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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Hongkong and Shanghai BankingCorporation Limited ЁCv- Bill Lynn
Case No. D 2001-0915
See Also PDF File: D2001-0915
1. The Parties
The Complainant is The Hongkong and Shanghai Banking Corporation Limited, L37 HSBC Main Building,1 QueenЎЇs Road Central, Hong Kong, PRC.
Represented byMessrs. Johnson Stokes & Master, 19th Floor, PrincesЎЇ Building,10 Chater Road, Central, Hong Kong, PRC.
The Respondent is Bill Lynn, PO Box 130304, New York, NY 10013, USA.
2. The Domain Name(s) and Registrar(s)
The Domain Name is <ПгёЫЙПєЈ…RШSгyРР.com>. RACE LanguageEncoding: Bq--3cmzs3rpjyfg252tf6gfbeuarbga.com.
The Registrar is Register.com, Inc.
3. Procedural History
The electronic copy of the original Complaint was submitted to the World Intellectual PropertyOrganization Arbitration and Mediation Center (the Ў°CenterЎ±) onJuly 17, 2001. Thehardcopy of the Complaint was received on July 20, 2001. Therein, the Complainantrequested for a single-member Panel. The Center sent an Acknowledgement of Receipt to the Complainant on July18, 2001.
The Center sent a Request for Registrar Verification to the Registrar on July 24, 2001, and theRegistrar confirmed the identity of the Respondent on the same day. OnJuly 27, 2001, the Center forwarded the Respondent a copy of theComplaint to and the notification of the commencement of this administrativeproceeding in the usual manner and informed the Respondent of the deadline tofile a Response, that is, August 16, 2001. No Response was received and the Center issued aNotification of Respondent Default on August 17, 2001.
The Center properly constituted and appointed this Panel in accordance with the Rules andSupplemental Rules. No further submissions were received by the Center or thisPanel, as a consequence of which the date scheduled for the issuance of thePanelЎЇs Decision is October 1, 2001.
4. Factual Background
The Complainant was established in 1865 and is the founding member of the HSBC Group. The Complainant is the largest bank inHong Kong. It is one of the threenote-issuing banks in Hong Kong. The HSBC Group is one of the largest banking and financial serviceorganizations in the world, having an international network of over 6,500offices in 79 countries.
The ComplainantЎЇs full name in Chinese is Ў°ПгёЫЙПєЈњуШSгyРРУРПЮ№«ЛѕЎ± and is commonly knownand referred to as Ў°ПгёЫЙПєЈњуШSгyРРЎ±, which corresponds to the ComplainantЎЇs name. The characters have the followingmeanings:
Ў°ПгёЫЎ± ЁC Hong Kong
Ў°ЙПєЈЎ± ЁC Shanghai
Ў°њуШSЎ± ЁC abundant remittance
Ў°гyРРЎ± ЁC bank
Ў°УРПЮ№«ЛѕЎ± ЁC limited company
The Complainanthas registered the following trademarks throughout the world in respect ofvarious services:
1. Ў°њуШSЎ± (eg, Hong Kong registration no 1555/1993)
2. Ў°»г·бЎ± (eg, China registration no 967955)
3. Ў°WAYFOONGЎ± (eg,Hong Kong registration no 1559/1993)
4. Ў°њуШSгyРРЎ± (eg, US registration no 1,446,772)
The above trademarks have been used and advertised throughout the world. The full list of the trademarkregistrations is found in Annex C to the Complaint. Ў°њуШSЎ±and Ў°»г·бЎ± have the same pronunciation and meanings and are for all intents and purposes identical. Ў°WAYFOONGЎ± is a transliteration of Ў°њуШSЎ±/Ў°»г·бЎ±. The character Ў°њуЎ± and Ў°…RЎ± are regarded as the same in Chinese. No trademark registration for Ў°ПгёЫЙПєЈњуШSгyРРЎ±, Ў°ПгёЫЙПєЈ…RШSгyРРЎ±or Ў°ПгёЫЙПєЈ»г·бТшРРЎ± was submitted by the Complainant.
The Complainant and its parent/associated companies have registered many domain names based onthe above trademarks. The full list of domain name registrations is found in Annex D to the Complaint. Among the registrations are <ПгёЫЙПєЈњуШSгyРР.net>, <ПгёЫЙПєЈ…RШSгyРР.org>, <ПгёЫЙПєЈ»г·бТшРР.net> and <ПгёЫЙПєЈ»г·бТшРР.org>.
