[Indexed as: Hang Seng Bank v. Websen]
[Indexed as: HANGSENGCREDIT.com]
WIPO Arbitration and Mediation Center
Administrative Panel Decision
Case No. D2000-0651
Commenced: 5 July 2000
Judgment: 12 September 2000
Presiding Panelists: Clive Thorne, Marylee Jenkins and Clark Lackert
Domain name - Domain name dispute resolution policy - Trademark rights - Well known and famous - Identical - Confusingly similar - Legitimate interest - Bad faith registration - Bad faith use - Valuable consideration in excess of out of pocket costs - Web site not developed.
Complainant, a Hong Kong corporation, owns a significant number of marks containing the name Hang Seng in respect of a wide range of goods and services worldwide. Complainant also has wholly owned subsidiary called Hang Seng Credit Limited in Hong Kong. Respondent registered the domain name, hangsengcredit.com. Respondent has not developed a Web site using the domain name at issue or made any other good faith use of the domain name.
HELD, Name Transferred to Complainant
Domain name is identical or confusingly similar to the service mark or trademark in which Complainant has rights. Respondent also has no rights or legitimate interest in respect of the domain name.
Respondent offered to sell domain name to Complainant for a small fee. The panel takes the view that a small fee can encompass valuable consideration in excess of out of pocket costs, especially since the mark in question has become very well known and famous. Thus, Respondent has demonstrated bad faith registration and use of the mark.
Policies Referred to
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Registration Agreements Referred to
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Cases Referred to
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Panel Decision Referred to
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Panelists Referred to
Thorne, Jenkins and Lackert, Panelists: -
1. The Parties
The Complainant in this administrative proceeding is Hang Seng Bank Limited, a company incorporated under the laws of Hong Kong with its registered office at 83 Des Voeux Road, Central, Hong Kong (SAR), China.
The Complainant is represented by Messrs Johnson Stokes & Master
of 19th Floor, Princes Building, 10 Chater Road, Central, Hong Kong (SAR),
China (Miss Rosita Li). The Respondent in this administrative proceeding
is Websen Inc of PO Box 6608, Oakland, California, 94603, U.S.A. A Network
Solutions WHOIS search exhibited as Annex "A" to the Complaint gives a
billing contact e-mail address for the Respondent
as [email protected]. A letter from Websen Co to Hang Seng Credit Limited
exhibited by the Complainant as Annex "E" gives an address for Websen Co
as 27 Sunny Oaks Drive, San Rafael, California, 94903, U.S.A. with an e-mail
address of [email protected].
2. The Domain Name and Registrar
The Domain Name in dispute is "hangsengcredit.com". The Registrar is Network Solutions Inc who confirmed by e-mail dated July 3, 2000 that Websen Inc is the current registrant of "hangsengcredit.com".
3. Procedural History
The WIPO Arbitration and Mediation Center received the Complaint on
June 22, 2000 by hard copy. The Complaint was filed in accordance with
the requirements of the Rules and Supplemental Rules with payment of the
requisite fee being made by the Complainant. On June 27, 2000 the Center
acknowledged receipt of the Complaint but requested a copy in electronic
format as required by paragraph 3(b) of the Rules. Notification of the
Complaint was given to the Respondent on July 5, 2000 which is also the
date for the commencement of the Administrative Proceedings. The Complaint
was communicated to the Respondent Websen Inc. by post, by fax and by e-mail.
The Complaint was also communicated by post and fax to 27 Sunny Oaks Drive,
San Rafael, California, 94903 U.S.A and to P O Box 6608, Oakland, California,
94603, U.S.A. By e-mail the Complaint was communicated to "[email protected]"
and "[email protected]" respectively. The Complaint was also communicated
to the technical contact for the Respondent postmaster, Best Internet (B1H2),
Best Internet Communications, Inc, 345 E. Middlefield Road, Mountainview,
California, 94043, USA. and by e-mail to "[email protected]". The Panel
has seen copies of the posting receipts and fax
receipts.
No response appears to have been received from the Respondent and notification of the Respondents default was given to Websen Inc by e-mail at "[email protected]" and at "[email protected]" on July 25, 2000.
On August 24, no response still having been received from the Respondent a three member Panel was appointed consisting of Clive Thorne as Presiding Panelist and Marylee Jenkins and Clark Lackert as Panelists. All three panelists have submitted a statement of acceptance and a declaration of impartiality and independence.
4. Factual Background
The Complaint is based on the Complainants trade mark registration
for the mark "Hang Seng Bank Limited" which has been registered in respect
of various services in Class 36 in the United States under registered number
1,594,530. A copy of the relevant registration certificate is annexed
as Annex "C" to the Complaint. The Complainant also adduces evidence of
a significant number of marks containing the names "Hang
Seng" in respect of a wide range of goods and services world wide.
These are listed and annexed as Annex "D". The Complainant has also registered,
inter alia the domain names "hangseng.com" "hangsengbank.com" and "hsiservices.com"
on October 24, 1995. The website "www.hangseng.com" has apparently been
in active use since October 24, 1995.
