which corresponds to the Complainant's name. The characters have the following
meanings:
“香港”
– Hong Kong
“上海”
– Shanghai
“滙豐”
– abundant remittance
“銀行”
– bank
“有限公司”
– limited company
The Complainant
has registered the following trademarks throughout the world in respect of
various services:
1. “滙豐”
(eg, Hong Kong registration no 1555/1993)
2.“汇丰”
(eg, China registration no 967955)
3. 'WAYFOONG' (eg,
Hong Kong registration no 1559/1993)
4. “滙豐銀行”
(eg, US registration no 1,446,772)
The above trademarks have been used and advertised throughout the world. The full list of the trademark
registrations is found in Annex C to the Complaint. '“滙豐”
and “汇丰” have the same pronunciation and meanings and are for all intents and purposes identical.
'WAYFOONG' is a transliteration of
“滙豐”/”汇丰”.
The character “滙”
and “匯”
are regarded as the same in Chinese. No trademark registration for
“香港上海滙豐銀行”,
“香港上海匯豐銀行”
or “香港上海汇丰银行”
was submitted by the Complainant.
The Complainant and its parent/associated companies have registered many
domain names based on the above trademarks. The full list of domain name
registrations is found in Annex D to the Complaint. Among the
registrations are
<香港上海滙豐銀行.net>,
<香港上海匯豐銀行.org>,
<香港上海汇丰银行.net>
and <香港上海汇丰银行.org>.
The Respondent registered the Domain Name on November 10, 2000.
5. Parties' Contentions
A. The Complainant
The substance of the Complaint is short and is reproduced below:
'It has recently come to the Complainant's attention that the Respondent
has registered the Chinese multilingual domain name '“香港上海匯豐銀行.com”
without its knowledge or authorization. As noted from Annex C, the
Complainant has registered the marks
“滙豐”,”
滙豐銀行”,
“汇丰”
and 'WAYFOONG' in respect of various goods and services
throughout the world. In this regard, please note that the word
“滙”
is the same as
“匯”
under the
Chinese characters system.
The Respondent has no rights or legitimate interests in respect of the
Domain Name because (a) its '“香港上海匯豐銀行.com”
website is currently substantively inactive and there is no
substantial use of the website by the Respondent; (b) the Respondent's name is
different from the Domain Name. The Respondent is therefore not commonly
known by the Domain Name; (c) the Respondent is not a bank and the registration
and/or use of the Domain Name bearing the characters '“銀行”
which mean
'bank' in Chinese will be deceptive.
The Complainant submits that the Domain Name
has been registered and is intended to be used in bad faith. The Complainant further submits that
the Registrant was actually a bad-faith pre-emptive registrant whose sole
purpose for the registration was for selling, renting, or otherwise
transferring the Domain Name registration for profits. It was reported on Hong Kong Economic
Times on 3 January 2001 that a person with username 'taklee8' offered to sell
the Domain Name in a Hong Kong based online auction site Go2HK
(http://www.go2hk.com) at a starting price of HK$200,000. A copy of the said newspaper report and
its translation are provided as Annex F.
Moreover, the Registrant's registration has in fact obstructed the
Complainant from reflecting its mark and services in a corresponding domain
name. The Complainant reiterates that it has legitimate rights to use the
name '“香港上海匯豐銀行”.
It is the Complainant's submission that the Respondent has deliberately
registered the Domain Name in order to prevent the Complainant from reflecting
its marks and services in a corresponding domain name.
The Complainant's Authorized Representative
sent a cease and desist letter by email and by post to the Registrant on 15 May
2001 notifying him that his registration of the Domain Name has infringed the
Complainant's right and asking him to assign the Domain Name to the
Complainant. A copy of the said
cease and desist letter is provided as Annex E. The Complainant's Authorized Representative received no
reply from the Registrant after the cease and desist letter and then telephoned
the Registrant to ask for a reply.
The Registrant confirmed in the telephone his receipt of the cease and
desist letter. The Registrant said
that the matter was 'negotiable' and would ask his lawyer to give a reply to
the Complainant's Authorized Representative. However, the Complainant's
Authorized Representative and/or the Complainant only received an email from the
Registrant stating that he would reply but received no final response from the
Registrant and/or his lawyer to date despite a reminder was sent to the
Registrant.'
B. The Respondent
The Respondent failed
to respond.
