page 1WIPO Arbitration and Mediation CenterADMINISTRATIVE PANEL DECISIONHong Kong Trade Development Council v. Huang YunCase No. D2001-01001. The PartiesThe Complainant is Hong Kong Trade Development Council, a statutory bodyincorporated in Hong Kong, having a registered office at 38/F, Office Tower, ConventionPlaza, 1 Harbour Road, Wanchai, Hong Kong SAR of P. R. China. The Respondent is a physical person Ms. Huang Yun with her contacting address at 9#401No.3 Garden Villiage, Zhang Jis Gang, 215600, Jiang Su, China.2. The Domain Name and RegistrarThe domain name in dispute is [ (BQ--3CMZS3RPRS7WME3WPROFKXCA.COM)], which is registered with the registrarInternet Names Worldwide of Melbourne, Level 2, 120 King Street, Melbourne Victoria3000, Australia. 3. Procedural HistoryThe WIPO Arbitration and Mediation Center (the "Center") received the Complaint of theComplainant on February 5, 2001 by email and the amended Complaint by email onFebruary 27, 2001 and in hard copy on March 2, 2001. The Center sent to the Registrar a request for verification of registration data on February 27, 2001. On February 27 and 28, 2001, the Registrar confirmed that the domainname in dispute is registered with Internet Names Worldwide and the Respondent is thecurrent registrant of the domain name. The Center completed the formal Requirements Compliance Checklist on March 6, 2001.On March 8, 2001, the Center sent to the Respondent the Notification of Complaint andCommencement of the Administrative Proceeding. This notification was sent by themethods required under paragraph 2(a) of the Rules. The formal date of thepage 2commencement of this administrative proceeding is March 8, 2001.On March 26, 2001, the Center received a fax letter from Ms. Huang Yun (Respondent),and sent to the Respondent the Center’s acknowledgement of receipt of the fax letter onMarch 27, 2001.On March 28, 2001, the Center received the email from Complainant that he has notreceived the fax letter sent by Respondent. The Center gave its reply to Complainant in thesame day. On March 29, 2001, the Center sent to the Respondent Notification of Respondent’sDefault.On April 19, 2001, after receiving a completed and signed Statement of Acceptance andDeclaration of Impartiality and Independence, the Center notified the parties of theappointment of a single-member panel consisting of Mr. Li Yong and informed the partiesthat a decision would be issued by May 2, 2001 absent exceptional circumstances. 4. Factual BackgroundThe Complainant is a statutory body incorporated in Hong Kong since 1966 under theHong Kong Trade Development Council Ordinance (Annex 3 of the Complaint), and itsmain function is to promote, assist and develop Hong Kong’s overseas trade, withparticular reference to exports.The Chinese character of the disputed domain name is the official Chinese name of theComplainant. The domain name [ (BQ--3CMZS3RPRS7WME3WPROFKXCA.COM)] was created on November 30, 2000,according to the search result made by the Complainant shown in the Annex 1 of theComplaint.The domain name at issue has not been put into use up to now, and there is currently nocontent located at the www.香港貿易發展局.com web site.5. Parties’ ContentionsThe Complainant contends that Hong Kong Trade Development Council is a statutorybody incorporated in Hong Kong since 1966 with its mission to create and facilitateopportunities in international trade for Hong Kong companies. The Chinese character ofthe disputed domain name is the official Chinese name of the CouncilThe Complainant believes that the domain name is a unique service and reflects theidentity and functions of its organization. Other organization, which has registered theChinese domain name same as their official Chinese name, would project a wrongimpression that they are the Council or represent the Council, both of which are not true. page 3As such, the Complainant contends that they have good reasons to believe that the currentholder of the domain name at issue has no rights or legitimate interests in respect to thedomain name.The Complainant requests the Administrative Panel issue a decision that the contesteddomain name be transferred to the Complainant.The Respondent failed to submit formal Response according to paragraph 5 (a) of theRules for Uniform Domain Name Dispute Resolution Policy (the Policy), but sent a faxletter to the Center on March 26, 2001. In the letter, the Respondent argued that theregistration of the disputed domain name was in compliance with the relevant on-lineregistration regulations as well as the first-registration principle envisaged by NIS. TheRespondent requested the Center to inform the Complainant that she agreed to settle theissue with Complainant and all expenses in connection with the registration of the disputeddomain name should be born by the Complainant. The Respondent stated “If both partiesreach the settlement, the domain name shall be transferred to the Complainantimmediately. That is, it should be returned to the owner to whom it should have attached. ”6. Discussion and FindingsIn accordance with the Policy, the Complainant asking for transfer of the domain namemust prove the following three elements: 1) the Respondent's domain name is identical orconfusingly similar to a trademark or service mark in which the Complainant has rights; 2)the Respondent has no rights or legitimate interests in the domain name; and 3) theRespondent has registered the domain name and is using it in bad faith. (ICANN Policy, 4(a)). Identical or Confusingly SimilarThe Chinese character “香港貿易發展局” is the official Chinese name of theComplainant. The Complainant