WIPO Domain Name Decision: D2006-0432

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Finter Bank Zurich v. Shumin Peng

Case No. D2006-0432

1. The Parties

The Complainant is Finter Bank Zurich, Zürich, Switzerland, represented by CMS von Erlach Henrici, Switzerland.

The Respondent is Shumin Peng, Guangdong, China.

2. The Domain Name and Registrar

The disputed domain name <thefinter.com> is registered with Bizcn.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 5, 2006. On April 7, 2006, the Center transmitted by email to Bizcn.com, Inc. a request for registrar verification in connection with the domain name at issue. On April 21, 2006, Bizcn.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an argument to request English to be the language of the proceedings. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 25, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was May 15, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 17, 2006.

The Center appointed Susanna H.S. Leong as the sole panelist in this matter on May 29, 2006. 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 Finter Bank Zurich, a well-known private banking institution in Switzerland. The Complainant is the registered proprietor of the following trade marks:

(a) The Swiss trade mark no. P-418617, FINTER BANK ZURICH, filed on March 14, 1995, and registered on September 12, 1995.

(b) The Swiss picture-combination trade mark no. P-418634, filed on March 14, 1995, and registered on September 12, 1995.

(d) The international trade mark no. 645522 FINTER BANK ZURICH, filed on March 14, 1995, and registered on September 12, 1995, for Austria, the Benelux-States, Germany, Spain, France, Liechtenstein and Portugal.

(e) The international picture-combination trade mark no. 645521, filed on March 14, 1995, and registered on September 12, 1995, for Austria, the Benelux-States, Germany, Spain, France, Liechtenstein and Portugal.

All five trade marks are registered for class 35 (advertising; business management; business administration; office functions) and class 36 (Insurance; financial affairs; monetary affairs; real estate affairs).

The Complainant is the registered owner of the domain name <finter.ch> and its trade mark FINTER BANK ZURICH is prominently used on the website. The disputed domain name resolves onto a website in which the Respondent has presented itself as the FINTER BANK ZURICH. The setting of the Respondent’s website is identical to that of the Complainant’s. In fact, the Respondent has copied all of the information about FINTER BANK ZURICH and its services from the Complainant’s website and pasted the information in verbatim onto his own website. The only change concerns the contact information, whereas the original FINTER BANK ZURICH provides phone and fax numbers as well as an email address for each of its locations, the Respondent’s domain name deleted this information and replaced it with different email addresses.

5. Parties’ Contentions

A. Complainant

The Complainant’s main contentions are summarized as follows:

Firstly, the Complainant contends that the disputed domain name <thefinter.com> is identical or confusingly similar to trade marks in which the Complainant has rights. The Complainant contends that the disputed domain name <thefinter.com> is not only similar to the Complainant’s domain <finter.ch> and identical to its website but also it is very similar to the Complainant’s trademark FINTER BANK ZURICH. It is the Complainant’s assertion that the choice of the Respondent’s domain name is obviously aimed at causing confusion. The Complainant has adduced evidence to prove that it is the registered trade mark owner of FINTER BANK ZURICH in Switzerland and in many other countries in the world. The Complainant points out that the disputed domain name <thefinter.com> consists of the words “the” and “finter.” The Respondent has thus used the important part in the Complainant’s trade mark FINTER BANK ZURICH in his domain name. The English word “the” does not provide any specification or sufficient distinction from the Complainant and its trade mark FINTER BANK ZURICH. In fact, the Complainant asserts that the Respondent is obviously attempting to imply that the disputed domain name is just another domain name in order to reach the website of the Complainant. It is an undisputed fact that the Respondent does not own a real bank by the name “Finter Bank Zurich” or “TheFinter” in Guangzhou or anywhere else in China. The Complainant is the only bank which uses “Finter” as part of its trade mark. Therefore, the Respondent by incorporating “Finter” as part of its domain name and by reproducing the contents of the Complainant’s website in his own website is aiming at getting close to the Complainant’s trade mark FINTER BANK ZURICH and consequently causing the erroneous assumption among intended customers that the disputed domain name is part of the genuine FINTER BANK ZURICH. Considering all the circumstances, the Complainant asserts that there is high likelihood of bank customers erroneously assuming a connection of the Respondent’s fraudulent website to the Complainant and its trade mark FINTER BANK ZURICH and there is no doubt that the disputed domain name causes confusion with the Complainant’s trade mark.

