Complainant is Intesa Sanpaolo S.p.A. of Torino, Italy, represented by Perani Pozzi Tavella, Italy.
Respondent is ma guanglin of Beijing, China. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Guangzhou Ming Yang Information Technology Co., Ltd (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 6, 2011. On December 6, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 8, 2011, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient in identifying the Registrar and Respondent, Complainant filed an amendment to the Complaint on December 19, 2011.
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” 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 Respondent of the Complaint, and the proceedings commenced on December 20, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 9, 2012. The Response in English was filed with the Center on January 5, 2012. On January 12, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On January 16, 2012, Respondent requested that Chinese be the language of the proceeding. On January 20, 2012, Complainant submitted supplementary filling requesting that English be the language of the proceeding.
On January 13 and 20, 2012, Complainant submitted supplemental filings to the Center. On January 16 and 17, 2012, Respondent submitted supplemental filings in Chinese to the Center.
The Center appointed Yijun Tian as the sole panelist in this matter on February 1, 2012. 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. Supplemental Filings
Complainant has submitted unsolicited Supplemental Filings to the Center on January 13 and 20, 2012 respectively.
Respondent has submitted unsolicited Supplemental Filings to the Center on January 16 and 17, 2012 respectively.
No explicit provision is made under the Policy or the Rules for supplemental filings. Paragraph 15 of the Rules states that the Panel shall decide a complaint on the basis of the statements and documents submitted, in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. (See Associazione Radio Maria v. Scot Weise,WIPO Case No. D2011-2068)
In the case of default by a party, paragraph 14(b) of the Rules states that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, the Rules, the Panel shall draw such inferences therefrom at it considers appropriate. It is therefore at the discretion of the Panel whether it will consider such supplemental filings. (See Associazione Radio Maria v. Scot Weise, supra.)
According to WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.2, a party submitting a supplemental filing “would normally need to show its relevance to the case and why it was unable to provide that information in the complaint or response. Most panels that have allowed unsolicited filings have also tended to require some showing of ‘exceptional circumstances’”.
The Panel has reviewed both Complainant’s and Respondent's Supplemental Filings. In accordance with paragraph 10(b) and (d) of the Rules, the Panel shall ensure that the Parties are treated with equality and shall determine the admissibility, relevance, materiality and weight of the evidence.
The Panel therefore makes its decision on the basis of the factual statements contained in the Complaint and the Response, and the Supplemental Filings submitted by both Complainant and Respondent. 5. Factual Background A. Complainant
Complainant, Intesa Sanpaolo S.p.A, is a company incorporated in Torino, Italy. It is the leading Italian banking group and is highly active at an international level, especially in the Central-Eastern Europe and in the Mediterranean basin with a network of more than 1,250 branches and about 6.8 million customers of subsidiaries operating in retail and commercial banking in 12 countries.
Cib Bank is part of Intesa Sanpaolo’s group. In the corporate banking area Cib Bank plays an important role in the market of high value-added services targeted to large companies. (Annex C to the Complaint). Complainant is the registered owner of several trademarks consisting or including the word “CIB”, including Community trademark (CTM) registration CIB (filed on November 13, 2007), CIB BANK & COLOURED DEVICE (filed on February 12, 2008) and CIB BANK (filed on November 13, 2007) (collectively “CIB Marks”) (see Annex D to the Complaint). The registered CTM CIB (filed in November 2007) was filed before the registration of the Domain Name (in December 2008). B. Respondent
Respondent, ma guanglin, Beijing, China, registered the Domain Name on December 10, 2008, which is after Complainant operated its business under CIB Mark since 2007. 6. Parties’ Contentions A. Complainant
(a) The Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
Complainant is the leading Italian banking group and also one of the protagonists in the European financial arena. Cib Bank is part of Intesa Sanpaolo’s group. In the corporate banking area Cib Bank plays an important role in the market of high value-added services targeted to large companies. Complainant is the owner of several trademark registrations for CIB.
On December 10, 2008, Respondent has registered the Domain Name, which is confusingly similar to the name of CIB Bank. The Domain Name exactly reproduces the name of Cib Bank and the relative trademarks cited above.
