WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Cheung Kong (Holdings) Limited and Chueng Kong Property Development Limited v. Netego DotCom Case No. D2009-0540 1. The Parties
Complainants are Cheung Kong (Holdings) Limited and Cheung Kong Property Development Limited of Hong Kong, SAR of People's Republic of China, represented by Wilkinson & Grist, Hong Kong, SAR of the People's Republic of China.
Respondent is Netego DotCom of Edmonton, Alberta, Canada, represented by The Muscovitch Law Firm, Canada. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Dotster, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 24, 2009. On April 24, 2009, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the Disputed Domain Name. On April 24, 2009, Dotster, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced May 1, 2009. In accordance with the Rules, paragraph 5(a), the due date for the Response was May 21, 2009. The Response was filed with the Center May 20, 2009.
The Center appointed David H. Bernstein, C. K. Kwong and David E. Sorkin as panelists in this matter on June 16, 2009. The Panel finds that it was properly constituted. Each member of 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.
On June 19, 2009, the Panel issued Procedural Order No. 1, which provided, in relevant part:
“Respondent alleges that the Complaint is a refiled Complaint. In particular, Respondent alleges that one of the same Complainants filed a very similar Complaint against the same Respondent involving the same Domain Name in a proceeding filed last year with the Asian Domain Name Dispute Resolution Centre (‘ADNDRC'). According to Respondent, a panel of three panelists issued a decision in that previous case on February 12, 2009 denying the Complaint. Respondent alleges that Complainants have not only failed to provide any justification for this refiled Complaint, but in fact, Complainants have failed to even inform the Panel that one of them filed an earlier case on the same issues against the same Respondent and its earlier Complaint was denied. In light of these allegations, Respondent seeks a finding of reverse domain name hijacking.
Because Respondent raises issues not addressed in the Complaint, the Panel hereby requests that the Complainants submit a supplemental submission, on or before 4 pm Greenwich Mean Time on Thursday, June 25, 2009, addressing the following three points:
1. Whether Respondent's allegations concerning the prior ADNDRC action are correct, and if so, why Complainants did not inform the Panel of this earlier proceeding.
2. Whether the Panel should accept the Complaint if this is, in fact, a refiled Complaint.
3. Whether Respondent is entitled to a finding of reverse domain name hijacking.
If Respondent wishes to file a supplemental submission in response to the Complainants' supplemental submission, it may (but is not required to) do so. Any such supplemental submission should be filed on or before 4 pm Greenwich Mean Time on Wednesday, July 1, 2009.
The parties' submissions, if any, should be limited to no more than ten pages, double spaced. If any submission is longer than that, or addresses matters other than the three points noted above, the Panel will disregard the supplemental submission in its entirety.
The projected date for decision is hereby extended to July 15, 2009.”
On June 25, 2009, Complainants submitted a supplemental submission in response to the Panel's request. That submission included as Annex R a printout of a webpage, which appears to be in the Chinese language.
On June 26, 2009, Respondent submitted a supplemental submission. That submission included a copy of Exhibit D from the original Response, which also is largely written in what appears to be the Chinese language.
On June 29, 2009, the Panel issued Procedural Order No. 2, which provided, in relevant part:
“Each party is hereby requested to submit a certified translation, into English, of the webpage printout attached to its supplemental submission (Complainants' Annex R and Respondent's Exhibit D). The Panel would appreciate receipt of these translations by July 6, 2009.”
On July 2, 2009, Respondent submitted is certified translation, and on July 6, Complainants submitted their certified translation. The Panel subsequently extended the date for decision to July 31, 2009. 4. Factual Background
The first Complainant in this case is Cheung Kong (Holdings) Limited, a corporation registered in Hong Kong, SAR of China (“Hong Kong”); the second Complainant is Cheung Kong Property Development Limited, a wholly owned subsidiary of the first Complainant.
Respondent, Netego DotCom, is an unregistered business name under which Joe Lee and his successor in interest, Netego Software, Inc., carries on business. Joe Lee is the sole shareholder, officer, and director of Netego Software, Inc., a corporation registered in Alberta, Canada. Joe Lee d/b/a Netego DotCom first registered the domain name on November 10, 2000 and Netego Software, Inc. assumed the domain name from Joe Lee upon its incorporation on October 18, 2006.
