Hong Kong Trade Development Council v. Tiffany Ting

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Hong Kong Trade Development Council v. Ting, Tiffany

Case No. D2001-0098

See Also PDF File D2001-0098

1. The Parties

The Complainant is Hong Kong

Trade Development Council, a statutory body incorporated in Hong Kong, having a

registered office at 38/F, Office Tower, Convention Plaza, 1 Harbour Road,

Wanchai, Hong Kong SAR of P. R. China.

The Respondent is a physical

person Ting, Tiffany with the contacting address at 5/F., No. 7, Lane 235,

Pao-Chaio Road, Shin-Tine, Taipei 231, Taiwan.

2. The Domain Name and Registrar

The domain name in dispute

is [<ÙQ°l¾W.com>

(BQ--3CGL65T4PWZA.COM)], which is registered with the registrar Network

Solutions, Inc. of 505 Huntmar Park Drive, Herndon, VA 20170, USA.

3. Procedural History

On January 20, 2001, The

WIPO Arbitration and Mediation Center (the "Center") received a

communication from the Respondent.

The Center received the

Complaint of the Complainant on February 5, 2001 by email and the amended

Complaint by email on February 27, 2001 and in hard copy on

March 2, 2001.

On February 27, 2001, the

Center forwarded the communication from the Respondent to the Complainant.

The Center sent to the

Registrar a request for verification of registration data on

February 27, 2001. On March 6 and 8, 2001, the Registrar

confirmed that the domain name in dispute is registered with Network Solutions,

Inc. and the Respondent is the current registrant of the domain name. The disputed domain name registration

status is ¡°active¡±.

The Center completed the

formal Requirements Compliance Checklist on March 8, 2001.

On March 9, 2001, The Center

received the supplemental Filing from the Complainant by email.

On March 13, 2001, the

Center sent to the Respondent the Notification of Complaint and Commencement of

the Administrative Proceeding.

This notification was sent by the methods required under paragraph 2(a)

of the Rules. The formal date of

the commencement of this administrative proceeding is March 13, 2001.

On April 5, 2001, the Center

sent to the Respondent Notification of Respondent¡¯s Default.

On April 20, 2001, after

receiving a completed and signed Statement of Acceptance and Declaration of

Impartiality and Independence, the Center notified the parties of the appointment

of a single-member panel consisting of Mr. Li Yong and informed the parties

that a decision would be issued by May 3, 2001 absent exceptional circumstances.

4. Factual Background

The Complainant is a

statutory body incorporated in Hong Kong SAR China since 1966 under the Hong

Kong Trade Development Council Ordinance (Annex 3 of the Complaint), and its

main function is to promote, assist and develop Hong Kong¡¯s overseas trade,

with particular reference to exports.

The Complainant owns

trademark rights for ¡°ÙQ°l¾W¡± in class 38 in Hong Kong SAR. The trademark registration in Hong Kong

was made in December of 1999. The Complainant received a letter from a law firm

of Hong Kong named Deacons on October 27, 2000 in which the Complainant was

informed that the trademark ¡°tdctrade.com¡± in Chinese characters¡°ÙQ°l¾W¡± had been accepted by the trademark Registrar and

was going to be advertised for opposition purposes(Annex 3 of the Complaint).

The Complainant also owns

trademark rights for ¡°ÙQ°l¾W¡± in classes 35, 38 and 42 in Tai Wan. The trademark registration in

Tai Wan was made in March of 2000.

All the trademark

registrations and applications above-mentioned were made in the name of Hong

Kong Trade Development Council.

The domain name [<ÙQ°l¾W.com> (BQ--3CGL65T4PWZA.COM)] was created on

November 24, 2000, according to the search result made by the complainant shown

in the Annex 1 of the Complaint.