In front of the Domain Name , the Internet users are erroneously lead to consider it as the domain name of Cib Bank, through which Complainant renders its banking and financial services on line.
A trademark’s owner can claim exclusive rights in the trademark since the date when application is filed. All filing dates of Complainant’s CIB Marks precede the date of registration of the Domain Name .
(b) Respondent has no rights or legitimate interests in respect of the Domain Name;
Respondent has no rights in the Domain Name since it does not correspond to a trademark registered in the name of ma guangli.
The Domain Name does not correspond to the business name of Respondent and, according to Complainant’s knowledge, ma guanglin is not commonly known as “Cib”.
The Domain Name is not used for any bona fide offerings. Several offerings can be detected, but not in good faith.
The Domain Name is connected to a website sponsoring several banking and financial services, even coming from Complainant’s direct competitors (see Annex E to the Complaint).
(c) The Domain Name was registered and is being used in bad faith.
By using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website.
The Domain Name is connected to the website “www.”. The website contains several links sponsoring bank and financial services, also offered by Complainant’s direct competitors. The content of the website is highly confusing, as Complainant operates in the field of banking and financing. (Annex E to the Complaint).
Several UDRP decisions stated that the registration and use of a domain name to re-direct Internet users to a website of competing organizations constitute bad faith registration and use under the Policy.
Respondent’s commercial gain is evident, since it is obvious that Respondent’s sponsoring activity is being remunerated.
Even though Complainant excluded any “attracting” purposes in the present case, anyway Complainant could find no other possible legitimate use of the Domain Name .
The sole further aim of the registrant of the Domain Name might be to resell it to the Complainant, which represents, in any case, an evidence of the registration and use in bad faith, according to paragraph 4(b)(i) of the Policy. (see Annex E to the Complaint)
The new website showing Consulting in Beijing (in Annex B to the Response) is a new web page, created only after Respondent received the Complaint. B. Respondent
(a) The Domain Name is not confusingly similar to which is belonged to Complaintant;
Commercial Investment Brokers has . CB Resources Corporation has . Rock IT Consulting has . Caroline Prado has (see Annex A to the Response). All these domain names make no confusion to Internet users.
Domain names are name and address of users in the Internet, which can identify and sign domain registers. Domain names themselves do not constitute intellectual property.
The public perception should be the standard to distingue the confusingly similarity of two or more legally registered domain names.
(b) The Domain Name is not against the priority right of CIB Marks;
DotMobi domain names have been available for registration by the public since September 26, 2006.
The Domain Name was registered on December 10, 2008. The registration date is earlier than the granted date of Complainant’s CIB Marks.
Therefore, the Domain Name is not against the priority right of Complainant’s CIB Marks.
(c) Respondent has legitimate interests in the Domain Name;
In mandarin, “guanlizixun” means “consulting”. is pointing to a mobile website designed to supply more convenient service for Respondent’s clients in handheld devices (Annex B to the Response).
The full name of “Cib” is “Consulting in Beijing”. “.Mobi” is a top-level domain (TLD) in domain name system of the Internet. Its name is derived from the adjective mobile, indicating its use by mobile devices for accessing Internet resources via the mobile web.
Respondent uses the Domain Name to supply more convenient service for clients, and have legitimate purposes to the Domain Name.
(d) The Domain Name has been registered and is being used in good faith.
Respondent registered the Domain Name and uses it in purpose to supply more simple and convenient service to clients.
This confirmed by the clients who use handset devices to keep an increasingly close touch with Respondent in mobile Internet.
The registration and use of the Domain Name is in bad faith. 7. Discussion and Findings 7.1 Language of the Proceeding
The language of the Registration Agreement for the Domain Name is Chinese. Pursuant to the 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 on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceeding should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following reasons:
(a) Complainant is an Italian company, while Respondent seems to be Chinese. The content of the website at the Domain Name is in Chinese language.
(b) The Complaint was written in English, which has the peculiarity of being an international language, comprehensible to all parties.
(c) English is not a native language for either party. English seems to be the fair language in the present proceedings.
(d) Respondent filed the Response in English. Respondent’s behavior is a clear demonstration of its comprehension of English language.
