[Indexed as: Hang Seng Data Services v. Wavecount]
[Indexed as: HANGSENGINDEX.net]
WIPO Arbitration and Mediation Center
Administrative Panel Decision
Case No. D2000-0652
Commenced: 27 June 2000
Judgment: 12 September 2000
Presiding Panelists: Clive Duncan Thorne, 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.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 Complainants 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 Centers 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 Capitals 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 Hollanders 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 Respondents 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 Kongs 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 worlds 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
Respondents 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 Respondents 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 Complainants
web site and its own website. In the Panels 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 Registrants website or location or of a product
or service on the Registrants 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 Panels 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 Complainants 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 Panels 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 Complainants mark with the Respondents
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.
Domain Name Transferred