Samson Paper Holdings Limited v. Kannet Limited

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Samson Paper

Holdings Limited v. Kannet Limited

Case No.

D2001-0345

1. The Parties

Complainant is Samson

Paper Holdings Limited, a limited liability company incorporated under the

laws of Bermuda. The Complainant is a listed public company in Hong Kong,

whose principal place of business is 3/F Seapower Industrial Centre, 177 Hoi

Bun Road, Kwun Tong, Kowloon, Hong Kong, SAR of China.

Respondent is Kannet Limited,

a limited liability company incorporated under the laws of Hong Kong, whose

principle place of business is Kantone Centre, 1 Ning Foo Street, Chai Wan,

Hong Kong, SAR of China.

2. The Domain Name

and Registrar

The domain name under

dispute is <samsonpaper.com> (the "Disputed Domain Name").

The registrar of the

domain name under dispute is Network Solutions, Inc. ("NSI" or the Registrar),

with business address in Herndon, Virginia, United States of America.

3. Procedural History

On March 8, 2001, and

March 12, 2001, Complainant submitted its Complaint through e-mail and hardcopy,

respectively, with the required filing fee for a single-member panel, to

the World Intellectual Property Organization Arbitration and Mediation Center

(the "WIPO Center"), in accordance with the Uniform Domain Name Dispute

Resolution Policy (the "Policy") adopted by the Internet Corporation for

Assigned Names and Numbers (ICANN) on August 26, 1999, the Rules

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

Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("WIPO

Supplemental Rules).

On March 13, 2001,

WIPO sent via email to Complainant an "Acknowledgement of Receipt of Complaint".

On March 19, 2001,

WIPO sent a "Request for Registrar Verification" via email to the Registrar

requesting, confirmation that the Registrar had received a copy of the complaint;

that the domain name under dispute is registered with it; that Respondent

is the current registrant of such Domain Name; and full contacts details

available under the WHOIS database; that the Uniform Domain Name Dispute

Resolution Policy applies to the Domain Name; and, the current status of

the Domain Name.

On March 20, 2001,

WIPO received via e-mail from NSI "Network Solutions Verification Response"

confirming that the Domain Name is currently registered with NSI; that Respondent

is the registrant as well as its administrative, technical and billing contacts;

that <samsonpaper.com> Domain Name is in "active" status.

On March 21, 2001,

WIPO sent the "Notification of Complaint and Commencement of Administrative

Proceedings", together with a copy of the complaint via e-mail and facsimile

and by courier to Respondent, and therefore to the administrative, technical

and billing contacts. A copy has also been communicated to ICANN and to

the Registrar, via e-mail. The Notification indicated that April 9, 2001,

was the deadline to submit a Response to Complaint according to the requirements

described in Paragraph 5(a) of the Rules.

On March 21, 2001,

WIPO completed a "Formal Requirements Compliance Checklist".

On March 21, 2001,

WIPO sent the request for "Amendment to Complaint" regarding mutual

jurisdiction. On March 22, 2001, Complainant submitted its Amendment to

Complaint through e-mail and on March 26, 2001 in hardcopy.

On April 9, 2001, Respondent

submitted its Response to the complaint through e-mail. The hardcopy of

the Response was received by WIPO on April 24, 2001.

On April 17, 2001,

WIPO sent via email to Respondent and to Complainant an "Acknowledgement

of Receipt of Response" confirming that the Response was received via e-mail.

On May 1, 2001, WIPO

sent to Complainant and Respondent a "Notification of Appointment of Administrative

Panel and Projected Decision Date", appointing Xue Hong as Single Panelist,

who submitted a Statement of Acceptance and Declaration of Impartiality

and Independence, and scheduling May 14, 2001, as the date for issuance

of the Panel decision, notifying the above pursuant to Paragraphs 6(f) and

15(b) of the Rules. On the same date, WIPO transferred the case file to

the Administrative Panel, with copy of the file transmission letter being

sent to Complainant and Respondent.

This Panel agrees with

WIPO assessment and considers that the Complaint was properly notified to

the registered domain-name holder, the technical contact, and the administrative

contact as provided for in Paragraph 2(a) of the Rules and that formal compliance

within the requirements of the Policy, the Rules, and Supplemental Rules

was met.

