WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Airport Authority v. Hong KongAirport Inc.
Case No. D2001-1417
1. The Parties
The Complainant is Airport Authority, of Airport Authority Building, 1 Cheong
Yip Road, Hong Kong International Airport, Lantau, Hong Kong, represented by
Adelaide Yu Esq., of Deacons, Hong Kong.
The Respondent is HongKongAirport Inc., of 23852 Pacific Coast Highway, Suite
720 Malibu, California 90265, U.S.A, represented by Robert L. Risley Esq., of
Pasadena, California, U.S.A.
2. The Domain Name and Registrar
The disputed domain name is <hongkongairport.com>.
The Registrar is Dotster, Inc., of Vancouver, Washington, U.S.A.
3. Procedural History
This is an administrative proceeding pursuant to the Uniform Domain Name Dispute
Resolution Policy ("the Policy") adopted by the Internet Corporation
for Assigned Names and Numbers ("ICANN") on August 26, 1999, the Rules
for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October
24, 1999, ("the Rules") and the Supplemental Rules for Uniform Domain
Name Dispute Resolution Policy ("the Supplemental Rules") of the WIPO
Arbitration and Mediation Center ("the Center").
The Complaint was received by the Center by email on November 30, 2001 and
in hard copy on December 4, 2001. It was acknowledged on December 5, 2001
and on that day registration details were sought from the Registrar, which replied
on December 12, 2001 stating that it had received a copy of the Complaint
from the Complainant; that the disputed domain name is registered with it in
the name of the Respondent and that the record was created on January 4, 1998
and expires on January 3, 2004. The Registrar also stated that the Policy
applies to the disputed domain name, the domain name is "active" and
the language of the Registration Agreement is English.
On December 13, 2001, the Center satisfied itself that the Complaint complied
with all formal requirements (including payment of the prescribed fee) and that
day formally dispatched copies of the Complaint by post/courier (with enclosures)
to the Respondent at the address as recorded with the Registrar and by email
(without attachments). The Center included with that material a letter dated
December 13, 2001, containing notification of the commencement of this administrative
proceeding, with copies (of the Complaint without attachments) to the Complainant,
the Registrar and ICANN.
The last day specified by the Center for a Response was January 2, 2002. A
Response was filed by email on December 29, 2001 and in hard copy on January
4, 2002. On January 7, 2002 the Center acknowledged receipt of the
The Complainant having requested a three-member panel, on March 8, 2002 the
Center formally notified the parties of the appointment of the undersigned as
panelists, each panelist having submitted a Statement of Acceptance and Declaration
of Impartiality and Independence. That day the Center transmitted the case file
to the Panel and notified the parties of the projected decision date of March
22, 2002. The Panel subsequently extended the decision date to March 27, 2002
under Rule 10(c).
The Panel is satisfied that the Complaint was filed in accordance with the
requirements of the Rules and Supplemental Rules; payment was properly made;
the Panel agrees with the Center’s assessment concerning the Complaint’s compliance
with the formal requirements; the Center discharged its responsibility under
paragraph 2(a) of the Rules to employ reasonably available means calculated
to achieve actual notice to the Respondent of the Complaint; a Response was
filed within the time specified in the Rules and the Panel was properly constituted.
The language of the proceedings is English.
4. Factual Background
Aviation in Hong Kong began in 1925 at the Hong Kong Kai Tak Airport. On October 11, 1989,
it was announced that a new airport for Hong Kong would be constructed at Chek
The disputed domain name was registered on January 4, 1998.
The new airport opened on July 6, 1998 and is now the only airport in Hong
Kong. It handles over 25 million passengers annually and is operated and maintained
by the Complainant, a statutory body established on December 1, 1995 and wholly
owned by the Hong Kong Special Administrative Region Government.
With effect from July 10, 1998 the Complainant became on January 27,2000 the
registered proprietor in Hong Kong of the trademark "Hong Kong International
Airport", and its equivalent Chinese Characters, in device form in classes 35,
36, 37, 39, 40 and 42. The registrations in classes 35 and 36 disclaimed exclusive
rights in the Chinese characters and the words "Hong Kong International
In addition to its registered trademarks, the Complainant owns numerous domain
names, all of which are directed to the website of <hkairport.com>, the
official website of the Complainant and the Hong Kong International Airport.
