COMBINED

RESTRICTIONS DISPUTE RESOLUTION POLICY

UNIFORM DOMAIN NAME DISPUTE RESOLUTION POLICY

DECISION

 

Australia and New Zealand Banking Group Limited v. Xirong Zhang / Rooholic International Pty. Ltd.

Claim Number: FA1007001337105

 

PARTIES

The Complainant is Australia and New Zealand Banking Group Limited (“Complainant”), represented by Melissa McGrath, of Corrs Chambers Westgarth, Australia.  The Respondent is Xirong Zhang / Rooholic International Pty. Ltd. (“Respondent”), of Xirong Zhang / Rooholic International Pty. Ltd., China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

            The domain name at issue is <anzbank.biz>, registered with Name.com.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.

 

James A. Carmody, Esq., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on July 23, 2010.

 

On July 23, 2010, Name.com confirmed by e-mail to the Forum that the domain name <anzbank.biz> is registered with Name.com and that the Respondent is the current registrant of the name.  Name.com has verified that Respondent is bound by the Name.com registration agreement and has thereby agreed to resolve domain name disputes brought by third parties in accordance with the Restrictions Dispute Resolution Policy (the “RDRP Policy”) and the Uniform Domain Name Dispute Resolution Policy (the “UDRP Policy”).

 

On August 4, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 24, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@anzbank.biz.  Also on August 4, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent pursuant to paragraph 2(a) of the Rules for the Uniform Dispute Resolution Policy as supplemented by the Supplemental Restrictions Dispute Resolution Policy (the “Rules”).

 

A timely Response was received and determined to be complete on August 24, 2010.

 

Complainant timely filed an Additional Submission which was considered by the Panel.

 

On September 1, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES CONTENTIONS

            A.  Complainant makes the following assertions:

 

1.      Respondent’s <anzbank.biz> domain name is confusingly similar to Complainant’s ANZ and ANZ BANK marks.

 

2.      Respondent does not have any rights or legitimate interests in the <anzbank.biz> domain name.

 

3.      Respondent registered and used the <anzbank.biz> domain name in bad faith.

 

            B.  Respondent filed a Response asserting that Complainant does not have exclusive      rights in the ANZ mark, that it does have rights and legitimate interests in the domain             name at issue and that it was not registered and used in bad faith.

 

            C. Additional Submissions:  Complainant filed an Additional Submission which   principally focused on the failure of Respondent to satisfy its shifted burden on the   second and third elements of the Policy.

 

FINDINGS

            Complainant has rights in the ANZ and ANZ BANK marks by virtue of its trademark   registrations with trademark authorities around the world, including the Chinese State            Intellectual Property Office (“SIPO”), the United States Patent and Trademark Office    (“USPTO”), and the Australian Intellectual Property Office (“IP Australia”):

            Chinese SIPO

            ANZ                Reg. No. 771,580        filed November 14, 1994;

            ANZ                Reg. No. 773,962        filed December 14, 1994;

            ANZ                Reg. No. 774,071        filed December 21, 1994;

            ANZ                Reg. No. 777,667        filed February 14, 1995;

            ANZ                Reg. No. 777,113        filed November 29, 2001;

            USPTO

            ANZ                Reg. No. 2,282,802     registered October 5, 1999; and

            IP Australia

            ANZ BANK    Reg. No. 327,615        filed February 1, 1979.

 

Respondent’s <anzbank.biz> domain name, registered on February 24, 2008, is identical to its ANZ BANK mark, as the only differences are the elimination of the space between the terms and the addition of the generic top-level domain (“gTLD”) “.biz.” 

 

Respondent’s <anzbank.biz> domain name is not currently being used for a bona fide business or commercial purpose because the disputed domain name merely redirects Internet users to a commercial website promoting Respondent’s business apparently not specifically related to Australia, New Zealand or to a bank.  Respondent admits that it is not currently using the domain for any purpose but has the intention to associate the domain with “bank fishing”.

 

Although Respondent denies he registered the domain name at issue in bad faith, Complainant says that such must be inferred from the constructive notice provided by registration of the ANZ and ANZ BANK marks and Respondent’s lack of use of the <anzbank.biz> domain.. 

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “decide a Complainant on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

 

Paragraph 4(a) of the UDRP Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1)   the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2)   the Respondent has no rights or legitimate interests in respect of the domain name; and

(3)   the domain name has been registered and is being used in bad faith.

 

Furthermore, Paragraph 4(a) of the RDRP subjects complainants to an additional element, requiring complainants to prove that the “domain name is not being or will not be used primarily for a bona fide business or commercial purpose.”  Paragraph 4(b) of the RDRP Policy defines “bona fide business or commercial use” as the bona fide use or bona fide intent to use the domain name or any content software, materials, graphics or other information thereon, to permit Internet users to access one or more host computers through the DNS:

 

(1)   to exchange goods, services, or property of any kind; or

(2)   in the ordinary course of trade or business; or

(3)   to facilitate the exchange of goods, services, information, or property of any kind or the ordinary course of trade or business.

