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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
National Australia Bank Limited v. Xuhui, Dai
Case No. D2000-0987
1. The Parties
The Complainant is National Australia Bank Limited, a company incorporated in Australia, having its principal place of business in Australia at 500 Bourke Street, Melbourne, Victoria 3000, Australia. It is represented by Kerryn Underwood of Mallesons Stephen Jacques, Solicitors, Melbourne, Australia.
The Respondent is Xuhui, Dai, for whom the address appearing on the WHOIS database is RM.1602, 300 Shi Ji Nan Road, Guangzhou, Guangzhou, Guangdong, 510140, China.
2. The Domain Name and Registrar
The domain name at issue is "nationalaustraliabank.com". The domain name is registered with Network Solutions Inc., 505 Huntmar Park Drive, Herndon, Virginia 20170, United States of America ("NSI"). The domain name was registered on January 30 1999.
3. Procedural History
The Complaint submitted by National Australia Bank Limited was received on August 10, 2000, (electronic version) and August 9, 2000, (hard copy) by the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center").
On August 17, 2000, a request for Registrar verification was transmitted by the WIPO Center to NSI, requesting it to:
Confirm that a copy of the Complaint had been sent to it by the Complainant as required by the WIPO Supplemental Rules for Uniform Dispute Resolution Policy ("Supplemental Rules"), paragraph 4(b).
Confirm that the domain name at issue is registered with NSI.
Confirm that the person identified as the Respondent is the current registrant of the domain name.
Provide full contact details, i.e., postal address(es), telephone number(s), facsimile number(s), email address(es), available in the Registrar’s WHOIS database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact for the domain name.
Confirm that the Uniform Domain Name Dispute Resolution Policy was in effect.
Indicate the current status of the domain name.
By email dated August 21, 2000, the Registrar advised WIPO Center as follows:
NSI had received the Complaint sent by the Complainant.
NSI is the Registrar of the domain name registration "nationalaustraliabank.com".
The Respondent is shown as the "current registrant" of the domain name nationalaustraliabank.com. The Registrant’s contact details are as above.
The administrative and billing contact is: XUHUI, DAI-WN-BGAG (DX 72) gzbusins@PUBLIC.GUANGZHOU.GD.CN, XUHUI, DAI, RM.402, NO.49, LIUYUN ST.3, TIANHENAN RD.1, GUANGZHOU, CN,
86 20 87509656 (FAX) 86 20 85517705.
The technical and zone contact is: WorldNIC Name Host (HOST-ORG) namehost@WORLDNIC.COM, Network Solutions, Inc., 505 Huntmar Park Drive, Herndon, VA 20170
NSI’s 5.0 Service Agreement is in effect.
The domain name registration "nationalaustraliabank.com" is in "Active" status.
NSI has currently incorporated in its agreements the policy for Uniform Domain Name Dispute Resolution adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN").
The advice from NSI that the domain name in question is still "active", indicates the Respondent has not requested that the domain name at issue be deleted from the domain name database. The Respondent has not sought to terminate the agreement with NSI. Accordingly, the Respondent is bound by the provisions of NSI’s Domain Name Dispute Resolution Policy, i.e., the ICANN policy. The Respondent has not challenged the jurisdiction of the Panel.
Having verified that the Complaint satisfied the formal requirements of the Uniform Policy and the Uniform Rules, the WIPO Center on August 22, 2000, transmitted by post/courier and by email a notification of Complaint and Commencement of Administrative Proceedings to the Respondent. A copy of the Complaint was also emailed to NSI and ICANN.
The Complainant elected to have its Complaint resolved by a single panel member: it has duly paid the amount required of it to the WIPO Center.
The Respondent was advised that a Response to the Complaint was required within 20 calendar days (i.e., by September 10, 2000). The Respondent was also advised that any Response should be communicated, in accordance with the Rules, by four sets of hard copy and by email.
On Sptember 15, 2000 the Center transmitted a Notification of Respondent Default.
On October 3, 2000, the WIPO Center invited Andrew Brown, Barrister, of Auckland, New Zealand, to serve as Sole Panelist in the case, transmitting to him a statement of acceptance and declaration of impartiality and independence.
On October 3, 2000, Andrew Brown advised his acceptance and forwarded to the WIPO Center his statement of impartiality and independence. The Panelist finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules.
On October 4, 2000, WIPO Center forwarded to Andrew Brown by courier the relevant submissions and the record. These were received by him on or about October 9, 2000. In terms of Rule 5(b), in the absence of exceptional circumstances, the Panel was required to forward its decision by October 17, 2000.
The Panel has independently determined and agrees with the assessment of WIPO Center that the Complaint meets the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy as approved by ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules.
The language of the administrative proceeding is English, being the language of the registration agreement.