The Panel has not received

any further requests from Complainant or Respondent regarding other submissions,

waivers or extensions of deadlines, and the Panel has not found it necessary

to request any further information, statements or documents from the parties.

As for the information and documentation received, no explanation or confirmation

from either party allegations is required, nor is there a need as an exceptional

matter, to hold any in-person hearings as necessary for deciding the complaint,

as provided for in Paragraphs 12 and 13 of the Rules. Therefore, the Panel

has decided to proceed under the customary expedited nature contemplated

for this type of domain name dispute proceeding.

The language of the

proceeding is English, as being the language of the domain registration

and Service Agreement, pursuant to Paragraph 11(a) of the Rules, and also

in consideration of the circumstances of this administrative proceeding

and to the fact that there is no express agreement to the contrary by the

parties.

4. Factual Background

A. Complainant

and the Trademarks

Complainant is a listed

public company in Hong Kong trading under the name Samson Paper Holdings

Limited. Complainant sources and supplies paper products for book printing,

packaging and office use (e.g. copying paper and computer forms) under and

by reference to the brand names, "Samson", "Samson Paper" and "Samson Paper

Holdings Limited". Complainant commenced trading in Hong Kong under the

name Samson Company in 1965. In 1981, Samson Paper Company Limited was incorporated

to take over Samson Company's trading operations. Complainant has a wide

customer base, primarily in Hong Kong and PRC.

The Complaint registered

the trademark "SAMSON" in Hong Kong under TM registration No.B06489

of 1998 (A-D) dated August 15, 1995 in Class 16 in respect of "paper, adhesive

labels, carbonless paper, copying paper, computer forms, duplex boxboards,

coated and uncoated woodfree paper, art boards, artist's materials, paint

brushes, albums, drawing paper, wrapping paper and paper boxes, writing

pads, writing cases, files, folders, calendars, jackets for paper, note

books, table linen of paper, napkins of paper, bond paper, carbon paper,

writing paper and printing paper, cardboards, cardboard cartons, cardboard

containers and other cardboard packaging materials, brochures, pamphlets,

manuals, booklets, newspaper and periodicals, books and magazines, stationery,

photographs, card indexes, index cards, record cards and cards".

B. Respondent

and the Disputed Domain Name

Respondent is incorporated

in Hong Kong under the Companies Ordinance on August 24, 1995. Respondent

is a licensed ISP under Hong Kong Telecommunication Ordinance from September

3, 1999. Respondent is also a web-hosting company and in the business of

registering domain names for its clients.

Respondent registered

the Disputed Domain Name <samsonpaper.com> through NSI on September

17, 1999. In NSI WHOIS Database, the initial address of the registrant was

"c/o Offshore Chambers PO Box 217, APIA, WS". Then, the address

was changed to be "Kantone Centre, 1 Ning Foo Street, Chai Wan, Hong

Kong".

C. Negotiation

in Relation to the Disputed Domain Name

On November 2, 1999,

Respondent sent a letter to Chairman of Complainant by fax. The letter included

the following contents:

"Being the Chairman

of a listed company on the Stock Exchange of Hong Kong you must have heard

that the Exchange is proposing to require that all listed issuers have

their own web sites. Your Company has been selected as one of the few

to enjoy our free web-site services. We have already taken the first step

in establishing a free web - site for your company: A unique and representative

domain name, www.SamsonPaper.com, has been reserved for your company."

"Besides, we will

offer a TOTALLY FREE OF CHARGE Web Design and Hosting Service* for you……"

"As I recognize

the unprecedented business opportunity in e-Commerce in the new millennium,

I am inviting the major enterprises in Hong Kong like your Company to

support the development of e-Commerce by setting up their own web sites.

A publicly traded company properly positioned with an effective Internet

marketing strategy can definitely generate tremendous exposure for its

products and services."

"I guarantee

that no add-on costs will be charged to your Company for this Free Package.

Just fill in the reply slip below and return to us by fax at 2558 3111

and we will do the rest for you."

"*This web-hosting

service is free for the first 6 months and after that, we will charge

you a rate that is the lowest in Hong Kong."

