Australia and New Zealand Banking Group Limited v. Domain Manager
Claim Number: FA1204001438801
Complainant is Australia and New Zealand Banking Group Limited (“Complainant”), represented by David Fixler of Corrs Chambers Westgarth, Australia. Respondent is Domain Manager (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwanzinternetbanking.com>, registered with Moniker.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 11, 2012; the National Arbitration Forum received payment on April 11, 2012.
On May 18, 2012, Moniker confirmed by e-mail to the National Arbitration Forum that the <wwwanzinternetbanking.com> domain name is registered with Moniker and that Respondent is the current registrant of the name. Moniker has verified that Respondent is bound by the Moniker registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 22, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 11, 2012 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@wwwanzinternetbanking.com. Also on May 22, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 13, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant Australia and New Zealand Banking Group Limited owns trademark registrations with the United States Patent and Trademark Office for its ANZ and for related trademarks containing the acronym “ANZ” (e.g., Reg. No. 4,097,590 filed March 15, 2010). Complainant also owns trademark registrations with IP Australia (“IPA”) for its ANZ marks (e.g., Reg. No. 1,298,392 filed May 11, 2009) as well as additional registration with other national trademark authorities.
The <wwwanzinternetbanking.com> domain name is confusingly similar to Complainant’s ANZ mark. The disputed domain name contains Complainant’s entire ANZ mark with the addition of the prefix “www,” and the terms “internet” and “banking” which do not distinguish the disputed domain name from Complainant’s mark.
Respondent does not own any trademarks incorporating Complainant’s ANZ mark.
Respondent is not commonly known by the <wwwanzinternetbanking.com> domain name.
Respondent’s at-issue domain name references a website consisting entirely of competing hyperlinks as well as an unauthorized hyperlink to Complainant’s website.
Respondent is using the hyperlinks as pay-per-click links and Respondent is using the <wwwanzinternetbanking.com> domain name for the sole purpose of obtaining personal financial gain by deriving “click-through” fees from Internet traffic on the referenced website.
Respondent is attempting to mislead Internet users into believing that content on the referenced website is endorsed by or associated with the Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant had, and has, trademark rights in the ANZ mark(s) at all times relevant to this proceeding.
Respondent has no authority to use Complainant’s trademarks in any capacity.
Respondent registered the at-issue domain name on April 15, 2011 and was aware of Complainant’s rights in its ANZ trademark at such time.
Respondent’s at-issue domain name references a website consisting primarily of pay-per-click hyperlinks and includes hyperlinks to Complainant’s competitors as well as an unauthorized link to Complainant’s website.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint 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 Policy requires that 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 Complainant has rights; and
(2) 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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The at-issue domain name is confusingly similar to a mark in which Complainant has trademark rights.
Complainant owns trademark rights in its ANZ mark and related marks which feature the acronym ANZ as evidenced by Complainant’s enumeration of verifiable national registrations in Australia, the United States, and elsewhere. Such trademark registrations show that Complainant has rights in a mark with regard to Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Respondent’s domain name contains the essential element of Complainant’s trademarks, ANZ, but prefaces it with “www,” a generic acronym for “worldwide web,” adds the descriptive terms “internet” and “banking,” both of which are suggestive of Complainant’s online banking services, and appends the top level domain name “.com” to complete the name. These modifications do not adequately distinguish the domain name from Complainant’s ANZ trademark (or related trademarks) and for the purposes of Policy ¶4(c)(i) show the domain name to be confusingly similar thereto since the at-issue domain name contains the ANZ trademarks’ core feature and only adds immaterial modifications. See Mattel, Inc. v. Norman Abel Camac Contreras, FA 442630 (Nat. Arb. Forum May 31, 2012) (finding confusing similarity is established when a respondent adopts the dominant feature of a complainant's mark as the primary feature of a domain name and merely adds a generic or descriptive term thereto); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002), (finding that adding a gTLD is irrelevant when analyzing a domain name under Policy ¶ 4(a)(i)).
