The Complainant is Standard Life Employee Services Limited of Edinburgh, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by SILKA Law AB, Sweden.
The Respondent is Shen Zhong Chao of Beijing, China. 2. The Domain Names and Registrar
The disputed domain names and (the “Disputed Domain Names”) are registered with HiChina Zhicheng Technology Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on June 7, 2017. On June 8, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On June 13, 2017, 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 June 13, 2017, the Center transmitted an email in English and Chinese regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on the same day. The Respondent did not comment on the language of the proceeding by the specified due date.
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 in English and Chinese of the Complaint, and the proceedings commenced on June 19, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 9, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 10, 2017.
The Center appointed Peter J. Dernbach as the sole panelist in this matter on July 17, 2017. 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 and Standard Life Plc, an investment company founded in Edinburgh, are parts of the Standard Life group, providing investment services in 45 countries, including China where the Respondent resides. The Complainant manages the worldwide trademark portfolio of Standard Life. The Complainant has produced registration information of several trademarks, inter alia: STANDARD ABERDEEN, United Kingdom Trademark Registration No. 00003216635, registered on May 26, 2017 and applied for on March 4, 2017; ABERDEEN STANDARD, United Kingdom Trademark Registration No. 00003216636, registered on May 26, 2017 and applied for on March 4, 2017.
According to the WhoIs data and the Registrar’s verification response, the Respondent is Shen Zhong Chao. The Disputed Domain Names registered by the Respondent are as follows:
: registered on March 6 2017; valid until March 6, 2018.
: registered on March 6 2017; valid until March 6 2018.
The Disputed Domain Names do not resolve to any active website.
The Registrar confirmed, in its email of June 13, 2017, that the Registration Agreement for each Disputed Domain Name is in Chinese. 5. Parties’ Contentions A. Complainant
The Complainant requests the Disputed Domain Names be transferred to the Complainant based on the following grounds:
(i) The Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant is the owner of numerous STANDARD ABERDEEN and ABERDEEN STANDARD trademarks. The Disputed Domain Names and are confusingly similar and nearly identical to the Complainant’s trademarks since they reproduce the STANDARD ABERDEEN and ABERDEEN STANDARD trademarks in their entirety and merely add a hyphen, which has no meaning and does not cause the Disputed Domain Names to be distinguishable from the Complainant’s trademarks.
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names.
The Complainant has never given authorization or permission to the Respondent to register or to use its trademarks. In the instant case, the pertinent WhoIs information identifies the registrant as “Shen Zhong Chao,” which does not resemble to the Disputed Domain Names in any manner. There is no evidence, including the WhoIs record for the Disputed Domain Names, suggesting that the Respondent is commonly known by the Disputed Domain Names. Furthermore, the Disputed Domain Names are inactive. This cannot constitute a bona fide offering of goods or services or a legitimate, noncommercial or fair use of the Disputed Domain Names.
(iii) The Disputed Domain Names have been registered and are being used in bad faith.
The Disputed Domain Names registration occurred on the same day of the announcement of the merger of Standard Life plc and Aberdeen Asset Management plc, and within two days after the Complainant filing its trademark registrations. In addition, the Disputed Domain Names consist of the distinctive parts of the names of the Complainant and Aberdeen. Therefore, the Respondent registered the Disputed Domain Names fully conscious of the Complainant’s future rights. Passive holding does not preclude a finding of bad faith. Reproducing the Complainant’s STANDARD ABERDEEN and ABERDEEN STANDARD trademarks in a domain name to attract Internet users to an inactive website cannot be regarded as fair use or use in good faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Preliminary Procedural Issues A. Complaint against multiple Disputed Domain Names
Paragraph 3(c) of the Rules provides that “the complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder”.