In the Reply Slip attached

with the letter, Respondent asked Complainant to agree that "We (Complainant)

are interested in enjoying the above free web-site package. Please set up

the web-site "www.SamsonPaper.com" for us. We hereby authorize

Kannet Limited (Respondent) to host the web-site on our behalf and we will

pay the initial registration fee for the domain name on presentation of

invoice."

On May 30, 2000, Complainant's

solicitors wrote to Respondent asking it to transfer the domain name to

Complainant. Respondent's solicitors responded on June 29, 2000, and correspondence

ensued between both parties' solicitors.

Although the parties

tried at that stage to settle the matter amicably they failed to do so.

On November 21, 2000, Complainant’s solicitors informed Respondent’s solicitors

that "due to your failure to respond to us in August after our numerous

attempts to settle this matter amicably, our client instructed us to commerce

proceedings against your client.……Our client therefore requires your client

to contribute to the costs it has incurred." In this letter, Complainant’s

solicitors demanded the sum of HK$10,000 being the cost of transfer of the

Disputed Domain Name and a contribution to the costs incurred by Complainant

as the result of Respondent’s actions.

The negotiation between

the parties broke down in late November and early December 2000.

D. Re-design

of the Website Established at "WWW.SAMSONPAPER.COM"

The original website

established at <www.samsonpaper.com> by Respondent, as it informed

Complainant on November 4, 1999, had the front page with <www.samsonpaper.com>

in large letters, a dialogue box for logging in the account name and password,

and several buttons of products, services, etc.

Both

Complainant and Respondent acknowledged that the website was re-designed

after the negotiations between the parties broke down. The website is now

titled with "Save As Much Save Our Nature: Paper" (S.A.M.S.O.N.PAPER). The

website claims to be one which has been set up to appeal to everyone to

"Save our Nature".

5. Parties’ Contentions

A. Complainant

Complainant

alleges that:

a) The Disputed

Domain Name is identical or confusingly similar to the "Samson", "Samson

Paper" and "Samson Paper Holdings Limited" trade and service marks in

which Complainant has rights. The Complaint is based, on one hand, on

the common law trademark rights in the marks "Samson", "Samson Paper"

and "Samson Paper Holdings Limited", which enjoy the substantial goodwill

and reputation in Hong Kong, the PRC and abroad in relation to services

and goods Complainant provides; on the other hand, on the trademark registration

for "SAMSON" dated August 15, 1995, in Class 16 in Hong Kong.

b)

Respondent has no rights or legitimate interests in respect of the

Disputed Domain Name.

Respondent has no

rights, either registered or unregistered in respect of the mark "Samson

Paper". Respondent trades under the name Kannet Limited. Respondent is

not a licensee of Complainant nor is it authorized to use the latter's

name or marks.

The website established

at <www.samsonpaper.com> by Respondent, was re-designed to be an

environmental protection site soon after the negotiations between Complainant

and Respondent with regard to transferring the Disputed Domain Name to

Complainant broke down. Respondent is clearly in an attempt to circumvent

a finding in Complainant's favor in these proceedings by showing that

it is making legitimate non-commercial or fair use of the Disputed Domain

Name.

c)

Respondent registered and is using the Disputed Domain Name in bad

faith.

Respondent has registered

the Disputed Domain Name with the intent to rent or sell the domain name

to Complainant as can be seen by its offer to be a web-host in its fax

of November 4, 1999. Although Respondent claims in that fax that the web-design

and web hosting services will be provided free of charge, the small print

on the second page states that it will charge for web-hosting after the

first 6 months. It would be reasonable to conclude that the rental fees

would be in access of the out- of-pocket costs by Respondent.

Respondent has registered

the Disputed Domain Name in order to prevent Complainant from reflecting

its mark "samsonpaper" in a corresponding domain name with the ".com"

top level domain. Since Respondent registered 432 domain names including

the company names of many blue chip listed companies in Hong Kong, well-known

personalities and place names, Respondent has engaged in a pattern of

the conduct of cybersquatting.

In a search of WHOIS

database conducted on February 9, 2001, Respondent was to be contacted through

a P.O. Box in Samoa. This means that a party who has never had prior dealings

with Respondent would not know from the WHOIS search that the registrant

is in fact a Hong Kong company and may have difficulty in tracing and communicating

with Respondent. Complainant contends that this is yet another device by

Respondent intended to make Complainant's task more difficult in recovering

the Disputed Domain Name.

