WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
IndusInd Bank Limited v. DomainCA (Whois Protect Service) / Yungu Jo
Case No. D2014-0811
1. The Parties
The Complainant is IndusInd Bank Limited of Mumbai, India, represented by SNG & Partners, India.
The Respondent is DomainCA (Whois Protect Service) of Seoul, Republic of Korea / Yungu Jo of Gwangju, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <indusindbank.com> (the “Disputed Domain Name”) is registered with Korea Information Certificate Authority Inc. d/b/a DomainCa.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 16, 2014. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 20, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 4, 2014 providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to amend the Complaint. The Complainant filed an amendment to the Complaint on June 7, 2014.
Also on June 4, 2014, the Center notified the Parties in both English and Korean that the language of the Registration Agreement in this case was Korean. On June 6, 2014, the Complainant requested English to be the language of the proceeding, to which the Respondent has not replied.
The Center verified that the Complaint together with the amendment 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 proceeding commenced on June 11, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 1, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 2, 2014.
The Center appointed Andrew J. Park as the sole panelist in this matter on July 10, 2014. 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 is a Scheduled Commercial Bank in India and has been providing banking and financial services under the name “IndusInd Bank Limited.” The Complainant has been conducting business under the name IndusInd Bank Limited in India since 1994, and has a network of 602 branches located across 31 States of India. The Complainant owns registered trademarks for INDUSIND BANK in India for banking-related services, and several registered domain names associated with the mark, including <indusind.com>, <indusindbank.in>, and <indusindbank.co>.
The Disputed Domain Name was registered to the Respondent on November 26, 2005. The Complainant provided screenshots of the website at the Disputed Domain Name dated April 2014 that feature sponsored links to websites of third-parties offering banking and financial services that directly compete with the Complainant. As of July 26, 2014, the Disputed Domain Name revolved to an Internet dating website.
5. Parties’ Contentions
The Complainant contends that the Disputed Domain Name contains the INDUSIND BANK trademark owned by the Complainant. The Complainant contends that it has spent substantial time, effort, and money advertising and promoting the INDUSIND BANK trademark throughout India and elsewhere in the world, and has thus developed substantial goodwill in the INDUSIND BANK trademark.
The Complainant contends that the Disputed Domain Name is confusingly similar to the INDUSIND BANK trademark because it incorporates the INDUSIND BANK trademark in its entirety, and the addition of the generic Top-Level Domain (“gTLD”) is irrelevant.
The Complaint contends that the Respondent has no rights or legitimate interests in the Disputed Domain Name because the Respondent has no connection or affiliation with the Complainant, or the services marketed and sold by the Complainant under the INDUSIND BANK trademark. The Complainant contends that the Respondent chose to use the INDUSIND BANK trademark to divert Internet users seeking to visit the Complainant’s legitimate website and to trade on the goodwill associated with the INDUSIND BANK trademark. The Complainant contends that the screenshots of the website at the Disputed Domain Name evidence that the Respondent is not making a legitimate noncommercial use of the Disputed Domain Name.
The Complainant contends that the Respondent has registered and is using the Disputed Domain Name in bad faith and with full knowledge of the INDUSIND BANK trademark. The Complainant contends that the Respondent’s use of the Disputed Domain Name to include website links to financial services offered by third-party competitors and to some unrelated services is evidence of bad faith because it creates a likelihood of confusion as to source, sponsorship, affiliation or association. The Complainant further contends that the Respondent is performing unlawful phishing activities from an email address originating from the Disputed Domain Name. The Complainant contends that the Respondent’s use of the Disputed Domain Name in this manner is common among cyber squatters and demonstrates bad faith. Prior to filing the Complaint, the Complainant requested the Respondent to transfer the Disputed Domain Name; however, the Respondent did not respond to the request.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth three requirements, which have to be met for the Panel to order transfer (or cancellation) of the Disputed Domain Name to the Complainant. Those requirements are that: (i) the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the domain name; and (iii) the Respondent’s domain name has been registered and is being used in bad faith.
The Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, pursuant to paragraph 15(a) of said Rules. In accordance with paragraph 14(b) of the Rules, if the Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.
6.1. 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. Here, the Registrar confirmed to the Center that the language of the Registration Agreement is Korean. The Complainant requested that English be the language of the proceeding.
The Center issued a Language of Proceeding notification to both parties in both English and Korean with instructions to both the Complainant and the Respondent.