5. Parties's Contentions

The Complainant contends

that Hong Kong Trade Development Council (HKTDC) is a statutory body

incorporated in Hong Kong since 1966 with its mission to create and facilitate

opportunities in international trade for Hong Kong companies. Developed by

HKTDC, <tdctrade.com> is a resourceful web site specialized in trade.

This web site provides HKTDC¡¯s comprehensive range of business information and

services, which include market intelligence, trade contacts, product catalogues

and trade fairs information. The disputed domain name is the official Chinese

name for <tdctrade.com> and the name itself has been trademarked.

The Complainant believes

that the domain name is a unique service and reflects the identity, functions

and services offered by HKTDC. Other organization, which has registered the

Chinese domain name of <tdctrade.com>, would project a wrong impression

that they are the Council or represent the Council, both of which are not true.

As such, the Complainant

contends that they have good reasons to believe that the current holder of the

disputed domain name has no rights or legitimate interests in respect to the

domain name.

The Complainant requests the

Administrative Panel issue a decision that the contested domain name be

transferred to the Complainant.

The Respondent failed to

submit formal Response according to 5 (a) of the Rules for Uniform Domain Name

Dispute Resolution Policy, but a Mr. Leslie Liu, calling himself the

representative of the Respondent, sent an email letter to the Center on

January 20, 2001. In the

letter, Mr. Leslie Liu made the statements as follows:

The Respondent is one of the

shareholders of the TradeFind.com company in Tai Wan, which is the online B2B

marketplace for exchanging trade information and business buying and selling

products. The company was formed in May 1999 and its headquartered in Tai Pei,

Tai Wan. TradeFind.com¡¯s mission is to provide an Internet world of business

value, opportunities, transaction and places where buyers and sellers click

every day. After founding from May 1999, the English and Chinese version has

been successfully operated and announced by the name of <tradefind.com>

and <ÙQ°l¾W>, which is exactly the

same Chinese characters as the disputed domain name.

6. Discussion and Findings

In accordance with the Policy, the Complainant asking for transfer of the

domain name must prove the following three elements: 1) Respondent's domain

name is identical or confusingly similar to a trademark or service mark in

which the Complainant has rights; 2) Respondent has no rights or legitimate

interests in the domain name; and 3) Respondent has registered the domain name

and is using it in bad faith. (ICANN Policy, 4 (a)).

Identical or Confusingly

Similar

The domain name at issue is [<ÙQ°l¾W.com>

(BQ--3CGL65T4PWZA.COM)]. The Panel finds that the Chinese character of this

domain name ¡°ÙQ°l¾W¡± is completely identical

with the registered trademarks held by the Complainant both in Hong Kong and

Tai Wan. The Panel also finds that the Chinese character of the disputed domain

name is identical to the Chinese name of <tdctrade.com> developed by the

Complainant. The top level domain

designator ".com" is only a necessary portion to form a

business-related domain name and cannot function to distinguish that name from

the Complainant¡¯s trademarks. Therefore,

the Panel believes that the first element of the ICANN Policy, 4(a) is met.

Respondent's Rights or

Legitimate Interests in the Domain Name

The Respondent has not

provided evidence of circumstances of the type specified in the ICANN Policy,

4(c). There exists no evidence that the Respondent, before receipt of any

notice of the dispute, has used the domain name or a name corresponding to the

domain name in connection with bona fide; or that the Respondent has been

commonly known by the domain name; or that the Respondent is making a

legitimate noncommercial or fair use of the domain name. Furthermore, the

Respondent has not provided evidence of any other circumstances giving rise to

a right or legitimate interest in the disputed domain name. The Respondent did

not present any evidence to show that the Respondent is one of the shareholders

of the TradeFind.com company and he can represent this company, though Mr.

Leslie Liu so stated in his email letter dated January 20, 2001 to the Center.

As such, the Panel finds that the Respondent has no rights or legitimate

interests in respect of the disputed Domain Name.

