WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swissquote Group Holding S.A. v. Yang Shi Yan
Case No. D2017-0211
1. The Parties
The Complainant is Swissquote Group Holding S.A. of Gland, Switzerland, represented by Nameshield, France.
The Respondent is Yang Shi Yan of Fushan, Guangdong, China.
2. The Domain Name and Registrar
The disputed domain name <swissquote-cn.com> is registered with HiChina Zhicheng Technology Ltd. (the “Registrar”).
3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 3, 2017. On February 3, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 7, 2017, 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 February 14, 2017, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On February 20, 2017, the Center noted the Complainant’s request (in the filed Complaint) for English to be the language of the proceeding.
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 (in Chinese and English) the Respondent of the Complaint, and the proceedings commenced on February 27, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 19, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 20, 2017.
The Center appointed Douglas Clark as the sole panelist in this matter on March 29, 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 Swiss provider of online financial and trading services. The Complainant is the registered proprietor of the trademark SWISSQUOTE and SWISSQUOTE and device. In its Complaint the Complainant provided evidence of International Registration no. 1132411 for SWISSQUOTE (covering Switzerland and the European Union), registered on August 20, 2012 and European Union Trademark no. 0742603 for SWISSQUOTE and device, registered on August 31, 2000.
The disputed domain name <swissquote-cn.com> was registered on September 9, 2016. The website under the disputed domain name does not resolve to any page.
5. Parties’ Contentions
Identical or confusingly similar
The Complainant argues that the disputed domain name <swissquote-cn.com> is made entirely up of the registered trademark SWISSQUOTE and the geographic description “cn” to which the generic Top-Level Domain (“gTLD”) “.com” has been added. It is therefore confusingly similar to the Complainant’s registered trademark SWISSQUOTE.
No rights or legitimate interests
The Complainant submits that the Respondent has not been known by the disputed domain name and the Respondent has no connection with the Complainant or any of its affiliates and has never sought or obtained any trademark registrations for “swissquote”.
Registered and used in bad faith
The Complainant submits that there is no doubt that before registration of the disputed domain name the Respondent knew of the Complainant’s rights in the SWISSQUOTE trademark and registered the disputed domain name to prevent the Complainant from reflecting its name in the domain name as well as to promote its own business on its website (once established).
The Respondent did not respond to the Complainant’s contentions.
6. Discussion and Findings
6.1. Language of the Proceeding
The language of the Registration Agreement is in Chinese. Paragraph 11(a) of the Rules provides that:
“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.”
The Complainant requested the language of the proceeding to be English on grounds that included that the Complainant did not understand Chinese, the Respondent had chosen to include English words in the domain name and it would have to incur extra expense to translate the Complaint into Chinese.
The Respondent did not respond to this request.
The Center made a preliminary determination to:
1) accept the Complaint as filed in English;
2) accept a Response in either English or Chinese;
3) appoint a Panel familiar with both languages mentioned above, if available.
The final determination of the language of the proceeding lies with this Panel.
The Respondent did not respond to the Center’s preliminary determination.
This Panel decided in Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191, that a respondent’s failure to respond to a preliminary determination by the Center as to the language of the proceeding “should, in general, be a strong factor to allow the Panel to decide to proceed in favour of the language of the Complaint”.
As set out below, the Panel considers the merits of the case to be strongly in favour of the Complainant. Translating the Complaint would cause unnecessary delays and expense. These factors lead the Panel to determine to follow the Center’s preliminary determination. As the only pleading before the Panel is in English, the Panel will render its decision in English.
6.2. Substantive Issues
A. Identical or Confusingly Similar
The disputed domain name <swissquote-cn.com> is made up of the registered trademark SWISSQUOTE, the geographic description “cn” and the gTLD “.com”. The disputed domain name is confusingly similar to the registered trademark SWISSQUOTE.
The Panel notes that the Complainant does not have a registered trademark for SWISSQUOTE in China.
The ownership of a trademark is generally considered to be a threshold standing issue. The location of the trademark, its date of registration (or first use) and the goods and/or services for which it is registered, are all irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP. Such factors may, however, bear on a panel’s determination whether the respondent has registered and used the domain name in bad faith under the third element of the UDRP. (See paragraph 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”))
The first part of paragraph 4(a) of the Policy is therefore satisfied.
B. Rights or Legitimate Interests
The Respondent has not responded to the Complaint to assert any rights or legitimate interests. Paragraph 2.1 of the WIPO Overview 2.0 provides:
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.”
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
The second part of paragraph 4(a) of the Policy is therefore satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b)(iv) of the Policy in relation to whether a registrant has registered and is using a domain name in bad faith provides:
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”
The registration of the disputed domain name can only have been with the intention to attract consumers to the Respondent’s website to promote sales of the Respondent’s products.
While the disputed domain name has not been used, this does not as such prevent a finding of bad faith (see paragraph 3.2 of the WIPO Overview 2.0). The disputed domain name comprises of the whole of the Complainant’s mark plus the geographic description “cn”. The Complainant’s name has no apparent meaning in Chinese. The Panel considers that it is very likely that the Respondent knew of the Complainant especially given the Complainant’s reputation and registered the disputed domain name to prevent the Complainant from reflecting its name in the same. The Panel finds that the Respondent’s registration and passive holding of the disputed domain name in the circumstances of the present proceeding accounts to registration and use of the disputed domain name in bad faith.
The third part of paragraph 4(a) of the Policy is therefore satisfied.
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, <swissquote-cn.com>, be transferred to the Complainant.
Date: April 8, 2017