WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
South China Morning Post Publishers Ltd v Commbine.com
Case No. D2000-0707
1. The Parties
The Complainant is South China Morning Post Publishers Ltd., a corporation duly incorporated in the Hong Kong Special Administrative Region of the Peopleís Republic of China.
The Respondent is Commbine.com, of Magnolia, Texas, USA.
2. The Domain Name and Registrar
The domain name the subject of this Complaint is <southchinamorningpost.com>.
The Registrar of this domain name is Tucows.com, Inc. of Toronto, Ontario, Canada ("Registrar").
3. Procedural History
Issuance and Amendment of Complaint
3.1. On June 30, 2000, the Complainant by email and by courier submitted to the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center") a Complaint made pursuant to the Uniform Domain Name Dispute Resolution Policy ("Uniform Policy"), and under the Rules for Uniform Domain Name Dispute Resolution Policy ("Uniform Rules"), both of which were implemented by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999. An Acknowledgment of Receipt of Complaint was sent by the WIPO Center to the Complainant, by email dated July 4, 2000.
3.2. On July 6, 2000, in response to a communication from the WIPO Center, the Complainant amended paragraph 15 of the Complaint to state more clearly the jurisdiction of the courts to which the Complainant agrees to submit. A copy of this amendment was sent to the WIPO Center, the Respondent and the Registrar.
Confirmation of Registration Details
3.3. A Request for Registrar Verification was dispatched by the WIPO Center to the Registrar by email on July 4, 2000. By email to the WIPO Center on July 7, 2000, the Registrar confirmed that it was the Registrar of the domain name the subject of this Complaint; confirmed that the current registrant of the domain name <southchinamorningpost.com> is the Respondent; informed of the Administrative, Technical and Billing Contact details for the domain name, and provided postal, telephone/facsimile and email contact details for the Contact; and confirmed that the Uniform Policy applies to the domain name in issue by virtue of its Registration Agreement with the Respondent.
Notification to Respondent
3.4. Having verified that the Complaint satisfied the formal requirements of the Uniform Policy and the Uniform Rules, and that payment of the filing fee had been properly made, the WIPO Center issued to the Respondent a Notification of Complaint and Commencement of Administrative Proceeding, by courier and email to the addresses provided by the Registrar, on July 13, 2000. Copies of this Notification of Complaint were sent by email to the Complainant, the Registrar and ICANN on that date. Records of the WIPO Center show that both the courier delivery and the email delivery of this Notification of Complaint were received by the Respondent.
3.5. This Administrative Panel finds that the WIPO Center has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent".
Filing of Response
3.6. No Response was filed by the Respondent within the time specified in the Notification of Complaint. A Notification of Respondent Default was sent by the WIPO Center to the Respondent, and copied to the Complainant, by email on August 3, 2000. As of the date of this decision, no Response had been filed by the Respondent.
Appointment of Administrative Panel
3.7. On August 4, 2000, the Complainant notified the WIPO Center by email that it had received a communication from the Respondent stating that the Respondent was willing to voluntarily cancel the domain name registration. On August 7, 2000, the WIPO Center requested the Complainant to inform it of whether, in light of this development, the Complainant wished to suspend or terminate the proceedings. A copy of this request was sent to the Respondent.
3.8. On August 7, 2000, the WIPO Center received an email from the Administrative and Billing Contact for the Respondent, stating as follows:
As I discussed with Mr. Wong, on 20 July, 2000, I am not interested in the domain "southchinamorningpost" willing (sic) to abandon my registration thereof.
Please do the necessary.
3.9. On August 30, 2000, in response to an earlier enquiry from the WIPO Center, the Complainant informed the WIPO Center by email that it was currently preparing a settlement agreement to be executed by it and the Respondent, and accordingly requested a staying of the appointment of the Administrative Panel, pending the service of a notice suspending these proceedings. On the same day, the WIPO Center responded that it would not take any further action in this case until further notice from the Complainant. The WIPO Center requested that the Complainant inform it of the status of this proceeding by September 21, 2000.
3.10. By facsimile received by the WIPO Center on October 2, 2000, and in response to an earlier request from the WIPO Center for information about the status of this proceeding, the Complainant informed the WIPO Center that it had failed to reach an agreement with the Respondent, and requested the appointment of a Panelist to decide this case. On October 4, 2000, in accordance with the request in the Complaint, the WIPO Center proceeded to appoint a single Panelist, and invited Andrew F. Christie to so act. On October 6, 2000, Dr. Christie submitted to the WIPO Center a Statement of Acceptance and Declaration of Impartiality and Independence. On October 7, 2000, the WIPO Center issued to both parties a Notification of Appointment of Administrative Panel and Projected Decision Date, informing of Dr. Christieís appointment and that absent exceptional circumstances a decision would be provided by this Administrative Panel by October 20, 2000. The case before this Administrative Panel was conducted in the English language.
