WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Chinatrust Commercial Bank, Ltd. and Chinatrust Bank (U.S.A.) v. China Holding Company, Incorporated
Case No. D2001-0826
1. The Parties
The Complainants in this administrative proceeding are Chinatrust Commercial Bank, Ltd. (Chinatrust Bank), an international bank with its principal place of business located at No. 3, Sung Shou Road, Taipei, Taiwan, R.O.C. and Chinatrust Bank (U.S.A.) (Chinatrust USA), a bank with its principal place of business located at 2939 Hawthorne Boulevard, Torrance, California, 90505, United States (collectively, Complainant).
The Respondent in this Administrative Proceeding is China Holding Company, Incorporated, located at 1247 Brea Canyon Cutoff Road Rowland Heights, California 91748, United States.
2. The Domain Name and Registrar
The disputed domain name is <chinatrust.com>. The Registrar of this domain name is Network Solutions, Inc., of Herndon, Virginia, United States of America.
By registering the subject domain name with the Registrar, the Respondent agreed to the resolution of disputes pursuant to the Policy and Rules.
3. Procedural History
This is a mandatory administrative proceeding submitted for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999, (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999, (the "Rules") and the World Intellectual Property Organization ("WIPO") Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
The Administrative Panel consisting of one member was appointed on August 10, 2001, by WIPO.
Complainant filed its Complaint with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on June 25, 2001, by email and on June 27, 2001, by hard copy. The Center dispatched to the Registrar a Request for Registrar Verification on June 29, 2001. On July 2, 2001, having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, the Center formally commenced this proceeding and notified the Respondent that its Response would be due by July 26, 2001. The Respondent did not file a response by the due date.
An examination of this material confirms that all technical requirements for the prosecution of this proceeding were met.
Neither party requested an opportunity to make further submissions and the Administrative Panel is content to proceed on the basis of the existing record.
4. Factual Background
The following information is derived from the Complainantís material.
Chinatrust Bank was first established in 1966, as China Securities Investment Corporation (CSIC), to facilitate the trading of stocks given to landlords as compensation for lands transferred to farmers during the government sponsored land reform program. In 1971, CSIC was reorganized as China Trust Company in order to satisfy Taiwanís investment needs during a period of rapid development. In 1992, China Trust Company was the first company to meet government requirements under which trust companies could be converted into commercial banks, and in July of that same year, became the Complainant.
The Complainant has 50 branch offices in Taiwan and affiliates around the world, including in Canada, Hong Kong, England, Paraguay, Indonesia, India, Japan, Philippines, Thailand, United States, and Vietnam.
In 1989, the China Trust Bank of New York was founded in New York by Dr. Jeffrey L. S. Koo and Kenneth C. M. Lo. At that time, Dr. Koo was the Chairman of China Trust Company and Mr. Lo was President of China Trust Company. In 1995, they also founded the China Trust Bank of California. On August 29, 1997, China Trust Bank of California changed its name to Chinatrust Bank (U.S.A.) and on that same day, China Trust Bank of New York merged into it (such merged entity, Chinatrust USA). On May 5, 2001, Chinatrust Bank acquired control of Chinatrust USA by merger with its ultimate parent holding company, China Trust Holdings N.V. The Complainant has used the name "Chinatrust" extensively in Taiwan since 1971, and in the United States since 1989. The mark has a valid United States registration, several foreign registrations and has been used extensively throughout the world.
Chinatrust USA holds a United States registration for the mark CHINATRUST, Reg. No. 2,196,112 (Service Mark), as assignee from China Trust Bank of New York.
The Complainant and its legal predecessor have used CHINATRUST in United States commerce since 1989. The Complainant and its affiliates have numerous registrations or pending applications around the world for CHINATRUST, including the following countries: Benelux (Reg. No. 553,298), Canada (Reg. No. TMA519,232, App. No. TMA1018,704), France (INPI No. 525,023), Germany (Reg. No. 2,905,559), Italy (Reg. No. 697,103), and the United Kingdom (Reg. No. B1,546,833).
In the United States, Chinatrust USA has total assets exceeding US$1.6 billion, and 18 branch network offices in California, Maryland, New York, New Jersey and Washington.
The Complainant and its affiliates own several domain names that contain the "Chinatrust" and "China Trust" names, including <chinatrust.com.tw> (site content is in both Chinese and English) and <chinatrustusa.com>.
The scope of the Complainantís activities and the exposure of its name and Service Mark is extensive, both in the United States and throughout the world. The Complainantís name, services and the Service Mark have been publicized, advertised and promoted widely in the United States and abroad over the years through a wide range of media, including extensive direct mail, brochures, flyers, newspaper, television and radio announcements, all of which display the Service Mark in a prominent position. The Complainant has spent substantial funds and resources in developing and marketing its services under the Service Mark through promotions, advertising, public relations activities and other means.
The Respondent registered the subject domain name on March 27, 1998. This came to the attention of the Complainant in 2000. The Respondentís registration was due to expire on March 27, 2001. On March 12, 2001, counsel for the Complainant wrote to the Respondent requesting it to transfer the subject domain name to the Complainant or to let its registration expire so that the Complainant could register the name.
The Respondent replied on March 13, 2001, alleging that its registration pre-dated the Complainantís registration of its trademark "Chinatrust" in the United States. It also stated that it would respect the Complainantís registration in the banking category and would cancel its web link to the Complainantís web site. It stated that it was negotiating with Chinatrust Investment Bank of China "Öabout the cooperation of ecommerce on <chinatrust.com> web site".
