macquarie-bank.com

WIPO Arbitration and Mediation Center

The Complainant is Macquarie Bank Limited, Sydney, NSW, Australia, represented by Toby Roberts of Australia.

The Respondent is Robert Seagle aka Oxford University, Piggabeen, NSW, Australia.

The disputed domain name <macquarie-bank.com> is registered with iHoldings.com Inc. d/b/a DotRegistrar.com.

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 15, 2003. On May 16, 2003, the Center transmitted by email to iHoldings.com Inc. d/b/a DotRegistrar.com a request for registrar verification in connection with the domain name at issue. On May 16, 2003, iHoldings.com Inc. d/b/a DotRegistrar.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 20, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was June 9, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 11, 2003.

The Center appointed Debrett G. Lyons as the sole panelist in this matter on June 24, 2003. 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.

The Complaint was incorporated in Australia in 1983, under the name Plena Limited. It was then known as Bond St. Associates Limited and Macquarie Associates Limited before changing its name to Macquarie Bank Limited in 1985. The Complainant is one of Australia’s leading investment banks. The Complainant trades in financial services in Australia and 17 other countries. Since 1985 the Complainant has been trading under the name Macquarie Bank Limited.

The Complainant operates its main Internet website from the domain name <macquarie.com> with additional websites including the word "Macquarie" including "www.macquarie.com.au" and "www.macquariegroup.co.uk".

The Complainant is the proprietor of a large portfolio of trademarks which include the word "Macquarie". This includes four trademarks within Australia and marks in other countries including the United States, the United Kingdom, China, Japan and Singapore. The majority of these marks are for the word Macquarie in conjunction with a circular device. The Australian-registered trademarks include the word marks "Macquarie" and "Macquarie Bank."

The domain name is registered in the Respondent’s name and with his email address listed as a contact. (The Respondent’s name is listed is that of Oxford University, which is an alias for Robert Seagle). The Complainant’s representative contacted the Respondent by email and by telephone on several occasions from April 15, 2003, until May 9, 2003, to attempt to negotiate a transfer of the domain name from the Respondent to the Complainant.

The Respondent negotiated with the Complainant attempting to secure employment with the Complainant, or a fee for transferring the domain name well in excess of any costs of the Respondent. During the negotiations the Respondent asserted that he had changed his name from Oxford University to Macquarie Bank. This announcement was made to the Complainant by email, and also on the website at the domain name.

Negotiations between the Complainant and the Respondent broke down when the Respondent refused to provide details of other domain names that he held including the word "Macquarie".

The Complainant seeks the transfer of the domain name from the Respondent to the Complainant in accordance with the Policy, paragraph 4(i).

The Complainant contends that the domain name is identical or confusingly similar to the Complainant’s trademarks, that Respondent has no right or legitimate interest in the domain name and that the domain name was registered and is being used in bad faith.

The Respondent has not filed a response replying to the Complainant’s contentions, but has made a number of representations out of time, all of which might be properly characterized as irrelevant and/or incoherent.

Since the Respondent has not submitted a Response, the Panel has no alternative but to accept as true all the factual contentions made by the Complainant in accordance with the Rules, paragraph 5(e):

"If a Respondent does not submit a response, in the absence of exceptional circumstances, the panel shall decide the dispute based upon the complaint."

Even though there has been no response the panel must, under the Rules, paragraph 14(a) "proceed to a decision on the complaint".

For the Complainant to succeed, it must show that the Respondent meets each of the criteria in the Policy, paragraph 4(a):

"(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name; and

(iii) your domain name has been registered and is being used in bad faith."

The Complainant has a worldwide portfolio of trademarks which are similar to the domain name.

As numerous courts and prior ICANN panels have recognized, the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark. See Quixtar Investments Inc v. Dennis Hoffman, WIPO Case No. D2000-0253.

In this case the only distinguishing feature is the use of a hyphen in the domain name which has been held by prior panels to be non-distinctive. See The Chancellor, Masters and Scholars of the University of Oxford v. DR Seagle t/a Mr. Oxford-University, WIPO Case No. D2001-0746.

Therefore, under the Policy, paragraph 4(a)(i) the Panel considers the domain name is confusingly similar to several trademarks in which the Complainant has rights.

