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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sun Hung Kai Properties Limited v. Sunny Properties/C.K. Kwok
Case No. D2000-1501
1. The Parties
The Complainant is Sun Hung Kai Properties Limited, a publicly listed company incorporated in accordance with the laws of Hong Kong, having a registered office at 45th Floor, Sun Hung Kai Center, 30 Harbour Road, Wanchai, Hong Kong, SAR of China.
The Respondent is Sunny Properties with its contacting person’s address in Hong Kong, SAR of China. Sunny Properties does not seem to be a business entity but appears to be the name for a future web site. Mr. C.K. Kwok, as analyzed in Part 3 of this Decision, is the responsible person for the Respondent.
2. The Domain Name and Registrar
The domain name at issue is <sunhungkaiproperties.com>, which is registered with the registrar BulkRegister.com of Baltimore, MD 21202, U.S.A.
3. Procedural History
The WIPO Arbitration and Mediation Center (the "Center") received the Complaint of the Complainant on November 2, 2000 by email and on November 6, 2000 in hardcopy.
On November 10, 2000, the Center sent an Acknowledgement of Receipt of the Complaint to the Complainant.
The Center sent to the Registrar a request for verification of registration data on November 13, 2000. On November 14, 2000, the Registrar confirmed that the domain name in dispute is registered with BulkRegister.com and the Respondent is the current registrant of the domain name.
On November 17, 2000, the Center sent to the Complainant a request for clarification on the Respondent. On November 22 and 25, 2000, the Complainant clarified by return e-mails that both Sunny Properties and C.K.Kwok were proposed to be the Respondents in the case because the latter admits that he is the owner of the domain name.
On November 28, 2000, the Center sent to the Respondent Notification of Complaint and Commencement of Administrative Proceeding. This notification was sent by the methods required under paragraph 2(a) of the Rules. The formal date of the commencement of this administrative proceeding is November 28, 2000.
On December 22, 2000, the Center sent to the Respondent Notification of Respondent’s Default.
On December 31, 2000, after the deadline for filing Response, Mr. C.K. Kwok on behalf of the Respondent sent e-mails to the Center which contain some arguments.
On January 3, 2001, the Center sent acknowledgement of the late-filed e-mails to the Respondent.
On January 22, 2001, after receiving a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence, the Center notified the parties of the appointment of a single-member panel consisting of Li Yong.
4. Factual Background
The Complainant owns trademark rights for "SUN HUNG KAI" in classes 19, 36, 37, 38, 39 and 42 in China. The trademark registrations in China were made in 1994, 1995, 1996 and 1997 respectively.
The Complainant owns trademark rights for "SUN HUNG KAI" in classes 37, 38 and 42 in Hong Kong. The trademark registrations in Hong Kong were made in 1992 and 1993 respectively.
The Complainant also owns trademark rights for "SUN HUNG KAI" in various classes in Australia, United Kingdom and Taiwan, the registrations of which were made from 1993 to 1995.
In addition, the Complainant has 15 pending trademark applications for "SUN HUNG KAI" in China, USA, Canada, Hong Kong and Taiwan. These trademark applications were made from 1992 to 2000.
All the trademark registrations and applications above-mentioned were made in the name of United Way Investments Limited, a wholly owned subsidiary of the Complainant.
The Complainant with the trade name "Sun Hung Kai Properties Limited" is the successor of a business trading under the name " Sun Hung Kai Enterprises Company Limited" which was incorporated in Hong Kong in January 1963. The Complainant has been listed in Stock Exchange of Hong Kong since 1972 and has been a constituent stock of the Hang Seng Index since 1978.
The domain name <sunhungkaiproperties.com> was created on February 19, 2000, according to the search result made by the complainant shown in the Annex A of the Complaint.
The Complainant states, the Respondent does not dispute and the Panel accepts that Mr. C.K. Kwok is the responsible person for the Respondent.
The Respondent has not used the domain name at issue in connection with the bona fide offering of goods or services. There is currently no content located at the www.sunhungkaiproperties.com website.
5. Parties’ Contentions
The Complainant contends that the domain name <sunhungkaiproperties.com> is identical and therefore confusingly similar to the Complainant’s "Sun Hung Kai Properties" trade name and "Sun Hung Kai" trademark, respectively.
The Complainant contends that the Respondent should be considered as having no rights or legitimate interests in respect of the disputed domain name because the Respondent has not yet made any demonstrable preparations to use the domain name in connection with the bona fide offering of goods or services and the Respondent has never been called by or was never commonly known by the phrase "SunHungKaiProperties" or any reasonable facsimile thereof, as an individual, a business or other organization.
The Complainant contends that the domain name <sunhungkaiproperties.com> should be considered as having been registered and used in bad faith by the Respondent because of the following reasons:
1) The Respondent has prevented the Complainant from reflecting their trademark in a corresponding domain name. While attempting to register the domain name <sunhungkaiproperties.com>, the Complainant learnt that the Respondent has registered <sunhungkaiproperties.com>. None of the domain names registered by the Complainant or its affiliated, associated or subsidiary companies can best reflect the Complainant’s "sunhungkaiproperties" mark.