B. Respondent

a) Respondent

does not dispute the ownership of the trade and service marks claimed

by Complainant.

b) Respondent

disputes Complainant's statement that Respondent has no other right

or interest in respect of the Disputed Domain Name, because Respondent

has no intention to pass off the Disputed Domain Name as its own or

in competition with the business of Sampson Paper.

c) Respondent

disputes that the use of the domain name by Respondent’s clients is

in bad faith. Respondent emphasizes that there has been no passing

off or extortion on its part. Even if names are trademarked, they

have not been necessarily treated as such in cyberspace and extra

care needs to be taken.

d) Respondent

states that the current complaint appears to be an effort to gain

advantage from Respondent. In the Letter dated November 21, 2000,

Complainant has tried to obtain compensation in the form of costs

of HK$10,000 from Respondent. Should Complainant’s proposition be

approved, no one would be able to make use of the approximately 250

top-level domains which may be attached to create domain names including

"samsonpaper" without having to pay the amount named by

the entity (in this case, HK$10,000).

By using the

search result of "samsonpaper" at one domain registration

service, Respondent states that the large number of second-level domains

containing "samsonpaper" are available just on this one

service, which shows Complainant has not taken the initiative to register

the domain names, and thus appears to be attempting to gain profit

from those who wish, without ulterior motive, to do so.

e) Respondent

states that if Complainant were really serious about retaining the

domain name, they would not have rejected Respondent’s offer in 1999,

resulting space on the Internet being given to those who wish to save

resources, namely trees and paper.

f) Respondent

also states that its contact details of the domain name registration

do not make Complainant's tracing and communicating with it difficult.

6. Discussion and

Findings

A. Elements to

be proven

Paragraph 4(a) of the

Policy envisages that for Complaint to succeed, Complainant must prove that

each of the following elements is present:

(i) Respondent’s

Domain Name is identical or confusingly similar to a trademark in which

Complainant has right; and

(ii) Respondent

has no right or legitimate interest in respect of the Domain Name; and

(iii) Respondent’s

Domain Name has been registered and is being used in bad faith.

B. Identical

or Confusingly Similar

Under the Policy, Complainant

is required to establish that it has right in the trademark. Complainant

has trademark registration for "SAMSON" dated August 15, 1995

in Class 16 in Hong Kong. Complainant also claims the common law trademark

rights in the marks "Samson", "Samson Paper" and "Samson Paper Holdings

Limited", which enjoy the substantial goodwill and reputation in Hong Kong,

the PRC and abroad in relation to services and goods Complainant provides.

Since Respondent does

not dispute the ownership of the trade and service marks claimed by Complainant,

the Panel recognizes the subsistence of Complainant’s trademark rights in

"Samson", "Samson Paper" and "Samson Paper Holdings Limited".

The Panel compared

the Disputed Domain Name with Complainant’s common law trade and service

mark "Samson Paper" and finds that the second level domain thereof

is substantially identical to the Complainant’s mark. The Panel finds that

the similarities in sound, appearance, and connotation between the mark

and the Disputed Domain Name is sufficient to render the Disputed Domain

Name confusingly similar to Complainant’s mark.

Also, the Panel finds

that the Disputed Domain Name is confusingly similar to Complainant’s registered

trademark "SAMSON". Although "samsonpaper" is not identical

to "SAMSON", when "samson" is used combined with "paper",

the domain name obviously refers to the "Samson" in paper industry,

which makes it confusingly similar to Complainant’s trademark.

C. Respondent’s

Right or Legitimate Interest

Under paragraph 4(c)

of the Policy, Respondent may demonstrate its right and interest in the

Disputed Domain Name by showing:

(i) Its use of,

or demonstrable preparations to use, the Disputed Domain Name or a name

corresponding to the Disputed Domain Name in connection with a bona fide

offering of goods or services before any notice to him of the dispute;

or

(ii) He (as an

individual, business, or other organization) has been commonly known by

the Disputed Domain Name, even if he has acquired no trademark or service

mark rights; or

(iii) He is making

a legitimate noncommercial or fair use of the Disputed Domain Name, without

intent for commercial gain to misleadingly divert consumers or to tarnish

the trademark or service mark at issue.

