WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Airport Authority v. Hong KongAirport Inc.
Case No. D2001-1417
1. The Parties
The Complainant is Airport Authority, of Airport Authority Building, 1 Cheong Yip Road, Hong Kong International Airport, Lantau, Hong Kong, represented by Adelaide Yu Esq., of Deacons, Hong Kong.
The Respondent is HongKongAirport Inc., of 23852 Pacific Coast Highway, Suite 720 Malibu, California 90265, U.S.A, represented by Robert L. Risley Esq., of Pasadena, California, U.S.A.
2. The Domain Name and Registrar
The disputed domain name is <hongkongairport.com>.
The Registrar is Dotster, Inc., of Vancouver, Washington, U.S.A.
3. Procedural History
This is an administrative proceeding pursuant to 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, approved by ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules") of the WIPO Arbitration and Mediation Center ("the Center").
The Complaint was received by the Center by email on November 30, 2001 and in hard copy on December 4, 2001. It was acknowledged on December 5, 2001 and on that day registration details were sought from the Registrar, which replied on December 12, 2001 stating that it had received a copy of the Complaint from the Complainant; that the disputed domain name is registered with it in the name of the Respondent and that the record was created on January 4, 1998 and expires on January 3, 2004. The Registrar also stated that the Policy applies to the disputed domain name, the domain name is "active" and the language of the Registration Agreement is English.
On December 13, 2001, the Center satisfied itself that the Complaint complied with all formal requirements (including payment of the prescribed fee) and that day formally dispatched copies of the Complaint by post/courier (with enclosures) to the Respondent at the address as recorded with the Registrar and by email (without attachments). The Center included with that material a letter dated December 13, 2001, containing notification of the commencement of this administrative proceeding, with copies (of the Complaint without attachments) to the Complainant, the Registrar and ICANN.
The last day specified by the Center for a Response was January 2, 2002. A Response was filed by email on December 29, 2001 and in hard copy on January 4, 2002. On January 7, 2002 the Center acknowledged receipt of the Response.
The Complainant having requested a three-member panel, on March 8, 2002 the Center formally notified the parties of the appointment of the undersigned as panelists, each panelist having submitted a Statement of Acceptance and Declaration of Impartiality and Independence. That day the Center transmitted the case file to the Panel and notified the parties of the projected decision date of March 22, 2002. The Panel subsequently extended the decision date to March 27, 2002 under Rule 10(c).
The Panel is satisfied that the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules; payment was properly made; the Panel agrees with the Centerís assessment concerning the Complaintís compliance with the formal requirements; the Center discharged its responsibility under paragraph 2(a) of the Rules to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint; a Response was filed within the time specified in the Rules and the Panel was properly constituted.
The language of the proceedings is English.
4. Factual Background
Aviation in Hong Kong began in 1925 at the Hong Kong Kai Tak Airport. On October 11, 1989, it was announced that a new airport for Hong Kong would be constructed at Chek Lap Kok.
The disputed domain name was registered on January 4, 1998.
The new airport opened on July 6, 1998 and is now the only airport in Hong Kong. It handles over 25 million passengers annually and is operated and maintained by the Complainant, a statutory body established on December 1, 1995 and wholly owned by the Hong Kong Special Administrative Region Government.
With effect from July 10, 1998 the Complainant became on January 27,2000 the registered proprietor in Hong Kong of the trademark "Hong Kong International Airport", and its equivalent Chinese Characters, in device form in classes 35, 36, 37, 39, 40 and 42. The registrations in classes 35 and 36 disclaimed exclusive rights in the Chinese characters and the words "Hong Kong International Airport".
In addition to its registered trademarks, the Complainant owns numerous domain names, all of which are directed to the website of <hkairport.com>, the official website of the Complainant and the Hong Kong International Airport.
5. Partiesí Contentions
The Complainant requests the Panel to direct that <hongkongairport.com> be transferred to the Complainant upon the following legal grounds:
In addition to its registered trademarks, the Complainant has common law rights in the name "Hong Kong International Airport", under which it trades, using that name extensively. The Complainant has a significant reputation in the name "Hong Kong International Airport" throughout the world, enhanced as a result of considerable advertising and promotion by the Complainant (approximately US $4 million for 2001/2).
The Complainant submits that "Hong Kong Airport" is also an unregistered trade mark or service mark of the Complainant.
The disputed domain name is confusingly similar to the Complainantís "Hong Kong International Airport" mark. In Hong Kong there is only one airport. The absence of the word "International" from the domain name <hong kong airport> is insignificant to members of the public and hence insufficient to prevent consumer confusion. Further, the main, essential and distinctive element of the trademark "Hong Kong International Airport" is "Hong Kong Airport".
