WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ally Financial Inc. v. Zhao Hong
Case No. D2018-1880-
1. The Parties
The Complainant is Ally Financial Inc. of Detroit, Michigan, United States of America (“United States”), represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Zhao Hong of Qingdao, China, self-represented.
2. The Domain Names and Registrar
The disputed domain names <allybank.fun>, <allybank.ltd>, <allybank.online>, <allybank.site>, <allybank.store>, and <allybank.top> (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 August 17, 2018. On August 17, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with three of the Domain Names, <allybank.online> <allybank.site> and <allybank.top>. On August 20, 2018, 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 August 21, 2018, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant submitted an amended Complaint on August 23, 2018, in which it requested that English be the language of the proceeding. The Respondent requested that Chinese be the language of the proceeding on August 26, 2018.
On August 31, 2018, the Complainant submitted an amended Complaint involving three additional Domain Names, <allybank.fun>, <allybank.store> and <allybank.ltd>.
The Center verified that the Complaint together with the amended Complaints 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 in English and Chinese of the Complaint, and the proceedings commenced on September 7, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 27, 2018. The Respondent sent email communications on September 27 and October 3, 2018. The proceeding was suspended from October 3, 2018 and re-instituted on October 29, 2018 according to the Complainant’s request.
The Center appointed Karen Fong as the sole panelist in this matter on November 1, 2018. 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 was founded in 1919 by General Motors Corporation as the General Motors Acceptance Corporation (GMAC) to be a provider of financing to automotive customers. Over the years, the company expanded its services to include insurance, online banking, investment services, mortgage operations, and commercial finance. In 2009, GMAC rebranded itself as Ally Financial Inc. and became a public company (The New York Stock Exchange: ALLY). The Complainant is one of the top auto lenders in the United States by volume and reported full year net income of USD 1.6 billion for 2016 for its online banking (Ally Bank), vehicle financing and dealer services (Ally Auto), investing and wealth management (Ally Invest) and commercial finance (Ally Corporate Finance). Ally Bank surpasses USD 71 billion in customer deposits.
Ally Auto serves 18,000 dealers and more than 4 million of their customers in the United States Ally Invest serves 250,000 customer accounts that total USD 4.7 billion in assets and growing. Ally Corporate Finance had transactions ranging from USD 15 million to over USD 250 million.
The Complainant’s trade marks ALLY and ALLY BANK are registered as trade marks in various jurisdictions including the United States and China. The earliest trade mark submitted in evidence for ALLY in class 36 was registered in China under Trade Mark Registration No. G1002360 on May 8, 2009 and for ALLY BANK in class 36 was registered in the United States under Trade Mark Registration No. 3722309 on December 8, 2009 (the “Trade Marks”).
The Complainant offers a wide range of services related to financial services under the ALLY brand. These services include banking and financing services; mortgage banking and lending services; investment services; debit and credit card services, financing of vehicles; online auctions for used vehicles. By virtue of such extensive use, ALLY could be considered a distinctive and well-known mark.
The Complainant has a strong Internet presence through its websites and owns several domain names, including <ally.com> and <allybank.com>. The Complainant’s website connected to <ally.com> received over 2.5 million visitors in May 2016 and has a “Compete.com” rank of 978. “Alexa.com” ranks “www.ally.com” as the 609th most popular website in the United States, and it is ranked 2,871st globally.
The Respondent who is based in China registered the Domain Names on the following dates:
April 27, 2018
May 30, 2018
May 30, 2018
August 20, 2018
August 20, 2018
August 20, 2018
The Domain Names are not connected to any active websites.
On May 16 and 30, 2018, the Complainant’s representatives sent cease and desist letters to the Respondent in connection to <allybank.top>. The Respondent registered two of the Domain Names on May 30, 2018 after receipt of the Complainant’s letters. The Respondent responded to the letters on June 2, 2018. Following the filing of the Complaint on August 17, 2018, the Respondent registered the further three Domain Names. There was an attempt to settle the proceeding but this failed.
The Respondent owns other trade mark registrations which comprise well-known trade marks of third parties including GOOGLE, CHEVROLET, ALIPAY.
5. Parties’ Contentions
The Complainant contends that the Domain Names are confusingly similar to the Trade Marks, that the Respondent has no rights or legitimate interests with respect to the Domain Names, and that the Domain Names were registered and are being used in bad faith. The Complainant requests transfer of the Domain Name.
The Respondent contends as follows:
a) The registration price of the Domain Names is less than USD 2 and there are a number of generic
Top-Level Domain (“gTLD”) for ALLYBANK which are still available. It was the Respondent’s intention to show that he could give away the Domain Names but the Complainant filed the Complaint prematurely;
b) Brand owners choose not to buy the Domain Names which incorporate their trade marks but instead use the UDRP which will benefit the service providers to the detriment of brand owners;
c) The large number of new gTLDS have been geared towards increasing the profits of service providers but to the detriment of brand owners including him and the rest of the domain name industry;
d) One of the Domain Names is not owned by him (the whois information was not changed in time) and three of them were registered late;
e) He is prepared to do mediation and make these following concessions – give five of the Domain Names to the Complainant but will only transfer <allybank.top> for USD 500 as the Domain Name does not belong to him and he needs to compensate the real holder.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that:
(i) The Domain Names are identical or confusingly similar to trade marks or service marks 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 being used in bad faith.
