The Complainant is HSBC Holding, plc. of Birmingham, United Kingdom of Great Britain and Northern Ireland, represented internally.
The Respondent is c/o HSBCINTERNATIONAL.COM of Vancouver, United States of America (the “First Respondent”), Juanita Saya of Makati City, Philippines (the “Second Respondent”), and Abby Holdings of Makati City, Philippines (the “Third Respondent”).
The disputed domain name <hsbcinternational.com> is registered with MyDomain, Inc. d/b/a NamesDirect.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 24, 2009. On July 27, 2009, the Center transmitted by email to MyDomain, Inc. d/b/a NamesDirect a request for registrar verification in connection with the disputed domain name. On July 27, 2009, MyDomain, Inc. d/b/a NamesDirect transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 29, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 14, 2009. The Center verified that the Complaint together with the amended 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 17, 2009. In accordance with paragraph 5(a) of the Rules, the due date for Response was September 6, 2009.
The Center received a response from Abby Associates on behalf of the Third Respondent on August 19, 2009 and further communications from a person named J. Calamba from Hardwick Stutely Blackrose Compton International Publishing & Media Partners on September 7, 9 and 22, 2009, from Abby Associates on behalf of the Third Respondent on September 14, 2009 and September 23, 2009 and from the Complainant on September 16, 2009.
The Center appointed Brigitte Joppich as the sole panelist in this matter on September 14, 2009. 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 paragraph 7 of the Rules.
The Complainant is one of the largest and well-known banking and financial services organisations in the world, and the Group's international network comprises approximately 9,500 offices with over 100 million customers in many countries worldwide. The Complainant's name is derived from The Hongkong and Shanghai Banking Corporation Limited, its founding member that was established in 1865.
The Complainant owns numerous registrations for its HSBC trade marks in many countries worldwide, inter alia, claiming protection for financial services, in particular the following trade mark registrations for HSBC (the “HSBC Marks”):
- Philippines Registration No. 4-1997-124278 HSBC, registered on October 21, 2002; and
- US Registration No. 2000657 HSBC, registered on September 17, 1996.
The Complainant provides its services on the Internet mainly at “www.hsbc.com”.
The disputed domain name was registered on February 26, 2004 by the Third Respondent. The disputed domain name was used originally in connection with a single page website providing details of an offshore private equity investment company known as Lloyds Offshore Capital and directing visitors that required further information to contact “info@lloydsoffshore.com”. On July 10, 2008, the disputed domain was used in connection with a website providing information on Horizon Star Bizco International, purporting to provide bespoke business management systems and that “all clients will be notified when site and links go live”. On December 12, 2008, the website at the disputed domain name no longer gave details of Horizon Star Bizco but instead appeared to show the DNS Server's (Cyber Dynamics) holding page. On March 16, 2009, further amendments had been made to the website at <hsbcinternational.com>, which currently provides information on a company named Hardwick Stutely Blackrose Compton International Publishing & Media Partners.
The Complainant provided evidence that the Third Respondent used to be the registered owner of numerous domain name registrations, including <lloydsoffshore.com>, <lloydsbankinternational.com>, <abbeyinternationalbank.com>, and <abbyinternationalbank.com>. Lloyds TSB Offshore Ltd is part of the Lloyds Banking Group and offers offshore banking services. Abbey International is part of the Santander Group and also offers offshore banking services.
The Complainant sent a letter to the Third Respondent on March 26, 2008 relying on its rights in the HSBC Marks and asking the Third Respondent to state its intentions in relation to the domain name in order to verify whether such name had been registered for a legitimate use. The Third Respondent did not reply to this letter.
After receipt of another letter from the Complainant dated May 23, 2008, the Third Respondent replied on May 26, 2008 suggesting that the Complainant's email was a “fraudulent attempt to obtain a valuable domain name by deception”. On May 29, 2008, the Third Respondent again wrote to the Complainant stating that it was an expert and professional marketing specialist and that the domain name fitted “our clients' business name perfectly”, also explaining that it had another client known as Lloyds Offshore Capital for whom it had also registered a domain name.
