The Complainant is HSBC Group Management Services Limited, United Kingdom (“UK”), represented by Mayer Brown LLP, China.
The Respondent is Malcolm Hyde, M.HydeLtd, UK. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 11, 2020. On June 11, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 15, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent a request for Clarification to the Registrar on June 16, 2020 and a reminder on June 22, 2020. On June 22, 2020, the Registrar sent an email communication to the Center. The Center sent an email communication to the Complainant on June 22, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 26, 2020. The Center sent an email communication to the Registrar on July 1, 2020 to which the Registrar replied on July 2, 2020. On July 7, 2020, the Center sent an email communication to the Complainant to which the Complainant replied on July 8, 2020. The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 10, 2020. On July 23, 2020, the Complainant submitted supplement fillings. In accordance with the Rules, paragraph 5, the due date for Response was July 30, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 31, 2020. The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on August 14, 2020. 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. 4. Factual Background The Complainant’s parent company HSBC Holdings plc, together with its affiliates, is a world-wide banking and financial services organisation. The Complainant is a subsidiary, registered in the United Kingdom, of HSBC Holdings plc. The Complainant holds a number of trademark registrations for HSBC standing alone or in combination, of which the following are representative for the purposes of the present proceeding: HSBC, Trade Marks Registry, Hong Kong SAR, filed June 8, 1994, registered April 3, 1998, registration number 1998B03183, in class 36; HSBC THE WORLD'S LOCAL BANK, Trade Marks Registry, Hong Kong SAR, filed April 4, 2003, registered April 8, 2005, registration number 300392355, in class 36. The Complainant also owns and uses the website “www.gbm.hsbc.com”, for Global Banking and Markets, and the website “www.business.hsbc.uk”. The Respondent has not provided any background information. The disputed domain name was registered on January 6, 2020. On April 21, 2020, the Complainant sent a cease and desist letter to the previous registrant regarding the disputed domain name. There was no reply. On or about May 19, 2020, the disputed domain name registration was transferred into the name of the Respondent. The disputed domain name initially redirected visitors to the Complainant’s website “www.gbm.hsbc.com”, and has also been redirected to “www.business.hsbc.uk”. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The disputed domain name, disregarding the generic Top-Level Domain (“gTLD”) “.com”, differs from the Complainant’s trademark HSBC solely by the additional element “‑gbm”, which should not negate confusing similarity with the trademark. Furthermore, the additional element “-gbm” may add to confusing similarity to the Complainant’s trademark since it evokes the Complainant’s business in Global Banking and Markets. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant’s trademark is well known and has been in use for 150 years. It is the acronym for The Hongkong and Shanghai Banking Corporation and has no other common meaning. The Respondent must have been aware of the Complainant because the disputed domain name has been redirected to the Complainant’s UK website. The Respondent has not been granted any right to use the Complainant’s trademark in any way. The Complainant says the Respondent has made no bona fide offering of goods or services through the disputed domain name, but may earn pay-per-click of other revenue when it is accessed by visitors. Before being redirected to the Complainant’s website “www.business.hsbc.uk”, the disputed domain name was redirected to the Complainant’s website “www.gbm.hsbc.com”. The Complainant alleges that the registrant at that time was using the disputed domain name for sending fraudulent emails intended to mislead recipients into believing they came from the Complainant or its affiliates. The UK Financial Conduct Authority ("FCA") notified the Complainant of the suspected fraud on March 18, 2020, and issued a public warning on March 27, 2020. The Complainant believes that the current purported registrant of the disputed domain name, i.e., the Respondent, and the previous registrant are under common control and that the current registrant contact details are an attempt to obscure this fact. The Complainant draws attention to the decision in a previous consolidated UDRP case in which the previous registrant together with other respondent names or entities were found to be under common control: F. Hoffmann-La Roche AG v. Konayem Temirtassova, Tigran Movsisyan, Aleksandr Bannikov, Valentin Barshev, Oleg Sobin, Igor Ivanov, Sergey Timofeev, Igor Ivanov, N/A, Vladimir D Kiskov, Private Person, Irina F Scherban, Private Person, Aleksandr V Sivkov, Private Person, Igor Ivanov, [RU]70983550, Albert Sadykov, [RU]722410292, Tigran Mosisyan, [AM]0720347, Vladimir Kiskov, [RU]4607604244, Anastasiya Yankova, [RU]4606291090, Konstantin Tkachev, [RU]4507343219, Kristina Melnichenko, [RU]712403282, Igor A Ivanov, Private Person, Zhuhai Yingxun Keji Limited aka Zhuhai Yingxun information technology limited,WIPO Case No. D2015-0984. The Complainant has also cited eight other cases under the Policy in which the previous registrant has been a respondent. The Complainant contends that the disputed domain name was registered and is being used in bad faith. The Respondent must have been aware of the Complainant and its trademark at the time of registration of the disputed domain name, particularly since that has been redirected to the Complainant's UK website. Registration of the disputed domain name must therefore have been in bad faith. The Complainant infers that the Respondent’s intentions for the disputed domain name may have been variously to sell it for profit, to derive pay-per-click revenue, or to make commercial gain by fraud or otherwise through confusion with the Complainant’s trademark. The Complainant reiterates its conclusion that the previous registrant and the present purported registrant are under common control and says that allegedly fraudulent emails sent by the previous registrant form a part of the Respondent’s activities with the disputed domain name. The Complainant has cited previous decisions under the Policy that it considers supportive of its case. The Complainant requests the transfer of the disputed domain name. Complainant’s Supplemental Filing The Complainant requested leave to introduce new evidence that could not have been included in the Complaint at the date it was submitted. The new evidence comprised a series of emails forwarded to the Complainant by an individual who in July 2020, had been contemplating an investment appearing to be promoted by the Complainant, including an extensive brochure or prospectus for the investment, together with detailed payment instructions. The Complainant says it has no connection with the purported investment, which is fraudulent. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Procedural Matters Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute-resolution provider, in compliance with the Rules, that: “(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) you have no rights or legitimate interests in respect of the domain name; and (iii) your domain name has been registered and is being used in bad faith”. The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute. The Complaint was dated June 11, 2020, and the Amended Complaint was dated June 26, 2020. The Complainant’s Supplemental Filing was dated July 23, 2020, and contained correspondence dated July 14, 2020. Paragraph 12 of the Rules provides that the Panel, in its sole discretion, may request further statements or documents from either Party to the dispute. In this instance the submission of the Supplemental Filing, containing significant evidence unavailable at the date of the Complaint or Amended Complaint, was found to be justified in all the circumstances. Since the Supplemental Filing was copied simultaneously to the Respondent about seven days prior to the due date for Response, the Panel, in accordance with paragraph 10 of the Rules, deemed it unnecessary to invite the Respondent to reply. B. Identical or Confusingly Similar Some of the trademark registration documents highlighted by the Complainant could not be found or were not in the language of the proceeding, however the Panel is satisfied of the Complainant’s ownership of and rights in those trademarks listed in section 4 above. The disputed domain name The Complainant has stated a prima facie case to the effect that the Respondent has no rights or legitimate interests in respect of the disputed domain name and has not been permitted to use the Complainant’s trademark in any way. Paragraph 4(c) of the Policy provides that the Respondent my contest the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy and may establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation: “(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”. The Respondent has not responded formally or made any showing with reference to paragraphs 4(c)(i), (ii), or (iii) of the Policy or otherwise. As stated in section 2.1 of the WIPO Overview 3.0, the Panel “may draw inferences from the absence of a response as it considers appropriate, but will weigh all available evidence irrespective of whether a response is filed”. The Panel can find no basis on which the Respondent could reasonably have acquired any rights or legitimate interests in the disputed domain name comprising essentially the 150 year‑old trademark of a major international bank. The Panel finds for the Complainant under paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely: “(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; or (ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location”. The provisions of paragraph 4(b) of the Policy are without limitation and bad faith may be found alternatively by the Panel. Having reviewed the available evidence, the Panel finds it more probable than not that the guiding mind or minds behind the current Respondent and the current registration and use of the disputed domain name are the same as those who control the previous registrant. In particular, the registration details were changed after a cease and desist letter had been sent to the previous registrant; the previous registrant has a history of being found to have done similar things in previous decisions under the Policy; and the disputed domain name has been redirected to legitimate websites of the Complainant by both the previous registrant and the Respondent. It is not necessary, however, to rely on circumstance and probability. Neither is it necessary to assess whether the Respondent’s intentions may have been to sell the disputed domain name, to derive pay‑per‑click revenue, or to make a commercial gain by confusion with the Complainant’s trademark. The provisions of paragraph 4(b) of the Policy are without limitation. The Panel finds it sufficient that the Respondent is in possession of the disputed domain name incorporating the entirety of the Complainant’s famous trademark of 150 years standing, combined with the aggravating significant component “-gbm” (evocative of Global Banking and Markets), without any authorisation or right to do so and without any realistically conceivable use for it that would not conflict with the Complainant’s rights in its trademark. On this basis the disputed domain name is found to have been registered and used by the Respondent in bad faith. Furthermore, the Complainant alleges that the Respondent has engaged in fraud. The standard of proof under the Policy is the balance of probabilities, but by convention the more serious an allegation, the clearer must be the supporting evidence. In this case compelling written evidence has been forwarded by the Complainant. A potential investor received electronically a highly professional-looking 9-page brochure or prospectus promoting a purported “HSBC Fixed Rate Green Investment Bond”, dated July 2020, which the Complainant disavows and states is fraudulent. The potential investor was corresponding with the email address “accounts” at the disputed domain name. The potential investor was sent several pages of official‑looking documents, produced in evidence, detailing their proposed investment, and significantly, a document with the letterhead “HSBC Global Banking and Markets”, bearing the HSBC logo and headed “Wire Transfer Instructions”. This document provided banking details that would have diverted the investor’s funds to an account of “Biz Elite Group Limited”, which is unconnected with the Complainant. The subterfuge came to light because the potential investor prudently forwarded the correspondence to the Complainant’s phishing detection facility. The FCA, in its public warning issued on March 27, 2020, which referred specifically to fraud targeting HSBC Global Banking and Markets, described this type of fraud as the cloning of an FCA authorised firm. In the terms of paragraph 4(b)(iv) of the Policy, the Respondent is found to have used the disputed domain name in order to attempt to attract Internet users for commercial gain by confusion with the Complainant’s trademark as to the source of a service. Accordingly, on the totality of the evidence and on the balance of probabilities, the disputed domain name is found to have been registered and used by the Respondent in bad faith in the terms of paragraph 4(a)(iii) of the Policy. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name Dr. Clive N.A. Trotman
Sole Panelist
Date: August 24, 2020
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