5. Parties’ Contentions
The Complainant requests the Panel to direct that <hongkongairport.com>
be transferred to the Complainant upon the following legal grounds:
In addition to its registered trademarks, the Complainant has common law rights
in the name "Hong Kong International Airport", under which it trades,
using that name extensively. The Complainant has a significant reputation in
the name "Hong Kong International Airport" throughout the world, enhanced
as a result of considerable advertising and promotion by the Complainant (approximately
US $4 million for 2001/2).
The Complainant submits that "Hong Kong Airport" is also an unregistered
trade mark or service mark of the Complainant.
The disputed domain name is confusingly similar to the Complainant’s "Hong
Kong International Airport" mark. In Hong Kong there is only one airport.
The absence of the word "International" from the domain name <hong
kong airport> is insignificant to members of the public and hence insufficient
to prevent consumer confusion. Further, the main, essential and distinctive
element of the trademark "Hong Kong International Airport" is "Hong
As a result of the amount of both human traffic and flights passing through
and the worldwide significant reputation established in the name "Hong
Kong International Airport" and because there is only one airport in Hong
Kong, it is beyond doubt that many visitors will identify "Hong Kong International
Airport" as "Hong Kong Airport". Therefore, the use of "Hong
Kong Airport" as the domain name creates a likelihood of confusion that
the site is associated and/or connected with Hong Kong International Airport.
The website of the Domain Name http://www.hongkongairport.com is also confusingly
similar to http://www.hkairport.com which the Complainant uses as the official
site for Hong Kong International Airport.
There is a risk that the public will be confused between the Complainant’s
<hkairport.com> website and Respondent’s <hongkongairport.com> website.
Members of the public seeking information about "Hong Kong Airport"
would probably use "hongkongairport" as the URL which will bring Internet
users to the Respondent’s website. If members of the public looked no further
than that site they might assume, incorrectly, that the Complainant does not
have an active website.
The Respondent is not a licensee of the Complainant, nor is the Respondent
otherwise authorized to use the Complainant’s registered or common law trademarks.
The Respondent has no connection whatsoever with the name "Hong Kong Airport".
As of March 19, 2001, the registrant of the disputed domain name was Yomtobian
Enterprises Inc. of PO Box 260920 Encino, California. On March 29, 2001 the
Complainant wrote to Yomtobian Enterprises Inc. asking it to cancel the registration
but received no reply. By June 12, 2001, the registrant had changed from Yomtobian
Enterprises Inc. to Movie Name Company, also of PO Box 260920 Encino, California,
with Yomtobian Enterprise [sic] Inc. of PO Box 260920 Encino, California as
Administrative Contact and Yomtobian Enterprises Inc. of PO Box 260920 Encino,
California as Billing Contact.
On August 1, 2001, the Complainant’s representative wrote to Movie Name Company
asking it to transfer the disputed domain name to the Complainant. This was
The registration details for the disputed domain name have changed constantly
since Movie Name Company first became aware of the Complainant’s complaint on
August 1, 2001. By October 8, 2001, the address for the registrant,
Movie Name Company, had changed to the Malibu street address shown in paragraph
1 above for the Respondent. The Administrative and Billing contacts had changed
to HongKongAirport Inc. at that same street address. By November 28, 2001 the
registrant had changed from Movie Name Company to the Respondent while all other
registration details remained the same as those of October 8, 2001. The webpages
of the disputed domain name also have remained unchanged.
A company search conducted for the Complainant reveals there is no record for
HongKongAirport Inc. in any State of the United States of America. Accordingly,
it is submitted that Movie Name Company and the Respondent are one and the same.
As the Respondent is not a company/corporation in existence and in light of
the change in registrant to "HongKongAirport Inc." only after the
Complainant complained about the disputed domain name, the Complainant submits
that the Respondent changed the name of the registrant from Movie Name Company
to "HongKongAirport Inc." solely to substantiate its right to use
its registration of the disputed domain name and use it to establish a basis
upon which it could claim a legitimate right to the disputed domain name. The
Respondent obtained the registration solely to prevent the Complainant from
registering the name and exploiting it for itself.
