The Complainant is Banca Sella Holding S.p.A.of Biella, Italy, represented by Jacobacci & Associati, Italy.
The Respondent is Park HyungJin of Gyeongsannam-do, Republic of Korea, represented by DongsuhYangjae Law Offices, Republic of Korea. 2. The Domain Names and Registrar
The disputed domain name is registered with Gabia, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on March 5, 2018. On March 5, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 7, 2018, 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 March 12, 2018, the Center sent an email in English and Korean to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on the same day. The Respondent requested that Korean be the language of the proceeding on March 15, 2018.
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 Korean of the Complaint, and the proceedings commenced on March 16, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 5, 2018. The Response was filed with the Center on April 4, 2018.
The Center appointed Andrew J. Park as the sole panelist in this matter on April 17, 2018. 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, Banca Sella Holding S.p.A. is an Italian holding company for the Banca Sella Group, established in Biella, Piedmont in 1886. The Complainant, as one of Italy’s leading banks, has almost 300 branches and is widely recognized for excelling in activities such as private banking, payment systems, e-commerce and digital solutions. In 1997, Banca Sella was one of the first Italian banks that launched home banking services enabling customers to perform bank transactions online.
The Complainant has registered several trademarks that include the word SELLA and are prior to the registration date of the disputed domain name , including International Registration No. 716208 for SELLA (word), registered on June 16, 1999, claiming goods and services in International Classes 9, 35, 36, 38, and 42 in several countries worldwide.
The Respondent responded on April 4, 2018.
The disputed domain name was registered by the Respondent on April 5, 2001. The disputed domain name resolves to a webpage displaying pay-per-click links. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name should be transferred to the Complainant because:
1) the disputed domain name is identical and confusingly similar to the Complainant’s trademark in which the Complainant has rights. The Complainant’s trademark for SELLA was registered prior to the Respondent’s registration of the disputed domain name; this fact constitutes prima facie evidence of the validity of the Complainant’s SELLA mark. The disputed domain name is identical or confusingly similar to the SELLA trademark.
2) the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has no evidence of the use of the disputed domain name, nor 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. Furthermore, the Respondent has never been commonly known in the normal course of business by the SELLA trademark, trade name, or by the disputed domain name, and the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent of commercial gain.
3) the disputed domain name was registered and is being used in bad faith. The Complainant argues that the Respondent registered the disputed domain name in bad faith. In the banking and finance fields, the name SELLA immediately evokes the Complainant’s trademark and its activity in private banking, payment systems, e-commerce and digital solutions, as well as private and government customer management. There is no way that the Respondent was not aware of the association of “sella” with the Complainant and thus the registration of the disputed domain name may only have occurred in bad faith, and it may be presumed that the Respondent knew of the renown of the Complainant’s trademark. The Complainant also insists that the Respondent is using the disputed domain name in bad faith. The disputed domain name resolves to a parking page which offers several Internet services, and even offers a link for Internet customers who are interested in the Complainant and in opening an online bank account. Even passively holding the disputed domain name containing the Complainant’s trade name and inactive websites demonstrate the Respondent’s use of the disputed domain name in bad faith. Further, the Respondent is seeking to sell the disputed domain name. B. Respondent
The Respondent argues that the Complainant’s statements and claims are unfounded. It first argues that pursuant to paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement. The registration agreement for the disputed domain name is in Korean. Therefore the language of the administrative proceeding should be Korean.
Second, the Respondent argues that the disputed domain name is not identical nor confusingly similar to the Complainant’s trademark because:
i) The evidence submitted by the Complainant is written in Italian and the Respondent is not able to understand the meaning of those documents and does not know whether those documents are genuine. Therefore, those documents submitted by the Complainant should not be used as evidence unless the Complainant resubmits the proof of its trademark in English or Korean.
ii) The mark used by the Complainant in Italy is “banka sella” and this mark is not the same as “sella”. Consumers who hear the word “chase” or “america” do not associate those words with Chase Bank or Bank of America. Since the bank is a special industry of a public nature, the name of the trade name is less important than names of businesses in other industries, and the names of banks are often combined with the name of a region, thus the name of the bank should be understood as a whole, combined with the name of the area.
Third, the Respondent argues that it has rights or legitimate interests in the disputed domain name because:
i) The Respondent considers the disputed domain name to be a common noun with the meaning of a chair or a saddle, and registered it for use in connection with online shopping malls. The Respondent also believes that the disputed domain name is the combination of the words “sell” and “a”, meaning “selling a” and is thus perfect for the name of an online shopping mall.
ii) The Respondent was forced to stop the online shopping mall immediately after a company that was supposed to help the mall had abruptly ceased. Thereafter, the Respondent has been seeking business opportunities using the disputed domain name.
