The Complainant is Mecu Limited of Kew, Victoria, Australia, represented by Griffith Hack Patent and Trade Mark Attorneys, Australia.
The Respondent is OZ8 Pty Ltd of Double Bay, New South Wales, Australia, represented by Actuate IP, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with VentralP Group (Australia) Pty Ltd dba Trading as VentralP Wholesale. The disputed domain name is registered with Synergy Wholesale Pty Ltd (collectively referred to as the "Registrar"). For the purposes of this decision, the domain names and will collectively be referred to as the "Domain Names". 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 21, 2016. On January 21, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On January 22, 2016, the Registrar transmitted by email to the Center its verification responses confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on January 28, 2016.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the "Policy"), the Rules for .au Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 29, 2016. In accordance with the Rules, paragraph 5(a), the due date for Response was February 18, 2016. On February 17, 2016, the Respondent sent an email communication to the Center requesting extension of the Response due date. With consent of the Complainant, the due date for submission of a Response was extended to March 2, 2016. The Response was filed with the Center on March 2, 2016.
The Center appointed Nicholas Smith as the sole panelist in this matter on March 7, 2016. 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 a bank that presently trades under the name "Bank Australia". The Complainant, or an earlier iteration, was founded in 1957 and prior to 2013 traded as "BankMecu" before it began a process of re-branding. The Complainant's relaunch under the "Bank Australia" name took place on August 17, 2015. It has 24 bank branches across Australia with approximately 130,000 customers.
The Complainant is the owner of numerous Australian trade mark registrations for composite marks that feature the words "BANK AUSTRALIA" or "BANK OF AUSTRALIA" (the "BANK Marks") as part of logos for services in class 36 including insurance; financial affairs; monetary affairs; banking; personal bank services; investment bank services and bank card services. These marks have been registered since July 25, 2014. Notably none of the BANK Marks consist solely of the words "Bank Australia" or "Bank of Australia". The Complainant has applied for the word mark BANK AUSTRALIA however the application has lapsed.
The Domain Name was created on January 4, 2011. It presently redirects to a pay‑per‑click site with a series of sponsored listings which a visitor may click on. The Domain Name was created on September 17, 2008. It presently redirects to a pay-per-click site with a series of sponsored listings which a visitor may click on. The sites to which the Domain Names redirect (the "Respondent's Websites") do not make any reference to the Complainant but certain links do relate to the banking business, including "Banking" and "Bank Home Loans". 5. Parties' Contentions A. Complainant
The Complainant makes the following contentions:
(i) that the Domain Names are identical or confusingly similar to the Complainant's BANK Marks;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Names; and
(iii) that the Domain Names have been registered and/or is subsequently being used in bad faith.
The Complainant is the owner of the BANK Marks. It owns a trade mark registration for the BANK Marks in Australia.
The Domain Names are confusingly similar to the BANK Marks, as consumers, upon viewing the Domain Names, are highly likely to expect an association with the Complainant. In respect of the Domain Name "aus" is likely to be recognized as an abbreviation for "Australia". The addition of a second level domain such as "." does not affect the assessment that a domain name is confusingly similar to a particular trade mark.
The Respondent has no rights or legitimate interests in the Domain Names. The Respondent is not licensed or authorised by the Complainant to register the Domain Names. The Respondent has not used the Domain Names to provide banking services, and in any event is not authorized under law to provide banking services. Rather the Domain Names redirect to pay-per-click websites. The Respondent has filed trade mark applications for BANKAUSTRALIA and BANKOFAUSTRALIA but the Complainant is of the view that the Applications were filed by the Respondent in order to frustrate the potential filing of a domain name complaint by the Complainant. The Complainant further submits that the mere filing of trade mark applications by the Respondent does not generate or establish rights or interests in corresponding domain names. The mere fact that the Domain Names are comprised of ordinary words does not automatically grant the Respondent rights or legitimate interests in the Domain Names, especially given that use of the term "bank" featured in the Domain Names is strictly regulated in Australia. The Respondent's use of the Domain Names for a pay-per-click site does not amount to a bona fide offering of goods and services.
The Domain Names were registered and are being used in bad faith. The Respondent registered the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to another person for valuable consideration in excess of its out-of-pocket costs. On March 6, 2015, the Complainant offered the Respondent AUD 50,000 to purchase the Domain Names (and two additional domain names). The offer was refused. The Complainant also notes that the Respondent's director operates a number of other companies that own domain names consisting of common terms across a number of industries. The pattern of registrations indicates that the Respondent engages in registration of domain names in order to sell them to third parties, with no intention to make a bona fide use. Such action amounts to the registration and use of the Domain Names in bad faith. B. Respondent
The Complainant's BANK Marks are not confusingly similar to the Domain Names because they are design marks, in which the words "bank" and "Australia" appear as part of a logo. The Complainant is not currently entitled to register any word mark similar to the Domain Names because the words are ordinary descriptive words. Furthermore the Complainant has provided no evidence that Australian consumers associate the words "Bank Australia" with the Complainant outside the Complainant's logos. As such the Domain Names are not confusingly similar to the BANK Marks.
