WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
HSBC Holdings Plc v. domainchronicle
Case No. D2002-1173
1. The Parties
The Complainant is HSBC Holdings Plc, of London, United Kingdom of Great Britain and Northern Ireland, represented by Johnson Stokes & Master of China.
The Respondent is domainchronicle, of China.
2. The Domain Name and Registrar
The disputed domain name <hsbcmortgage.com> is registered with iHoldings.com Inc. d/b/a DotRegistrar.com.
3. Procedural History
A Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 28, 2002, by email and, on January 6, 2003, by hard copy. The Center acknowledged receipt of Complaint on January 6, 2003, and on the same day transmitted by email to iHoldings.com Inc. d/b/a DotRegistrar.com a request for registrar verification in connection with the domain name at issue. On January 9, 2003, iHoldings.com Inc. d/b/a DotRegistrar.com transmitted by email to the Center its verification response, stating that the Respondent named in the Complaint was not the registrant of the disputed domain name, and that the current registrant is "domainchronicle". The contact details for the administrative, billing, and technical contact of the new registrant were provided.
By a notification dated January 10, 2003, the Center informed the Complainant of the change in Respondent and the requirement to file an amendment to the Complaint. The amended Complaint was filed by the Complainant on January 14, 2003. The Center verified that the Complaint and the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
The proceedings commenced on January 17, 2003, when the Center formally notified the Respondent of the Complaint pursuant to Rules, paragraphs 2(a) and 4(a). The due date for Response was February 6, 2003, Rules, paragraph 5(a). The Respondent did not submit any response. The Center notified the Respondentís default on February 10, 2003.
The Center appointed Harini Narayanswamy as the sole panelist in this matter on February 17, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
HSBC Holdings Plc, the Complainant, is a company incorporated in the United Kingdom. The HSBC group is named after its founding member, The Hong Kong and Shanghai Banking Corporation Limited, which was established in 1865. The Complainant has activities on a worldwide scale and is operating in several different countries
The Complainant has for many years been well-known internationally in connection with banking and financial services, including mortgage services, using the HSBC mark which is the prominent part of the company name.
The disputed domain name <hsbcmortgage.com> was registered on December 15, 2001. The Respondent is the holder of the disputed domain name. No other facts are available about the Respondentís business activities.
5. Partiesí Contentions
The mark "HSBC" ("the Mark") is the trademark of the Complainant and is extensively used and advertised throughout the world by the Complainant. The Complainant has registered the "HSBC" mark in various services, in many countries in class 36. In evidence of its longstanding use, numerous international trademark registrations and international notoriety, the Complainant has filed a list indicating the trademark registration numbers in several countries. The Complainant states that it has also registered the domain names <hsbcgroup.com> and <hsbc.com> and filed copies of the WHOIS search results on <hsbcgroup.com> and <hsbc.com> and a list of the Complainantís and its group membersí registrations for domain names which includes the HSBC mark in various countries.
Mortgage services are among the financial services provided by the Complainant. In support of its contention, printouts from the various Web sites of the Complainantís mortgage plans are filed at Annex G .The Complainant contends that the disputed domain name is confusingly similar to the Complainantís trade mark HSBC, in that it fully incorporates the Complainantís famous trade mark with the addition of the word "mortgage".
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the domain name. The Respondentís lack of a legitimate interest in the subject domain name is said to be established by the fact that it is the well reputed mark of the Complainant; further, the Web site operated under the disputed domain name is used as a mere search engine which has links to other sites and the Respondent is not commonly known by the domain name.
The Complainant submits that the domain name has been registered and used in bad faith as the domain name has been transferred several times. The Complainant has provided, as evidence, the correspondence with various holders of the disputed domain name wherein the disputed domain name has been admittedly purchased or offers have been made to sell the domain name for valuable consideration to the Complainant. The Complainant further contends that the domain name has been registered by the Respondent with the purpose of obstructing the Complainant from reflecting its mark and services in a corresponding domain name.
The Complainant requests the Administrative Panel appointed in this administrative proceeding to issue a decision that the contested Domain name be transferred to the Complainant.
The Respondent did not file a response to the Complaint. The Panel finds that the Center, in compliance with paragraphs 2(a) and 4(a) of the Rules, has formally notified the Respondent of the commencement of proceedings and has forwarded a copy of this Complaint to Respondent by hard copy and e-mail. The Panel is convinced that Respondent has been properly notified of these proceedings by the Center and has not been denied its right to be heard in these proceedings.
6. Discussion and Findings
The Policy at paragraph 4(a), states that the Complainant must prove these three elements in the administrative proceedings:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the domain name, <hsbcmortgage.com>, is a combination of the trademark, HSBC and the addition of a generic word "mortgage" along with the gTLD, <.com>. It is now fairly well established that the inclusion of a gTLD such as ".com" is irrelevant when determining identity or similarity between trademarks and domain names, see Ticketmaster Corporation v. DiscoverNet, Inc., (WIPO Case No. D2001-0252).