On July 30, 2008, the first Complainant submitted to the ADNDRC a substantially similar complaint against Respondent, which involved the same Disputed Domain Name; that case is captioned Cheung Kong (Holdings) Limited v. Netego Dot Com, HK-0800173. Respondent filed a response in that case on November 22, 2008. In response to the ADNDRC panel's December 12, 2008 request for a supplemental statement, Complainant filed a supplemental submission on December 15, 2008 and Respondent filed a reply on January 19, 2009. On February 3, 2009, the panel issued its decision in which it dismissed the complaint. The panel found that Complainant had prevailed in demonstrating that the Disputed Domain Name is identical or confusingly similar to its business name1 and that Respondent has no rights or legitimate interests in the Disputed Domain Name,2 but that Complainant had failed to prove that Respondent acted in bad faith.3 One panelist concurred in the result but dissented from the finding as to rights or legitimate interests on the grounds that (i) Respondent has a legitimate interest in the domain name because it is descriptive of the famous Yangtze River, and (ii) Respondent asserted a plausible legitimate use to which it intends to put the domain name.
At some point after receipt of the ADNDRC decision, Respondent changed the webpage to which the Disputed Domain Name resolves. Previously, the Disputed Domain Name resolved to a page that provided a generic search engine and links to common words; these links and searches delivered results that appear to have been based on a pay-per-click advertising model. After the ADNDRC decision, Respondent changed the webpage to include some basic information about the Yangtze River, along with a statement indicating that the website operator would start taking orders for Yangtze River cruises at some unspecified date in the future. 5. Parties' Contentions A. Complainants
Complainants form part of the Cheung Kong Group, a Hong Kong based multinational conglomerate. The first Complainant was established by Mr. Li Ka Shing on June 8, 1971 and is a property development and strategic investment company, one of the largest developers in Hong Kong of residential, commercial and industrial properties. The second Complainant, a wholly owned subsidiary of the first Complainant, was incorporated on November 11, 1980 to manage, promote and sell property owned or developed by the first Complainant. Many other companies in the Cheung Kong Group are also incorporated with the words “Cheung Kong” in their titles.
Complainants contend that characters “長江” translate to “Cheung Kong” in English. Complainants claim rights in the trade marks 長江 and 長江集團 and their corresponding trade marks/names in English namely, Cheung Kong and Cheung Kong Group. Since the 1970's, Complainants have extensively and continuously used 長江 and 長江集團 as the trade marks/names in connection with its business. As a result of such long period of use, the marks/names 長江 and 長江集團 have become distinctive of and identified with Complainants exclusively. According to Complainants, substantial goodwill and reputation subsist in these marks.
Complainants allege that the major part of the Disputed Domain Name “長江” is confusing similar to the first Complainant's trade mark/trade name 長江集團 (the words “集團” themselves being generic in nature and descriptive of the size of the first Complainant and its group of companies). Further, the distinctive part of the Disputed Domain Name is identical to the trade mark/name 長江 of Complainants, taking into account the fact that “.com” in the Disputed Domain Name is itself indistinctive.
Complainants allege that the Disputed Domain Name was not actively used; rather, it resolves to a website featuring the phrases “A Tour Company For North Americans” and “Deluxe Three Gorges Cruises on Yangtze River,” as well as a few paragraphs of information about the Yangtze River, and the following message:
“ICANN (Internet Corporation for Assigned Names and Numbers) will make important decisions in the coming months to expedite the use of International Domain Names (IDN). We will install the full version of our website and start taking orders in year 2009 when Chinese IDNs get full support from all internet browsers. Please forward your inquiry to us at sales@長江三峽游.com. For the time being, please use keyword ‘長江三峽游' to search for more tour packages of your choice from other providers.”
Complainants aver that this website is a sham, and that Respondent is not in fact carrying on a tour business or trade and is not using the Disputed Domain Name in connection with a bona fide offering of goods or services.
