WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SembCorp Industries Limited v. Hu Huan Xin
Case No. D2001-1092
1. The Parties
1.1. The Complainant in this Administrative proceeding is SembCorp Industries Ltd., a public listed company incorporated under the laws of Singapore with its address at 9 Bishan Place, # 08-00 Junction 8, Singapore 579837. The Complainant is represented by Allen & Gledhill, Singapore.
1.2. The Respondent is Mr. Hu Huan Xin of Room I/J, 22 Floor, Toronto Building, Canada Garden, 8 Feng Ye Road, Guangzhou, Guangdong-510410, People�s Republic Of China.
2. The Domain Name and Registrar
The domain name in dispute is registered with Network Solutions, Inc., Herndon, Virginia, USA.
3. Procedural History
3.1. This is an administrative proceeding pursuant to the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation for Assigned names and Numbers (ICANN) on August 26, 1999 ("the Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 ("the Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules") of the WIPO Arbitration and Mediation Center ("the Center").
3.2. A Complaint was received by the Center by e-mail on September 3, 2001 and in hard copy on September 5, 2001. The Complaint was acknowledged on September 4, 2001, and the registration details were sought from the Registrar. On September 5, 2001, the Registrar confirmed that the disputed domain name is registered in the name of the Respondent (whose address is recorded as above).
3.3. On September 10, 2001, the Center satisfied itself that the Complainant had complied with all formal requirements. The Center formally dispatched a copy of the Complaint to the Respondent by post/courier and e-mail with a letter notifying the Respondent of the commencement of this administrative proceeding. The Center sent copies to the Complainant and the Registrar.
3.4. The last day specified by the Center for a response was October 1, 2001. On September 29, 2001, a response was filed by e-mail. Thereafter the Center notified the Respondent that additional four copies of the Response and annexures (hard copies) were expected. The Respondent replied on October 4, 2001, stating that he had dispatched the relevant copies. In this email, the Respondent also took the opportunity of making certain additional comments. This e-mail conveyed through rhetoric the fact that the complainants, owing to their status as a large corporation were now attempting to retrieve a name over which they had no rights.
3.5. On October 12, 2001, the Center notified the parties of the appointment of the undersigned (Mr. Pravin Anand) as panelist and of the fact that the projected decision date was October 26, 2001. The case file was transmitted to the Panel on the same date.
3.6. The Complainant, through an email dated October 18, 2001 relied upon Goldline International, Inc. Vs. Gold Line, WIPO Case No. D2000-1151, to contend that additional submissions (subsequent to the Complaint and Response) were inadmissible and should be disregarded by the Panel. In the alternative, should the Panel admit this additional evidence, then, in accordance with Rule 10(b), the Complainant should also be permitted to reply to the same.
3.7. Rule 12 of the UDRP states that the panel may in its sole discretion request further statements or documents from either of the parties. Thus, no party has the right to insist upon the admissibility of additional evidence.
3.8. Exercising its discretionary powers under Rule 12, the Panel sought certain additional clarifications/documents from the Complainant and gave the Respondent an opportunity to respond to these additional submissions. The Panel�s order was as below:
i) The Complainant may clarify how "bad faith" can be said to exist in a case where there is no evidence on record showing that the Respondent on the date of registration of its domain name i.e. July 29, 1998, knew or could foresee the formation or future use of the expression Sembcorp.
ii) According to the Complainant's case, SembCorp was first used in 1968 (para 12(c) on page 11 of the Complaint) while the Respondent has alleged, at least as regards SembCorp Utilities Pte Ltd. that the name was incorporated in the corporate name only after October 27, 1998 (page 3 of the Response). The Complainant may provide clear and cogent evidence, if any, to show the use of the word Sembcorp as a trade mark by the Complainant�s company or its predecessors in business prior to the registration of the domain name on July, 29, 1998.
iii) Does the Complainant have any advertisements prior to July 29, 1998, clearly showing the use of the word Sembcorp?
iv) Although the contents of the Respondent's e-mail of October 4, 2001, does not state anything which is substantially different from what is already contained in its Response dated September 24, 2001, the said e-mail is admitted as evidence and the Complainant is given an opportunity to reply to the same.
3.9. Additional submissions by the Complainant in relation to the above including any documents were to be submitted within four days, by November 2, 2001. The Respondent would then have four days from the date of receipt to respond thereto.
3.10. Accordingly the Complainant made certain additional submissions on November 2, 2001. Since the Respondent had received the Complainant�s submissions only on November 7, 2001, the Panel through its order dated November 9, 2001, clarified that the Respondent need only to submit his response by November 11, 2001. The due date for the decision was accordingly extended to November 15, 2001.
