v.
Power M Investment Limited
[Indexed as: Hang Seng Data Services v. Power M Investment]
[Indexed as: HANGSENGINDEX.org]
WIPO Arbitration and Mediation Center
Administrative Panel Decision
Case No. D2000-0653
Commenced: 27 June 2000
Judgment: 12 September 2000
Presiding Panelist: Clive Duncan Thorne
Panelists: Marylee Jenkins, Clark Lackert
Domain name - Domain name dispute resolution policy - U.S. Trademark - Hong Kong Trademark - Identical - Confusingly similar - Bad faith registration - Bad faith use - Valuable Consideration in Excess of Out of Pocket Costs
Complainant was registrant of service mark and trademark HENG SENG INDEX in the United States and other jurisdictions. Complainant has used the marks in connection with multiple international products and financial services. Respondent registered the domain name, hangsengindex.org Respondent made no good faith use of the domain name.
Held, Name Transferred to Complainant.
It was clear that the domain name HENGSENGINDEX.ORG is identical or confusingly similar to a service mark and trademark registered and used by Complainant, HENG SENG DATA SERVICES LIMITED. It was not established that Respondent has any rights or legitimate interest in respect of the domain name.
There was no evidence of Respondents use or demonstrable preparations
to use the domain name with a bona fide offering of goods or services;
this was a parking website. Since Respondent acquired the domain
name primarily for the purpose of selling, renting or otherwise transferring
the domain name registration to the Complainant for a US$10,000 handling
fee outside of any out of pocket costs directly related to the domain
name, Respondent demonstrated bad faith use of the mark.
Policies referred to
Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999.
Registration Agreements referred to
[none]
Cases referred to
[none]
Panel Decision referred to
[none]
Thorne, Panelist: -
1. The Parties
The Complainant is Hang Seng Data Services 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 Respondent is Power M Investment
Limited of PO Box 98953, Tsim Sha Tsui Post Office, Hong Kong (SAR), China.
The email address for the Respondent is [email protected]. There
is email correspondence passing between the Respondent and the Complainant
prior to the commencement of the current administrative proceedings in
which a Mr. John Griffiths purports to act for the Respondent. Mr. Griffiths
email address is given as [email protected].
The Complainant is represented by Messrs. Johnson Stokes & Master,
19th Floor, Princes Building, 10 Chater Road, Central, Hong Kong (SAR),
China (Miss Rosita Li).
2. The Domain Name and Registrar
The disputed domain name is hangsengindex.org. The registrar for
the domain name is Network Solutions Inc.
3. Procedural History
The Complaint was received by the WIPO Arbitration and Mediation Center
by hard copy on June 22, 2000 and by email version on June 27, 2000. Acknowledgement
of the receipt of the complaint was served on July 27, 2000. The Panel
accepts that in accordance with the Rules the Complainant has properly
complied with the necessary formal requirements including payment of the
requisite fee.
Notification of the complaint and commencement of the administrative
proceedings was given on July 5, 2000 to the Respondent at its email addresses
[email protected] and to its technical contact and zone contact [email protected].
The complaint was also served by post and courier and by fax. The Panel
has seen copies of the certificates of posting and fax sheets. Accordingly
the Panel accepts that the Respondent was properly served.
No response having been received from the Respondent, notification
of the Respondents default was served on July 25 and subsequently on August
24, 2000 notification was given of the appointment of an administrative
panel consisting of a three member panel; Clive Thorne, Presiding Panelist,
Marylee Jenkins, Panelist and Clark Lackert, Panelist. All three panelists
have submitted a statement of acceptance and a declaration of impartiality
and independence.
The original date for submission of the panels decision was September
6, 2000. At the request of the Presiding Panelist an extension of time
was sought until September 13, 2000.
4. Factual Background
The Complainant is a subsidiary company of Hang Seng Bank Limited which
is Hong Kongs second largest home grown bank. The Hang Seng Bank is a
capitalised commercial bank focusing on Hong Kong and the Chinese main
land. The bank specialises in a wide range of retail banking, corporate
banking and treasury services.
