WIPO Domain Name Decision D2001-0915 for 香港上海匯豐銀行.com

page 1 WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION The Hongkong and Shanghai Banking Corporation Limited –v- Bill Lynn Case No. D 2001-0915 1.The Parties The Complainant is The Hongkong and Shanghai Banking Corporation Limited, L37HSBC Main Building, 1 Queen’s Road Central, Hong Kong, PRC. Represented by Messrs. Johnson Stokes & Master, 19th Floor, Princes’ Building, 10Chater 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 RACE Language Encoding: Bq-- . The Registrar is R, Inc. 3.Procedural History The electronic copy of the original Complaint was submitted to the World IntellectualProperty Organization Arbitration and Mediation Center (the “Center”) onJuly 17, 2001. The hardcopy of the Complaint was received on July 20, 2001. Therein,the Complainant requested for a single-member Panel. The Center sent anAcknowledgement of Receipt to the Complainant on July 18, 2001. The Center sent a Request for Registrar Verification to the Registrar on July 24, 2001,and the Registrar confirmed the identity of the Respondent on the same day. OnJuly 27, 2001, the Center forwarded the Respondent a copy of the Complaint to and thenotification of the commencement of this administrative proceeding in the usual mannerand informed the Respondent of the deadline to file a Response, that is,August 16, 2001. No Response was received and the Center issued a Notification ofRespondent Default on August 17, 2001. page 2 The Center properly constituted and appointed this Panel in accordance with the Rulesand Supplemental Rules. No further submissions were received by the Center or thisPanel, as a consequence of which the date scheduled for the issuance of the Panel’sDecision is October 1, 2001. 4.Factual Background The Complainant was established in 1865 and is the founding member of the HSBCGroup. The Complainant is the largest bank in Hong Kong. It is one of the three note-issuing banks in Hong Kong. The HSBC Group is one of the largest banking andfinancial service organizations in the world, having an international network of over6,500 offices in 79 countries. The Complainant’s full name in Chinese is “” and iscommonly known and referred to as “”, which corresponds to theComplainant’s name. The characters have the following meanings: “” – Hong Kong “” – Shanghai “” – abundant remittance “” – bank “” – limited company The Complainant has registered the following trademarks throughout the world inrespect of various services: 1.“” (eg, Hong Kong registration no 1555/1993) 2.“” (eg, China registration no 967955) 3.“WAYFOONG” (eg, Hong Kong registration no 1559/1993) 4.“” (eg, US registration no 1,446,772) The above trademarks have been used and advertised throughout the world. The full listof the trademark registrations is found in Annex C to the Complaint. “” and“” have the same pronunciation and meanings and are for all intents and purposesidentical. “WAYFOONG” is a transliteration of “”/“”. The character “”and “” are regarded as the same in Chinese. No trademark registration for“”“” or “” was submittedby the Complainant. The Complainant and its parent/associated companies have registered many domainnames based on the above trademarks. The full list of domain name registrations isfound in Annex D to the Complaint. Among the registrations are, , and. The Respondent registered the Domain Name on November 10, 2000. 5.Parties’ Contentions A.The Complainant The substance of the Complaint is short and is reproduced below: page 3 “It has recently come to the Complainant’s attention that the Respondenthas registered the Chinese multilingual domain name“.com” without its knowledge or authorization. Asnoted from Annex C, the Complainant has registered the marks “”“”, “” and “WAYFOONG” in respect of various goods andservices throughout the world. In this regard, please note that the word“” is the same as “” under the Chinese characters system. The Respondent has no rights or legitimate interests in respect of theDomain Name because (a) its “.com” website iscurrently substantively inactive and there is no substantial use of thewebsite by the Respondent; (b) the Respondent’s name is different from theDomain Name. The Respondent is therefore not commonly known by theDomain Name; (c) the Respondent is not a bank and the registration and/oruse of the Domain Name bearing the characters “” which mean“bank” in Chinese will be deceptive. The Complainant submits that the Domain Name has been registered and isintended to be used in bad faith. The Complainant further submits that theRegistrant 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 onHong Kong Economic Times on 3 January 2001 that a person withusername “taklee8” offered to sell the Domain Name in a Hong Kong basedonline auction site Go2HK at a starting price ofHK$200,000. A copy of the said newspaper report and its translation areprovided as Annex F. Moreover, the Registrant’s registration has in fact obstructed the Complainantfrom reflecting its mark and services in a corresponding domain name. TheComplainant reiterates that it has legitimate rights to use the name“”. It is the Complainant’s submission that the Respondenthas deliberately registered the Domain Name in order to prevent the Complainantfrom reflecting its marks and services in a corresponding domain name. The Complainant’s Authorized Representative sent a cease and desist letter byemail and by post to the Registrant on 15 May 2001 notifying him that hisregistration of the Domain Name has infringed the Complainant’s right andasking him to assign the Domain Name to the Complainant. A copy of the saidcease and desist letter is provided as Annex E. The Complainant’s AuthorizedRepresentative received no reply from the Registrant after the cease and desistletter and then telephoned the Registrant to ask for a reply. The Registrantconfirmed in the telephone his receipt of the cease and desist letter. TheRegistrant said that the matter was “negotiable” and would ask his lawyer to givea reply to the Complainant’s Authorized Representative. However, theComplainant’s Authorized Representative and/or the Complainant only receivedan email from the Registrant stating that he would reply but received no finalresponse from the Registrant and/or his lawyer to date despite a reminder wassent to the Registrant.” B.The Respondent page 4 The Respondent failed to respond. 