The Complainant is Commonwealth Bank of Australia of Perth, Western Australia, Australia, represented by Wrays, Australia.
The Respondent is My Private Registration of Broadway, New South Wales, Australia / Alex Jones, The trustee for MG Websites of Kingsway, Western Australia, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with NetRegistry Pty Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 21, 2017. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 22, 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 November 27, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on November 29, 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 Amended Complaint, and the proceedings commenced on December 5, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 25, 2017. The Response was filed with the Center on December 6, 2017. On the same date, the Respondent further confirmed that this Response was full and complete.
The Center appointed James A. Barker as the sole panelist in this matter on December 14, 2017. 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 Complainant is one of Australia’s largest banks. The Complainant and its predecessors in title have provided financial services in Australia since 1894.
The Complainant has registered rights in trademarks for BANKWEST and marks that include that term. The predecessor in title to those marks was the Bank of Western Australia, which traded as Bankwest. In October 1996, the Bank of Western Australia had over 600,000 customers, over 100 service centres and the largest network of automatic teller machines in Western Australia.
The Bank of Western Australia was acquired by the Complainant in 2008, and is currently operated as a semi-autonomous division of the Complainant. The assets and liabilities of the Bank of Western Australia, including trademarks for BANKWEST, were transferred to the Complainant in 2012.
The Complainant is also the owner of a registered business name for ‘Bankwest’ as well as a number of domain names that incorporate its BANKWEST trademarks. The Complaint provides evidence of media, marketing, and extent of its physical shop fronts, relating to its BANKWEST marks.
The earliest registration of the Complainant’s BANKWEST trademarks was registered from 1994.
In August 2017, the Complainant entered into a 3 year partnership with Perth Arena and sponsorship of a new lounge named “Backstage with Bankwest”. A Google search for “Bankwest Arena” returns a page of results that relate to this partnership, which is evidenced in the Complaint. Perth Arena is an entertainment venue that hosts approximately 90 events each year and has capacity for 15,000 people.
The disputed domain name was registered on November 8, 2017. The Complainant provides evidence that, as at November 15, 2017, the disputed domain name did not resolve to an active website.
The Complainant has been a complainant in a number of previous decisions under the Policy or its variants. See e.g., Commonwealth Bank of Australia v. WhoisGuard Protected, WhoisGuard, Inc. / Wallamedia,WIPO Case No. D2014-0082.
The Complainant has a portfolio of marks registered in Australia on 1994 that include the term BANKWEST on its own, registered in various classes. 5. Parties’ Contentions A. Complainant
The Complainant alleges that the disputed domain name is confusingly similar to its BANKWEST trademark. The Complainant also says that there is a strong association between its BANKWEST mark and the term “arena” due to the recent partnership between the Complainant and Perth Arena. As such, the Complainant says that the addition of the term “arena” in the disputed domain name is insufficient to differentiate the disputed domain name from its mark. If the generic Top-Level Domain and the descriptive word “arena” are disregarded, the disputed domain name consists solely of the Complainant’s BANKWEST trademark.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not authorized the Respondent to register a domain name that incorporates the Complainant’s mark or use that mark in any way whatsoever. The Respondent has not made any bona fide offering of goods or services by using the disputed domain name. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. The Complainant says that its BANKWEST mark has no value apart from its association with the Complainant.
The Complainant, thirdly, alleges that the Respondent has registered and used the disputed domain name in bad faith, by virtue of holding it without any proper or legitimate use. The disputed domain name is so obviously connected with the Complainant, and the Respondent’s registration was done a mere three months after the announcement of the Complainant’s partnership with Perth Arena, that the Respondent’s passive holding of it suggests opportunistic bad faith. The Complainant also points out that the Respondent has used a privacy service to conceal his identity. The Complainant says that the registrant details, revealed after the initial fining of the Complaint, indicate that the Respondent is located in Western Australia, where Perth Arena is located and where the Complainant has its most significant presence. B. Respondent
The Respondent rejects the assertion that the domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Respondent submits the URL should not be read as two words (Bankwest Arena), rather the URL should be read as three words (Bank West Arena). The Respondent alleges that the Complainant does not have any registered rights in the words “Bank West Arena”. The Complainants registered trademarks (628382–628388) are endorsed with the following: “Registration gives no right to the separate exclusive use of the words BANK and WEST.” It follows if the Complainant has no rights to the exclusive use of the words “Bank” and “West”, it cannot be said to have a right to the words “Bank”, “West” and “Arena”.
