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WIPO Arbitration and Mediation Center
�� ADMINISTRATIVE PANEL DECISION
ICICI Bank Limited v. chuandong xu
Case No. D2008-0880
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1. The Parties
Complainant is ICICI Bank Limited, Mumbai, Maharashtra, India, represented by Pramod Rao of India.
Respondent is chuandong xu, Beijing, People��s Republic of China.
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2. The Domain Name and Registrar
The disputed domain name is registered with HiChina Zhicheng Technology Ltd.
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3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ��Center��) on June 9, 2008. On June 11, 2008, the Center transmitted by email to HiChina Zhicheng Technology Ltd. a request for registrar verification in connection with the disputed domain name. On June 11, 2008, HiChina Zhicheng Technology Ltd. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In reply to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on June 19, 2008 together with a Request for Language of Proceeding. The Center verified that the Complaint together with the amendment to 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 June 20, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 10, 2008. The Response was filed with the Center on August 10, 2008.
The Center appointed Susanna H.S. Leong as the sole panelist in this matter on August 20, 2008. 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.
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4. Factual Background
Complainant is ICICI Bank Limited, a company organized and incorporated under the Indian laws in the year 1955. It adopted the mark ICICI in respect of its services in the year 1955. Complainant has a network of about 955 branches in India and has wholly-owned subsidiaries, branches and representatives offices in 18 countries, including Hong Kong, SAR of China (��Hong Kong��) and the People��s Republic of China (��China��).
Complainant is a registered proprietor of the trade mark ICICI in India, Hong Kong, Japan, Korean, the Russian Federation, The Kingdom of Saudi Arabia, Singapore, Switzerland and China. Complainant is also the registered owner of the following domain names: ; ; ; ; ; ; ; ; ; ; ; ; ; ; and, .
Respondent registered the disputed domain name on September 21, 2005.
On December 11, 2007, Complainant through its legal representatives contacted Respondent by email and communicated to Respondent its intention to have the disputed domain name transferred to Complainant. Respondent has indicated via email that Respondent was agreeable to a transfer of the disputed domain name to Complainant for a sum of USD 800,000.
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5. Parties�� Contentions
A. Complainant
Identical or Confusingly Similar
Complainant contends that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. Complainant has adduced evidence to show that it is the registered proprietor of the trade mark ICICI in India and many other countries in the world including China. According to Complainant, the ICICI mark is inherently distinctive, has acquired substantial goodwill and is an extremely valuable commercial asset of Complainant��s company.
Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interests in respect of the disputed domain name for the following reasons:
1. Complainant did not authorize the use of the trade mark ICICI and did not authorize the registration of ICICI as a domain name by Respondent;
2. Although Respondent has registered the disputed domain name in 2005, Respondent has not shown any legitimate association or connection between the disputed domain name and Respondent��s entity. The content of the website onto which the disputed domain name resolved on also does not show that it has used for a bona fide offering of goods or services.
3. On December 11, 2007, Complainant through its legal representatives contacted Respondent by email and communicated to Respondent its intention to have the disputed domain name transferred to Complainant. Respondent has indicated via email that Respondent was agreeable to a transfer of the disputed domain name Complainant for a sum of USD 800,000.
4. Respondent has failed to show that before any notice to Respondent of the dispute, there is any evidence of 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.
5. Respondent has failed to show that he as an individual, business or other organization has been commonly known by the domain name, even if Respondent has acquired no trade mark or service mark rights.
6. Respondent has failed to show that he is making a legitimate non commercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trade mark or service mark at issue.
Registered and Used in Bad Faith
Complainant contends that the disputed domain name was registered and is being used in bad faith for the following reasons:
1. Respondent has a history of using domain names in which it has no legitimate interest.
2. Respondent is a professional cyber squatter who has procured registrations of various domain names under the pretext of fictitious identities. In particular, Complainant contends that three other domain names , , and stand registered in the name of three different registrants having the same fax and phone number as that of Respondent.
3. Respondent has been found to continuously engage in frequent update of the information provided in the WHOIS database of the domain name .
4. Respondent has no legitimate justification of having registered a domain name incorporating the word ICICI and has no apparent use for the domain name other than to profit from squatting on the same.
5. On December 11, 2007, Complainant through its legal representatives contacted Respondent by email and communicated to Respondent its intention to have the disputed domain name transferred to Complainant. Respondent has indicated via email that Respondent was agreeable to a transfer of the disputed domain name Complainant for a sum of USD 800,000.
