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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

HSBC Holdings plc v. Parwez Hussain

Case No. D2005-0932

 

1. The Parties

The Complainant is HSBC Holdings plc of Birminghan, United Kingdom of Great Britain and Northern Ireland, represented by Mr. Michael Weygang, of Birmingham, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Parwez Hussain, also of Birmingham, United Kingdom of Great Britain and Northern Ireland.

 

2. The Domain Name and Registrar

The disputed domain name <hsbc-amanah.com> (the “Domain Name”) is registered with Easyspace (the “Registrar”).

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 31, 2005. The Center transmitted its request for registrar verification by email to the Registrar on September 1, 2005, and on the same date, the Registrar transmitted its response to the Center, confirming that it had received a copy of the Complaint, that it was the registrar, and that the Respondent was the registrant of the Domain Name, that the Uniform Domain Name Dispute Resolution Policy (the “Policy”) applied to the registration, that the Domain Name would remain locked during this proceeding, that the registration agreement was in English and that it contained a submission by the registrant to the jurisdiction at the location of its principal office for court adjudication of disputes concerning or arising from the use of the Domain Name; and providing the contact details recorded on its database.

The Center verified that the Complaint satisfied the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 12, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was October 2, 2005. The Response was filed with the Center on September 30, 2005.

The Center appointed Mr. Jonathan Turner as the sole panelist in this matter on October 7, 2005. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

Having reviewed the file, the Panel is satisfied that the Complaint and Response complied with applicable formal requirements and that the dispute has been submitted to a properly constituted Panel in accordance with the Policy, the Rules and the Supplemental Rules.

 

4. Factual Background

The Complainant and its subsidiaries carry on a large international business providing banking and financial services under the name “HSBC”. The business has a major presence in the United Kingdom, including in the Birmingham area, having taken over the business of the Midland Bank in 1992.

The Complainant’s group includes a division which provides finance in accordance with the principles of Shariah, Islamic law, under the name “HSBC Amanah”. The division was established and has operated under this name since 1998. It is based in the United Arab Emirates and has regional representatives in the UK and other countries.

The Complainant registered the domain name <hsbcamanah.com> on March 4, 2000, and has operated a website for its “HSBC Amanah” division at “www.hsbcamanah.com” since October 2002.

The Complainant has also registered “HSBC AMANAH” as a trademark in international classes 36 and 38 in the UK and other countries. The application to register the mark in the UK was filed on November 20, 2001; applications were made in other countries at various dates from September 2001 onwards.

The term “Amanah” means “trust” in Arabic and is used in the context of Islamic commercial and financial law to refer to a transaction in which one party keeps another’s funds or property on trust. It can also be used to describe deposit taking, custody or goods on consignment.

The Respondent is a resident of Birmingham, UK. He has been a Trustee of the Ashiana Community Project Charity for four years and its treasurer for the last 18 months. He has also been a Governor of Conway Primary School for seven years, serving during this time as chairman and vice-chairman of both the Governing Body and the Staffing and Finance Committee.

The Domain Name was registered on July 13, 2003, and the registration was renewed by the Respondent on July 26, 2004, for six years as from July 13, 2004. As at August 31, 2004, the Domain Name was directed to a holding page of the Internet service provider, Easyspace.

On August 31, 2004, the Complainant’s in-house solicitors wrote to the Respondent stating that “HSBC’s Amanah trademark has been registered and is protected” and inquiring as to the Respondent’s reasons for registering and intended use of the Domain Name.

The Respondent replied on September 19, 2004, stating that the Domain Name had been purchased in the previous year “because it corresponds to the initials of our Islamic book club. Revised launch date near the end of the first quarter of 2005”. He contended that the intended use of the Domain Name would not infringe the Complainant’s trademark, since it concerned different goods and services, and that his book club had itself registered its logo as a trademark in class 16. He also stated that the club had received a request to purchase the Domain Name and two requests to place online banner advertisements on its website; that they had “gone too far down the development cycle to change our domain name”; but that they had “finalized the process of accepting online advertising; and that he was “authorized to negotiate terms and inform you of the technical specifications for any advertising banners that we will accept on our site”.

