WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
John Swire & Sons Limited v. David Huang
Case No. D2000-1106
1. The Parties
The Complainant is John Swire & Sons Limited of Swire House, 59 Buckingham Gate, London SW1E 6AJ, England.
Complainant is represented by:
Johnson Stokes & Master, 10th Floor, Prince's Building, 10 Charter Road, Central Hong Kong.
The Respondent is; David Huang, of 4F, 256 Nanking East Road, Sec.5, Taipei City, Taiwan 105.
The Respondent is not represented.
2. The Domain Name and Registrar
The domain name with which this dispute is concerned is: "swiregroup.com"
The Registrar with which the domain name is registered is; Network Solutions Inc., 505 Hunter Park Drive, Herndon, Virginia 20170, United States of America.
3. Procedural History
3.1 The Complaint was submitted electronically and in hard copy to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on August 22, 2000, and August 23, 2000, respectively.
3.2 On August 31, 2000, the Registrar verified:
(i) that the current registrant of the domain name is the Respondent;
(ii) that the Registrar's 4.0 Service Agreement is in effect;
(iii) that the domain name is in "Active" status;
(iv) Respondent's Administrative Contact and Billing Contact is:
David Huang of Domain Collections, 4F, No. 256 Nanking East Road, Sec.5, Taipei City, Taiwan.
Phone: Not supplied
Fax: 1-209 755 8210
E-mail: Not supplied
(v) The Technical Contact and Zone Contact is:
Hostmaster (HO1320-ORG) "hostmaster@9NETAVE.com"
110 Meadowlands Pkwy, Secaucus, NJ 07094, United States of America.
Phone: Not supplied
Fax: Not supplied
3.3 On August 22 2000, all formal requirements for the establishment of the complaint were checked by the WIPO Center and found to be in compliance with the applicable ICANN Policy, ICANN Rules ("the Rules") for Uniform Domain Name Dispute Resolution Policy ("the Policy"), and WIPO Supplemental Rules. The Panel has checked the file and confirms the WIPO Center's finding of proper compliance with the Rules and establishment of the Complaint.
3.4 On September 11, 2000, the WIPO Center sent Notification of Complaint and Commencement of Administrative Proceeding as follows:
(i) by post and by facsimile to Respondent, the Administrative Contact and the Billing Contact.
(ii) by post to the Technical Contact.
(iii) by e-mail to Respondent, the Administrative Contact and the Billing Contact at "administrator@DHUANG.COM, and to the Technical Contact at hostmaster@9NETAVE.COM", and to the "postmaster" at the domain name.
3.4.1 From the record it appears that:
(i) the posted and facsimile transmissions to Respondent and the Administrative and Billing Contacts were delivered;
(ii) the posted transmission to the Technical Contact was delivered;
(iii) the e-mail to the "postmaster" at the domain name was not delivered;
(iv) it is not clear whether the e-mail transmissions to Respondent, the Administrative Contact and the Billing Contact were delivered.
3.4.2 The responsibility of the Center is to employ reasonably available means to achieve actual notice to the Respondent. That duty is discharged by sending the Complaint to the respective addresses for the holder and the technical and administrative contacts "shown in the Registrar's WHOIS database" and to the address supplied by the Registrar for the Billing Contact, to the e-mail addresses for those contacts and to "postmaster" at the domain name – Rule 2(a).
3.4.3 The record shows that to the extent possible, in view of the address provided, the Center has satisfied the provisions of each of paragraphs (i)(A), (i)(B), (ii)(A), (ii)(B) and (iii) of Rule 2(a);
3.4.4 The record further shows that:
(i) the domain name did not resolve to an active web-site;
(ii) Respondent has not notified any preferred address to WIPO Center.
3.4.5 The Panel therefore finds that the obligation imposed on the Center with respect to Notification of the Complaint and the Commencement of the Administrative Proceeding has been satisfied.
3.5 The due date for filing a Response was September 26, 2000. No Response was filed and Notice of Respondent Default was sent to Respondent and to the Technical, Administrative and Billing Contacts on October 9, 2000.
3.6 Panelist Teruo Doi and David Tatham and Presiding Panelist D.J. Ryan, having filed Statements of Acceptance and Declarations of Impartiality and Independence the Panel was appointed on November 22, 2000.
3.7 The Panel therefore proceeds to its determination in accordance with the Uniform Domain Name Dispute Resolution Policy ("the Policy"), the Rules and the applicable rules and principles of law on the basis of the Complaint.
4. Factual Background
4.1 Complainant is an English company and is well known, particularly in the Asia/Pacific area as a very large trading, construction, shipping and investment company with extensive interests in Hong Kong and throughout Asia and the Pacific including China, Japan, Australia and the United States of America. It is a principal member of a group of companies known as the Swire Group, which includes also publicly listed company Swire Pacific Ltd., and wholly owned subsidiary John Swire and Sons (HK) Ltd.