As a result of the amount of both human traffic and flights passing through and the worldwide significant reputation established in the name "Hong Kong International Airport" and because there is only one airport in Hong Kong, it is beyond doubt that many visitors will identify "Hong Kong International Airport" as "Hong Kong Airport". Therefore, the use of "Hong Kong Airport" as the domain name creates a likelihood of confusion that the site is associated and/or connected with Hong Kong International Airport. The website of the Domain Name http://www.hongkongairport.com is also confusingly similar to http://www.hkairport.com which the Complainant uses as the official site for Hong Kong International Airport.
There is a risk that the public will be confused between the Complainantís <hkairport.com> website and Respondentís <hongkongairport.com> website. Members of the public seeking information about "Hong Kong Airport" would probably use "hongkongairport" as the URL which will bring Internet users to the Respondentís website. If members of the public looked no further than that site they might assume, incorrectly, that the Complainant does not have an active website.
The Respondent is not a licensee of the Complainant, nor is the Respondent otherwise authorized to use the Complainantís registered or common law trademarks. The Respondent has no connection whatsoever with the name "Hong Kong Airport".
As of March 19, 2001, the registrant of the disputed domain name was Yomtobian Enterprises Inc. of PO Box 260920 Encino, California. On March 29, 2001 the Complainant wrote to Yomtobian Enterprises Inc. asking it to cancel the registration but received no reply. By June 12, 2001, the registrant had changed from Yomtobian Enterprises Inc. to Movie Name Company, also of PO Box 260920 Encino, California, with Yomtobian Enterprise [sic] Inc. of PO Box 260920 Encino, California as Administrative Contact and Yomtobian Enterprises Inc. of PO Box 260920 Encino, California as Billing Contact.
On August 1, 2001, the Complainantís representative wrote to Movie Name Company asking it to transfer the disputed domain name to the Complainant. This was refused.
The registration details for the disputed domain name have changed constantly since Movie Name Company first became aware of the Complainantís complaint on August 1, 2001. By October 8, 2001, the address for the registrant, Movie Name Company, had changed to the Malibu street address shown in paragraph 1 above for the Respondent. The Administrative and Billing contacts had changed to HongKongAirport Inc. at that same street address. By November 28, 2001 the registrant had changed from Movie Name Company to the Respondent while all other registration details remained the same as those of October 8, 2001. The webpages of the disputed domain name also have remained unchanged.
A company search conducted for the Complainant reveals there is no record for HongKongAirport Inc. in any State of the United States of America. Accordingly, it is submitted that Movie Name Company and the Respondent are one and the same.
As the Respondent is not a company/corporation in existence and in light of the change in registrant to "HongKongAirport Inc." only after the Complainant complained about the disputed domain name, the Complainant submits that the Respondent changed the name of the registrant from Movie Name Company to "HongKongAirport Inc." solely to substantiate its right to use its registration of the disputed domain name and use it to establish a basis upon which it could claim a legitimate right to the disputed domain name. The Respondent obtained the registration solely to prevent the Complainant from registering the name and exploiting it for itself.
The website of the disputed domain name engages in domain management service and does not carry on any business in relation to Hong Kong or an airport. The offering of services has nothing intrinsically to do with the disputed domain name itself.
In the source code for the website http://www.hongkongairport.com, the description meta name and keywords meta name do not make any reference to "Hong Kong" or "Hong Kong Airport" and are the same as for those of http://www.thriftys.com. As the website of the disputed domain name is a direct replica of http://www.thriftys.com, the Complainant submits that the Respondent has no genuine intention to offer goods or services at http://www.hongkongairport.com and it registered the disputed domain name with the intent that Internauts who search for "Hong Kong Airport" will go to the website http://www.hongkongairport.com. The Respondent cannot show that it is making a legitimate real and fair use of the name without having any intention to gain commercially or to mislead consumers or to tarnish the Complainantís name.
The disputed domain name has been registered and used by the Respondent and Movie Name Company in bad faith for the following reasons:-
(a) The Respondent has registered or acquired the disputed domain name primarily for the purpose of selling it to the Complainant as owner of the "Hong Kong Airport" name for a valuable consideration far in excess of the out-of-pocket costs directly related to the disputed domain name: on July 19, 2001, through <afternic.com> (which acts as an exchange for domain name sales and purchases) the Complainant offered anonymously to buy the disputed domain name for US $500.00 On the same day, Movie Name Company stated, through Afternic, that its asking price was US $175,000.00.
