WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
HSBC Holding plc v. Chaudry Cheema
Case No. D2006-0295
1. The Parties
1.1 The Complainant is HSBC Holding plc, Birmingham, United Kingdom of Great Britain and Northern Ireland, represented by Michael Weygang.
1.2 The Respondent is Chaudry Cheema, London, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
2.1 The disputed domain name is (the “Domain Name”) which is registered with CSL Computer Service Langenbach GmbH (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 8, 2006. On March 8, 2006, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 9, 2006, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on March 20, 2006. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (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”).
3.2 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 March 23, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was April 12, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 13, 2006.
3.3 The Center appointed Nick Gardner as the sole panelist in this matter on April�25,�2006. The Panel finds that it was properly constituted. 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. A Decision is due to be provided by May 9, 2006.
4 Factual Background
4.1 The Complainant is HSBC Holding plc, a company organised and existing under the laws of England and Wales and headquartered in London. The Complainant is a member of the HSBC Group which is a large and well known banking and financial services organization which operates in 76 counties and territories in Europe, the Asia Pacific, the Americas, the Middle East and Africa. The name HSBC is derived from the initials of The Hong Kong and Shanghai Banking Corporation Limited, which was the company which was the historical origin of the HSBC Group, and which was established in 1865.
4.2 The Complainant has registered the trade mark HSBC in all or virtually all of the countries in which it operates. It has also registered the words THE WORLD’S LOCAL BANK as a trade mark in many of those countries. The Complainant has provided the Panel with a list of its registered trademarks. This establishes, amongst other things, that the trade mark HSBC was registered in the United Kingdom on November 17, 1995, and the trade mark THE WORLD’S LOCAL BANK in the United Kingdom on August 2, 2002.
4.3 The Complainant is also the proprietor of the domain name , which was registered on January 29, 1999, and was last renewed on September�17,�2004, and the domain name , which was registered on April�16,�2002, and was last renewed on September 17, 2004.
4.4 On January 7, 2005, the Complainant became aware that the Respondent has registered the Domain Name.
4.5 The Domain Name does not resolve to any Internet site. It has been “parked” at a site operated by an organization described as “Low Cost Names” with an indication that it is available for purchase.
4.6 On January 14, 2004, the Complainant’s in-house legal department wrote to the Respondent to notify him of the trade marks HSBC and THE WORLD’S LOCAL BANK and to request details of the Respondent’s intended use of the Domain Name in order to verify whether the name had been registered for a legitimate use.
4.7 The Respondent failed to reply and so on February 1, 2005, the Complainant wrote to Advantage Interactive Ltd. trading as Low Cost Names copying the earlier letter with a request that they contact the Respondent.
4.8 Detailed evidence is provided in the Complaint as to a sequence of conversations and correspondence that then took place, with either the Respondent or persons who appear to represent the Respondent. For present purposes these can be summarized as follows:
4.8.1 On February 14, 2005, the Respondent telephoned to discuss the Domain Name intimating that he would sell the name to the Complainant and asking how much the Complainant was willing to pay. Reference was also made to other offers received by the Respondent and it was suggested by the Respondent that the parties should met.
4.8.2 In response the Complainant’s representative declined to meet. The Complainant’s representative offered to pay for the out of pocket costs of a voluntary transfer of the Domain Name.
4.8.3 The Respondent replied, marking his e-mail “Without Prejudice” asking the Complainant’s representative to confirm whether the Complainant wished to purchase the Domain Name and if so, details of what the Complainant was willing to pay.
4.8.4 Having taken instructions, on March 4, 2005, the Complainant’s representative told the Respondent that the Complainant’s usual policy was that it did not make payments for the transfer of domain names that had been registered using the Complainant’s trade marks and offered to reimburse the Respondent’s out of pocket expenses paid by him when he purchased the Domain Name, in order to obtain a voluntary transfer of the name.
On March 10, 2005, the Respondent replied in an e-mail marked “Without Prejudice” saying “I can confirm that your offer is not acceptable. Can you be realistic and make an offer of at least �1 million.”
On March 27, 2005, the Respondent sent a further e-mail marked “Without Prejudice” saying “I have been approached by some business men who are keen to purchase the domain name for �30,000. If you are prepared to make a similar offer please contact me or I will dispose of the domain name.”
On March 30, 2005, the Complainant’s representative sent a reply to that e-mail confirming that it was the Complainant’s policy to pay out of pocket expenses only, and stating that an ICANN application would be prepared if the Respondent was not willing to agree to a voluntary transfer upon that basis.
Whilst there is evidence of some further exchanges, these do not substantially advance matters.
5. Parties’ Contentions
Complainant
5.1 The Complainant submits that the Panel is entitled to consider the correspondence between the parties although it was denoted by the Respondent as being “without prejudice”. This submission of the Complainant relies upon on several earlier WIPO-Decisions cited in the Complaint.
