{ "case_number": "CAC-UDRP-104070", "time_of_filling": "2022-01-17 10:05:13", "domain_names": [ "SBERGAMES.COM" ], "case_administrator": "Denisa Bilík (CAC) (Case admin)", "complainant": [ "Sberbank of Russia" ], "complainant_representative": null, "respondent": [ "Enge Li Enge Li" ], "respondent_representative": null, "factual_background": "The Complainant is Sberbank of Russia, a Russian company which owns several Russian and International Registrations with the term SBER such as SBERBANK, SBER & СБЕР (in Latin transliteration – SBER). \r\n\r\nThe trademarks are mainly registered at class 36 with respect to Banking, Insurance, Financial activities, etc. The Complainant claims to be one of the largest banks in Russia and Europe, with operations in many foreign countries of Central and Eastern Europe, as well as in China, India and Turkey. Furthermore, the Complainant claims that in Russia, Sberbank has more than 110 million customers. Under the company name and firm designation in which the word \"Sberbank\" is used, the Complainant carries out his activity since 1991.\r\n\r\nAccording to the Complainant, Sberbank operates under the following firm name: Public joint-stock company \"Sberbank of Russia\" (abbreviated company: PJSC Sberbank). In English: Sberbank of Russia (Sberbank). The word \"sber\" is also used in the domain name of the Sberbank’ web site (www.sber.ru).\r\n\r\nThe Respondent is a physical person residing in China which claims to be the owner of the Chinese company Anyang Shi Bi ER Trading CO, Ltd established on 6.9.2017.\r\n\r\nThe disputed domain name was registered by Respondent with DYNADOT LLC on October 31, 2020.\r\n\r\nBefore addressing the substantive requirements under the Policy, the Panel would like to address the Complainant's supplemental filing sent on February 22, 2022. \r\n\r\nWithout presenting any particular reason for seeking to file a supplemental filing, the Complainant tried to do so on using the following wording: “in response to the Respondent’s response”. \r\n\r\nIn light of the current UDRP doctrine and applicable Rules, the Panel does not consider that the Complainant's application to file a supplemental filing is justified since no specific reason was presented and, consequently, the Panel declines to accept the supplemental filing. The Respondent's supplemental filing will be treated similarly.\r\n\r\nAs a general rule, it is important to remind the Parties that neither the Policy nor the Rules expressly provide for supplemental filings. Their admissibility is therefore in the discretion of the Panel to ensure that the proceeding is conducted with due expedition and both parties are treated equally, with each party being given a fair opportunity to present its case. \r\n\r\nIn light of the above, the Parties should bear in mind that there is no clear right under the Rules to file supplemental filings. Here is important to adopt the wording issued at WIPO Case Nr. D2008-1889 where the Panel stated the following:\r\n\r\n“The Center has rightly put before the Panel for consideration (or otherwise) at its discretion under the Rules the Complainant's unsolicited Supplemental Filings and e-mail in response received from the Respondent. In The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447, this Panel summarised the position regarding supplemental filings in proceedings under the Policy in the following terms:\r\n\r\n[‘]Under the Policy and the Rules, parties have no right to submit additional arguments or evidence. However, the Panel may, in its sole discretion, request further statements or documents from the parties under paragraph 10 of the Rules; and a party's request may be regarded as an invitation to the Panel to exercise this discretion.\r\n\r\nThe principles which should be applied in exercising this discretion have been considered in numerous cases decided under the Policy and Rules. The principles adopted and confirmed in these decisions are that additional evidence or submissions should only be admitted in exceptional circumstances, such as where the party could not reasonably have known the existence or relevance of the further material when it made its primary submission; that if further material is admitted, it should be limited so as to minimise prejudice to the other party or the procedure; and that the reasons why the Panel is invited to consider the further material should, so far as practicable, be set out separately from the material itself.