4.2 Complainant is the owner of a very large number of trademarks covering its many areas of interest and registered in many countries throughout the world. These marks consist of or include the words "Swire", "The Swire Group" and "The Swire Group and flag logo" (Complaint annexes C and D). John Swire and Sons (HK) Ltd., is the holder of several domain names including "swire-group".com, "swiregroup.org" and "swiregroup.net" (Complaint Annex E).
4.3 No information is available in respect of Respondent or his business activities save that he was previously the registrant of a number of other domain names incorporating well-known trade marks including "diners-club.com", "nina-ricci.com", "united-technology.com" and "general-dynamics.com", (Complaint Annex F).
4.4 On June 4, 1999, Complainant sent a letter of demand to Respondent (Complaint Annex G). Respondent did not reply to that letter.
4.5 The domain name does not resolve or point to a web-site.
5. Applicable Dispute
5.1 This dispute is one to which the Policy applies. By registering the domain name Respondent accepts the dispute resolution policy adopted by the Registrar from time to time. Registrar's current policy, set out in its 4.0 Service Agreement, is the Policy.
5.2 To succeed in its Complaint, Complainant must show that each of the conditions of paragraph 4(a) of the Policy are satisfied, namely that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in the domain name;
(iii) the domain name has been registered and is being used in bad faith.
6. Parties’ Contention
6.1 Complainant contends that the domain name is confusingly similar to Complainant's trademarks referred to in paragraph 4.2.
6.2 Complainant contends that Respondent has no legitimate rights or interests in the domain name.
6.2.1 Complainant contends that Respondent has produced no evidence that he uses or has made demonstrable preparations to use the domain name in connection with the bona fide offering of goods or services or that he is commonly known by the domain name.
6.3 Complainant asserts registration and use of the domain name in bad faith.
6.3.1 Complainant points to Respondent's conduct in registering this and other domain names comprising well known trade marks as evidence of Respondent's bad faith registration of the domain name. Complainant contends that Respondent has registered the domain name in order to prevent Complainant from reflecting its trade marks in a corresponding domain name and has engaged in a pattern of such conduct – Policy paragraph 4(b)(ii).
6.4 No Response was filed.
7. Decision and Findings
Identical or Confusingly Similar Trademarks
7.1 The domain name is not identical to any trademark registered by Complainant nor is it identical to the name "The Swire Group" in which Complainant could claim rights through use and reputation.
The domain name differs from the "Swire" marks only by the addition to the "Swire", of the word "group" and from the "The Swire Group" marks the omission of the word "The" and the running together of the words "Swire" and "Group". These differences are not sufficient to negative the overwhelming similarity between the marks and the domain name. In the case of the composite mark including the flag device the dominant particular of, and impression created by, the mark is the phrase "The Swire Group". The word "Swire" is the dominant particular of all of the marks. It is also the dominant particular of the domain name.
The Panel therefore finds that the domain name is confusingly similar to the trademarks of Complainant.
Respondent's Rights or Legitimate Interests
7.2 Respondent has demonstrated no rights or legitimate interests. The notoriety of Complainant's group of companies throughout Asia and the Pacific and the wide-spread trade mark registrations which it holds renders it almost impossible for Respondent to claim any such right or interest. Whilst the burden of proof lies on Complainant, that burden is a shifting one and Respondent has done nothing to rebut Complainant's prima facie showing. Further, Respondent's failure to file a Response or to otherwise assert any such right or interest leads to a presumption that it is unable to show that such right or interest exists, (see Mondich and American Wine Biscuits v. Brown, Case No. D2000-0004).
Registration and Use in Bad Faith
7.3 Paragraph 4(b) of the Policy sets out, without limitation, certain circumstances which, if found are deemed to be evidence of use and registration in bad faith. It is to be observed that whilst paragraph 4(a)(iii) requires a showing of both registration and use in bad faith paragraph 4(b) appears not to distinguish between registration and use. Complainant asserts that Respondent's conduct falls within paragraph 4(b)(ii) namely that Respondent registered the domain name in order to prevent Complainant, as the trade mark owner, from reflecting its marks in a corresponding domain name and that the record shows a pattern of such conduct by Respondent.
Absent any rebuttal by Respondent the Panel accepts Complainant's submission and therefore finds that Respondent has registered and has used the domain name in bad faith. The Panel further finds that Respondent's passive holding of the domain name in the absence of any legitimate right or interest constitutes bad faith use within the meaning adopted by the panel in Telstra v. Nuclear Marshmallows Case D2000-0003.
The notoriety of the Swire Group in the Asia/Pacific area makes it inconceivable that Respondent was not aware of Complainant's rights and Respondent's adoption of Complainant's well-known name and mark without any right or interest is itself evidence of bad faith both in registration and use.
7.4 Complainant therefore has established registration and use of the domain name in bad faith.
The Panel therefore concludes and decides:
(i) the domain name is confusingly similar to trademarks in which Complainant has rights;
(ii) Respondent has no rights or legitimate interest in the domain name;
(iii) the domain name has been registered and is being used in bad faith;
(iv) the domain name should be transferred to Complainant.
David Heathcote Tatham Teruo Doi
Dated: December 5, 2000