Secondly, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the domain name in question. The Complainant proves with documentation that it is the registered owner of the trade mark FINTER BANK ZURICH in Switzerland and in many other countries. The Respondent is neither a licensee of the Complainant nor is otherwise allowed to use the trade mark FINTER BANK ZURICH or parts of it. There is no indication whatsoever that the Respondent is commonly known by the disputed domain name and/or is using the domain name in connection with a bona fide offering of goods or services. In fact, to the contrary, there is evidence which shows that the Respondent, by using a misleading domain name and by copying the content of the Complainant’s website, is trying to mislead, confuse and divert consumers on the Internet.

Thirdly, the Complainant asserts that the disputed domain name was registered and is being used in bad faith on the following grounds:

(a) The Complainant is a bank incorporated in Switzerland specializing in private banking services and is the genuine Finter Bank Zurich. The Complainant’s website is found under the domain name <finter.ch>. The Respondent has similarly claimed to be Finter Bank Zurich under the disputed domain name <thefinter.com> which is completely untrue.

(b) The Respondent’s bank does not exist and the Complainant was unable to retrieve any information about such an asserted banking institution.

(c) The non-existence of the Respondent’s bank is confirmed by the fact that the city of Guangzhou, Guangdong, China is totally different from the alleged seat of Finter Bank Zurich which is supposed to be in Zurich, Switzerland. A genuine bank whose business is regulated by state authorities would indicate its real business address and not the mere name of an individual “Shumin Peng” in the city of Guangzhou, China without any street or building numbers.

(d) The Complainant asserts that the disputed domain name is not a real bank but a part of a scheme in order to confuse and divert the customers of the Complainant. This is evident from the fact that the Respondent has copied and pasted word for word the contents of the Complainant’s website thereby trying to create the impression that the disputed domain name is just another domain name registered by the Complainant and provides an alternative route to reach the Complainant’s website. The Complainant’s assertion that the Respondent intends to confuse, divert and defraud intended customers of the Complainant is further supported by a recent report filed by one of the Complainant’s customer. The Complainant’s customer has received a suspicious email from one “Mr Steve Malone” informing the customer that a substantial amount of money has been transferred to the Finter Bank Zurich and requesting the payment of a sum of monies before the alleged funds could be released. The Complainant contends that the request for payment of such monies is part of a scheme known as the “Advance Fee Fraud” that involves the basic technique8 of convincing a victim that he is going to receive a large reward in return for little or no effort on their part. Once the victim has provided his/her banking information, the fraudsters will reveal that various fees must be paid before the victim can access the funds that he/she believes are in his/her bank account. It is clear that the disputed domain name has been registered for fraudulent purposes only.

(e) The Complainant also pointed out that there were identical fraudulent activities with the domain names <finterswiss.com> and <finterswis.com>. The Complainant has filed complaints with WIPO with regard to these domain names. Although these domain names are registered by different individuals, the Complainant believed that it is highly likely that the same criminals are responsible for the fraud with all three domain names including the disputed domain name in this proceeding.

In conclusion, the Complainant asserts that the Respondent with the disputed domain name is not a real bank but intentionally attempts to attract for commercial gain and fraud potential Internet users of the Complainant to its website, by creating a likelihood of confusion with the Complainant’s trade mark as to the source, sponsorship, affiliation and endorsement of the Respondent’s website and the banking services offered on such a website. All of the foregoing grounds are evidence that the disputed domain name is neither registered nor is being used in good faith.

B. Respondent

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

6. Discussion and Findings

6.1 Language of the Proceedings

The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. The Complaint was submitted in the English language and accordingly, the Center notified the Complainant of the deficiency of the Complaint on April 25, 2006. In response to the Center’s notification, the Complainant has submitted the Argument to Request English to be the Language of Proceedings.

The Complainant submitted the following arguments on the issue of the language of the proceedings:

(a) The disputed domain name is English and it consists of the words “the” and “finter.” Both words have nothing to do with China or languages spoken in China. The Complainant asserts that “the” is an English word and “finter” is the most important part of the Complainant’s trade mark FINTER BANK ZURICH. The fact that the domain name is English was considered to be relevant by the panels in Credit Suisse Group v. Credit Suisse Group, WIPO Case No. D2005-0213 and Zurich Insurance Company v. Shi Wang, WIPO Case No. D2005-0712. Both panels held that English instead of Chinese should be the language of the administrative proceedings.