B. 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 proceeding. According to the information received from the Registrar, the language of the Registration Agreements for the Domain Names is Chinese.
The Complainant submits that the language of the proceeding should be English for the following reasons:
a) The Complainant is unable to communicate in Chinese and translation of the Complainant would unfairly disadvantage and burden the Complainant and delay the proceedings and adjudication of this matter;
b) Such additional delay puts the Complainant and its customers at risk since the Respondent is engaging in a pattern of cybersquatting;
c) The Domain Names comprise of Latin characters;
d) The term ALLY BANK does not have any specific meaning in the Chinese language;
e) The Respondent replied to cease and desist letters sent to him in English. He did not indicate that he did not understand English.
The Respondent submits that the language of the proceeding should be Chinese for the following reasons:
a) The Domain Names are registered with a Chinese registrar and the language of the registration agreement is Chinese;
b) The Respondent has not agreed with the Complainant that English should be the language of the proceeding;
c) He is a Chinese citizen living in China and knows a limited number of English words and therefore cannot understand the Complaint.
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 notes that the Respondent did respond to the Complainant’s cease and desist letter and filed a response to the Complainant 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;
(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 Trade Marks. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the trade mark and the domain name to determine whether the domain name is confusingly similar to the trade mark. The test involves a side-by-side comparison of the domain name and the textual components of the relevant trade mark to assess whether the mark is recognizable within the domain name.
In this case the Domain Names contain the Complainant’s distinctive Trade Mark in its entirety. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore gTLD which in this case are “.online”, “.site”, “.top”, “.fun”, “.ltd”, “.store”. It is viewed as a standard registration requirement.
The Panel finds that the Domain Names are identical to trade marks in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
D. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in the 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 trade mark 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.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. 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 relevant evidence the complainant is deemed to have satisfied the second element.
The Complainant submits that the Respondent is not commonly known by the Trade Marks or the Domain Names. The Complainant has not licensed, authorized or otherwise permitted the Respondent to use the Trade Marks or apply for any domain names that incorporate the Trade Marks. There is no evidence of any use or demonstrable preparation to use the Domain Names in connection with any bona fide offering of goods or services or legitimate noncommercial fair use under the Policy.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent’s reason for registering the Domain Name does not sound plausible and certainly does not amount to rights or legitimate interests. The Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Names.
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, the Complainant must show that the Domain Names have been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent must have been aware of the Trade Marks when he registered the Domain Names. It is implausible that he was unaware of the Complainant when he registered the Domain Names especially since the Trade Marks have no other dictionary significance and they are also well known.
“Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.”
Further, the registration of five of the Domain Names was done after the Respondent received the cease and desist letters from the Complainant which is direct evidence that the Respondent was aware of the Trade Marks.
The fact that there is a clear absence of rights or legitimate interests coupled with no credible explanation for the Respondent’s choice of the Domain Names is also a significant factor to consider (as stated in section 3.2.1 of WIPO Overview 3.0). In light of the above, the Panel finds that registration is in bad faith.
The fact that the Domain Names are resolving to inactive websites does not prevent a finding of bad faith under the passive holding principles which are laid out in section 3.3 of the WIPO Overview 3.0. In this case the totality of the circumstances to be considered includes the fame of the Trade Marks, the Respondent’s admission that his intention for registering the Domain Names was to transfer the Domain Names back to the Complainant without payment to show the inadequate problems of the introduction of the new gTLDS, and the implausibility of any good faith use for which the Domain Names can be put to.
Further the Respondent indicated that he was prepared to sell one of the Domain Names for USD 500 because the Domain Name did not actually belong to him and he had to compensate the owner. This is not a credible explanation. The Registrar confirmed that all six Domain Names belong to the Respondent. The registration of the Domain Names together with the attempt to sell one of them for a sum far in excess of its out-of-pocket costs relating to the Domain Names, which is the case here, is bad faith under paragraph 4(b)(i).
Further, the Respondent is the owner of domain names which comprise at least three different well-known trade marks owned by three brand owners. One of the examples of a bad faith registration is contained in paragraph 4(b)(ii) of the Policy (“you have registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided you have engaged in a pattern of such conduct”). This is part of a flagrant pattern of conduct as the Respondent is engaged in a pattern of registration of a series of well-known trade marks.
Therefore the registration and use of the Domain Names are in bad faith.
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 <allybank.fun>, <allybank.ltd>, <allybank.online>, <allybank.site>, <allybank.store>, and <allybank.top> be transferred to the Complainant.
Date: November 16, 2018