Domain Name Registered and

Used in Bad Faith

Paragraph 4(b) of the ICANN

Policy specifies four types of circumstances that could be evidence of the

registration and use of a domain name in bad faith. According to the ICANN

Policy, circumstances of bad faith are not limited to the listed ones.

The Panel finds that the

domain name was registered and used in bad faith according to the ICCAN Policy

4 (b) (ii). The panel is of the view that the domain name at issue was

registered in order to prevent the owner of the trademark ¡°ÙQ°l¾W¡± from reflecting the mark in a corresponding domain

name.

First, the Complainant

states and the Respondent does not dispute that HKTDC, the Complainant, have

developed a web site called <tdctrade.com> which is a resourceful web site

specialized in trade and provides HKTDC¡¯s comprehensive range of business

information and services including market intelligence, trade contacts, product

catalogues and trade fairs information.

Second, the panel accepts

the Complainant¡¯s contention that the disputed domain name is the official

Chinese name for <tdctrade.com>, a web site which has been developed and

used by the Complainant. The lawyer¡¯s letter of October 27, 2000 to the Complainant

(Annex 3 of the Complaint) clearly indicates that the Complainant¡¯s trademark ¡°ÙQ°l¾W¡±is <tdctrade.com> in Chinese characters¡±.

Third, the official Chinese

name of the Complainant is ¡°Ïã¸ÛÙQÒ×°lÕ¹¾Ö¡±. It is the panel¡¯s knowledge that because

the name is rather long, as Chinese custom, the Complainant is often called ¡°ÙQ°l¾Ö¡±in

short in China. The

disputed domain name <ÙQ°l¾W.com> strongly implicates

that the web site using this name is the business internet site (¾W) of ¡°ÙQ°l¾Ö¡±.

In sense of Chinese, the disputed domain name hardly has other meaning. The domain name at issue is obviously connected with

the Complainant and its services. The Panel can not see any justified reasons for the

Respondent to choose the wording <ÙQ°l¾W.com> to make his domain name

registration at the time after the Complainant¡¯s trademark ¡°ÙQ°l¾W¡±was advertised for opposition.

Forth, the Complainant¡¯s

trademark ¡°ÙQ°l¾W¡±implicates the meaning of ¡°the

business web site owned by ¡°ÙQ°l¾Ö¡±¡±. By common knowledge, using

the Chinese wording ¡°ÙQ°l¾W¡± as the second level of a domain name can be a very direct, exact and

preferred way to reflect the Complainant¡¯s identity, functions and services

offered by the Complainant. The Respondent¡¯s conduct of acquiring and holding

the domain name [<ÙQ°l¾W.com> (BQ--3CGL65T4PWZA.COM)] has prevented the Complainant from

reflecting its trademark in a corresponding Chinese domain name.

Finally, Mr. Leslie Liu

states that the Respondent is one of the shareholder of the TradeFind.com

company incorporated in Tai Wan. Because

there is no evidence showing the connection between the Respondent and the

company, the matter concerning the TradeFind.com company is not within the

examining scope of the Panel.

Taking consideration of the

combination of the reasons above-mentioned, the Panel finds that the Respondent¡¯s

registration and use of the domain name at issue is in bad faith.

7. Decision

The Panel concludes (a) that

the domain name [<ÙQ°l¾W.com> (BQ--3CGL65T4PWZA.COM)]is identical to the trademark owned by

the Complainant, (b) that the Respondent has no rights or legitimate interest

in the domain name and (c) that the Respondent has registered and used the

domain name in bad faith.

Therefore, the Panel orders that the domain name [<ÙQ°l¾W.com>(BQ--3CGL65T4PWZA.COM)] be transferred to

the Complainant.

Li Yong

Sole Panelist

Dated: May 3, 2001

More cases by this complainant

• Hong Kong Trade Development Council v. Huang Yun — D2001-0100 · 香港貿易發展局.com · Transfer · 02 May 2001
• Hong Kong Trade Development Council — D2001-0099 · Terminated