The website of the disputed domain name engages in domain management service
and does not carry on any business in relation to Hong Kong or an airport. The
offering of services has nothing intrinsically to do with the disputed domain
In the source code for the website http://www.hongkongairport.com, the description
meta name and keywords meta name do not make any reference to "Hong Kong"
or "Hong Kong Airport" and are the same as for those of http://www.thriftys.com.
As the website of the disputed domain name is a direct replica of http://www.thriftys.com,
the Complainant submits that the Respondent has no genuine intention to offer
goods or services at http://www.hongkongairport.com and it registered the disputed
domain name with the intent that Internauts who search for "Hong Kong Airport"
will go to the website http://www.hongkongairport.com. The Respondent cannot
show that it is making a legitimate real and fair use of the name without having
any intention to gain commercially or to mislead consumers or to tarnish the
The disputed domain name has been registered and used by the Respondent and
Movie Name Company in bad faith for the following reasons:-
(a) The Respondent has registered or acquired the disputed domain name primarily
for the purpose of selling it to the Complainant as owner of the "Hong
Kong Airport" name for a valuable consideration far in excess of the out-of-pocket
costs directly related to the disputed domain name: on July 19, 2001, through
<afternic.com> (which acts as an exchange for domain name sales and purchases)
the Complainant offered anonymously to buy the disputed domain name for US $500.00
On the same day, Movie Name Company stated, through Afternic, that its asking
price was US $175,000.00.
(b) By using the disputed domain name with which the Respondent has no connection
whatsoever, the Respondent is attempting to attract for financial gain, Internet
users to the http://www.hongkongairport.com web site, by creating a likelihood
of confusion with the Complainant’s mark as to the source, sponsorship, affiliation,
or endorsement of the http://www.hongkongairport.com web site
(c) Movie Name Company and the Respondent have not been honest in providing
registration details to the Registrar:
(i) According to the WHOIS searches of March 19, 2001 and August 2, 2001,
the fax number stated by Yomtobian Enterprises Inc. and Movie Name Company was
123-123-1234. There is no such area code as "123" in the U.S.A and
the fax number "123-123-1234" is most unlikely to exist.
(ii) The Respondent is not a company/corporation in existence.
(d) Movie Name Company engages in the business of sale of domain names.
B. The Respondent
This dispute is not properly before the Center because the disputed domain
name was registered before the Policy was adopted. The Policy cannot be incorporated
by reference into a registration agreement when the Policy did not exist. Dotster
is not the Registrar.
Registration of the trademark was effected two years after the Respondent registered
the disputed domain name. The registered mark is very specific, in a black background
circle with Chinese characters around the periphery of the circle, with an airline
and runway in the center. The disputed domain name has none of these characters
or symbols. The services of the Respondent differ from those with respect to
which the Complainant's mark is registered.
The Complainant’s trademarks are not registered in the United States, Europe,
other Asian country or elsewhere. The design of the mark is clearly part of
The Complainant owns 44 domain names which direct traffic to the Complainant's
site <hkairport.com>. All of these domain names were registered after
the Respondent registered its domain name on January 4, 1998. It is unfair,
unreasonable and illegal now to seek usurpation, forfeiture and transfer of
a properly and legally registered domain name.
The Complainant provides no proof that it holds common-law rights in Hong Kong
Airport, let alone rights in the Respondent’s name http://www.hongkongairport.com.
The Complainant's name "Hong Kong International Airport" is clearly not identical
to the Respondent's registered domain name <hongkongairport.com>. Although
the names are alike, they are not confusingly similar.
The Respondent has legitimate rights and interests in the disputed domain name
in that it is now used and has been for four years to promote Respondent's legitimate
business interests in the United States, namely to assist its customers in registering
domain names, providing advertising and web site development. The Respondent's
rights flow from its previous registration (before that of the Complainant),
its long use, its investment in promoting the name, in its customer name recognition,
and its customers' long use of its registered name.