6. Discussion
and Findings
In order to
succeed in this proceeding, Article 4(a) of the Policy requires the Complainant
to prove the existence of each of the following elements:
1. The Domain Name is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
2. The Respondent has no rights or legitimate interests in respect of the Domain Name; and
3. The Domain Name has been registered and is being used in bad faith.
As the Respondent failed to respond, despite having been properly notified of the Complaint, the
Panel is entitled to draw appropriate inferences pursuant to Rule 14(b). In this case, the Panel accepts the
unchallenged assertions of the Complainant as fact, in particular, in relation
to:
1. The inactivity of
the Domain Name as an address of a website;
2. The offer for
sale of the Domain Name at the online auction site at http://www.go2hk.com;
3. The cease and
desist letter to the Respondent on May 15, 2001; and
4. The telephone conversation between the Complainant's authorized representative and the
Respondent.
Identical or Confusingly Similar Trademark
Under the Singapore Trade Marks Act
(Cap 332, 1999 Edition), a trademark (or 'trade mark' as identified therein)
means 'any visually perceptible sign capable of being represented graphically
and which is capable of distinguishing goods or services dealt with or provided
in the course of trade by a person from goods or services so dealt with or
provided by any other persons'.
This definition is similar to that adopted in many jurisdictions and
this Panel shall be guided by the same. The Chinese character
combinations “香港上海滙豐銀行”,
“香港上海匯豐銀行”,
“香港上海汇丰银行”
and the Complainant's name as a result of their history and use
clearly fall within this definition.
In view of the long and extensive use
of these character combinations and their English equivalent (ie, the
Complainant's name) as an identifier of the Complainant's business, this Panel
is satisfied that the Complainant would have acquired common law rights over
the same. As such, this Panel finds that
“香港上海滙豐銀行”,
“香港上海匯豐銀行”,
“香港上海汇丰银行” and the Complainant's name are trademarks in which the Complainant
has rights within the meaning of Article 4(a), bearing in mind that a plain
reading of Article 4(a) does not require the trademark concerned to be registered.
It is an established practice to ignore the '.com' portion of domain names when
comparing them against corresponding trademarks since it is a
non-distinguishing feature. On
this basis, this Panel finds that the Domain Name (disregarding the '.com' portion)
is identical to “香港上海滙豐銀行”,
“香港上海匯豐銀行”
and “香港上海汇丰银行” and confusingly
similar to the Complainant's name in English.
Legitimate Interest
“香港上海匯豐銀行”
corresponds to the Complainant's name and the Complainant has shown that it has
legitimate rights to want to use the Domain Name. The Domain Name refers to the name of a bank but the
Respondent is an individual. The Respondent has not provided any justification
for his selection of the Domain Name. The Panel is unable to identify any
reason, including the circumstances set out in paragraph 4(c) of the Policy,
which allows the Respondent to claim any right or legitimate interest in
respect of the Domain Name.
The Respondent has
not seen fit to deny the Complainant's allegations that the Domain Name is
currently not used to support a website. Although domain names may be used for
internet services other than world wide web services (eg, FTP, email, etc), the
prevalent use of domain names is as internet world wide web addresses. The
Respondent has not submitted any evidence to suggest that the Domain Name has
been used for any internet service.
Therefore, the Panel finds that there has been no use of the Domain
Name.
The Panel
accordingly finds that the Respondent has no rights or legitimate interests in
respect of the Domain Name.
Bad Faith
Registration and Use
Paragraph 4(b)(i)
of the Policy, which provides a ground for finding bad faith registration and
use, reads as follows:
'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.'
There is no
evidence to suggest that the Respondent has used the Domain Name since its
registration in November 2000. The
Panel has already found that the Respondent has no rights or legitimate interests
in the Domain Name. In view of non-use of the Domain Name since registration
and the absence of contrary evidence, it is difficult to ignore the likelihood
of bad faith registration.
In addition, the
Domain Name was offered by a 'taklee8' for sale by auction for HK$200,000, an
amount which is way beyond the cost of registering and maintaining a domain
name. Although there is no direct
evidence linking 'taklee8' to the Respondent, the circumstances are such as to
raise a reasonable inference that the Domain Name is available for sale.
There is no
evidence that the Respondent has denied the availability of the Domain Name for
sale in response to the newspaper report.
The Respondent did not respond substantively to the Complainant's cease
and desist letter. The Respondent
effectively ignored the Complainant's threat of legal proceedings. The Respondent has chosen not to
respond to the Complaint. All in all, the Panel finds that the Respondent's
failure to express any denial or explanation despite the various opportunities
offered to him reinforces the inference of bad faith registration and bad faith
use.
It is the view of
this Panel on a balance of probability that the Respondent has registered the
Domain Name in bad faith and the Domain Name is being used in bad faith.
7. Decision
Based on the findings and reasons stated above, the Panel determines that the
Complainant succeeds and hereby directs that the Domain Name
<香港上海匯豐銀行.com>
be transferred to The Hongkong and
Shanghai Banking Corporation Limited.