6.Discussion and Findings In order to succeed in this proceeding, Article 4(a) of the Policy requires theComplainant to prove the existence of each of the following elements: 1.The Domain Name is identical or confusingly similar to a trademark orservice mark in which the Complainant has rights; 2.The Respondent has no rights or legitimate interests in respect of theDomain 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 theComplaint, the Panel is entitled to draw appropriate inferences pursuant to Rule 14(b).In this case, the Panel accepts the unchallenged assertions of the Complainant as fact, inparticular, in relation to: 1.The inactivity of the Domain Name as an address of a website; 2.The offer for sale of the Domain Name at the online auction site at 3.The cease and desist letter to the Respondent on May 15, 2001; and 4.The telephone conversation between the Complainant’s authorizedrepresentative and the Respondent. Identical or Confusingly Similar Trademark Under the Singapore Trade Marks Act (Cap 332, 1999 Edition), a trademark (or “trademark” as identified therein) means “any visually perceptible sign capable of beingrepresented graphically and which is capable of distinguishing goods or services dealtwith or provided in the course of trade by a person from goods or services so dealt withor provided by any other persons”. This definition is similar to that adopted in manyjurisdictions and this Panel shall be guided by the same. The Chinese charactercombinations “”“”, “”and the Complainant’s name as a result of their history and use clearly fall within thisdefinition. In view of the long and extensive use of these character combinations and their Englishequivalent (ie, the Complainant’s name) as an identifier of the Complainant’s business,this Panel is satisfied that the Complainant would have acquired common law rightsover the same. As such, this Panel finds that “”“”, “” and the Complainant’s name aretrademarks in which the Complainant has rights within the meaning of Article 4(a),bearing in mind that a plain reading of Article 4(a) does not require the trademarkconcerned to be registered. It is an established practice to ignore the “.com” portion of domain names whencomparing them against corresponding trademarks since it is a non-distinguishing page 5 feature. On this basis, this Panel finds that the Domain Name (disregarding the “.com”portion) is identical to “”, “” and“” and confusingly similar to the Complainant’s name in English. Legitimate Interest “” corresponds to the Complainant’s name and the Complainant hasshown that it has legitimate rights to want to use the Domain Name. The Domain Namerefers to the name of a bank but the Respondent is an individual. The Respondent hasnot provided any justification for his selection of the Domain Name. The Panel isunable to identify any reason, including the circumstances set out in paragraph 4(c) ofthe Policy, which allows the Respondent to claim any right or legitimate interest inrespect of the Domain Name. The Respondent has not seen fit to deny the Complainant’s allegations that the DomainName is currently not used to support a website. Although domain names may be usedfor internet 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 has beenused for any internet service. Therefore, the Panel finds that there has been no use ofthe Domain Name. The Panel accordingly finds that the Respondent has no rights or legitimate interests inrespect of the Domain Name. Bad Faith Registration and Use Paragraph 4(b)(i) of the Policy, which provides a ground for finding bad faithregistration and use, reads as follows: “circumstances indicating that you have registered or you have acquiredthe domain name primarily for the purpose of selling, renting, or otherwisetransferring the domain name registration to the complainant who is theowner of the trademark or service mark or to a competitor of thatcomplainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name.” There is no evidence to suggest that the Respondent has used the Domain Name sinceits registration in November 2000. The Panel has already found that the Respondent hasno rights or legitimate interests in the Domain Name. In view of non-use of the DomainName since registration and the absence of contrary evidence, it is difficult to ignore thelikelihood of bad faith registration. In addition, the Domain Name was offered by a “taklee8” for sale by auction forHK$200,000, an amount which is way beyond the cost of registering and maintaining adomain name. Although there is no direct evidence linking “taklee8” to theRespondent, the circumstances are such as to raise a reasonable inference that theDomain Name is available for sale. There is no evidence that the Respondent has denied the availability of the DomainName for sale in response to the newspaper report. The Respondent did not respondsubstantively to the Complainant’s cease and desist letter. The Respondent effectivelyignored the Complainant’s threat of legal proceedings. The Respondent has chosen notto respond to the Complaint. All in all, the Panel finds that the Respondent’s failure to page 6 express any denial or explanation despite the various opportunities offered to himreinforces the inference of bad faith registration and bad faith use. It is the view of this Panel on a balance of probability that the Respondent has registeredthe Domain Name in bad faith and the Domain Name is being used in bad faith. 7.Decision Based on the findings and reasons stated above, the Panel determines that theComplainant succeeds and hereby directs that the Domain Name
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