WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Westpac Banking Corporation v. Mike Morgan
Case No. DAI2021-0004
1. The Parties
Complainant is Westpac Banking Corporation, Australia, represented by SILKA AB, Sweden.
Respondent is Mike Morgan, Canada.
2. The Domain Name and Registrar
The disputed domain name <westpac.com.ai> (“the Domain Name”) is registered with Instra Corporation Pty Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 21, 2021. That same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 23, 2021, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 Respondent of the Complaint, and the proceedings commenced on April 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 13, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 14, 2021.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on May 20, 2021. 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
Complainant, established in 1817, is one of Australia’s oldest banking institution. It provides a broad range of banking and financial services, including consumer, business, and institutional banking, and wealth management services.
Complainant owns multiple trademark registrations for the WESTPAC Mark or “the Mark” in numerous countries and territories including: Australia Trademark Registration No. 369128, registered on December 7, 1981; International Trademark registration No. 1217277, registered on February 14, 2014 (designating inter alia, the European Union, China, and Japan); and New Zealand Trademark Registration No. 139538, registered on December 13, 1985. Complainant serves over 13 million customers under the WESTPAC Mark, having offices in Europe, America, and Asia.
Complainant has a significant presence on various social media platforms, such as Facebook, Twitter or LinkedIn. Also, Complainant uses the domain name <westpac.com.au>, which hosts a website that displays information about the company and its services.
The Domain Name was registered on October 8, 2019. The Domain Name resolves to a website with “Related Links” to: Mastercard Credit Card, Visa Credit Card, Banking Account, Bank Card, Credit Card, and Banking. After clicking on Mastercard Credit Card, for example, the public is taken to a page of various marketing ads and associated links to apply for credit cards (e.g., Discover Card, Mastercard). After clicking on Banking, for example, the public is taken to a page of various ads for banks with links for lending, savings, and checking account services. There is also a link for the public to get their credit ratings.
5. Parties’ Contentions
Complainant has the requisite rights in the WESTPAC Mark by virtue of its portfolio of trademark registrations. The Domain Name exactly reproduces the WESTPAC Mark, with the addition of the country code Top-Level Domain (“ccTLD”) identifier “.com.ai” which is inconsequential for determining confusing similarity.
Complainant has not authorized Respondent to use its WESTPAC Mark for any reason or in any manner, including in or as part of the Domain Name. Likewise, Complainant is not affiliated or otherwise connected with Respondent. Complainant has found no evidence that Respondent is commonly known by the Domain Name. A search in Google of the term “westpac” shows how the results essentially refer to Complainant and its activities. Given the association between Complainant and “westpac”, it is more than likely that Internet users will associate the Domain Name with Complainant and its activities, when in fact they are not related. Respondent does not seem to own any trademark registration for the Domain Name. Respondent is not making a legitimate noncommercial or fair use of the Domain Name. The Domain Name resolves to a website that features pay-per-click links to financial services of Complainant’s competitors in the banking industry, such as “Banco Santander”. Because the use of the Domain Name clearly capitalizes on the reputation and goodwill of the WESTPAC Mark for commercial gain, such use cannot give rise to any rights or legitimate interests in respect of the Domain Name.
Respondent has been the respondent in 17 cases decided by the Center, all involving well-known trademarks of third parties and Respondent has also registered on September 9, 2019, the domain names <telstra.com.ai> and <auspost.com.ai>, which incorporate other well-known trademarks (TELSTRA and AUSPOST). This evidence confirms that Respondent has no rights or legitimate interests in the Domain Name.
The Domain Name was registered on October 8, 2019, while the WESTPAC Mark has been registered and in use since 1982. The Domain Name reproduces in full the WESTPAC Mark and is almost identical to the domain name <westpac.com.au>, under which Complainant operates its website. It is impossible to believe that Respondent would have chosen the Domain Name if it did not have Complainant’s Mark and activities in mind. Furthermore, the WESTPAC Mark is well known online and in social media so it is inconceivable that Respondent was unaware of the Mark. Finally, it is important to note that Respondent is clearly familiar with the banking and the financial industry, in which Complainant has operated for more than two centuries because he previously registered domain names which were confusingly similar to well-known trademarks held by MasterCard International Incorporated. In view of these facts there is no chance that Respondent registered the Domain Name by mere coincidence.
The Domain Name resolves to a pay-per-click website that includes sponsored links. Considering Complainant’s worldwide use of its WESTPAC Mark and the similarities between the Domain Name and Complainant’s website “www.westpac.com.au”, Respondent’s use of the Domain Name seeks to take advantage and exploit likely typing mistakes on the part of Internet users who are looking for Complainant’s website at “www.westpac.com.au”, but through the slight variation of “.au” and “.ai” end up at Respondent’s website.
