The Complainants are CIMB Group Sdn. Bhd. and CIMB-Principal Asset Management Berhad of Kuala Lumpur, Malaysia, represented by Shearn Delamore & Co., Malaysia.
The Respondent is PrivacyP of Moergestel, Netherlands / Cyber Domain Services Pvt.Ltd. of Mumbai, India. 2. The Domain Name and Registrar
The disputed domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 6, 2010. On October 6 and 7, 2010, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR a request for registrar verification in connection with the disputed domain name. On October 7, 2010, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR transmitted by email to the Center its verification response, disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 8, 2010, providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 12, 2010.
The Center verified that the Complaint together with the amended 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 14, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 3, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 4, 2010.
The Center appointed Francine Tan as the sole panelist in this matter on November 12, 2010. 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
The Complainants are members of the CIMB group of companies which is in the business of providing banking and other financial services in Malaysia and globally. “CIMB” is the acronym for Commerce International Merchant Bankers Berhad, and it is the principal mark and identifier of the Complainants and the CIMB group of companies.
The first Complainant, CIMB Group Sdn. Bhd., claims to be the common law proprietor of the CIMB trade mark since at least the year 2000. In the Complaint lodged, it set out the details of its trademark registrations in several countries including the following: Indonesia, Japan, Singapore, Thailand, the United Kingdom of Great Britain and Northern Ireland and Malaysia. These registrations consist of the letters “CIMB” together with a logo. The Indonesian trademark registration is for CIMB NIAGA in combination with the said logo. The Complainants’ related company, CIMB Investment Bank Berhad, is the registered proprietor of the mark i*Trade@CIMB in respect of services in Class 36, which registration dates from June 13, 2002. Another related company, CIMB Bank Berhad, has a pending application for the trade mark CIMB BANK in Class 36.
The second Complainant, CIMB-Principal Asset Management Berhad, has a registration for the domain name which was registered on April 4, 2005.
The disputed domain name was registered on August 13, 2006. 5. Parties’ Contentions A. Complainants
The Complainants assert that:
1. The disputed domain name is identical or confusingly similar to a trade mark in which the Complainants have rights.
On this point, the Complainants submit that prior UDRP panel decisions have established the general principle that combining a generic word with a complainant’s registered trade mark does not circumvent the complainant’s rights in the mark nor avoid confusing similarity. The addition of a generic and descriptive word such as “principal” to a highly distinctive name such as CIMB should therefore be disregarded for the purposes of determining whether the disputed domain name is identical or confusingly similar with the trade mark or service mark.
2. The Respondent has no rights or legitimate interests in the disputed domain name. Their reasons follow:
At the time of the lodgment of the Complaint, the Complainants were not aware of any use of the words “CIMB-principal” by the Respondent and/or other person. There is no indication whatsoever that the Respondent is currently engaged in any business incorporating the disputed domain name. The Respondent is using the disputed domain name to direct Internet users to third party websites via a web portal with the heading “find something interesting”, “Find what you’re looking for” and a box for entering search terms. There does not appear to be any actual offering of the Respondent’s goods or services, nor is there any indication that the Respondent has been commonly known by the disputed domain name. The Complainants have never permitted nor authorized the Respondent to use or register the disputed domain name. Finally, the Complainants’ rights in the trade marks CIMB, CIMB NIAGA and i*Trade@CIMB, etc. as well as the registration of the domain name precede the registration by the Respondent of the disputed domain name.
3. The disputed domain name was registered and is being used in bad faith and this is demonstrated by the following facts:
(a) One of the Complainants’ web pages namely, at “/maxinvest”, was listed in a third party website link found on the Respondent’s portal at the disputed domain name. From this, it can be inferred that the Respondent has prior knowledge of the Complainants’ CIMB trade marks. Bad faith can be presumed from this fact.
(b) The Respondent is using the disputed domain name to direct Internet users to third party websites offering goods and/or services in direct competition with those of the Complainants, as well as offering goods and/or services unrelated to the Complainants and their commercial activities. The Respondent is thereby taking advantage of the goodwill associated with the Complainants’ CIMB marks to offer goods and/or services of third parties.
(c) The foregoing demonstrates the Respondent’s sole intention to passively hold the disputed domain name and thereby preventing the Complainants from using their trade mark in a corresponding domain name.
(d) The foregoing also shows that the Respondent is intentionally attempting to attract Internet users, for commercial gain, to the Respondent’s website by creating a likelihood of confusion with the Complainants’ trade marks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website. The deliberate creation of initial interest, confusion, and the consequent diversion of Internet traffic are sufficient to establish bad faith on the Respondent’s part. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainants must prove each of the following:
(1) the disputed domain name registered by the Respondent is identical or confusingly similar to a trade mark or service mark in which the Complainants have rights; and
(2) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(3) the disputed domain name has been registered and is being used in bad faith.