The Complainant’s solicitors wrote back to the Respondent on September 24, 2004, inquiring as to what the letters “h” and “s” in the Domain Name stand for, requesting details of the trademark registration to which he had referred, and pointing out that the Domain Name was registered subject to the Policy. No reply having been received, the Complainant’s solicitors sent a chasing letter on October 11, 2004.

The Respondent replied on October 18, 2004, stating that a request had been received from a third party to transfer the Domain Name, seeking verification that he was corresponding with the Respondent’s authorized representative prior to a “board meeting” after the end of Ramadan, and continuing “Whilst we are happy for the matter to go to ICANN, we would prefer a decision on this matter without the delay that would entail. To speed the process along we are willing to meet with the representatives of HSBC Holdings plc”.

The Complainant’s solicitors wrote to the Respondent again on October 26, 2004, confirming that they were instructed by the Complainant and asking the Respondent to provide the information previously requested in their letter of September 24, 2004, namely what the letters “H” and “S” stand for and details of the trademark registration to which he had referred. No reply having been received, the Complainant’s solicitors sent chasing letters on November 12 and 26, 2004. A letter dated November 25, 2004, and received by the Complainant’s solicitors on December 1, 2004, apparently written on the Respondent’s behalf, advised the Complainant’s solicitors that the Respondent had been away and so unable to respond to their inquiries.

By letter dated December 14, 2004, the Respondent informed the Complainant’s solicitors that the name of the book club was “Hussain Shariah Book Club – amanah”. The letter also enclosed a leaflet for the book club bearing this name, said to be from the previous year; a copy of a logo comprising the words “HUSSAIN SHARIAH BOOK CLUB AMANAH” the subject of a trademark application in class 16 of the UK register; and a “rough draft” of the proposed website. The application to register the trademark had in fact been made on September 19, 2004, in the name of “Hussain Shariah Book Club Amanah”. A company was incorporated under the name “Hussain Shariah Book Club – Amanah Ltd” on December 11, 2004, pursuant to an application by the Respondent and Onjam Bostan of the same address on December 7, 2004.

The Complainant’s solicitors sent a holding reply on January 4, 2005, and responded substantively on February 15, 2005, stating that the Complainant would pursue a complaint under the Policy unless the Domain Name was voluntarily transferred to it. By letter dated February 28, 2005, the Complainant’s solicitors were informed that the Respondent was abroad following the death of a parent, that their letters had been marked urgent, and that they should get a response by the end of March.

By letter dated April 12, 2005, the Respondent insisted that his book club did not infringe the Complainant’s rights or impact negatively on its business and that he was advised that it had a legitimate interest in accordance with the Policy. He indicated that a temporary website was being tested at “www.parwez.co.uk” to avoid causing offence while seeking to resolve the dispute. He further stated that the Domain Name had been registered and was being used for legitimate non-commercial or fair use; that the trademark was clearly visible and identified it as a book club; that the activities were funded by selling advertising space, so it did not compete and could not possibly mislead customers into believing that it was associated with the Complainant; and that bank statements indicated payments to the amanah book club going back some five years. He also inquired as to the position of the Complainant’s marketing or public relations departments on initiating legal action against a muslim social enterprise.

By letter dated April 21, 2005, the Complainant’s solicitors advised the Respondent that the Complainant remained of the view that the Domain Name implied that the Complainant participated in or endorsed the Respondent’s venture, and intended to pursue a complaint under the Policy unless the Domain Name were transferred to it. By letter dated May 12, 2005, the Respondent informed the Complainant’s solicitors that “In the week beginning 20th June 2005, the full executive is schedule to meet. One of the agenda items is, the correspondence …. regarding our domain name. I have been asked to contact yourself and request a summary of the reasons why you maintain your right to the domain name supersedes our right to the domain name”. The Complainant’s solicitors replied by letter of June 13, 2005, stating that the reasons had been given in the correspondence and would be set out more fully in the Complaint.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has both registered and common law trademark rights in the name “HSBC AMANAH” and that the Domain Name is identical and confusingly similar to it.