Using the confusingly similar Domain Name to obtain click-through-revenue is bad faith use. Furthermore, Respondent has engaged in a pattern of conduct by registering domain names closely corresponding to well-known third-party trademarks (at least 20 other cases) which conduct amounts to bad faith registration. Additional evidence of Respondent’s bad faith use of the Domain Name is that the Domain Name is associated with mail servers (“MX servers”) that enable Respondent to use it for creating and using email addresses comprised of “@westpac.com.ai”. These email addresses, given the similarity between the Domain Name and Complainant’s domain name <westpac.com.au>, could, be used for any purposes and notably for spamming or phishing purposes, to obtain banking and personal data from Complainant’s customers and to misuse these data.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds Complainant has established rights in the WESTPAC Mark based on the aforementioned trademark registrations for the Mark that Complainant made of record.
The Panel further finds that the Domain Name <westpac.com.ai> is identical to Complainant’s WESTPAC Mark, incorporating the WESTPAC Mark in its entirety. See Andrey Ternovskiy dba Chatroulette v. DomainAdministrator, See PrivacyGuardian.org / JonasKropf, WIPO Case No. D2018-0977 (holding that the Domain Name met the requirements of paragraph 4(a)(i) of the Policy as it was identical to the mark at issue because it consisted solely of Complainant’s CHATROULETTE trademark). Adding the ccTLD identifier “.ai” does not distinguish the Domain Name from the Mark because the use of a Top-Level Domain (“TLD”) is required of domain name registrations. See Saudi Arabian Oil Co. v. Default Auction Contact / Sebastian Haigh, Oai, WIPO Case No. DAI2020-0005 (finding that the disputed domain name was identical to the Complainant’s trademark SAUDI ARAMCO since the trademark was entirely reproduced in the disputed domain name with the mere addition of the ccTLD “.ai”).
For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
It is uncontested that Complainant has not authorized Respondent to use the Mark for any purpose including to register in the Domain Name. Likewise, Complainant is not affiliated or otherwise connected with Respondent. Furthermore, there is no evidence Respondent has been commonly known by the name Domain Name or that it has any rights in the Mark.
Complainant asserts that Respondent is not making a legitimate noncommercial or fair use of the Domain Name because the Domain Name resolves to a website that features pay-per-click links to competitive financial service providers in the banking industry, such as “Banco Santander”. According to Complainant, such a use of the Domain Name clearly capitalizes on the reputation and goodwill of Complainant’s WESTPAC Mark for commercial gain.
Insofar as Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests to the Domain Name (Spencer Douglass, MGA v. Bail Yes Bonding, WIPO Case No. D2004-0261), this shifts the burden of production to Respondent to show evidence that it has rights or legitimate interests in the Domain Name. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270. Respondent has failed to adduce any evidence to shoulder its burden. Thus, Complainant’s facts, without contrary evidence from Respondent, are sufficient to permit a finding in Complainant’s favor on this issue. Alcoholics Anonymous World Services, Inc. v. Lauren Raymond, WIPO Case No. D2000-0007.
The Panel therefore holds that Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Respondent registered and has been using the Domain Name <westpac.com.ai> that is identical to the WESTPAC Mark. When Respondent registered the Domain Name, Complainant had been using that Mark for many years worldwide, including on various social media platforms and in its own domain name <westpac.com.au>, which hosts a website that displays information about the company and its banking and financial services. Given Complainant’s widespread and long-standing use of the WESTPAC Mark worldwide, the Panel finds it is highly unlikely Respondent was unaware of the Mark when it registered the Domain Name. Respondent’s bad faith registration is also evidenced by the facts that: (1) Respondent has not shown that he has any rights or legitimate interests in the Domain Name; (2) Respondent registered a Domain Name that is exactly the same as the domain name Complainant uses but for one letter in their TLD, “com.ai” in the Domain Name and “.com.au” in Complainant’s domain name; and (3) Respondent is using the Domain Name in conjunction with a website that is offering banking services in competition with those of Complainant. On the uncontroverted evidence, the Panel finds that Respondent registered the Domain Name in bad faith.
Respondent’s bad faith use of the Mark is evidenced by the fact that Respondent registered a domain name using a mark that is identical to Complainant’s well-established trademark in conjunction with a site that offers banking services which are competitive to Complainant’s while obtaining click-through-revenue.
See, e.g., Facebook, Inc., Instagram, LLC, WhatsApp Inc., Facebook Technologies, LLC v. Jurgen Neeme, firstname.lastname@example.org and Jay Neeme, WIPO Case No. D2019-1582.
In view of the above, the Panel finds that the Domain Name was registered and is being used in bad faith, in accordance with paragraph 4(a)(iii) of the Policy.
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, <westpac.com.ai>, be transferred to Complainant.
Harrie R. Samaras
Date: May 27, 2021