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WIPO Arbitration and Mediation Center
Hang Seng Data Services Limited v. Liu Xiaodong Case No. D2001-0750 See Also PDF File: D2001-750
1. The Parties Complainant: Hang Seng Data Services Limited
2. The Domain Nameand Registrar Domain Name: <ָ.com> (RACE Language Encoding: bq- -3bqfe5i7mmdwk4a.com) Registrar: InternetNames WorldWide
3. Procedural History The Complaintwas received by WIPO by email on June 12, 2001, and in hardcopy form on June 6,2001. WIPO has verified that theComplaint satisfies the formal requirements of the Policy, the Rules and theSupplemental Rules and that payment was properly made. The Administrative Panel (the Panel)is satisfied that this is the case. The Complaint was properly notified in accordance with the Rules,paragraph 2(a). The Registrar hasconfirmed that <ָ.com> (the Domain Name) was registered through Internet NamesWorldWide and that Liu Xiadong is the current registrant. The Registrar has further confirmedthat the Policy is applicable to the Domain Names. On June 14, 2001, WIPO notified the Respondent of the Complaint inthe usual manner and informed the Respondent inter alia that the last day forsending its Response to the Complainant and to WIPO was July 4, 2001. WIPO issued to the Respondent a DefaultNotice on July 6, 2001. NoResponse was received. The Panel was properly constituted. The undersigned Panellists submitted Statements ofAcceptance and Declarations of Impartiality and Independence. No further submissions were received by WIPO or the Panel, as aconsequence of which the date scheduled for the issuance of the PanelsDecision is August 20, 2001.
4. FactualBackground The Complainant is a company incorporated inHong Kong. It maintains thewell-known Hang Seng family of indices and in particular the world famous HangSeng Index itself which was launched in 1964. The Complainant is the registered proprietor ofa large number of trade mark and service mark registrations for the name HangSeng Index in both the English form and in its Chinese equivalent form. Examples of such registrations are: HongKong Registration No 01605 dated May 30, 1995, in respect of administration,operation and management of unit trusts relating to selected stocks listed onThe Stock Exchange of Hong Kong Limited. ThePeoples Republic of China Registration No 777580 for the provision ofinformation relating to the stock exchange, provision of information relatingto financial services. The Complainant and its parent and associatedcompanies are the registrants of a number of domain names featuring the nameHang Seng Index in both the English and Chinese forms. For example, Hang Seng Bank Limited isthe registrant of domain name <hangsengindex.com>, which was firstregistered on January 11, 2000. The Respondent registered the Domain Name onNovember 30, 2000. On February 19, 2001, the Complainantsrepresentative wrote to the Respondent drawing the Respondents attention tothe Complainants rights in the name Hang Seng Index (both English and Chineseversions of the name), claiming that the Respondents registration of theDomain Name infringed the Complainants rights and inviting the Respondent tocancel the Domain Name. As will be seen below the Complainant statesthat no reply was received to that letter but that subsequently the Complainantsrepresentative telephoned the Respondent to check that the letter had beenreceived. Apparently it had beenreceived. The Complainant statesthat in the course of that telephone conversation, the Respondent made arequest for a substantial sum of money before he would agree to cancel theDomain Name. The Complainantsrepresentative indicated that the Complainant would not agree to pay any sum ofmoney and the Respondent has not cancelled the Domain Name. The Domain Name is not in active use.
