WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ZB, N.A. v. Chen Ming Hua
Case No. D2016-2441
1. The Parties
The Complainant is ZB, N.A. of Salt Lake City, Utah, United States of America, represented by John Rees Law, PLLC, United States of America.
The Respondent is Chen Ming Hua of Hefei, Anhui, China, self- represented.
2. The Domain Names and Registrar
The disputed domain names <amegybank.club> and <nsbank.club> ("the Domain Names") are registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the "Registrar").
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on December 1, 2016. On December 2, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On December 6, 2016, 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 December 7, 2016, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Respondent requested that Chinese be the language of the proceeding on December 7, 2016. The Complainant confirmed its request that English be the language of the proceeding on December 8, 2016. On December 7, 2016, the Respondent submitted several emails with the Center consulting how to proceed with the case and requesting a model response in Chinese.
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 in English and Chinese, and the proceeding commenced on December 14, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 3, 2017. On December 14, 2016 and December 15, 2016, the Respondent submitted two emails indicating that Chinese should be the language of the proceeding. The Response was filed with the Center on December 27, 2016.
The Center appointed Karen Fong as the sole panelist in this matter on January 9, 2017. 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 national banking association with multiple divisions, including Amegy Bank and Nevada State Bank. The Complainant owns the following trade marks in the United States of America ("USA"):
- Trade Mark Registration No 3,269,288 for AMEGY in class 36, registered on July 24, 2007
- Trade Mark Registration No. 2,979,655 for AMEGY BANK in class 36, registered on July 26, 2005
- Trade Mark Registration No. 3,105, 196 for AMEGY BANK (stylized) in class 36, registered on June 13, 2006
(together "the AMEGY Trade Marks")
- Trade Mark Registration No. 4,174,370 for NSBANK in class 9 and 42, registered on July 17, 2012
- Trade Mark Registration No. 2,862,148 for NEVADA STATE BANK in class 36, registered on July 13, 2004
The Complainant advertises and offers its banking services under the AMEGY Trade Marks online through its websites connected to the domain names <amegy.com> and <amedgybank.com> which have been registered and owned by its parent company since August 18, 2003. The Complainant's banking services under the NSBANK marks are advertised and offered online through the website connected to the domain name <nsbank.com> which has been registered since May 6, 1996.
The Domain Names were registered on November 17, 2016. They were connected to identical websites that offered cloud server packages ("the Websites"). The Websites do not appear to be active at the time of the writing of this decision.
5. Parties' Contentions
The Complainant contends that the Domain Names are identical or confusingly similar to the Complainant's trade marks respectively, the Respondent has no rights or legitimate interests with respect to the Domain Names, and that the Domain Names were registered and used in bad faith. The Complainant requests transfer of the Domain Names.
The Respondent denies that the Domain Names should be transferred to the Complainant for the following reasons:
Identical or Confusingly Similar
- The Complainant's trade marks are not registered in China.
- The Respondent as an ordinary Chinese citizen had no knowledge of the Complainant's trade marks.
- The fields of use are completely different – the Complainant is in the banking business whilst the Respondent is in the "club" business, hence his registration of the generic Top-Level Domain ("gTLD") for ".club".
- NSBANK has many other different meanings – NS is the abbreviation in Chinese pinyin of the following words Nan Shan, Nan Shi, Nv Shi, Na Shui, Nong Shang, Ning Shi, Niao Suan, Nan Song; all of which have different meanings. The word "'Bank" when translated into Chinese has many different meanings including storage, riverside, stacked, inclined flight etc. The combination of NS and Bank in the Domain Name <nsbank.club> therefore could mean many different things. NSBANK may also be the abbreviation for Northern Sea Bank, Northern Swimming Bank, Northern Sperm Bank, National Sperm Bank etc.
- The Respondent registered the Domain Name <nsbank.club> as it is the abbreviation for Nv Shen Bank which means in Chinese "The Goddess Treasury Club".
