WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sina.Com (Hong Kong) Ltd. And Sina.Com Online v. Student (a.k.a. John Wong)
Case No. D2001-0730
1. The Parties
The Complainants are Sina.Com (Hong Kong) Ltd. of Room 1801-4, 18th Floor, Vicwood Plaza, 199 Des Voeux Road Central, Hong Kong ("1st Complainant") and Sina.Com Online of 1313, Geneva Drive, Sunnyvale, California 94089, U.S.A. ("2nd Complainant").
The Complainants are represented by Adrian H.K. Yip and Jimmy H.K. Chan of Coudert Brothers, Hong Kong, 39th Floor, Gloucester Tower, the Landmark, 11 Pedder Street, Central, Hong Kong.
The Respondent is Student (or John Wong, the Administrative and Billing Contact) of Room 2820, Chung Tak House, Chung On Estate, Ma On Shan, Hong Kong. The Respondent has taken no part in the proceedings and is not represented by counsel. Nothing more is known of the Respondent.
2. The Domain Name and Registrar
The Disputed Domain Name is <sexsina.com>.
The Registrar is Network Solutions, Inc. of 505, Huntmar Park Drive, Herndon, Virginia 20170, USA.
3. Procedural History
The Complaint was received by the WIPO Arbitration and Mediation Center ("the WIPO Center") by email on June 1, 2001 and in hard copy form on June 6, 2001. The WIPO Center has verified that the Complaint satisfies the formal requirements of the Uniform Domain Name Dispute Resolution Policy ("the Policy"), WIPOís Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") and WIPOís Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules") and that payment was properly made. The Administrative Panel is satisfied that this is the case.
The Complaint was properly filed and notified in accordance with paragraph 2(a) of the Rules.
On June 8, 2001, the Registrar has confirmed that <sexsina.com> ("the Domain Name") was registered through Network Solutions, Inc. and that "Student" ("the Respondent") is the current Registrant and that John Wong, Student is both the Administrative and Billing Contact. The Registrar has also confirmed that the Policy is applicable to the Domain Name and that the Domain Name is in "active status". The Respondent has not requested that the disputed Domain Name be deleted from the domain name database nor sought to terminate their agreement with the Registrar. The Respondent is therefore bound by the provisions of the Policy.
The WIPO Center notified the Respondent of the Complaint by email on June 11, 2001, and by fax and courier on June 12, 2001, in the usual manner, and informed the Respondent that the deadline for sending its Response to the Complainants and to the WIPO Center was July 1, 2001. The email to the Respondent was returned to the WIPO Center with the message that it was an invalid recipient and there was a permanent fatal error in the email address.
There was no response from the Respondent and on July 3, 2001, the WIPO Center sent to the Respondent a "Notification of Respondent Default".
The undersigned Panelist was contacted by the WIPO Center on July 5, 2001, and submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the WIPO Center on July 11, 2001. The Panelist finds that the Administrative Panel (the "Panel") was properly constituted in accordance with the Rules and the Supplementary Rules.
No further submissions were received by the WIPO Center or the Panelist and the date scheduled for the issuance of the Panelís Decision is August 2, 2001.
4. Factual Background
Both the 1st and 2nd Complainants are wholly-owned subsidiaries of Sina.com, which is claimed to be "a leading Internet media and services company for Chinese communities worldwide, offering a full range of Chinese language news, entertainment, e-commerce platforms, financial information and lifestyle tips, with separate websites in the PRC, Hong Kong, Taiwan and North America."
It is also claimed that <sina.com> is the "first Internet company with Chinese emphasis to list on the NASDAQ stock market" in April 2000. According to various regional market surveys, the portals of SINA.com have been constantly ranked as one of the top and most influential websites with a very wide reach of millions of internet users.
Both the 1st and 2nd Complainants are registered proprietors of the trademark and service marks "SINA" and other variations of "SINA" (e.g. SINAMALL, SINANET, Chinese version of "SINA") in various Classes of goods and services (including internet and media related services).
Most, but not all, of these trademarks were registered before the registration date of the disputed Domain Name (which, according to the records attached to the Complaint, is January 5, 2000).
The Respondent is stated as "Student" and it is suggested that "it is apparent that this is only a mistaken reference to John Wong, who is registered as the Administrative (and Billing) Contact and is described as "a student". This person, John Wong, does not have any connection whatsoever with SINA.com and his registered address is a residential address in the New Territories in Hong Kong.