(b) By using the disputed domain name with which the Respondent has no connection whatsoever, the Respondent is attempting to attract for financial gain, Internet users to the http://www.hongkongairport.com web site, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of the http://www.hongkongairport.com web site
(c) Movie Name Company and the Respondent have not been honest in providing registration details to the Registrar:
(i) According to the WHOIS searches of March 19, 2001 and August 2, 2001, the fax number stated by Yomtobian Enterprises Inc. and Movie Name Company was 123-123-1234. There is no such area code as "123" in the U.S.A and the fax number "123-123-1234" is most unlikely to exist.
(ii) The Respondent is not a company/corporation in existence.
(d) Movie Name Company engages in the business of sale of domain names.
B. The Respondent
This dispute is not properly before the Center because the disputed domain name was registered before the Policy was adopted. The Policy cannot be incorporated by reference into a registration agreement when the Policy did not exist. Dotster is not the Registrar.
Registration of the trademark was effected two years after the Respondent registered the disputed domain name. The registered mark is very specific, in a black background circle with Chinese characters around the periphery of the circle, with an airline and runway in the center. The disputed domain name has none of these characters or symbols. The services of the Respondent differ from those with respect to which the Complainant's mark is registered.
The Complainantís trademarks are not registered in the United States, Europe, other Asian country or elsewhere. The design of the mark is clearly part of the registration.
The Complainant owns 44 domain names which direct traffic to the Complainant's site <hkairport.com>. All of these domain names were registered after the Respondent registered its domain name on January 4, 1998. It is unfair, unreasonable and illegal now to seek usurpation, forfeiture and transfer of a properly and legally registered domain name.
The Complainant provides no proof that it holds common-law rights in Hong Kong Airport, let alone rights in the Respondentís name http://www.hongkongairport.com.
The Complainant's name "Hong Kong International Airport" is clearly not identical to the Respondent's registered domain name <hongkongairport.com>. Although the names are alike, they are not confusingly similar.
The Respondent has legitimate rights and interests in the disputed domain name in that it is now used and has been for four years to promote Respondent's legitimate business interests in the United States, namely to assist its customers in registering domain names, providing advertising and web site development. The Respondent's rights flow from its previous registration (before that of the Complainant), its long use, its investment in promoting the name, in its customer name recognition, and its customers' long use of its registered name.
In a declaration made for the purposes of this proceeding (received after the deadline for the Response but which the Panel admits as evidence), Mr. Saeid Yomtobian states that he is President of Yomtobian Enterprises, Inc., and of the Respondent, "hongkongairport.com, Inc." [sic]. He says his attorney asked him to locate evidence supporting his company's claim of expenses that went towards the procurement of servers, data systems, programmers, web site development, incorporation, registration of trademarks, commercial promotion and advertising. He located a number of cancelled checks, totaling US $175,921.00, all of which expenditures were made during the year 2001. Similar expenditures were made in 1999 and 2000 and lesser amount was spent in 1998. The attached copies of checks were all drawn on the account of Yomtobian Enterprise [sic].
A domain name registered before that of a complainant cannot be in bad faith. If that were the law, anyone could register a name and then with enough "economic muscle" attack the registered name as usurpation tactic. The procedure would violate the doctrine of "first in time, first in right", which is applicable in this case.
The Respondent has not secured this web site for the purpose of transferring the disputed domain name to the Complainant. Respondent did not even know about the Complainant until the Complainant contacted him. The contact was made because Respondent was legitimately using the website to promote its Internet and web site businesses and certainly not for the purposes of selling it to the Complainant. The Respondent refused the Complainantís offer to buy the disputed domain name because the price did not cover the cost of creation and maintenance expenses or its existing and future revenue and net profits.
The disputed domain name was not registered to prevent the Complainant from using its mark and indeed the Complainant uses <hongkonginternationalairport.com> now. The Respondent and Complainant are not competitors. The registration of the disputed domain name by the Respondent was certainly not done to disrupt the Complainant's business. The Respondent has no interests and has never had any interests in the airport businesses.
The Complainant's mark is unique and distinct, with specific graphic characteristics, none of which are used by the Respondent. There is no possible gain by the Respondent or likelihood of confusion with the Complainant's mark. Hong Kong is a proper name and a generic word, used throughout the world in various industries to indicate a source of goods or services.
The Respondent's domain name was properly and legally registered by the Respondent in 1998, long before the Complainant registered any of its names and even before it obtained its trademark.