The Complainant has registered the mark Hang Seng Index in respect
of different services in various countries including the United States
and has registered or applied for other marks incorporating the words Hang
Seng Index in over 20 countries and regions. A list of the Complainants
world wide registrations and copies of relevant registration certificates
for the mark Hang Seng Index in class 36 in the United States (registration
number 1522044), in the Benelux countries (registration number 521643)
and in Hong Kong (registration number 7542/996) are provided as Annex D
to the complaint.
This matter arose as a result of a letter from the Complainants solicitors
dated January 20, 2000 to the Respondent at the address indicated in the
Network Solutions WHOIS record as PO Box 98593, Tsim Sha Tsui, Post Office,
Hong Kong. That letter was returned by the Post Office. Subsequently there
was email correspondence passing between a Mr. John Griffiths who purports
to be the Respondents representative, this is set out at Annex B.
Mr. Griffiths claimed that the Respondent and/or himself belonged to a
newly established group of internet consultants who assist clients to
deal with sensitive issues such as domain name issues on line......
Mr. Griffiths did not provide any postal address or fax number for correspondence.
In an email from Mr. Griffiths dated February 1, 2000 he stated that his
client has no plan to activate the said domain in the short term and is
willing to transfer the domain to the Complainant subject to a reasonable
transfer fee. In a without prejudice email message of February 27 which
is included with the bundle Mr. Griffiths stated that his client is willing
to help the Complainant to settle the outstanding case providing the Complainant
agrees to pay a handling fee of US$ 10,000.
In the absence of any evidence from the Respondent the Panel is prepared
to accept the Complainants [sic] evidence. Further in the absence of any
objection to the inclusion of the without prejudice email of February 27,
2000 the Panel is prepared to take notice of the contents of that email
message.
5. Parties Contentions and Findings
The Complainant asserts in accordance with paragraph 4(a) of the Policy:-
(i) The domain name is identical or confusingly similar to a trade
mark or service mark to which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interest in respect
of the domain name; and
(iii) The domain name was registered and is being used in bad faith.
There is no response and no contentions advanced on behalf of the Respondent.
(i) The domain name is identical or confusingly similar to a trade
mark or service mark to which the Complainant has rights.
The Panel accepts the Complaints [sic] contention. In particular the
Panel has seen evidence of the Complainants world wide registrations for
the mark Hang Seng Index which is identical to the domain name in dispute.
The Complainant succeeds on this point.
(ii) The Respondent has no rights or legitimate interest in respect
of the domain name.
The Complainant asserts that it succeeds in relation to this element
because:-
(a) The company name of the Respondent is different from the domain
name it has registered and is therefore not commonly known by the domain
name.
(b) The hangsengindex.org website the subject of the reference [sic]
is inactive, there is therefore no evidence of the Respondents use or
demonstrable preparations to use the domain name with a bona fide offering
of goods or services
(c) The Respondent has failed to establish and provide evidence substantiating
its right to use the mark hangsengindex in any way.
In the absence of any evidence from the Respondent the Panel is prepared
to accept the Complainants submission in respect of this element and finds
that the Respondent has no rights or legitimate interest in respect of
the domain name. The web site is essentially a parking website.
(i) The domain name was registered and is being used in bad faith.
The Complainant relies upon paragraph 4(b) of the policy which sets
out certain circumstances which without limitation if found by the Panel
to be present shall be evidence of the registration and use of the domain
name in bad faith. In particular the Complainant expressly relies upon
paragraph 4(b)(i) to the effect that there are:-
Circumstances indicating that you (the Respondent) have registered
or you (the Respondent) 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 trade mark or service mark or
to a competitor of the Complainant, for valuable consideration in excess
of your documented out of pocket costs directly relating to the domain
name.
As evidential support for this contention the complainant relies upon
the handling fee of US$ 10,000 referred to by Mr. Griffiths in his without
prejudice email message of February 27. There can be no doubt that this
is clearly in excess of the Respondents out of pocket costs directly relating
to the domain name. The Panel therefore finds that the domain name has
been registered and is being used in bad faith by the Respondent.
It follows that the Complainant has succeeded in proving all three
of the elements within paragraph 4(a) of the policy and the Panel therefore
finds for the Complainant.
6. Decision
The Panel finds for the Complainant and orders as requested by the
Complainant that the domain name hangsengindex.org be transferred to
the Complainant in accordance with paragraph 4(i) of the Policy.
Domain Name Transferred