The Complainant is Commonwealth Bank of Australia of Perth, Western Australia, Australia, represented by Wrays, Australia.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United states of America / Evelyn Wong of Sydney, New South Wales, Australia, self-represented. 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 April 6, 2018. On April 6, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 9, 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 11, 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 16, 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 proceeding commenced on April 18, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 8, 2018. An informal Response was filed with the Center on May 7, 2018.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on May 16, 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 A. Complainant
The Complainant is a well-known Australian bank and the owner, since December 2008, of The Bank of Western Australia Ltd, a bank which is operated as a semi-autonomous division of the Complainant.
The Complainant is the owner of numerous registrations in Australia for the trade mark BANK WEST (the "Trade Mark"), the earliest dating from January 14, 1994 (registration No. 628382). The Trade Mark has been used by the Complainant and by The Bank of Western Australia Ltd continuously since 1994 in Australia, in respect of banking and financial services. B. Respondent
The Respondent is located in Australia. C. The Disputed Domain Name
The disputed domain name was registered on January 16, 2018. D. Passive Use of the Disputed Domain Name
The disputed domain name has not been used. 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to the Trade Mark, the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the disputed domain name has been registered and is being used in bad faith. B. Respondent
The Respondent submitted in the informal Response as follows:
(i) The Respondent registered the disputed domain name to be used for a jewellery website;
(ii) The Respondent registered the disputed domain name in order to voice the Respondent's opinion in relation to the American artist named Kanye West (otherwise known as KWEST) with blockchain jewellery;
(iii) KanyeWest (KWEST) has most recently been noted to imply slavery was a choice and voiced his desire to run for presidency in 2020. The Respondent opposes Kanye West and in turn wishes to BAN KWEST;
(iv) The Respondent registered the disputed domain name for blockchain jewellery to creatively object to KWEST;
(v) The disputed domain name is to be read as BAN KWEST BLOCKCHAIN;
(vi) Given the Complainant purchased The Bank of Western Australia Ltd in 2008 for USD 2.1 billion, it would be fair to say, this is a case of David vs Goliath, with the Complainant being the Goliath;
(vii) The Respondent has already outlaid for one year of domain hosting, jewellery materials and time for the Respondent's creative endeavour in pursuing a ban of KWEST, and seeks reimbursement from the Complainant for the Respondent's lost creative platform. 6. Discussion and Findings
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail. A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration.
The disputed domain name incorporates the entirety of the Trade Mark (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.7) together with the word "blockchain" (the commonly used word used to describe the digitised, decentralised, public ledger of cryptocurrency transactions).
Where a relevant trade mark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element (see WIPO Overview 3.0, section 1.8).
The Panel therefore finds that the disputed domain name is confusingly similar to the Trade Mark. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a disputed domain name:
(i) Before any notice to the respondent of the dispute, the respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) The respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name even if the respondent has acquired no trade mark or service mark rights; or
(iii) The respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark 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 Trade Mark. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption.
The Respondent has failed to show that the Respondent has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name has been used in connection with a bona fide offering of goods or services. To the contrary, the disputed domain name has not been used.
The Respondent has failed to adduce any evidence to support the bare assertions in the informal Response.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name; and there has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that the Respondent has failed to produce any evidence to rebut the Complainant's prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and that the Respondent's contentions regarding the Respondent's intended use of the disputed domain name are unconvincing.
The Panel therefore finds that the Respondent does not have rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Given the notoriety of the Complainant and of its Trade Mark, the inherent implausibility of the
self-contradictory (albeit novel and creative) submissions in the informal Response, the Respondent's use of a privacy shield, and the fact the disputed domain name has not been used, the Panel finds, in all the circumstances, that the requisite element of bad faith has been made out. The Panel considers it is inconceivable the Respondent was not aware of the Complainant's Trade Mark at the time of registration of the disputed domain name.
The Panel considers it is no coincidence that the disputed domain name comprises the Trade Mark and the word "blockchain", and in this regard notes the evidence filed with the Complaint of the Complainant's research and investment in various blockchain projects. The Panel does not find the Respondent's unsubstantiated assertions regarding the Respondent's planned use of the disputed domain name in respect of "blockchain jewellery" convincing.
In light of the fact the Complainant is a well-known financial institution, and it is widely known that financial institutions are likely to have an interest in blockchain and in cryptocurrency, the Panel finds that the Respondent has registered the disputed domain name opportunistically.
For all the foregoing reasons, the Panel concludes 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.
Sebastian M.W. Hughes
Sole Panelist
Dated: May 30, 2018
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