In the following months the Complainant and the Third Respondent exchanged correspondence dealing with the Third Respondent's type of business and its rights in the disputed domain name, as well as the rights of Horizon Star Bizco in such name.
On September 9, 2008, the Third Respondent invited the Complainant to make an offer to purchase the disputed domain name. The Complainant replied on September 16, 2008, offering a sum representing the out of pocket expenses paid by the registrant. On November 4, 2008, the Third Respondent wrote again inviting the Complainant to file a UDRP complaint or alternatively “offer a sensible sum.” By email dated November 7, 2008, the Complainant offered the amount of EUR 500 to the Third Respondent. On January 19, 2009 the Third Respondent rejected this offer as “condescending” and submitted that of “many tiresome offers received two have addressed the matter more realistically and include covering essential costs of reorganisation……One of these offers covers some of these expenses…….And the leading party at USD 35 000 (offer refused) is an intellectual property company.” On that basis, the Third Respondent concluded that there were three options for the Complainant: “1) Stand down […] 2) Improve your offer to purchase so that it's actually worth consideration 3) Go to WIPO […]”.
On February 8, 2009 the WhoIs information for the disputed domain name was updated to the First Respondent, which is a privacy service offered by the concerned registrar.
Further correspondence between the Complainant and the Third Respondent dealt with alleged “hacking attempts” by the Complainant.
Firstly, the Complainant contends that the Second and Third Respondents engaged in “cyberflying” in an attempt to legitimise the registration of the disputed domain name and to prevent a finding of transfer to the Complainant.
Furthermore, the Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:
(1) The disputed domain name is identical or confusingly similar to the HSBC Marks because the addition of a geographical identifier to an existing trade mark, including the prefix “.com”, is insufficient to rebut the assertion that a domain name is identical or confusingly similar to a trade mark or service mark in which a complainant has rights.
(2) The Complainant contends that the Respondents have no connection or affiliation with the Complainant and have not received any license or consent, express or implied, to use either the mark HSBC or the trading style “HSBC International” in a domain name or in any other manner, that the Respondents cannot demonstrate that they have been commonly known by the domain name, that the Respondents are not making a legitimate noncommercial or fair use of the domain name, that the Third Respondent merely purported to have registered the domain name for a client but did not provide any evidence proving that it had a legitimate reason for registering the disputed domain name and using it, although the Complainant had asked to provide such evidence, that the change of ownership to the Second Respondent is no more than at attempt by the Third Respondent to legitimise its original registration of the domain name and to provide credence to its claims that the domain was registered for its client, that the use of the disputed domain name in connection with “offshore solutions” for “money, wealth and assets” is an attempt to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant's mark, and that the Respondents cannot therefore demonstrate that before any notice of the dispute that they had used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods and services.
(3) The Complainant finally contends that the disputed domain name was registered and is being used in bad faith. The Complainant states that the disputed domain name was primarily registered to sell it which is clear from the Third Respondent's communications in which it asked for a “sensible offer” and also stated that another offer of USD 35 000 was already refused, that prior to the notice of the dispute the disputed domain name is being used for a website that gave details for “Lloyds Offshore Capital” and therefore attempted to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant's mark, that the fact that the Complainant's entire trade mark is incorporated in the domain name is of itself evidence of bad faith, that the Third Respondent appears to have registered a number of similar domain names that include well known brands many of which contain the words “bank”, “offshore”, or “international”, and therefore must have had the Complainant in mind when registering the disputed domain name, and finally that the fact that the Third Respondent changed its registration to “Privacy Protect” may be an attempt to evade contact in the event of a domain name dispute that the Complainant threatened to initiate.