3.11. 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 Complainant�s compliance with the formal requirements; the Complaint was properly notified to the Respondent in accordance with Paragraph 2(a) of the Rules; the Response was filed within the time specified by the Rules and the Panel was properly constituted.
4. Factual Background
4.1. The Complainant is a public listed company incorporated under the laws of the Republic of Singapore. It was formed on October 19, 1998, from the merger of Singapore Technologies Industrial Corporation and Sembawang Corporation Ltd. (a company incorporated in Singapore since 1968).
4.2. The company has been listed on the main board of the Singapore Exchange since 1998, with assets worth in excess of US$ 2.8 billion. It is Asia�s foremost engineering services group, involved in utilities, engineering and construction, environmental engineering, logistics and marine engineering. It is the largest engineering and construction company in Asia outside of Japan and Korea and is one of the South East Asia�s leading supply chain logistics group. It also owns and operates the largest ship repair and conversion facilities in East Asia.
4.3. The key companies, which make use of the "SembCorp" name and engaged in diverse business of the Complainant are:
a) SembCorp Utilities Pte Ltd (formerly known as SembCorp Pte ltd)
Date of Incorporation : 09.04.1973
b) SembCorp Engineers and Constructors Pte Ltd (formerly known as SembCorp Construction Pte ltd)
Date of Incorporation : 11.12.1982
c) SembCorp Waste Management Pte Ltd (formerly known as Riau Petroleum Holdings Pte Ltd)
Date of Incorporation : 19.05.1995
d) SembCorp Logistics Ltd (formerly known as Sembawang Marine and Logistics Ltd)
Date of Incorporation : 22.02.1971
e) SembCorp Marine Ltd (formerly known as Jurong Shipyard ltd)
Date of Incorporation : 25.04.1963
4.4. In addition, there are other related entities of the Complainant which also use the "SembCorp" name.
4.5. The Complainant has also registered and uses the following domain names:
-
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4.6. The Complainant has applied to register the "SembCorp� trademark in Singapore and these applications are currently pending.
4.7. The Respondent registered the disputed domain name on July 29, 1998. Till date the domain name does not resolve to an active website. On June 8, 2001, the Complainant wrote a letter to the Respondent asserting its rights and interests over the "SembCorp" trademark and inquired if the Respondent was willing to transfer the domain name upon payment of costs incurred by him in relation to the registration/renewal of the domain name. The Respondent refused, stating that he would not accept anything less than the "market value of the website" and also added that "if there is no additional benefit, he would keep the domain name and use it later".
5. Parties Contentions
5.1. Complainant contends as follows:
5.1.1.The disputed domain name is identical to the Complainant�s trademark "SembCorp". The impugned domain name is identical to the obvious contraction of the Complainant�s name, SembCorp Industries Ltd., which name has been in use by the the Complainant (and its predecessor, Sembawang Corporation Limited) for over 30 years, since 1968.
5.1.2. The Respondent has no legitimate interest in the domain name. The Respondent is not a licensee of the Complainant�s or in any other way authorized to use the Complainant�s trademark. Further, neither has the Respondent used the domain name to offer bona fide goods or services since the date of registration nor has he made any preparations to use the domain name. Mere registration or earlier registration does not establish rights or legitimate interests in the disputed domain name (See Pharmacia & Upjohn Company V. Moreline, WIPO Case No D2000-0134). Hence the Respondent cannot be said to have any rights/legitimate interests in the disputed domain name.
5.1.3. Although the Respondent has registered the impugned domain name on July 29,1998, the same has been inactive till date. The rejection of the Complainant�s offer of re-imbursement of all costs incurred in the registration/renewal of the domain name and demand for a profit for the transfer of the domain name constitute evidence of the Respondent�s bad faith use/registration of the domain name (See National Football League Properties Inc and Chargers Football Company v. One Sex Entertainment Co., a/k/a , WIPO Case No. D2000-0118).
5.2. Respondent contends as follows:
5.2.1. That the Respondent registered the domain name prior to the coming into being of the Complainant. When the Respondent registered the domain name, he neither knew nor could foresee that a merger would take place and this merger would result in a company named SEMBCORP. Therefore his registration has been in good faith.
5.2.2. The Complainant has wrongly attempted to convey that companies with the name SEMBCORP existed even prior to 1998, when this was not the case.
5.2.3.That he has registered the domain name for personal business use and not for the purpose of selling the domain name to the Complainant.
5.2.4.That at the time of registering the domain name, the Respondent (whose English name is Michael) intended to set up a company along with his partner Edward He (an employee of Procter & Gamble in Guangzhou, P.R. China). The company was to be called "Sino Edward and Michael Business Corporation". The term SEMBCORP was a contraction of this name. The company itself was set up later on April 5, 1999.