\r\n\r\nThese principles are based on the purpose of the Policy and Rules of providing an expeditious and relatively inexpensive procedure for determining a certain type of domain name dispute, in which each party is entitled to make just one submission. One of the matters which the Panel has to bear in mind is that the admission of a further submission from one party may lead the other party to submit a further document in reply, which may lead to a further submission by the first party, and so on, thereby compromising the procedural economy sought to be established by the Policy and the Rules.[']”\r\n\r\nSince the Panel does not see any exceptional cirmstances to accept both supplemental filings, the Panel has decided not to accept them and, therefore, they will not be taken into account for the current decision. \r\n\r\n", "other_legal_proceedings": "The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.", "no_response_filed": "PARTIES' CONTENTIONS:\r\n\r\nCOMPLAINANT:\r\n\r\nFirst element: Confusingly similar to the protected mark.\r\n\r\nThe Complainant argues to be the owner of intellectual property rights on the family of trademarks «Sberbank» and «Sber».\r\n\r\nThe Complainant states that the disputed domain name includes the identical word trademark \"Sber\" (WIPO Certificate № 1355502, Russian Certificate № 623735) and also is confusingly similar to the trademark «СБЕР» («SBER» in Latin transliteration, Russian Certificate № 433395), to the combined trademark «SBER» (WIPO Certificate № 1565177, WIPO Certificate № 1568173), \"SBERBANK\" (WIPO Certificate № 1025684).\r\n\r\nThe Complainant argues that the confusing similarity between the domain name (sic) and Sberbank’s trademarks «SBER» is confirmed by sound (phonetic) similarity in connection with the inclusion of the element «Sber» in the disputed domain name. The Complaint states that the Word \"Sber\" has an identical pronunciation in Russian and English languages that enforce the phonetic similarity of a domain name with trademarks of the Complainant.\r\n\r\nThe Complainant asserts that there is a graphic (optical) confusing similarity between the disputed domain name and the Сomplainant’s trademarks «SBER» according to WIPO Certificates № 1355502, 1565177, 1568173, the Russian Certificate № 623735 (on the assumption of the general visual perception; regarding use of the same alphabet in the name of «Sber» trademark and the disputed domain name ). \r\n\r\nSecond element: Rights or legitimate interest.\r\n\r\nThe Complainant contends that the Respondent doesn’t have any legal rights and real interests concerning the disputed domain name . In this sense, the Complainant indicates that it was not possible to contact Respondent to send a cease-and-desist letter directly due to the use of privacy\/proxy registration services covering the Respondent’s data as Registrant. \r\n\r\nIn September 2021, the Complainant argues that a request was sent by e-mail to the Registrar DYNADOT, LLC to disclose personal data of the administrator\/holder of the disputed domain name (full name, postal and e-mail addresses, the telephone and telefax number) in order to send pre-trial claim to the administrator to stop the infringement of exclusive rights of the Complainant and transfer to Complainant the right of administration of the disputed domain name .\r\n\r\nThe Complainant states that they received a response from Registrar indicating that they would not release customer information or account information without the express permission of the customer or when required by law. Thus, no concrete data about the administrator\/registrant of the disputed domain name was provided.\r\n\r\nThe Complainant mentions that only as per January 17, 2022 (the moment of the start of these proceedings) the Registrar provided full information about the holder of the domain name: Name: Enge Li, E-mail Address: boris@88.com, Phone Number: +86 17839161 128, Address: Kaifeng JingSiLu YaohuaS hiyanZhongxue, City\/Town: Kaifeng, State\/Province\/Reg ion: Henan, Zip\/Postal Code: 475200, Country: China.\r\n\r\nThe Complaint was amended accordingly with the Respondent’s data.\r\n\r\nThe Complainant indicates that Respondent has no relation to the business activities of the Complainant and didn't receive any written consent from the Complainant to use on the Internet, including the disputed domain name , the designations identical and\/or confusingly similar to Sberbank’s family of trademarks «SBER». \r\n\r\nThe Complainant points out that is one of the largest banks in Russia and Europe, has its representative offices and subsidiaries in many foreign countries, such as CIS countries as well as in several countries of the Central and Eastern Europe, and also in China, India and Turkey. Moreover, Sberbank operates in many other countries. \r\n\r\nThe Complainant indicates that it has more than 110 million customers. Under the company name and firm designation in which the word \"Sberbank\" is used, the Complainant carries out his activity since 1991. Since that moment according to the constituent documents, the Complainant operates under the following firm name: Public joint-stock company \"Sberbank of Russia\" (abbreviated company: PJSC Sberbank). In English: Sberbank of Russia (Sberbank). The word \"sber\" is also used in the domain name of the Sberbank’ web site (www.sber.ru).