WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Associated Banc Corp v. jo y. g.
Case No. D2007-0248
1. The Parties
The Complainant is Associated Banc Corp of Green Bay, Wisconsin, United States of America represented by Reinhart Boerner Van Deuren s.c., United States of America.
The Respondent is jo y. g of Seoul, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <assocaitedbank.com>is registered with Cydentity, Inc. dba Cypack.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 20, 2007. On February 23, 2007, the Center transmitted by email to Cydentity, Inc. dba Cypack.com a request for registrar verification in connection with the domain name at issue. On February 24, 2007, Cydentity, Inc. dba Cypack.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. In response to a notification by the Center dated March 1, 2007, that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on March 5, 2007. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 8, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was March 28, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 29, 2007.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on April 11, 2007. 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.
The Complaint was filed in the English language. The registration agreement concerning the disputed domain name is in Korean. On March 3, 2007, at the request of the Center, the Complainant provided its reasons for requesting the proceedings to be conducted in English. On March 8, 2007, the Center notified the Parties (in a notice written both in English and Korean) that the Complaint would initially be accepted in English, reserving the ultimate decision as to the correct language of the proceeding for the Panel, and allowing the Respondent to submit a response in either English or in Korean.
4. Factual Background
The Complainant is a banking institution which has used the name ASSOCIATED BANK in the United States of America since December 31, 1970, and is identified as the owner of the registered trademark ASSOCIATED BANK, registered under United States Patent and Trademark Office Registration No. 3,087,029 for financial, investment and insurance agency services. The Complainant also owns and operates a website at the domain name <associatedbank.com>, which domain name was registered on March 30, 1999.
The disputed domain name was registered on November 27, 2005.
On February 13, 2007, the Complainant’s representatives wrote to the Respondent by email in English demanding the transfer of the disputed domain name. On February 16, 2007, the Respondent replied by email in English refusing to transfer the disputed domain name but providing no further information as to its rights or interests therein.
As at the date of this decision the connected website showed a ‘resource directory’ containing hyperlinks to a variety of financial services offered by a range of financial services companies.
5. Parties’ Contentions
In summary, the Complainant’s contentions are the following:
The Complainant’s ASSOCIATED BANK trademark is distinctive to the Complainant’s goods and services.
The only difference between the Complainant’s trademark and the disputed domain name is that the Respondent has reversed the order of the ‘a’ and ‘i’ in the disputed domain name, which is a common misspelling of the Complainant’s trademark. Accordingly, because the Respondent has registered a domain name that is nearly identical to the Complainant’s trademark and is simply a common misspelling thereof, the disputed domain name is confusingly similar to the Complainant’s trademark.
The disputed domain name points to a website that offers a variety of hyperlinks to financial services and financial services companies located in the United States, including a link to ‘Wisconsin Mortgages - Assocaitedbank.com’. Wisconsin is the state in which the Complainant’s headquarters are located. None of the links on the Respondent’s website point to the website of the Complainant. The website is intended to take advantage of individuals who misspell the Complainant’s name when entering the Complainant’s own domain name in a web browser.
The Respondent is not licensed by the Complainant and has not obtained permission to use and/or register any domain names incorporating Complainant’s ASSOCIATED BANK trademark, nor has the Respondent ever conducted business under that trademark.
The Respondent’s intentional use of the disputed domain name as a clearing area for financial related services that compete with the Complainant’s business indicates that the Respondent either knew or should have known of the Complainant’s trademark rights. The Respondent registered the disputed domain name primarily for the purpose of taking advantage of, trading off and profiting from the Complainant’s trademark rights and to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Language of the Proceedings
Paragraph 11(a) of the Rules provides as follows:
“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.”
In the present case, the concerned registrar has confirmed that the registration agreement is in the Korean language and this would therefore be the default language. Upon receiving notice from the Center regarding the default language, the Complainant submitted arguments as to why the proceedings should be conducted in English. The Center considered the Complainant’s arguments and advised the parties that it would accept the Complaint in English and the Response in either Korean or English. The Parties were further advised that the ultimate decision regarding the language of the proceedings would be within the discretion of the Panel, and that the Panel may request translation of either Party’s submissions. The notice provided by the Center to the Parties was both in English and Korean.
The Complainant’s arguments in favour of adopting the English language were that the Respondent had communicated with the Complainant’s representatives in English, that this is the language of the website to which the disputed domain name is pointed (a name also apparently consisting of English words, albeit partly misspelled) and that the website is itself targeted towards an English speaking audience.
Accordingly, it appears that while the Respondent has the ability to communicate in English, the Complainant cannot communicate in Korean. The Panel therefore determines, having regard to the circumstances of the administrative proceeding, that it would be more appropriate to render the decision in English, which both Parties have the ability to understand. Furthermore, the Panel notes that there is no prejudice to the Respondent, as the Respondent was invited, by way of a notice in both languages, to submit a Response in its preferred language and chose not to respond or otherwise to contest the Complainant’s request regarding the language of proceedings.
