HSBC Holdings Plc v. David H. Gold

WIPO Arbitration and Mediation Center

ADMINISTRATIVE

PANEL DECISION

HSBC Holdings

Plc v. David H. Gold

Case No.

D2001-0343

1. The Parties

The Complainant in

this administrative proceeding is HSBC Holdings Plc, a company organised

and existing under the laws of England and Wales whose registered office

and principal place of business is situated at 10 Lower Thames Street, London,

EC3R 6AE, United Kingdom, represented by Wragge & Co., solicitors,

of 55 Colmore Row, Birmingham B3 2AS, England. The Respondent is David H.

Gold, c/o The Internet World Wide Web, PO Box 100, Pinner, Middlesex HA5

4YE, United Kingdom.

2. The Domain Names

and Registrar

The domain names in

issue are <bankwithhsbc.com> and <bankwithhsbc.net> ("the

Domain Names"), the Registrar of which is CORE INTERNET COUNCIL OF

REGISTRARS of World Trade Center II – 29 Route de Pré-Bois, CH-1215,

Geneva, Switzerland ("CORE").

3. Procedural History

The WIPO Arbitration

and Mediation Center ("the Center") received on March 9, 2001

an e-mail version of the Complaint, and on March 12, 2001 a hard copy of

the Complaint and accompanying documents. The Center verified that the Complaint

satisfies the formal requirements of the ICANN Uniform Domain Name Dispute

Resolution Policy ("the Policy"), and the Rules for Uniform Domain

Name Dispute Resolution Policy ("the Rules"). The Complainant

made the required payment to the Center. On March 28, 2001, the Center formally

notified the Respondent that this administrative proceeding had been commenced,

and that date is the formal date of the commencement of this administrative

proceeding.

On March 16, 2001,

the Center received from CORE its Verification Response confirming that

the registrant is David H. Gold, the Respondent herein, and stating that

the Administrative, Technical and Zone Contact is Mr. Steve Procter of Easily.co.uk,

3, Ringway Road, Park Street, St. Albans, Herts. A12 2RE, United Kingdom.

No Response has been

filed by the Respondent. The Complaint was transmitted by e-mail to the

Respondent and to the Mr. Steve Procter referred to above. Hard copies were

sent by courier to the Respondent at Berkeley House, 18-24 High Street,

Edgware, Middlesex, the address given for the Respondent in relation to

the <bankwithhsbc.com> domain name, and to Mr. Procter. It would seem

that delivery to the Respondent could not be effected, the Courier’s delivery

report stating "UK Recipient moved". Nevertheless, the Panelist

is satisfied from a procedural point of view that the Respondent has received

due notice of these proceedings.

On April 23, 2001,

Notice of Respondent Default was sent by the Center to the parties. On May

3, 2001, this Panelist was appointed by the Center. The Panelist has filed

a Statement of Acceptance and Declaration of Impartiality, and his decision

is scheduled to be forwarded to the Center by May 16, 2001.

4. Factual Background

The Complainant is

the registered proprietor of UK Trade Mark No. 1574618 covering the mark

HSBC ("the Trade Mark") registered on June 8, 1994 in class 36.

In addition, the Complainant

has trade mark registrations in a large number of countries throughout the

world.

5. Parties’ Contentions

A. Complainant

The Complainant asserts,

inter alia, as follows:-

(i) The Complainant

is the registrant of a host of domain names incorporating the mark HSBC,

which include:

(a) <hsbc.com>

registered on January 29, 1999;

(b) <hsbc.co.uk>

registered on August 2, 2000;

(c) <hsbcdirect.co.uk>

registered on December 7, 1998;

(d) <hsbcholdings.co.uk>

registered on February 11, 1998;

(e) <hsbcinvestdirect.com>

registered on September 4, 1998.

(ii) The Complainant

and its subsidiary undertakings are one of the largest banking and financial

services organisations in the world. They provide banking and financial

services and information about their services under the mark HSBC through

a variety of media including the internet, from their websites, all of

which can be accessed from the website <hsbc.com>.