5. PartiesContentions A. Complainant The substance of the Complaint is short and reads asfollows: The Complaintis based on the Complainants registrations for the mark ָ (Chinese equivalent ofHang Seng Index) in respect of various services throughout the world. A list of these registrations togetherwith copies of some trade mark registration certificates are provided as AnnexD to this Complaint. TheComplainant and the Complainants parent/associate companies have alsoregistered, inter alia, the domain names <hangsengindex.com>,<hangsengindex.net> and <hangsengindex.org> on January 11, 2000,January 13, 2001, and January 19, 2001, respectively. A list of the domain names registeredby the Complainant and its parent/associate companies and copies of the whoissearch results on <hangsengindex.com>, <hangsengindex.net> and<hangsengindex.org> respectively are provided as Annex E. The mark ָ (Chinese equivalent of Hang Seng Index) (the Mark) is thedominant part of the names of the Hang Seng family of indexes provided by theComplainant. The Mark isextensively used and advertised throughout the world. The Hang Seng family of indexes, including the Hang SengIndex which was launched in 1964, has become an important indicator of stockmarket performance worldwide especially in Hong Kong, London and the AsiaRegion. The families of indexesmaintained by the Complainant includes, but not limited to, Hang Seng Index,Hang Seng China Enterprises Index, New Hang Seng MidCap 50 Index, Hang SengChina Affiliated Corporations Index, Hang Seng 100, Hang Seng IT Index, HangSeng IT Portfolio Index, Hang Seng London Reference Index and Hang Seng AsiaIndex. Amongst the above indexes, the Hang Seng Index is a barometer of the Hong Kong stockmarket. The constituent stocks aregrouped under Commerce and Industry, Finance, Properties and Utilitiessub-indexes. The Hang Seng Indexcurrently comprises 33 constituent stocks which are representative of themarket. The aggregate marketcapitalisation of these stocks accounts for about 70% of the total marketcapitalisation on The Stock Exchange of Hong Kong Limited. It has recentlycome to the Complainants attention that the Respondent has registered themultilingual Domain Name <ָ.com> (Chinese equivalent of Hang Seng Index.com) without itsknowledge or authorization. Asnoted from Annex D, the Complainant has registered the mark ָ (Chinese equivalent of Hang Seng Index) and Hang Seng Index inrespect of various goods and services throughout the world. In this regard, please note that theChinese word in ָ is the simplified form of the word in our clients registered mark ָ. The Respondent has no rights orlegitimate interests in respect of the Domain Name because (a) its <ָ.com> (Chinese equivalent ofHang Seng Index.com) website is currently substantively inactive and there isno substantial use of the webiste by the Respondent; (b) the Respondents name is different from the DomainName. The Respondent is thereforenot commonly known by the domain name. The Complainantsubmits that the Domain Name has been registered and used in bad faith. The Registrant registered the DomainName early on November 2000, but has not constructed any homepage. A copy of the page under the DomainName printed on May11, 2001, is provided as Annex F. The Complainants Authorized Representative sent a cease and desist letter by faxand by registered post to the Registrant on February 19, 2001, notifying himthat his registration of the Domain Name has infringed the Complainants rightand asking him to cancel the registration of the Domain Name forthwith. A copy of the said cease and desistletter is provided as Annex G. TheComplainants Authorized Representative receivedno reply from the Registrant after the cease and desist letter and thentelephoned the Registrant to ask for a reply. The Registrant confirmed in the telephone his receipt of thecease and desist letter. TheRegistrant requested a substantial amount to be paid by the Complainant beforehe would agree to cancel the Domain Name. The Complainants Authorized Representative immediately made it clear tothe Registrant that he had no rights in the Domain Name and the Complainantwould not be prepared to pay him any money. The Registrant has failed to cancel the Domain name to date. The Complainant submits that the Registrant was actually a bad-faith pre-emptive registrantwhose sole purpose for the registration was for selling, renting, or otherwisetransferring the Domain Name registration for profits. Moreover, the Registrants registrationhas in fact obstruct (sic) theComplainant from reflecting its mark and services in a corresponding domainname. The Complainantreiterates that it has legitimate rights to use the name/mark ָ (Chinese equivalent ofHang Seng Index). It is theComplainants submission that the Respondent has deliberately registered theDomain Name in order to prevent the Complainant from reflecting its marks andservices in a corresponding domain name. B. Respondent The Respondent has not responded.