The Third Respondent contends that it does not act on behalf of the current owners of the disputed domain name, but only on behalf of the previous owners in connection with hacking attempts. The Third Respondent further states that a complaint was lodged with the FBI/IC3 Unit against one of the Complainant's associates on March 16, 2009 for the felony of attempting to hack into the United States of America resident computer serving the website <hsbcinternational.com>. The Third Respondent categorically denies the allegations made against it and the previous owners. It contends that none of the three elements specified in paragraph 4(a) of the Policy is given in the present case, mainly for the following reasons:
(1) The Third Respondent claims that there was no risk of confusion when its client Horizon Star Bizco used the disputed domain name, in particular as there is no reference to banking services in such name.
(2) The Third Respondent states that its client has every right to use the disputed domain name, modernizing its image by obtaining a suitable acronym domain name.
(3) The Third Respondent contends that Horizon Star Bizco sold the disputed domain name six months prior to the beginning of the UDRP proceedings. It also contends that the Third Respondent and Horizon Star Bizco are different entities, and that the Third Respondent only registered and administered the disputed domain name ob behalf of its client in good faith. The Third Respondent's website was supposedly never linked to the website at the disputed domain name or vice versa. The Respondent claims that the Complainant made an offer to purchase the domain name on December 13, 2008, which was declined, and that the sale to a publishing partnership was completed in March 2009 when the domain name was transferred. The Third Respondent further contends that the last communications received from Complainant are dated January 14, 2009 and February 18, 2009 and that the Complaint therefore is out of date and irrelevant.
The first point to be dealt with is the identity of the Respondent(s).
The Registrar disclosed registrant and contact information for the disputed domain name (i.e. Juanita Saya, the Second Respondent) which differed from the named Respondent and contact information in the Complaint. However, the Registrar did not disclose the registrant information in the public WhoIs database, which still reveals the First Respondent as domain owner. Therefore, the First Respondent is obviously a privacy shield and not the beneficial owner of the disputed domain name, and thus has been named as Respondent (cf. TDS Telecommunications Corporation v. Registrant [20758] Nevis Domains and Registrant [117460] Moniker Privacy Services, WIPO Case No. D2006-1620; WWF-World Wide Fund for Nature aka WWF International v. Moniker Online Services LLC and Gregory Ricks, WIPO Case No. D2006-0975; Zedge Ltd. v. Moniker Privacy Services/Aaron Wilson, WIPO Case No. D2006-1585).
The Panel also has to decide whom to treat as the true or beneficial owner and therefore as further Respondent in this UDRP proceeding. At the time of the commencement of this proceeding, the owner of the disputed domain name was the Second Respondent. However, the Complainant provided evidence that the disputed domain name was registered in the name of the Third Respondent until early this year and contends that this is a case of cyberflight, i.e. a case in which the Registrant of the disputed domain name tried to avoid or delay the proceedings to be commenced against it by changing details of the WhoIs data of the disputed domain name after notice that a dispute will arise with regard to a domain name in breach of paragraph 8(a) of the Policy, according to which a respondent may not transfer the domain name registration to another holder during pending administrative proceedings.
Various panels have discussed how to interpret the notion of “pending administrative proceeding”, and, more specifically, at which moment such proceeding is deemed “pending”. One can rely on paragraph 4(c) of the Rules, stipulating that the date of commencement of the administrative proceeding is the date on which the Provider completes its responsibilities under paragraph 2(a) in connection with forwarding the Complaint to the Respondent (i.e. the moment when the Complaint is received by the Respondent from the Provider). Alternatively, to give effect to paragraph 8(a) of the Policy and to prevent bad faith by seeking to evade service of due process, the administrative proceedings could be considered to be pending as of the moment when the respondent is first informed about the filing of the complaint by the complainant. Finally, one could also consider the spirit and purpose of paragraph 8(a) of the Policy and find that a cyberflight has taken place when a domain name registration was transferred after receipt of a cease and desist or demand letter. Such cyberflight is likely to indicate bad faith, although it is not in direct violation of paragraph 8(a) of the Policy (cf. Humana Inc. v. CDN Properties Incorporated, WIPO Case No. D2008-1688; CompuCredit Corporation, CompuCredit Intellectual Property Holdings Corporation III v. Domain Capital and Aspire Prints, WIPO Case No. D2007-0407; Piaggio & C.S.p.A. and Piaggio USA, Inc. v. Schieffelin & Company, LLC, Zachary Schieffelin, WIPO Case No. D2008-1896).