2) Given the fact that the Complainant is such a high profile company and famous throughout Asia, the Respondent must be aware of the Complainant’s interest in the name "Sun Hung Kai Properties". Thus, the Respondent could not have registered "sunhungkaiproperties" in good faith.
3) Moreover, in case no. D2000-0059, Barneys Inc v. BNY Bulletin Board, the Presiding Panelist rejected the Respondent’s argument that the lack of commercial activity could protect him from having registered the domain name in bad faith.
4) The Respondent has provided false information when registering the domain name. No such person as "Chi Sun Chan" can be contacted at the telephone (852) 9726 1840. The Respondent’s intention to evade liability can be inferred from such an act.
The Complainant also contends that in the telephone conversation with the Respondent, Mr. C.K. Kwok suggested to sell the disputed domain name to the Complainant and promised the Complainant that he would revert in a week’s time. However, the Complainant has never heard from the Respondent since.
The Respondent failed to submit formal Response before the response deadline according to 5 (a) of the Rules for Uniform Domain Name Dispute Resolution Policy, but sent six e-mails to the Center on December 31, 2000. The Respondent argues in the late-filed e-mails that the Respondent did not state that he wants to sell the domain name to the Complainant; that the Respondent did not put any content reflecting the Complainant but just collected the unregistered domain name; and that the Respondent will put some non-commercial content when he has time.
6. Discussion and Findings
In accordance with ICANN Uniform Domain Name Dispute Resolution Policy, Complainant asking for transfer of the domain name must prove the following three elements: 1) Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; 2) Respondent has no rights or legitimate interests in the domain name; and 3) Respondent has registered the domain name and is using it in bad faith. (ICANN Policy, 4 (a)).
Identical or Confusingly Similar
The domain name at issue is <sunhungkaiproperties.com>. The Panel finds that the relevant part of this domain name "sunhungkai" is identical with the numerous trade mark registrations of the word "SUN HUNG KAI" held by the Complainant’s wholly owned subsidiary company. The Panel also finds that the disputed domain name is identical to the most significant portions of the Complainant’s trade name "Sun Hung Kai Properties Limited". The top level domain designator ".com" is only a necessary portion to form a business-related domain name and cannot function to distinguish that name from the Complainant’s mark or name. Therefore, the Panel believes that the first element of the ICANN Policy, 4(a) is met.
Respondent’s Rights or Legitimate Interests in the Domain Name
The Respondent has not provided evidence of circumstances of the type specified in the ICANN Policy, 4(c). There is no evidence that the Respondent has used the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services before the dispute; or that the Respondent has been commonly known by the domain name; or that the Respondent is making a legitimate noncommercial or fair use of the domain name. Furthermore, the Respondent has not provided evidence of any other circumstances giving rise to a right or legitimate interest in the domain name. The Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.
Domain Name Registered and Used in Bad Faith
Paragraph 4(b) of the ICANN Policy specifies four types of circumstances which could be evidence of the registration and use of a domain name in bad faith. According to the ICANN Policy, circumstances of bad faith are not limited to the listed ones.
The Panel finds that the domain name was registered and used in bad faith based upon the following reasons:
1) The Complainant has trademark registrations for the words "Sun Hung Kai" in various countries and regions and has been using the trademark in those countries and regions before the creation of the disputed domain name. The Complainant has been using the words "Sun Hung Kai Properties" as its trade name early since 1963. By common knowledge, using the wording "sunhungkaiproperties" as the second level of a domain name can be a very direct, exact and preferred way to reflect the Complainant’s trademarks and trade name. The Respondent’s conduct of acquiring and holding the domain name <sunhungkaiproperties.com> has prevented the Complainant from reflecting its trademark and trade name in a corresponding domain name.
2) Both the Complainant and the Respondent are from Hong Kong, China. Sun Hung Kai Properties Limited is one of the largest companies in Hong Kong with a very long history and is well-known throughout Asia. The Respondent admits in his e-mail of December 31, 2000 that the Complainant is a famous technology and property company in Hong Kong. The Panel infers that the respondent was aware of the Complainant’s interest in the trademark "Sun Hung Kai" and the trade name "Sun Hung Kai Properties" when the Respondent obtained and is keeping the domain name at issue.
The Respondent argues that he does not use the domain name in bad faith for any organization in the world and he just keeps it in blank up to now, and that he has no intention to use the domain name commercially. The Panel holds that lack of commercial activity using the domain name cannot protect the Respondent from having used the domain name in bad faith. This principle has been adopted by Panels in some previous WIPO cases including case no. D2000-0059, Barneys Inc v. BNY Bulletin Board.
For the reasons above-stated, the Panel finds that the Respondent’s registration and use of the domain name at issue is in bad faith.
The Panel concludes (a) that the domain name <sunhungkaiproperties.com> is confusingly similar to the trademark and the trade name registered and owned by the Complainant, (b) that the Respondent has no rights or legitimate interest in the domain name and (c) that the Respondent has registered and used the domain name in bad faith. Therefore, the Panel orders that the domain name <sunhungkaiproperties.com> be transferred to the Complainant.
Dated: February 3, 2001