6. Discussion and Findings General According toparagraph 4(a) of the Policy, the Complainant must prove that: (i) TheDomain Name is identical or confusingly similar to a trade mark or service markin which the Complainant has rights; and (ii) TheRespondent has no rights or legitimate interest in respect of the DomainName; and (iii) TheDomain Name has been registered and is being used in bad faith. Where aRespondent who has been properly notified of the Complaint fails to respond,the Panel is entitled to draw such inferences as it considers appropriate (Rule14(b)). In this case theconsequence of the Respondents failure to respond is that the Panel accepts asfact the uncontraverted assertions of the Complainant and in particular that: Thetelephone conversation referred to above took place. Inthe course of that telephone conversation the Respondent demanded of theComplainant a substantial sum of money in return for cancellation of the DomainName. Identical or confusing similarity The Respondent registered the Domain Name <ָ.com>, in which the Chinese character is the simplified form of the character in the Complainants registeredtrademark ָ. Just as the same Englishword could have multiple but similar spellings (for example, organization andorganisation), the same Chinese character could have multiple but similarappearances as well. In this case,in the Complainants registered trademark ָ and in the Domain Name <ָ.com>are the same Chinese character, but the former is in the traditional form andthe latter is in the simplified form. The Domain Name comprising as it does thesimplified Chinese form of the Complainants trade mark/service mark, issubstantially identical. For thispurpose the .com suffix may be ignored. Accordingly the Panel finds that the DomainName is identical or confusingly similar to a trademark or service mark inwhich the Complainant has rights. Rights or legitimateinterest of the Respondent The Domain Name reproduces the name of a worldfamous service product of the Complainant from the ownership details of theDomain Name it is apparent that the Domain Name is not the registered name ofthe Respondent. Paragraph 4(c) of the Policy which is addressedto Registrants reads as follows: How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint. When you receive a complaint, you should refer to Paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii): (i) before anynotice to you 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 abona fide offering of goods or services; or (ii) you (as anindividual, business, or other organization) have been commonly known by thedomain name, even if you have acquired no trademark or service markrights; or (iii) you aremaking a legitimate non-commercial or fair use of the domain name, withoutintent for commercial gain to misleadingly divert consumers or to tarnish thetrademark or service mark at issue. The Respondent has not sought to put forwardany justification for his selection of the Domain Name. It does not appear to the Panel thatany of the circumstances set out in paragraph 4(c) of the Policy are applicablehere. Moreover, the Panel cannotthink of any other reason why the Respondent might reasonably be said to haveany rights or legitimate interests in respect of the Domain Name. The Complainant asserts that the Respondent hasno rights or legitimate interests in respect of the Domain Name on the basisthat its <ָ.com> website is currently substantivelyinactive. The Complainant assertsfurther that the Respondent has not constructed any homepage. The Respondent has not seen fit to denythese allegations. Although the prevalent use of domain names is as HTTP World Wide Webaddresses on the Internet, they may be used for other Internet services (eg.FTP, email, etc). The Respondenthas not submitted any evidence to suggest that the Domain Name has been usedfor any Internet service. Therefore, the Panel finds that there has been no active use of theDomain Name. In the result, the Panel finds that theRespondent has no rights or legitimate interests in respect of the Domain Name. Bad Faith Paragraph 4(b)of the Policy sets out a non-exhaustive list of circumstances which if foundby the Panel to be present shall be evidence of the registration and use of thedomain name in bad faith. Sub-paragraph (i) of 4(b) reads as follows: circumstances indicating that you haveregistered or you have acquired the domain name primarily for the purpose ofselling, renting, or otherwise transferring the domain name registration to thecomplainant who is the owner of the trademark or service mark or to acompetitor of that complainant, for valuable consideration in excess of yourdocumented out-of-pocket costs directly related to the domain name. The Respondentregistered the Domain Name in November 2000, and has made no active use ofit. As indicated, the Domain Nameis a famous name of the Complainant and, as the Panel has already found, theRespondent has no rights or legitimate interests in respect of it. TheComplainants representative telephoned the Respondent and in the course ofthat conversation the Respondent indicated that he would only agree to cancelthe Domain Name if the Complainant paid a substantial sum of money. The evidence to substantiate thistelephone conversation is sparse in the extreme (not even an attendance noterecording the terms of the conversation), but the Panel has no reason to doubtthe word of the Complainants representative. Moreover, the Respondent, who is aware of the allegation,has not denied it. In the result,the Panel finds that the Respondent registered the Domain Name knowing that itwas a name in which the Complainant had rights and in the hope and expectationthat the Complainant would pay to the Respondent a sum of money for the DomainName being a sum of money in excess of the Respondents out of pocketexpenses. The Panel findsthat the Domain Name was registered in bad faith and is being used in bad faithwithin the meaning of Sub-paragraph 4(b)(i) of the Policy.
7. Decision In light of the foregoing findings, namely that the Domain Name isidentical or confusingly similar to a trade mark or service mark in which theComplainant has rights and that the Respondent has no rights or legitimateinterests in respect of the Domain Name and that the Domain Name was registeredin bad faith and is being used in bad faith, the Complaint succeeds. Pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, thePanel directs that the Domain Name <ָ.com> be transferred to the Complainant.
Tony Willoughby SOH Kar Liang XUE Hong Dated: August 17, 2001
: https://internet-law.ru/intlaw/udrp/2001/d2001-0750.html
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