The Complainant is Commonwealth Bank of Australia of Perth, Western Australia, Australia, represented by Wrays, Australia.
The Respondent is Contact Privacy Inc. Customer 1242030395 of Toronto, Ontario, Canada / Patrick Tucker of Perth, Western Australia, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with Google Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 5, 2018. On April 5, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 6, 2018, 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 April 6, 2018 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 April 13, 2018.
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 April 13, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 3, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 4, 2018.
The Center appointed WiIliam A. Van Caenegem as the sole panelist in this matter on May 25, 2018. 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 the registered owner of a number of trademark registrations for the word BANKWEST in combination with device elements and with other words. It is also the registered owner in Australia of the word mark BANKWEST as such, registered on March 1, 1996 for goods and services in the classes 6, 9, 16, 35 and 36. The Complainant is the successor in title to these marks, and acquired them in 2008 when it purchased a pre-existing banking business in Western Australia.
The disputed domain name was registered on December 14, 2017. There is no evidence before the Panel of the disputed domain name ever resolving to an active website. 5. Parties’ Contentions A. Complainant
The Complainant is the owner of the “Bankwest” brand and has substantial banking operations under that brand and name and the combination “Bankwest Business” in the state of Western Australia. The Complainant has come into the possession of the registered trademark BANWEST BUSINESS as a successor in title to a West Australian bank. The Complainant has invested considerable resources in promoting and advertising the brand “Bankwest” and “Bankwest Business” in the state of Western Australia and built up a very substantial network of bank branches, terminals and clientele in that state.
As well as operating a substantial number of physical branches, the Complainant also provides its extensive range of banking services via the “” website. The Complainant puts in evidence material that establishes that it has displayed its BANKWEST trademarks in connection with its banking operations proper, and on promotional material. The Complainant has received a number of rewards for the quality of its banking services offered under the “Bankwest” brand. As a result of extensive use of the BANKWEST trademark, the Complainant maintains that it has developed common law rights with respect to the mark in relation to business banking products and services in addition to its registered trademark rights.
The Complainant contends that the generic Top-Level Domain (“gTLD”) “.business” should be disregarded, and that therefore the disputed domain name is identical to the Complainant’s BANKWEST trademark. In reality, or so the Complainant maintains, the use of the “.business” gTLD extension increases the confusing similarity of the disputed domain name with the BANKWEST trademark.
When the Complainant entered the disputed domain name on a number of occasions it did not resolve to any website. No use appears to be made of the disputed domain name, according to the Complainant. Hence there is no evidence of any legitimate noncommercial use of the disputed domain name. There is also no evidence of bona fide offering of goods or services by reference to the disputed domain name. The Complainant also notes that to the best of its knowledge the Respondent is not known by the disputed domain name, nor has the Respondent received any form of permission or authorisation to use its “Bankwest” brand in any form whatsoever. The Complainant also points out that the term BANKWEST has no primary meaning, it being entirely distinctive and having acquired only secondary significance as a badge of origin used by the Complainant. As a result, the Complainant says it has made out a prima facie case that the Respondent does not possess rights or legitimate interests in the disputed domain name.
The Complainant contends that the Respondent registered the disputed domain name in bad faith, as it “is so obviously connected with the trademark and company name of the Complainant” (and the Complainant’s business products and services) and the Respondent has no connection to the Complainant. Therefore, or so the Complainant contends, “its very use by someone with no connection with the Complainant suggests opportunistic bad faith” (quoting from Realtime Forex SA v. Rhone Consultants SA,WIPO Case No. D2006-0089). The Respondent is said also to have used the disputed domain name in bad faith, by registering it for the manifest purpose of misleading consumers and then passively holding it. The Complainant’s trademark has a strong reputation and in the circumstances it is not possible to contemplate a good faith use of it by the Respondent, or so the Complainant contends. The Respondent registered the disputed domain name long after the Complainant’s predecessor in title started using the “Bankwest” brand in connection with its banking services in Western Australia. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel finds that the Complainant has established its rights in the BANKWEST trademark. The disputed domain name is identical to the name and trademark of the Complainant. The Panel therefore finds that the first element of the Policy is satisfied. B. Rights or Legitimate Interests
The disputed domain name incorporates the distinctive trademark BANKWEST of the Complainant in its entirety. The Respondent is not known under this name or mark, nor is there any evidence of the Respondent making a legitimate use of the disputed domain name or any website to which it might resolve. Passive holding of a domain name that incorporates an unrelated party’s distinctive trademark or business name does not result in the acquisition of rights or any legitimate interests. To the contrary, it only lends itself to misleading and deceptive use vis-à-vis consumers who are aware, in this case, of the BANKWEST mark as the badge of origin used by the Complainant for its banking and financial services. The Complainant is the registered owner and common law possessor of exclusive rights in the trademark in Australia. The Respondent has not otherwise come forward to assert any rights or legitimate interests in the disputed domain name.
Therefore the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The BANKWEST trademark of the Complainant is distinctive and due to the size of the Complainant’s operation by reference to this mark, and its longevity, it is inconceivable that the Respondent registered it unwittingly. Rather it is clear that the disputed domain name was registered opportunistically in the “.business” gTLD in the anticipation of some unwarranted future gain. That the disputed domain name was merely held passively by the Respondent does not save it from a finding of bad faith. A legitimate use of the disputed domain name by the Respondent is virtually impossible to imagine. The Respondent is not known by the disputed domain name, nor is there any evidence of any legitimate competing use of the BANKWEST mark or name, if it were possible to contemplate such a use given the distinctiveness and widespread reputation of the BANKWEST mark as vesting in the Complainant.
Therefore the Panel holds that the disputed domain name was registered and 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.
WiIliam A. Van Caenegem
Sole Panelist
Date: June 8, 2018
Full & Egal Universal Law Academy