WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Citco Group Limited v. li lin
Case No. D2019-2287
1. The Parties
The Complainant is The Citco Group Limited, Cayman Islands, United Kingdom, represented by Stobbs, United Kingdom.
The Respondent is li lin, China.
2. The Domain Name and Registrar
The disputed domain name <ccitco.com> is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 19, 2019. 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 September 24, 2019, 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 September 24, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same day, the Center also transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant filed an amended Complaint in English and requested that English be the language of the proceeding on September 25, 2019. The Respondent did not comment on the language of the proceeding.
The Center verified that the Complaint amended 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 in English and Chinese of the Complaint, and the proceedings commenced on October 1, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 21, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 22, 2019.
The Center appointed Matthew Kennedy as the sole panelist in this matter on October 30, 2019. 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 and its subsidiaries provide financial advisory, computer software, accountancy, investment, insurance and other services. The name “citco” was derived from the initials of the Complainant’s former name Curacao International Trust Company. The Complainant has obtained multiple trademark registrations, including international trademark registration number 766347 for CITCO, designating multiple jurisdictions, including China, registered on March 27, 2001, specifying services in classes 35, 36 and 42 (but protected in China in class 42 only); and Chinese trademark registration number 3395710 for CITCO in a particular script, registered on April 28, 2010, and specifying services in class 36. Both those trademark registrations remain current. The Complainant has also registered over 280 domain names comprising the element “citco” and different Top-Level Domain (“TLD”) suffixes. One of its domain names is <citco.com>, which the Complainant uses in connection with its official website where it provides information about itself and its services.
The Respondent is an individual resident in China.
The disputed domain name was registered on June 22, 2019. It resolves to a website in Chinese that prominently displays what appears to be an advertisement for an Internet spidering service (i.e., a webcrawler), together with news clippings.
5. Parties’ Contentions
The disputed domain name is clearly confusingly similar to the CITCO mark in which the Complainant has extensive earlier rights. The disputed domain name simply comprises that mark with an additional letter “c”.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. The Respondent has never (either as an individual or business) to the best of the Complainant’s knowledge, been known by the disputed domain name.
The disputed domain name was registered and is being used in bad faith. There is no reason for the Respondent to register the disputed domain name except to refer to the Complainant, and/or to benefit in some way from the Complainant’s CITCO mark, or to block the Complainant from registering its mark in that domain. It is also apparent that the Respondent was acting in bad faith by registering a domain name that contains the identical element CITCO with the additional letter “c”. Even with that addition, the disputed domain name immediately suggests a connection to the Complainant due to its high-profile reputation within the finance industry.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Language of the Proceeding
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 Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.
The Complainant requests that English be the language of the proceeding. Its main arguments are that the Respondent has registered other domain names that include English words and western brand names, which demonstrates an ability to understand and engage with the English language while requiring the Complainant to submit its Complaint in Chinese would be overly onerous and the translation of all documents would result in incurring substantial costs in the process.
Paragraphs 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the Parties. See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293.
The Panel observes that the Complaint and amended Complaint were filed in English. Despite having received noticed of this proceeding and the email regarding the language of the proceeding in both Chinese and English, the Respondent has not expressed any interest in responding to the Complaint or otherwise participating in this proceeding. Therefore, the Panel considers that requiring the Complainant to translate the Complaint from English into Chinese would create an undue burden and delay.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. The Panel would have accepted a Response in Chinese, but none was filed.
6.2 Substantive Issues
Paragraph 4(a) of the Policy provides that the complainant must prove each of the following elements in respect of each disputed domain name:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Based on the evidence submitted, the Panel finds that the Complainant has rights in the CITCO trademark.
The disputed domain name wholly incorporates the CITCO trademark. It also includes an additional “c” before the mark. However, this difference is no more than a repetition of the mark’s initial letter, which is an obvious misspelling, a practice commonly known as “typosquatting”. Therefore, the Panel does not consider this typographical difference capable of dispelling confusing similarity with the Complainant’s trademark. See Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775; and Vente-privee.com, Vente-privee.com IP S.à.r.l. v. Whois Agent / Gustavo Winchester, WIPO Case No. D2014-0796.
The disputed domain name also includes the generic TLD (“gTLD”) suffix “.com”. A gTLD suffix may generally be disregarded in the comparison between a domain name and a trademark for the purposes of the Policy. See LEGO Juris A/S v. Chen Yong, WIPO Case No. D2009-1611; Dr. Ing. h.c. F. Porsche AG v. zhanglei, WIPO Case No. D2014-0080.
Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
As regards the first circumstance set out above, the disputed domain name resolves to a website that prominently displays what appears to be an advertisement for a spidering service, as well as news clippings. Nothing in the content of the website has any apparent connection to the disputed domain name, which is confusingly similar to the Complainant’s CITCO trademark and an obvious misspelling of the domain name used in connection with the Complainant’s official website. The Panel finds that this is not a use of the disputed domain name in connection with a bona fide offering of goods or services within the terms of paragraph 4(c)(i) of the Policy.
As regards the second circumstance, the Registrar’s confirmation indicates that the Respondent’s name is “li lin”, not “ccitco”. There is no evidence that the Respondent has been commonly known by the disputed domain name within the terms of paragraph 4(c)(ii) of the Policy.
As regards the third circumstance, the disputed domain name resolves to a website apparently displaying advertising for a commercial service. That is not a legitimate noncommercial or fair use within the terms of paragraph 4(c)(iii) of the Policy.
In view of the above circumstances, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent did not rebut that prima facie case because he did not respond to the Complaint.
Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows:
“(iv) by using the [disputed] domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] 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 [the Respondent’s] web site or location or of a product or service on [the Respondent’s] web site or location.”
The disputed domain name was registered in 2019, years after the Complainant registered its trademarks. The disputed domain name wholly incorporates the Complainant’s CITCO trademark as its only distinctive element and is an obvious misspelling of the domain name used in connection with the Complainant’s official website. Nothing in the Respondent’s website content has any apparent connection to the disputed domain name. Indeed, the disputed domain name has no apparent meaning other than as an approximation of the Complainant’s trademark and domain name. This all gives the Panel reason to find that the Respondent registered the disputed domain name in bad faith.
The disputed domain name is used to attract Internet users who misspell the domain name of the Complainant’s official website by creating a likelihood of confusion with the Complainant’s CITCO trademark as to the source, sponsorship, affiliation, or endorsement of the website to which the disputed domain name resolves. This use is intentional and for the commercial gain of the Respondent himself, or the provider of the what-appears-to-be spidering service advertised on his website, or both. In each of these scenarios, the facts fall within the circumstance described in paragraph 4(b)(iv) of the Policy.
Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) 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 disputed domain name <ccitco.com> be transferred to the Complainant.
Date: November 3, 2019