\r\n\r\nThe Complainant states that in the absence of Respondent’s right or real legitimate interest such administration of the domain name contradicts the provisions of the article 16 of the TRIPS Agreement. In accordance with article 16 of the Agreement on trade-related aspects of intellectual property rights (Marrakech, 15 April 1994, further referred as the “TRIPS Agreement”), the owner of a registered trademark shall have the exclusive right to prevent all third parties not having the owner's consent from using in the course of trade identical or similar signs for goods or services which are identical or similar to those in respect of which the trademark is registered where such use would result in a likelihood of confusion. The Complainant points out that such unfair use of the trademarks in the absence of permission of the right holder is recognized as the infringement of exclusive rights of the Complainant.\r\n\r\nFinally, the Complainant states that the Respondent registered the disputed domain name for the Web-site http:\/\/sber.com\/ (sic) that is used as a platform for placing advertising banners. \r\n\r\nThe Complainant contends that the «Privacy Policy» posted on the Web site related to the disputed domain name states that: “…its dynamically generated website that includes third-party advertising. These third-party advertising companies may use technologies to gather anonymous website statistics about your visits to this and other websites. These statistics may be used by these third-party advertising companies to provide ads of relevance. Our advertisers and us may have the occasion to collect information in regards to your computer for our services».\r\n\r\nIn this regard, Complainant indicates that the Respondent uses the Web-site in commercial purposes by providing the opportunity for the third parties to place advertising materials and attracting the consumers by using designations «Sber» in the disputed domain name . \r\n\r\nThird element: The domain name has been registered and is being used in bad faith.\r\n\r\nThe Complainant argues that the designation «Sber» is used in the disputed domain name and on the Web-site with intention of the owner of the disputed domain name to provide advertising space to the 3rd parties, to attract as much as possible users by parasitizing on Sberbank’s reputation and its well-known among the consumers and in the result to gain a profit. \r\n\r\nThe Complainant further states that when the users click on such advertising banners, they are redirected to the hyperlinks to the web sites that have nothing in common with the Complainant and aren't connected with the Complainant by any commercial relations.\r\n\r\nThe Complainant contends that the disputed domain name is used by Respondent illegally only for obtaining the benefits by granting to the 3rd parties the advertising space on the Web site. The use of the trademarks of Sberbank based on intention of the Web site's owner to increase rating (position) of Web site in Search Engines due to reputation and popularity of Sberbank among the population \/ customers. The purpose of the Web site's owner is to increase the number of visitors of the Web site by using trademark «SBER» in the domain name. Moreover, the use of the designation similar to the Sberbank’s trademarks represent the act of unfair competition as they create obstacles to the Complainant to use in the Internet the information about Sberbank \/ SBER and its products and services with the use of trademarks \"Sber\" in the domain zone .com, including in the disputed domain name . \r\n\r\nThe Complainant concludes that actions also create infringement of trademark rights registered under the certificates with Russian national protection (trademark No. No. 623735) and international protection (trademarks No. No. 1355502, 1565177, 1568173).\r\n\r\n\r\nRESPONDENT:\r\n\r\nFirst element: Confusingly similar to the protected mark.\r\n\r\nIn his reply, the Respondent indicates that the disputed domain name is neither identical nor confusingly similar to the trademarks of the Complainant (\"SBERBANK\", \"SBER\" and their Russian version).\r\n\r\nThe Respondent further claims that \"SBERBANK\" and \"SBER\" trademarks listed by the Complainant are not well-known trademarks in the world. The Respondent also mentions that the Complainant does not own the “SBER” trademark in China and has no protection rights in China. \r\n\r\nIn addition, the Respondent indicates that many Chinese companies own the trademark \"SBER\", or trademarks containing the letters \"SBER\". \"SBER\" is not the Complainant's exclusive and proprietary trademark or name in the world.