The Complainant is Commonwealth Bank of Australia of Perth, Australia, represented by Wrays, Australia.
The Respondent1 is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America ("US") / Ravindra Patel, gbe of Morganville, New Jersey, US, represented by Steven Rinehart, US. 2. The Domain Name and Registrar
The disputed domain name (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 April 21, 2017. On April 21, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 21, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 1, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 5, 2017.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 8, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 28, 2017. The Response was filed with the Center on May 27, 2017.
The Center appointed Nick J. Gardner as the sole panelist in this matter on June 22, 2017. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and t, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The relevant facts can be summarized as follows.
The Complainant is a bank incorporated in Australia. It trades as "Bankwest" which is a registered business name of the Complainant. It owns various registered trademarks for the name BANKWEST including for example Australian trademark 628390 for the word "bankwest" registered in class 9 with effect from April 26, 1994 (these trademarks are referred to collectively in this decision as the "BANKWEST Trademarks"). The Complainant's predecessor in title to the BANKWEST Trademarks was the Bank of Western Australia Ltd trading as Bankwest (BWA). BWA has a history dating back over a hundred years which it is not necessary to detail here. It was previously called Rural and Industries Bank of Western Australia ("R&I"). In 1994, R&I changed its name to Bank of Western Australia Ltd and rebranded as "Bankwest". In October 1996, the Complainant's predecessor in title, BWA, had over 600,000 customers, over 100 service centres and the largest network of automatic teller machines in Western Australia. It promoted itself widely, including with effect from at least 1996 via a website at "www..au". BWA was acquired by the Complainant on December 19, 2008 and is currently operated as a semi-autonomous division of the Complainant. The assets and liabilities of BWA, including the BANKWEST Trade Marks, were transferred from BWA to the Complainant in 2012.
The Respondent registered the Disputed Domain Name on September 5, 1995. The Disputed Domain Name is not linked to any active website at present. In the past it has been linked to a webpage which offered the Disputed Domain Name for sale. 6. Parties' Contentions A. Complainant
The Complainant's contentions are straightforward. Numerous previous UDRP decisions are relied upon by the Complainant but it is not necessary to repeat them here. Where relevant they are discussed below. In summary the Complainant makes the following points.
The Disputed Domain Name is identical to the BANKWEST Trademarks.
The Complainant says the Respondent has no rights or legitimate interests in the term "Bankwest". It says that term has no other meaning other than in relation to itself and its services and is a badge of origin in that respect.
In consequence the Complainant alleges that the Disputed Domain Name was registered and is being used in bad faith. The Complainant says the passive holding of a domain name which has no other meaning other than in relation to the Complainant constitutes bad faith in this regard. It says the Respondent first registered the Disputed Domain Name two years after it started using the term "Bankwest" in business and the Respondent knew or ought to have known of the Complainant and its use of the term "Bankwest". B. Respondent2
The Response provides no information whatsoever about the Respondent, beyond stating that he is resident in New Jersey. It is entirely devoted to a detailed analysis of the Complainant's rights (or lack of rights) in the term "Bankwest". Again numerous previous UDRP decisions are relied upon but again it is not necessary to repeat them here. Where relevant they are discussed below. The Respondent has also cited a large number of US legal authorities concerning the validity and enforceability of trademarks relating to terms which are said to be generic or non-distinctive. The Panel does not find this approach helpful – the relevant questions are as to the applicability of the Policy not necessarily US law. The Panel has not considered the detail of these cases as they do not affect its reasoning.
In summary the Respondent makes the following points.
The Complainant's BANKWEST trademark is not protectable as it comprises the combination of two ordinary English words "bank" and "west" which are descriptive and generic being simply the ordinary word for a financial institution combined with a geographical term. Such a term would not be capable of registration in the US where the Respondent is based. The Respondent says that even a registered trademark provides no rights under the Policy, if it is deemed to be descriptive or generic by a panel, and that this is the case here.
The Respondent says that the onus is on the Complainant by its evidence to establish both that the Respondent was clearly aware of the Complainant's product, and that the clear aim of the Respondent's registration was to take advantage of the confusion between the Disputed Domain Name and the Complainant's rights. The Complainant has made no such showing and hence the Complaint should fail.
The Respondent annexes a Google search which he says supports his case that the term "bankwest" is generic. This evidence is discussed below.
The Respondent has been the registrant of the Disputed Domain Name for over 20 years and the doctrine of laches applies preventing the Complainant's case succeeding. The Respondent says "laches now provides an absolute bar to any complainant's UDRP claims after a sufficient period of time".
