The Complainants are Sun Hung Kai Properties Limited (the “First Complainant”), Hong Kong, China, and United Way Investments Limited (the “Second Complainant”), British Virgin Islands, United Kingdom. The Complainants are represented by Mayer Brown, Hong Kong, China.
The Respondent is Tang Wing Keung, Hong Kong, China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 4, 2020. On September 4, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 7, 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 an email communication to the Complainants on September 8, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on September 14, 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 September 15, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 5, 2020. On October 4, 2020, the Center received an email communication from the Respondent in which the Respondent expressed his willingness to surrender the disputed domain name. On October 5, 2020, the Center invited the Complainants to comment whether they would like to explore settlement with the Respondent. On October 12, 2020, the Center received an email communication from the Complainants requesting the UDRP proceedings to continue. On October 13, 2020, the Center notified the Parties that it would proceed to Panel Appointment. The Center appointed Jacob (Changjie) Chen as the sole panelist in this matter on November 3, 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 First Complainant is Sun Hung Kai Properties Limited located in Hong Kong, China, whose core business focuses on property development for sale and lease and possesses residential, shopping mall, office and hotel portfolios in Hong Kong, China. The First Complainant was publicly listed on the Hong Kong, China stock exchange in 1972, and it claimed that it is one of the largest property developers in Hong Kong, China. The Second Complainant is United Way Investments Limited, incorporating in the British Virgin Islands, United Kingdom, and is a wholly owned subsidiary of the First Complainant. The Second Complainant is a holding company which holds the trademarks that are being used by the First Complainant in relation to its businesses. For example, the Second Complainant owns Hong Kong, China trademark registration No. 305011271 of CENTRAL PEAK, with an actual date of registration as February 18, 2020. According to the information disclosed by the Registrar, the Respondent is Tang Wing Keung, located in Hong Kong, China. The disputed domain name was registered on August 6, 2020. According to the Complainants’ evidence, the disputed domain name used to resolve to a website displaying the Complainants’ CENTRAL PEAK trademark, business information related to the Complainants’ project, and purportedly offering customers the opportunity to make a “priority appointment” to view the project’s show flats. The disputed domain name is inactive now. 5. Parties’ Contentions A. Complainants The Complainants contend that the disputed domain name is identical to their CENTRAL PEAK trademark. The additional letters “hk” is insufficient to differentiate the similarity between the disputed domain name and the Complainants’ CENTRAL PEAK trademark. The Complainants further contend that they have not licensed or otherwise authorized the Respondent to use its CENTRAL PEAK trademark or to register any domain name incorporating the CENTRAL PEAK trademark. The Complainants finally contend that the disputed domain name was registered and is being used in bad faith. B. Respondent On October 4, 2020, the Respondent sent an email to the Center expressing his willingness to surrender the disputed domain name. However, the Respondent did not formally reply to the Complainants’ contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Second Complainant owns Hong Kong, China trademark registration No. 305011271 of CENTRAL PEAK, with an actual date of registration as February 18, 2020. The Complainants have successfully established its rights upon the CENTRAL PEAK trademark. The above trademark registration date also predates the registration date of the disputed domain name (August 6, 2020). It is well established that the generic Top-Level Domain (“gTLD”) “.com” as a standard registration requirement is disregarded in the assessment of the confusing similarity between the disputed domain name and the Complainants’ CENTRAL PEAK trademark. The disputed domain name incorporates the Complainants’ CENTRAL PEAK trademark in its entirety. Previous UDRP cases have established that incorporation of a complainant’s trademark in its entirety into a domain name is sufficient to establish that the domain name is identical or confusingly similar to the complainant’s trademark. The addition of the letters “hk” after the Complainants’ CENTRAL PEAK trademark does not prevent a finding of confusing similarity between the disputed domain name and the Complainants’ CENTRAL PEAK trademark. See BHP Billiton Innovation Pty Ltd v. Oloyi,WIPO Case No. D2017-0284. Thus, the Panel concludes that the disputed domain name is confusingly similar to the Complainants’ CENTRAL PEAK trademark. B. Rights or Legitimate Interests The Panel is satisfied that the Complainants have made out a prima facie case that the Respondent does not have rights or legitimate interests in respect of the disputed domain name. The burden of production is hence shifted to the Respondent to rebut the Complainants’ contentions. In this case, the Respondent did not submit a formal response to rebut the Complainants’ prima facie case. The Complainants are deemed to have satisfied paragraph 4(a)(ii) of the Policy according to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1. See also Construction Skills Certification Scheme Limited v. Mara Figueira,WIPO Case No. D2010-0947. Furthermore, according to the Complainants’ evidence, the disputed domain name used to resolve to a website boldly displaying the Complainants’ CENTRAL PEAK trademark, the Central Peak project information, and purportedly offering customers the opportunity to make a “priority appointment” to view the project’s show flats. The disputed domain name is inactive now. The Panel is of the opinion that the Respondent’s use of the disputed domain name cannot be considered as legitimate noncommercial or fair use of the disputed domain name or using the disputed domain name in connection with a bona fide offering of goods or services. The Respondent has failed to rebut the Complainants’ contentions, and there is no evidence on record showing that the Respondent has been commonly known by the disputed domain name. Moreover, the nature of the disputed domain name carries a risk of implied affiliation with the Complainants. See WIPO Overview 3.0, section 2.5.1. Therefore, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith The Panel notes that the disputed domain name was registered on August 6, 2020, later than the registration date of the Complainants’ CENTRAL PEAK trademark. The First Complainant and the Respondent are both located in Hong Kong, China. Moreover, the disputed domain name resolved to a website displaying the Complainants’ CENTRAL PEAK trademark and Central Peak project information. Given that, the Panel holds that the Respondent had actual awareness of the Complainants’ trademark and/or business at the time of registering the disputed domain name. Thus, without any rights or legitimate interests, the Respondent’s registration of the disputed domain name is indicative of bad faith. As stated above, the disputed domain name used to resolve to a website displaying the Complainants’ CENTRAL PEAK trademark and Central Peak project information. The website also provided a phone number for customers to call in order to make a “priority appointment for show flats”. The Complainants assert that the Respondent has never been authorized by the Complainants to offer customers such priority appointments. The website misled customers into falsely believing that it was related to the Complainants. Thus, the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainants’ trademark as to the source, sponsorship, affiliation, or endorsement of his website as described under paragraph 4(b)(iv) of the Policy. See Swarovski Aktiengesellschaft v. WhoisGuard Protected / Peter D. Person,WIPO Case No. D2014-1447. Although there was a disclaimer indicating the website at the disputed domain name was not the Complainants’ official website, considering the overall circumstances of this case, the Panel finds that such disclaimer in small font size at the bottom of the website merely confirms the Respondent’s knowledge of the Complainants, which cannot cure the Respondent’s bad faith. See WIPO Overview 3.0, section 3.7. Moreover, after the commencement of the UDRP proceedings arising of this dispute, instead of responding to the Complainants’ contentions, the Respondent only expressed his willingness to surrender the disputed domain name. That may further indicate that the Respondent did not register and use the disputed domain name in good faith. Further, the disputed domain name is currently inactive. The Panel finds that the non-use of the disputed domain name would not prevent a finding of bad faith under the doctrine of passive holding in this case. For the reasons above, the Panel concludes that the disputed domain name was registered and is being used in bad faith. 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 Jacob (Changjie) Chen
Sole Panelist
Date: November 17, 2020
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