(e) On January 16, 2012, the Center informed the Parties that since it did not receive any comments regarding the language of the proceedings, it proceeds on the basis that it has no objections that English be the language of proceedings. In fact, both the Complaint and the Response were filed in English.
(f) Respondent asked Chinese be the language of the proceeding on January 16, 2012. This request should be disregarded, since it was filed after the deadline fixed by the Center (January 15, 2012) to comment on the language of the proceedings.
Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding before the timeline the Center provided – January 15, 2012. However, Respondent responded on January 16, 2012, and requested that Chinese be the language of the proceeding for the following reasons:
(a) It is difficult for Respondent to write the Response in English.
(b) Complainant submitted Supplementary Filings, and it is really difficult for Respondent to respond in English.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593). The language finally decided by the panel for the proceeding should not be prejudicial to either one of the parties in its abilities to articulate the arguments for the case. (Groupe CIB v. xmxzl,WIPO Case No. DCC2006-0004).
WIPO Overview 2.0 further states: “in certain situations, where Respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and Complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement”. (WIPO Overview 2.0, paragraph 4.3; see also L’Oreal S.A. v. MUNHYUNJA,WIPO Case No. D2003-0585).
The Panel has taken into consideration the facts that Complainant is a company incorporated in Italy, and Complainant will be spared the burden of dealing with Chinese as the language of the proceeding. The Panel has also taken into consideration the facts that the Domain Name includes English script such as “cib” or “mobi” (Expoconsult B.V. trading as CMP Information v. Roc Guan, WIPO Case No. D2008-1600; Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047).
On the record, Respondent appears to be a Chinese individual and is thus presumably not a native English speaker, but the Panel finds that persuasive evidence in the present proceeding to suggest that Respondent may have sufficient knowledge of English. In particular, the Panel notes that, based on the evidence provided by Complainant, (a) Respondent has written the Response in fluent English; (b) the Domain Name is registered in Latin characters and particularly in English language, rather than Chinese script; (c) The fluent English has been displayed on Respondent’s website (e.g. displaying “Consulting in Beijing”, “Recent posts”, “Theme designed by Forum Nokia” and “Switch to our desktop site” et al. (Annex B to the Response); (d) the website appears to have been directed to both Chinese speakers and English speakers (Annex B to the Response); (e) the Center has notified Respondent of the Language of Proceedings in both Chinese and English, and Respondent has indicated no objection to Complainant’s request that English be the language of the proceeding within three (3) calendar days (by January 15, 2012); (f) the Center has appointed the Panel in this case (who is familiar with both English and Chinese) which shall have the sole discretion to determine the language of the proceedings; and (g) the Center has accepted the Response and email communications from Respondent in both English and Chinese.
Considering these circumstances, the Panel finds 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 its ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English. 7.2. Discussion and Findings
Paragraph 4(a) of the Policy requires that Complainant prove each of the following three elements to obtain an order that the Domain Name should be transferred:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
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
The Panel finds that Complainant has rights in the CIB Marks acquired through registration. The CIB Marks have been filed as CTM in Europe since 2007 (see Annex D to the Complaint), and Complainant it has a widespread reputation in banking industry in Europe.
The Domain Name comprises the CIB Mark in its entirety. The Domain Name only differs from the CIB mark by the addition of the gTLD “.mobi”. The Panel finds that these do not eliminate the confusing similarity between Complainant’s registered CIB Marks and the Domain Name. (See also ABB Asea Brown Boveri Ltd. v. A.B.B Transmission Engineering Co., Ltd.,WIPO Case No. D2007-1466; Kabushiki Kaisha Toshiba dba Toshiba Corporation v. WUFACAI,WIPO Case No. D2006-0768).
Previous UDRP panels have consistently held that a domain name is identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).
Generally a respondent “may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it”. (The Argento Wine Company Limited v. Argento Beijing Trading Company,WIPO Case No. D2009-0610; General Electric Company v. CPIC NET and Hussain Syed,WIPO Case No. D2001-0087; and PCCW-HKT DataCom Services Limited v. Yingke, HKIAC Claim No. 0500065).