- AMEGY BANK has many different meanings in Chinese phonetically including "love me apartment", "love children gardens" etc.
- The Respondent registered the Domain Name <amegybank.club> meaning "love me apartment" as an additional domain name in relation to its preparation and launch of "The Goddess Treasury Club" under the Domain Name <nsbank.club>.
Rights and Legitimate Interests
- The ".club" gTLD was launched on May 7, 2014. The Respondent registered the Domain Names more than two years later. The Complainant could have taken advantage of the sunrise period to register its trade marks as domain names but did not do so.
- The Complainant's trade marks are not widely known.
- The Domain Names do not involve and affect the Complainant's business.
- The Respondent has registered the Domain Names through legitimate channels.
- The content of the proposed Websites and those of the Complainant are different as both are in different lines of business.
- Before being notified of the Complaint, the Respondent was preparing to use the Domain Names to create an online club. Because of the dispute over the Domain Names, the Respondent has not put up the proposed content for the club on the Websites.
- The Respondent never considered the Complainant's trade marks or trade mark confusion to seek some benefit when he registered the Domain Names.
Registration and Use in Bad Faith
- The Respondent, being a Chinese citizen, has never been to the Complainant's country. The information about the Complainant's trade marks was not available in the usual way.
- The Complainant had plenty of time to register its trade marks with the ".club" gTLD but chose not to do so.
- The Respondent registered the Domain Names for the purpose of creating a club website. It was not for the purpose of:
- selling, renting or otherwise transferring the Domain Names to the Complainant or to a competitor, for valuable consideration in excess of the Respondent's out-of-pocket costs directly related to the Domain Names;
- preventing the Complainant from reflecting the mark in a corresponding domain name. The Respondent has never engaged in such conduct;
- disrupting the business of a competitor since the Complainant is not a competitor as its business is completely unrelated to the Respondent. Further the Respondent did not know of the Complainant's trade marks at the time of registering the Domain Names;
- seeking trade mark confusion with the Complainant's trade marks.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) The Domain Names were registered and are being used in bad faith.
B. Preliminary Procedural Issue – Language of the Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the 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 proceedings. According to the information received from the Registrar, the language of the registration agreement is Chinese.
The Complainant submits that the language of the proceeding should be English. The Complainant contends that it is an organisation in the USA and conducts all of its business in English; it is unable to communicate in Chinese; the Domain Names are in English and therefore the Respondent is likely to be able to communicate in English; the Complainant will not be able to conduct the proceeding in Chinese without a great deal of additional expense and delay due to the need for translation (on top of what it has already had to spend to file and prosecute this Complaint in order to protect its trade marks) and it would not be fair to and would place an undue burden on the Complainant to have to conduct the proceeding in Chinese.
The Respondent submits that Chinese should be the language of the proceeding. The registration agreement is in Chinese. The Respondent does not understand English and the Complaint. This means that he will be unable to respond. The Respondent does not have the resources to pay for the Complaint to be translated.
In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties' ability to understand and use the proposed language, time and costs.
The Panel finds that the Websites had content in the English language. The Respondent's Response shows that he understands the Complaint which provides sufficient evidence to suggest the likely possibility that the Respondent is familiar with the English language. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.
In all the circumstances, the Panel therefore finds that the Respondent would not be prejudiced, should the decision be rendered in English. The Panel notes that all of the communications from the Center to the Parties were transmitted in both Chinese and English.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that:
(i) It will accept the filings on behalf of the Complainant in English; and
(ii) It will accept the filings on behalf of the Respondent in Chinese; and
(iii) It will render this decision in English.
C. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has rights to the AMEGY Trade Marks and the NBANK trade mark.
The threshold test for confusing similarity involves a comparison between the trade mark and the domain name itself to determine likelihood of Internet user confusion. The trade mark would generally be recognizable within the domain name. The Respondent's arguments in the Response under this head are not relevant.
