The Complainant is Coutts & Co. of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Agus Santoro - Ptmanis DRI-110160 of Gajamada, Jakarta, Indonesia. 2. The Domain Name and Registrar
The disputed domain name is registered with CV. Rumahweb Indonesia (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 5, 2014. On September 5, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 8, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details and indicating that the language of the registration agreement is Indonesian.
On September 10, 2014, the Center sent an email, both in English and in Indonesian, informing both parties that the language of registration agreement was in Indonesian. On the same day, September 10, 2014, the Complainant replied by e-mail, making reference to its Complaint under paragraph “IV. Language of Proceedings”, in which it gave arguments why it requested English to be the language of proceedings.
The Respondent did not comment on the language of proceeding.
The Center verified that 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 the Respondent of the Complaint, both in English and in Indonesian, and the proceedings commenced on September 19, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 9, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 13, 2014.
The Center appointed Hong Xue as the sole panelist in this matter on October 30, 2014. 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 Complainant is a private bank and the mark COUTTS has been used in connection with the Complainant’s financial services for centuries and has been registered in the United Kingdom and many other countries and regions.
The Respondent registered the disputed domain name on May 11, 2014. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to the trademark COUTTS, the registration and use of which by the Complainant long precedes the registration of the disputed domain name.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant contends that the disputed domain name was registered and is being used in bad faith.
The Complainant requests that the disputed domain name be transferred to it. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Language of Proceeding
The language of the registration agreement for the disputed domain name , as confirmed by the Registrar, is Indonesian, Bahasa. The Complainant has requested that the language of the proceeding be English and has presented the reasons. The Respondent did not make any submissions in relation to the language of proceeding even though the Center’s communications to this effect (as was the Notification of Complaint) were both in English and Indonesian.
According to paragraph 11(a) of the Rules, 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.
Among other circumstances, the respondent’s ability to clearly understand the language of the complaint, and the complainant’s being disadvantaged by being forced to translate, may both support a panel’s determination that the language of the proceeding remains the language of the complaint, even if it is different from the language of the registration agreement (L’Oreal S.A. v. MUNHYUNJA,WIPO Case No. D2003-0585).
According to the Rules, paragraph 10(b), the Panel shall ensure that the parties are treated with equality and that each party is given a fair opportunity to present its case. Therefore a panel shall objectively assess the parties’ language ability in the proceeding.
In the present case, the Panel notes that the disputed domain name, , is in English and “some of the user interface” for registration of the disputed domain name, as confirmed by the Registrar, was also in English. The website at the disputed domain name was also in English (see Annex 10 of the Complaint. In addition, the Respondent did not contend the Complainant’s request that the language of the proceeding be English. The Panel, therefore, finds that the Respondent has sufficient capacity to understand and use English. On the other hand, the Complainant has submitted the Complaint in English and would bear considerable costs to translate all the submissions into and take part in the proceeding in the language of the registration agreement.
Having regard to all the circumstances, this Panel determines under the Rules, paragraph 11(a) that English shall be the language of the proceeding. B. Identical or Confusingly Similar
Pursuant to the Policy, paragraph 4(a)(i), a complainant must prove that a disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. In line with such requirement, a complainant must prove its trademark right and the confusing similarity between the disputed domain name and its trademark.
The Panel finds that before the registration of the disputed domain name the trademark COUTTS had long been registered and used by the Complainant’s financial services in the United Kingdom and many other countries and regions.
The disputed domain name is . Apart from the generic Top-Level Domain suffix “.com”, the disputed domain name consists of “coutts-online”, which can easily be read as “coutts”, “-” and “online”.
Given that the disputed domain name contains the Complainant’s trademark COUTTS in its entirety, the addition of the generic term “online” and the punctuation mark “-” does not make the disputed domain name, as a whole, distinctive from the Complainant’s trademark COUTTS. In addition, it has been established by numerous decisions made under the Policy that adding generic words that are related to a complainant’s business is likely to lead a UDRP panel to find confusing similarity between the disputed domain name and the complainant’s trademark. Since the Complainant, like many other banks, offers the financial services on the Internet, the suffix “online” attached to the Complainant’s mark “COUTTS” is more likely to be confusing with the Complainant’s mark and the related financial services.
The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark COUTTS. Accordingly, the Complainant has proven the first element required by paragraph 4(a) of the Policy. C. Rights or Legitimate Interests
The Complainant asserts, and provides evidence to demonstrate, that the Respondent has no rights or legitimate interests in the disputed domain name and, as stated above, the Respondent did not provide any information to the Panel asserting any rights or legitimate interests it may have in the disputed domain name .
It is apparent from the Complaint that there is no connection between the Respondent and the Complainant or its business. Paragraph 4(c) of the Policy lists a number of circumstances which can be taken to demonstrate respondent’s rights or legitimate interests in a domain name. However, there is no evidence before the Panel that any of the situations described in paragraph 4(c) of the Policy apply here. To the contrary, the lack of any Response leads the Panel to draw a negative inference.
Therefore, and also in light of the Panel’s findings below, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name . Accordingly, the Complainant has proven the second element required by paragraph 4(a) of the Policy. D. Registered and Used in Bad Faith
The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. The Respondent did not respond to these contentions.
According to the statement and evidence provided by the Complainant, the Respondent’s website at the disputed domain name had used the Complainant’s mark COUTTS, imitated Complainant’s billing website and attempted to fraudulently acquire personal information from Complainant’s clients. The Respondent did not contend the Complainant’s above-mentioned submissions.
Although at the time the Panel viewed the disputed domain name , it resolved only to an error page, the Respondent, as the registrant, is capable of restoring any content displayed at the disputed domain name any time. Given that banking and financial services are the high-security industry that is handling sensitive personal information, it is inconceivable for the Respondent to put the disputed domain name into any legitimate use. The Panel, therefore, finds that the current Respondent’s passive holding of the disputed domain name that is confusingly similar to the Complainant’s mark COUTTS and the Respondent’s previous fraudulent use of the disputed domain name at a phishing website pose a considerable threat to the legitimate interests of the Complainant are evidence of bad faith registration and use.
The Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith under the Policy, paragraph 4(b). Therefore, the Complainant has successfully proven the third element required by paragraph 4(a) of the Policy. 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 disputed domain name be transferred to the Complainant.
Dr. Hong Xue
Sole Panelist
Date: November 13, 2014
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