In the Response, Respondent

disputes Complainant's statement that Respondent has no right or legitimate

interest in respect of the Disputed Domain Name, because Respondent has

no intention to pass off the Disputed Domain Name as its own or in competition

with the business of Sampson Paper.

The Panel, however,

finds that Respondent’s above statement cannot demonstrate that Respondent

has right or legitimate interest in the Disputed Domain Name.

When the Panel evaluates

Respondent’s conducts according to Paragraph 4(c) of the Policy, the Panel

finds that there is no evidence in demonstrating the first two factors under

Paragraph 4(c)(i) and Paragraph 4(c)(ii) of the Policy.

In respect of Paragraph

4(c) (iii) of the Policy, the Panel finds that it is particularly worth

noting. Presently, Respondent is operating a website at the address <www.samsonpaper.com>,

which is a website appealing to all of us to save Paper, Trees and the Nature.

Respondent stated that

the present website was created by its client. The Panel finds even if website

was created by Respondent’s client, the use of the Disputed Domain Name

should be attributed to Respondent, because Respondent is the registrant

of the Disputed Domain Name and has the ability to control of the use of

the Disputed Domain Name.

As an environment protection

site, it seems that Respondent is making a legitimate noncommercial or fair

use of the Disputed Domain Name. However, the Panel believes that Paragraph

4(c) (iii) of the Policy should not be used as a shelter for Respondent’s

improper actions. If Respondent deliberately manipulates the website to

be a noncommercial site for the purpose of circumventing any finding in

favor of Complainant, Respondent’s manipulative action should not be regarded

as the demonstration of its right and interest in the Disputed Domain Name.

The Panel finds that

Respondent is not making a legitimate noncommercial or fair use of the Disputed

Domain Name, based on the following reasoning:

a) Respondent

took Complainant as the target of registering the Disputed Domain Name.

In Respondent’s letter

to Complainant dated November 2, 1999, Respondent stated that "[A]

unique and representative domain name, <www.SamsonPaper.com>, has

been reserved* for your Company".

b) Respondent

registered and used the Disputed Domain Name for commercial purpose.

Respondent’s letter

to Complainant dated November 2, 1999 clearly indicated that Respondent’s

registration of the Disputed Domain Name and establishment of the website

at the address of <www.samsonpaper.com> were the measures to promote

Respondent’s web design and hosting services. Respondent not only looked

forward to recouping the initial registration fee for the domain name

(see the Reply Slip attached with the letter), but also wanted to charge

Complainant a rate for hosting the web site after the first 6 months (see

the Letter).

The initial website

established at <www.samsonpaper.com> by Respondent was a typical

commercial website, on which there were the buttons of "Products,

Solutions, Company, Services, etc." and a dialogue box for logging

in the account name and password.

In the Response,

Respondent also acknowledged, "Kannet Limited is a licensed ISP and

web-hosting company; we have long been in the business of registering

domain names for our clients".

Thus, registration

and use of the Disputed Domain Name were the services that Respondent

intentionally provided to Complainant for commercial purpose.

c) Respondent

purposed to circumvent Complainant’s action of recovering the Disputed

Domain Name by re-designing the website after break down of the negotiation

between the parties.

When was the website

changed into a noncommercial one?

Complainant alleged

that Respondent re-designed the website soon after the negotiation between

the parties broke down.

In the Response,

Respondent actually acknowledged, "if the complainant were really

serious about retaining the complete name, they would not have rejected

our offer in 1999, resulting space on the Internet being given to those

who wish to save resources, namely trees and paper." Such statement

means that re-designing of the website happened after Complainant’s rejection

to Respondent’s offer in 1999.

More precisely, re-designing

of the website happened after Respondent was informed that Complainant

was to commence proceedings against it in a letter sent by Complainant’s

solicitors to Respondent’s solicitors dated November 21, 2000.

Respondent provided

the letter dated November 21, 2000, as the evidence to prove that Complainant

had tried to obtain compensation in the form of costs of HK$10,000. Respondent

then stated in the Response, "we refused to do so, our client put

up the present site, so the case has been sent to the WIPO."

