WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Utilities Employees Credit Union v. 杨智超 (Yang Zhi Chao)

Case No. D2021-3096

1. The Parties

The Complainant is Utilities Employees Credit Union, United States of America (“United States”), represented by Styskal, Wiese & Melchione, LLP, United States.

The Respondent is 杨智超 (Yang Zhi Chao), China.

2. The Domain Name and Registrar

The disputed domain name <utilitiesemployeescreditunion.com> is registered with DNSPod, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on September 20, 2021. On September 21, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 26, 2021, 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 29, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint in English on October 2, 2021.

On September 29, 2021, the Center transmitted another email communication to the Parties in English and Chinese regarding the language of the proceeding. On October 2, 2021, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.

The Center verified that the Complaint together with the 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 proceeding commenced on October 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 25, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 27, 2021.

The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on November 23, 2021. 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

A. Complainant

The Complainant is a Pennsylvania state-chartered credit union, founded in Pennsylvania in the United States in 1934.

The Complainant has continuously used its name UTILITIES EMPLOYEES CREDIT UNION (the “Trade Mark”) since 1947 in respect of its financial services, and claims common law or unregistered trade mark rights therein by virtue of such use. The Complainant operates a website at the domain name <uecu.org>.

The Complainant is also the applicant for registration of the Trade Mark in the United States, under application No. 90872425 filed on August 9, 2021, claiming a first use in commerce of January 1, 1947.

B. Respondent

The Respondent is apparently an individual resident in China.

C. The Disputed Domain Name

The disputed domain name was registered on October 15, 2020.

D. The Website at the Disputed Domain Name

The disputed domain name is resolved to an English language website providing sponsored links to financial services related websites, including websites relating to the Complainant’s competitors (the “Website”).

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to the Trade Mark; the Respondent has no rights or legitimate interests in respect of the disputed domain name; and the disputed domain name has been registered and is being used in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1. Language of the Proceeding

The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11(a), in the absence of an agreement between the Parties, or unless specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement.

Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding, in order to ensure fairness to the Parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the Parties and undue delay to the proceeding.

The Complainant has requested that the language of the proceeding be English, for several reasons, including the following: (1) the Website is an English language website; (2) the disputed domain name is comprised of English words rather than Chinese characters; and (3) should the Complainant be required to translate the Complaint into Chinese it would cause great burden and expense to the Complainant and unduly delay the proceedings.

The Respondent did not file a response and did not file any submissions with respect to the language of the proceeding.

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 there is sufficient evidence to suggest the likely possibility that the Respondent is conversant in the English language. The Panel is also mindful of the fact that the Respondent chose not to reply to the Center’s emails regarding the language of the proceeding and notification of the Complaint which were sent in both Chinese and English as well as the need to ensure the proceeding is conducted in a timely and cost effective manner.

In all the circumstances, the Panel therefore finds it is not foreseeable that the Respondent would be prejudiced, should English be adopted as the language of the proceeding.

Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.

6.2. Substantive Elements of the Policy

The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail.

A. Identical or Confusingly Similar

The Complainant asserts common law rights in the Trade Mark and relies on its continuous use of the Trade Mark in respect of its operations since 1947.

The Complainant has filed with the Amended Complaint copies of (1) the minutes of the Complainant’s 1947 annual meeting of stockholders; and (2) the Complainant’s Articles of Amendment, evidencing the Complainant’s adoption of the Trade Mark, as well as details of its pending application for registration of the Trade Mark, claiming a date of first use of 1947.

The Panel finds that, in all the circumstances, the Complainant has submitted sufficient evidence to establish rights in the Trade Mark acquired through use.

Disregarding the generic Top-Level Domain (“gTLD”) “.com”, the disputed domain name is identical to the Trade Mark.

The Panel therefore finds that the disputed domain name is identical to the Trade Mark.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a disputed domain name:

(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 trade mark 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 trade mark or service mark at issue.

The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption.

The Respondent has failed to show that he has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name has been used in connection with a bona fide offering of goods or services. To the contrary, the disputed domain name has been resolved to the Website, containing pay-per-click links to websites relating to financial services, including those of the Complainant’s competitors, for commercial gain.

There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name; and there has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.

In addition, the Panel notes the nature of the disputed domain name, which carries a high risk of implied association (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, section 2.5.1).

The Panel finds that the Respondent has failed to produce any evidence to rebut the Complainant’s prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Respondent lacks rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

In light of the evidence of the Respondent’s use of the Website in the manner described above, the Panel finds the requisite element of bad faith has been satisfied, under paragraph 4(b)(iv) of the Policy.

In addition, the Complainant has provided a copy of a Reverse WhoIs Lookup showing that the Respondent had registered multiple domain names containing third-party trade marks (like <bankbankofamerica.com>, <barclaycardeus.com>, <cridtkarma.com>, among others) which further affirms the Respondent’s bad faith.

For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith.

7. Decision

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 <utilitiesemployeescreditunion.com> be transferred to the Complainant.

Sebastian M.W. Hughes
Sole Panelist
Dated: December 7, 2021