4. Factual Background
The Complainant was created as a result of a merger in 1983 of two major Australian banks, the Commercial Banking Company of Sydney and the National Bank of Australasia Ltd. The merged bank immediately began trading under the business name National Australia Bank. In 1984 the merged entity changed its legal name to National Australia Bank Ltd.
The Complainant provides financial services in four continents and in fifteen countries. It has an asset base of over $250 billion, approximately 9 million customers worldwide (3 million in Australia) and is ranked as one of the fifty largest banks in the world. In Asia it operates seven branches and four representative offices in the Asian business capitals.
Since 1998 the Complainant has offered all its products and services under or by reference to the trademark "NATIONAL". However, from 1983-98 the primary trademark used by the Complainant was "National Australia Bank". This trademark appeared prominently on all Australian branches until October 1998 and is still used on many. The Complainant has produced media reports from 1994, 1999 and 2000 and internet search engine searches showing reference to it as National Australia Bank.
The Complainant does not have any registered trademark for National Australia Bank, but the evidence presented by the Complainant clearly demonstrates the general fame and reputation of National Australia Bank particularly in Australasia.
The Respondent has no rights to the unregistered trademark "National Australia Bank" and no legitimate interest in it. A visitor to the website is currently informed that the page cannot be displayed – although the Complainant has provided evidence that the website was until recently in active use.
5. Parties’ Contentions
The Complainant submits that the only possible conclusion must be that the Respondent registered and is using its well known trademark, "National Australia Bank", in bad faith. The Complainant contends that it is the only entity having rights to the unregistered trademark. The Respondent has no legitimate rights to the mark. The domain name is identical to the Complainant’s mark.
The Respondent has made no submissions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the 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".
The burden for the Complainant, under paragraph 4(a) of the ICANN Policy, is to show:
That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
That the Respondent has no rights or legitimate interests in respect of the domain name; and
That the domain name has been registered and is being used by the Respondent in bad faith.
The domain name "nationalaustraliabank.com" is obviously identical to the Complainant’s unregistered mark National Australia Bank. The Panel so decides.
Likewise, the Panel decides that the Respondent has no rights or legitimate interests in respect of the domain name at issue. The Respondent has never suggested to the contrary.
Paragraph 4(b) of the ICANN Policy states:
"For the purposes of Paragraph 4(a)(iii), 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 you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."
It should be noted that the circumstances of bad faith are not limited to the above.
The Panel considers that the Respondent has registered and used the domain name "nationalaustraliabank.com" in "bad faith" for the following reasons:
(a) "nationalaustraliabank.com" is so obviously connected with a well-known trademark that its very use by someone with no connection with the National Australia Bank suggests opportunistic bad faith.
(b) The words "National Australia Bank" connote a connection with a bank from Australia. The Respondent is not a bank, nor does it have any connection with Australia. The domain name, while operating, defaulted to a site at www.chinapt.com. The "About Us" page on this site refers to the activities of www.ChinaPT.com (China Product Trade) and another company Pearl High-Tech Products Development Co Ltd ("Pearl"). This company similarly is not a bank and operates as an e-commerce importer/exporter in China. There is nothing on the site which refers to any activities of a bank. The address and contact details given for China Products Trade and Pearl are in China. It appears that the Respondent has registered and used the domain name "nationalaustraliabank.com" in order to create an association with the Complainant and as a means of attracting users to his website. This will create a likelihood of confusion with the Complainant’s mark as to source, affiliation or endorsement of the website.
(c) Evidence presented by the Complainant shows that the Respondent has registered a number of domain names comprising the names of well-known businesses – including "bankofnewzealand.com", "ansettaustralia.com" and "berliner_bank.com". National Australia Bank Ltd is the parent company of the Bank of New Zealand and the Respondent has no connection with that company or its trademark, Bank of New Zealand. The Respondent has no connection with the other two domain names noted. The activities of the Respondent in registering these other well-known trademarks as domain names without any apparent authority or trademark rights is strong evidence of bad faith.
For all the various reasons discussed above, the Panel finds that the domain name "nationalaustraliabank.com" has been registered and has been used by the Respondent in bad faith.
7. Legal Considerations
Although entitled to consider principles of law deemed applicable, the Panel finds it unnecessary to do so in any depth. The jurisprudence which is being rapidly developed by a wide variety of Panelists world-wide under the ICANN Policy provides a fruitful source of precedent.
For the foregoing reasons, the Panel decides:
(a) that the domain name registered by the Respondent is identical or confusingly similar to the trademark to which the Complainant has rights;
(b) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(c) that the Respondent’s domain name has been registered and is being used in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name "nationalaustraliabank.com" be transferred to the Complainant.
Dated: 16 October, 2000