Although the disputed Domain Name is said to be registered by "a Student", it is being used as the Internet address of a pornographic website managed by Super Ease Development Limited ("Super Ease"), a company incorporated in Hong Kong. Super Ease has also registered several other domain names incorporating the Complainantsí registered mark "SINA", including the Domain Names: <teasina.com>; <idolsina.com<; <foxsina.com>; <jobsina.com> and <beautysina.com>. These five other disputed Domain Names are the subject of a separate consolidated complaint filed with the WIPO Center against Super Ease under Case No. D2001-0731.
On October 12, 2000, Counsel for the Complainants, Coudert Brothers, wrote to the Respondent by registered post requesting, inter-alia, that the Respondent cease and desist use of the disputed Domain Name and delete all references to "SINA" in the "sexsina.com" website. The Respondent did not reply to the letter from Coudert Brothers.
5. Partiesí Contentions
A. The Complainant
The Complainants contend that the disputed Domain Name <sexsina.com> is a combination of the word "Sex" and the invented trademark "Sina" which the Complainants have registered both as a trademark and service mark in a wide range of Classes of goods and services in Hong Kong, the PRC, Taiwan and the USA. The Complainants cite Section 27(A)(1) of the Hong Kong Trade Marks Ordinance and submits that by reason of the registration of "Sexsina" and the use of the word "Sina" in the pornographic website, the Respondent (and Super Ease) are in breach of Section 27(A)(1) of the Hong Kong Trade Marks Ordinance as such registration and the use thereof would result in a likelihood of confusion among Internet Users. The Complainants also argue that the relevant Internet-using public might reasonably associate the "sexsina.com" site as being part of SINA.comís Internet group and as such, the existence of the disputed Domain Name would "evidently increase the likelihood of confusion caused by the Respondentís use of the "SINA" mark in the disputed Domain Name".
Additionally, the Complainants contend that the Respondent has no rights or legitimate interests in respect of the disputed Domain Name and believes that the disputed Domain Name was registered and is being used "in bad faith".
To support their reasoning, the Complainants have suggested and raised the following:-
- The intention for the registration of the disputed Domain Name was clearly to attract financial gains from Internet users by creating a likelihood of confusion with the Complainantsí "SINA" mark or misleadingly diverting customers or by tarnishing the Complainantsí "SINA" trademarks.
- The Respondent failed to respond to the letter from the Complainantsí lawyers.
- In a section called "Crazy Night" on the <sexsina.com> website, the title banner expressly states that the name of the area is "SINA CYBERSEX COLLECTIONS AREA".
- Case law supports "the rule that a disputed Domain Name will contravene a complainantís mark if the disputed Domain Name comprises the Complainantsí mark, in one form or another".
- Case law supports a finding of bad faith where the Respondent "knew or should have known of" the use of the trademark prior to registering the Domain Name.
B. The Respondent
The Respondent has not responded.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant has the burden of proving 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 respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
Identical or Confusing Similarity
Tackling the first limb of "identical or confusingly similarity", the Complainant quotes extensively from a well developed trend of case law which are instructive on the issues of whether descriptive or generic terms used as a prefix or suffix in a domain name are capable of enhancing the likelihood of confusion with the otherwise distinctive or well-known mark (examples include Dell Computer Corporation v. Alex and Birgitta Ewaldsson [WIPO Case No. D2000-1087]; Standard Chartered PLC v. Purge I.T. [WIPO Case No. D2000-0681]; Lancome Parfums et Beaute & Cie v. SL, Blancel Web [WIPO Case No. D2001-0028]; Yahoo! Inc. v. Yahoo-Asian Company Limited [WIPO Case No. D2001-0051]; America Online, Inc. v. Yeteck Communication Inc. [WIPO Case No. D2001-0055] and Telstra Corporation Limited v. Ozurls [WIPO Case No. D2001-0046]. In these cases, the Complaint was upheld where the Respondent merely added a descriptive or generic term to an otherwise distinctive or well-known trademark.
In the case of America Online, Inc. v. Yeteck Communication Inc. [WIPO Case No. D2001-0055], it is recognized that the adaptation of a recognized trademark in a Domain Name by variation in spelling or by the deletion, addition or insertion of letters, words or acronyms does not escape a finding of confusing similarity. (See this decision at page 5 for the precedent WIPO cases involving the complainant AOL.).
The Panel notes that the Complainants and their affiliated organizations have, since 1995, registered a wide variety of domain names incorporating the "SINA" trademark including <sinanet.com>, <sina.net>, <sinamail.com>, <sina.com>, <163sina.com>, <sina163.com>, <sinaman.com>, <sinagirl.com<, <sinatown.com>, <sinablvd.com>, <sinacity.com>, <atsina.com> etc. These variations of ĎSINA" domain names include generic and numeric prefixes and suffixes. In this case and borrowing the language of precedent case law, the addition of the generic word "sex" to "sina.com" does not "ward off the spectre of confusing similarity" as there is nothing in the additional word "sex" that alters the "fundamental character" or "essence" of the domain name, as referring to some aspect of the Complainants and its marks.