B. Respondent
Identical or Confusingly Similar
Respondent contends that the word ��icicigroup�� found in the disputed domain name is made up of two common words – ��icici�� and ��group��. Respondent explained that the term ��icici�� is the phonetic equivalent of ������ (��I��) ���δΡ�(��cici��)�� ���ʴʡ�(��cici��) etc., in which ��cici�� can mean many, many things. The word ��group�� refers to a community of netizens with a common interest. Thus, ��icicigroup�� merely refers to a web-community gathered together for a common interest, any common interest. Respondent conceded that the disputed domain name is visually similar to Complainant��s ICICI mark but disagreed that the disputed domain name is aurally or conceptually similar to Complainant��s ICICI mark.
Rights or Legitimate Interests
Respondent contends that he has rights or legitimate interests in the disputed domain name for the following reasons:
1. As an individual, Respondent is entitled to register the disputed domain name on a ��first come first served�� basis.
2. The term ��icicigroup�� merely refers to a web-community gathered together for a common interest, any common interest.
3. When Respondent registered the disputed domain name in 2005, Complainant��s trade mark ICICI has not been granted registration in China. Therefore, Respondent��s registration of the disputed domain name at that time did not infringe Complainant��s trade mark rights.
4. Respondent was not aware of the existence of Complainant, its mark and its business at the time of registration as he has never left China and has never been to the countries in which Complainant has a business presence.
5. Respondent argues that Complainant��s trade mark rights are limited to only a few countries and its ICICI mark is also not a well-known mark in China.
6. Respondent has registered its website with the Industrial and Information regulatory authority in China for a non-profit use of its website. Under the Industrial and Information regulations in China, all website owners who provide and share information or knowledge in any particular area in an open-source manner and for free must seek registration with the relevant authorities. Respondent��s website has obtained the necessary approval from the Chinese authorities on May 29, 2008. The registration number ��ICP��08010157��is found on the left hand corner of Respondent��s website.
Registered and Used in Bad Faith
Respondent contends that the disputed domain name was not registered and is not being used in bad faith for the following reasons:
1. The term ��icicigroup�� merely refers to a web-community gathered together for a common interest, any common interest.
2. When Respondent registered the disputed domain name in 2005, Complainant��s trade mark ICICI has not been granted registration in China. Therefore, Respondent��s registration of the disputed domain name at that time did not infringe Complainant��s trade mark rights.
3. Respondent was not aware of the existence of Complainant, its mark and its business at the time of registration as he has never left China and has never been to the countries in which Complainant has a business presence.
4. Complainant is in the banking business and to operate such business in China, a company must obtain the relevant licenses from the government authorities. Respondent does not offer any competing products or services on his website and does not link his website to any other competitors�� websites. Respondent��s website is completely in Chinese and provides information on a wide range of areas including travel, Chinese pottery, poetry and furniture. It is a non-profit website and has checked and approved by the relevant Chinese government authorities. On the other hand, Complainant��s website is yellow in colour and is completely in English.
5. Respondent did not register the disputed domain name with the intention of selling or profiting from it. Complainant has approached Respondent with an offer to buy or transfer the disputed domain name. Respondent merely responded with a price for the proposed transfer. Such communications with a view to settlement are confidential and privileged but Complainant has chosen to present these communications to the Panel out of context of the negotiations which is unfair to Respondent.
Reverse Domain Name Hijacking
Respondent contends that Complainant has undertaken this administrative proceeding for the transfer of the disputed domain name in bad faith and Complainant��s bad faith is evident in the following:
1. Complainant asserts that its trade mark rights in ICICI in China were effective 2004 when it was clearly stated on the trade mark registration certificate that the ICICI trade mark was granted registration on February 28, 2007. This is indicative of bad faith.
2. Complainant did not provide the entire history of the negotiations for settlement between the parties and has chosen to present these communications to the Panel out of context of the negotiations which is unfair to Respondent.
3. Complainant is a company with a representative office in China and it should not encounter difficulties if Chinese is the language of this proceeding. However, Complainant has insisted that English is the appropriate language of the proceedings knowing full well that Respondent is not conversant in the English language and will be severely disadvantaged.
