trademark alone as the domain name (i.e. ), as this may be understood by Internet users as impersonation of the trademark owner. In the case before the Panel, the disputed domain names incorporate either the whole or the distinctive word component of the Complainants’ registered trademarks without any derogatory term. In any event, in the Panel’s opinion, the Respondent’s use of the disputed domain names for a website that is critical of the Complainants and which exhorts consumers to use competitors of the Complainants is not a use which gives rise to rights or legitimate interests in the disputed domain names. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith
Most of the disputed domain names were registered many years after the Complainants first registered their trademarks. The evidence on the record provided by the Complainants with respect to the extent of the Complainants’ use of their trademarks, the Respondent’s prior dealings with the Complainant Bendigo, and the express reference to each of the Complainants on the website to which the disputed domain names resolve, combined with the absence of any evidence provided by the Respondent to the contrary, is sufficient to satisfy the Panel that, at the time the disputed domain names were registered, the Respondent knew of the Complainants’ trademarks, and knew that it had no rights or legitimate interests in the disputed domain names. The evidence on the record provided by the Complainants with respect to the Respondent’s use of the disputed domain names indicates that the Respondent has used the disputed domain names to attract, or to attempt to attract, Internet users to a website that seeks to damage the Complainants’ commercial interests, by creating confusion with the Complainants’ trademarks. For all these reasons, the Panel is satisfied that each of the disputed domain names 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 names be transferred as follows:
(i) to the Complainant Bendigo and Adelaide Bank Limited: , , , , , , , , , , , , , , , and ;
(ii) to the Complainant Homesafe Solutions Pty Ltd: and ; and
(iii) to the Complainant Rural Bank Limited: .
Andrew F. Christie
Sole Panelist
Date: March 10, 2014 ADDENDUM
Following finalization of this decision, and just prior to notification of it to the parties, it was brought to the Center’s attention that there was a change in the registrar and the registrant details in the WhoIs database for the disputed domain names, in apparent breach of the UDRP, paragraph 8. In particular, it appeared that the registrations for the disputed domain names had been transferred to a new registrar, GoD, LLC, under a privacy service. On March 21, 2014, the Center requested Netregistry Group Ltd and the original registrar, TPP Wholesale Pty Ltd (the Registrar), to obtain re-transfer to the Registrar of the disputed domain names, so as to restore the Registrar to its position of registrar of the disputed domain names and thereby to give effect to the Panel’s order above. Although GoD, LLC communicated its willingness to effectuate the re-transfer of the disputed domain names to the Registrar, it appeared that the Registrar was concerned that it would be charged for the re-transfers unless the re-transfers were effectuated at the registry level. In particular, the registry for the gTLD “.biz”, Neustar, Inc., communicated that it would not effectuate re-transfer of those disputed domain names with the gTLD “.biz” unless it was provided with either “a Court Order or other proper documentation of the WIPO ‘requirement’”.
To facilitate the re-transfer to the Registrar of the disputed domain names that were transferred to GoD, LLC during pendency of this administrative proceeding in breach of UDRP, paragraph 8, so as to restore the Registrar to its position of registrar of the disputed domain names and thereby to give effect to the Panel’s order above, the Panel requests all the concerned registrars and registries to effectuate the transfer of the disputed domain names to the Registrar. In particular, the Panel hereby expressly requests Neustar, Inc. to effectuate the transfer to the Registrar of the following disputed domain names: , , , , , , and .
Andrew F. Christie
Sole Panelist
Date: April 22, 2014
1 In an email communication of January 5, 2014, Netregistry Group Ltd confirmed to the Center that it was authorized to respond on behalf of the Registrar.
2 As indicated in paragraph 4.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), a panel may undertake limited factual research into matters of public record if it deems this necessary to reach its decision.
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