Fourth, the Respondent did not register nor use the disputed domain name in bad faith and the Complainant failed to prove the bad faith of the Respondent.
i) There is no evidence that the Respondent knew of the existence of the Complainant’s trademark when the Respondent registered the disputed domain name because the Complainant has used the name BANK SELLA only in Italy and has never used it internationally. In particular, the Complainant has never used nor registered the disputed domain name as a trademark in the Republic of Korea. Rather, people who are not related to the Complainant have registered the SELLA trademark with the Korean Intellectual Property Office.
ii) The Complainant asserts that the SELLA trademark is registered as an international trademark under the Madrid Treaty, but the Complainant has never actively engaged in business on a global scale using the trademark and has never provided services in the Republic of Korea. It is almost impossible for ordinary people to know the existence of registered trademarks in other countries or of the existence of trademarks registered under the Madrid Treaty.
iii) The Respondent did not use the disputed domain name to sell it to the Complainant. The Respondent is merely seeking to sell the disputed domain name to any party. This does not mean that it will be sold only to the Complainant or to the Complainant’s competitor.
iv) The Complainant does not own the domain name nor does it have a country code top-level domain name anywhere in Europe. The Complainant’s claim to the name SELLA cannot even be asserted within the European Union and the basis for the Complainant’s claim to the trademark is very weak. 6. Discussion and Findings A. Language of Proceedings
The registration agreement for the disputed domain name is in Korean. Pursuant to paragraph 11 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, i.e., Korean. Here, the Center preliminarily accepted the Complaint as filed in English, and has indicated that it would accept a response in either English or Korean, subject to a determination by the Panel pursuant to paragraph 11 of the Rules.
Having considered the circumstances of the case, the Panel decides that English be adopted as the language of the proceeding under paragraph 10 of the Rules. In coming to this decision, the Panel has taken the following into account:
1) The Complaint has been submitted in English and it would cause undue delay and expense if the Complainant were required to translate the Complaint and other documents into Korean;
2) The disputed domain name resolves to a website which is in English;
3) The website to which the disputed domain name is redirected contains English, which shows that the Respondent understands English;
4) The Complainant and the Respondent use different languages, and neither of them understands the language of the other party. The Complainant is Italian and the Respondent is Korean. Therefore English would be the fair language for both Parties.
In light of these circumstances, the Panel concludes that it will (1) accept the Complaint in English; (2) accept the Response in Korean; and (3) issue a decision in English. B. Identical or Confusingly Similar
This element consists of two parts: first, whether the Complainant has rights in a relevant trademark and, second, whether the disputed domain name is identical or confusingly similar to that trademark.
The Panel finds that the Complainant has established registered rights in the mark SELLA and that the disputed domain name is identical to the Complainant’s trademark. The disputed domain name incorporates the Complainant’s trademark in its entirety, and the addition of a generic top-level domain extension such as “.com” in a domain name may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark (Proactiva Medio Ambiente, S.A. v. Proactiva,WIPO Case No. D2012-0812).
The Respondent specifically argues that the disputed domain name is not identical nor confusingly similar to the Complainant’s trademark because (1) it does not understand the evidence submitted by the Complainant since it is written in Italian and (2) it does not know if the evidence is genuine. Thus, the Panel should not use said evidence in rendering a decision in this case.
The Panel recognizes that the Respondent may not understand the meaning of certain evidentiary materials that are written in Italian.
The Respondent also argues that the mark used by the Complainant in Italy is “banka sella” and this mark is not the same as “sella”. In support of this argument, the Respondent cited to two examples. The first example is the name “Chase” and “Chase Bank.” The dominant and distinctive element of this bank name is the word “chase”. Similarly, the dominant and distinctive element of the name “banka sella” is “sella”. Thus, to the extent that the disputed domain name consists entirely of the Complainant’s “sella” name, it is clear that the disputed domain name is at least confusingly similar to the Complainant’s senior-registered SELLA trademark.
As for the Respondent’s second example – namely, that it is common for banks to adopt names that include the name of a region – the Panel takes exception to this argument as a matter of fact, but even assuming arguendo that it is correct, this line of argument is not applicable to this case since the Complainant’s trademark does not include the name of a region. Even if it did, the fact remains that the disputed domain name is identical to the Complainant’s mark.
For these reasons, pursuant to the Policy, paragraph 4(a)(i), the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s trademark. C. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the Respondent carries the burden of demonstrating its rights or legitimate interests in the disputed domain name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.
Here, the Panel finds that the Complainant has made out a prima facie case.
The Complainant has asserted that there is nothing in the record to suggest that the Respondent has made a legitimate noncommercial or fair use of the disputed domain name or has been commonly known by the disputed domain name. Also, there is no evidence that the Respondent has an intention to use the disputed domain name in connection with a bona fide offering of goods or services.
The Respondent argues that it has rights or legitimate interests in the disputed domain name because it considers the disputed domain name to be a common noun with the meaning of a chair or a saddle. The Panel is not aware of such meaning of “sella” in English or Korean. Upon checking the meaning of said word, the Panel discovered that the word “sella” does indeed have the meaning stated by the Respondent – in the Italian language.
