WIPO Domain Name Decision D2001-0750 for 恒生指數.com

page 1 WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Hang Seng Data Services Limited v. Liu Xiaodong Case No. D2001-0750 1.The Parties Complainant:Hang Seng Data Services Limited 83 Dex Voeux Road, Central Hong Kong, PRC Respondent:Liu Xiaodong No. 32 Zhongchang Street Shahekou District Dalian, Liaoning Province PRC 2.The Domain Name and Registrar Domain Name: (RACE Language Encoding: bq- -) Registrar:Internet Names WorldWide 3.Procedural History The Complaint was received by WIPO by email on June 12, 2001, and in hardcopyform on June 6, 2001. WIPO has verified that the Complaint satisfies the formalrequirements of the Policy, the Rules and the Supplemental Rules and that payment wasproperly 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). TheRegistrar has confirmed that (“the Domain Name”) was registeredthrough Internet Names WorldWide and that Liu Xiadong is the current registrant. TheRegistrar has further confirmed that the Policy is applicable to the Domain Names. page 2 On June 14, 2001, WIPO notified the Respondent of the Complaint in the usual mannerand informed the Respondent inter alia that the last day for sending its Response to theComplainant and to WIPO was July 4, 2001. WIPO issued to the Respondent a DefaultNotice on July 6, 2001. No Response was received. The Panel was properly constituted. The undersigned Panellists submitted Statementsof Acceptance and Declarations of Impartiality and Independence. No further submissions were received by WIPO or the Panel, as a consequence ofwhich the date scheduled for the issuance of the Panel’s Decision is August 20, 2001. 4.Factual Background The Complainant is a company incorporated in Hong Kong. It maintains the well-known Hang Seng family of indices and in particular the world famous Hang SengIndex itself which was launched in 1964. The Complainant is the registered proprietor of a large number of trade mark andservice mark registrations for the name Hang Seng Index in both the English form andin its Chinese equivalent form. Examples of such registrations are: Hong Kong Registration No 01605 dated May 30, 1995, in respect ofadministration, operation and management of unit trusts relating to selectedstocks listed on The Stock Exchange of Hong Kong Limited. The Peoples 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 associated companies are the registrants of anumber of domain names featuring the name Hang Seng Index in both the English andChinese forms. For example, Hang Seng Bank Limited is the registrant of domainname , which was first registered on January 11, 2000. The Respondent registered the Domain Name on November 30, 2000. On February 19, 2001, the Complainant’s representative wrote to the Respondentdrawing the Respondent’s attention to the Complainant’s rights in the name Hang SengIndex (both English and Chinese versions of the name), claiming that the Respondent’sregistration of the Domain Name infringed the Complainant’s rights and inviting theRespondent to cancel the Domain Name. As will be seen below the Complainant states that no reply was received to that letterbut that subsequently the Complainant’s representative telephoned the Respondent tocheck that the letter had been received. Apparently it had been received. TheComplainant states that in the course of that telephone conversation, the Respondentmade a request for a substantial sum of money before he would agree to cancel theDomain Name. The Complainant’s representative indicated that the Complainantwould not agree to pay any sum of money and the Respondent has not cancelled theDomain Name. The Domain Name is not in active use. page 3 5.Parties’ Contentions A.Complainant The substance of the Complaint is short and reads as follows: The Complaint is based on the Complainant’s registrations for the mark“” (Chinese equivalent of “Hang Seng Index”) in respect of variousservices throughout the world. A list of these registrations together with copies ofsome trade mark registration certificates are provided as Annex D to thisComplaint. The Complainant and the Complainant’s parent/associate companieshave also registered, inter alia, the domain names , and on January 11, 2000,January 13, 2001, and January 19, 2001, respectively. A list of the domain namesregistered by the Complainant and its parent/associate companies and copies ofthe whois search results on , and respectively are provided as Annex E. The mark “” (Chinese equivalent of “Hang Seng Index”) (“the Mark”)is the dominant part of the names of the Hang Seng family of indexes provided bythe Complainant. The Mark is extensively used and advertised throughout theworld. The Hang Seng family of indexes, including the Hang Seng Index whichwas launched in 1964, has become an important indicator of stock marketperformance worldwide especially in Hong Kong, London and the Asia Region.The families of indexes maintained by the Complainant includes, but not limitedto, Hang Seng Index, Hang Seng China Enterprises Index, New Hang SengMidCap 50 Index, Hang Seng China Affiliated Corporations