Under current discussion,

Complainant’s payment demand is largely irrelevant (which will be discussed

at the part of "Other Allegations"). What’s important is Respondent’s

statement that the present website was put up after receipt of the letter

dated November 21, 2000.

So, why did Respondent

re-design the website?

The primary reason

is that Complainant rejected Respondent’s web hosting service offer, which

frustrated Respondent’s commercial purpose of registration and use of

the Disputed Domain Name.

Furthermore, the

direct reason is that Respondent learned that Complainant was to commence

proceedings against it. Therefore, Respondent made quick response by re-designing

the website, and now the website appeals to everyone to protect the environment.

After discussing

the time and the reasons of Respondent’s re-designing of the website,

the Panel finds that Respondent is not genuinely making a legitimate noncommercial

or fair use of the Disputed Domain Name, and re-designing of the website

was to cover up its previous commercial actions and circumvent Complainant’s

action of recovering the Disputed Domain Name. Although Paragraph 4(c)

(iii) of the Policy covers the circumstances of non-commercial use of

the Disputed Domain Name, Respondent’s sham noncommercial use is not accepted.

D. Evidence of

Registration and Use in Bad Faith

A non-exhaustive list

of what constitutes bad faith registration and use is set out in Paragraph

4(b) of the Policy. The Complainant basically relies upon 4(b)(i) and (ii),

which read as follows:

For the purposes of

Paragraph 4(a)(iii), the following circumstances, in particular, but without

limitation, if found by the Panel to be present, shall be evidence of the

registration and use of a domain name in bad faith:

(i) circumstances

indicating that the respondent has registered or the respondent has 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 the respondent’s documented out-of-pocket

costs directly related to the domain name; or

(ii) the respondent

has registered the domain name in order to prevent the owner of the trademark

or service mark from reflecting the mark in a corresponding domain name,

provided that the respondent has engaged in a pattern of such conduct.

The Panel finds that

Respondent has bad faith in both registration and use of the Disputed Domain

Name.

a) Respondent

has the bad faith under Paragraph 4(b)(i) of the Policy.

In Respondent’s letter

dated November 2, 1999, to Chairman of Complainant, Respondent stated, "we

have already taken the first step in establishing a free web - site for

your company: A unique and representative domain name, <www.samsonpaper.com>,

has been reserved for your company"; "this web-hosting service

is free for the first 6 months and after that, we will charge you a rate

that is the lowest in Hong Kong".

In the Reply Slip attached

with the letter, Respondent asked Complainant to agree that "We are

interested in enjoying the above free web-site package. Please set up the

web-site "www.samsonpaper.com" for us. We hereby authorize Kannet

Limited (Respondent) to host the web-site on our behalf and we will pay

the initial registration fee for the domain name on presentation of invoice."

Even though Respondent

insisted that it would provide a TOTALLY FREE OF CHARGE web design and hosting

service, the Panel encounters no difficulty in finding that such statement

is only promotional measures. Respondent is a web-hosting company and in

the business of registering domain name for its clients. Thus, Respondent

not only wanted to recoup the initial registration fee for the Disputed

Domain Name, but also intended to charge Complainant a rate for web-hosting

service after the first 6 months. In this regard, Respondent’s action satisfied

one of the requirements under Paragraph 4(b)(i) of the Policy, i.e. to seek

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

costs directly related to the domain name".

However, Respondent’s

action is a little different from another requirement under Paragraph 4(b)(i)

of the Policy, because Respondent did not intend to sell, rent, or otherwise

transfer the Disputed Domain Name’s registration to the complainant. Rather,

Respondent preferred to control the Disputed Domain Name while profiting

from providing web-hosting service to Complainant.

The Panel believes

that Respondent’s action is a new form of domain name trading, which is

even worse than the attempts of selling, renting, or otherwise transferring

the domain name registration to the complainant. Knowing the importance

of the Disputed Domain Name to Complainant (Respondent stated in the letter

dated November 2, 1999, "a publicly traded company properly positioned

with an effective Internet marketing strategy can definitely generate tremendous

exposure for its products and services"), Respondent primarily attempted

to force Complainant into no choice but to accept Respondent’s service in

return for Respondent’s commitment to "reserve" the Disputed Domain

Name for Complainant.