 

Bona Fide Business or Commercial Use

As noted above, Respondent’s <anzbank.biz> domain name is not currently being used for a bona fide business or commercial purpose because the disputed domain name merely redirects Internet users to a commercial website promoting Respondent’s business.  Prior to June 21, 2010, the disputed domain name resolved to a web page of hyperlinks to the websites of third-party providers of financial products and services, including Complainant.  Complainant points out that the initial use of the disputed domain name to display these hyperlinks indicates that Respondent did not register the disputed domain name for a bona fide business or commercial use.  Respondent has not stated any intention to use the disputed domain name for a business-related objective in the future as Respondent’s July 1, 2010 email to Complainant only stated that Respondent will “point anzbank.biz to the new server” once it is constructed.  Based on these facts and the identical nature of the disputed domain name to Complainant’s marks, the Panel infers that Respondent registered the disputed domain solely for the purpose of selling it.  Respondent’s registration of the <anzbank.biz> domain name for the primary purpose of selling the disputed domain name is not a bona fide business or commercial purpose pursuant to RDRP ¶ 4(c)(i).  See Gruner + Jahr Printing & Pub. Co. v. Affordable Domains For Sale, FA 137168 (Nat. Arb. Forum Feb. 7, 2003) (stating that attempts to sell the disputed domain name are “excluded from the realm of bona fide business purposes”).  Respondent’s prior and current use of the <anzbank.com> domain name to refer Internet users to other businesses either through displayed hyperlinks or by redirecting the disputed domain name to Respondent’s own commercial website is not a bona fide commercial or business use under RDRP Policy ¶ 4(c).  See Citigroup, Inc. v. Parvin, D2002-0969 (WIPO May 12, 2003) (cancelling the respondent’s registration of the disputed domain name because it was “improperly registered and is being improperly used, not for a business, but merely as a referral to other businesses, which is not the purpose of the .biz domains . . . Its apparent sole purpose, as of the date of this decision, is to cross link the user to <cititravel.com>.”).

 

Respondent failed to show a bona fide business or commercial purpose for registration of the domain pursuant to RDRP ¶ 4(c)(i).

 

Identical and/or Confusingly Similar

As noted above, Complainant has established rights in the ANZ and ANZ BANK marks by virtue of its trademark registrations with trademark authorities around the world which substantially predate the date of registration of the domain at issue.  The Panel finds that evidence of trademark registrations with trademark authorities around the world is sufficient to conclude that Complainant has rights in the ANZ and ANZ BANK marks according to Policy ¶ 4(a)(i).  See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).

 

Respondent’s <anzbank.biz> domain name is identical to Complainant’s ANZ BANK mark as the only differences are the elimination of the space between the terms and the addition of the generic top-level domain (“gTLD”) “.biz.”  Neither deleting the space nor appending the gTLD prevents the disputed domain name from being deemed identical to Complainant’s mark under Policy ¶ 4(a)(i).  See Continental Airlines, Inc. v. Vartanian, FA 1106528 (Nat. Arb. Forum Dec. 26, 2007) (finding that the domain name <continentalairlines.biz> is identical to the complainant’s CONTINENTAL AIRLINES mark); see also Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”). 

 

The Panel finds Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).  The Panel finds that Complainant in this case has well satisfied this burden.

 

It appears that Respondent does not own any trademarks incorporating the acronym ANZ; Respondent does not offer any products or services under the ANZ or ANZ BANK marks; Respondent is not authorized by Complainant to use the mark; and Respondent is not commonly known by the disputed domain name.  The WHOIS information for the disputed domain name identifies the registrant as “Xirong Zhang,” a name with no apparent association to the <anzbank.biz> domain name.  It further appears that Respondent is not commonly known by the disputed domain name and does not possess rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"). 

 

Prior to June 21, 2010, Respondent initially used the <anzbank.biz> domain name to post pay-per-click hyperlinks to the websites of third-party providers of financial products and services and to Complainant’s own website.  Using the disputed domain name to display links to Complainant and Complainant’s competitors does not comport with the bona fide offering of goods or services or the legitimate noncommercial or fair use requirements of Policy ¶ 4(c)(i) and ¶ 4(c)(iii).  See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees); see also Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). 

 

The <anzbank.biz> domain name is currently being used to redirect Internet users to the commercial website of Respondent’s marketing business at the <rooholic.com> domain name.  The Panel finds that using Complainant’s mark in a domain name to redirect Internet users away from Complainant is not consistent with Policy ¶¶ 4(c)(i) or 4(c)(iii).  See eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the respondent’s use of the complainant’s entire mark in domain names makes it difficult to infer a legitimate use); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)). 

 

Since registering the disputed domain name, Respondent has not made any active use of the disputed domain name related to fishing or “bank fishing”.  Therefore, there is insufficient evidence to find that Respondent has rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) as a result of this declared intent.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that when the respondent declares its intent to develop a website, “[Policy ¶] 4(c)(i) requires Respondent to show 1) ‘demonstrable’ evidence of such preparations to use the domain name, and 2) that such preparations were undertaken ‘before any notice to [Respondent] of the dispute’”); see also Open Sys. Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding that the respondent did not establish rights and legitimate interests in the domain name where the respondent mentioned that it had a business plan for the website at the time of registration but did not furnish any evidence in support of this claim). 

 

The Panel finds Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

            The <anzbank.biz> domain name currently redirects Internet users to Respondent’s own commercial website offering marketing services at the <rooholic.com> domain name.  Respondent’s use of the ANZ BANK mark in the disputed domain name is an effort to capitalize on Complainant’s fame to attract customers to Respondent’s website for commercial gain.  Respondent’s registration and use of the disputed domain name demonstrates bad faith according to Policy ¶ 4(b)(iv).  See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).

 

The Panel finds Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

            The Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <anzbank.biz> domain name be TRANSFERRED from Respondent to Complainant.

 

 

James A. Carmody, Esq., Panelist

Dated: September 6, 2010

 

 

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