As evidence of Respondent's bad faith, Complainants contend that: (i) Respondent has never had any rights or legitimate interests in “長江” and, given this fact, it could not be a coincidence that Respondent registered a domain name which is exactly identical to Complainants' trade mark/name 長江 and confusingly similar to the trade mark/name 長江集團; (ii) Respondent registered the Disputed Domain Name in order to confuse the public into believing that Respondent's act is authorized by Complainants, that Respondent is connected with Complainants or that Disputed Domain Name is sponsored or affiliated with Complainants; and (iii) the long period of passive holding, rather than active use, of the Disputed Domain Name since its registration in 2000 itself amounts to bad faith use.
Complainants request that the Disputed Domain Name be transferred. B. Respondent
Respondent contends that means , when translated into English, and that, because the Disputed Domain Name is the Chinese character name of the world famous Yangtze River, Respondent has an inherent legitimate interest in the Disputed Domain Name.
Respondent argues that the Complaint is a re-filed Complaint since it is brought by one of the same Complainants, against the same Respondent, concerning the same Disputed Domain Name as in the recently decided ADNDRC proceeding. Respondent alleges that Complainants' failure to disclose the ADNDRC decision in their current Complaint is a calculated deception and an abuse of process.
Respondent notes that Complainants filed a Complaint in accordance with an established format, except that they deleted the section requiring Complainants to disclose “Prior Legal Proceedings” pursuant to paragraph 3(b)(x)(i) of the Rules, and adjusted the numbering of the remaining paragraphs accordingly. Respondent argues that this deletion evidences a calculated effort to deceive the Panel into believing that the current Complaint was the first such legal proceeding, when in fact, there was a previous proceeding which resulted in a previous decision in favor of Respondent.
Respondent contends that Complainants are using the billions of dollars they have at their disposal to shop around for a more favorable decision and to harass Respondent.
Respondent requests that the Complaint be dismissed on the basis of res judicata and that the Panel find Complainants guilty of Reverse Domain Name Hijacking. According to Respondent, Complainants cannot meet the requirements for a valid re-filed complaint. It is not sufficient for Complainants to present additional evidence that was not available at the time of the previous Complaint. Complainants must also demonstrate that this evidence would probably have had an important influence on the result of the case. Respondent argues that the current Complaint is not an appropriate action for considering new issues under the Policy, but merely an application for re-adjudication of the previous complaint.
In light of the fact that Complainants are represented by counsel with knowledge of UDRP proceedings, Respondent asserts that Complainants ought to have known better than to commence such a Complaint, and therefore run the risk of a finding of Reverse Domain Name Hijacking. C. Complainants' Supplemental Submission
In their supplemental submission, Complainants admit that the first Complainant filed a complaint with the ADNDRC against Respondent involving the same Domain Name on July 30, 2008 (“Former Complaint”). In response to the Panel's request for information explaining why Complainants did not inform the Panel of the Former Complaint, Complainants argue that new evidence has come to light since the ADNDRC panel's decision justifying the filing of a new Complaint. Specifically, Complainants allege, whereas the Former Complaint relied on the fact that the Disputed Domain Name was merely linked to a webpage providing general information search services, Respondent has since unlinked the Disputed Domain Name with that webpage and attached it to a different webpage that Complainants believe to be a sham use of the Disputed Domain Name. That new webpage (as since submitted to the Panel in an English translation) contains some brief information about potential future cruises on the Yangtze River.
Complainants explain that they did not mention the Former Complaint in the present Complaint because they considered that, since the ADNRC panel's decision, the underlying facts have changed sufficiently so as to render the Former Complaint irrelevant to this one. According to Complainants, they expected Respondent to raise the issue of the Former Complaint and decided to leave it to Respondent to raise the issue if Respondent considered it relevant to the present Complaint.
Complainants contend that Respondent's request for a finding of Reverse Domain Name Hijacking should be denied because the only basis proffered by Respondent is the filing of the present Complaint after the Former Complaint was denied. Complainants claim that they are entitled to file the present Complaint in an attempt to protect their rights in the trade name/mark, and that this act in no way constitutes Reverse Domain Name Hijacking. D. Respondent's Supplemental Submission
Respondent notes that the single “new fact” alleged by Complainants is that, since the release of the ADNDRC decision, Respondent has commenced use of the Disputed Domain Name in connection with its longstanding website about Yangtze River cruises. According to Respondent, at the time of the Former Complaint, Respondent had not as of yet used the Disputed Domain Name in association with its Yangtze River cruise-related website because Chinese character IDNs are still in their infancy. Since Respondent did not feel any urgency to attach the Domain Name to its operational website, it merely set it up as a general directory search page for the time being, although it did in fact refer to the Disputed Domain Name on its separate river cruise website. Since the release of the ADNDRC decision a few months ago, Respondent has now connected the Disputed Domain Name with its river cruise information website.
