The Complainant is The Citco Group Limited, Cayman Islands,United Kingdom, represented by Stobbs IP Limited, United Kingdom.
The Respondent is Sheng Tan, China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 8, 2020. On June 8, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 19, 2020, 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 19, 2020, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On June 22, 2020, the Complainant requested that English be the language of the proceeding. The Respondent did not comment. 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, and the proceedings commenced on June 25, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 15, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 16, 2020. The Center appointed Rachel Tan as the sole panelist in this matter on July 24, 2020. 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 was founded and incorporated in the Cayman Islands, United Kingdom. It is a parent company of a group of 66 subsidiaries around the world. The Complainant established the Curacao International Trust Company to focus on delivering services within the financial and professional services sector. The Complainant and its subsidiaries provide financial advisory, computer software, accountancy, investment, and insurance services. The Complainant has over 7,000 employees across 60 offices in 45 countries. The total number of assets under administration in the Complainant control equal to USD one trillion. The CITCO mark is derived from its former name “Curacao International Trust Company” and the Complainant has continued to use the CITCO mark since 1948. It owns a range of trade mark registrations and applications worldwide, including two trade mark registrations in the Cayman Islands and four trade mark registrations in China that solely incorporate the term CITCO, namely, Cayman Islands Registration No. 3120161 registered on July 30, 2015, in classes 9, 35, 36, 38, 42; Cayman Islands Registration No. 2019725 registered on May 4, 1995, in class 36; Chinese Registration No. 3395709 registered on November 14, 2010, in class 35; Chinese Registration No. 7911030 registered on March 14, 2011, in class 36; Chinese Registration No. 3395710 registered on April 28, 2010, in class 36; and, International Registration No. 766347 registered on March 27, 2001, in class 42, which designates China. The Respondent is Sheng Tan, China. The disputed domain name was registered on March 23, 2020, and does not resolve to an active web page. The disputed domain name is listed as “taken” on a domain name registry which is offering for sale other alternative domain names that are similar to the disputed domain name. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name is confusingly similar to its CITCO mark. The addition of the generic Top-Level Domain suffix (“gTLD”) “.com” does not lend itself to the overall similarity of the disputed domain name when assessing it in relation to the Complainant’s rights. The additional elements “agencyinc” would be understood by English-speaking users to refer to a company that offers professional services to third parties, which is clearly associated with the Complainant and the Complainant’s CITCO brand as a financial institution. The Complainant further alleges that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has never, either as an individual or business, been known by the disputed domain name. The Respondent’s passive holding of the disputed domain name without making legitimate, noncommercial, or fair use is clear evidence of bad faith. The Complainant has not given the Respondent permission to use its CITCO mark in any manner. Based on the reputation of the CITCO brand, it is not possible for the Respondent to register the disputed domain name without awareness of the CITCO brand. The Complainant finally asserts that the disputed domain name was registered and is being used in bad faith. The Respondent’s bad faith is demonstrated by the Respondent’s failure to make good faith use of the disputed domain name. The Respondent has registered the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the disputed domain name to the Complainant. Based on the reputation of the CITCO brand and the fact that the CITCO mark is a coined term derived from the Complainant’s former name “Curacao International Trust Company”, there is no reason for the Respondent to register the disputed domain name except to refer to the Complainant. Moreover, the Respondent has a pattern of registering domain names in which it does not have rights. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Language of Proceeding Initially, the Panel must address the language of the proceeding. Paragraph 11(a) of the Rules provides that the language of the administrative proceeding shall be the language of the Registration Agreement unless otherwise agreed by the parties, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceeding. The panel may choose to write a decision in either language, or request translation of either party’s submissions. In this case, the Registrar has confirmed to the Center that the language of the Registration Agreement is Chinese. However, the Complainant has requested that English be adopted as the language of the proceeding for the reasons summarized below: (a) The disputed domain name is registered in simple Latin script, with no diacritics or ligatures used; (b) The disputed domain name is available for sale in English and has been listed via Cheap-Registrar, a United States of America based registry; (c) The Complainant has undertaken a reverse WhoIs search for domain names owned by the Respondent and located a number of domain name registrations which belong to western brands. The website at one such domain name directs to a parked page with links to travel agencies provided in the English language. Therefore, the Respondent is capable of understanding the English language; and (d) The Complainant is unable to communicate in Chinese and that the translation of all documents would result in it incurring substantial costs. 