In a declaration made for the purposes of this proceeding (received after the
deadline for the Response but which the Panel admits as evidence), Mr. Saeid
Yomtobian states that he is President of Yomtobian Enterprises, Inc., and of
the Respondent, "hongkongairport.com, Inc." [sic]. He says his attorney
asked him to locate evidence supporting his company's claim of expenses that
went towards the procurement of servers, data systems, programmers, web site
development, incorporation, registration of trademarks, commercial promotion
and advertising. He located a number of cancelled checks, totaling US $175,921.00,
all of which expenditures were made during the year 2001. Similar expenditures
were made in 1999 and 2000 and lesser amount was spent in 1998. The attached
copies of checks were all drawn on the account of Yomtobian Enterprise [sic].
A domain name registered before that of a complainant cannot be in bad faith.
If that were the law, anyone could register a name and then with enough "economic
muscle" attack the registered name as usurpation tactic. The procedure would
violate the doctrine of "first in time, first in right", which is applicable
in this case.
The Respondent has not secured this web site for the purpose of transferring
the disputed domain name to the Complainant. Respondent did not even know about
the Complainant until the Complainant contacted him. The contact was made because
Respondent was legitimately using the website to promote its Internet and web
site businesses and certainly not for the purposes of selling it to the Complainant.
The Respondent refused the Complainant’s offer to buy the disputed domain name
because the price did not cover the cost of creation and maintenance expenses
or its existing and future revenue and net profits.
The disputed domain name was not registered to prevent the Complainant from
using its mark and indeed the Complainant uses <hongkonginternationalairport.com>
now. The Respondent and Complainant are not competitors. The registration of
the disputed domain name by the Respondent was certainly not done to disrupt
the Complainant's business. The Respondent has no interests and has never had
any interests in the airport businesses.
The Complainant's mark is unique and distinct, with specific graphic characteristics,
none of which are used by the Respondent. There is no possible gain by the Respondent
or likelihood of confusion with the Complainant's mark. Hong Kong is a proper
name and a generic word, used throughout the world in various industries to
indicate a source of goods or services.
The Respondent's domain name was properly and legally registered by the Respondent
in 1998, long before the Complainant registered any of its names and even before
it obtained its trademark.
6. Discussion and Findings
Under paragraph 15(a) of the Rules, the Panel must decide this Complaint on
the basis of the statements and documents submitted and in accordance with the
Policy, the Rules and any rules and principles of law that it deems applicable.
At the time of the Respondent’s registration of the disputed domain name in
or about June 2001 (under the name Movie Name Company – see below) the Policy
was incorporated by reference into all registration agreements. The Panel accepts
the information provided by Dotster, Inc. that the Policy applies to the disputed
domain name and that Dotster, Inc. is the Registrar.
To qualify for cancellation or transfer, a Complainant must prove each element
of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of
the domain name; and
(iii) the disputed domain name has been registered and is being used in
Rights in a trademark
As a matter of construction, the relevant date for determining whether a Complainant
has rights in a mark, for the purposes of paragraph 4(a)(i) of the Policy, is
the date of the filing of the Complaint. See eGalaxy Multimedia Inc v. T1
(NAF Case No. FA0111000101823).
As at the date of the filing of the Complaint, the Complainant had rights in
the registered trademark "Hong Kong International Airport" and its
Chinese Characters in device form. The Respondent disputes that the device registration
is sufficient to give the Complainant rights in the words within the device.
It is not clear to the Panel from the copies of the trade mark certificates
supplied by the Complainant (Complaint Ex. 4) whether the registrations without
disclaimer provide trademark protection for the words standing alone. It is
unnecessary for the Panel to form a concluded view on this because the Complainant
does not need to rely upon its registered rights.
Although the words "Hong Kong International Airport" are descriptive,
descriptive words are nevertheless capable of becoming distinctive. In Federal
Court of Canada v. federalcourtofcanada.com (eResolution Case AF-0563) a
three-member panel found the complainant to have common law trademark rights
in the descriptive name Federal Court of Canada, based on extensive and continuous
use, that name having been conferred by statute and the court being the only
one by that name in Canada. See also Banco de Chile S.A. v. Eric S. Bord,
Esq. (WIPO Case No. D2001-0695).
