World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Dukascopy Bank SA v. Liang Chen

Case No. D2011-0673

1. The Parties

The Complainant is Dukascopy Bank SA of Geneva, Switzerland, represented by Baker & McKenzie, Switzerland.

The Respondent is Liang Chen of Shanghai, the People’s Republic of China.

2. The Domain Name and Registrar

The disputed domain name <dukascopyasia.com> is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 15, 2011. On April 18, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On April 18, 2011, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details and confirming that the language of the Registration Agreement that was used to register the disputed domain name is English.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 20, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 10, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 11, 2011.

The Center appointed Jonathan Agmon as the sole panelist in this matter on May 16, 2011. 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, Dukascopy Bank SA is a Swiss company, founded in 2004, and is considered as one of the most successful Swiss Forex trading platforms. The Complainant employs more than 170 people.

Since its establishment in 2004, the Complainant has been using the DUKASCOPY mark in connection with its services.

The Complainant is the owner of numerous trademark registrations for the mark DUKASCOPY. For example: Swiss trademark registration No. 478567 DUKASCOPY, with the registration date of November 17, 2000; Swiss trademark registration No. 585516 – DUKASCOPY, with the registration date of April 20, 2009; International trademark registration No. 752642– DUKASCOPY, designated among others for China, with the registration date of January 30, 2001 and International trademark registration No. 1013119 DUKASCOPY, designated among others for China, with the registration date of April 27, 2009.

The Complainant also developed a formidable presence on the Internet and is the owner of several domain names, which contain the name "Dukascopy". For example: <dukascopy.com>, <dukascopybank.com>, <dukascopy-bank.com> and <dukscopy-bank.net>.

The disputed domain name <dukascopyasia.com> was registered on August 9, 2010.

The disputed domain name <dukascopyasia.com> leads Internet users to a website that appears to be a copy of the Chinese version of the Complainant's website while using the Complainant’s DUKASCOPY mark.

The Complainant sent a cease and desist letter to the Respondents on February 7, 2011, informing the Respondent of the Complainant’s intellectual property rights in the mark DUKASCOPY and demanding that the Respondent will transfer the disputed domain name within 10 days to the Complainant. The Respondent did not reply.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain name is identical or confusingly similar to the DUKASCOPY trademark, in which the Complainant has rights, seeing that it incorporates the DUKASCOPY trademark as a whole.

The Complainant further argues that the addition of the descriptive word “Asia” is insufficient to avoid confusing similarity between the DUKASCOPY trademark and the disputed domain name.

The Complainant further argues that the Respondent has no rights of legitimate interests in respect of the disputed domain name.

The Complainant further argues it had not licensed or otherwise permitted the Respondent to use its

DUKASCOPY trademark and is not affiliated or otherwise connected to the Respondent.

The Complainant further argues that the Respondent is not generally known by the disputed domain name, or has acquired trademark rights in the term “dukascopy”.

The Complainant further argues that the Respondent has registered and is using the disputed domain name in bad faith.

The Complainant further argues that the disputed domain name is likely to mislead or confuse the public as to its source or origin.

The Complainant further argues that the Respondent registered the disputed domain name in an attempt to attract, Internet users to his website by creating a likelihood of confusion with the Complainant’s mark.

The Complainant further argues that the Respondent was aware of the Complainant’s existence and of the

DUKASCOPY trademark at the time he registered the disputed domain name.

For all of the above reasons, the Complainant requests the transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant is the owner of numerous trademark registrations for the mark DUKASCOPY. For example: Swiss trademark registration No. 478567 DUKASCOPY, with the registration date of November 17, 2000; Swiss trademark registration No. 585516 – DUKASCOPY, with the registration date of April 20, 2009; International trademark registration No. 752642– DUKASCOPY, designated among others for China, with the registration date of January 30, 2001 and International trademark registration No. 1013119- DUKASCOPY, designated among others for China, with the registration date of April 27, 2009.

The disputed domain name <dukascopyasia.com> differs from the registered DUKASCOPY trademark by the additional word “Asia” and the additional gTLD “.com”.

The disputed domain name integrates the Complainant’s DUKASCOPY trademark in its entirety, as a dominant element.

The additional word “Asia” does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant’s DUKASCOPY trademark, as it is a descriptive element that refers to a geographical location.

Previous UDRP panels have ruled that the mere addition of a non-significant element does not sufficiently differentiate the domain name from the registered trademark: “The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark” (Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505).