The Complainant denies that the Respondent has rights or legitimate interests in respect of the Domain Name. It submits that the information provided by the Respondent indicates that the “Hussain Shariah Book Club” was formed after September 11, 2001, (apparently referring to the rough draft website content provided by the Respondent, according to which this name was adopted as part of a reevaluation following the events of that date). The Complainant also points out that the Domain Name was not registered until July 13, 2003, and has remained “parked” since then, and that the applications to register the logo “HUSSAIN SHARIAH BOOK CLUB AMANAH” as a trade mark and the company “Hussain Shariah Book Club – Amanah Ltd” were only made after the Complainant’s solicitors’ letters of complaint.

The Complainant further submits that the Respondent never used the acronym “HSBC” to describe the “Hussain Shariah Book Club” and that the combination “HSBC – Amanah” was contrived in an attempt to establish fair use of the Complainant’s mark. According to the Complainant, the correspondence demonstrates that the Respondent was aware of the Complainant’s rights in the mark. The Complainant questions why the Respondent went to the expense of incorporating a limited company, registering a trademark and taking legal advice on his intellectual property rights when no charges are levied on members of the bookclub. Referring to the Respondent’s willingness to accept banner advertising, the Complainant alleges that the Respondent’s intention in registering the Domain Name was to mislead and divert consumers to his website for commercial gain.

The Complainant also alleges that the Respondent registered and is using the Domain Name in bad faith. The Complainant interprets the Respondent’s correspondence as offering the Domain Name for sale. In addition, it reiterates that the Respondent must have been aware of the Complainant’s use of the name “HSBC Amanah” when he registered the Domain Name, and alleges that the adoption of the Domain Name is a form of “typosquatting” liable to mislead consumers. The Complaint further submits that the incorporation of the entirety of its trademark into the Domain Name is in itself evidence of bad faith, and observes that the Respondent’s trademark and company registration were prompted by its solicitors’ letters of complaint.

The Complainant requests a decision that the Domain Name be transferred to it.

B. Respondent

The Respondent states that the founding members of “Hussain Shariah Book Club – Amanah” are community activists working together to make their neighbourhoods a better place, including by encouraging members to lend books to disadvantaged children. He explains that by April 2003 this library service was becoming unworkable since the initial enthusiasm had worn off. He says that it was decided to put the library service online in the hope that this would speed it up and encourage more members to join. Since this depends on voluntary efforts, it has taken time to prepare a website, although a mockup was produced by June 2005 and the requirements were finalized by July 2005.

The Respondent contends that the Complainant cannot rely on common law rights since its HSBC Amanah division was only established in 1998. He accepts that the Domain Name is similar to the Complainant’s trademark, but contends that his own trademark registration in class 16 gives comparable and independent rights in relation to the Domain Name.

The Respondent maintains that he has rights or legitimate interests in respect of the Domain Name, in that he has a corresponding registered trademark, has been offering services, has been making payments since July 2002, and renewed the Domain Name for six years prior to being contacted by the Complainant.

The Respondent disputes the Complainant’s contentions that his registration of a trademark and company after the Complainant’s solicitors’ complaints is evidence of bad faith. He says that funds were not available from voluntary contributors at first, with the consequence that the Domain Name was allowed to lapse for 13 days when the registration expired on July 13, 2004 before it was renewed on July 26, 2004. According to the Respondent, the fact that the Domain Name registration was then renewed for six years is evidence of good faith. He goes on to say that the registration of the trademark and of the company followed in the normal course of events after the renewal of the Domain Name. He also observes that it is quite normal for charities to register companies and that this cannot be regarded as evidence of bad faith.

The Respondent similarly explains the lack of active use of the Domain Name as attributable to lack of resources prior to the Complaint and a desire to resolve the dispute thereafter.

The Respondent also disputes the Complainant’s interpretation of his correspondence as implying that the Domain Name was for sale, pointing out that the terms to be negotiated were for banner advertising, not sale of the Domain Name. On the other hand, the Respondent objects that the Complainant did not accept his offer to meet to attempt to resolve the dispute, despite his offer to transfer the Domain Name.

The Respondent emphasizes that there is no possibility of internet users mistaking his website for the Complainant’s, that he is not offering services covered by the Complainant’s trademark, and that there will be no detrimental effect on the Complainant. The Respondent also denies that he had knowledge of the Complainant’s trademark before he registered the Domain Name.