\r\n\r\nThe Respondent mentions that he has never been abroad and has never heard of the Complainant's company name and all its trademarks.\r\n\r\nThe Respondent indicates that “SBERBANK” and “SBER” trademarks held by the Complainant are all Class 36 trademarks for insurance, finance, monetary affairs and real estate affairs. In this regard, the disputed domain name held by Respondent is planned to be used by Respondent’s company Shi Bi ER to engage in the games equipment business in China. \r\n\r\nIn accordance with Respondent, there is no conflict with the trademarks protected business held by the Complainant. The Complainant has no subsidiary in China, no actual business, especially no games equipment business.\r\n\r\n\r\nSecond element: Rights or legitimate interest.\r\n\r\nThe Respondent claims that his company Anyang Shi Bi ER Trading Co., Ltd, is a legal person of non-government enterprise registered in China's territory. The Respondent mentions that his company was established on September 6, 2017 with a registered capital of 1 million CNY.\r\n\r\nThe Respondent also states that his Last name is: Li and his First name is Enge, according to the custom of Chinese Last name in the front, his name is: Li Enge. According to the custom of Western last name in the back, his name is: Enge Li. \"Li Enge\" and \"Engel Li\" are the same name.\r\n\r\nThe Respondent claims that he is the Legal Representative and general director of the company, and is fully responsible for the operation and management of the company. In accordance with Respondent, \"SBER\" is the English abbreviation of the company's English name \"Shi Bi ER\". On this point, Respondent claims to have legal rights to the company name and its English abbreviation \"SBER\".\r\n\r\nThe Respondent further claims that \"SBER\" is the English abbreviation of Shi Bi ER, the company he owns, and he has legally the right to use it. According to the business license issued by the Administration for industry and commerce of the People's Republic of China, Shi Bi ER has the right to legally engage in the business of machinery and equipment. In accordance with Respondent, Respondent’s company originally planned to start the games equipment business in 2019, registered the disputed domain name and was ready to use it for the website of Shi Bi ER games equipment business in 2020.\r\n\r\nThe Respondent concludes indicating that due to the severe impact of the Covid-19 epidemic, the business cannot be carried out smoothly for the time being.\r\n\r\nThird element: The domain name has been registered and is being used in bad faith.\r\n\r\nThe Respondent mentions that Complainant wrote in Paragraph B(3) on page 9 of the Complaint that \"The Respondent registered domain name for the Web-site http:\/\/sber.com\/ that is used as a platform for placing advertising banners. It’s also confirmed by the «Privacy Policy» posted on the Web-site stating that its «dynamically generated website that includes third-party advertising.\" In this sense, Respondent claims that the Complainant provided the unrelated Web-site http:\/\/sber.com\/ as evidence in an attempt to fabricate the facts. This is false evidence and has nothing to do with this Complaint.\r\n\r\nRegarding the Complainant's point of using the domain name privacy protection service, the Respondent counterargues the following:\r\n\r\n- This privacy protection service was provided by the domain name Registrar Dynadot, LLC for free and automatically when the Respondent registered the disputed domain . and it was not Respondent’s own initiative to set it up;\r\n\r\n- The domain name privacy protection service can effectively prevent spam and advertisements, it is a common domain name service function.\r\n\r\nOn the issue of setting up advertisements on the website and using the reputation and well-known of the Complainant's company to attract visitors to the website to obtain commercial benefits, Respondent provided the following info:\r\n\r\nAs confirmed by the Registrar Dynadot, LLC, the website parking advertisement is automatically set when Respondent registered the disputed domain name “. Respondent indicates that he never actively set up the disputed domain name to park an ad page. \r\n\r\nThe Respondent also contends that the Registrar Dynadot, LLC does not offer domain name parking for profit and, therefore, the Respondent did not have any motive or possibility to obtain commercial benefits through website advertisements.