By failing to file a Response, the Respondent has done nothing to contest the allegations of the Complainant that it lacks any rights or legitimate interests in the disputed domain name. As previously mentioned, the emails sent by the Respondent to WIPO in place of a formal Response are largely incoherent ramblings which do not in any way support a claim to rights or legitimate interests in the domain name.

The Policy, paragraph 4(c) sets out the ways in which the Respondent can show rights or legitimate interests in the disputed domain name:

"(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business or other organization) 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 trademark or service mark at issue."

The Respondent has not made any assertion or provided any evidence of using the domain name as part of a legitimate offer of goods or services, or any bona fide non-commercial use.

The Respondent has failed to provide any evidence of his assertion by email and on his website that he has changed his name to Macquarie Bank, which in very narrow circumstances may have given him a legitimate interest in the domain name in accordance with the Policy, paragraph 4(c)(ii).

Therefore, in the absence of evidence to the contrary, the Panel can only, under the Rules, paragraph 14(b), draw the inference that:

(i) the Respondent cannot provide evidence that he has used or prepared to use the domain name in connection with a bona fide offering of goods or services; and

(ii) the Respondent is not commonly known by the domain name; and

(iii) the Respondent is intent on using the domain name to divert customers from the Complainant.

Therefore, under the Policy, paragraph 4(a)(ii), the Panel considers the Respondent has no rights or legitimate interests in respect of the domain name.

By failing to file a Response, the Respondent has done nothing to contest the allegations of the Complainant that it has registered and is using the domain name in bad faith.

The Policy, paragraph 4(b) sets out the ways in which the Complainant can show the domain name is registered and used 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 if 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".

As stated in Section B (Rights or Legitimate Interests) above, the Respondent has failed to provide any evidence that he is using the domain name for a legitimate trading purpose.

The Respondent and the Complainant failed to reach agreement to transfer the domain name to the Complainant, because the Respondent requested AUD$5,000 but agreed AUD$3,000 which is in excess of any reasonable costs that he could have incurred. When negotiations between the Respondent and the Complainant subsequently broke down the Respondent threatened that the price would rise daily.

Therefore, in the absence of evidence to the contrary, the Panel can only, under the Rules, paragraph 14(b), draw the inference that the Respondent acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name for a valuable consideration in excess of the Respondent’s documented out of pocket expenses directly related to the domain name.

The Respondent has on several previous occasions registered domain names that include the trademark or trading name of well-known companies, for example:

(i) the National Arbitration Forum’s decision America Online Inc v. Oxford University a/f/a Oxford U - Domains for Sale Domain-Man.com (Claim No. FA0206000114654);

(ii) Harvey Norman Retailing Pty Ltd v. Oxford-University, WIPO Case No. D2000-0944;

(iii) The Chancellor, Masters and Scholars of the University of Oxford v. DR Seagle t/a Mr. Oxford-University, WIPO Case No. D2001-0746; and Imperial Chemical Industries PLC v. Oxford University, WIPO Case No. D2001-0292.

This constitutes an established pattern of registering domain names that are uniquely related to other companies or institutions to capitalize on their reputation and goodwill.

Therefore, in the absence of evidence to the contrary, the Panel can only under the Rules, paragraph 14(b), draw the inference that the Respondent has registered the domain name in order to prevent the Complainant from reflecting the mark in a corresponding domain name and the Respondent has engaged in a pattern of such conduct in relation to well-known businesses and organisations.

The Complainant’s representative has provided substantial evidence illustrating the worldwide and high-profile nature of the Complainant’s business.

The Respondent has failed to provide any evidence of use, having developed a website for use in conjunction with the domain name or having made any other non-commercial, or fair use of the domain name.

Therefore, in the absence of evidence to the contrary, the Panel can only, under the Rules, paragraph 14(c), draw the inference that the Respondent intends to use the domain name to attract, for commercial gain, Internet users to the website by misleading Internet users who are seeking an official Macquarie Bank website.

Therefore, under Policy, paragraph 4(a)(iii), the Panel considers that the Respondent has registered and used the domain name in bad faith.

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <macquarie-bank.com> be transferred to the Complainant.

Debrett G. Lyons
Sole Panelist

Dated: July 7, 2003