Hang Seng Data Services Ltd. v. Liu Xiaodong

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Hang Seng Data Services Limited v. Liu Xiaodong

Case No. D2001-0750

See Also PDF File: D2001-750

1. The Parties

Complainant: Hang Seng Data Services Limited

83 Dex Voeux Road, Central

Hong Kong, PRC

Respondent: Liu Xiaodong

No. 32 Zhongchang Street

Shahekou District

Dalian, Liaoning Province

PRC

2. The Domain Name

and Registrar

Domain Name: <ºãÉúÖ¸Êý.com>

(RACE Language Encoding: bq- -3bqfe5i7mmdwk4a.com)

Registrar: Internet

Names WorldWide

3. Procedural History

The Complaint

was received by WIPO by email on June 12, 2001, and in hardcopy form on June 6,

2001. WIPO has verified that the

Complaint satisfies the formal requirements of the Policy, the Rules and the

Supplemental Rules and that payment was properly made. The Administrative Panel (¡°the Panel¡±)

is satisfied that this is the case.

The Complaint was properly notified in accordance with the Rules,

paragraph 2(a). The Registrar has

confirmed that <ºãÉúÖ¸Êý.com> (¡°the Domain Name¡±) was registered through Internet Names

WorldWide and that Liu Xiadong is the current registrant. The Registrar has further confirmed

that the Policy is applicable to the Domain Names.

On June 14, 2001, WIPO notified the Respondent of the Complaint in

the usual manner and informed the Respondent inter alia that the last day for

sending its Response to the Complainant and to WIPO was July 4, 2001. WIPO issued to the Respondent a Default

Notice on July 6, 2001. No

Response was received.

The Panel was properly constituted. The undersigned Panellists submitted Statements of

Acceptance and Declarations of Impartiality and Independence.

No further submissions were received by WIPO or the Panel, as a

consequence of which the date scheduled for the issuance of the Panel¡¯s

Decision is August 20, 2001.

4. Factual

Background

The Complainant is a company incorporated in

Hong Kong. It maintains the

well-known Hang Seng family of indices and in particular the world famous Hang

Seng Index itself which was launched in 1964.

The Complainant is the registered proprietor of

a large number of trade mark and service mark registrations for the name Hang

Seng Index in both the English form and in its Chinese equivalent form. Examples of such registrations are:

¡¤ Hong

Kong Registration No 01605 dated May 30, 1995, in respect of administration,

operation and management of unit trusts relating to selected stocks listed on

The Stock Exchange of Hong Kong Limited.

¡¤ The

Peoples Republic of China Registration No 777580 for the provision of

information relating to the stock exchange, provision of information relating

to financial services.

The Complainant and its parent and associated

companies are the registrants of a number of domain names featuring the name

Hang Seng Index in both the English and Chinese forms. For example, Hang Seng Bank Limited is

the registrant of domain name <hangsengindex.com>, which was first

registered on January 11, 2000.

The Respondent registered the Domain Name on

November 30, 2000.

On February 19, 2001, the Complainant¡¯s

representative wrote to the Respondent drawing the Respondent¡¯s attention to

the Complainant¡¯s rights in the name Hang Seng Index (both English and Chinese

versions of the name), claiming that the Respondent¡¯s registration of the

Domain Name infringed the Complainant¡¯s rights and inviting the Respondent to

cancel the Domain Name.

As will be seen below the Complainant states

that no reply was received to that letter but that subsequently the Complainant¡¯s

representative telephoned the Respondent to check that the letter had been

received. Apparently it had been

received. The Complainant states

that in the course of that telephone conversation, the Respondent made a

request for a substantial sum of money before he would agree to cancel the

Domain Name. The Complainant¡¯s

representative indicated that the Complainant would not agree to pay any sum of

money and the Respondent has not cancelled the Domain Name.

The Domain Name is not in active use.

5. Parties¡¯

Contentions

A. Complainant

The substance of the Complaint is short and reads as

follows:

The Complaint

is based on the Complainant¡¯s registrations for the mark ¡°ºãÉúÖ¸”µ¡± (Chinese equivalent of

¡°Hang Seng Index¡±) in respect of various services throughout the world. A list of these registrations together

with copies of some trade mark registration certificates are provided as Annex

D to this Complaint. The

Complainant and the Complainant¡¯s parent/associate companies have also

registered, inter alia, the domain names <hangsengindex.com>,

<hangsengindex.net> and <hangsengindex.org> on January 11, 2000,

January 13, 2001, and January 19, 2001, respectively. A list of the domain names registered

by the Complainant and its parent/associate companies and copies of the whois

search results on <hangsengindex.com>, <hangsengindex.net> and

<hangsengindex.org> respectively are provided as Annex E.