The Respondent requests a finding of reverse domain name hijacking. He says this is appropriate where, as here, a complainant knows there is no plausible basis for a complaint. 7. Discussion and Findings
As a preliminary issue the Panel notes this is a case where one of the Respondents (Registration Private, Domains By Proxy, LLC) appears to be a privacy or proxy registration service while the other Respondent (GBE & Ravindra Patel) appears to be the substantive Respondent. The Panel in this case adopts the approach of most UDRP panels, as outlined in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") at paragraph 4.4.5, as follows:
"Panel discretion
In all cases involving a privacy or proxy service and irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed.
Depending on the facts and circumstances of a particular case, e.g., where a timely disclosure is made, and there is no indication of a relationship beyond the provision of privacy or proxy registration services, a panel may find it appropriate to apply its discretion to record only the underlying registrant as the named respondent. On the other hand, e.g., where there is no clear disclosure, or there is some indication that the privacy or proxy provider is somehow related to the underlying registrant or use of the particular domain name, a panel may find it appropriate to record both the privacy or proxy service and any nominally underlying registrant as the named respondent".
In the present case the Panel finds the Respondent to be as identified in the Response – which refers to "GBE & Ravindra Patel". It is not at all clear to the Panel in this regard what is meant by "GBE & Ravindra Patel" as this terminology would seem to suggest more than one individual, although the Response then simply says "The Disputed Domain is owned by Ravindra Patel in New Jersey" and is then drafted throughout to refer to "the Respondent" in the singular. In the absence of any further explanation the Panel proceeds on the basis that the substantive Respondent is Ravindra Patel, an individual resident in New Jersey, US and references to "the Respondent" are to that person.
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel in that:
(i) The Disputed Domain Name is identical with 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. A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the BANKWEST Trademarks. The Complainant manifestly has registered trademark rights in Australia in relation to this term, which suffices so far as the Policy is concerned. The Respondent has mounted a detailed attack on the Complaint's trademarks and says that the term "bankwest" would not be capable of registration in the US. The Panel offers no view as to whether this is correct or not but it does not matter. So far as the Policy is concerned the establishment of the relevant rights in Australia suffice.
In reaching this conclusion the Panel does not agree with the Respondent that the cases it has cited support the position that a panel can find that because it considers a registered trademark to be generic or non-distinctive it can ignore that trademark in applying the Policy. Thus for example in Rollerblade, Inc. v. CBNO,WIPO Case No. D2000-0427, a case cited by the Respondent, the Panel noted that because of its findings in relation to bad faith it did not need to address the issue of the alleged generic nature of the complainant's trademark.
The Panel considers the Disputed Domain Name to be identical to the BANKWEST Trademarks and hence the first condition of paragraph 4(a) of the Policy has been fulfilled. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, 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) the respondent has been commonly known by the domain name, even if the respondent has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial 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 Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the BANKWEST Trademarks. The Complainant has rights in the BANKWEST Trademarks which precede the Respondents' registration of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent does not have any rights or legitimate interests in any of the Disputed Domain Names and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see for example Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The Respondent claims to have a legitimate interest in the Disputed Domain Name as he says it is descriptive and/or generic. The Panel is not persuaded this argument is correct. Clearly the term "bankwest" comprises two ordinary English words each of which on its own is manifestly generic and inherently non-distinctive as to the subject matter covered by that term. However combining two ordinary words may give rise to a term which either is, or is capable of being, distinctive. In the present case the combined word "bankwest" is not a dictionary word in its own right and it seems to the Panel it is not a term which would readily be coined as a matter of English usage. The Panel does not agree that it would readily be used to refer to a bank that happened to be located in a geographically western area (whether western in a given town, or city, or some wider geographic area). Indeed to the Panel it seems to be rather a clumsy usage of language that seems unlikely to be readily used or adopted in a descriptive (or generic) manner but rather would only likely to be used having been coined as part of a deliberate decision to use the term.
This was the view of the Panel before looking at Annex A to the Response, which is a Google search provided by the Respondent. That Annex confirms the Panel's view. The Respondent says that this Annex "shows few results associated with the Complainant and shows banks unaffiliated with the Complainant and making use of the name "Bank West" cover the English-speaking world". That is (in the opinion of the Panel) a complete mischaracterization of what Annex A in fact shows – which is almost exactly the precise opposite. In summary it comprises eight pages of Google search results on the term "bankwest". It shows the following:
On the first page of that search the first entry is for a bank in South Dakota, US called the "Bankwest Community Bank" (the Panel suspects this is a sponsored search result).
The next three entries all relate to the Complainant, as does a prominent entry on a side panel to the right hand margin.
There is then a map of Utah which shows a number of locations for a bank called Zions Bank West in Utah.
There is then a further entry for the Complainant followed by an entry for a bank called "Bank of the West" described as "one of the United States largest banks". This is the last entry on the first page.