Index, Hang Seng100, Hang Seng IT Index, Hang Seng IT Portfolio Index, Hang Seng LondonReference Index and Hang Seng Asia Index. Amongst the above indexes, the Hang Seng Index is a barometer of the HongKong stock market. The constituent stocks are grouped under Commerce andIndustry, Finance, Properties and Utilities sub-indexes. The Hang Seng Indexcurrently comprises 33 constituent stocks which are representative of the market.The aggregate market capitalisation of these stocks accounts for about 70% of thetotal market capitalisation on The Stock Exchange of Hong Kong Limited. It has recently come to the Complainant’s attention that the Respondent hasregistered the multilingual Domain Name (Chinese equivalentof “Hang Seng I”) without its knowledge or authorization. As notedfrom Annex D, the Complainant has registered the mark “” (Chineseequivalent of “Hang Seng Index”) and “Hang Seng Index” in respect of variousgoods and services throughout the world. In this regard, please note that theChinese word “” in “” is the simplified form of the word “” in ourclient’s registered mark “”. The Respondent has no rights or legitimateinterests in respect of the Domain Name because (a) its (Chinese equivalent of “Hang Seng I”) website is currentlysubstantively inactive and there is no substantial use of the webiste by theRespondent; (b) the Respondent’s name is different from the Domain Name. TheRespondent is therefore not commonly known by the domain name. page 4 The Complainant submits that the Domain Name has been registered and used inbad faith. The Registrant registered the Domain Name 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 Complainant’s Authorized Representative sent a cease and desist letter by faxand by registered post to the Registrant on February 19, 2001, notifying him thathis registration of the Domain Name has infringed the Complainant’s right andasking him to cancel the registration of the Domain Name forthwith. A copy ofthe said cease and desist letter is provided as Annex G. The Complainant’sAuthorized Representative received no reply from the Registrant after the ceaseand desist letter and then telephoned the Registrant to ask for a reply. TheRegistrant confirmed in the telephone his receipt of the cease and desist letter.The Registrant requested a substantial amount to be paid by the Complainantbefore he would agree to cancel the Domain Name. The Complainant’sAuthorized Representative immediately made it clear to the Registrant that he hadno rights in the Domain Name and the Complainant would not be prepared to payhim 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-emptiveregistrant whose sole purpose for the registration was for selling, renting, orotherwise transferring the Domain Name registration for profits. Moreover, theRegistrant’s registration has in fact obstruct (sic) the Complainant from reflectingits mark and services in a corresponding domain name. The Complainant reiterates that it has legitimate rights to use the name/mark“” (Chinese equivalent of “Hang Seng Index”). It is the Complainant’ssubmission that the Respondent has deliberately registered the Domain Name inorder to prevent the Complainant from reflecting its marks and services in acorresponding domain name.” B.Respondent The Respondent has not responded. 6. Discussion and Findings General According to paragraph 4(a) of the Policy, the Complainant must prove that: (i)The Domain Name is identical or confusingly similar to a trade mark orservice mark in which the Complainant has rights; and (ii)The Respondent has no rights or legitimate interest in respect of the DomainName; and (iii)The Domain Name has been registered and is being used in bad faith. Where a Respondent who has been properly notified of the Complaint fails to respond,the Panel is entitled to draw such inferences as it considers appropriate (Rule 14(b)). page 5 In this case the consequence of the Respondent’s failure to respond is that the Panelaccepts as fact the uncontraverted assertions of the Complainant and in particular that: The telephone conversation referred to above took place. In the course of that telephone conversation the Respondent demanded ofthe Complainant a substantial sum of money in return for cancellation of theDomain Name. Identical or confusing similarity The Respondent registered the Domain Name , in which the Chinesecharacter “” is the simplified form of the character “” in the Complainant’sregistered trademark “”. Just as the same English word could have multiplebut similar spellings (for example, “organization” and “organisation”), the sameChinese character could have multiple but similar appearances as well. In this case,“” in the Complainant’s registered trademark “” and “” in the DomainName are the same Chinese character, but the former is in thetraditional form and the latter is in the simplified form. The Domain Name comprising as it does the simplified Chinese form of theComplainant’s trade mark/service mark, is substantially identical. For this purposethe .com suffix may be ignored. Accordingly the Panel finds that the Domain Name