Hong Kong Trade Development Council v. Huang Yun

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Hong Kong Trade Development Council v. Huang Yun

Case No. D2001-0100

Also in PDF File: D2001-0100

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 Ms. Huang Yun with her contacting address at 9#401 No.3 Garden Villiage,

Zhang Jis Gang, 215600, Jiang Su, China.

2. The Domain Name and Registrar

The

domain name in dispute is [<Ïã¸ÛÙQÒ×°lÕ¹¾Ö.com> (BQ--3CMZS3RPRS7WME3WPROFKXCA.COM)], which is registered with

the registrar Internet Names Worldwide of Melbourne, Level 2, 120 King Street,

Melbourne Victoria 3000, Australia.

3. Procedural History

The WIPO Arbitration and

Mediation Center (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.

The Center sent to the

Registrar a request for verification of registration data on

February 27, 2001. On February 27 and 28, 2001, the

Registrar confirmed that the domain name in dispute is registered with Internet

Names Worldwide and the Respondent is the current registrant of the domain

name.

The Center completed the

formal Requirements Compliance Checklist on March 6, 2001.

On March 8, 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 8, 2001.

On March 26, 2001, the Center

received a fax letter from Ms. Huang Yun (Respondent), and sent to the

Respondent the Center¡¯s acknowledgement of receipt of the fax letter on March

27, 2001.

On March 28, 2001, the

Center received the email from Complainant that he has not received the fax

letter sent by Respondent. The Center gave its reply to Complainant in the same

day.

On March 29, 2001, the

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

On April 19, 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 2, 2001 absent exceptional circumstances.

4. Factual Background

The Complainant is a

statutory body incorporated in Hong Kong 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 Chinese character of the

disputed domain name is the official Chinese name of the Complainant.

The domain name [<Ïã¸ÛÙQÒ×°lÕ¹¾Ö.com> (BQ--3CMZS3RPRS7WME3WPROFKXCA.COM)]

was created on November 30, 2000, according to the search result made by the

Complainant shown in the Annex 1 of the Complaint.

The domain name at issue has not been put into use up to now, and there is

currently no content located at the www.Ïã¸ÛÙQÒ×°lÕ¹¾Ö.com web site.

5. Parties's Contentions

The Complainant contends

that Hong Kong Trade Development Council 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. The Chinese character of the disputed domain name is the

official Chinese name of the Council

The Complainant believes

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

functions of its organization. Other organization, which has registered the

Chinese domain name same as their official Chinese name, 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

domain name at issue 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 paragraph 5 (a) of the Rules for Uniform

Domain Name Dispute Resolution Policy (the Policy), but sent a fax letter to

the Center on March 26, 2001. In the letter, the Respondent argued that the

registration of the disputed domain name was in compliance with the relevant

on-line registration regulations as well as the first-registration principle

envisaged by NIS. The Respondent requested the Center to inform the Complainant

that she agreed to settle the issue with Complainant and all expenses in

connection with the registration of the disputed domain name should be born by

the Complainant. The Respondent stated ¡°If both parties reach the settlement, the domain name shall

be transferred to the Complainant immediately. That is, it should be returned to the owner to whom it

should have attached. ¡±

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) the Respondent's domain

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

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

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

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

Identical or Confusingly Similar

The Chinese character ¡°Ïã¸ÛÙQÒ×°lÕ¹¾Ö¡±

is the official Chinese name of the Complainant. The Complainant is a body

corporate established under the Hong Kong Trade Development Council Ordinance

since 1966, and has been performing its missions in its English and Chinese

name. After so many years¡¯ development, the Complainant has been awarded the

good reputation and is quite famous in related commercial community in China.

In fact, the Chinese name of the Complainant has, in practice, become the

service mark of the Complainant, which not only represents the organization

itself but also its services and functions, albeit not registered in a trademark

office. A corporate name, indeed any name, might acquire intellectual property

rights over time as goodwill is accumulated in the name through business

practice, reputation, notoriety, advertising, etc., even if not registered, and

numerous decisions under the Policy have so held (see Onu S.R.L. v. Online

Sales, LLC, Case No. AF-0672). On the other hand, the Policy itself does not

contain the provisions that trademarks or service marks shall be the registered

ones to enjoy protection under the Policy. Keeping this in mind, the Panel

believes that the Complainant enjoys the service-mark right over its Chinese

name ¡°Ïã¸ÛÙQÒ×°lÕ¹¾Ö¡±.

The domain name at issue is [<Ïã¸ÛÙQÒ×°lÕ¹¾Ö.com> (BQ--3CMZS3RPRS7WME3WPROFKXCA.COM)].

The Panel finds that the Chinese character of this domain name ¡°Ïã¸ÛÙQÒ×°lÕ¹¾Ö¡± is completely identical with the

Complainant¡¯s official Chinese name, the service mark solely owned 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 service mark. 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 domain name. Instead, in the letter to

the Center, the Respondent makes the promise that, if the settlement is

reached, the disputed domain name should be returned to the owner to whom it

should have attached. 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 based upon the following

reasons:

1) The Complainant is

established in 1966 and its activities have spread over many countries and

regions of the world. Its official Chinese name ¡°Ïã¸ÛÙQÒ×°lÕ¹¾Ö¡± is well known by relevant community

throughout some countries and regions in Asia, especially in mainland China and

Hong Kong SAR. It is unconceivable that the Respondent residing in China and

using the very identical characters to register her domain name does not know that

the Complainant is a big organization incorporated in Hong Kong. Therefore, the

Panel infers that the Respondent was aware of the Complainant¡¯s legitimate

interest in its official Chinese name ¡°Ïã¸ÛÙQÒ×°lÕ¹¾Ö¡± when the Respondent obtained the domain

name at issue.

2) The Complainant is

a statutory body incorporated in Hong Kong SAR and has been using its official

English name and Chinese name to perform its functions throughout the world before

the creation of the disputed domain name. The Chinese character of the disputed

domain name is the official Chinese name of the Complainant. The panel is of

the opinion that the domain name is a unique service. By common knowledge,

using the Chinese wording ¡°Ïã¸ÛÙQÒ×°lÕ¹¾Ö¡± as the second level of a domain name can be a very direct, exact and

preferred way to reflect the Complainant¡¯s identity and its functions. The

Respondent¡¯s conduct of acquiring and holding the domain name [<Ïã¸ÛÙQÒ×°lÕ¹¾Ö.com> (BQ--3CMZS3RPRS7WME3WPROFKXCA.COM)] has

prevented the Complainant from reflecting its service mark in a corresponding

domain name.

3) The Respondent is

neither the employee of the Complainant nor authorized person to register or to

hold the disputed domain name on the latter¡¯s behalf. No evidence shows that

the Respondent has any relationship with the Complainant. In fact, in the

letter to the Center, the Respondent admits that she is not the proper holder

of the disputed domain name. The domain name <Ïã¸ÛÙQÒ×°lÕ¹¾Ö.com> is so obviously connected with the Complainant

and its services that its very use by someone with no connection with the Complainant

suggests opportunistic bad faith (see Deutsche Bank AG v. Diego-Arturo

Bruckner, Case No. D-2000-0277).

For 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 [<Ïã¸ÛÙQÒ×°lÕ¹¾Ö.com> (BQ--3CMZS3RPRS7WME3WPROFKXCA.COM)] is identical to the

service mark 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 [<Ïã¸ÛÙQÒ×°lÕ¹¾Ö.com> (BQ--3CMZS3RPRS7WME3WPROFKXCA.COM)] be transferred to the

Complainant.

Li Yong

Sole Panelist

Dated: May 2, 2001

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