The Complainant has failed to establish a prima facie case that the Respondent does not have a legitimate interest in the Domain Names. As the Domain Names consist of a pair of descriptive words, the Complainant is required to establish a strong prima facie case. In the present case there is no evidence that the words "bank Australia" are synonymous with the Complaint or that there is any likelihood of consumer confusion, especially since the Domain Names were registered before the Complainant launched its Bank Australia branding. Furthermore the Respondent has taken steps to use the Domain Names for a bona fide purpose but has been delayed as a result of family issues.
Finally the Respondent did not register and is not using the Domain Names in bad faith. The Respondent has taken steps to use the Domain Names and has filed trade mark applications for this purpose. Furthermore the Respondent's refusal to accept the Complainant's unsolicited offer to purchase the Domain Names is not proof that it registered or uses the Domain Names for the purposes of selling the Domain Names to a third party. 6. Discussion and Findings A. Identical or Confusingly Similar
To prove this element the Complainant must have a name or trade or service mark rights and the Domain Names must be identical or confusingly similar to the Complainant's name, trade or service mark.
The Complainant is the owner of the BANK Marks, having registrations for the BANK Marks as a trade mark in Australia.
The Domain Names and consist of the words in the BANK Marks (and in the case of , the abbreviation of "Australia" to "aus"). While the Panel sees some force in the Respondent's submissions that the Complainant presently has no trade mark rights to the words "Bank Australia" divorced from the BANK Marks, the test before the Panel is whether there is "essential or virtual identity" between the Domain Names and the trade mark or name in which the complainant has rights. In circumstances where the Domain Name (divorced from the ".") is phonetically identical to the BANK Marks, and the Complainant has no way of expressing the BANK Marks as a Domain Name other than by removing the design elements, the Panel finds that it is likely that consumers who see the Domain Names and are aware of the BANK Marks may be confused into thinking that the Domain Names resolve to a site run by the Complainant. The Panel finds that the Domain Names are confusingly similar to the Complainant's BANK Marks. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, is to be taken to demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the subject matter of the dispute, your bona fide use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with an offering of goods or services (not being the offering of domain names that you have acquired for the purpose of selling, renting or otherwise transferring); or
(ii) you (as an individual, business, or other organisation) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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 name, trademark or service mark at issue."
Given the finding made that the Complainant has failed to fulfil the third condition of paragraph 4(a) of the Policy, the Panel does not need to reach a conclusion under this element. C. Registered or Subsequently Used in Bad Faith
For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to another person for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of a name, trademark or service mark from reflecting the mark in a corresponding domain name; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business or activities of another person; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's name or mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on respondent's website or location.
In the present case the Panel makes the following relevant factual findings:
1) The Domain Names consist of two dictionary or geographic words, being "bank" and "Australia/aus". In short the Panel finds, on the balance of probabilities, that the Respondent registered the Domain Names without awareness of the Complainant, entirely for their descriptive properties, and uses them for pay‑per‑click sites on the basis of the descriptive elements of the Domain Names.
2) The Domain Names were registered well before the Complainant had any rights in the BANK Marks. Specifically the Domain Names were registered in 2008 and 2011 respectively and the Complainant commenced its transition to Bank Australia in 2013. In the present case the Domain Names were registered well before the Complainant had acquired any rights in the BANK Marks.
3) The Domain Names are not identical to the BANK Marks; the BANK Marks contain numerous design elements, along with the words "bank" and "Australia". Furthermore, even to the extent that the Complainant has acquired trade mark rights in the BANK Marks, such rights would be limited to the design marks themselves and would not extend to preventing other entities from using the dictionary or geographic words "bank" and "Australia". In short there is no evidence that the Respondent registered or has used the Domain Names to exploit the value of the Complainant's BANK Marks.
4) The Respondent presently uses the Domain Names to re-direct to pay-per-click sites; however, the sites do not appear to make any direct reference to the Complainant and the links appear to be related to the descriptive words that comprise the Domain Names.
5) There is also no evidence that the Respondent or its associated entities have registered other domain names similar to other well-known marks; indeed it appears that the Respondent and its associated entities have primarily registered domain names composed of descriptive terms.
6) The Respondent's Websites do not make any specific reference to the Complainant; rather, the links appear entirely related to the dictionary or geographic terms "bank" and "Australia".
While there is a risk of customer confusion between the Complainant and the Domain Names, that risk arises wholly through the acts of the Complainant; namely it deciding to adopt as a business name and brand a descriptive term in circumstances where the Respondent had registered the Domain Names five and two years beforehand respectively.
Moreover, the fact that the Respondent has chosen to reject unsolicited offers from the Complainant to purchase the Domain Names does not in the present circumstances lead to the conclusion that the Respondent is using the Domain Names for the purposes of selling, renting or otherwise transferring the Domain Names.
Ultimately the Panel finds that the Respondent has registered and used the Domain Name entirely for its descriptive properties; namely to operate a pay-per-click site for links relating to banking.
Accordingly, the Panel finds that the Complainant has failed to fulfil the third condition of paragraph 4(a) of the Policy.
7. Decision
For all the foregoing reasons, the Complaint is denied.
Nicholas Smith
Sole Panelist
Date: March 15, 2015
Full & Egal Universal Law Academy