The Complainant is Commonwealth Bank of Australia of Perth, Australia, represented by Wrays, Australia.
The Respondent is Domain Admin, Privacy Protect, LLP (PrivacyP) of Burlington, Massachusetts, United States of America (“USA”) / Mill Johnson of Rockville, Maryland, USA. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Upperlink Limited (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 12, 2018, naming the respondent as Privacy Protect, LLC (PrivacyP). The Center sent its request for registrar verification to the Registrar on October 12, 2018.
The Registrar replied on October 13, 2018, confirming that the Domain Name is registered with it, that the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) applies, that the Domain Name would expire on April 9, 2019, that the Domain Name has been locked and would remain locked throughout the proceeding, that the language of the registration agreement is English, and that the Domain Name was created on April 9, 2018. However, the Registrar stated that it had not received a copy of the Complaint and that the respondent as named in the Complaint was not the registrant of the Domain Name. The Registrar provided the full details of the registrant of the Domain Name held on its WhoIs database, which identified the registrant as Mill Johnson of Rockville, Maryland, USA.
The Center forwarded this information to the Complainant on October 23, 2018 and invited the Complainant to amend the Complaint to add the registrant identified by the Registrar as a respondent. The Complainant submitted an amended Complaint to the Center on October 26, 2018, naming the respondent as Mill Johnson.
The Center verified that the amended Complaint satisfied the formal requirements of the 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 paragraphs 2 and 4 of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 29, 2018. In accordance with paragraph 5 of the Rules, the due date for Response was November 18, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 19, 2018.
The Center appointed Jonathan Turner as the sole panelist in this matter on November 23, 2018. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. Having reviewed the file, the Panel is satisfied that the amended Complaint complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the UDRP, the Rules and the Supplemental Rules. 4. Factual Background
The Agricultural Bank of Western Australia was established in 1894. It changed its name in 1944 to Rural and Industries Bank of Western Australia. It changed its name again in 1994 to Bank of Western Australia, trading as “Bankwest”. By 1996 it had over 600,000 customers, over 100 service centers, and the largest network of automatic teller machines in Western Australia.
In 2008 the business was acquired by the Complainant and it has operated since then as a semi-autonomous division of the Complainant under the name “Bankwest”. In 2017 the Complainant’s “Bankwest” branded operations had an income of AUD 1.89 billion and a profit of AUD 699 million. The Complainant is Australia’s largest provider of financial services.
The Complainant is the proprietor of numerous marks registered in Australia for the word mark BANKWEST, other word marks containing BANKWEST accompanied by various descriptive indications, and a logo containing “BankWest”. The word marks for BANKWEST by itself include registered marks nos. 628389 - 628395 registered with effect from 26 April 1994 and entered on the register on March 1, 1996, in classes 6, 9, 16, 25, 35, 36 and 41 respectively.
The Domain Name was registered on April 9, 2018 and resolves to a holding web page. 5. Parties’ Contentions A. Complainant
The Complainant contends that it has registered and unregistered rights in the mark BANKWEST and that the Domain Name is confusingly similar to this mark. The Complainant submits that the generic Top-Level Domain (“gTLD”) suffix “.com” should be disregarded and that the addition of the term “bnk” preceded by a hyphen fails to distinguish the Domain Name from its mark since this is an obvious abbreviation of the word “bank” which describes its core services.
The Complainant maintains that the Respondent has no right or legitimate interest in respect of the Domain Name. The Complainant states that it has not authorized the Respondent to register a domain name incorporating its mark or to use this mark in any way. The Complainant points out that the Respondent has not used the Domain Name in any way that establishes a legitimate interest arising from a bona fide offering of goods or services, and that it has not made a legitimate noncommercial or fair use of the Domain Name.
The Complainant alleges that the Domain Name was registered and is being used in bad faith. The Complainant contends that the Respondent registered the Domain Name in order to mislead the public and create a false association with the Complainant and is now passively holding the Domain Name for no legitimate purpose.
The Complainant requests a decision that the Domain Name be transferred to the Complainant. B. Respondent
As stated above, the Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant must prove: (i) that the Domain Name is identical or confusingly similar to a mark in which it has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith. It is convenient to consider each of these requirements in turn.
In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences as it considers appropriate from the Respondent’s failure to file a response. This includes the acceptance of plausible evidence of the Complainant which has not been disputed.
The Panel will use the word “Respondent” to refer to the real registrant of the Domain Name as identified by the Registrar in its verification response and by the Complainant in the amended Complaint. A. Identical or Confusingly Similar
The Panel finds that the Complainant has registered and unregistered rights in the mark BANKWEST by virtue of the registrations of this mark in its name as proprietor and the extensive use of this mark in the banking business which it now operates.
The Panel further finds that the Domain Name is confusingly similar to this mark from which it differs only in the addition of the gTLD suffix and the string “-bnk”. As has been recognized in numerous decisions, the first of these additions should be discounted. As to the second, “bnk” is an obvious abbreviation of the word “bank” which describes the Complainant’s core activity under the mark and does not prevent a finding of confusing similarity.
The first requirement of the UDRP is satisfied. B. Rights or Legitimate Interests
The Panel finds on the undisputed evidence that the Respondent has not used or made any preparations to use the Domain Name for a bona fide offering of goods or services or for a legitimate noncommercial or fair purpose. It is also apparent that the Respondent is not commonly known by the Domain Name and that there is no other basis on which the Respondent can claim to have rights or legitimate interests in respect of the Domain Name.
The second requirement of the UDRP is satisfied. C. Registered and Used in Bad Faith
In view of the close similarity of the Domain Name to the Complainant’s well established mark, the Complainant’s allegation that the Respondent registered the Domain Name in order to mislead the public is plausible. It is also apparent that the Respondent is now holding the Domain Name without any legitimate purpose.
In the absence of any explanation of this conduct by the Respondent, the Panel is satisfied on the balance of probabilities that the Domain Name was registered and is being used in bad faith.
All three requirements of the UDRP are satisfied and it is appropriate to direct that the Domain Name be transferred to the Complainant. 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 Domain Name, , be transferred to the Complainant.
Jonathan Turner
Sole Panelist
Date: December 5, 2018
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