(b) The disputed domain name resolves onto a website under the name of FINTER BANK ZURICH which is completely in English. There is neither a single word in Chinese nor any reference to China. In view of the fact that the Respondent presents itself as a Swiss bank with seat and offices in Switzerland on a completely English website, the Complainant concludes that the Respondent does not only speak Chinese but is also very familiar with the English language. The panel in Danisco A/S and Genencor International, Inc. v. Bong-Gyu Jeong, WIPO Case No. D2005-0973 accepted the fact the whole content of the website in English as an appropriate reason to conduct the proceedings in English instead of the Korean language.

(c) The Respondent has copied all the information about the FINTER BANK ZURICH and its services from “www.finter.ch” and has pasted the information in verbatim onto his own website. However, the Respondent has made changes to the information copied in particular the contact information. The Complainant asserts that the fact that the Respondent is able to make these changes clearly shows that the Respondent is fluent in English.

(d) The Respondent has contacted potential victims via emails in English. This confirms that the Respondent is proficient in English.

(e) Furthermore, a false “Account Information” has been provided for on “www.thefinter.com” in English. This once again confirms the Respondent is proficient in English.

(f) All exhibits of the Complaint are in English and thus, English is the reasonable and appropriate language of this administrative proceeding.

(i) The Panel’s Discretion under the Policy

Paragraph 11 of the Rules provides:

“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.”

Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.

(ii) The Circumstances of this Case

One important consideration is the issue of fairness to both parties in their abilities to prepare the necessary documents for this proceeding and also to respond adequately to these documents when they are served upon the parties. The Panel is satisfied that the Complainant has taken all reasonable steps to bring the present proceeding to the Respondent’s attention. The Respondent has not responded to the Complainant’s communications and thus, it was not possible for the Complainant to come to an agreement on the issue of the language of the proceeding with the Respondent.

In particular, the Panel notes that the material facts of this proceeding are generated in the English language: the disputed domain name, the language of the Respondent’s and the Complainant’s websites, the services provided in the websites etc. On record, the Respondent is Chinese and is thus not a native English speaker but the Panel finds that persuasive evidence has been adduced by the Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. The Respondent has then been notified of the Complaint and its contents and the Center, on its email of April 25, 2006, gave the Respondent the choice to submit a response on English or Chinese. However, the Respondent has failed to respond to the Complainant’s contentions.

After considering the circumstances of the present case, the Panel decides that the proceeding should be English.

6.2 Substantive Elements of the Policy

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must establish that each of the three following elements is satisfied:

1. the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

2. the Respondent has no rights or legitimate interests in respect of the domain name; and

3. the domain name has been registered and is being used in bad faith.

Paragraph 4(a) of the Policy clearly states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied in this proceeding.

Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.

On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Complainant has produced substantial evidence to demonstrate that it is the registered owner of the trade mark FINTER BANK ZURICH in Switzerland and in many countries throughout the world. The Panel accepts the evidence adduced by the Complainant and finds that the Complainant has trade mark rights in the mark FINTER BANK ZURICH.

The disputed domain name comprises (a) an exact reproduction of one portion i.e. “finter” of the Complainant’s trademark FINTER BANK ZURICH and (b) the English word “the” placed in front of the word “finter.” In assessing the degree of similarity between the Complainant’s mark and the disputed domain name, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between the Complainant’s mark and the disputed domain name is to be considered from the perspective of the average consumer of the goods or services concerned and in this case, the average consumer is the Internet user seeking to purchase or download the Complainant’s private banking services. The “finter” portion of the Complainant’s FINTER BANK ZURICH mark is a word with no descriptive significance to the services offered under it. It is a highly distinctive portion of the Complainant’s mark and it has been reproduced in its entirety in the disputed domain name. The Panel finds that the “finter” portion is the most prominent part of the disputed domain name which will attract consumers’ attention. The Panel accepts the Complainant’s contention that the addition of the English word “the” does not provide any specification or sufficient distinction from the Complainant or its trademark FINTER BANK ZURICH. The Panel finds that the addition of the English word “the” to the word “Finter” does not serve to distinguish it from the Complainant’s FINTER BANK ZURICH mark. In fact, the Panel finds that the addition of the English word “the” serves to emphasize that the Respondent’s domain name is the website for Finter Bank Zurich which increases the credibility and genuineness of the disputed domain name thereby heightening the confusion of the Internet users.

Bearing in mind in particular the distinctive character of the word “Finter” in the FINTER BANK ZURICH mark; the dominant component of the disputed domain name; and the visual, aural and similarities between them, the Panel therefore finds that the disputed domain name <thefinter.com> is confusingly similar to a trade mark in which the Complainant has rights.