Finally, the Respondent alleges that the Complainant has attempted reverse domain name hijacking, since it has misleadingly implied that the principal website for its HSBC Amanah division is at “www.hsbcamanah.com”, when it is not; refused all proposals to meet and resolve issues; deliberately misquoted correspondence; referred to cases whose material facts were wholly different from the present; attempted to confuse the issue in the hope that the Panel would not be aware of the limitations of trademark rights; and filed the Complaint solely to harass the Respondent.

The Respondent requests that the Complaint be rejected and that a finding of reverse domain name hijacking be made.

 

6. Discussion and Findings

In accordance with the Policy, paragraph 4(a), to succeed in this proceeding, the Complainant must prove (a) that the Domain Name is identical or confusingly similar to a mark in which it has rights, (b) that the Respondent has no rights or legitimate interests in respect of the Domain Name, and (c) that the Domain Name was registered and is being used in bad faith. These requirements will be considered in turn.

A. Identical or Confusingly Similar to Mark in which Complainant has rights

It is clear and not disputed that the Complainant has registered rights in the mark “HSBC AMANAH”. It is unnecessary to discuss whether it also has unregistered rights.

The Respondent accepts that the Domain Name is similar to this mark, and the Panel is satisfied that it is confusingly similar or identical. It differs from the mark only in the presence of the hyphen and the generic .com suffix. The Panel considers that a significant number of internet users might type the Domain Name in the expectation of finding a website of the Complainant’s “HSBC Amanah” division, since a hyphen is often used instead of a space, the latter being an inadmissible character in domain names.

Although internet users would be likely to appreciate that the holding page to which the Domain Name has hitherto resolved, or a website of the nature which the Respondent claims to be intending, is not in fact the website of the Complainant’s “HSBC Amanah” division, it is well established that initial confusion between a Domain Name and the Complainant’s mark of the kind described above is sufficient to satisfy the first requirement of the Policy: see the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, §1.2 and cases cited there.

The Panel concludes that the first requirement of the Policy is satisfied.

B. Rights or Legitimate Interests

In accordance with paragraph 4(c)(i) of the Policy, a respondent’s rights or legitimate interests in respect of a domain name may be demonstrated by use or demonstrable preparations to use the domain name or a name corresponding to it in connection with a bona fide offering of goods or services before notice of any dispute.

Even if the Respondent has used or prepared to use the name “Hussain Shariah Book Club – Amanah” before notice of the dispute, the Panel considers that this is not a name corresponding to the Domain Name for the purpose of paragraph 4(c)(i) of the Policy. “Hussain Shariah Book Club – Amanah” is clearly different from “HSBC-Amanah”; the former is not confusingly similar to “HSBC-Amanah; the latter is.

The Respondent has not controverted in his Response the contention in the Complaint that he had not used the name “HSBC-Amanah” (as opposed to “Hussain Shariah Book Club - Amanah”) in connection with a book club or any other offering of goods or services prior to notice of the dispute. Having reviewed the file, the Panel is satisfied that there is no evidence of such use.

In accordance with paragraph 4(c)(ii) of the Policy, a respondent’s rights or legitimate interests in respect of a domain name may be demonstrated by evidence of being commonly known by the domain name. Again, whatever may be the position regarding the name “Hussain Shariah Book Club – Amanah”, the evidence does not show that the Respondent or a book club with which he was associated was commonly known by the Domain Name or even by the name “HSBC-Amanah”.

In accordance with paragraph 4(c)(iii) of the Policy, a respondent’s rights or legitimate interests in respect of a domain name may be demonstrated by evidence that he is making legitimate non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or tarnish the reputation of the complainant’s mark. As matters stand, the Respondent is not in fact using the Domain Name for the alleged book club, and this was also the position when the Respondent received notice of the dispute, which the Panel regards as the relevant date. However, even if the Respondent had commenced using the Domain Name for this purpose by that date, the Panel would not regard such use as legitimate or fair, since it would have caused unnecessary confusion from which the Respondent would have profited.

