The Complainant is ZB, N.A. dba National Bank of Arizona of Salt Lake City, Utah, the United States of America, represented by Callister Nebeker & McCullough, the United States of America.
The Respondent is Cao Gang of Chen Zhou, Hunan, China, self- represented. 2. The Domain Name and Registrar
The disputed domain name is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 23, 2016. On February 24, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 25, 2016, 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.
On February 26, 2016, the Center transmitted an email to the Parties in English and Chinese, regarding the language of the proceeding. On February 26, 2016, the Complainant submitted its request that English be the language of the proceeding. On March 1, 2016, the Respondent submitted its request that Chinese be the language of the 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 and 4, the Center formally notified the Respondent of the Complaint in English and Chinese, and the proceeding commenced on March 9, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 29, 2016. On March 29, 2016, the Respondent requested an extension of time until April 3, 2016 to file the Response. The Center granted an extension of time until April 2, 2016. The Response was filed with the Center on April 2, 2016.
The Center appointed Douglas Clark as the sole panelist in this matter on April 21, 2016. 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 bank incorporated in, Arizona, the United States of America. It has registered the trademarks NB Ι AZ and NATIONAL BANK OF ARIZONA in the United States of America. It is also the proprietor of the domain name .
The Respondent is an individual based in China.
The disputed domain name was registered on February 7, 2016.
The disputed domain name previously resolved to a “blog” containing information on Android systems and does not resolve to any website at the time the Panel issues this decision. 5. Parties’ Contentions A. Complainant
Identical or Confusingly Similar
The Complainant contends that the disputed domain name and the trademark NB Ι AZ are identical or confusingly similar. The Complainant also contends that the disputed domain name is an acronym of the trademark NATIONAL BANK OF ARIZONA and is therefore confusingly similar to this mark.
No rights or legitimate interests
The Respondent has no connection with the Complainant or any of its affiliates and has never sought or obtained any trademark registrations for NBAZ. It, therefore, has no rights or legitimate interests in the disputed domain name.
Registered and used in bad faith
Before acquiring the disputed domain name, it is highly likely the Respondent’s knew of the Complainant’s rights in the mark NBAZ and acquired the disputed domain name to disrupt the business of the Complainant and to prevent the Complainant from reflecting its mark in a corresponding domain name and/or disrupting the Complainant’s business. B. Respondent
Identical of Confusingly Similar
The Respondent submitted the Complainant had no rights to the trademark NBAZ in China and had not registered the domain names and in China. The Respondent had not copied the Respondent’s trademark.
Rights or Legitimate Interests
The Respondent asserted that it was making preparations to use the disputed domain name to provide information on Android systems and had no intention of confusing consumers.
The Respondent asserted further that the mark NB Ι AZ was not so distinctive that the Respondent was not entitled to register and use a domain name incorporating NBAZ in China when the Complainant only did business and had rights in America. The National Basketball Association (NBA) was also well known in America and the Complainant should not have monopoly rights in the letters NBAZ.
Registered and Used in Bad Faith
The Respondent further denied that it had registered and used the disputed domain name in bad faith. It had not offered to sell the name. The Complainant did not have trademark rights in China. It had no sought to disrupt the business of the Complainant. It had not registered it or used it to attract business by creating confusion with the Complainant. 6. Discussion and Findings A. Language of Proceeding
The language of the Registration Agreement is Chinese. Paragraph 11(a) of the Rules provides that:
“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.”
The Complainant requested the language of the proceeding be English on the grounds that the Complainant conducted business in English and it would be unduly burdensome for it to translate the Complaint into English.
The Respondent requested the language of proceeding be Chinese on the basis that it did not understand English well and it would be difficult for it to handle the case in Chinese.
The Center made a preliminary determination to:
1) accept the Complaint as filed in English;
2) accept a Response in either English or Chinese;
3) appoint a Panel familiar with both languages mentioned above, if available.
The final determination of the language of the proceeding lies with this Panel.
The Respondent filed a Response in Chinese. From the Response, it is clear that the Respondent has understood the claim made against it and has been able to defend itself. The Panel will render its decision in English. B. Identical or Confusingly Similar
The disputed domain name is other than the generic Top-Level Domain (“gTLD”) “.xyz” confusingly similar to the Complainant’s trademark NB Ι AZ. The only difference is the removal of the vertical line in between NB and AZ. The Panel does not need to determine if the disputed domain name is confusingly similar to the mark NATIONAL BANK OF ARIZONA.
The Panel notes that the Complainant does not have a registered trademark for NB Ι AZ in China. However, the ownership of a trademark is generally considered to be a threshold standing issue. 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. 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. (See paragraph 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”))
The first part of paragraph 4(a) of the Policy is therefore satisfied. C. Rights or Legitimate Interests / Registered and Used in Bad Faith
The real issue in this case is whether the Respondent has rights or legitimate interests in the disputed domain name and whether it has registered and used the disputed domain name in bad faith.
The Panel has considered all the evidence and determined that the Complainant has not satisfied its burden of proving that the Respondent registered the disputed domain name in bad faith.
The argument that the Complainant relies on to establish the disputed domain name was registered in bad faith is, when analysed, simply the assertion that it has trademark rights in NB Ι AZ.
The Panel is not willing to infer that the registrant of a four letter acronym (in China) must have known of the trademark of a company (in the United States of America) when registering a domain name and, therefore, registered the domain name with an intention of disrupting or trading of the Complainant’s goodwill. There needs to be some evidence of a link between the registration and/or use of the domain name and the trademark holder. There is none at present on the evidence in this case.
There is, therefore, insufficient evidence for the Panel to determine the Respondent knew of the Complainant’s trademark rights when it registered the disputed domain name. The Complainant has therefore not satisfied the burden of proving the disputed domain name was registered in bad faith.
This determination is made without prejudice to the Complainant bringing another UDRP complaint should it obtain evidence of registration in bad faith of the disputed domain name not available at the time of the filing of this Complaint. Given this, and so as to not to cause conflicting decisions, the Panel declines to make findings as to whether the Respondent has rights or legitimate interests in the disputed domain name or has used the disputed domain name in bad faith. This should not be interpreted to mean that the Panel considers the Respondent does not have rights or legitimate interests or that it used the disputed domain in bad faith (or vice versa). The Panel makes its decision solely on the basis that the current evidence does not support a find that the disputed domain name was registered in bad faith and accordingly the Panel has elected to consider only this part of the Policy. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Douglas Clark
Sole Panelist
Date: April 28, 2016
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