In the present case, the Complainant corresponded with the Third Respondent for nearly one year before the domain name registration was transferred to the Second Respondent. Still, considering the purpose of paragraph 8(a) of the Policy, the Panel finds that the Third Respondent engaged in cyberflight by transferring the disputed domain name to the Second Respondent for the following reasons:
- At the very beginning of the correspondence with the Third Respondent, the Complainant did not put much pressure on the Third Respondent but merely asked for the reasons for registering the disputed domain name.
- The Complainant started mentioning UDRP proceedings in late 2008 and still tried to negotiate the matter amicably.
- On January 19, 2009 the Third Respondent wrote again to the Complainant and concluded that there were three options for the Complainant: “1) Stand down […] 2) Improve your offer to purchase so that it's actually worth consideration 3) Go to WIPO […]”. On February 8, 2009, shortly after this correspondence, the WhoIs information for the domain name was updated to the First Respondent, which is a privacy service offered by the concerned registrar.
A complainant trying to negotiate a dispute amicably in the first place, without filing a complaint immediately after sending a cease and desist letter should not be disadvantaged by loosing the cyberflight argument. Otherwise, a respondent could always try to delay the filing of a complaint by playing along with suggestions of an amicable settlement and then, several months later, transfer the disputed domain name to a third party, thereby successfully avoiding UDRP proceedings.
Accordingly, it is in the Panel's view appropriate to find that this is a case of cyberflight and for the Second and Third Respondents to be included as Respondents in the present case. The Panel will refer to them collectively as the Respondent except as otherwise noted.
Finally, the Panel has to find on the admissibility of the Parties' supplemental submissions. The Rules do not allow the parties to file supplemental submissions on their own volition and paragraph 12 of the Rules provides that a panel may in its sole discretion request further statements or documents from either of the parties. Thus, no party has the right to insist upon the admission of additional arguments or evidence. One of the grounds justifying new submissions is the existence of new pertinent facts that did not arise until after the complaint was filed. For instance, if the respondent raises objections that could not have been anticipated when the complaint was filed, the panel can give the complainant a right to reply to the submission or may accept the complainant's unsolicited additional submission (cf. Universal City Studios, Inc. v. G.A.B. Enterprises, WIPO Case No. D2000-0416; QNX Software Systems Ltd. v. Future Media Architects, Inc. and Thunayan K AL-Ghanim, WIPO Case No. D2003-0921; Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151).
In the present case, supplemental submissions containing substantial issues were filed by the Respondent only. In its submissions, the Respondent provided further documents and arguments but no explanation for not including them into the Response. Therefore, the Panel elects not to accept the parties' supplemental submissions and did not rely on them in reaching this decision.
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the domain name is identical or confusingly similar to the Complainant's trademark; and
(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.
The disputed domain name fully incorporates the Complainant's highly distinctive HSBC Marks in which the Complainant has rights.
The mere addition of the geographical identifier “international” following the trademark does not eliminate the similarity between the Complainant's marks and the domain name because it is merely generic. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of geographical identifiers, such as “international” (cf. F. Hoffmann-La Roche AG v. Clear Foto, WIPO Case No. D2009-0501; Shaw Industries Group Inc. Columbia Insurance Company v. Adminstrator, Domain, WIPO Case No. D2007-0583; Zurich American Insurance Company v. Adminstrator, Domain, WIPO Case No. D2007-0481; Jafra Cosmetics, S.A. de C.V. v. Spiral Matrix, WIPO Case No. D2006-0716; Société Air France v. Spiral Matrix, WIPO Case No. D2005-1337; Government Employees Insurance Company v. Netsolutions Proxy Services, WIPO Case No. D2004-0919).
Furthermore, it is well established that the top level domain name generally is not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant's trademark and the disputed domain name (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374).
Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.:
(i) before any notice to the respondent of the dispute, the use by the respondent 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) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the disputed domain name, it is the consensus view among panelists that a complainant has to make only a prima facie case to fulfil the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of proving that the respondent has rights or legitimate interests in the disputed domain name will then shift to the respondent.
The Complainant has asserted that the Respondent neither uses the domain name or any name corresponding to the disputed domain name in connection with a bona fide offering of goods or services nor is known by the disputed domain name, that the Respondent is not making any legitimate noncommercial or fair use of the disputed domain name, and that the Respondent therefore cannot have any legitimate interests in the domain name. The Complainant has therefore fulfilled its obligations under paragraph 4(a)(ii) of the Policy.
The Respondent categorically denies the allegations made in the Complaint. However, the Respondent did not provide any evidence to demonstrate its rights to or legitimate interests in the domain name, merely contending that the disputed domain name was sold in March 2009 to a publishing partnership and transferred to their registrar.
The Panel cannot find any evidence of the Respondent's rights or legitimate interests in the disputed domain name in the case file as presented by the Complainant, either. Before first notice of the dispute in March 2008, the disputed domain name was used in connection with a single page website providing details of an offshore private equity investment company known as Lloyds Offshore Capital. There is no evidence that, before notice of the dispute to the Respondent, the Respondent used the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services, or has been commonly known by the domain name or is making a legitimate non commercial or fair use of the domain name.
Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the domain name under paragraphs 4(a)(ii) and 4(c) of the Policy.
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on its website or location.
The circumstances mentioned in paragraph 4(b) of the Policy are not exclusive, while the two elements of the third requirement of the Policy are cumulative conditions: the Complainant must show that the domain name was registered in bad faith and is being used in bad faith. This point is clear from the wording of the Policy and has been confirmed ever since Telstra Corporation Limited. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (cf. also Telstra Corporation Limited v. Adult Web Development and Telstraexposed, WIPO Case No. D2002-0952; Telstra Corporation Ltd v. David Whittle, WIPO Case No. D2001-0434; Prada S.A. v. Mr. Chuan Sheng Wang, WIPO Case No. D2003-0758).
The Complainant is one of the largest and well known banking and financial services organisations in the world. The HSBC Marks have previously been regarded as well known (cf. HSBC Holdings Plc v. David H. Gold, WIPO Case No. D2001-0343). Given the fact that the Respondent used to be the registered owner of numerous domain name registrations, including domain names like <lloydsoffshore.com>, <lloydsbankinternational.com>, <abbeyinternationalbank.com>, and <abbyinternationalbank.com>, the Respondent seems to be familiar with the financial business. It is therefore inconceivable that the Respondent registered the domain name without knowledge of the Complainant and its rights in the HSBC Marks. Therefore, the Panel concludes that the Respondent registered the domain name <hsbcinternational.com> with full knowledge of and the intention to trade off the HSBC Marks and therefore in bad faith.
As to bad faith use, by fully incorporating the HSBC Marks into the disputed domain name and by using the website at such domain name in connection with a website offering offshore private equity investment services, the Respondent was, in all likelihood, trying to divert traffic intended for the Complainant's website to its own for commercial gain. Such use and exploitation of trademarks to obtain commercial profit from the diversion of Internet users has in many decisions been found to be use in bad faith under paragraph 4(b)(iv) of the Policy (cf. America Online, Inc. v. Tencent Communications Corp., NAF Claim No. FA 93668; Lilly ICOS LLC v. John Hopking / Neo net Ltd., WIPO Case No. D2005-0694; Lilly ICOS LLC v. East Coast Webs, Sean Lowery, WIPO Case No. D2004-1101).
Furthermore, the Complainant provided evidence that the Respondent registered further domain names including third parties marks and therefore acted in a pattern of preventing owners of a trademark or service mark from reflecting their marks in a corresponding domain name as required under paragraph 4(b)(ii) of the Policy.
Consequently, the Panel finds that the Respondent registered and used the disputed domain name in bad faith and that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <hsbcinternational.com> be transferred to the Complainant.
Brigitte Joppich
Sole Panelist
Dated: September 28, 2009