(iii) The Complainant’s

international network comprises more than 6,000 offices in 81 countries

and territories. It operates in the Asia-Pacific region, Europe, the Americas,

the Middle East and Africa.

(iv) The operating

income of the Complainant’s Group for the financial year ended 1999 was

$21,002,000,000. The Complainant’s Group’s operating profit for the same

year was $7,409,000,000.

(v) The Complainant

and its subsidiary undertakings are widely advertised and promoted and

are very well known in all of the countries in which they trade for banking

and financial services under the mark HSBC. The Complainant and its subsidiary

undertakings advertise their services worldwide through all media to include

television, business magazines, posters and the internet.

(vi) Copy correspondence

between the Respondent and the Complainant shows that the Respondent initially

offered to lease or rent the domain name <bankwithhsbc.com> (the

".com Domain Name") to the Complainant by letter dated August

1, 2000. However he subsequently offered to sell the .com Domain Name

to the Complainant for an unspecified sum after the Complainant rejected

his original offer. From the correspondence it is apparent that the Respondent

has purported to be acting on behalf of an unnamed client of his.

(vii) The Complainant,

due to the Respondent’s continued refusal to transfer the .com Domain

Name without receiving payment, then instructed Messrs Wragge & Co,

the Complainant’s authorised representative in these proceedings.

(viii) Messrs

Wragge & Co sent a fax to the Respondent on October 24, 2000, setting

out the Complainant’s position in relation to the .com Domain Name and

requested a response by October 31, 2000. No response was received and

so the Complainant’s authorised representative, Mrs Brodie of Messrs Wragge

& Co, telephoned the Respondent on November 1, 2000. In that conversation

the Respondent acknowledged receipt of the letter of October 24, 2000,

but stated that he did not intend to respond to it. The Respondent also

acknowledged, despite his reference to "clients" in correspondence,

that he is the legal owner of the .com Domain Name. The Respondent offered

to sell the .com Domain Name to the Complainant for a price in the region

of £2,000 to £5,000.

(ix) Messrs Wragge

& Co discovered that the Complainant was also the registered holder

of the domain name <bankwithhsbc.net> (the ".net Domain Name")

in a Whois search conducted on February 16, 2001.

(x) On February

20, 2001, Messrs Wragge & Co faxed the Respondent according to the

Complainant’s instructions, requesting that the Respondent confirm his

intentions regarding the .net Domain Name. The Respondent telephoned Miss

Mortimer of Messrs Wragge & Co and left a message for Miss Mortimer

to return his telephone call. Miss Mortimer then telephoned the Respondent

who stated that his intentions regarding the .net Domain Name were to

do nothing at all. When asked what his intentions had been in registering

the .net Domain Name, the Respondent refused to comment. Messrs Wragge

& Co sent a fax to the Respondent on February 23, 2001, confirming

the details of this telephone conversation. No response has been received

from the Respondent.

(xi) It should

be noted that neither of the Domain Names is active and both resolve to

the site of the Respondent’s ISP, easily.co.uk.

(xii) The Domain

Names are identical to the Complainant’s mark HSBC because the distinguishing

element of the Domain Names is "hsbc". The portion of the Domain

Names, "bankwith", is merely descriptive of the services provided

by the Complainant and as such may be disregarded. The Domain Names are

therefore identical to:

(a) the Complainant’s

registered trade mark, HSBC;

(b) the Complainant’s

trading name, HSBC, which was announced in respect of the Complainant’s

Group in November 1998 and which was adopted and has been used without

interruption in the UK since 1999.

(c) the Complainant’s

company name, HSBC Holdings plc.

(xiii) In the

alternative, the Domain Names are confusingly similar to the Complainant’s

rights in the mark HSBC as identified in (xii) (a) to (c) above. The Domain

Names are rendered confusingly similar due to the use of the Complainant’s

trade mark, company name and trading name, HSBC, with the words "bankwith"

which refer directly to services offered by the Complainant, strengthening

the connection between the Domain Names and the Complainant in the public’s

mind.