\r\n\r\nThe Respondent claims again that he has never been abroad, have never heard of the Complainant's company and its trademarks, and had no motive or possibility to use its reputation and well-known to attract website visitors to obtain commercial benefits.\r\n\r\nFurthermore, the Respondent points out that Complainant's complaint indicates that he maliciously used the domain name to obtain commercial benefits is unfounded. \r\n\r\nThe Respondent claims that he never considered getting commercial benefits by selling, leasing or parking domains, etc. The Respondent finally claims that he registered the disputed domain name for use in good faith for the games equipment business of Shi Bi ER.\r\n\r\nReverse Domain Name Hijacking.\r\n\r\nThe Respondent argues that Complainant's behavior of providing false information of the Respondent is a malicious complaint aimed at harassing him. The Respondent claims that the Complainant’s attempt is Reverse hijacking of the disputed domain name .\r\n\r\nAccording to the facts and the disputed domain name , in the Holder\/Registrant information provided by the Registrar DYNADOT,LLC. the Name of the Respondent is Enge Li. First Name: Enge, Last Name: Li.\r\n\r\nThe Respondent mentions that on the First page of the complaint, the Respondent's information filled in by the Complainant was: \"Respondent. Respondent type: Domain holder (Registrant), First Name Enge Li, Last Name Enge Li”. \r\n\r\nRespondent mentions that according to Paragraph 3(b)(xiii) of the Rules: \"Complainant certifies that the information contained in this Complaint is to the best of Complainant's knowledge complete and accurate, that this Complaint is not being presented for any improper purpose, such as to harass, and that the assertions in this Complaint are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument.\".\r\n\r\nAccording with Respondent, the Complainant provided wrong, invalid and illegal information of the Respondent and, therefore, the arbitration subject was wrong. The Respondent set outs that the arbitration object was Enge Li Enge Li, not the domain name holder, Enge Li. The Complainant arbitrated maliciously and attempted to hijack the domain name in reverse.\r\n\r\nThe Respondent indicates that Complainant's behavior of providing false information is a malicious complaint aimed at harassing him and, therefore, the Respondent requests to immediately reject the Complainant's illegal complaint and identify the behavior of the Complainant as Reverse domain name hijacking.\r\n", "rights": "The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).", "no_rights_or_legitimate_interests": "The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).", "bad_faith": "The Complainant has not shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy). ", "procedural_factors": "The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.", "decision": "Rejected", "panelists": [ "Victor Hugo Garcia Padilla, LL.M." ], "date_of_panel_decision": "2022-02-24 00:00:00", "informal_english_translation": "Complainant indicates and provides evidence that is the owner of the following trademark registrations:\r\n\r\n1. Russian wordmark SBERBANK, Reg. Nr. 463470, Date: 04.06.2012, for different services at Class 36 (as shown in an English translation provided by Complainant);\r\n\r\n2. International Registration SBERBANK, Reg. Nr. 1097227, Date: 05.09.2011, for different services at Class 36, Designated countries: AT, BA, BX, BY, CN, CY, CZ, DE, FI, HR, HU, IE, IT, JP, PL, RS, SG, SI, SK);\r\n\r\n3. International Registration СБЕРБАНК (in Latin transliteration – SBERBANK), Reg. Nr. 1109123, Date: 05.09.2011, for different services at Class 36, Designated countries: AT, BA, BY, CN, CZ, DE, HR, SG, SI, SK);\r\n\r\n4. International Registration SBER, Reg. Nr. 1355502, Date: 09.02.2017, for different services at Class 36, Designated countries: AT, BA, BY, CH, CN, CY, CZ, DE, HR, KZ, RS, SI, SK, UA, GB, IN, TR, US);\r\n\r\n5. International Registration SBER, Reg. Nr. 1565177, Date: 27.10.2020, for different services at Class 36, Designated countries: AT, BA, BY, CZ, DE, HR, KZ, RS, SI);\r\n\r\n6. International Registration SBER, Reg. Nr. 1568173, Date: 10.11.2020, for different services at Class 36, Designated countries: AT, BA, BY, CZ, DE, HR, KZ, RS, SI);\r\n\r\n7. Russian wordmark SBER, Reg. Nr. 623735, Date: 13.07.2017, for different services at Class 36 (as shown in an English translation provided by Complainant);\r\n\r\n8. Russian wordmark СБЕР (in Latin transliteration – SBER), Reg. Nr. 433395, Date: 24.03.2011, registered in the Russian Federation concerning 1-45 classes (as shown in an English translation provided by Complainant).\r\n", "decision_domains": { "SBERGAMES.COM": "REJECTED" }, "panelist": null, "panellists_text": null }