The Center has throughout the proceedings issued its case-related communications, including the Center’s Complaint notification documents, in both Korean and English. The Respondent has chosen not to participate in the proceeding, and has been notified of its default. The Panel is satisfied that the Center’s approach has been fair and appropriate, reserving the discretion to the Panel to determine the appropriate language of proceeding.
The Panel notes that the spirit of paragraph 11 of the Rules is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfort with each language. See Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679. In the present case, although the registration agreement for the Disputed Domain Name is Korean, the Panel notes that the content at the site of the Disputed Domain Name is in English. Furthermore, the Complainant is not able to communicate efficiently in Korean. Therefore, in consideration of the above circumstances, the Panel hereby decides, under paragraph 11 of the Rules, that English shall be the language of the proceeding in this case.
A. Identical or Confusingly Similar
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark.
The Panel finds that the Disputed Domain Name <indusindbank.com> is in its relevant distinguishing part identical to the trademark INDUSIND BANK owned by the Complainant. First, it is uncontroverted that the Complainant has established rights in the INDUSIND BANK trademark based its longstanding use as well as its registered trademarks and domain names for the same. Second, the Disputed Domain Name consists of the INDUSIND BANK trademark in its entirety. “The fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy.” Six Continent Hotels, Inc. v. The Omnicorp, WIPO Case No. D2005-1249 (quoting Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903). Third, the addition of the gTLD suffix “.com” is typically disregarded under the confusing similarity test because it is a technical requirement of registration and here, does not itself form a part of the Complainant’s trademark.
For these reasons, pursuant to the Policy, paragraph 4(a)(i), the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademarks.
B. Rights or Legitimate Interests
Under 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, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
Here, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case. Nonetheless, there is no evidence in the record that the Respondent is in any way associated with the Complainant.
Moreover, the Respondent has not registered the Disputed Domain Name in connection with a bona fide intent as the Respondent is not a licensee of the Complainant with regard to the trademark rights or the right to register the Disputed Domain Name. The Panel accepts the argument of the Complainant that it has never authorized or licensed the Respondent to use its trademark INDUSIND BANK in a domain name and therefore the Respondent is not able to establish rights or legitimate interests in the Disputed Domain Name. Mere registration of the Disputed Domain Name may not in and of itself confer rights or legitimate interests in the Disputed Domain Name (Terrain Inc. v. Geocaching Zero, WIPO Case No. D2008-0666; Société Nationale des Chemins de Fer Français v. RareNames, Inc., RareNames WebReg and RN WebReg, WIPO Case No. D2008-1849; St Andrews Links Ltd v. Refresh Design, WIPO Case No. D2009-0601; Gibson, LLC v. Jeanette Valencia, WIPO Case No. D2010-0490). The Respondent is not an authorized dealer, distributor or licensor of the Complainant and is not making a legitimate noncommercial or fair use of the Disputed Domain Name.
Accordingly, pursuant to paragraph 4(a)(ii) of the Policy, the Panel finds under the circumstances that the Complainant has established that the Respondent lacks rights or legitimate interests in the Disputed Domain Name.
C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the Disputed Domain Name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances, which in particular but without limitation, are to be construed as evidence of both. These include, inter alia, using the Disputed Domain Name in order to intentionally attempt 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 source, sponsorship, affiliation, or endorsement of his website or of a product or service on that website or location.
The Panel accepts the arguments of the Complainant that the Disputed Domain Name was registered and is being used in bad faith as it has been and is being used to attract Internet users to websites related to financial services offered by third-party competitors of the Complainant and to some unrelated services (e.g., a dating website). Such use of the Disputed Domain Name creates a likelihood of confusion as to source, sponsorship, affiliation or association of the content therein. There is no doubt that the Respondent knew or should have known about the Complainant’s trademark rights before registering the Disputed Domain Name. Such use of the Disputed Domain Name is neither legitimate, nor in good faith. The registration of an identical domain name to the Complainant’s trademark in order to misdirect Internet users or display links to third-party commercial websites, is evidence of bad faith under paragraph 4(b)(iv) of the Policy. See, e.g., Hanover Communications Ltd., v. Maison Tropicale, S.A., WIPO Case No. D2007-1456; Bank of Nova Scotia v. Domain Administration Limited, WIPO Case No. D2007-0883.
For the above reasons, pursuant to paragraph 4(a)(iii) of the Policy, the Panel finds that the Complainant has shown that that the Disputed Domain Name has been registered and used in bad faith by the Respondent.
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, <indusindbank.com>, be transferred to the Complainant.
Andrew J. Park
Date: July 27, 2014