The Complainant filed the Complaint regarding the two Disputed Domain Names. Hence, the Panel has to review the facts and determine whether filing of the Complaint complies with the Policy and the Rules. Both of the Disputed Domain Names and are registered by the same domain-name holder, Shen Zhong Chao. Therefore, the Panel finds that the Complaint against these two Disputed Domain Names is in compliance with the Policy and the Rules and will consolidate these two Disputed Domain Names in the same proceeding. B. Language of the Proceeding
Paragraph 11(a) of the Rules provides that “[u]nless 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 Rules allow 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 applicance co. ltd.,WIPO Case No. D2008-0293). The language finally decided by the Panel for the proceeding should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case. (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Thrid Edition (“WIPO Overview 3.0”), section 4.5 further states: “panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. Such scenarios include (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant’s mark, (iii) any content on the webpage under the disputed domain name, (iv) prior cases involving the respondent in a particular language, (v) prior correspondence between the parties, (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint […].”
The language of the Registration Agreements for the Disputed Domain Names is in Chinese. Therefore, the language of the administrative proceeding should generally be Chinese according to paragraph 11(a) of the Rules. However, the Complainant requests the language of the proceeding should be English. For the following reasons, the Panel decides that the language of the proceeding shall be English.
(1) The Respondent has entered into English language negotiations with the Aberdeen Asset Management plc in its email of June 9, 2017.
(2) The Respondent was involved in at least one prior proceeding, Compagnie Générale des Etablissements Michelin v. Shen Zhong Chao,WIPO Case No. D2016-0408, and in that case the Respondent replied to the counsel’s cease and desist letter in English which is evidence of Respondent’s knowledge of the English language.
(3) The Panel finds that the Complainant is not in a position to conduct these proceedings in Chinese without additional expense and delay due to the need for translation of the Complaint into Chinese.
(4) The Center’s communication to the Respondent uses both English and Chinese and has given the Respondent an ample opportunity to object to the Complainants’ request. The Respondent did not reply to the Center. 7. Discussion and Findings A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service provider], in compliance with the Rules of Procedure, that (i) [the disputed domain name] is identical or confusingly similar to a trademark or service mark in which the complainant has rights[.]”.
It is well-established that in considering whether a disputed domain name is identical or confusingly similar to a registered trademark, the generic Top-Level Domain (“gTLD”) (for example, “.com” and “.net”) may be disregarded. (GA Modefine SA v. Yonghui Huang,WIPO Case No. D2008-0355; Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil,WIPO Case No. D2000-1409; Florida Department of Management Services v. Anthony Gorss (or AGCS),WIPO Case No. D2009-1194). Former UDRP panels have also stated that a hyphen in a domain name “adds no distinctiveness whatsoever” (Dr. Grandel GmbH v. West End Internet Services,WIPO Case No. D2005-0853).
The Complainant has established that it is the owner of the STANDARD ABERDEEN and the ABERDEEN STANDARD trademarks.
The Disputed Domain Names, and , incorporate the STANDARD ABERDEEN and ABERDEEN STANDARD trademarks in their entirety, with only the addition of hyphens, and the gTLDs “.com”. The addition of hyphens and the gTLDs “.com” cannot distinguish the Disputed Domain Names from the Complainant’s trademarks (STANDARD ABERDEEN, ABERDEEN STANDARD). The only distinctive parts of each Disputed Domain Names are the “standard aberdeen” and “aberdeen standard” elements, which are identical to trademarks in which the Complainant has rights.
The Panel concludes that the Disputed Domain Names are identical or confusingly similar to the Complainant’s trademarks (STANDARD ABERDEEN, ABERDEEN STANDARD). The condition of paragraph 4(a)(i) of the Policy has been fulfilled. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service provider], in compliance with the Rules of Procedure, that […] (ii) [the respondent has] no rights or legitimate interests in respect of the [disputed] domain name[.]”.