(xiv) The Respondent

should be considered as having no rights or legitimate interests in respect

of the Domain Names because there is no evidence that the Respondent conducts

any legitimate business under the name HSBC or has any present or bona

fide interest in establishing any legitimate business under this name.

(xv) Further,

the Panel is requested to infer from the Respondent’s failure and refusal

to advance any rights or legitimate interests in the Domain Names and

the fact that the Respondent is not operating any active website under

the Domain Names that the Respondent has no rights or legitimate interests

in respect of the domain names. Evidence to support this proposition is

provided in the telephone conversations between the Respondent and Messrs

Wragge & Co. In the telephone conversation between the Respondent

and Mrs Brodie on November 1, 2000 the Respondent stated that he had no

intention to use the .com Domain Name or trade under it and promptly offered

the same for sale. In the telephone conversation between the Respondent

and Miss Mortimer on February 20, 2001 the Respondent stated that his

intentions regarding the .net Domain Name were to do nothing at all and

refused to comment on his intentions in registering the .net Domain Name.

The Respondent has not previously provided the Complainant with any indication

of an intention to use the Domain Names. Furthermore:

(a) before

any notice to the Respondent of the dispute (and indeed to date),

there is no evidence of the Respondent’s use of, or demonstrable preparations

to use, the Domain Names or names corresponding to the Domain Names

in connection with a bona fide offering of goods or services;

(b) the Respondent

(as an individual, business, or other organisation) has not been commonly

known by any of the Domain Names; and

(c) the Respondent

is not making a legitimate non-commercial or fair use of the Domain

Names, without intent for commercial gain; and

(d) there

is no relationship between the Complainant and the Respondent that

would give rise to any licence, permission or other right by which

the Respondent could use the Complainant’s trade marks or own or use

the Domain Names.

(xvi) The Domain

Names should also be considered as having been registered and used in

bad faith for the reasons set out above. Furthermore, given the Complainant’s

trade mark registrations and its wide reputation in the mark HSBC it is

highly likely that the Respondent was aware of such reputation at the

time of registration of the Domain Names. In fact the conjunction of the

mark HSBC with the words "bankwith" serves to strengthen the

implication that the Complainant registered the Domain Names as a result

of the goodwill and reputation attaching to the mark HSBC in relation

to the Complainant’s services.

(xvii) Additionally,

the exhibited correspondence and attendance notes constitute compelling

evidence that the primary purpose behind the registration of the .com

Domain Name was to transfer it to the Complainant for valuable consideration

in excess of the Respondent’s out-of-pocket costs and expenses directly

related to it. The Panel is requested to infer from the Respondent’s conduct

in relation to the .com Domain Name and from the Respondent’s refusal

to tell Miss Mortimer the reason for the registration of the .net Domain

Name in the telephone conversation on February 20, 2001, that this was

also the primary purpose behind the registration of the .net Domain Name.

(xviii) Furthermore,

by registering both the .com and the .net Domain names, the Respondent

has engaged in a pattern of conduct in registering domain names in order

to prevent the owner of the trademark from reflecting the mark in a corresponding

domain name.

B. Respondent

The Respondent

has not filed a Response.

6. Decision and

Findings

The onus is on the

Complainant to prove each of the three elements set out in paragraph 4(a)

of the ICANN policy, as follows:

(a) the domain

name is identical or confusingly similar to a trade mark or service

mark in which the Complainant has rights; and

(b) the Respondent

has no rights or legitimate interests in respect of the domain name;

and

(c) the domain

name has been registered and is being used in bad faith

As to element (i),

the Domain Names comprise two elements, "bankwith" and "hsbc".

Accordingly, the Trade Mark and the Domain Names are not identical. The

question is therefore whether they are confusingly similar. The Complainant

uses the Trade Mark in relation to its banking and allied financial services.