Here, the Complainant has satisfied the Panel that, as at the date of the filing
of the Complaint, that combination of words, standing alone, through extensive
use by the Complainant subsequent to 1998, has become distinctive worldwide
of the airport services provided by the Complainant, which operates the only
airport in Hong Kong.
The Panel finds the Complainant to have common law rights in the mark "Hong
Kong International Airport", as well as rights from its several registrations.
Identity or Confusing Similarity
The Complainant does not claim the disputed domain name is identical to a trademark
in which the Complainant has rights. It submits that the disputed domain name
is confusingly similar to its "Hong Kong International Airport" mark
because in Hong Kong there is only one airport and because the absence of the
word "International" in the disputed domain name is insignificant
to members of the public and hence insufficient and ineffective to prevent consumer
confusion. The Panel agrees that the essential and distinctive element of the
trademark "Hong Kong International Airport" is "Hong Kong Airport".
The test of confusing similarity under the Policy is confined to a comparison
of the disputed domain name and the trademark alone, independent of the other
marketing and use factors usually considered in trademark infringement or unfair
competition cases: Koninklijke Philips Electronics N.V. v. In Seo Kim (WIPO
Case No. D2001-1195); Energy Source Inc. v. Your Energy Source (NAF Case
No. FA101000096364); Vivendi Universal v. Mr. Jay David Sallen and GO247.COM,
Inc. (WIPO Case No. D2001-1121) and the cases there cited.
The Panel finds the disputed domain name <hongkongairport.com> is confusingly
similar to the Complainant’s common law trademark "Hong Kong International
The Complainant has established this element of its case.
The announcement that a new airport for Hong Kong would be built had been made
There is no evidence of use by the Complainant of its common law mark before
the disputed domain name was registered (by Yomtobian Enterprises) in 1998.
By the time the Respondent HongKongAirport Inc. became the registrant of the
disputed domain name in 2001, however, the Complainant had made extensive use
of its common law mark, which had by then become distinctive worldwide of the
Complainant and its services.
The Respondent is not a licensee of the Complainant, nor otherwise authorized
to use the Complainant’s common law trademark. The Respondent has no connection
whatsoever with the name "Hong Kong Airport".
These circumstances are sufficient to constitute a prima facie showing
by Complainant of absence of rights or legitimate interests in the disputed
domain name on the part of the Respondent. The evidentiary burden, therefore,
shifts to the Respondent to show that it does have rights or legitimate interests
in that name whether by reference to the examples set out in paragraph 4(c)
of the Policy or otherwise: Do The Hustle, LLC v. Tropic Web (WIPO Case
No. D2000-0624) and the cases there cited. Respondent has made no such showing.
The Respondent is not using the disputed domain name in connection with any
goods or services relating either to Hong Kong or to airports. It assists its
customers in registering domain names, providing advertising and website development.
Respondent has not demonstrated any legitimate linkage between those services
and the domain name at issue. On the contrary, the conduct of activities under
a domain name that falsely conveys an association with different activities
or a different source cannot demonstrate rights or legitimate interest in the
The Complainant has established this element of its case.
Bad faith registration and use
The Complainant asserts that Movie Name Company (which, as registrant, sought
US$175,000 from the Complainant for the disputed domain name) and the Respondent
are one and the same. Despite the Respondent’s initial submission that Movie
Name Company has nothing to do with this case, there is persuasive support for
the Complainant’s assertion in the Response, which states unequivocally: "The
Respondent refused the Complainant’s offer to buy the disputed domain name".
On the material before the Panel, the only offers made by the Complainant to
buy the disputed domain name were made to Movie Name Company. Further, the Declaration
of Mr. Yomtobian, President of the Respondent, is directed to resisting
any finding of bad faith under paragraph 4(b)(i) of the Policy by demonstrating
that the figure of US $175,000.00 sought by Movie Name Company represents
the Respondent’s documented out-of-pocket expenses directly related to the domain
name. Accordingly the Panel finds that Movie Name Company and the Respondent
are one and the same.
