WIPO

 

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 youÖÖ"

"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, Complainantís solicitors informed Respondentís 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.ÖÖOur client therefore requires your client to contribute to the costs it has incurred." In this letter, Complainantís 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 Respondentís 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. Partiesí 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 Respondentís 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 Complainantís 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 Respondentís 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) Respondentís 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) Respondentís 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 Complainantís trademark rights in "Samson", "Samson Paper" and "Samson Paper Holdings Limited".

The Panel compared the Disputed Domain Name with Complainantís common law trade and service mark "Samson Paper" and finds that the second level domain thereof is substantially identical to the Complainantís 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 Complainantís mark.

Also, the Panel finds that the Disputed Domain Name is confusingly similar to Complainantís 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 Complainantís trademark.

C. Respondentís 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 Respondentís above statement cannot demonstrate that Respondent has right or legitimate interest in the Disputed Domain Name.

When the Panel evaluates Respondentís 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 Respondentís 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 Respondentís improper actions. If Respondent deliberately manipulates the website to be a noncommercial site for the purpose of circumventing any finding in favor of Complainant, Respondentís 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 Respondentís 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.

Respondentís letter to Complainant dated November 2, 1999 clearly indicated that Respondentís registration of the Disputed Domain Name and establishment of the website at the address of <www.samsonpaper.com> were the measures to promote Respondentís 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 Complainantís 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 Complainantís rejection to Respondentís 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 Complainantís solicitors to Respondentís 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, Complainantís payment demand is largely irrelevant (which will be discussed at the part of "Other Allegations"). Whatís important is Respondentís 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 Respondentís web hosting service offer, which frustrated Respondentís 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 Respondentís 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 Complainantís 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, Respondentís 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 respondentís 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 Respondentís 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, Respondentís 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, Respondentís 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 Nameís 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 Respondentís 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 Respondentís service in return for Respondentís commitment to "reserve" the Disputed Domain Name for Complainant.

Since the effect of Respondentís 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 nameís registration to complainant, the Panel finds that Paragraph 4(b)(i) of the Policy is applicable to Respondentís 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 Respondentís 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".

Respondentís letter proves that Respondentís 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 Respondentís "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 Respondentís 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 Respondentís such statement is irrelevant to the procedure of UDRP. If Complainant honestly believed that costs were incurred by Respondentís action, why shouldnít Complainant demand for that. Of course, the Panel is not in a position to consider about that.

Respondent states that if Complainantís 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 Respondentís 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 Respondentís 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