Notwithstanding the fact that the Respondent did not file a Response in these proceedings, the Complainants still have to discharge their burden of proving their case. Where no Response is filed, the Rules prescribe that the Panel has to “decide the dispute based upon the [C]omplaint” (paragraph 5(e)). Rule 15(a) further prescribes that the Panel “shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Rule 14(b) provides that “if a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate”.
With due consideration of these provisions of the Rules, the Panel sets out its discussion and conclusion below. A. Identical or Confusingly Similar
The Complainants have more than sufficiently established that they have rights in the CIMB trade mark and accordingly, the next question to be addressed is whether the disputed domain name is identical or confusingly similar to the Complainants’ trade mark. The Panel has taken note of the precedents of many earlier UDRP panel decisions on this issue, and agrees with the Complainants’ submission that the generic/descriptive word “principal” should be disregarded in this as the disputed domain name has incorporated the Complainants’ mark in its entirety. The additional hyphen and descriptive word “principal” in this case do not serve to remove the confusing similarity with the Complainants’ mark.
The Panel therefore finds that the disputed domain name is confusingly similar to the Complainants’ trade mark, and the requirements of paragraph 4(a)(i) of the Policy have been satisfied. B. Rights or Legitimate Interests
The Panel also concludes that the Respondent has no rights or legitimate interests in the disputed domain name. Paragraph 4(c) of the Policy provides examples of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a 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 noncommercial 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.”
In this case, the Panel finds that the Complainants have provided the requisite prima facie evidence of the above circumstances. What has been established in earlier UDRP panel decisions is that whilst a general burden of proof is on a complainant in a UDRP proceeding to establish each of the requirements of paragraph 4(a) of the Policy, in relation to this requirement under paragraph 4(a)(ii), all that is reasonably required of the complainant is to establish prima facie evidence of a respondent’s lack of rights or legitimate interests in a disputed domain name. There are understandably inherent limitations as to the complainant’s ability to definitively prove a lack of rights or legitimate interests on the respondent’s part.
The Panel has determined that the Complainant has made such showing, and the burden therefore shifts to the Respondent in this case to show evidence to the contrary. In the Panel’s view, the manner in which the disputed domain name has been used (as shown in the evidence furnished by the Complainants) cannot constitute or amount to a bona fide offering of goods or services. On the contrary, it appears on the face of it to be an illegitimate use for commercial gain, for the purpose of misleading and diverting consumers. There is also no evidence proffered by the Respondent to show that it has been commonly known by the disputed domain name .
In the absence of a Response by the Respondent with evidence to rebut the Complainants’ case, the Panel accepts that the Respondent has no rights or legitimate interests in the disputed domain name and finds for the Complainants. The requirements of paragraph 4(a)(ii) of the Policy have therefore been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out that the following non-exhaustive circumstances, if found by the Panel to be present, would be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that [the Respondent has] registered or [the Respondent has] 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 [the Respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) [the Respondent has] 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 [the Respondent has] engaged in a pattern of such conduct; or
(iii) [the Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] 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 [the Respondent’s] web site or location or of a product or service on your web site or location.”
The Panel is of the view that the circumstances of this case fall within the example given in paragraph 4(b)(iv) of the Policy. Firstly, the fact that the Respondent is using the disputed domain name to provide sponsored links to websites of third parties, including those of the Complainants’ competitors, cannot in any manner amount to use other than in bad faith. Further, it is unlikely to be pure coincidence that the disputed domain name is identical in its essential elements to the second Complainant’s domain name which was registered more than a year before the disputed domain name. The identical combination of the letters “CIMB” with the word and hyphen, “-principal”, in both domain names is uncanny, and the Panel draws an inference of bad faith registration. This high similarity between these two domain names as well as between the disputed domain name and the Complainants’ trade mark CIMB, and the manner in which the disputed domain name is used by the Respondent, all lead to a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website at the disputed domain name or of a product or service on the said website.
The Panel further accepts the Complainants’ submission that the creation of initial interest confusion and the consequent diversion of Internet traffic to the Respondent’s website with sponsored links to third-party websites are sufficient to establish bad faith use and registration on the Respondent’s part.
The evidence submitted by the Complainants has not been challenged by the Respondent. In the circumstances, the Panel finds that the Complainants have established that the disputed domain name was registered and has been used in bad faith.
The requirements of paragraph 4(a)(iii) of the Policy have therefore been satisfied. 7. Decision
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 be transferred to the Complainants.
Francine Tan
Sole Panelist
Dated: November 24, 2010
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