Despite references in the Response to the effect that Respondent registered
the disputed domain name in 1998, and despite the fact that a search conducted
for the Complainant failed to reveal incorporation of the Respondent in any
State of the United States, the Panel is unable to conclude that the Respondent
and Yomtobian Enterprises, Inc. are also one and the same. Mr. Yomtobian himself
recognizes that they are separate and distinct legal entities, since he declares
that he is President of both Yomtobian Enterprises, Inc. and of the Respondent.
The Panel therefore concludes that the domain name was registered in 1998 by
Yomtobian Enterprises, prior to any demonstrated trade mark use by the Complainant
of its common law mark but after the announcement of the construction of the
new airport. After the Complainant had acquired common law rights in the mark
"Hong Kong International Airport", it wrote to Yomtobian Enterprises,
Inc. in March 2001 (Complainant’s Ex. 9) seeking vacation of the disputed domain
name. Shortly thereafter the disputed domain name was registered by Movie Name
Company. The Administrative Contact for Movie Name Company was Yomtobian Enterprise
[sic], Inc. and the Billing Contact was Yomtobian Enterprises, Inc, both having
the email address <mailto:email@example.com>.
The Panel infers that through the knowledge of Mr. Yomtobian, President of
both entities, Movie Name Company, when it registered the disputed domain name,
was aware of the Complainant as operator of the Hong Kong International Airport.
The Panel does not accept that the Respondent did not know about the Complainant
until the Complainant contacted the Respondent.
By 2001 the Complainant had acquired common law rights in the mark Hong Kong
International Airport and the reputation of that mark was worldwide. The Panel
finds it is more likely than not that Movie Name Company (one and the same as
the Respondent) knew of the Complainant’s common law mark "Hong Kong International
Airport" when it registered the disputed domain name following its transfer
from Yomtobian Enterprises, Inc. in June 2001.
Within a month after having registered the disputed domain name, the Respondent
sought US $175,000.00 for it. The checks attached to Mr. Yomtobian’s declaration
are all drawn on the account of Yomtobian Enterprise and accordingly do not
have any apparent bearing on the out-of-pocket expenses of the Respondent. [Even
if they did, those checks, totaling US $175,921.00, cover a much wider range
of expenses than those directly related to the disputed domain name].
The Panel finds that the Respondent registered the disputed domain name under
the name Move Name Company in or about June 2001 primarily for the purpose of
selling the disputed domain name to the Complainant for valuable consideration
in excess of its documented out-of-pocket expenses directly related to the disputed
domain name. Under paragraph 4(b)(i) of the Policy, this finding constitutes
evidence of both bad faith registration and bad faith use.
The Respondent acknowledges that "Hong Kong is a proper name and a generic
word, used throughout the world in various industries to indicate a source of
goods or services". The Panel finds that the descriptive nature of the
disputed domain name is such that it cannot be used in relation to the airport
in Hong Kong without infringing the Complainant’s rights nor can it be used
in connection with non-airport related services without misleading the public.
See Banco de Chile S.A. v. Eric S. Bord, Esq WIPO Case No.
D2001-0695. Yet there is nothing about the Respondent or its domain management
services remotely connected with Hong Kong, nor with airport services. The Respondent
concedes it has "no interests and has never had any interests in the airport
The Panel concludes that the Respondent is using the disputed domain name for
the purpose of attracting to its own website, for commercial gain, Internet
users who the Respondent knows are seeking an "official" site of the
airport at Hong Kong, and is thus creating a likelihood of confusion with Complainant's
mark as to the source, sponsorship, affiliation or endorsement of Respondent's
website. This constitutes evidence of bad faith registration and use under paragraph
4(b) (iv) of the Policy.
The Panel finds that the Respondent has acted in bad faith both in registration
and use of the disputed domain name.
The Complainant has established this element of its case.
Pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel directs
that the domain name <hongkongairport.com> be transferred to the Complainant.