The Respondent submits that even if the URL was read as two words, the Complainant does not have any registered rights given the Complainant has not registered “Bankwest Arena” and has only registered “Bankwest” under classes which do not relate to the business of the Respondent. Specifically, the Complainant has registered rights to “Bankwest” for services/goods in Class 6, 9 16, 25, 35, 36 and 41. The Respondent says that he intends to use the domain in relation to services which would be fall within Class 46, a class which the Respondent has no registered rights.
The Respondent refutes the Complainant’s assertions that he has no rights or legitimate interests in the disputed domain name. Before the Respondent received any notice of the dispute, there is evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain name. The Respondent is currently developing a website which will be linked to the domain. The website does not relate to financial services which are the services provided by the Complainant.
The Respondent denies that he has registered and used the disputed domain name in bad faith. The Respondent says that the Complainant has contradicted itself in the Complaint and seems incapable of conducting proper and accurate research, questioning the integrity and genuineness of the Complaint as a whole. The Complainant has provided an extract from the Australian Business Register of “M.G Websites and IT”, which has no association with the Respondent. Furthermore, “MG Websites and IT” was registered in New South Wales, contradicting the claims by the Complainant that the locality of the Respondent is relevant to whether the Respondent was aware of the “Perth Arena” and “Bankwest” arrangement, which the Respondent had not been aware of prior to receiving the Complaint. The Respondent submits that the Complainant attempted to mislead the Administrative Panel by providing false information. The Respondent says that he has no association with “Bankwest” and intends to use the disputed domain name in relation to services which do not relate to those offered by the Complainant. 6. Discussion and Findings
For the Complaint to succeed, under paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered in bad faith and is being used in bad faith.
The Complainant must prove each of these three elements, which are discussed in turn below. A. Identical or Confusingly Similar
There is no apparent dispute between the parties that the Complainant has registered marks for BANKWEST.
The parties differ on the question of whether the disputed domain name is confusingly similar to the Complainant’s BANKWEST mark. The Complainant argues that the disputed domain name is confusingly similar to this mark, because its mark is wholly incorporated in the disputed domain name and the appended word “arena” does nothing to distinguish its mark. The Respondent denies that the disputed domain name is confusingly similar because the Complainant does not have registered rights in the words “bank” and “west” standing alone, or alternatively the marks are not confusingly similar because the Complainant has not registered its marks in Class 46, which is the class in which the Respondent intends to offer services.
The Panel finds the Respondent’s arguments on this point unconvincing.
The Complainant has registered marks for BANKWEST and is entitled to rely on them in these proceedings. The Respondent’s argument that “bank” and “west” should be read separately ignores the fact that the Complainant has a mark that incorporates those terms jointly. The Respondent has exactly reproduced those terms in the disputed domain name, as the first-appearing element. Whether the Complainant has rights in “bank” and “west” per se is beside the point. This is an argument that at least one previous respondent has unsuccessfully sought to advance in relation to the Complainant’s marks: Commonwealth Bank of Australia v. Registration Private, Domains By Proxy, LLC / Ravindra Patel, gbe,WIPO Case No. D2017-0807. As mentioned by the Panel in that case “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 cannot make much sense of the Respondent’s alternative argument. This is the argument that the Respondent intends to offer services in “Class 46”. In Australia, where both parties are located, there are 45 classes that generally follow the classifications established under the Nice Convention. The Respondent gives no explanation or evidence at all about the purported services he intends to offer. And it should be obvious that the Respondent’s intention, whatever it is, will not be apparent to those Internet users that may be confused as to the association between the disputed domain name and the Complainant’s mark.
Regardless, the classifications for which the Complainant’s marks are registered are not relevant for the purpose of comparison under this first element, paragraph 4(a)(i) of the Policy. As outlined in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition(the “WIPO Overview 3.0”): “the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.”
On a side-by-side comparison, it is apparent to the Panel that the disputed domain name is confusingly similar to the Complainant’s mark (typically disregarding the generic Top-Level Domain “.com”). The Complainant’s mark is wholly incorporated in the disputed domain name. It is well-established under the Policy that the entire incorporation of a complainant’s mark will normally be considered confusingly similar to that mark: see section 1.7, WIPO Overview 3.0. The addition of the term “arena”, as the Complainant has argued, does nothing to distinguish the Complainant’s mark. The Complainant’s mark is clearly recognisable in the disputed domain name.
