The Complainant is Amundi Asset Management, France, represented by Nameshield, France.
The Respondent is 周文强 (Zhou Wen Qiang), China.
The disputed domain name <amundi-boc.com> is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”).
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on January 13, 2020. On January 13, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 14, 2020, 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 January 21, 2020 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 January 22, 2020.
On January 21, 2020, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On January 22, 2020, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
On January 14, 2020, the Center received an email communication in Chinese from the Respondent, indicating its willingness to transfer the disputed domain name. On January 21, 2020, the Center sent an email communication regarding possible settlement to the Parties. On January 22 and 23, 2020, the Respondent and the Complainant exchanged email communications in English regarding settlement talks. On February 11, 2020, the Complainant requested the Center to proceed with the proceeding, to which the Center replied on February 19, 2020.
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 of the Complaint, and the proceedings commenced on February 25, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 16, 2020. No substantive response was received by the Center. On March 24, 2020, the Center informed the Parties that it would proceed to appoint the Panel.
The Center appointed Douglas Clark as the sole panelist in this matter on March 31, 2020. 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.
The Complainant is an asset management company and has offices in 37 countries in Europe, Asia-Pacific, the Middle-East and the Americas with EUR 1,425 billion in assets under management and over 100 million retail, institutional and corporate clients. “www.amundi.com” is the website of the Complainant. The Complainant has recently entered into an asset management joint venture with BOC Wealth Management, a subsidiary of Bank of China.
The Complainant is the owner of the International Trademark AMUNDI No. 1024160 registered on September 24, 2009 in class 36.
The Complainant is also the owner the domain names including the AMUNDI trademark, such as <amundi.com> registered and used since August 26, 2004.
The Respondent is an individual based in China.
The disputed domain name was registered on January 7, 2020 and does not resolve to an active webpage.
Identical or confusingly similar
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s “AMUNDI” trademark.
The Complainant asserts that the addition of the abbreviation “boc” (for “Bank of China”) and a hyphen is not sufficient to escape a finding that the disputed domain name is confusingly similar to the AMUNDI trademark. It does not change the overall impression of the designation as being connected to the Complainant’s AMUNDI trademark. It does not prevent the likelihood of confusion between the disputed domain name the Complainant’s trademark.
The Complainant contends that the addition of the abbreviation “boc” increases the likelihood of confusion with the Complainant, as it refers to the new asset management joint venture between the Complainant and the BOC Wealth Management, a subsidiary of Bank of China.
No rights or legitimate interests
The Complainant contends that the Respondent has no legitimate interests in respect of the disputed domain name.
The Complainant asserts that the Respondent is not identified in the WHOIS database as the disputed domain name and thus, the Respondent is not known as the disputed domain name.
The Complainant contends that the Respondent is not affiliated with nor authorized by the Complainant in any way. The Respondent has no rights or legitimate interests in respect of the disputed domain name, and he is not related in any way to the Complainant’s business. The Complainant does not carry out any activity for, nor has any business with the Respondent. The Complainant further submits that neither license nor authorization has been granted to the Respondent to make any use of the Complainant’s AMUNDI trademark or apply for registration of the disputed domain name by the Complainant.
The disputed domain name is inactive and the Complainant contends that the Respondent did not make any use of the disputed domain name since its registration, which confirms that the Respondent has no demonstrable plan to use the disputed domain name and demonstrates a lack of legitimate interests in respect of the disputed domain name.
Registered and used in bad faith
The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith.
The Complainant asserts that the disputed domain name is confusingly similar to the Complainant’s AMUNDI trademark and previous panels have confirmed the notoriety of the AMUNDI trademark. The AMUNDI trademark is used worldwide. The Complainant submits that the registration of the disputed domain name cannot be coincidental, as the Respondent associated the AMUNDI trademark and the abbreviation “boc” in reference to the new asset management joint venture between the Complainant and the BOC Wealth Management, a subsidiary of Bank of China.