5.2 The Complainant furthermore submits that the Domain Name is identical or confusingly similar to the trade marks HSBC and THE WORLD’S LOCAL BANK in which the Complainant has rights, as it simply is a combination of these trade marks. The Complainant states that the Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use either the marks HSBC or THE WORLD’S LOCAL BANK in a domain name or in any other manner. By registering and presumably intending to make use of the Domain Name, which encompasses the Complainant’s trade marks, the Respondent knowingly infringed the Complainant’s rights.
5.3 The Complainant contends that the Domain Name was registered in bad faith by the Respondent, as he has no legitimate reason for registering the Domain Name and only attempted to sell the Domain Name to the Complainant.
Respondent
5.4 The Respondent has not replied to the Complainant’s contentions.
6. Discussion and Findings
6.1 The Panel has reviewed the Complaint and the documents annexed to the Complaint. In the light of this material, the Panel finds as set out below.
Admissibility of material identified as “Without Prejudice”
6.2 The Panel has to decide whether to accept the Complainant’s submission that material marked by the Respondent as without prejudice should nevertheless be admitted and considered by the Panel.
6.3 The “without prejudice” doctrine is a rule which in some jurisdictions (including England) bars the evidential admissibility of correspondence or discussions between the parties which is conducted with a view to settlement of a dispute. The basis for the rule (at least in English law) lies in public policy and encouraging parties to be able to have a full and open dialogue without fear that matters that are said during such a dialogue will then be used in evidence.
6.4 The extent to which this doctrine is or is not applicable to UDRP proceedings, is to some extent controversial. The panels in The Vanguard Group Inc v. Emilio Sa, WIPO Case No. D2001-1453 and McMullan Bros., Limited and others v. Web Names Ltd, WIPO Case No. D2004-0078, made extensive comments on the application of this doctrine to UDRP proceedings.
6.5 In the present case the Panel adopts the reasoning set out in the latter case and finds that the evidence adduced by the Complainant as to this correspondence is admissible. It does not appear to be a bona fide attempt by the Respondent to enter into settlement discussions; still less is there any indication that the Complainant agreed that any correspondence should be upon a without prejudice basis. Accordingly the Panel relies upon this material in this decision.
Failure to Lodge Response
6.6 The Panel does not find there are any exceptional circumstances within paragraph 5(e) of the Rules applicable to the Policy so as to prevent this Panel determining the Complaint, notwithstanding the failure of the Respondent to lodge a Response. Details of these proceedings have been served in accordance with the relevant requirements set out in the Policy.
Applicable Test
6.7 In order to succeed in this Complaint the Complainant has to establish, pursuant to paragraph 4(a) of the Policy that:
(i) the Domain Name is identical to or confusingly similar to the HSBC and/ or THE WORLD’S LOCAL BANK trademark;
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) the Domain Name was registered and is being used in bad faith.
Analysis
6.8 The Complainant’s trademarks were all registered by the Complainant before the Domain Name was registered by the Respondent.
6.10 The Domain Name is simply a combination of the Complainant’s trademarks HSBC and THE WORLD’S LOCAL BANK. In everyday business the Complainant uses the two trade marks in this combination. It is well established that the addition of generic terms to existing trade marks, including the prefix “.com”, is insufficient to rebut the assertion that a domain name is identical or confusingly similar to a trade mark or service mark in which a complainant has rights. The Domain Name is confusingly similar to the Complainant’s trademarks.
6.11 There is no evidence to show that the Respondent had any legitimate basis to register the Domain Name or any intent to use it in any manner unconnected with the Complainant’s business. The combination of “hsbc” with “ the world’s local bank” manifestly combines two trademarks belonging to the Complainant in a way which cannot have any sensible meaning that is unconnected with the Complainant. The Panel concludes that the Complainant is correct and that the Respondent does not have any rights to or legitimate interest in the Domain Name.
6.12 The circumstances set out at paragraph 4(b) of the Policy which illustrate bad faith are expressed to be “without limitation”. It is clear that registration of a domain name alone (or “passive” domain name holding), can support a determination of bad faith use (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, and the numerous later cases to similar effect).
6.13 So far as bad faith is concerned, Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances indicating bad faith, including:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name”
6.14 The evidence establishes that the Respondent sought to sell the Domain Name to the Complainant for sums significantly in excess of the out of pocket costs the Respondent will have incurred. An initial suggestion of at least �1 million was made, followed by a further indication that �30,000 might suffice. The Panel concludes the Domain Name was registered and is being used in bad faith.
6.15 Accordingly the Panel concludes that the Complainant has established each of the elements of paragraph 4(a) of the Policy.
7. Decision
7.1 In the light of the above findings, the Panel’s decision is as set out below.
7.2 The Domain Name is identical or confusingly similar to the trade marks in which the Complainant has rights within the meaning of paragraph 4(a)(i) of the Policy.
7.3 The Respondent has no rights or legitimate interests in respect of the Domain Name within the meaning of paragraph 4(a)(ii) of the Policy.
7.4 The Domain Name has been registered and is being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.
7.5 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 be transferred to the Complainant.
N. J. Gardner
Sole Panelist
Dated: May 9, 2006
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