The mark ¡°ºãÉúÖ¸”µ¡± (Chinese equivalent of ¡°Hang Seng Index¡±) (¡°the Mark¡±) is the

dominant part of the names of the Hang Seng family of indexes provided by the

Complainant. The Mark is

extensively used and advertised throughout the world. The Hang Seng family of indexes, including the Hang Seng

Index which was launched in 1964, has become an important indicator of stock

market performance worldwide especially in Hong Kong, London and the Asia

Region. The families of indexes

maintained by the Complainant includes, but not limited to, Hang Seng Index,

Hang Seng China Enterprises Index, New Hang Seng MidCap 50 Index, Hang Seng

China Affiliated Corporations Index, Hang Seng 100, Hang Seng IT Index, Hang

Seng IT Portfolio Index, Hang Seng London Reference Index and Hang Seng Asia

Index.

Amongst the above indexes, the Hang Seng Index is a barometer of the Hong Kong stock

market. The constituent stocks are

grouped under Commerce and Industry, Finance, Properties and Utilities

sub-indexes. The Hang Seng Index

currently comprises 33 constituent stocks which are representative of the

market. The aggregate market

capitalisation of these stocks accounts for about 70% of the total market

capitalisation on The Stock Exchange of Hong Kong Limited.

It has recently

come to the Complainant¡¯s attention that the Respondent has registered the

multilingual Domain Name <ºãÉúÖ¸Êý.com> (Chinese equivalent of ¡°Hang Seng Index.com¡±) without its

knowledge or authorization. As

noted from Annex D, the Complainant has registered the mark ¡°ºãÉúÖ¸”µ¡± (Chinese equivalent of ¡°Hang Seng Index¡±) and ¡°Hang Seng Index¡± in

respect of various goods and services throughout the world. In this regard, please note that the

Chinese word ¡°Êý¡± in ¡°ºãÉúÖ¸Êý¡± is the simplified form of the word ¡°”µ¡± in our client¡¯s registered mark ¡°ºãÉúÖ¸”µ¡±. The Respondent has no rights or

legitimate interests in respect of the Domain Name because (a) its <ºãÉúÖ¸Êý.com> (Chinese equivalent of

¡°Hang Seng Index.com¡±) website is currently substantively inactive and there is

no substantial use of the webiste by the Respondent; (b) the Respondent¡¯s name is different from the Domain

Name. The Respondent is therefore

not commonly known by the domain name.

The Complainant

submits that the Domain Name has been registered and used in bad faith. The Registrant registered the Domain

Name early on November 2000, but has not constructed any homepage. A copy of the page under the Domain

Name printed on May11, 2001, is provided as Annex F.

The Complainant¡¯s Authorized Representative sent a cease and desist letter by fax

and by registered post to the Registrant on February 19, 2001, notifying him

that his registration of the Domain Name has infringed the Complainant¡¯s right

and asking him to cancel the registration of the Domain Name forthwith. A copy of the said cease and desist

letter is provided as Annex G. The

Complainant¡¯s Authorized Representative received

no reply from the Registrant after the cease and desist letter and then

telephoned the Registrant to ask for a reply. The Registrant confirmed in the telephone his receipt of the

cease and desist letter. The

Registrant requested a substantial amount to be paid by the Complainant before

he would agree to cancel the Domain Name.

The Complainant¡¯s Authorized Representative immediately made it clear to

the Registrant that he had no rights in the Domain Name and the Complainant

would not be prepared to pay him any money. The Registrant has failed to cancel the Domain name to date.

The Complainant submits that the Registrant was actually a bad-faith pre-emptive registrant

whose sole purpose for the registration was for selling, renting, or otherwise

transferring the Domain Name registration for profits. Moreover, the Registrant¡¯s registration

has in fact obstruct (sic) the

Complainant from reflecting its mark and services in a corresponding domain

name.

The Complainant

reiterates that it has legitimate rights to use the name/mark ¡°ºãÉúÖ¸”µ¡± (Chinese equivalent of

¡°Hang Seng Index¡±). It is the

Complainant¡¯s submission that the Respondent has deliberately registered the

Domain Name in order to prevent the Complainant from reflecting its marks and

services in a corresponding domain name.¡±

B. Respondent

The Respondent has not responded.

6. Discussion and Findings

General

According to

paragraph 4(a) of the Policy, the Complainant must prove that:

(i) The

Domain Name is identical or confusingly similar to a trade mark or service mark

in which the Complainant has rights;

and

(ii) The

Respondent has no rights or legitimate interest in respect of the Domain

Name; and

(iii) The

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

Where a

Respondent who has been properly notified of the Complaint fails to respond,

the Panel is entitled to draw such inferences as it considers appropriate (Rule

14(b)).

In this case the

consequence of the Respondent¡¯s failure to respond is that the Panel accepts as

fact the uncontraverted assertions of the Complainant and in particular that:

¡¤ The

telephone conversation referred to above took place.

¡¤ In

the course of that telephone conversation the Respondent demanded of the

Complainant a substantial sum of money in return for cancellation of the Domain

Name.