Since the effect of

Respondent’s new form of domain name trading is equivalent to those of traditional

forms of domain name trading such as selling, renting or otherwise transferring

the domain name’s registration to complainant, the Panel finds that Paragraph

4(b)(i) of the Policy is applicable to Respondent’s action.

b) Respondent

has the bad faith under Paragraph 4(b)(ii) of the Policy.

Complainant alleged

that Respondent registered 432 domain names including the company names

of many blue chip listed companies in Hong Kong, which proved by the evidence

provided by Complainant of the List of domain names registered by Respondent

and the List of Hong Kong Stocks.

In Respondent’s letter

dated November 2, 1999, to Complainant, Respondent stated, "your Company

has been selected as one of the few to enjoy our free web-site services";

"I am inviting the major enterprises in Hong Kong like your Company

to support the development of e-Commerce by setting up their own web sites".

Respondent’s letter

proves that Respondent’s targets must not be limited to Complainant, but

extend to other "major enterprises in Hong Kong", namely those

listed companies on Hong Kong Stock Exchange.

Therefore, Respondent

had engaged in a pattern of the conduct of registering the domain names

in order to prevent the owners of the trademarks or service marks from reflecting

the marks in corresponding domain names.

c) Does Respondent

have other element of bad faith?

Complainant also claimed

other grounds for justifying the assumption of Respondent’s "bad faith".

The provision of Paragraph 4(b) of the Policy only contains a non-exclusive

list of circumstances of bad faith. Several WIPO domain name panels have extended

the scope of the term "bad faith" (cf. Telstra Corporation Ltd. v. Nuclear

Marshmallows, Case no. D2000-0003;

Stralfors AB v. PDS AB, Case No. D2000-0112;

McNeil Consumer Brands Inc. v. Mirweb Solutions, Case

No. D2000-0612).

The Panel believes

that such extensive interpretation should be cautious, and in this case,

since Respondent’s bad faith has been established base upon Paragraph 4(b)

of the Policy, there is no need to discuss other circumstances of bad faith

beyond those listed in that Paragraph.

E. Other Allegations

In the Complaint, Complainant

alleged that Respondent had used a P.O. Box in Samoa for domain name registration

contacts, which was yet another device by Respondent who intended to make

Complainant's task more difficult in recovering the Disputed Domain Name.

Respondent denied such

allegation in the Response.

The Panel is reluctant

to support such allegation, because Complainant has always been able to

effectively communicate with Respondent.

In the Response, Respondent

states that the current complaint appears to be an effort to gain advantage

from Respondent, stating Complainant has tried to obtain compensation in

the form of costs of HK$10,000 from Respondent.

The Panel finds that

Respondent’s such statement is irrelevant to the procedure of UDRP. If Complainant

honestly believed that costs were incurred by Respondent’s action, why shouldn’t

Complainant demand for that. Of course, the Panel is not in a position to

consider about that.

Respondent states that

if Complainant’s proposition were approved, no one would be able to make

use of the approximately 250 top-level domains that may be attached to create

domain names including "samsonpaper" without having to pay the

amount named by the entity (in this case, HK$10,000).

The Panel finds that

Respondent’s hypothetical claim is both groundless and irrelevant to the

procedure of UDRP.

Respondent stated that

there were a large number of second-level domains containing "samsonpaper"

available (such as <samsonpaper.tv>), which shows Complainant had

not taken the initiative to register the domain names, and thus appeared

to be attempting to gain profit from those who wish, without ulterior motive,

to do so.

The Panel holds that

a large number of second-level domains containing "samsonpaper"

available do not make Respondent’s action excusable.

7. Decision

For all the foregoing

reasons and pursuant to Paragraph 15 of the ICANN Rules, the Panel finds

that the Complainant has proved each of the three elements of Paragraph

4(a) of the Policy. The Panel requires that the said Disputed Domain Name,

namely, <samsonpaper.com> be transferred to the Complainant pursuant

to Paragraph 4(i) of the Policy.

Xue Hong

Sole Panelist

Dated: May

12, 2001