The Respondent registered the Domain Name on November 10, 2000.
5. PartiesЎЇ Contentions
A. The Complainant
The substance of the Complaint is short and is reproduced below:
Ў°It has recently come to the ComplainantЎЇs attention that the Respondent has registered the Chinese multilingual domainname Ў°ПгёЫЙПєЈ…RШSгyРР.comЎ± without its knowledge or authorization. As noted from Annex C, the Complainant has registered the marks Ў°њуШSЎ±,Ў° њуШSгyРРЎ±, Ў°»г·бЎ±and Ў°WAYFOONGЎ± in respect of various goods and services throughout the world. In this regard, please note that the word Ў°њуЎ± is the same as Ў°…RЎ± under theChinese characters system.
The Respondent has no rights or legitimateinterests in respect of the Domain Name because (a) its Ў°ПгёЫЙПєЈ…RШSгyРР.comЎ± website is currently substantively inactive and there is nosubstantial use of the website by the Respondent; (b) the RespondentЎЇs name isdifferent from the Domain Name. The Respondent is therefore not commonly known by the Domain Name; (c)the Respondent is not a bank and the registration and/or use of the Domain Namebearing the characters Ў°гyРРЎ± which meanЎ°bankЎ± in Chinese will be deceptive.
The Complainant submits that the Domain Namehas been registered and is intended to be used in bad faith. The Complainant further submits thatthe Registrant was actually a bad-faith pre-emptive registrant whose solepurpose for the registration was for selling, renting, or otherwisetransferring the Domain Name registration for profits. It was reported on Hong Kong EconomicTimes on 3 January 2001 that a person with username Ў°taklee8Ў± offered to sellthe Domain Name in a Hong Kong based online auction site Go2HK(http://www.go2hk.com) at a starting price of HK$200,000. A copy of the said newspaper report andits translation are provided as Annex F.
Moreover, the RegistrantЎЇs registration hasin fact obstructed the Complainant from reflecting its mark and services in acorresponding domain name. The Complainantreiterates that it has legitimate rights to use the name Ў°ПгёЫЙПєЈ…RШSгyРРЎ±. It is the ComplainantЎЇs submission that the Respondent has deliberatelyregistered the Domain Name in order to prevent the Complainant from reflectingits marks and services in a corresponding domain name.
The ComplainantЎЇs Authorized Representativesent a cease and desist letter by email and by post to the Registrant on 15 May2001 notifying him that his registration of the Domain Name has infringed theComplainantЎЇs right and asking him to assign the Domain Name to theComplainant. A copy of the saidcease and desist letter is provided as Annex E. The ComplainantЎЇs Authorized Representative received noreply from the Registrant after the cease and desist letter and then telephonedthe Registrant to ask for a reply. The Registrant confirmed in the telephone his receipt of the cease anddesist letter. The Registrant saidthat the matter was Ў°negotiableЎ± and would ask his lawyer to give a reply tothe ComplainantЎЇs Authorized Representative. However, the ComplainantЎЇs Authorized Representative and/orthe Complainant only received an email from the Registrant stating that hewould reply but received no final response from the Registrant and/or hislawyer to date despite a reminder was sent to the Registrant.Ў±
B. The Respondent
The Respondent failedto respond.
6. Discussionand Findings
In order tosucceed in this proceeding, Article 4(a) of the Policy requires the Complainantto prove the existence of each of the following elements:
1. The Domain Name is identical or confusingly similar to a trademark or service mark in which theComplainant 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.
As the Respondent failed to respond, despite having been properly notified of the Complaint, thePanel is entitled to draw appropriate inferences pursuant to Rule 14(b). In this case, the Panel accepts theunchallenged assertions of the Complainant as fact, in particular, in relationto:
1. The inactivity ofthe Domain Name as an address of a website;
2. The offer forsale of the Domain Name at the online auction site at http://www.go2hk.com;
3. The cease anddesist letter to the Respondent on May 15, 2001; and
4. The telephone conversation between the ComplainantЎЇs authorized representative and theRespondent.
Identical or Confusingly Similar Trademark
Under the Singapore Trade Marks Act(Cap 332, 1999 Edition), a trademark (or Ў°trade markЎ± as identified therein)means Ў°any visually perceptible sign capable of being represented graphicallyand which is capable of distinguishing goods or services dealt with or providedin the course of trade by a person from goods or services so dealt with orprovided by any other personsЎ±. This definition is similar to that adopted in many jurisdictions andthis Panel shall be guided by the same. The Chinese charactercombinations Ў°ПгёЫЙПєЈњуШSгyРРЎ±, Ў°ПгёЫЙПєЈ…RШSгyРРЎ±,Ў°ПгёЫЙПєЈ»г·бТшРРЎ± and the ComplainantЎЇs name as a result of their history and useclearly fall within this definition.