If one then ignores entries which simply happen to comprise a bank which is located in a town or district called "West [placename]" as in, for example, the East Boston Savings Bank located in West Roxbury, then (with two exceptions) every single entry in the remaining eight pages of the Google search appears to relate directly or indirectly to the Complainant. The two exceptions are entries for "Bankwest of Kansas" which features twice in those eight pages of results.
The overwhelming impression conveyed by this Google search is that the term "bankwest" relates (almost exclusively) to the Complainant. The most it shows in support of the Respondent's case is that there is also a bank called "Zions Bank West" with branches in Utah and a bank called "Bankwest of Kansas" and a bank called the "Bankwest Community Bank" in South Dakota. Given that the results of the Google search are likely to be influenced by the geographical location where the search was carried out, and the Panel infers this search was carried out in the US (probably in Utah given that is the map displayed on the Google search and is where the Respondents' representatives are based), the sheer overall weighting in the results to links to the Complainant (which is based in and carries out business in Australia) seems to the Panel to confirm that the term "bankwest" is distinctive and not generic. There is no evidence either in this Google search or in anything else filed by the Respondent that anyone else other than the Complainant uses the term "bankwest" on its own to describe its business. This evidence does not, in the opinion of the Panel, even come close to suggesting that the term "bankwest" is generic and non-distinctive. The Panel therefore concludes the Respondent has failed to rebut the presumption established by the Complainant.
So far as the cases cited by the Respondent are concerned they seem to the Panel to be cases where the Panel concludes that the domain name at issue corresponds directly to a dictionary word or well known term – see for example Sweeps Vacuum & Repair Center, Inc. v. Nett Corp.,WIPO Case No. D2001-0031 where the panel concluded that "sweeps" was a common abbreviation for "sweepstakes". Similarly in Cream Holdings Limited v. National Internet Source, Inc.,WIPO Case No. D2001-0964 the panel concluded "'Cream' is merely a common generic word in which the Complainant cannot have exclusive rights". For the reasons discussed above the Panel does not accept that "bankwest" is a common or generic word and does not consider these cases assist the Respondent.
Accordingly the Panel finds the Respondent has no rights or legitimate interest in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled. C. Registered and Used in Bad Faith
Was the Respondent's registration in bad faith? It seems to the Panel that this issue turns upon whether or not the Respondent knew of the Complainant and its business carried out under and by reference to the term "Bankwest" when it registered the Disputed Domain Name. That registration occurred one year after the Complainant (or its predecessor) rebranded as "Bankwest". Whilst for the reasons discussed above the Panel does not consider the term "bankwest" to be generic and non-distinctive, it is nevertheless the combination of two ordinary English words and it is possible that the Respondent could have independently decided that as such it was a useful and worthwhile name to obtain. In addressing this issue the Panel has in mind (a) that the Respondent's registration occurred a year after the Complainant (or its predecessor) had rebranded as "Bankwest"; (b) but the evidence is that the Complainant's business was confined to Australia and the Respondent is based in the US, and there is no evidence at all of the Complainant having any business or reputation in the US; and (3) 1995 was in terms of the commercialization of the Internet a very early period and the considerations which may apply today as to the attractiveness and value of domain names were not necessarily applicable then.
The Panel has not found this straightforward. Did the Respondent in 1995, based in the US, when registering a domain name which comprises the juxtaposition of two ordinary English words, have in mind an Australian bank which had adopted its name one year earlier but whose activities were confined to Australia? The Panel could by credible evidence have been persuaded that the Respondent's registration was entirely coincidental and had nothing to do with the Complainant. Had that been the case the allegation of bad faith would have failed. However no such evidence has been provided. The Respondent is represented by attorneys who (according to their website) specialize in UDRP disputes. They have filed a substantive Response which goes into considerable detail and which mounts a sustained attack upon the Complainant's trademark and its alleged lack of distinctiveness. It also includes a claim for Reverse Domain Name Hijacking. Significant, at least in the Panel's opinion, is the fact that this Response is completely lacking in any explanation from the Respondent as to how or why he decided to register the Disputed Domain Name, and whether or not he had any knowledge of the Complainant when he did so. The Response in fact contains a section entitled "Respondent's Background" but that section is simply devoted to stating that the Complainant has not discharged its burden, and in fact provides no relevant background about the Respondent, apart from his place of residence. In fact the entire Response provides absolutely no information whatsoever about the Respondent other than to confirm he is resident in New Jersey. The Panel is not told whether he is in business and if so what that business is, whether or not he deals in domain names, whether this is the only domain name he owns, why and how he decided to register it, or indeed any other of the no doubt numerous factors which would bear on whether or not the Respondent acted in bad faith. It would have been an entirely straightforward matter for the Respondent to say (hypothetically), with appropriate evidence "I had never heard of the Complainant when I registered the Disputed Domain Name" and "this was part of my strategy of registering names involving the word "bank" combined with a geographic identifier and I also registered (say) , , and ". No such evidence has been provided. Given that the Respondent is represented the Panel is left concluding that this silence on such critical issues is not simply inadvertent but represents a deliberate decision. In this regard the Panel notes that the Respondent says that "The Complainant's evidence must establish both that the Respondent in this case was clearly aware of the Complainant's product, and that the clear aim of the Respondent's registration was to take advantage of the confusion between the Disputed Domain and the Complainant's rights." The Panel considers this is broadly correct but that in appropriate circumstances a complainant may raise an inference that whether this was the case is potentially rebuttable. In the present circumstances the Panel considers such an inference has been raised based upon (a) the fact that (in the Panel's opinion – see above) the term "bankwest" is distinctive and relates to the Complainant and its business; and (b) that the Respondent registered the Disputed Domain Name after the Complainant rebranded to "Bankwest". The Respondent could by appropriate evidence have rebutted that presumption. However no such evidence has been provided. The Panel therefore concludes that on the balance of probabilities the Complainant has established that the Respondent was or should have been aware of the Complainant and its BANKWEST trademark when he registered the Disputed Domain Name and that registration was intended to take advantage of the Complainant's rights in its name.