B. Rights or Legitimate Interests

According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:

“(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The Panel notes that the Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the domain name. The Panel further notes that the Respondent has failed to submit a Response to the Complaint filed against him. In particular, the Respondent has failed to make submissions to demonstrate that he has rights or legitimate interests to the domain name. In accordance with the Rules paragraph 14, the Panel thus draws such inferences as she considers appropriate, which are that the Respondent is unable to adduce evidence of any rights or legitimate interests to the disputed domain name.

Based on the following reasons the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name:

i. the “finter” portion of the Complainant’s trade mark FINTER BANK ZURICH is a word with no meaning or connection with the goods or services sold under it. Thus the Respondent could not be using the word “finter” in a descriptive sense. Therefore, the Respondent must provide plausible explanations in his choice of the disputed domain name which is confusingly similar to FINTER BANK ZURICH;

ii. the Respondent has not provided evidence of a legitimate use of the domain name or reasons to justify the choice of the word “thefinter” in its business operations;

iii. there was no evidence to show that the Complainant has licensed or otherwise permitted the Respondent to use its trade mark or to apply for or use any domain name incorporating the trade mark;

iv. there is no indication whatsoever that the Respondent is commonly known by the disputed domain name and/or is using the domain name in connection with a bona fide offering of goods or services. In fact, there is substantial evidence adduced by the Complainant which indicates that the Respondent is using the disputed domain name in fraudulent schemes over the Internet;

v. the Complainant and its mark FINTER BANK ZURICH enjoy a considerable reputation with regard to private banking services in Switzerland and in many countries in the world. Consequently, in the absence of contrary evidence from the Respondent, the FINTER BANK ZURICH mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant.

The Panel finds for the Complainant on the second part of the test.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:

(i) circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website 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 website or location or of a product.

The Panel concludes based on the case file that the circumstances referred to in Paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances it is adequate to conclude that the Respondent has registered and used the disputed domain name in bad faith.

Firstly, the Panel finds that the Complainant and its mark FINTER BANK ZURICH enjoy a considerable reputation with regard to private banking services in Switzerland and in many countries in the world. Therefore, the Panel finds that it is not conceivable that the Respondent would not have had actual notice of the Complainant’s trademark rights at the time of the registration of the domain name. Consequently, it would have been pertinent that the Respondent provide an explanation of its choice in the disputed domain name, failing which the Panel draws the conclusion that the disputed domain name was registered in bad faith with intent to create an impression of an association with the Complainant and its banking services.

The Respondent has claimed to be the Finter Bank Zurich on its website at “www.thefinter.com” when clearly it is not. Furthermore, the Respondent has replicated a FINTER BANK ZURICH look-alike website by copying the contents of the Complainant’s website onto its “www.thefinter.com” website except for the contact information and email addresses. There was also a report filed by one of the Complainant’s customers concerning a dubious email and requesting for the advancement of monies so as to release alleged transferred funds purportedly sent and served by the Respondent. Based on the foregoing evidence, the Complainant has asserted that the Respondent has engaged in fraudulent Internet scams and has registered the disputed domain name for fraudulent purposes only. These are serious allegations and substantial evidence has been gathered by the Complainant to support its allegations. Given the Complainant’s allegations, it is pertinent for the Respondent to provide an explanation of his actions or relationship with the Complainant and adduce evidence to show that he has authority to provide the banking products and services and also to use the FINTER BANK ZURICH trade mark on his website. However, the Respondent has failed to do so.

The Panel finds that there is overwhelming evidence that the Respondent has registered the disputed domain name for less than honorable intentions. The Complainant has adduced evidence and proved that by using a confusingly similar disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website. Furthermore, the Respondent has through the use of this confusingly similar domain name created a likelihood of confusion with the Complainant’s mark and this constitutes a fraudulent misrepresentation to the public that his website is associated or connected with the Complainant. In the absence of evidence to the contrary and rebuttal from the Respondent, the choice of the disputed domain name and the conduct of the Respondent as far as the website on to which the domain name resolves are indicative of registration and usage of the disputed domain name in bad faith.

The Panel accepts the Complainant’s submission that this fact coupled with all the other evidence proves that the Respondent has registered and used the disputed domain name in bad faith.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <thefinter.com> be transferred to the Complainant.

Susanna H.S. Leong
Sole Panelist

Dated: June 12, 2006