6. Discussion and Findings
Under paragraph 15(a) of the Rules, the Panel must decide this Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
At the time of the Respondentís registration of the disputed domain name in or about June 2001 (under the name Movie Name Company Ė see below) the Policy was incorporated by reference into all registration agreements. The Panel accepts the information provided by Dotster, Inc. that the Policy applies to the disputed domain name and that Dotster, Inc. is the Registrar.
To qualify for cancellation or transfer, a Complainant must prove each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Rights in a trademark
As a matter of construction, the relevant date for determining whether a Complainant has rights in a mark, for the purposes of paragraph 4(a)(i) of the Policy, is the date of the filing of the Complaint. See eGalaxy Multimedia Inc v. T1 (NAF Case No. FA0111000101823).
As at the date of the filing of the Complaint, the Complainant had rights in the registered trademark "Hong Kong International Airport" and its Chinese Characters in device form. The Respondent disputes that the device registration is sufficient to give the Complainant rights in the words within the device. It is not clear to the Panel from the copies of the trade mark certificates supplied by the Complainant (Complaint Ex. 4) whether the registrations without disclaimer provide trademark protection for the words standing alone. It is unnecessary for the Panel to form a concluded view on this because the Complainant does not need to rely upon its registered rights.
Although the words "Hong Kong International Airport" are descriptive, descriptive words are nevertheless capable of becoming distinctive. In Federal Court of Canada v. federalcourtofcanada.com (eResolution Case AF-0563) a three-member panel found the complainant to have common law trademark rights in the descriptive name Federal Court of Canada, based on extensive and continuous use, that name having been conferred by statute and the court being the only one by that name in Canada. See also Banco de Chile S.A. v. Eric S. Bord, Esq. (WIPO Case No. D2001-0695).
Here, the Complainant has satisfied the Panel that, as at the date of the filing of the Complaint, that combination of words, standing alone, through extensive use by the Complainant subsequent to 1998, has become distinctive worldwide of the airport services provided by the Complainant, which operates the only airport in Hong Kong.
The Panel finds the Complainant to have common law rights in the mark "Hong Kong International Airport", as well as rights from its several registrations.
Identity or Confusing Similarity
The Complainant does not claim the disputed domain name is identical to a trademark in which the Complainant has rights. It submits that the disputed domain name is confusingly similar to its "Hong Kong International Airport" mark because in Hong Kong there is only one airport and because the absence of the word "International" in the disputed domain name is insignificant to members of the public and hence insufficient and ineffective to prevent consumer confusion. The Panel agrees that the essential and distinctive element of the trademark "Hong Kong International Airport" is "Hong Kong Airport".
The test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the other marketing and use factors usually considered in trademark infringement or unfair competition cases: Koninklijke Philips Electronics N.V. v. In Seo Kim (WIPO Case No. D2001-1195); Energy Source Inc. v. Your Energy Source (NAF Case No. FA101000096364); Vivendi Universal v. Mr. Jay David Sallen and GO247.COM, Inc. (WIPO Case No. D2001-1121) and the cases there cited.
The Panel finds the disputed domain name <hongkongairport.com> is confusingly similar to the Complainantís common law trademark "Hong Kong International Airport".
The Complainant has established this element of its case.
The announcement that a new airport for Hong Kong would be built had been made in 1989.
There is no evidence of use by the Complainant of its common law mark before the disputed domain name was registered (by Yomtobian Enterprises) in 1998. By the time the Respondent HongKongAirport Inc. became the registrant of the disputed domain name in 2001, however, the Complainant had made extensive use of its common law mark, which had by then become distinctive worldwide of the Complainant and its services.
The Respondent is not a licensee of the Complainant, nor otherwise authorized to use the Complainantís common law trademark. The Respondent has no connection whatsoever with the name "Hong Kong Airport".
These circumstances are sufficient to constitute a prima facie showing by Complainant of absence of rights or legitimate interests in the disputed domain name on the part of the Respondent. The evidentiary burden, therefore, shifts to the Respondent to show that it does have rights or legitimate interests in that name whether by reference to the examples set out in paragraph 4(c) of the Policy or otherwise: Do The Hustle, LLC v. Tropic Web (WIPO Case No. D2000-0624) and the cases there cited. Respondent has made no such showing.
The Respondent is not using the disputed domain name in connection with any goods or services relating either to Hong Kong or to airports. It assists its customers in registering domain names, providing advertising and website development. Respondent has not demonstrated any legitimate linkage between those services and the domain name at issue. On the contrary, the conduct of activities under a domain name that falsely conveys an association with different activities or a different source cannot demonstrate rights or legitimate interest in the domain name.
The Complainant has established this element of its case.