The Complainant is Hong Kongs second largest home grown bank. It is
a strongly capitalised commercial bank focusing on Hong Kong and China
specialising in a wide range of retail banking, corporate banking and treasury
services. The Complainant was founded in 1933 and currently maintains a
large network of 156 branches in Hong Kong and in China. It employs about
7,400 staff. It is also a member of the HSBC
Group which is among the worlds largest financial services organisations
and holds a 62.14 % equity interest in the Complainant. The Complainant
is also amongst the largest publicly listed companies in Hong Kong. It
is quoted on SEAQ International in the United Kingdom and offers investors
in the United States a Sponsored Level-I American Depository Receipts Programme.
The Complainant also maintains the famous "Hang Seng Indexes" which are
all important financial indexes in the world. The Complainant has a wholly
owned subsidiary called "Hang Seng Credit Limited in Hong Kong. The name
of this subsidiary corresponds with the domain name in dispute. Other subsidiary
companies include "Hang Seng Credit (Bahamas) Limited" and "Hang Seng
Credit Card Limited".
In the absence of any contrary evidence from the Respondent the Panel is prepared to accept the Complainants evidence as to the Complainants trade mark rights and the evidence of its trading activity.
At Annex "E" to the Complaint is exhibited a letter from the Chief Executive
Officer of Websen Co, Mr Tibor Laczay dated October 9, 1999 addressed to
the marketing department of Hang Seng Credit Limited indicating that Websen
Co has come into possession of some Domain Names including "hangsengcredit.com".
The letter purports to offer the services of Websen Co to Hang Seng Credit
Limited and indicates that
"for a small fee we will transfer ownership and register your domain
name hangsengcredit.com". It should be noted that this letter is written
on paper headed Websen Co and not the name of the Respondent Websen Inc.
However, the domain name subject to Websen Cos letter is registered in
the name of Websen Inc.
A cease and desist letter was sent by Jonathan Stokes & Master to Websen Inc (not Websen Co) at 27 Sunny Oaks Drive, San Rafael, California, 94903, U.S.A. addressed to Mr Tibor Laczay on January 22, 2000. This is annexed to the Complaint as Annex "F". The Complainant indicates that no reply was received. The Complainant has not explained in the Complaint the distinction between Websen Inc and Websen Co
5. Parties Contentions
The Claimant in accordance with paragraph 4(a) of the Policy asserts:-
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name is registered and is being used in bad faith.
There is no response from the Respondent.
6. Findings
(i) The domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.
The Panel accepts on the basis of the evidence of trade mark rights given by the Complainant that the Complainant succeeds in respect of paragraph 4(a)(i) of the Policy. The domain name is confusingly similar to the Complainant's trade marks "Hang Seng".
(ii) The Respondent has no rights or legitimate interest in respect of the Domain Name.
The Panel is prepared to accept that the Respondent which has been properly served with the Complaint has adduced no evidence of any rights or legitimate interest in respect of the domain name. In particular there is no evidence of the Respondents use or preparation to use the domain name. Further the Respondents name Websen Inc. is totally different from the domain name in dispute.
(iii) The Domain Name is registered and being used in bad faith.
The Complainant is under an obligation to prove this element. In doing so the Panel is entitled to rely on the instances set out in paragraph 4 (b) of the Policy. Of particular relevance is paragraph 4 (b) (i) which indicates that evidence of a registration and use of a domain name in bad faith shall exist if there are
"(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 that trade mark 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".
In relying upon this subparagraph the Complainant refers to the letter
from Websen Company of September 10, 1999. The letter mentions the domain
name and is addressed not to the Respondent but to Hang Seng Credit Ltd
at the Respondent's Hong Kong address. The difficulty from the Panels
point of view is that that letter is written by Websen Company and not
by Websen Inc. the Respondent. No evidence is given by the
Complainant which appears to link Websen Inc and Websen Co.
The Panel is nevertheless prepared to accept that the fact that a letter was sent by Websen Co in respect of a Domain Name registered in the name Websen Inc is prima facie evidence of a relationship between Websen Co and Websen Inc. Further Websen Inc would have had an opportunity to deal with this point by way of defence if it had chosen, as Respondent, to serve a Response. The Panel is therefore prepared to accept that the letter of October 10 should be taken as having been written on behalf of the Respondent.
There remains the question of whether the offer to transfer ownership
of the domain name for "a small fee" constitutes "valuable consideration
in excess of your documented out of pocket costs directly related to the
domain name" for the purposes of paragraph 4(b)(i) of the Policy. The Complainant
asserts that the fact that the reference to a "small fee" does not confirm
whether such amount merely covers out of pocket costs
directly related to the domain name is clear evidence of bad faith.
The Panel is prepared to accept the Complainants view. "A small fee" can
encompass "valuable consideration" in excess of documented out of pocket
costs. No evidence has been given by the Respondent in respect of this
point.
The Panel takes the view that the mark "Hang Sent" because of its wide use and promotion internationally has become so well known and "famous" that any third party seeking to register and deal in a confusingly similar domain name such as that in dispute must create a presumption of bad faith. Further the fact that Websen Co admits to offering "services" is evidence of use of the name.
The Panel therefore finds for the Complaint in finding that the Domain
Name has been registered and is being used in bad faith.
7. Decision
For the reasons given above the Panel finds in favour of the Complainant
and orders that the domain name "hangsengcredit.com" be transferred to
the Complainant as requested by the Complainant.
Clive Duncan Thorne
Presiding Panelist
Marylee Jenkins Clark Lackert
Panelists
Dated: September 12, 2000
Domain Name Transferred