5.2.5. That owing to his fast rising career and long hours of work, he did not have enough time to activate his website.
5.2.6. That he had never contacted the Complainant for selling the domain name; rather it was the Complainant who inquired about the possibility of a transfer. Although the Complainant offered the costs of registration and maintenance fees to the tune of US$140, the Respondent had already spent US$ 343 (the registration and maintenance fees till 2010), which amount is significantly higher than what the Complainant had offered.
6. Discussions and Findings
6.1. Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
a) That the domain name registered by the Respondent is identical or confusingly similar to a service mark or trade mark in which the Complainant has rights; and
b) That the Respondent has no legitimate interests in respect of the domain name; and
c) That the domain name has been registered and used in bad faith.
Complainant�s Trademark Rights; Identical/Confusing Similarity
6.2. Before the Panel begins to determine if the impugned domain name is identical or confusingly similar to the Complainant�s trademark, the question of whether the Complainant has trademark rights in the first place has to be addressed.
6.3. The Complainant had, in its Complaint, submitted extensive evidence to prove its trademark rights in the name SEMBCORP, including inter-alia evidence of several trademark applications, as also the incorporation of group companies bearing the name Sembcorp. Such evidence clearly established that trademark rights in SEMBCORP arose on/after October 19, 1998, when SembCorp Industries Ltd. came into existence. However, there was a doubt as to whether the Complainant had trademark rights in SEMBCORP, as on the date of registration of the domain name i.e. on July 1998.
6.4. Owing to this doubt, the Panel exercised its discretion under Rule 12 of the UDRP Rules and called for additional evidence from the Complainant. The Complainant then submitted clear and cogent evidence to prove its trademark rights in SEMBCORP even prior to the registration of the impugned domain name by the Respondent.
Such evidence included, inter-alia, the following:
a) The Registration of a business called "SembCorp" by the Complainant on November 21, 1996 (a certificate of registration confirming this registration was annexed along with the supplemental filing as Annexure H.)
b) Copies of Annual Reports for the year 1995-97, demonstrating the use of the mark "SembCorp".
c) Newspaper articles reporting on the activities of the Complainant and referring to it as "SembCorp". These articles appeared in reputed newspapers such as The Straits Times and The Business Times on 01.04.97, 02.04.97, 04.04.97, 15.07.98, 29,07.98 and 15.01.99.
d) Advertisements by the Complainant bearing the mark "SembCorp" dated 07.03.97 and 08.03.98 in the Straits Times.
6.5. The Respondent contends in its additional response dated November 8, 2001, that it had made enquiries as to whether the name SEMBCORP had been registered in China and found in the negative. The Panel wishes to stress that it is not necessary for the Complainant to have registered a trademark in China in order to succeed in this action.
The Panel endorses the following observations in Funskool (India) Ltd. v. Corporation, WIPO Case No. D2000-0796, wherein it was stated as follows:
"The Policy places no limitation on the operative extent of a trademark, which the Complainant must show the disputed domain name to be identical or confusingly similar to. If the intention had been that the Complainant�s right to complain about registration and use of a domain name which is identical or confusingly similar to its trademark had to be limited to a trademark recognized by the law of the Respondent�s country of incorporation or residence, the Policy would have said so expressly" (See also KCTS Television Inc. v. Get-on-the-web Limited, WIPO Case No. D2001-0154 and America Online Inc. v. M. Mike, WIPO Case No. D2001-1051)
For the reasons above mentioned, the Panel finds that the Complainant has trademark rights in SEMBCORP and that the domain name is identical to this trademark.
One must however bear in mind that the Policy requires that apart from trademark rights, two other factors be proved as well i.e. "bad faith" and a "lack of legitimate interest". These factors, at some level require an "imputation of knowledge" of the Complainant�s trademark onto the Respondent, thereby alleviating any potential unfairness that may accrue as a result of a domain name registrant being totally clueless as to the Complainant or its trademark rights (owing to his residing in a jurisdiction that is so far-removed from the Complainant).
Legitimate Use
6.6. The Respondent�s contention that SEMBCORP stands for "Sino Edward and Michael Business Corporation", a company proposed to be set up by the Respondent and his friend seems a far-fetched attempt at demonstrating some kind of legitimate interest in the name SEMBCORP.
6.7. The alleged company name "Sino Edward and Michael Business Corporation", appears to be a forced combination of words and names in English. The Complainant has rightly relied on Reuters Ltd. v. Teletrust IPR Ltd., WIPO Case No. D2000-0471, wherein the Panel held that in analyzing the merits of a "legitimate interest" claim, one has to see if the proposed combination is:
- A natural combination of words in English;
- Gives any particular meaning from a grammatical or conceptual point of view.