4. Complainant is fully aware that ��icici�� and ��iciciband�� do not exclusively refer to Complainant or its subsidiaries. In countries like The Kingdom of Bahrain and the Russian Federation, Complainant has registered domain names such as and respectively instead of and . This shows that ��icici�� and ��icicibank�� do not uniquely refer to Complainant and its subsidiaries. As Complainant is fully aware of all these limitations but yet has chosen to pursue this administrative proceeding, Respondent contends that Complainant is engaged in reverse domain name hijacking in bad faith.
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6. Discussion and Findings
6.1 Language of the Proceeding
The language of the registration agreement for the disputed domain name is Chinese. Pursuant to Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented in the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the proceedings should be in English. Complainant has submitted a request that English should be the language of the present proceeding because (a) Respondent has communicated with Complainant in English; (b) the website of the Registrar under which the domain name was registered also maintains a website in English.
After considering the circumstances of the present case and the submission of Complainant��s request, the Panel is of the opinion that the language for the present proceedings should be in English and the decision will be rendered in English. The Panel based its decision on the following reasons:
(i) The Panel��s discretion under the Policy
Paragraph 11 of the Rules provides:
��Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.��
Thus, parties may agree on the language of the administrative proceeding. In the absence of an agreement, the language of the registration agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel��s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time, and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.
(ii) The Circumstances of this Case
One important consideration is the issue of fairness to both parties in their abilities to prepare the necessary documents for this proceeding and also to respond adequately to these documents when they are served upon the parties.
On record, Respondent appears to be Chinese and is thus presumably not a native English speaker, but the Panel finds that persuasive evidence in the present proceeding to suggest that Respondent is conversant and proficient in the English language. In particular, the Panel notes that (a) the disputed domain name is in English; (b) Respondent has communicated with Complainant via email in English; (c) the Center has notified Respondent of the proceedings in both Chinese and English; (d) Respondent was able to respond in a document that contains both English and Chinese materials; and, (e) Respondent was able to cite previous UDRP cases which are in English to support his case. Considering these circumstances, the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case.
After considering the circumstances of the present case, the Panel decides that the proceeding should be English and the decision will be rendered in English.
6.2 Substantive Elements of the Policy
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, Complainant must establish that each of the three following elements is satisfied:
1. the domain name is identical or confusingly similar to a trade mark or service mark in which Complainant has rights;
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.
Paragraph 4(a) of the Policy clearly states that the burden of proof lies with Complainant to establish that all these three elements are satisfied in this proceeding.
Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.
On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows:
A. Identical or Confusingly Similar
Complainant has adduced evidence to demonstrate that it has registered trade mark rights and continues to have such rights in the ICICI mark in India (and several other countries in the world) since it first obtained registered trade mark rights in 1955 in relation to banking services. The Panel rules that Complainant has rights and continues to have such rights in the relevant ICICI mark. The Panel further notes that Complainant enjoys trade mark protection in respect of its ICICI mark in China since February 28, 2007.
The disputed domain name consists of Complainant��s ICICI mark in its entirety with the addition of the word ��group�� and the suffix ��.com��. The Panel finds that the term ��ICICI�� in Complainant��s ICICI mark is an arbitrary word and it is the distinctive portion of Complainant��s marks and it has been reproduced in its entirety in the disputed domain name. Although Respondent has adduced evidence to show that ��icicigroup�� means something conceptually different in China especially among the Chinese Internet community, the Panel finds that visually and aurally, the disputed domain name is confusingly similar to Complainant��s ICICI mark. It is important to bear in mind that in the Internet, there are no territorial borders and for a domain name with a ��.com�� generic top-level domain, the users are not confined to only Chinese Internet users. The conceptual differences as highlighted by Respondent may not be relevant to the users and confusion may still arise. The confusion generated by Respondent��s domain name is further heightened by the fact that Complainant is the owner of domain names such as ; ; ; ; ; ; ; ; ; ; ; ; ; ; and has been using these domain names extensively to market its goods and services on the Internet. Consequently, the Panel finds that the disputed domain name is identical or confusingly similar to Complainant��s trade marks in which Complainant has rights.
The Panel finds for Complainant on the first part of the test.
B. Rights or Legitimate Interests
The burden of proof on this element lies with Complainant. However, it is well- established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests to a disputed domain name, the burden of proof shifts to respondent to rebut complainant��s contentions.