Mere addition of the gTLD “.mobi” to Complainant’s mark fails to distinguish. By contrast, it may increase the likelihood of confusion. Consumers who visit the website at the Domain Name are likely to be confused and may falsely believe that is operated or authorized by Complainant for providing service through mobile network. Thus, the Panel finds that the addition is not sufficient to negate the confusing similarity between the Domain Name and the CIB Mark.
Moreover, Complainant only registered CTM on CIB, and has not registered CIB trademark in China. However, this does not affect the establishment of confusing similarity under paragraph 4(a)(i) of the Policy. Paragraph 1.1 of the WIPO Overview 2.0 explicitly states:
“Consensus view: If the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights. The location of the trademark, its date of registration (or first use)…, and the goods and/or services for which it is registered, are all irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP. ”
The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the Domain Name:
(i) use of, or preparations to use, the Domain Name in connection with a bona fide offering of goods or services;
(ii) the fact that Respondent has been commonly known by the Domain Name; or
(iii) legitimate noncommercial or fair use of the Domain Name.
The overall burden of proof on this element rests 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 in a domain name, the burden of production shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai,WIPO Case No. D2008-0441; see also WIPO Overview 2.0, paragraph 2.1 and cases cited therein).
Complainant has rights in the CIB Mark in the EU since 2007 (Annex D to the Complaint) which precede Respondent’s registrations of the Domain Name (December 2008). Moreover, according to Complainant, Complainant has never authorized Respondent to use CIB trademark or to register CIB related domain name. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the Domain Name and thereby shifted the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; and Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the Domain Name:
(a) There has been no evidence adduced to show that Respondent is using the Domain Name in connection with a bona fide offering of goods or services. Respondent has not provided evidence of legitimate use of the Domain Name or reasons to justify the choice of the word “Cib” in its business operations. Respondent claimed it is using the Domain Name as a platform for providing consulting service in Beijing via mobile network (Annex B to the Response). However, its former website under the Domain Name displayed a completing different webpage content, which offered the Domain Name for sale and even directly connected Complainant’s competitors (see Annex E to the Complaint). There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the CIB Marks or to apply for or use any domain name incorporating the CIB Marks;
(b) There has been no evidence adduced to show that Respondent has been commonly known by the Domain Name. As mentioned above, Respondent’s webpage did not contain “Consulting in Beijing” content until recently. (See Annex E to the Complaint; the webpage copy provided by the Centre on December 20, 2012). There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the Domain Name. The Domain Name was registered on December 10, 2008, which is after Complainant registered CIB related CTMs. The Domain Name is identical or confusingly similar to Complainant’s CIB Marks.
(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the Domain Name.
The Panel finds that Respondent has failed to produce any evidence to establish rights or legitimate interests in the Domain Name. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the Domain Name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registrations to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the Domain Names; or
(ii) 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 Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites or location or of a product.
The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and used the Domain Name in bad faith.
a) Registered in Bad Faith
The Panel finds that Complainant has a widespread reputation in European financial arena. Based on the information provided by Complainant, Complainant is the leading Italian banking group and is highly active at an international level, especially in the Central-Eastern Europe and in the Mediterranean basin with a network of more than 1,250 branches and about 6.8 million customers of subsidiaries operating in retail and commercial banking in 12 countries. Complainant has filed its CIB Marks since 2007.
As discussed above, if Complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights. The factors, such as the location of the trademark, the date of trademark registration (or first use), and the goods and/or services for which the trademark is registered, are “all irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP” (WIPO Overview 2.0. paragraph 1.1, as above). Nevertheless, WIPO Overview 2.0 further states: “However, such factors may bear on a panel's determination whether the respondent has registered and used the domain name in bad faith under the third element of the UDRP”.
Since Complainant has not registered CIB Marks in China and Complainant has not provided sufficient evidence to show that its CIB mark is well known in Chinese banking and financial market, the Panel finds it debatable whether Respondent would have had actual notice of Complainant’s trademark rights at the time of the registration of the Domain Name (in 2008). Arguably, Respondent may have had constructive notice of Complainant’s application to register CIB. However, for reasons discussed further below in conclusion with bad faith use, the Panel finds that the case does not turn on this point.