Paragraph 4(c) of the Policy sets out the following several circumstances “[which], in particular but without limitation, if found by the Panel, shall demonstrate [the respondent’s] rights or legitimate interests to the [disputed] domain name for the purposes of Paragraph 4(a)(ii) [of the Policy]:
(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Complainant has established that it is the owner of the STANDARD ABERDEEN and the ABERDEEN STANDARD trademarks and confirmed that it has no connection or affiliation with the Respondent. The Complainant also states that no authorization was granted to the Respondent to use the Complainant’s trademarks. In addition, the websites the Disputed Domain Names resolve to have been inactive. The passive holding of a domain name does not constitute a bona fide offering of goods or services.
The Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Names. The burden of production shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the Disputed Domain Names.
The Respondent did not submit any relevant evidence from the Respondent indicating any rights or legitimate interests as demonstrated in paragraph 4(c) of the Policy. The Respondent did not provide evidence to establish the authorization from the Complainant. Therefore, the Respondent has not shown that it has rights or legitimate interests in the Disputed Domain Names.
According to the record in the WhoIs database, there is no evidence showing that the Disputed Domain Names have any connection with the Respondent’s name or that the Respondent is commonly known by the Disputed Domain Names.
Therefore, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been fulfilled. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service providers], in compliance with the Rules of Procedure, that […] (iii) [the respondent’s] domain name has been registered and is being used in bad faith”.
(1) Registered in Bad Faith
Prior the registration of the Disputed Domain Names and , the statement regarding the potential merger of the Standard Life plc and Aberdeen Asset Management plc was announced on the Complainant’s official website. Furthermore, this merger was widely reported in the news media, including by The New York Times, on the same date as the Disputed Domain Names were registered (March 6, 2017). It can reasonably be concluded that there was opportunistic bad faith in the registration of and within days of the announcement of the merger of Standard Life and Aberdeen Asset Management plc.
The Panel also finds that the Respondent has been subject to several domain name disputes (e.g., Compagnie Générale des Etablissements Michelin v. Shen Zhong Chao, supra, Motorola Trademark Holdings, LLC v. shaoxiaogen, xiaogen shao, gaohaolvshishiwusuo, shenzhongchao, zhongchao shen,WIPO Case No. D2012-1780, among others). In addition, when reviewing the Respondent’s prior domain name registrations, the Panel finds that the Respondent has been targeting mergers or joint ventures and securing domain names that would be most likely to be uses by the merged company.
Based on the evidence presented, it appears that the Respondent chose the STANDARD ABERDEEN and ABERDEEN STANDARD trademarks as the only distinctive parts of the Disputed Domain Names, and registered the Disputed Domain Names on March 6, 2017, which is the very same day of the announcement regarding the merger of the Standard Life plc and Aberdeen Asset Management plc. The Panel is satisfied that the Respondent must have been aware of the merger of Standard Life and Aberdeen Asset Management plc when registering the Disputed Domain Names. This is clear evidence that the registration of the Disputed Domain Names were in bad faith.
(2) Used in Bad Faith
In relation to use in bad faith, while the Disputed Domain Names currently resolve to inactive websites, the Panel notes the prevailing opinion of numerous UDRP panels have held that passive holding of a domain name does not prevent a finding of bad faith use. The Panel must still examine all the circumstances of the case to determine whether the Respondent is acting in bad faith (section 3.3 of WIPO Overview 3.0). The Respondent did not provide any evidence whatsoever of any actual or contemplated good faith use by it of the Disputed Domain Names. Meanwhile, according to the Center’s delivery record of the Complaint to the Respondent, the Respondent has provided or failed to correct, false contact details. The Panel also notes the prior domain name disputes to which the Respondent has been a party, and concludes that the current passive holding of the Disputed Domain Names constitute use in bad faith.
Having considered the above, the Panel finds that the Disputed Domain Names have been registered and are being used in bad faith, and thus the Complainant fulfills the condition provided in paragraph 4(a)(iii) of the Policy. 8. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Names and be transferred to the Complainant.
Peter J. Dernbach
Sole Panelist
Date: July 31, 2017
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