Based on the BAIDU search engine results, the Complainant contends that all the results for the term “amundi” are related to the Complainant. Given the distinctiveness of the Complainant’s trademark and reputation, the Complainant finds it reasonable to infer that the Respondent has registered the disputed domain name with full knowledge of the Complainant’s trademark, constituting opportunistic bad faith.
The disputed domain name is currently inactive and the Complainant contends that the Respondent has not demonstrated any activity in respect of the disputed domain name, and it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate.
The Respondent expressed his willingness to transfer the disputed domain name to the Complainant, but the parties were not able to reach a settlement. The Respondent did not reply to the Complainant’s contentions substantively.
The language of the Registration Agreement is in Chinese.
The Complainant requested the language of the proceedings be in English on that grounds that (i) English language is the language most widely used in international relations and is one of the working languages of the Center, (ii) the disputed domain name is formed by words in Roman characters (ASCII) and not in “Cyrillic” and (iii) in order to proceed in Chinese, the Complainant would have had to retain specialized translation services at a cost very likely to be higher than the overall cost of these proceedings. The use of Chinese language in this case would therefore impose a burden on the Complainant which must be deemed significant in view of the low cost of these proceedings.
The Respondent did not respond to this request by the specified due date. Rather, the Respondent communicated in English in an email dated January 22, 2020 that it agreed to a transfer.
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 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 proceedings 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 proceedings “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 disputed domain should be transferred on the basis the Respondent has consented to a tranfsfer. Translating the Complaint would cause unnecessary delays and expense, especially given that the Respondent is able to understand and communicate in English. 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.
Paragraph 4.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) sets out the current views of UDRP panelists when a respondent consents to transfer or cancel the disputed domain name. This provides:
“Where parties to a UDRP proceeding have not been able to settle their dispute prior to the issuance of a panel decision using the “standard settlement process” described above, but where the respondent has nevertheless given its consent on the record to the transfer (or cancellation) remedy sought by the complainant, many panels will order the requested remedy solely on the basis of such consent. In such cases, the panel gives effect to an understood party agreement as to the disposition of their case (whether by virtue of deemed admission, or on a no-fault basis).
In some cases, despite such respondent consent, a panel may in its discretion still find it appropriate to proceed to a substantive decision on the merits. Scenarios in which a panel may find it appropriate to do so include (i) where the panel finds a broader interest in recording a substantive decision on the merits – notably recalling UDRP paragraph 4(b)(ii) discussing a pattern of bad faith conduct, (ii) where while consenting to the requested remedy the respondent has expressly disclaimed any bad faith, (iii) where the complainant has not agreed to accept such consent and has expressed a preference for a recorded decision, (iv) where there is ambiguity as to the scope of the respondent’s consent, or (v) where the panel wishes to be certain that the complainant has shown that it possesses relevant trademark rights.”
This Panel considered this issue in detail in Rockwool International A/S v. Lin Chengxiong, WIPO Case No. D2012-0472 and the Panel will not repeat its reasoning here. The Panel finds the circumstances which previous panels found appropriate to proceed to a substantive decision on the merits are not present in this proceeding. The Panel finds the Respondent’s consent on record is sufficient to order transfer of the disputed domain name.
In this case, the Respondent has given its consent to transfer and accordingly the Panel will order that the disputed domain name be transferred.
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 <amundi-boc.com> be transferred to the Complainant.1
Date: April 16, 2020
1 The Panel notes that the disputed domain name also incorporates the name of the Complainant’s joint venture partner, “boc”. No consent has been obtained by the Complainant from BOC Wealth Management for transfer of the disputed domain name to the Complainant. For this reason, the Panel did consider whether an order for cancellation would be more appropriate. However, given the possibility that upon cancellation the disputed domain name could then be re-registered, it is more appropriate to order a transfer. The transfer is however ordered to without prejudice to any claim a third party may wish to make.
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