Notwithstanding the meaning of the word “sella”, the Respondent has failed to make a connection between the meaning and how it has some right or legitimate interest in the disputed domain name. Merely claiming that it has such right/interest because it is a common noun is not sufficient.
The Respondent also argues that it has rights or legitimate interests in the disputed domain name because the disputed domain name is the combination of the word “sell” and “a”, meaning “selling a” and is thus appropriate for the name of an online shopping mall – the intended purpose of the disputed domain name. The Respondent goes on to claim that it was forced to abandon the online shopping mall business because its business partner was unable to participate, and that it has been searching for other business opportunities using the disputed domain name. It is noted that the Respondent did submit a screen shot of a web page from a web archiving service showing the use of the disputed domain name in connection with an online shopping mall.
On balance, the Panel finds that the arguments raised by the Respondent are not credible. Other than the above-mentioned screen shot evidence – the veracity of which is not absolute, and even if genuine, the purpose of which is suspect – it must be noted that the Respondent did not provide any other evidence to support its claims of bona fide use of the disputed domain name. For example, the Respondent claimed that it had used the disputed domain name between January 2002 to July 2002 as an online shopping mall. In which case, it would have been reasonable for the Respondent to submit some evidence of sales. No such evidence was produced. Further, the Respondent claimed that since approximately July 2002, it had been searching for other business opportunities using the disputed domain name. The Panel does not find it credible that the Respondent would have, for approximately 16 years, been searching for other business opportunities, and yet, despite such significant period of time searching, failed to produce any evidence to support such claim.
Accordingly, the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following is sufficient to support a finding of bad faith:
(i) circumstances indicating that the respondent has registered or 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 the 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 its website or other online location, by creating a likelihood of confusion with the complainant’s mark 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 or location.
The Complainant argues that the Respondent registered and is using the disputed domain name in bad faith in violation of the Policy, paragraph 4(a)(iii). Specifically, the Complainant claims that the Respondent violated the Policy, paragraph 4(b)(iv). The Respondent created the disputed domain name – one that is identical to the Complainant’s trademark – with the knowledge of the Complainant’s famous trademark, SELLA, and its business in the banking and finance fields. The Complainant insists that even passively holding the disputed domain name containing the Complainant’s trade name and the inactive website demonstrate the Respondent’s use of the disputed domain name in bad faith. The Respondent has purposefully registered the Complainant’s famous trademark in an effort to divert Internet users from the Complainant’s actual website and to cause confusion among Internet users as to the source of the disputed domain name. The website to which the disputed domain name resolves is a parking page that offers several Internet services, and even offers a link for Internet customers who are interested in the Complainant and in opening an online bank account.
The Respondent raised a number of arguments to claim that it did not register nor use the disputed domain name in bad faith. First, the Respondent claims that there is no evidence that it knew of the existence of the Complainant’s trademark when the Respondent registered the disputed domain name because the Complainant has used the name “Bank Sella” only in Italy and has never used it internationally. In particular, the Complainant has never used nor registered the disputed domain name as a trademark in the Republic of Korea.
The fact that the Complainant does not conduct business in the Republic of Korea and does not have any trademark registrations in the Republic of Korea has some probative value. On balance, however, the Respondent’s argument that such factors do not show that the Respondent knew of the Complainant and its trademark are not persuasive. The Internet has a profound ability for users to view information from one corner of the world to another. This, coupled with the fact that the Republic of Korea is one of the most “connected” countries in the world, render the Respondent’s above-mentioned line of argument unpersuasive. Further, the fact that the Respondent’s disputed domain name resolves to a parking page that offers several Internet services, including a link for Internet customers who are interested in the Complainant and in opening an online bank account is highly relevant and probative of the Respondent’s state of mind and intentions.
On balance, the Panel finds that the Complainant’s registered trademark, SELLA, is well-known, and that it was registered in 1999 – which is prior to the Respondent’s registration date of the disputed domain name. The Panel further notes that the Complainant was established in 1886. The disputed domain name is identical and confusingly similar to the Complainant’s trademark and, therefore, bad faith can be inferred based on the fame of the Complainant’s mark such that the Respondent was aware or should have been aware of the Complainant’s mark and claims of right thereto. The Panel reasonably finds that the Respondent registered the disputed domain name with the knowledge of the Complainant’s exclusive right to the trademark, SELLA, to secure commercial gain by taking unfair advantage of the Complainant’s reputation.
Accordingly, the evidence shows that the Respondent likely knew of and has sought to take unfair advantage of the similarity between the disputed domain name and the Complainant’s trademark in order to attract Internet users to its website for commercial gain in violation of paragraph 4(b)(iv) of the Policy.
As the conduct described above falls squarely within paragraph 4(b)(iv) of the Policy, the Panel concludes that the Respondent registered and is using the disputed domain name in bad faith pursuant to the Policy, paragraph 4(a)(iii). 7. 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 name, , be transferred to the Complainant.
Andrew J Park
Sole Panelist
Date: May 5, 2018
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