Compliance with the formalities of the Uniform Policy and the Uniform Rules
3.11. Having reviewed the Case File in this matter, this Administrative Panel concurs with the assessment by the WIPO Center that the Complaint complies with the formal requirements of the Uniform Policy and Uniform Rules.
4. Factual Background
4.1. The Complaint asserted, and generally provided evidence in support of, the following facts. Unless otherwise specified, this Administrative Panel finds these facts established.
Complainantís Activities and Trademarks
4.2. "South China Morning Post" is the title of the leading English daily newspaper published by the Complainant in Hong Kong. The name "South China Morning Post" is particularly well known amongst English and Chinese speaking people in Hong Kong and Asian countries. Between January 1, 1999 and December 31, 1999, the Complainant published 293 issues of "South China Morning Post" which had a circulation of 208,441 in Hong Kong and a circulation of 13,134 outside Hong Kong, and 51 issues of the Sunday edition of the newspaper "South China Morning Post" which had a circulation of 165,368 in Hong Kong and a circulation of 13,362 outside Hong Kong. Copies of the Certificate of Circulation issued by the Hong Kong Audit Bureau of Circulations are annexed to the Complaint as Annex 3. As can be seen therein, the publication "South China Morning Post" serves most Asian countries including Macau, China, Japan, Korea, Taiwan, Philippines, Vietnam, Singapore and Malaysia.
4.3. The Complainant registered SOUTH CHINA MORNING POST as a trademark for a term of 10 years from May 7, 1999, with the Trademark Office of the State Administration for Industry & Commerce of the Peopleís Republic of China. The registration is for "newspaper, magazines and periodicals in Class 16". A copy of the PRC Trade Mark Registration Certificate No.1270417 for the trademark SOUTH CHINA MORNING POST is annexed to the Complaint as Annex 6.
4.4. The Complainant has published an English newspaper under the trademark SOUTH CHINA MORNING POST in Hong Kong since 1903. The Complainant has also used the trademark SOUTH CHINA MORNING POST in connection with its online edition of its daily newspaper on its own internet web site which is located at the URL www.scmp.com. The Complainantís trademark SOUTH CHINA MORNING POST appears on all pages within that internet web site. A copy of a printout of the front page of the newspaper at that web site is annexed to the Complaint as Annex 5. The web site at www.scmp.com received 3,994,748 hits on the entire site and 43,254 hits on its home page on June 13, 2000, as evidenced by the WebTrends Internet Edition report generated on June14, 2000, and annexed to the Complaint as Annex 7.
4.5. The Respondent registered the domain name <southchinamorningpost.com> in March 2000. Until around May 26, 2000 the domain name did not resolve to a web site.
4.6. On about May 26, 2000, the Complainantís authorized representative discovered that the Respondent had established a web site at the URL www.southchinamorningpost.com. A copy of the printout of the web site at that address, as it appeared on May 26, 2000, is annexed to the Complaint as Annex 8. At this web site it was stated: "Welcome to southchinamorningpost.com - A commbine.com portal site". Upon checking the www.commbine.com web site, which is also owned by the Respondent, it was discovered that the format, appearance, and content of the web site at www.southchinamorningpost.com replicated the web site at www.commbine.com site, with the following exception. At the top of the www.southchinamorningpost.com site there was a flashing text bar which advertised the sale or leasing of that web site. This flashing text bar was an animated text bar, the connected flashing segments of which read as follows:
Interested in this site ?... This site is FOR SALE or LEASE. Please contact the email address at the bottom of this page for details. You are free to use our current design, Or, use the domain name and create your own site content
4.7. On June 7, 2000, it was discovered that both the <commbine.com> and <southchinamorningpost.com> domain names were unable to resolve into a valid IP address. On June 26, 2000, it was discovered that both the www.commbine.com and www.southchinamorningpost.com websites were active again. A copy of the printout of the web site at these addresses, as they appeared on June 26, 2000, are annexed to the Complaint as Annex 9 and Annex 10. There were no major changes, and these websites looked identical, save for the flashing text bar at the top of the web site at www.southchinamorningpost.com, which now flashed the following message:
Are you interested in our site ? If you wish to discuss co-development or other revenue generating oppurtunities regarding this site, Please write us to the email address listed on the bottom of this page. We are always eager to seek new business ventures
5. Partiesí Contentions
5.1. The Complainant contends that each of the three elements specified in paragraph 4(a) of the Uniform Policy are applicable to the domain name the subject of this dispute.