On or about March 13, 2001, the Respondent renewed its registration of the subject domain name.
Information on the web site to which the subject domain name resolved at one point included the following statement:
"Do you want to be a partner of chinatrust.com? Please, contact us: firstname.lastname@example.org.
China Holding Company Inc."
On March 19, 2001, the Complainant answered the points made by the Respondent and offered to pay the Respondent $500.00 in addition to any registration or transfer fees if the Respondent were to transfer the subject domain name to the Complainant. The Respondent responded insisting that its registration was in 1995, and rejecting the Complainantís overtures. It continued to refer to a possible relationship with China Investment Bank of China.
The subject domain name has been inactive since April 12, 2001.
The Respondent is not affiliated with the Complainant and has not been authorized to use its mark.
The Respondent made no submission in this proceeding.
5. Partiesí Contentions
The Complainant relies on its use and registration of the words china and trust. It says that the subject domain name "Öis identical to, and thus confusingly similar to" the subject domain name. Because the Respondent is not affiliated with and has no authorization from the Complainant for the use of the Complainantís mark and in the absence of any connection between the Respondentís business and its name with the subject domain name, the Complainant says that the Respondent does not have a legitimate interest in it. The absence of any current use of the subject domain name also is relied on.
As to bad faith, the Complainant points to the Respondentís renewal of its registration after it was contacted by the Complainant. It says that the Respondent has no legitimate interest in the site and the use that it did make of the subject domain name was an intentional attempt to confuse consumers.
The Respondents have not participated in this proceeding.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove that:
(i) the domain name is identical or confusingly similar to a service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interest in respect of the domain name;
(iii) the domain name has been registered and is being used in bad faith.
Paragraph 4(b) provides for the implication of evidence of bad faith in a number of circumstances:
(i) circumstances that indicate that the Respondent has registered or has 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 the Complainant, for valuable consideration in excess of the Respondentís documented out-of-pocket costs directly related to the domain name;
(ii) registration of 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;
(iii) registration of the domain name primarily for the purpose of disrupting the business of a competitor;
(iv) by using the domain name, intentionally attempting to attract, for commercial gain, Internet users to the Respondentís web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site or location or of a product or service on it or a location.
These are illustrative and do not represent the only circumstances from which may arise evidence of bad faith.
The Complainant refers to a number of domain name dispute decisions and to the decisions of domestic courts. While these are neither controlling nor binding on this administrative panel, they can be of assistance.
The resolution of this dispute takes place in the context of a consideration of the requirements of paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
The Complainant links the two requisites of paragraph 4(a)(i): identical and confusingly similar. They are stated disjunctively. One neither leads to the other nor is it necessary for a Complainant to show that a domain name is identical in order to establish that it is confusingly similar.
In this case, the Complainant clearly has a long-standing use of the words "China and trust". It has common-law and registered rights to the words. The subject domain name essentially is identical. That is sufficient to dispose of this issue.
The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(i).
B. Respondents Legitimate Interest
The Respondent chose not to participate in this proceeding although its communications with the Complainant clearly show that it is familiar with the process. A respondent is not obliged to make submissions in a domain name dispute proceeding. The absence of a submission will not lead to a default decision, but the absence of any information may lead to inferences that support a Complainantís case.
In this case, the Complainant properly placed before the administrative panel the full text of the Respondentís communications. They are considered in the context of the information as a whole.
The Respondent is not connected to the subject domain name either through its name or its business. Although it stated that negotiations were ongoing with a banking entity to make use of the name, no information has been provided to show that these have born fruit. The subject domain name is not being used at this time.
The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(ii).
C. Bad Faith
The facts that a domain name is identical to the interests of a complainant and that a respondent does have a legitimate use in the domain name, standing alone generally does not establish bad faith.
There has been no offer to sell the subject domain name and no demand made for money to transfer it to the Complainant, but such conduct is merely one aspect of a potential finding of bad faith.
At present, the Complainant is deprived of the opportunity of using its mark as a domain name. It need not wait for direct harm before seeking redress in an ICANN proceeding.
The Complainant relies on the Respondentís renewal of its registration to support a finding of bad faith. The administrative panel rejects that contention in the context of this case. Contact apparently was made one day before the renewal. The subject domain name was due to expire shortly thereafter. If it were to have done so, the Respondent would have lost its position and the issue between the parties would have become moot. Renewal in such circumstances does not support an inference of bad faith.
It is clear from the Respondentís communications that it knew of the Complainantís rights when it registered the subject domain name. The information concerning the Complainantís activities, including those in the United States supports this conclusion. The Respondent linked its web site to the Complaintís site. The comment at the Respondentís site - "Do you want to be a partner of chinatrust.com? Please, contact us: email@example.com. China Holding Company Inc." - is at best misleading, but supports an inference that a attempt was being made to attract custom to the Respondent by trading on the reputation of the Complainant.
Although the site and subject domain name presently are inactive, the history of the Respondentís conduct leads to an inference that the present lull is merely an hiatus before use may be made and the interest of the Complainant compromised.
The absence of any information from the Respondent to respond to these inferences leads to the conclusion that the registration and use of the subject domain name was in bad faith.
The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(iii).
Based on the evidence and its findings, the Administrative Panel concludes that the Complainant has established its case.
The Complainant asks that the subject domain name be transferred to it. The Administrative Panel so orders.
Edward C. Chiasson
Dated: August 24, 2001