6.8. The above analysis is buttressed by the fact that the Respondent has not submitted any credible evidence of registration of a company by the name "Sino Edward and Michael Business Corporation". Annexure D of the Response was merely an accountant�s report and this by itself cannot be evidence of the incorporation of the company. More importantly, this report does not contain the alleged company name i.e. "Sino Edward and Michael Business Corporation". The Complainant in its additional response dated November 2, 2001, provided an independent translation of Annexure D, which states that the company referenced in Annexure D is "Jiangnan Clothing Store, Yuexiu District, Guangzhou" and not "Sino Edward and Michael Business Corporation". This is corroborated by a letter from Linklaters & Alliance, submitted by the Complainant. The Linklater letter also showed that the alleged company identified in Annexure D had not registered the English name at all.
6.9. Beyond stating that Annexure D was valid proof of registration (since it was certified by the local government), the Respondent has not controverted the evidence provided by the Complainant that Annexure D relates to "Jiangnan Clothing Store, Yuexiu District, Guangzhou" and not "Sino Edward and Michael Business Corporation". The Panel therefore finds in favour of the Complainant in this regard.
6.10. In the light of the above, the Panel notes that the Respondent has merely claimed an "intended use" of the domain name, without actually submitting any evidence to support this claim. In a plethora of WIPO panel decisions, panelists have consistently held that a mere "intention" to use the domain name is not enough to demonstrate a legitimate interest in the concerned name; rather there has to be something "more". See Herohonda Motors Ltd v. Rao Tella, WIPO Case No. D2000-0365; Neuberger Berman v. Alfred Jacobsen, WIPO Case No.D2000-0323; Nabisco Brands Co. v. The Patron Group, Inc., WIPO Case No. D2000-0032; and, Stella D�oro Biscuit Co. Inc v. The Patron Group, Inc., WIPO Case No. D2000-0012.
6.11. The Complainant had in its additional submission dated November 2, 2001, provided evidence of its activities in China.
This evidence included the following:
- SembCorp Engineers & Constructors Pte Ltd. , a group company belonging to the Complainant had formed SembCorp (Tianjin) Construction Engineering Co. Ltd. in China with the Tianjin Construction Engineering Group in China.
- SembCorp Engineers Constructors, was responsible for building the Masters Golf & Country Club in Guangzhou.
A copy of the brochure showing the activities undertaken in China was annexed along with the Complainant�s supplemental filing.
6.12. The Respondent contended that despite this evidence, he never knew of the existence of the Complainant or its rights in the trademark "SembCorp". However in the light of the following factors (as listed below), the Panel finds that the Respondent knew or ought to have known of the exclusive rights of the Complainant in the trademark SembCorp:
i) The Complainant company (including its predecessors in interest) and its group companies are perhaps the one of the biggest industrial conglomerates in the Asian region.
ii) Various news reports and advertisements relating to the Complainant�s mark SEMBCORP had appeared in well-reputed newspapers such as The Straits Times and The Business Times.
iii) The Complainant has substantial presence in China as evidenced by its joint venture company, as also its building activities there.
The Panel is mindful of the fact that the evidence on record does not indicate actual knowledge on the part of the Respondent. However the extensive evidence supplied by the Complainant, as also the surrounding circumstances would lead one to infer that the Respondent "knew" or "ought to have known" of the existence/trademark rights of the Complainant.
The Policy does not require a finding of "actual knowledge". In fact, as stated earlier, the Policy does not even require that the Complainant establish that it has trademark rights in the jurisdiction of the Respondent. However a finding of "knowledge" (whether actual, inferred or constructive) would be relevant from the point of view of determining a lack of "legitimate interest" or "bad faith".
6.13. A showing of "knowledge" would go to suggest that the domain name had been appropriated in bad faith and that given such bad faith adoption, a person cannot have any legitimate interest in the domain name. Conversely, if the facts indicate that the mark is a highly distinctive one (as is the case with SembCorp), and the Respondent does not have a reasonable explanation for adoption of this mark, then it may be reasonable to presume that Respondent had knowledge of the Complainant�s mark when he appropriated it as a domain name. In this case, the following factors lead the Panel to conclude that the Respondent ought to have known of the Complainant�s mark when he appropriated the same:
a) The highly distinctive nature of the mark SEMBCORP.
b) The Respondent�s attempts at striving to create some sort of legitimate interest in the name "SEMBCORP" by expanding the term in a rather unnatural manner. (See Reuters Ltd. v. Teletrust IPR Ltd, WIPO Case No.D2000-0471, as referenced above).
c) The fact that the certificate submitted by the Respondent, in furtherance of its contention that it had registered a business entity with the name "Sino Edward and Michael Business Corporation" does not even mention this name (See para 6.8).