Thus, in a prima facie case, it does not seem that the Domain Name was registered in bad faith with the intent to create an impression of an association with Complainant’s CIB Mark.
b) Used in Bad Faith
Complainant has adduced evidence to prove that by using confusingly similar Domain Name, Respondent has “intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites”. Respondent has used the Domain Name as a landing page providing a “purchasing this domain name” link for potential buyers interested in purchasing the Domain Name to make an offer, and also provide the links of Complainant’s competitors (Annex E to the Complaint).
To establish an “intention for commercial gain”, evidence is required to indicate that it is “more likely than not” that intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Wal-Mart Stores, Inc. and Wal-Mart China Co. Ltd v. Liangchenyong, ADNDRC Case No. HKcc-0800008).
Given the widespread reputation of the CIB Marks, the Panel finds that the public, particularly the public in EU, is likely to be confused into thinking that the Domain Name has a connection with Complainant, contrary to the fact. Respondent has through the use of a confusingly similar Domain Name created a likelihood of confusion with the Complainant’s CIB Marks.
It is also noteworthy that Respondent has changed its webpage frequently. As mentioned above, the webpage resolved by the Domain Name was a webpage in Chinese language which contained Complainant’s competitors’ links as well as a link for selling the Domain Name (Annex E to the Complainant). Later, the webpage was changed and became a webpage written in both English and Chinese, and contained English words “Consulting in Beijing” (Annex B to the Respondent). Respondent claimed that the full name of “CIB” is “Consulting in Beijing”, and it registered this Domain Name in order to provide clients with consulting services through mobile network.
Recently, the webpage was changed back to a webpage in Chinese language again. WIPO Overview 2.0 provides: “A panel may undertake limited factual research into matters of public record if it deems this necessary to reach the right decision. This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent and the use of the domain name….” (WIPO Overview 2.0. paragraph 4.5., as above). This Panel visited on March 3, 2012, and found the website has been renamed as “caiwuren wang” (finance people network) with a URL displayed on the webpage. 1 The words “Consulting in Beijing” have been completely removed from the website. It is clear that Respondent is not using the Domain Name to provide consulting service via mobile network, which Respondent claimed in the Response. (See also Annex B to the Response).
Noting also that apparently no clarification as to Respondent’s relationship to Complainant is made on the homepage of the Domain Name, potential Internet users are led to believe that the Domain Name is either of Complainant or of the official authorized partners of Complainant, which they are not. The Panel therefore concludes that the Domain Name was used by Respondent in bad faith.
c) Absence of Bad Faith Intent at the Time of Registration v. Used in Bad Faith
In order to establish the third condition of paragraph 4(a) of the Policy, a fundamental question that can arise for determination where there is ambiguity as to bad faith registration can be: “does the absence of bad faith intent by the respondent at the time of acquisition of the disputed domain name inevitably preclude the complainant from succeeding under the Policy, even though the respondent has subsequently used the domain name in bad faith?”
Like the views of some other panelists, in this Panel's view, the answer to that question is provided by the express terms of the Policy itself, and that answer is “no”. This Panel particularly agreed with the insightful discussion and conclusion of the panel in Ville de Paris v. Jeff Walter,WIPO Case No. D2009-1278:
“the Policy expressly recognizes that the Paragraph 4(a)(iii) requirement of bad faith can, in certain circumstances, be satisfied where the respondent has used the domain name in bad faith, even though the respondent may not have been acting in bad faith at the time of acquisition of the domain name”.
(See also City Views Limited v. Moniker Privacy Services / Xander, Jeduyu, ALGEBRALIVE, WIPO Case No. D2009-0643; Phillip Securities Pte Ltd v. Yue Hoong Leong, ADNDRC Decision DE-0900226; and Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions, WIPO Case No. D2009-0786).
In summary, Respondent, by choosing to register and use the Domain Name, which are confusingly similar to Complainant’s trademarks, intended to ride on the goodwill of Complainant’s trademarks in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of sufficient evidence to the contrary and rebuttal from Respondent, the choice of the Domain Name and the conduct of Respondent as far as the website to which the Domain Name resolves is indicative of registration and use of the Domain Name in bad faith.
The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy. 8. 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 transferred to Complainant.
Yijun Tian
Sole Panelist
Dated: March 5, 2012
1 last visited on March 3, 2012.
Full & Egal Universal Law Academy