Identical or confusing similarity

The Respondent registered the Domain Name <ºãÉúÖ¸Êý.com>, in which the Chinese character

¡°Êý¡± is the simplified form of the character ¡°”µ¡± in the Complainant¡¯s registered

trademark ¡°ºãÉúÖ¸”µ¡±. Just as the same English

word could have multiple but similar spellings (for example, ¡°organization¡± and

¡°organisation¡±), the same Chinese character could have multiple but similar

appearances as well. In this case,

¡°”µ¡±

in the Complainant¡¯s registered trademark ¡°ºãÉúÖ¸”µ¡± and

¡°Êý¡± in the Domain Name <ºãÉúÖ¸Êý.com>

are the same Chinese character, but the former is in the traditional form and

the latter is in the simplified form.

The Domain Name comprising as it does the

simplified Chinese form of the Complainant¡¯s trade mark/service mark, is

substantially identical. For this

purpose the .com suffix may be ignored.

Accordingly the Panel finds that the Domain

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

which the Complainant has rights.

Rights or legitimate

interest of the Respondent

The Domain Name reproduces the name of a world

famous service product of the Complainant from the ownership details of the

Domain Name it is apparent that the Domain Name is not the registered name of

the Respondent.

Paragraph 4(c) of the Policy which is addressed

to Registrants reads as follows:

¡°How to Demonstrate Your Rights to and Legitimate Interests in the Domain

Name in Responding to a Complaint. When you receive a complaint, you should

refer to Paragraph 5 of the Rules of Procedure

in determining how your response should be prepared. Any of the following circumstances,

in particular but without limitation, if found by the Panel to be proved based

on its evaluation of all evidence presented, shall demonstrate your rights or

legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):

(i) before any

notice to you of the dispute, your use of, or demonstrable preparations to use,

the domain name or a name corresponding to the domain name in connection with a

bona fide offering of goods or services;

or

(ii) you (as an

individual, business, or other organization) have been commonly known by the

domain name, even if you have acquired no trademark or service mark

rights; or

(iii) you are

making a legitimate non-commercial or fair use of the domain name, without

intent for commercial gain to misleadingly divert consumers or to tarnish the

trademark or service mark at issue¡±.

The Respondent has not sought to put forward

any justification for his selection of the Domain Name. It does not appear to the Panel that

any of the circumstances set out in paragraph 4(c) of the Policy are applicable

here. Moreover, the Panel cannot

think of any other reason why the Respondent might reasonably be said to have

any rights or legitimate interests in respect of the Domain Name.

The Complainant asserts that the Respondent has

no rights or legitimate interests in respect of the Domain Name on the basis

that its <ºãÉúÖ¸Êý.com> website ¡°is currently substantively

inactive¡±. The Complainant asserts

further that the Respondent has not constructed any homepage. The Respondent has not seen fit to deny

these allegations. Although the prevalent use of domain names is as HTTP World Wide Web

addresses on the Internet, they may be used for other Internet services (eg.

FTP, email, etc). The Respondent

has not submitted any evidence to suggest that the Domain Name has been used

for any Internet service.

Therefore, the Panel finds that there has been no active use of the

Domain Name.

In the result, the Panel finds that the

Respondent has no rights or legitimate interests in respect of the Domain Name.

Bad Faith

Paragraph 4(b)

of the Policy sets out a non-exhaustive list of circumstances which ¡°if found

by the Panel to be present shall be evidence of the registration and use of the

domain name in bad faith¡±.

Sub-paragraph (i) of 4(b) reads as follows:

¡°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 related to the domain name¡±.

The Respondent

registered the Domain Name in November 2000, and has made no active use of

it. As indicated, the Domain Name

is a famous name of the Complainant and, as the Panel has already found, the

Respondent has no rights or legitimate interests in respect of it.

The

Complainant¡¯s representative telephoned the Respondent and in the course of

that conversation the Respondent indicated that he would only agree to cancel

the Domain Name if the Complainant paid a substantial sum of money. The evidence to substantiate this

telephone conversation is sparse in the extreme (not even an attendance note

recording the terms of the conversation), but the Panel has no reason to doubt

the word of the Complainant¡¯s representative. Moreover, the Respondent, who is aware of the allegation,

has not denied it. In the result,

the Panel finds that the Respondent registered the Domain Name knowing that it

was a name in which the Complainant had rights and in the hope and expectation

that the Complainant would pay to the Respondent a sum of money for the Domain

Name being a sum of money in excess of the Respondent¡¯s out of pocket

expenses.

The Panel finds

that the Domain Name was registered in bad faith and is being used in bad faith

within the meaning of Sub-paragraph 4(b)(i) of the Policy.

7. Decision

In light of the foregoing findings, namely that the Domain Name is

identical or confusingly similar to a trade mark or service mark in which the

Complainant has rights and that the Respondent has no rights or legitimate

interests in respect of the Domain Name and that the Domain Name was registered

in bad faith and is being used in bad faith, the Complaint succeeds.

Pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the

Panel directs that the Domain Name <ºãÉúÖ¸Êý.com> be transferred to the Complainant.

Tony Willoughby

Presiding Panelist

SOH Kar Liang

Panelist

XUE Hong

Panelist

Dated: August 17, 2001