According to Respondent, that website was already well known to Complainants at the time of the Former Complaint, and is hardly “important new evidence” that would have “probably impacted the decision.” Indeed, Respondent contends, Respondent's current use is actually a “stronger” use of the Domain Name than before. 6. Discussion and Findings A. The Re-filed Complaint
As prior panels have already explained, a complaint should be considered a re-filed complaint if it is a “subsequent complaint (whether or not precisely the same in substance) in relation to the same domain name, that is filed by the same complainant against the same respondent to a previous complaint.” Creo Products Inc. v. Website In Development,WIPO Case No. D2000-1490. Where the previous complaint concerned multi-party complainants, any subsequent complaint brought by at least one of the previous complainants, against the same respondent, in relation to the same domain name, is properly considered as a re-filed complaint. Id.
Complainants do not dispute that its Complaint in this case is a re-filed complaint. The first Complainant's July 30, 2008 complaint, submitted to the ADNDRC, was filed against the same Respondent and concerned the same Disputed Domain Name that is the subject of this Complaint. The inclusion of an additional Complainant (namely, Cheung Kong Property Development Limited) to the current Complaint does not alter the conclusion that this Complaint is a re-filed complaint.
Before considering the merits of the Complaint, the Panel must first consider whether the Panel should even consider the Complaint on the merits given that it is a re-filed Complaint. For the reasons explained below, the Panel concludes that Complainants have not made a sufficient showing to justify such consideration of this re-filed Complaint.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions (the “WIPO Decision Overview”) summarizes the consensus view on re-filed complaints as follows:
“A refiled case involves the complainant submitting a second complaint involving the same domain name(s) and the same respondent(s) as in an earlier complaint that had been denied. A refiled case may only be accepted in limited circumstances. These circumstances include when the complainant establishes in the complaint that relevant new actions have occurred since the original decision, or that a breach of natural justice or of due process has occurred, or that there was other serious misconduct by the panel or the parties in the original case (such as perjured evidence). A refiled complaint will also be accepted if it includes newly presented evidence that was unavailable to the complainant during the original case.”
Id., § 4.4 (citing Creo Products Inc., supra; Maruti Udyog Ltd. v. ,WIPO Case No. D2003-0073; AB Svenska Spel v. Andrey Zacharov,WIPO Case No. D2003-0527.) Additionally, the grounds that allegedly justify entertaining the re-filed complaint should be clearly identified in the re-filed complaint. Creo Products Inc., supra.
Although panels are not obligated to follow the decisions of other panels, this Panel considers it appropriate to apply the consensus view, as articulated in the WIPO Decision Overview, in this case.
The only basis on which Complainants rely in this case is the first identified in the WIPO Decision Overview that “relevant new actions have occurred since the original decision.” The relevant new action on which Complainants rely is that Respondent changed its use of the website. To prevail, though, Complainants must show that the new actions are “relevant” – that is, that the change to the website constitutes new evidence that was not known at the time and that constitutes important, credible evidence that could influence the result of the proceeding. As the panel explained in Creo Products Inc., supra “[w]hen properly applied, this exception would preclude an unsuccessful complainant from lodging, in the hope that the subsequent panel will come to a different conclusion on the facts, a Refiled Complaint based on subsequent acts that are either a repetition of or substantially the same as the acts on which the previous complaint was based.”