is identical or confusingly similar toa trademark or service mark in which the Complainant has rights. Rights or legitimate interest of the Respondent The Domain Name reproduces the name of a world famous service product of theComplainant from the ownership details of the Domain Name it is apparent that theDomain Name is not the registered name of the Respondent. Paragraph 4(c) of the Policy which is addressed to Registrants reads as follows: “How to Demonstrate Your Rights to and Legitimate Interests inthe Domain Name in Responding to a Complaint. When youreceive a complaint, you should refer to Paragraph 5 of the Rules ofProcedure in determining how your response should be prepared. Anyof the following circumstances, in particular but without limitation, iffound by the Panel to be proved based on its evaluation of all evidencepresented, shall demonstrate your rights or legitimate interests to thedomain name for purposes of Paragraph 4(a)(ii): (i) before any notice to you of the dispute, your use of, ordemonstrable preparations to use, the domain name or a namecorresponding to the domain name in connection with a bona fideoffering of goods or services; or (ii) you (as an individual, business, or other organization) have beencommonly known by the domain name, even if you have acquired notrademark or service mark rights; or page 6 (iii) you are making a legitimate non-commercial or fair use of thedomain name, without intent for commercial gain to misleadinglydivert consumers or to tarnish the trademark or service mark at issue”. The Respondent has not sought to put forward any justification for his selection of theDomain Name. It does not appear to the Panel that any of the circumstances set out inparagraph 4(c) of the Policy are applicable here. Moreover, the Panel cannot think ofany other reason why the Respondent might reasonably be said to have any rights orlegitimate interests in respect of the Domain Name. The Complainant asserts that the Respondent has no rights or legitimate interests inrespect of the Domain Name on the basis that its website “is currentlysubstantively inactive”. The Complainant asserts further that the Respondent has notconstructed any homepage. The Respondent has not seen fit to deny these allegations.Although the prevalent use of domain names is as HTTP World Wide Web addresseson the Internet, they may be used for other Internet services (eg. FTP, email, etc). TheRespondent has not submitted any evidence to suggest that the Domain Name has beenused for any Internet service. Therefore, the Panel finds that there has been no activeuse of the Domain Name. In the result, the Panel finds that the Respondent has no rights or legitimate interests inrespect of the Domain Name. Bad Faith Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances which “iffound by 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 have registered or you haveacquired the domain name primarily for the purpose of selling,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 ofyour documented out-of-pocket costs directly related to the domainname”. The Respondent registered the Domain Name in November 2000, and has made noactive use of it. As indicated, the Domain Name is a famous name of the Complainantand, as the Panel has already found, the Respondent has no rights or legitimate interestsin respect of it. The Complainant’s representative telephoned the Respondent and in the course of thatconversation the Respondent indicated that he would only agree to cancel the DomainName if the Complainant paid a substantial sum of money. The evidence tosubstantiate this telephone conversation is sparse in the extreme (not even an attendancenote recording the terms of the conversation), but the Panel has no reason to doubt theword of the Complainant’s representative. Moreover, the Respondent, who is aware ofthe allegation, has not denied it. In the result, the Panel finds that the Respondentregistered the Domain Name knowing that it was a name in which the Complainant hadrights and in the hope and expectation that the Complainant would pay to theRespondent a sum of money for the Domain Name being a sum of money in excess ofthe Respondent’s out of pocket expenses. page 7 The Panel finds that the Domain Name was registered in bad faith and is being used inbad faith within the meaning of Sub-paragraph 4(b)(i) of the Policy. 7.Decision In light of the foregoing findings, namely that the Domain Name is identical orconfusingly similar to a trade mark or service mark in which the Complainant has rightsand that the Respondent has no rights or legitimate interests in respect of the DomainName and that the Domain Name was registered in bad faith and is being used in badfaith, the Complaint succeeds. Pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel directs that theDomain Name be transferred to the Complainant. _____________________________ Tony Willoughby Presiding Panelist __________________________________________________ SOH Kar LiangXUE Hong PanelistPanelist Dated: August 17, 2001

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