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.net.  Respondent made no good faith use of the domain name.

Held, Name Transferred to Complainant.

It was clear that the domain name HENGSENGINDEX.NET 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.

Respondent wished to establish confusion as to the "source, sponsorship and affiliation or
endorsement of the Complainant's mark with the Respondent's website." This is evidenced by e-mail correspondence between Respondent and Complainant.  Since Respondent registered the domain name and offered either the shared use of the domain name or a “fee arrangement based on business generated” 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 Complainant’s authorised representative is Messrs Johnson Stokes, 19th Floor, Prince's Building, 10 Chater Road, Central Hong Kong (SAR), China (Miss Rosita Li).
The Respondent is Wavecount Inc which according a WHOIS database search exhibited as Annex “A” by the Complainant has a billing contact at FAB Securities of America Inc, 50 Broadway, 14th Floor, New York, NY 10004, U.S.A. It will also be noted that the administrative contact for the Respondent in the WHOIS search is given as Randy Strausberg at Top Gun Capital Management Inc, 25 Broad Street, STE.11J, New York, NY 10004, U.S.A.

2. The Domain Name and Registrar
 The Domain Name in dispute is “hangsengindex.net”. The Registrar is Network Solutions Inc.

3. Procedural History
 A hard copy of the complaint was lodged with the WIPO Arbitration and Media Center (the Center) on June 22, 2000. On June 27, 2000 a copy of the complaint was requested by the Center in electronic format. This was subsequently received and the necessary payment made. The panel takes the view that the complaint was properly filed. 
Notification of the complaint was given to Network Solutions on June 27 and to the Respondent on July 5 which is the formal date of the commencement of the proceeding. Notification to the Respondent was given by post/courier, facsimile and by e-mail. The panel has seen evidence of these transmissions and accepts that effective notice was given to the Respondent. Notification by post was given both to Wavecount Inc, c/o FAB at 50 Broadway, 14th Floor in New York as well as to Mr Randy Strausberg at Top Gun Management Inc, 25 Broadstreet at New York.
On July 5, 2000 a letter was faxed from Mr Richard S Hollander of R S Hollander Inc (e-mail [email protected]) to the Center’s administrator Ms Tamara Hutchison referring to the fact that he had been sent a copy of the complaint and that he had a “somewhat peripheral connection to Randy Strausberg”, the alleged registrant of “hangsengindex.net”. He went on to explain that he had done some freelance web site design work for FAB Capital dealing exclusively with his brother Steven J Hollander who was employed by FAB and that he registered some Domain Names on behalf of FAB Capital because “nobody at FAB Capital knew how to register Domain Names”. He has indicated that he met Mr Randy Strausberg at FAB Capital’s offices and had no knowledge of why Randy Strausberg had listed his Company on “hangsengindex.net”. He concluded, “Ms Hutchison, I will do anything I can to assist you and the WIPO in this matter and if necessary, in prosecuting Randy Strausberg to the fullest extent of the law”. Tamara Hutchison responded referring to the fact that Mr Hollander’s e-mail address had been provided by Network Solutions Inc as the technical contact and that administrative proceedings had been commenced against the Registrant of the Domain Name.
No response having been received from the Respondent and in accordance with the rules notification of the Respondent’s default was given on July 25, 2000. Subsequently on August 24 a three member Panel consisting of Clive Thorne presiding panelist, Marylee Jenkins panelist, Clark Lackert panelist was established. All three panelists have submitted a statement of acceptance and declaration of impartiality and independence.