In this case, the acts on which the Complaint is based are substantially the same as the acts on which Complainants' Former Complaint to the ADNDRC was based. Quite apart from the fact that Complainants did not identify in their initial Complaint that the Complaint was a re-filed Complaint or the grounds that allegedly justified entertaining the re-filed Complaint, the only new fact that Complainants cite in their supplemental submission is that, since the ADNDRC proceedings, Respondent has posted at the website to which the Disputed Domain Name resolves a page that provides general information about Yangtze River cruises, which Complainants assert is a “sham” webpage. This fact, though, does not materially alter any of the circumstances at issue in the Former Complaint. In fact, the same webpage was submitted as part of the exhibits in the ADNDRC case (although it was, at the time, linked to a different domain name). Indeed, the ADNDRC panel acknowledged Respondent's contention that it “always intended to eventually use the domain name in association with its operational Yangtze River cruise web site,” and its decision took into account this proposed future use. In particular, a majority of the ADNDRC panel found “Respondent's submission as to its preparations for the proposed future use of the Disputed Domain Name for a tourism business unconvincing and [the Panel thus] considers any speculation as to Respondent's possible future use of the Disputed Domain Name to be unjustified” in light of the fact that Respondent had taken no preparatory steps beyond “affixing several photos of river boats to its ‘Yangtze River Cruise' website.”4 Cheung Kong (Holdings) Limited v. Netego Dot Com, HK-0800173.
Moreover, even if the ADNDRC panel had not already considered this webpage, the change from a general search webpage (which was apparently in use at the time of the ADNDRC complaint5) to this webpage that has some (albeit very little) content related to the Yangtze River, is hardly a new fact that would influence the Panel to decide this case in a different way. If anything, as Respondent notes, the use of a webpage that is arguably more relevant to the meaning of the domain name makes the case even stronger for Respondent, not for Complainants. Thus, this evidence cannot be considered a material new fact that would be likely to influence the Panel's decision.
Accordingly, Complainants have not met their burden of demonstrating that the re-filed Complaint falls within the limited grounds on which re-filed complaints should be entertained. B. Reverse Domain Name Hijacking
Respondent seeks a declaration that Complainants have engaged in Reverse Domain Name Hijacking (“RDNH”). Paragraph 1 of the Rules defines RDNH as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” Paragraph 15(e) says:
“If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”
The onus of proving bad faith is on Respondent. Mere lack of success of the Complaint is not itself sufficient to constitute RDNH. Deutsche Post AG v. NJDomains,WIPO Case No. D2006-0001; Avio S.p.a. v. William Obeid,WIPO Case No. D2008-0295. If, though, “a complainant should have appreciated at the outset that its complaint could not succeed,” a finding of RDNH may be appropriate. Yell Limited v. Ultimate Search,WIPO Case No. D2005-0091. See also Futureworld Consultancy, Pty Ltd v. Online Advice,WIPO Case No. D2003-0297; Goldline International, Inc. v. Gold Line,WIPO Case No. D2000-1151).
The Panel is not unsympathetic to Complainants' concerns on the merits. Regardless of the findings of the ADNDRC panel, one might well have looked at Respondent's registration of this Disputed Domain Name, which appears to be identical to Complainants' mark, and concluded that Respondent's use of the Disputed Domain Name for a pay-per-click-based search engine was illegitimate and evidence of bad faith use and registration. See, e.g., Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415. However, even if reasonable panelists could differ, the fact is that a panel already decided this issue. If Complainants did not like the result, they had the right to pursue a claim through national courts. For the reasons noted above, though, they did not on the provided evidence have the right to file a re-filed Complaint.
What is particularly troubling here is that Complainants never even notified the Panel that this was a re-filed Complaint. The fact that the submitted Complaint no where refers to the previous UDRP proceeding, suggests to the Panel that Complainants may have deliberately attempted to hide that fact from the Panel.6 Not only does that constitute an abuse of the UDRP process, but also, it caused substantial delay and increased cost to both parties as the Panel was forced to request supplemental submissions to address an issue Complainants should have addressed up front in its initial Complaint.
For these reasons, the Panel finds that Complainants' actions constitute an abuse of the UDRP process. The Panel thus enters a finding of Reverse Domain Name Hijacking. 7. Decision
For the foregoing reasons, the Complaint is denied and the Panel declares that the Complaint was brought in bad faith in an attempt at Reverse Domain Name Hijacking.
David H. Bernstein
Presiding Panelist
C. K. Kwong
Panelist
David E. Sorkin
Panelist
Dated: July 29, 2009
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