Although it has carried on business under the name HSBC for as little as

2 years, such is the size and reputation of the Complainant’s group of companies

in the banking field that the Panelist has no doubt that the name HSBC became

very well known almost instantly. Given that the Complainant’s reputation

to the general public is primarily that of a bank, the addition to "HSBC"

of the words "bank with" is purely descriptive of the Complainant’s

best-known activity. The Domain Names are manifestly confusingly similar

to the Trade Mark.

As to element (ii)

of paragraph 4(a) of the ICANN Policy, the Respondent has done nothing to

demonstrate that he has any rights or legitimate interests in the Domain

Names. There is nothing to suggest that any of the circumstances mentioned

in paragraph 4(c) of the ICANN Policy apply (ie before notice of the dispute

preparation to use the Domain Names, being commonly known by the Domain

Names or making a legitimate non-commercial or fair use of the Domain Names).

The facts put forward by the Complainant make it plain that the Respondent

has no rights or legitimate interest in the Domain Names.

Lastly, the Complainant

must establish element (iii), ie that the Domain Names have been registered

and are being used in bad faith. Paragraph 4(b)(i) of the Policy indicates

to a respondent that the following circumstances shall be evidence of registration

and use of a domain name in bad faith:

"circumstances

indicating that you have registered or you 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

trademark or service mark or to a competitor of that complainant, for

valuable consideration in excess of your documented out-of-pocket costs

directly to the domain name,"

The following facts,

in the Panelist’s opinion suffice to satisfy him that the Complainant has

established element (iii):-

(i) The Domain

Names were plainly registered in bad faith, in that the decision to

combine the words "bank with" and "hsbc" can only

have been taken in bad faith.

(ii) The Respondent’s

only interest in the .com Domain Name was either to rent or sell it.

The Panelist notes that the Respondent (who appears to be well acquainted

with the Rules) would not put any figure in writing, but mentioned

to the Complainant’s solicitors a figure of £2,000 - £5,000 on the

telephone.

(iii) It was

not until February of this year that the Complainant became aware

of the.net Domain Name, so it had not featured in the correspondence

and telephone discussions during the latter half of the year 2000.

Nevertheless, it appears from CORE’s verification that the Domain

Names were registered on the same day, namely July 7, 200. In relation

to the .net Domain Name the Respondent stated, in the telephone conversation

of February 20, 2001 (see para. 5(A)(x) above) that his intentions

were "to do nothing at all" with the .net Domain Name. When

challenged to explain why he had registered the .net Domain Name in

the first place, according to Miss Mortimer’s attendance note, the

Respondent refused to comment, stating that this was a different issue

entirely. It seems clear that by February of this year the Respondent

had realized he was likely to face proceedings under the Rules, and

so became evasive. The Panelist concludes that had the Complainant

initially raised the issue of the .net Domain Name simultaneously

with that of the .com Domain Name, the Respondent would have attempted

to rent or sell it as well.

The Telstra case (WIPO

Case No. D2000-0003) supports the proposition that non-use of the .net Domain

Name in the above circumstances does in fact amount to use of the domain

name in bad faith. The Panelist finds the Respondent’s conduct in relation

to the .com Domain Name reinforces the finding of use in bad faith of the

.net Domain Name.

7. Decision

In the light of the

findings in paragraph 7 above, the Panelist concludes that:-

- the domain

names <bankwithhsbc.com> and <bankwithhsbc.net> are confusingly

similar to the trademark HSBC of the Complainant;

- the Respondent

has no rights or legitimate interests in the domain names;

- the domain

names have been registered and are being used in bad faith.

Accordingly, the Panelist

orders that the domain names <bankwithhsbc.com> and <bankwithhsbc.net>

be transferred to the Complainant, HSBC Holdings Plc.

Christopher

Tootal

Sole Panelist

Dated: May

16, 2001

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