The above interpretation finds support in Thomas McCarthy�s treatise on trademark law, wherein he states that:
"Even if defendant disclaims knowledge of plaintiff�s mark as of the time of defendant�s initial adoption, such a lack of knowledge may be rejected as unlikely if plaintiff�s mark was well-known and strong. If a well-known and strong mark has been used in identical format by a junior user, it appears reasonable to require the junior user to carry the burden of explanation and persuasion as to his motive in adopting the mark. (See J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, Volume 3, 4th edition, 1998, West Group, Chapter 23:115, Pp. 23-221-23-222)
Besides this, several earlier panel decisions have been based on the fact that the Respondent knew or should have known of the Complainant�s prior rights. (Illustratively, see Becton,Dickinson and Company v. Garry Harper WIPO Case No.D2001-1058; SportSoft Golf, Inc. v. Hale Irwin�s Golfers� Passport, Case FA94956; Marriot International, Inc. v. John Marriot, Case FA94737)
6.14. In the light of this evidence, the Panel finds that the Respondent knew or ought to have known the Complainant�s trademark rights in SEMBCORP. In the light of this knowledge, albeit not actual but inferred (partly due to the distinctiveness associated with the name SEMBCORP and partly due to the Respondent�s failure in providing a reasonable explanation for adopting such a distinctive mark), the Panel fails to understand as to how such a name could ever have been put to a legitimate use by the Respondent.
The Panel therefore finds that the Complainant has established that the Respondent has no rights/legitimate interest in the impugned domain name.
Bad faith:
6.15. The Panel finds that the domain name has been registered and used in bad faith for the following reasons:
i) On account of fact that the Respondent either knew or ought to have known of the Complainant�s prior rights in the name SEMBCORP; therefore his registration of a domain name incorporating the same was clearly in bad faith.
ii) The Respondent had demanded from the Complainant a sum of money in excess of his out of pocket registration expenses. It is immaterial that the Complainant had initiated inquiries in this regard.
The Respondent contends that although the Complainant had offered the costs of registration and maintenance fees to the tune of US$ 140, the Respondent had already spent US$ 343, (the registration and maintenance fees till 2010) which amount is significantly higher than what the Complainant had offered. However, the Respondent�s statements that he would not accept anything less than the "market value of the website" and that "if there is no additional benefit, he would keep the domain name and use it later" clearly contradict his supposed intention to merely recover registration costs. The Panel finds that implicit in the Respondent�s various communications was a demand for an amount significantly higher than the out-of-pocket costs associated with the Respondent�s registration.
iii) Despite an efflux of two years, the Respondent has not activated his website. See Telstra Corporation Ltd. vs. Nuclear Marshmallows, WIPO Case No. D2000-0003), wherein it was clearly held that even "inaction" or "passive holding" of a domain name would amount to "bad faith".
6.16. Apart from the above, the Panel would like to rely upon Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028, where it was observed:
"The Panel, however, also notes that subparagraphs 4(b) are not intended to be the exclusive criterion of bad faith use. The Panel believes that bad faith use can also exist in situations, such as the instant one, where (i) the Domain Name contains in its entirety, and is for all essential purposes only, Complainant�s trademark, (ii) such trademark is a coined word, has been in use for a substantial time prior to the registration of the Domain Name and is a well-known mark, and (iii) Respondent has alleged no good faith basis for use by it of the Domain Name. Among other things, in these circumstances and absent a transferal, Complainant is deprived of the use of the Domain Name and must always be concerned about the possibility of a confusing future site.".
6.17. The Respondent asks why the Complainant did not register a domain name although it had been in existence since 1968. This point has been raised in earlier domain name disputes and WIPO panels have consistently held that in order to succeed under this policy, it is not necessary that the Complainant explain as to why it failed to register the impugned domain name. Conversely, mere registration of a domain name does not invest Respondents with a right over such name. (See Pharmacia & Upjohn Company V. Moreline, WIPO Case No. D2000-0134)
7. Decision
For all of the foregoing reasons, the Panel decides that the domain name registered by the Respondent is identical to the trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain name at issue, and that the Respondent�s domain name has been registered and is being used in bad faith. Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel requires that the impugned domain name be transferred to the Complainant.
Pravin Anand
Sole Panelist
Dated: November 26, 2001
Full & Egal Universal Law Academy