The distinctive part of the disputed domain name is the trademark "hsbc". It may mislead the public into thinking that the domain name is in some manner connected to the HSBC mark. (See WIPO Case No. D2000-1554, Daimler Chrysler AG v. James Cruz; WIPO Case No. D2001-0055, America Online, Inc. v. Yeteck Communication Inc.). The addition of a generic term does not distinguish the disputed domain name from the Complainantís famous registered trade mark (see, Viacom International Inc. v. Erwin Tan, WIPO Case No. D2001-1440). It is likely that the public and internet users, in particular, may be attracted to the disputed domain name by the letters Ďhsbcí, which correspond exactly to that of the mark. The Panel also notes that the addition of the word "mortgage" fails to reduce the confusing similarity between the disputed domain name and Complainantís mark, as the term Ďmortgageí specifically refers to the products and services in which the Complaint has interests.
The Complainant has established, as per paragraph 4(a)(i) of the Rules that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights. In accordance with the discussions, the Panel finds that the disputed domain name is confusingly similar to the trademark in which Complainant has rights
B. Rights or Legitimate Interests
The Complainant has asserted that Respondent has no rights or legitimate interests to the disputed domain name for the following reasons: (a) The mark HSBC is well known and widely used by the Complainant vis-à-vis the Respondentís Ďsubstantially inactiveí Web site; (b) The Respondent is not commonly known by the domain name, and (c) The Respondent has no license or permission from Complainant to use its trademark. The Panel finds that based on all of the evidence in the record there is no evidence to contradict these assertions.
The Respondent has failed to submit any evidence that Respondent is using the disputed domain name in a bona fide offering of goods or services in satisfaction of the criterion listed in paragraph 4(c)(i) of the Policy. The Complainant has furnished the Panel with evidence that Respondent is using the domain name merely as a frame Web page to link with other Web sites including links to mortgage services (see Annex H to the Complaint). Mortgage services are one of the areas in which Complainant uses its trademark. Previous Policy rulings have found that such use does not constitute a "bona fide" offering under the Policy. See Peter Frampton v. Frampton Enterprises, Inc., (WIPO Case No. D2002-0141)("Öusing the contested domain nameÖin the exact same field of endeavor as the ComplainantÖcan not and does not constitute bona fide commercial use, sufficient to legitimize any rights and interests the Respondent might have in the contested domain name.").
It is unlikely that the Respondent was unaware of the business and trademark of the Complainant. There can be no honest legitimate use by the Respondent of a well known trademark, since any such use would inevitably mislead the public to believe that there was some affiliation or business relationship with the Complainant. Adoption of the mark is bound to result in an initial interest or confusion regarding the Respondent. This is inevitable due to expectations the public would have from a well known mark. Other panel rulings as to confusion pertaining to well known trademarks used by banking companies have found Respondents adopting well known trademarks have no right or legitimate interest in such marks. In Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc., (WIPO Case No. D2001-1314) the Panel finds that, given the notoriety of Complainantís mark, any use of that mark or a confusingly similar mark would violate Complainantís exclusive trademark rights. Also see Banque Fédérale des Banques Populaires S.A. v. N-Holdings, (WIPO Case No. D2002-1049).
Thus, in view of all the evidence submitted, the Panel concludes that Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The Complainantís allegations of bad faith consist of: (1) allegation of Respondentís attempt to sell the domain name to the Complainant; (2) allegation that Respondentís registration of the domain name creates barriers for the Complainant to use its mark on the Internet for its business activities; (3) the allegation of preventing Complainant from registering and reflecting its business name in a corresponding domain name.
The Complainant has presented the Panel with evidence of transfers of the domain name and correspondence with the holders of the domain name who have attempted to sell or transfer the said domain name to the Complainant for valuable consideration in excess of their out-of-pocket costs [Annex I to Q]. The Panel observes that the domain name has been transferred five times in the span of about a year, the most recent one being made on January 6, 2003. The Complainantís allegation of bad faith registration and use under paragraph 4(b) is well founded. See CBS Broadcasting, Inc. v. Gaddoor Saidi, (WIPO Case No. D2000-0243) (offer to sell domain name in excess of out-of-pocket costs conclusively establishes that domain name was registered and was being used in bad faith under paragraph 4(b)(i), unless Respondent has legitimate interests in name); Nabisco Brands Co. v. The Patron Group, Inc., (WIPO Case No. D2000-0032) (offering to sell infringing domain names for a profit is evidence of bad faith).
The Complainant has presented the Panel evidence that Respondent is attempting to create barriers for the Complainant to use its mark on the Internet by attempting to use the disputed domain name to offer services similar to those offered by Complainant under its HSBC trademark. The Panel concludes that, by using the disputed domain name in this manner, the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its Web site, by creating the likelihood of confusion with Complainantís trademark as to the source, sponsorship, affiliation or endorsement of its Web site. This is sufficient evidence for the Panel to base a finding of bad faith registration and use under paragraph 4(b)(iv) of the Policy and of preventing the Complainant from registering and reflecting its business name in a corresponding domain name per paragraph 4(b)(ii).
Thus, the Panel finds Complainant has sustained its burden of proof in showing that the domain name was registered and is being used in bad faith. The Panel finds that the weight of all the evidence and circumstances justifies a finding of bad faith
The Panel concludes that the disputed domain name, <hsbcmortgage.com>, is confusingly similar to Complainantís well known mark. The Panel has also determined that Respondent has no rights or legitimate interests in the disputed domain name. Finally, the Panel finds Respondent has registered and is using the disputed domain name in bad faith.
The Panel orders that the disputed domain name, <hsbcmortgage.com>, be transferred to the Complainant.
Dated: February 24, 2003