It is the case on the evidence that the Respondent has made no use of the Disputed Domain Name in the time he has owned it. In the circumstances of this case the Panel adopts the approach set out in the WIPO Overview 3.0 at 3.3 as follows:
"Can the 'passive holding' or non-use of a domain name support a finding of bad faith?
From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or 'coming soon' page) would not prevent a finding of bad faith under the doctrine of passive holding.
While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant's mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent's concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put".
In the present case the Panel adopts this approach and notes in particular the Respondent's failure to provide any evidence of actual or contemplated good-faith use.
Overall it does not generally matter that the Respondent has not as yet used the Disputed Domain Name. "Passive holding" can itself amount to bad faith registration and use where the holding involves a domain name deliberately chosen because of its association with the Complainant. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, Jupiters Limited v. Aaron Hall,WIPO Case No. D2000-0574, Ladbroke Group Plc v. Sonoma International LDC,WIPO Case No. D2002-0131, Westdev Limited v. Private Data,WIPO Case No. D2007-1903; Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393, and Intel Corporation v. The Pentium Group,WIPO Case No. D2009-0273. Accordingly, and applying the principles in the above noted UDRP decisions the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith.
As a result the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled. 7. Laches
The Respondent says that the Complainant's case is absolutely barred given the length of time since he registered the Disputed Domain Name. That approach is not one the Panel agrees with and is not consistent with the generally accepted approach of panels as set out in WIPO Overview 3.0 at 4.17 as follows:
"Does 'delay' in bringing a complaint bar a complainant from filing a case under the UDRP?
Panels have widely recognized that mere delay between the registration of a domain name and the filing of a complaint neither bars a complainant from filing such case, nor from potentially prevailing on the merits.
Panels have noted that the UDRP remedy is injunctive rather than compensatory, and that a principal concern is to halt ongoing or avoid future abuse/damage, not to provide equitable relief. Panels have furthermore noted that trademark owners cannot reasonably be expected to permanently monitor for every instance of potential trademark abuse, nor to instantaneously enforce each such instance they may become aware of, particularly when cybersquatters face almost no (financial or practical) barriers to undertaking (multiple) domain name registrations.
Panels have therefore declined to specifically adopt concepts such as laches or its equivalent in UDRP cases.
Panels have however noted that in specific cases, certain delays in filing a UDRP complaint may make it more difficult for a complainant to establish its case on the merits, particularly where the respondent can show detrimental reliance on the delay."
In the case relied upon by the Respondent, Laminex, Inc. v. Yan Smith, NAF Case No. 70990 Jan. 7, 2013 the Panel based its finding of laches upon the business activity the Respondent had carried out under the domain name at issue, stating : "Respondent registered the domain name in 1998 and has consistently done business selling novelty IDs since then, and under the name THE ID SHOP since 2003. Respondent has invested substantial sums promoting its business and advertising that business on the Internet through the domain name" .
The present case differs in that there is no evidence at all of the Respondent carrying out any business activity under the Disputed Domain Name. Although a significant period has elapsed in the present case there is therefore no evidence at all before the Panel of any sort of detriment to the Respondent still less any evidence of detrimental reliance. The Panel therefore declines to find that laches is applicable and does not provide any reason for denying the Complainant its remedy. 8. 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. The Respondent's claim for a finding of reverse domain name hijacking fails.
Nick J. Gardner
Sole Panelist
Date July 6, 2017
1 See discussion below as to respondent identity.
2 For convenience this decision generally refers to "the Respondent" – see discussion below.
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