5.2. In relation to element (i) of paragraph 4(a) of the Uniform Policy, the Complainant contends that the domain name in issue is "in all material aspects identical to" the Complainantís registered trademark SOUTH CHINA MORNING POST.
5.3. In relation to element (ii) of paragraph 4(a) of the Uniform Policy, the Complaint contends that the Respondent has no rights or legitimate interests in respect of the domain name in issue because "the Respondent is not a licensee of the Complainant, nor is the Respondent otherwise authorised to use the Complainantís mark", and there is "no connection whatsoever between the Respondent and the Complainantís trade mark Ö nor any reason why the Respondent has ever been legitimately known or identified in any way by that mark".
5.4. In relation to element (iii) of paragraph 4(a) of the Uniform Policy, the Complainant contends that evidence of bad faith registration and use is established by the fact that the Respondent has registered or acquired the domain name primarily for the purpose of selling the domain name registration to the Complainant as owner of the SOUTH CHINA MORNING POST trademark, for a valuable consideration in excess of the out-of-pocket costs directly related to the domain name. Such a circumstance is specified in paragraph 4(b)(i) of the Policy as evidence of bad faith registration and use of a domain name.
5.5. The Respondent did not file a Response to the Complaint.
6. Discussion and Findings
Identical or Confusingly Similar Domain Name
6.1. In relation to the domain name <southchinamorningpost.com>, the relevant part of this domain name is <southchinamorningpost>. This Administrative Panel finds that this part of this domain name is identical to the Complainantís registered trademark SOUTH CHINA MORNING POST.
Respondentís Rights or Legitimate Interests in the Domain Name
6.2. The Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Uniform Policy, or of any other circumstances, giving rise to a right to or legitimate interest in the domain name. In light of this fact, the fact that the domain name bears no relationship to any legitimate business of the Respondent, the fact that the Complainant has not licensed or otherwise consented to the use by the Respondent of the trademark SOUTH CHINA MORNING POST, and the fact that the words "South China Morning Post" are not ones that the Respondent would legitimately choose for incorporation in a domain name unless seeking to create an impression of an association with the Complainant, this Administrative Panel finds that the Respondent has no rights or legitimate interests in the domain name <southchinamorningpost.com>.
Domain Name Registered and Used in Bad Faith
6.3. The fact that the Respondent has chosen not to submit a Response is particularly relevant to the issue of whether the Respondent has registered and is using the domain name in bad faith. Rule 14(b) of the Uniform Rules provides that, in the absence of exceptional circumstances, a Panel shall draw such inferences as it considers appropriate from the failure of a party to comply with a provision or requirement of the Uniform Rules. This Administrative Panel finds there are no exceptional circumstances for the failure of the Respondent to submit a Response. This Administrative Panel draws from this failure the following two inferences: (i) the Respondent does not deny the facts which the Complainant asserts, and (ii) the Respondent does not deny the conclusions which the Complainant asserts can be drawn from these facts. Nevertheless, this Administrative Panel still has the responsibility of determining which of the Complainantís assertions are established as facts, and whether the conclusions asserted by the Complainant can be drawn from the established facts.
6.4. The facts discussed in paragraphs 4.5-4.7 above, which this Administrative Panel finds established, show that the only use made of the domain name by the Respondent has been to establish a web site at which the domain name has been offered for sale or lease, and at which "co-development or other revenue generating opportunities" using the domain name have been solicited. This Administrative Panel finds that these circumstances indicate that the Respondent registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the Complainant or a competitor of the Complainant. Further, it is a reasonable inference in the circumstances of this case that the consideration sought by the Respondent was an amount in excess of the Respondentís out-of-pocket costs directly related to the domain name. This inference was not challenged by the Respondent. This Administrative Panel draws that inference. Accordingly, this Administrative Panel finds established the circumstances specified in paragraph 4(b)(i) of the Uniform Policy, and therefore finds that the Respondent has registered and is using the domain name <southchinamorningpost.com> in bad faith.
7.1. This Administrative Panel decides that the Complainant has proven each of the three elements in paragraph 4(a) of the Uniform Policy in relation to the domain name the subject of the Complaint.
7.2. Pursuant to paragraph 4(i) of the Uniform Policy and paragraph 15 of the Uniform Rules, this Administrative Panel requires that the Registrar, Tucows.com, Inc., transfer to the Complainant, South China Morning Post Publishers Ltd., the domain name <southchinamorningpost.com>.
Andrew F. Christie
Dated: October 20, 2000