WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
HSBC Holdings plc. v. George Morina
Case No. D2015-0497
1. The Parties
The Complainant is HSBC Holdings plc. of London, United Kingdom of Great Britain and Northern Ireland ("UK"), represented by Baker & McKenzie, UK.
The Respondent is George Morina of London, UK.
2. The Domain Name and Registrar
The disputed domain name, <hsbc.mortgage> (the "Domain Name"), is registered with GoDaddy.com, LLC. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 23, 2015. On March 23, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same date the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), 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").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 26, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 15, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 16, 2015.
The Center appointed Tony Willoughby as the sole panelist in this matter on April 23, 2015. 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
The Complainant is a member of the HSBC group of companies, whose business was founded in the 19th century and which has traded worldwide under the HSBC name since 1998. It has a very significant reputation and goodwill in the financial services sector and, in particular, banking services.
The Complainant has numerous trade mark registrations covering "HSBC" including by way of example UK registration no.1574618 dated June 8, 1994 (registered November 17, 1995) for all services in class 36.
The Complainant operates websites connected to its <hsbc.co.uk> and <hsbc.com> domain names, registered "before August 1996" and on January 29, 1999 respectively. The website connected to the former contains a section specifically concerned with "Mortgages".
The Domain Name was registered on March 3, 2015 and was originally connected to a Pay-Per-Click ("PPC") parking site featuring links to other sites.
On March 9, 2015 the Complainant wrote to the Respondent drawing attention to its rights and inter alia seeking transfer of the Domain Name. The Respondent responded by email on March 10, 2015 refusing the Complainant's request stating "I do not answer to threatening emails and letters."
On March 12, 2015, following another letter from the Complainant to the Respondent, the Respondent replied: "Usually I do not respond to dead lines and threats. 'www.hsbc.mortgage' will be used for non commercial purposes this is the main reason for registering this domain, meaning we're soon coming with a platform for criticism purposes about HSBC Mortgages."
The Domain Name currently connects to a website the homepage of which features the following text:
"We're soon coming with a platform for criticism purposes about HSBC Mortgages. Notice! We are not related in anyway with HSBC Bank or Mortgages. We have some domains with generic traffic to support HSBC Mortgage with more than 2,000,000 exact searches per month Mortgage and finance related Keywords".
Clicking on the word "domains" in that passage leads to a list of websites all appearing to be financial services websites or, as in the case of <homemortgages.co.uk>, to PPC websites featuring links to financial services websites competing with the services of the Complainant.
5. Parties' Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to its HSBC trade mark, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered and is being used in bad faith within the meaning of paragraphs 4(b)(ii), (iii) and (iv) of the Policy.
The Respondent did not reply to the Complainant's contentions. The significant passages from the only communications from the Respondent are quoted in section 4 above.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove that:
(i) The 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 Domain Name was registered in bad faith and is being used in bad faith.
The factual background to this dispute (see section 4 above) is clear. The Respondent registered the Domain Name precisely because, at the second level, it is identical to the Complainant's HSBC registered trade mark, HSBC being a household name in the UK, where the Respondent resides. At the top level the Domain Name features the word "mortgage", mortgages being a significant part of the Complainant's business.
Originally, the Domain Name was connected to a PPC website featuring links to other sites, some of which, according to the Complainant, led to competitors of the Complainant. The Respondent is aware of the allegation, but has not challenged it.
Following correspondence from the Complainant in which the Complainant sought transfer of the Domain Name the Respondent changed his website to one indicating that he proposed to link the Domain Name to a criticism site directed at the Complainant's mortgages. One of the links on the page (labelled "domains") leads to a list of financial services sites, which appear to offer competing services to those provided by the Complainant or to PPC websites featuring onward links to such websites.
In the absence of any explanation from the Respondent, the Panel accepts on the preponderance of the evidence, the Complainant's contention that the change to the website was a cynical attempt by the Respondent to bamboozle the Panel into accepting that the Respondent's intent all along was to use the Domain Name to connect to a fair, legitimate, noncommercial criticism site.
The Panel finds that the Respondent's intent at the outset was to generate PPC revenue trading on the back of the fame of the HSBC trade mark.
A. Identical or Confusingly Similar
The Panel finds that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights. The Domain Name contains the Complainant's mark in its entirety and if anything the Top-Level Domain suffix ".mortgage" increases the likelihood of confusion.
B. Rights or Legitimate Interests
With reference to the analysis in 6.A. above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
Again with reference to the analysis in 6.A. above, the Panel finds that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <hsbc.mortgage>, be transferred to the Complainant.
Date: May 1, 2015