The Panel is satisfied by the evidence that the Complainant had developed a substantial reputation and goodwill under the name “HSBC Amanah” before the Respondent registered the Domain Name. Had the Respondent begun to use the Domain Name at this or any later date, it would have caused confusion with the Complainant, which could easily have been avoided by the choice of one of numerous possible alternative domain names.

Furthermore, had the Respondent accepted banner advertising on a website at “www.hsbc-amanah.com”as he says he intended, he would have profited from the confusion with the Complainant, since the advertisers were no doubt interested and would have paid to advertise on the Respondent’s website on account of the traffic generated by this confusion. Even though internet users would probably have realized when they saw the Respondent’s website that it was not the Complainant’s, they would still have seen the banner advertisement, and the advertiser would thus have achieved its object. Such exploitation of the Complainant’s reputation would not have been legitimate or fair.

The registration by the Respondent of a trade mark and company do not confer rights or legitimate interests within the meaning of paragraph 4(a)(ii) of the Policy since the applications were filed only after notice of the dispute. In any case, neither the Respondent’s registered mark (a logo comprising the words “HUSSAIN SHARIAH BOOK CLUB AMANAH”) nor the company’s name (Hussain Shariah Book Club – Amanah Ltd) correspond to the Domain Name; they are both different and readily distinguishable from the Complainant’ mark.

In all the circumstances, the Panel is satisfied that the Respondent does not have rights or legitimate interests in respect of the Domain Name and that the second requirement of the Policy is satisfied.

C. Registered and Used in Bad Faith

The Complainant had provided its Shariah-based financial services for some five years under the name “HSBC Amanah” by July 2003, when the Respondent registered the Domain Name. In view of the Respondent’s interest in Islam and Shariah, and his residence in a country and region where the Complainant has a considerable presence, the Panel considers it highly probable that he was aware of at least some of the Complainant’s operations under the name “HSBC Amanah” when he registered the Domain Name, even if he did not appreciate that the Complainant had registered this name as a trademark.

It follows that the Respondent knowingly adopted a Domain Name essentially identical to a trademark used by the Complainant, even though he could easily have chosen a name which was not identical or confusingly similar to that name, as discussed above. In these circumstances, the Panel considers that the Respondent chose the Domain Name in the expectation that he would derive some benefit from its confusing similarity with the trademark used by the Complainant.

Furthermore, according to his correspondence, the Respondent finalized the process of accepting online advertising and was ready to negotiate terms for it months before a draft website was prepared. This indicates a clear intention on the part of the Respondent to exploit the Domain Name for advertising. The Panel finds it most likely that the Respondent would have gained revenue through advertising on the website with the Domain Name on account of the traffic generated by confusion with the Complainant.

In the view of the Panel, the Respondent intended to attract internet users to a web page or site located by the Domain Name, and thereby to obtain advertising revenue, by means of the likelihood of confusion with the Complainant’s mark. These circumstances constitute evidence of bad faith registration and use in accordance with paragraph 4(b)(iv) of the Policy.

This view is reinforced by a number of other matters:

(a) Although the Respondent claims to be running a neighbourhood book club, for which a .co.uk domain name might have been more appropriate, he chose a .com domain name, thereby exacerbating the risk of confusion with the Complainant’s international business;

(b) The words “Hussain Shariah Book Club - Amanah” constitute a strangely formal combination for the name of a neighbourhood book club;

(c) The Respondent claimed in his letter of September 19, 2004 to “have gone too far down the development cycle to change our domain name”, but the evidence indicates no basis for this assertion;

(d) It took the Respondent over eleven weeks to answer the question asked by Complainant’s solicitors in their letter of September 24, 2004 as to what the letters “h” and “s” in the Domain Name stand for.

In all the circumstances, the Panel concludes that the Domain Name was registered and is being used in bad faith.

D. Reverse Domain Name Hijacking

Since the Panel finds that the Complaint is justified, the issue of reverse domain name hijacking does not arise.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <hsbc-amanah.com>, be transferred to the Complainant.


Jonathan Turner
Sole Panelist

Dated: October 18, 2005

 

Источник информации: https://internet-law.ru/intlaw/udrp/2005/d2005-0932.html

 

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