4. Factual Background
 The Complainant has adduced evidence that it is the owner of world wide Trademark Registrations for the mark “Hang Seng Index” for a wide range of goods and services. A list of the Complainants registrations and copies of relevant trade mark registration certificates for the mark “Hang Seng Index” are annexed as Annex C to the complaint.
In addition the Complainant indicates that it has registered, inter alia, the domain names “hang seng.com”, “hang seng bank.com” and “hsiservices.com”. The domain name has been actively used as “www.hangseng.com” since October 24, 1995.
The Complainant is a subsidiary company of “Hang Seng Bank Limited”, Hong Kong’s second largest home grown Bank. As a strongly capitalised commercial bank focusing on Hong Kong and mainland China the Complainant specialises in a wide range of retail banking, corporate banking and treasury services. The Complainant was founded in 1933 and currently maintains a vast network of 156 branches in Hong Kong. In China the Complainant operates branches in Guangzhou, Shanghai, and Shenzhen. It has two representative offices in Beijing and Xiamen. The Complainant maintains about 7,400 staff. It is a member of the HSBC Group which is amongst the world’s largest financial services organisations and holds a 62.14 % equity interest in the bank. The Complainant is amongst the largest publicly listed companies in Hong Kong. It is also quoted on SEAQ International United Kingdom and offers investors in the United States a Sponsored Level-I American Depository Receipts programme. The bank maintains the famous “Hang Seng Indexes” (including Hang Seng Index, Hang Seng 100, HS China Enterprises Index, HS China Affiliated Corporations Index and Hang Seng London reference Index), which are all important financial indexes in the world.
The Complainant has registered the mark “Heng Seng Index” in respect of different services in different countries including the USA and has registered or applied for other marks incorporating the words “Hang Seng Index” in over 20 countries and regions. 
In the absence of evidence to the contrary from the Respondent the Panel accepts the above factual basis for the complaint.
The immediate history of the complaint is set out in Annex “D” to the complaint. This consists of a series of e-mails in February and March 2000 between Rosita Li at Johnson Stokes & Master and Wavecount. Although the letter is not exhibited it appears that the Complainant or its solicitors wrote to the Respondent as soon as the Complainant became aware of the Respondent’s registration for “hangsengindex.net”. In response in its e-mail of February 15, 2000 the Respondent claimed that “(they) have valid business reasons for the name” and that it is engaged in “ongoing financial services business”. The Respondent further claimed in a subsequent e-mail of February 22, 2000 that “we wanted to use the URL to direct traffic to our site for potential clients who might be interested in Asian equities or futures contracts or options” and “we would certainly be happy to work out an arrangement whereby our business desire is fulfilled while protecting your client and sharing any monetary benefit that derives from traffic resulting from Hangsengindex”.
In an e-mail of March 6, 2000 the Respondent proposed establishing “a link between your site for Hangsengindex .... and ours. Also that (its) site would include a link to your site so that investors can learn of the possible investment uses of the Hang Seng Index and thereby generate revenues for both of us”. Alternatively the Respondent raised the possibility of a “fee arrangement based on business generated at our site coming from hangsengindex.net regardless of who actually owns the URL name.

5. Parties Contentions 
 The Complainant contends:-
The domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.
The Respondent has no rights or legitimate interests in respect of the domain name.
The domain name is registered and is being used in bad faith.

6. Findings
 In accordance with paragraph 4(a) of the Policy the Complainant has the burden of proof to prove the three elements relied upon by the Complainant and set out above. 
(i)  The Respondent’s domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.
The Complainant has registered the mark “Hang Seng Index” widely throughout the world and in particular in the United States (Registered Number 1522044) and Hong Kong (Registered Number 7542/1996). The service mark registration “Hang Seng Index” is identical to the disputed domain name and accordingly the Panel finds for the Complainant in respect of this).
(ii) The Respondent has no rights or legitimate interest in respect of the domain name.
No evidence has been adduced by the Respondent as to why it has rights or legitimate interests in respect of the domain name. The exchange of correspondence Annexed “D” to the complaint which is referred to above does not assist beyond showing that the Respondent (e-mail of February 22, 2000) wanted to use the URL to direct traffic to its site for its potential clients who might be interested in Asian equities or futures contracts or Options. Similarly in the e-mail of March 6, 2000 the Respondent talks in general terms about being in the financial services industry with the goal of increasing its business and providing a link between the Complainant’s web site and its own website. In the Panel’s view this exchange of e-mails is insufficient to establish that the Respondent has rights or a legitimate interests in respect of the Domain Name. Accordingly the Panel finds that the Complainant succeeds in proving this as well.
(iii) The Domain Name has been registered and is being used in bad faith. 
The Complainant submits that by registering the domain name the Respondent has intentionally attempted to attract for financial gain internet users to its website or other on-line location by creating a likelihood of confusion with the Complainants mark as to the source, sponsorship, affiliation, or endorsement of the Registrant’s website or location or of a product or service on the Registrant’s website or location. The Complainant therefore relies on paragraph 4(b)(iv) of the Policy which if proved by the Complainant is evidence of the registration and use of a domain name in bad faith by Respondent. 
The e-mails of February 22, 2000 and March 6, 2000 from the Respondent, in the Panel’s view, make it plain that the Respondent has every intention to use the registration of the domain name “hangsengindex.net” to create a likelihood of confusion with the Complainant’s mark. In the February 22, 2000 e-mail the Respondent states that “we wanted to use the URL to direct traffic to our site for potential clients”. In March 6, 2000 e-mail the Respondent admits that its “only goal is to increase our business and yours” and that it has “in mind a link between your site ....and ours”. In the Panel’s view this is effectively an admission that the Complainant [sic] wishes to establish confusion as to the “source, sponsorship and affiliation or endorsement of the Complainant’s mark with the Respondent’s website”. Additionally the Panel regards the e-mail of March 6, 2000 which refers to a “fee arrangement based on business generated at our site” as evidence of circumstances indicating registration of the domain name for the purpose of transfer of the registration “for valuable consideration in excess of your documented out of pocket costs directly related to the domain name”, within paragraph 4(h)i.
The Panel therefore finds bad faith within paragraph 4(a)(iii) of the Policy.
It follows that the Complainant has succeeded in proving all three elements within paragraph 4(a) of the Policy and the Panel therefore finds for the Complainant.

7. The Decision
 The Complainant seeks an Order that the contested domain name be transferred to the Complainant. In accordance with paragraph 4(i) of the Policy the Panel orders that the domain name “hangsengindex.net” be transferred to the Complainant.