In this case the Domain Names are identical to the Complainant's trade marks. It is accepted that the inclusion of the gTLD ".club" shall be disregarded for the purpose of assessment of confusing similarity.
The Panel finds that the Domain Names are identical or confusingly similar to trade marks in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled. The Complainant has established this element of the case.
D. Rights or Legitimate Interests
In relation to the second element of the UDRP, whilst the overall burden of proof rests with the Complainant, it is recognized that this could result in the impossible task of proving a negative. Hence, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such a prima facie case is made, the burden of production shifts to the respondent. The standard of proof required under the UDRP is "on balance". An asserting party needs to establish that it is more likely than not that the claimed fact is true.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers, or to tarnish the trade mark or service mark at issue.
The Panel after considering all the arguments made and evidence submitted on both sides finds that the Complainant has established a prima facie case which the Respondent has failed to rebut. The Respondent's account of his reason for choosing the two Domain Names identical to the Complainant's trade marks is too incredible to believe. The Respondent's choice of names for the alleged club or clubs he is setting up is targeted towards Chinese nationals given his explanation of the meaning of the names in Chinese pinyin. However this way of selecting a name by abbreviating English alphabets to reflect a Chinese name is highly unusual. Also the fact that both Domain Names are the registered trade marks of a banking association is too much of a coincidence. It appears to be much more a case of trying to come up with some justification for the registration of the Domain Names post complaint. Further no evidence has been submitted to show that this was in fact the intention when he registered the Domain Names or the preparation of the establishment of the clubs.
The Respondent has not provided evidence that he is commonly known by the Domain Names nor does he have any trade marks for the Domain Names. It is not a licensee of the Complainant nor in any way authorized to use the Domain Names.
The Respondent has not been able to show that he falls within paragraph 4(c)(iii) either. The reasons for choosing the Domain Names lack credibility.
For the above reasons, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names.
E. Registered and Used in Bad Faith
To succeed under the Policy, a complainant must show that the domain name has been both registered and used in bad faith. It is a conjunctive requirement in that both aspects must be established.
Registering and using two different trade marks of the same Complainant without its authorization is a strong indication to the Panel that the registration of the Domain Names was in bad faith. The explanations provided by the Respondent do not stand up. The Complainant's trade marks are not ordinary descriptive words – AMEGY has no obvious meaning and the combination of AMEGY and BANK clearly refers to the Complainant. Whilst it is true that NSBANK could be an abbreviation of many different combinations of words, the registration of <nsbank.club> as well as a domain name which comprises a trade mark which belongs to the same party is evidence that the Respondent was aware of the Complainant's trade marks. A search on the Internet would have revealed these two trade marks belonging to the Complainant. The Panel is satisfied that the Respondent must have been aware of the Complainant's Trade Marks when it registered the Domain Names. In the Panel's view this is clear evidence that the registration of the Domain Names was in bad faith.
The Panel also finds that the actual use of the Domain Names was in bad faith. The Complainant submits that the Websites contained offers for sale of the Domain Names. However the Panel was unable to find such offers for sale on the screen shots of the Websites. Nevertheless the Websites were set up to deliberately mislead Internet users that they are connected to, authorised by or affiliated to the Complainant. The use of Domain Names which are identical to the Complainant's trade marks is intended to attract searchers to the Respondent's websites by creating a likelihood of confusion in order to make visitors think that they are on the Complainant's legitimate website or that these websites are endorsed and sponsored by or affiliated to the Complainant. Such use amounts to use in bad faith. The Domain Names and the content of the Websites are calculated to confuse Internet users that the Respondent is an authorised franchisee, licensee or somehow connected with the Complainant when this is not the case. This shows an intention on the part of the Respondent to attract for commercial gain by confusing and misleading Internet users into believing that the Websites are authorised or endorsed by the Complainant.
The Panel therefore concludes that the Domain Names were registered and are being used in bad faith under paragraph 4(b)(iv) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <amegybank.club> and <nsbank.club> be transferred to the Complainant.
Date: January 19, 2017