Respondent lacks rights and legitimate interests in respect of the at-issue domain name.
Under Policy ¶ 4(a)(ii) Complainant must first make out a prima facie case that Respondent lacks rights and legitimate interests in the at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie case acts conclusively.
There is no evidence of record which suggests that Respondent has any connection with the products or services that are associated with the ANZ marks. Likewise, there is no evidence tending to prove that Respondent is commonly known by the disputed domain name and relevant WHOIS information lists “DomainManagerContact@marvelousnames.com” as the domain name’s registrant. Given the foregoing the Panel concludes that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
As revealed by the record and by the Panel’s discretionary independent examination of the referenced website, Respondent uses the <wwwanzinternetbanking.com> domain name to reference a website that consists of hyperlinks to websites of financial services providers as well as links to other sites that apparently relate to the Internet user’s past search patterns and other user related data such as the users geographic location. Clearly, some of the referenced websites are sponsored by Complainant’s competition. One of the hyperlinks is to Complainant’s website. Moreover, hyperlinks revealed in the offending website’s underlying HTML code reference pay-per-click advertising sites such the Google subsidiary <doubleclick.com>. Some of Respondent’s user tailored hyperlinks are presented in Complainant’s papers and include: “Citibank Credit Cards,” “Hsbc Bank,” Bank Of America Credit Card,” “Business Bank Account,” “Best Online Bank Account,” “Westpac Personal Loans,” and “Commbank Personal Loans.” Such references make it clear that the offending website is used to derive “click-through” fees for Respondent. Use of the domain name in this manner is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy¶ ¶4(c)(i) and 4(c)(iii). See 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)); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (holding that using an identical or confusingly similar domain name to earn click-through fees via sponsored links to a complainant’s competitors does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
Given Complainant’s uncontroverted evidence, Complainant satisfies its initial burden and conclusively demonstrates that Respondent lacks both rights and interests in respect of the disputed domain name under Policy ¶4(a)(ii).
Respondent registered and uses the at-issue domain name in bad faith.
Respondent is attempting to mislead Internet users into believing that content on the <wwwanzinternetbanking.com> website is endorsed by, or associated with, the Complainant. Respondent’s website presents Internet users with third-party links which do not offer genuine ANZ products and services thereby confusing such users as to the source, affiliation and sponsorship of such links and of the website itself. As mentioned above within the Panel’s discussion regarding Rights and Interests, Respondent intends to commercially gain from its registration and use of the at-issue domain name by garnering “click-through” fees from Internet traffic to the offending website. Clearly, Respondent calculates that enhanced traffic will be derived from the confusion it has created as to the website’s sponsorship. These circumstances demonstrate Respondent’s bad faith registration and use of the at-issue domain name pursuant to Policy¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
As further evidence of Respondent’s bad faith registration and use of the at-issue domain name, Respondent uses the at-issue domain name in a manner which is contrary to the terms of the agreement between it and the domain name registrar Moniker.com. Respondent acts contrary to the registrar's terms and conditions in the Moniker Registration Agreement. To wit, Respondent violates its promise that “to [Respondent’s] knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party.” In fact, Respondent’s clearly intended to capitalize on Complainant’s goodwill by infringing Complainant’s rights in the ANZ mark and related marks through its registration and use of the at-issue domain name.
Finally, it is clear from a review of the record that Respondent had actual knowledge of Complainant’s trademark rights in ANZ and perhaps some or all of the ANZ related trademarks. Both the manner in which the at-issue domain name is used and the notoriety of Complainant’s mark show that Respondent registered the <wwwanzinternetbanking.com> domain name precisely because of the Complaint’s goodwill in the ANZ mark. That Respondent was actually aware of Complainant and its trademark rights in ANZ at the time it registered the at-issue domain name is further evidence of Respondent’s bad faith under the Policy. See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwanzinternetbanking.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: June 13, 2012
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