is a body corporate established under the Hong KongTrade Development Council Ordinance since 1966, and has been performing its missionsin its English and Chinese name. After so many years’ development, the Complainant hasbeen awarded the good reputation and is quite famous in related commercial community inChina. In fact, the Chinese name of the Complainant has, in practice, become the servicemark of the Complainant, which not only represents the organization itself but also itsservices and functions, albeit not registered in a trademark office. A corporate name, indeedany name, might acquire intellectual property rights over time as goodwill is accumulatedin the name through business practice, reputation, notoriety, advertising, etc., even if notregistered, and numerous decisions under the Policy have so held (see Onu S.R.L. v.Online Sales, LLC, Case No. AF-0672). On the other hand, the Policy itself does notcontain the provisions that trademarks or service marks shall be the registered ones toenjoy protection under the Policy. Keeping this in mind, the Panel believes that theComplainant enjoys the service-mark right over its Chinese name “香港貿易發展局”. The domain name at issue is [ (BQ--3CMZS3RPRS7WME3WPROFKXCA.COM)]. The Panel finds that the Chinese characterof this domain name “香港貿易發展局” is completely identical with the Complainant’sofficial Chinese name, the service mark solely owned by the Complainant. The top levelpage 4domain designator ".com" is only a necessary portion to form a business-related domainname and cannot function to distinguish that name from the Complainant’s service mark.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 NameThe Respondent has not provided evidence of circumstances of the type specified in theICANN Policy, 4(c). There exists no evidence that the Respondent, before receipt of anynotice of the dispute, has used the domain name or a name corresponding to the domainname in connection with bona fide; or that the Respondent has been commonly known bythe domain name; or that the Respondent is making a legitimate noncommercial or fair useof the domain name. Furthermore, the Respondent has not provided evidence of any othercircumstances giving rise to a right or legitimate interest in the domain name. Instead, inthe letter to the Center, the Respondent makes the promise that, if the settlement is reached,the disputed domain name should be returned to the owner to whom it should haveattached. As such, the Panel finds that the Respondent has no rights or legitimate interestsin respect of the disputed Domain Name.Domain Name Registered and Used in Bad FaithParagraph 4(b) of the ICANN Policy specifies four types of circumstances that could beevidence of the registration and use of a domain name in bad faith. According to theICANN 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 thefollowing reasons: 1) The Complainant is established in 1966 and its activities have spread overmany countries and regions of the world. Its official Chinese name“香港貿易發展局” is well known by relevant community throughout somecountries and regions in Asia, especially in mainland China and Hong KongSAR. It is unconceivable that the Respondent residing in China and using thevery identical characters to register her domain name does not know that theComplainant is a big organization incorporated in Hong Kong. Therefore, thePanel infers that the Respondent was aware of the Complainant’s legitimateinterest in its official Chinese name “香港貿易發展局” when the Respondentobtained the domain name at issue.2) The Complainant is a statutory body incorporated in Hong Kong SAR and hasbeen using its official English name and Chinese name to perform its functionsthroughout the world before the creation of the disputed domain name. TheChinese character of the disputed domain name is the official Chinese name ofthe Complainant. The panel is of the opinion that the domain name is a uniqueservice. By common knowledge, using the Chinese wording“香港貿易發展局” as the second level of a domain name can be a very direct,exact and preferred way to reflect the Complainant’s identity and its functions.The Respondent’s conduct of acquiring and holding the domain name[ (BQ--3CMZS3RPRS7WME3WPROFKXCA.COM)] has prevented the Complainantfrom reflecting its service mark in a corresponding domain name.page 53) The Respondent is neither the employee of the Complainant nor authorizedperson to register or to hold the disputed domain name on the latter’s behalf.No evidence shows that the Respondent has any relationship with theComplainant. In fact, in the letter to the Center, the Respondent admits that sheis not the proper holder of the disputed domain name. The domain name is so obviously connected with the Complainant andits services that its very use by someone with no connection with theComplainant suggests opportunistic bad faith (see Deutsche Bank AG v. Diego-Arturo Bruckner, Case No. D-2000-0277).For the reasons above-mentioned, the Panel finds that the Respondent’s registration anduse of the domain name at issue is in bad faith.7. DecisionThe Panel concludes (a) that the domain name [ (BQ--3CMZS3RPRS7WME3WPROFKXCA.COM)] is identical to the service mark owned bythe Complainant, (b) that the Respondent has no rights or legitimate interest in the domainname and (c) that the Respondent has registered and used the domain name in bad faith.Therefore, the Panel orders that the domain name [ (BQ--3CMZS3RPRS7WME3WPROFKXCA.COM)] be transferred to the Complainant.______________________Li YongSole PanelistDated: May 2, 2001
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