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 order to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding. The Panel having considered the circumstances finds that English shall be the language of this proceeding. The reasons are set out below. (a) The Complainant is a company incorporated under the laws of Cayman Islands, United Kingdom. Requiring the Complainant to submit documents in Chinese would lead to delay and cause the Complainant to incur translation expenses; (b) The Respondent’s choice of English words for other domain names indicates some familiarity with the English language; (c) Even if the Respondent does not possess a sufficient command of English to understand the Complaint, there were ample opportunities for the Respondent to raise an objection. The Center notified the Parties in English and Chinese of the Complainant’s request for English to be the language of the proceeding, but the Respondent did not protest against this request; and (d) The Respondent has failed to participate in the proceeding and has been notified of its default. The Complaint has been submitted in English. No foreseeable procedural benefit may be served by requiring Chinese to be used. On the other hand, the proceeding may proceed expeditiously in English. 6.2 Substantive Issues A. Identical or Confusingly Similar The Panel is satisfied that the Complainant has adduced evidence to demonstrate its established rights in the CITCO trade mark. The Panel notes the disputed domain name is comprised of the CITCO trade mark in its entirety followed by the elements “agencyinc”. The positioning of the CITCO trade mark at the beginning of the disputed domain name makes it instantly recognizable. In cases where a domain name incorporates the entirety of a trade mark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Further, the elements “agencyinc” do not preclude a finding of confusing similarity between the CITCO trade mark and the disputed domain name. It is accepted by UDRP panels that the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) to the Complainant’s trade marks does not prevent a finding of confusing similarity between the domain name from the registered trade mark under the first element of the Policy. The inclusion of a term “agencyinc” does not affect the similarity of the disputed domain name to the Complainant’s CITCO trade mark. See section 1.8 of the WIPO Overview 3.0. Lastly, it is permissible for the Panel to ignore gTLD suffix, in this case “.com”. See section 1.11.1 of the WIPO Overview 3.0. Accordingly, the Complainant has satisfied the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests In circumstances where the Complainant possesses exclusive rights to the CITCO trade mark, whereas the Respondent seems to have no trade mark rights, the Panel is satisfied that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and the burden of production shifts to the Respondent. See section 2.1 of the WIPO Overview 3.0. The Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the term “citco”. Further, there is no indication to show that the Respondent is commonly known by the disputed domain name or otherwise has rights or legitimate interests in it. In addition, the Complainant has not granted the Respondent a license or authorization to use the Complainant’s CITCO trade mark or register the disputed domain name. For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith The Complainant’s CITCO trade mark has been widely registered around the world. The disputed domain name was registered well after the registration of the Complainant’s CITCO trade mark. Through extensive use and advertising, the Complainants’ CITCO trade mark is known throughout the Cayman Islands, United Kingdom, as well as China where the Respondent is apparently located. Moreover, the term “citco” is not merely a name. Search results using the key word “citco” on the Baidu and Google search engines direct Internet users to the Complainant and its services, which indicates that an exclusive connection between the CITCO trade mark and the Complainant has been established. As such, the Respondent either knew or should have known of the Complainant’s CITCO trade mark when registering the disputed domain name or has exercised “the kind of willful blindness that numerous panels have held support a finding of bad faith”. See eBay Inc. v. Renbu Bai,WIPO Case No. D2014-1693; Barclays Bank PLC v. Andrew Barnes,WIPO Case No. D2011-0874. Section 3.1.4 of the WIPO Overview 3.0 states that “mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith”. This is an indication that the Respondent intentionally traded on the goodwill of the Complainants’ CITCO trade mark to attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s CITCO trade mark. Further, the Respondent appears to be engaged in a pattern of abusive registrations having registered several domain names comprising well-known global brands. Such conduct reinforces a finding of bad faith. In addition, the Panel notes that the disputed domain name resolves to an inactive website. However, such apparent non-use of the disputed domain name does not prevent a finding of bad faith in the circumstances of this case. See section 3.3 of the WIPO Overview 3.0. The Respondent has kept silent in the face of the Complainant’s allegations of bad faith. Taking into account these circumstances, the Panel finds that the Respondent must have known of the Complainant before registering the disputed domain name and, considering the Respondent’s lack of rights or legitimate interests, passive holding of the disputed domain name and by continuing to hold the disputed domain name, the Panel is led to conclude that the disputed domain name was registered and is being used in bad faith. Therefore, the Panel finds that the Complainant has satisfied the third element under paragraph 4(a) of the Policy. 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 Rachel Tan
Sole Panelist
Date: August 7, 2020
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