The Panel also acknowledges the strong reputation of the "SINA" trademark in the marketplace, especially in Chinese speaking jurisdictions like Hong Kong where the Respondent is based. When these factors are coupled with the wide registration of the "SINA" trademarks in the Asian and US regions and the wide business scope of the "SINA" group of companies, the Panel accepts the Complainantsí argument that the relevant Internet-using public would likely be confused by the Respondentís use of the "SINA" mark in the Disputed Domain Name as the association between "SINA" and the Complainantsí "SINA" trademarks and business is very strong.
In the case of America Online, Inc. v. GSD Internet [WIPO Case No. D2001-0629], the Panelist took the view that a visitor to the sites of "aolteen" and icqporn" would not be unduly surprised to find himself/herself at a pornographic site. He also does not believe that any significant number of people will believe that the Domain Names have anything to do with the Complainant. In that case, the Panelist did not find, on the evidence before him, that the suffixes indicated a service product of the Complainant.
In the present case, when applying the usual tests under trademark law and passing off, the evidence before the Panel suggests that a significant number of people in the Internet community might indeed be led to believe that <sexsina.com> is related to the Complainants for the reasons mentioned above.
The Panel therefore concludes that the domain name <sexsina.com> registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainants have rights.
Rights or Legitimate Interests of the Respondent
Paragraph 4(c) of the Policy stipulates how a Respondent can effectively demonstrate rights or interests in the Disputed domain name.
"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."
In this case, the Respondent made no effort to reply to the Cease and Desist letter sent to them by Coudert Brothers. They also made no effort to respond to the present Complaint.
The Panel accepts the Complainantsí argument that "SINA" is an invented wordmark, which is not a word which traders could legitimately choose unless they were intending to create a false association with the Complainants. The "SINA" mark is neither an acronym or dictionary word which could logically be attributed or linked to the pornographic business of the Respondent and its related party, Super Ease.
In the circumstances and in accordance with Clause 14 of the Rules, the Panel is led to draw a negative inference from such inaction by the Respondent and concludes that the Respondent has no rights or legitimate interests in respect of the domain name (in accordance with paragraph 4(c) of the Policy).
Under paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith.
"(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."
The Complainant quotes from a series of cases (examples include SportSoft Golf Inc. v. Hale Irvwinís Golfersí Passport [Case FA94956]; Marriot International, Inc. v. John Marriot [Case FA94739]; Lancome Parfums et Beaute & Cie v. SL, Blancel Web [WIPO Case No. D2001-0028]; America Online, Inc. v. Yeteck Communication Inc. [WIPO Case No. D2001-0055]) which established a finding of bad faith where the respondent "knew or should have known" of the use of the trademark prior to registering the domain name.
The Respondentís acts in registering and using the domain name <sexsina.com>, in itself, is clearly in "bad faith" as the Respondent is resident in Hong Kong where the Complainants have a substantial business presence for many years and an established goodwill for the (invented) "SINA" trademark and trade name.
The Respondentís "bad faith" is more obvious and compounded by the failure to reply both to the Cease and Desist letter from Coudert Brothers and the present Complaint.
The Respondentís "link" or "collusion" with Super Ease in managing the pornographic website for "commercial gain" is yet another strong factor of "bad faith".
Another related factor of "bad faith" can be seen in the registration by Super Ease of a series of "SINA" domain names (i.e. <teasina.com>; <idolsina.com>; <foxsina.com>; <jobsina.com> and <beautysina.com>), which is the subject of a separate Complaint by the Complainants under WIPO Case No. D2001-0731. These additional registrations, smack of opportunistic and blatant capitalization on reputable and famous names for monetary benefits and falls within the ambit of "bad faith" stipulated under paragraph 4(b)(iv) of the Policy.
"Considering all the circumstances of the Respondentís behaviour" (see case of Telstra Corporation Limited v. Nuclear Marshmallows [WIPO Case No. D2000-0003]), the Panel concludes that the Respondent has registered and used the disputed <sexsina.com> domain name in bad faith.
In light of the abovementioned findings, the Panel decides:
(a) that the <sexsina.com> domain name registered by the Respondent is identical or confusingly similar to the "SINA" trademarks to which the Complainants have rights;
(b) that the Respondent has no rights or legitimate interests in respect of the <sexsina.com> domain name; and
(c) that the Respondentís <sexsina.com> domain name has been registered and is being used "in bad faith".
As such, the Panel requires that the registration of the <sexsina.com> domain name be transferred to the first Complainant.
Dated: August 1, 2001