A. Identical or Confusingly Similar
The Complainant is required under paragraph 4(a)(i) of the Policy to prove that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
The Panel finds that the Complainant has established rights in its ASSOCIATED BANK registered trademark. The disputed domain name is not identical to this trademark. The difference consists of a transposition of the letters “a” and “i” in the disputed domain name (the white space between the words “associated”and “bank” is of no consequence, given that the naming rules do not permit the use of such spaces in a second level domain name). As is customary in UDRP proceedings, the gTLD (.com) may be discounted as it is wholly generic.
The Complainant’s trademark contains a disclaimer as to exclusive rights in the word “bank”, indicating that the Complainant has claimed only the composite mark as its property. However, in the present case (subject to the letter transposition) it is the entire composite mark of the Complainant that the Respondent has incorporated in the disputed domain name.
On a comparison between the Complainant’s trademark and the disputed domain name, whether phonetic or visual, it is apparent that the two are extremely similar. Furthermore, the Complainant asserts that the disputed domain name represents a common misspelling of its trademark and the Respondent has not sought to contradict this. In effect, the Complainant is alleging that the Respondent is “typosquatting” - defined in previous decisions under the Policy as the intentional registration and use of a domain name that is a common misspelling or predictable mistyping of a distinctive mark. Such common typographical variants typically give rise to a finding of confusing similarity - see, for example, Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556 (transposition of the letters “l” and “o” in the domain name <vlovo.com>).
In the present case, the Panel considers that the incorporation of the Complainant’s distinctive composite trademark ASSOCIATED BANK in the disputed domain name with a transposition of two letters to create a common misspelling thereof gives rise to confusing similarity with that mark, and accordingly that the Complainant has proved the first element required under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Complainant is required under paragraph 4(a)(ii) of the Policy to prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
According to paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in a disputed domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
As the Respondent did not respond to the Complaint, it did not submit any evidence demonstrating rights or a legitimate interest in the disputed domain name. The Complainant asserts that the Respondent has no such rights or interests and states that the Respondent is not licensed by the Complainant and has no permission to use or register the disputed domain name.
The Complainant’s evidence shows that the Respondent operates a website associated with the disputed domain name which, in the text of the home page, is described as a ‘resource directory’ but which in fact contains banking-related hyperlinks, including links to competitors of the Complainant. Given the nature of the website it is probable that the Respondent is receiving or intends to receive ‘per click’ revenue from it. This is clearly a commercial use but it is not a bona fide offering of goods or services, trading as it does on the confusion with the Complainant’s trademark arising from misspellings by Internet users who are expecting to find the Complainant’s website. The use of the disputed domain name in this manner cannot, in the Panel’s mind, give rise to any conceivable rights or legitimate interests on the part of the Respondent.
In these circumstances, the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The Complainant is required under paragraph 4(a)(iii) of the Policy to prove that the Respondent has registered and is using the disputed domain name in bad faith.
On this subject, the Complainant submits that the Respondent registered the disputed domain name primarily for the purpose of taking advantage of, trading off and profiting from the Complainant’s trademark rights and to attract, for the Respondent’s own commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. This submission broadly corresponds with paragraph 4(b)(iv) of the Policy, being one of the four non-exhaustive examples of circumstances which, if found by the Panel to be present, constitute evidence of the registration and use of the disputed domain name in bad faith.
Subject to the minor transposition of letters noted above, the disputed domain name is identical to the Complainant’s trademark which, in association with the provision of financial services is distinctive of the Complainant and not the Respondent. A likelihood of confusion is therefore inevitable and indeed it appears to the Panel that it is just such confusion from which the Respondent seeks to profit by using the disputed domain name to receive Internet traffic from users who have misspelled the Complainant’s own domain name.
The Respondent operates a website via the disputed domain name from which the Respondent derives or intends to derive commercial gain through the forwarding of Internet traffic to the Complainant’s competitors and others by way of the various hyperlinks. The Panel cannot conceive of any possible good faith motivation that the Respondent might have had in registering and using the disputed domain name in this way.
The Panel considers that it is reasonable to infer from the evidence presented by the Complainant that the disputed domain name has been registered and is being used in bad faith and was registered in the knowledge of, and indeed deliberately to target, the fame of the Complainant’s trademark. Consequently there is a case for the Respondent to answer. The Respondent has chosen not to provide any alternative explanation for such registration and use. The Panel therefore finds that the Complainant has proved the third element required under paragraph 4(a) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <assocaitedbank.com> be transferred to the Complainant.
Andrew D. S. Lothian
Dated: April 25, 2007