According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you Respondent 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 Respondent (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or
(iii) you Respondent are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
After reviewing all the evidence adduced by the parties, the Panel finds Respondent has successfully rebutted Complainant��s contentions by showing that Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue. The Panel makes this finding on the following grounds:
1. Amongst the Chinese Internet users, the term ��icicigroup�� means a community of like-minded netizens with common interests and the ��i�� denotes ��love�� (������, phonetic pronunciation is ��ai�� and is commonly represented by the letter ��i��) and ��cici�� can mean a variety of things including pottery (��); phrases (��) or here (��), all of which share the phonetic pronunciation ��ci��. It is plausible that ICICI does not therefore uniquely refer to Complainant and can be used in this manner especially within the Chinese Internet users.
2. Respondent has a fully operational website in Chinese that offers a wide range of information (Chinese pottery, Chinese poetry, furniture, travel, etc.) for sharing on an open-source basis. It is a not-for-profit website and the authenticity of Respondent��s website in offering information for sharing without monetary compensation has been approved and sanctioned by the Chinese Industrial and Information Ministry. Respondent��s website was given a registration number ����ICP��08010157�š� which is found on the left hand corner of Respondent��s website. Thus, Respondent��s website is being regulated by the relevant Chinese authorities.
3. Respondent��s website is very different whether in terms of the look-and-feel, the contents and the language from Complainant��s official website. Respondent��s website does not offer any products or services which are related or in competition with Complainant��s banking products and services. Respondent��s website is also not linked to any other websites in competition with Complainant. There can be no confusion between the two websites. Any initial confusion generated by the visual or aural similarities of the disputed domain name and Complainant��s mark is dissipated when one looks at the website of Respondent in comparison with Complainant��s website.
4. Respondent��s knowledge of Complainant and its trade mark prior to or at the time of registration/acquisition of the disputed domain name is a critical factor to bear in mind when considering the plausibility of Respondent��s explanation of his choice in the disputed domain name. Previous panels have recognized that in the absence of clear evidence that a respondent had actual knowledge of a mark, certain inferences may be drawn in terms of likely knowledge from inter alia the fame of a complainant��s mark. At any relevant point in time, Complainant merely maintained a representative office in China without evidence of actual banking operations or services offered to the Chinese public at large. In 2005 when Respondent registered the disputed domain name, Complainant��s trade mark ICICI had also not been granted trade mark registration in China and thus the mark ICICI would not be on the Trade Mark register for public searches and knowledge. Complainant is a foreign bank with minimal banking activities (retail or otherwise) in China and although it may be well-known in India and other parts of the world, it cannot be presumed that the same degree of notoriety exists in China. This is particularly the case when the Complainant��s mark ICICI shares the same acronym of a word commonly used amongst the Chinese Internet users to refer to a community of like-minded netizens with common interests.
5. Respondent has been approached by Complainant on the possibility of a transfer of the disputed domain name at an agreed price. The mere fact that Respondent has agreed to negotiate with a view to transfer the disputed domain does not on its own indicate that Respondent does not have legitimate right or interests in the disputed domain name. Domain names are bought and sold constantly. The important thing is whether Respondent harboured such intentions prior to or at the time of registration/acquisition of the disputed domain name. On a balance of probabilities, the Panel finds that there is an absence of conclusive evidence to show that Respondent registered the disputed domain name for the purpose of sale or profit instead of making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue, in the form of a personal not-for-profit website offering various information for sharing on an open-source basis. While a competent court might provide occasion to assess these matters on a more complete record and in a broader legal context, the Panel in this case concludes that the facts before it do not appear to justify a transfer finding under the criteria of the UDRP.
The Panel finds for Respondent on the second part of the test.
C. Registered and Used in Bad Faith
As the Panel has found that Respondent has legitimate right or interests in the disputed domain name, there is no need to consider the third part of the test.
Reverse Domain Name Hijacking
After considering all the relevant evidence adduced before the Panel in this case, the Panel is of the view that Complainant did not engage in bad faith reverse domain name hijacking. Complainant has instituted this proceedings believing that it has a legitimate claim to the disputed domain name, however, the Panel for the reasons stated above finds that Complainant has not discharged its burden of proof.
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7. Decision
For all the foregoing reasons, the Complaint is denied.
Susanna H.S. Leong
Sole Panelist
Dated: September 8, 2008
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