In view of the long and extensive useof these character combinations and their English equivalent (ie, theComplainantЎЇs name) as an identifier of the ComplainantЎЇs business, this Panelis satisfied that the Complainant would have acquired common law rights overthe same. As such, this Panel finds that Ў°ПгёЫЙПєЈњуШSгyРРЎ±, Ў°ПгёЫЙПєЈ…RШSгyРРЎ±,Ў°ПгёЫЙПєЈ»г·бТшРРЎ± and the ComplainantЎЇs name are trademarks in which the Complainanthas rights within the meaning of Article 4(a), bearing in mind that a plainreading of Article 4(a) does not require the trademark concerned to be registered.
It is an established practice to ignore the Ў°.comЎ± portion of domain names whencomparing them against corresponding trademarks since it is anon-distinguishing feature. Onthis basis, this Panel finds that the Domain Name (disregarding the Ў°.comЎ± portion)is identical to Ў°ПгёЫЙПєЈњуШSгyРРЎ±, Ў°ПгёЫЙПєЈ…RШSгyРРЎ±and Ў°ПгёЫЙПєЈ»г·бТшРРЎ± and confusinglysimilar to the ComplainantЎЇs name in English.
Ў°ПгёЫЙПєЈ…RШSгyРРЎ±corresponds to the ComplainantЎЇs name and the Complainant has shown that it haslegitimate rights to want to use the Domain Name. The Domain Name refers to the name of a bank but theRespondent is an individual. The Respondent has not provided any justificationfor his selection of the Domain Name. The Panel is unable to identify anyreason, including the circumstances set out in paragraph 4(c) of the Policy,which allows the Respondent to claim any right or legitimate interest inrespect of the Domain Name.
The Respondent hasnot seen fit to deny the ComplainantЎЇs allegations that the Domain Name iscurrently not used to support a website. Although domain names may be used forinternet services other than world wide web services (eg, FTP, email, etc), theprevalent use of domain names is as internet world wide web addresses. TheRespondent has not submitted any evidence to suggest that the Domain Name hasbeen used for any internet service. Therefore, the Panel finds that there has been no use of the DomainName.
The Panelaccordingly finds that the Respondent has no rights or legitimate interests inrespect of the Domain Name.
Bad FaithRegistration and Use
Paragraph 4(b)(i)of the Policy, which provides a ground for finding bad faith registration anduse, reads as follows:
Ў°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.Ў±
There is noevidence to suggest that the Respondent has used the Domain Name since itsregistration in November 2000. ThePanel has already found that the Respondent has no rights or legitimate interestsin the Domain Name. In view of non-use of the Domain Name since registrationand the absence of contrary evidence, it is difficult to ignore the likelihoodof bad faith registration.
In addition, theDomain Name was offered by a Ў°taklee8Ў± for sale by auction for HK$200,000, anamount which is way beyond the cost of registering and maintaining a domainname. Although there is no directevidence linking Ў°taklee8Ў± to the Respondent, the circumstances are such as toraise a reasonable inference that the Domain Name is available for sale.
There is noevidence that the Respondent has denied the availability of the Domain Name forsale in response to the newspaper report. The Respondent did not respond substantively to the ComplainantЎЇs ceaseand desist letter. The Respondenteffectively ignored the ComplainantЎЇs threat of legal proceedings. The Respondent has chosen not torespond to the Complaint. All in all, the Panel finds that the RespondentЎЇsfailure to express any denial or explanation despite the various opportunitiesoffered to him reinforces the inference of bad faith registration and bad faithuse.
It is the view ofthis Panel on a balance of probability that the Respondent has registered theDomain Name in bad faith and the Domain Name is being used in bad faith.
Based on thefindings and reasons stated above, the Panel determines that the Complainantsucceeds and hereby directs that the Domain Name <ПгёЫЙПєЈ…RШSгyРР.com> be transferred to The Hongkong andShanghai Banking Corporation Limited.
Soh Kar Liang
Dated: September 28, 2001