Bad faith registration and use
The Complainant asserts that Movie Name Company (which, as registrant, sought US$175,000 from the Complainant for the disputed domain name) and the Respondent are one and the same. Despite the Respondentís initial submission that Movie Name Company has nothing to do with this case, there is persuasive support for the Complainantís assertion in the Response, which states unequivocally: "The Respondent refused the Complainantís offer to buy the disputed domain name". On the material before the Panel, the only offers made by the Complainant to buy the disputed domain name were made to Movie Name Company. Further, the Declaration of Mr. Yomtobian, President of the Respondent, is directed to resisting any finding of bad faith under paragraph 4(b)(i) of the Policy by demonstrating that the figure of US $175,000.00 sought by Movie Name Company represents the Respondentís documented out-of-pocket expenses directly related to the domain name. Accordingly the Panel finds that Movie Name Company and the Respondent are one and the same.
Despite references in the Response to the effect that Respondent registered the disputed domain name in 1998, and despite the fact that a search conducted for the Complainant failed to reveal incorporation of the Respondent in any State of the United States, the Panel is unable to conclude that the Respondent and Yomtobian Enterprises, Inc. are also one and the same. Mr. Yomtobian himself recognizes that they are separate and distinct legal entities, since he declares that he is President of both Yomtobian Enterprises, Inc. and of the Respondent.
The Panel therefore concludes that the domain name was registered in 1998 by Yomtobian Enterprises, prior to any demonstrated trade mark use by the Complainant of its common law mark but after the announcement of the construction of the new airport. After the Complainant had acquired common law rights in the mark "Hong Kong International Airport", it wrote to Yomtobian Enterprises, Inc. in March 2001 (Complainantís Ex. 9) seeking vacation of the disputed domain name. Shortly thereafter the disputed domain name was registered by Movie Name Company. The Administrative Contact for Movie Name Company was Yomtobian Enterprise [sic], Inc. and the Billing Contact was Yomtobian Enterprises, Inc, both having the email address <mailto:email@example.com>.
The Panel infers that through the knowledge of Mr. Yomtobian, President of both entities, Movie Name Company, when it registered the disputed domain name, was aware of the Complainant as operator of the Hong Kong International Airport. The Panel does not accept that the Respondent did not know about the Complainant until the Complainant contacted the Respondent.
By 2001 the Complainant had acquired common law rights in the mark Hong Kong International Airport and the reputation of that mark was worldwide. The Panel finds it is more likely than not that Movie Name Company (one and the same as the Respondent) knew of the Complainantís common law mark "Hong Kong International Airport" when it registered the disputed domain name following its transfer from Yomtobian Enterprises, Inc. in June 2001.
Within a month after having registered the disputed domain name, the Respondent sought US $175,000.00 for it. The checks attached to Mr. Yomtobianís declaration are all drawn on the account of Yomtobian Enterprise and accordingly do not have any apparent bearing on the out-of-pocket expenses of the Respondent. [Even if they did, those checks, totaling US $175,921.00, cover a much wider range of expenses than those directly related to the disputed domain name].
The Panel finds that the Respondent registered the disputed domain name under the name Move Name Company in or about June 2001 primarily for the purpose of selling the disputed domain name to the Complainant for valuable consideration in excess of its documented out-of-pocket expenses directly related to the disputed domain name. Under paragraph 4(b)(i) of the Policy, this finding constitutes evidence of both bad faith registration and bad faith use.
The Respondent acknowledges that "Hong Kong is a proper name and a generic word, used throughout the world in various industries to indicate a source of goods or services". The Panel finds that the descriptive nature of the disputed domain name is such that it cannot be used in relation to the airport in Hong Kong without infringing the Complainantís rights nor can it be used in connection with non-airport related services without misleading the public. See Banco de Chile S.A. v. Eric S. Bord, Esq WIPO Case No. D2001-0695. Yet there is nothing about the Respondent or its domain management services remotely connected with Hong Kong, nor with airport services. The Respondent concedes it has "no interests and has never had any interests in the airport businesses".
The Panel concludes that the Respondent is using the disputed domain name for the purpose of attracting to its own website, for commercial gain, Internet users who the Respondent knows are seeking an "official" site of the airport at Hong Kong, and is thus creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation or endorsement of Respondent's website. This constitutes evidence of bad faith registration and use under paragraph 4(b) (iv) of the Policy.
The Panel finds that the Respondent has acted in bad faith both in registration and use of the disputed domain name.
The Complainant has established this element of its case.
Pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel directs that the domain name <hongkongairport.com> be transferred to the Complainant.
Alan L. Limbury Esq.
John R. Keys, Jr., Esq.
Tony Willoughby, Esq.
Dated: March 27, 2002