And, “the addition of the geographical indicator "China" is insufficient to avoid confusing similarity as it is a non-distinctive element that is somewhat connected with the Complainant is markets its products in among other countries, in China. The most prominent element in the domain name is clearly the term "grundfos", which lacks dictionary meaning in both English and Chinese, and may cause the public to view it as connected to the GRUNDFOS trademark.” (Grundfos A/S v. WangShuLi, WIPO Case No. D2010-1575; see also Wal-Mart Stores, Inc. v. Su Rong Ye, WIPO Case No. 2002-0771)

Also, “the trademark RED BULL is clearly the most prominent element in this combination, and that may cause the public to think that the domain name <redbull-jp.net> is somehow connected with the owner of RED BULL trademark” (Red Bull GmbH v. PREGIO Co., Ltd., WIPO Case No. D2006-0909).

Indeed, “[t]he mere addition of a descriptive term to an identical trademark has been repeatedly held by previous panels as not sufficient to avoid confusion between the domain name and the trademark” (Red Bull GmbH v. Chai Larbthanasub, WIPO Case No. D2003-0709).

The addition of the gTLD “.com” to the disputed domain name does not avoid confusing similarity. See

F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451, and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Thus, the gTLD “.com” is without legal significance since the use of a gTLD is technically required to operate the domain name.

Consequently, the Panel finds that the Complainant has shown that the disputed domain name is identical or confusingly similar to trademarks in which the Complainant has rights.

B. Rights or Legitimate Interests

Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name (Policy, paragraph 4(a)(ii)).

In the present case, the Complainant alleged that the Respondent has no rights or legitimate interests in respect of the disputed domain name and the Respondent failed to assert any such rights, or legitimate interests.

The Panel finds that the Complainant established such a prima facie case inter alia due to the fact that the

Complainant has not licensed or otherwise permitted the Respondent to use its DUKASCOPY trademark or a variation of it. The Respondent did not submit a response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name. Thus, the Respondent did not rebut the Complainant’s prima facie case.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).

The Complainant submitted evidence, which shows that the Respondent registered the disputed domain name after the Complainant registered its trademark. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant owns a registration for the DUKASCOPY trademark since the year 2000. It is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735).

The Complainant also provided evidence to demonstrate its trademark's goodwill. The Panel cites the following with approval: "The Respondent's selection of the disputed domain name, which wholly incorporates the Trade Mark, cannot be a coincidence… Given the fame of the Trade Mark, there is no other conceivable interpretation of the Respondent's registration and use of the disputed domain name other than that of bad faith" (Swarovski Aktiengesellschaft v. Zhang Yulin, WIPO Case No. D2009-0947). It is therefore unlikely that the Respondent had no knowledge of the Complainant upon registering the disputed domain name.

Indeed, “when a domain name is so obviously connected with a Complainant, it's very use by a registrant with no connection to the Complainant suggests ‘opportunistic’ bad faith”. (Tata Sons Limited v. TATA Telecom Inc/Tata-telecom.com, Mr. Singh, WIPO Case No. D2009-0671).

The disputed domain name leads Internet users to a website that appears similar to the Chinese version of the Complainant's website, while using the Complainant’s DUKASCOPY mark without its authorization.

The Respondent’s use of the Complainant’s mark is clear evidence in the Panel’s view that the Respondent registered and is using the disputed domain name with knowledge of the Complainant and of the use the Complainant is making of its DUKASCOPY trademark, and indicates that the Respondent’s primary intent with respect to the disputed domain name is to trade off the value of these. The Respondent’s actions therefore constitute bad faith. See Herbalife International, Inc. v. Surinder S. Farmaha, WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the complainant’s trademark registration amounts to bad faith".

Furthermore, the disputed domain name is confusingly similar to the Complainant’s trademark. Previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (See Edmunds.com, Inc v. Triple E Holdings Limited, WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.

In addition, the Panel notes that the Respondent failed to reply to the Complainant's cease and desist letter.

In the present circumstances, this constitutes additional evidence of the Respondent's bad faith (ALSTOM v. STOCKMARKET DOMAINS, WIPO Case No. D2008-1542).

Based on the evidence presented to the Panel, including the late registration of the disputed domain name, the use of the Complainant’s trademark in the disputed domain name and the similarity between the disputed domain name and the Complainant’s mark, the Panel draws the inference that the disputed domain name was registered and used in bad faith.

Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.

7. Decision

For all 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 <dukascopyasia.com> be transferred to the Complainant.

Jonathan Agmon
Sole Panelist
Dated: May 30, 2011

 

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