For these reasons, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s BANKWEST marks. B. Rights or Legitimate Interests
The Complainant has established a prima facie argument against the Respondent by its argument and evidence, as included in the Complaint.
The Respondent seeks to rebut these arguments. He asserts that he intends to use the disputed domain name to make a bona fide offering of goods or services, which are not in the field of business (financial services) of the Complainant. Relevantly, paragraph 4(c) of the Policy provides that a respondent might demonstrate rights or legitimate interests in a disputed domain name by showing “(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.”
The Panel also finds the Respondent’s rebuttal unconvincing. The Response is brief. It provides no information at all about the Respondent or his business. The Respondent provides no evidence for the claims that he makes. Consistent with the lack of any detail in the Response, the Respondent also provides no plausible explanation as to his intended use of the disputed domain name, that might allow the Panel to credibly find that he has rights or legitimate interests in it. In the circumstances of bad faith (discussed further below), the Panel would need convincing evidence and explanation to support a finding of rights or legitimate interests in the Respondent. The Respondent has not provided any.
The circumstances of this case also suggest to the Panel that the Respondent lacks rights or legitimate interests in the disputed domain name. The Complainant says that the Respondent was not authorized in any way to use its BANKWEST mark. The Respondent has registered a domain name that is confusingly similar to the Complainant’s mark and provided no coherent explanation for doing so. The Respondent registered the disputed domain name around three months after the Complainant announced a joint promotion with Perth Arena. In the absence of any coherent explanation otherwise, the Panel finds that this timing was unlikely to have been by accident. The Respondent is located in Western Australia, where both the Complainant and Perth Arena are also located. The Complainant appears to have a relatively well-known mark in that jurisdiction. It seems unlikely that the Respondent was unaware of it. These are not circumstances that are suggestive of the Respondent’s rights or legitimate interests.
Neither do there appear to be any other circumstances in this case that might be a basis to find that the Respondent has rights or legitimate interests in the disputed domain name. There do not appear to be circumstances to this effect, further described in paragraph 4(c)(ii) and (iii) of the Policy. Namely, there is no evidence that the Respondent is commonly known by the disputed domain name. Neither are there circumstances which indicate that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name. In this respect, the Respondent himself suggests that he intends to make some kind of commercial use of the disputed domain name.
For all these reasons, the Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain name, for the purpose of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Complainant provided substantial evidence of the reputation of its mark, outlined above. This included evidence of promotional and media material, industry awards, and brand recognition, and the physical distribution of its shop-fronts in Western Australia. The Complainant has also been a previous complainant in cases under the Policy relating to its BANKWEST mark, which provides further evidence that the Complainant’s mark is well-known and an attractive target for cybersquatters.
The disputed domain name was registered in November 2017, according to information in the Complaint and the WhoIs, long after the Complainant registered its relevant trademarks. The disputed domain name wholly incorporates the Complainant’s mark. It also adds the term “arena” which also relates to a partnership announced by the Complainant three months before the registration of the disputed domain name. The Respondent is located in the same Australian state, Western Australia, where the Complainant’s BankWest business primarily operates.
This evidence suggests that the Respondent was well-aware of the Complainant’s mark. In the face of all this evidence, the only reasonable conclusion open to the Panel is that the Respondent registered the disputed domain name deliberately to obtain some unfair advantage from confusion with the Complainant’s mark. Relevantly, paragraph 4(b)(iv) of the Policy provides that there is evidence of bad faith in circumstances where the Respondent has attempted to attract, for commercial gain, Internet users to the Respondent’s 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 the Respondent’s web site.
The Respondent did not provide any evidence, or detailed explanation, of actual or contemplated good-faith use. It does not generally matter that the Respondent has not 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, and more recently e.g., Bayer AG v. Cagri Savan,WIPO Case No. D2015-1573.
There are further factors strongly suggestive of bad faith in this case. The Respondent has used a privacy service, and the Respondent’s actual details were only discovered in response to the Center’s request to the Registrar to confirm the registration details. The Complainant’s marks appear to be distinctively associated with the Complainant, and the Panel cannot conceive of any good faith use the Respondent might have made of it, having regard to all the evidence outlined above.
For all of these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(iii) of the Policy. 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.
James A. Barker
Sole Panelist
Date: December 28, 2017
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