Complainant is HSBC Group Management Services Limited, United Kingdom (“UK”), represented by Mayer Brown LLP, Hong Kong, China.
Respondent is Domain Admin, Whois Privacy Corp., Bahamas.
The disputed domain name <gbmhsbc.com> is registered with Internet Domain Service BS Corp (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 3, 2020. On June 3, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 4, 2020, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 19, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 9, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 12, 2020.
The Center appointed Scott R. Austin as the sole panelist in this matter on July 28, 2020. 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.
Complainant is a member of the HSBC group of companies, whose business was founded over 150 years ago and is one of the largest banking and financial services organizations in the world. Complainant operates in 64 countries and territories under marks comprised of or incorporating HSBC, an acronym for “Hongkong and Shanghai Banking Corporation”, the founding member of Complainant’s group of companies. Complainant owns numerous trademark registrations covering the HSBC mark in many countries, including the Bahamas, China, UK, and the United States, such as Trademark Registration No. 2000657, registered on September 17, 1996 for bank services in class 36. Complainant also operates the website “www.gbm.hsbc.com” (the “HSBC GBM Site”), dedicated to Complainant’s Global Banking and Markets business line.
Respondent registered the disputed domain name <gbmhsbc.com> on July 15, 2019. Although the disputed domain name does not resolve to an active website, Respondent is using it to send emails to Complainant’s customers offering investment products under the HSBC mark.
Complainant contends that the disputed domain name is identical or confusingly similar to Complainant’s trademark; that Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
To succeed, Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith.
The standard of proof under the Policy is often expressed as the “balance of the probabilities” or “preponderance of the evidence” standard. Under this standard, an asserting party needs to establish that it is more likely than not that the claimed fact is true. See, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.2.
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0 , section 1.2.1 . Complainant has demonstrated its rights because it has shown that it is the owner identified on certificates for multiple valid and subsisting trademark registrations for the mark HSBC. See Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen, WIPO Case No. D2014-0657.
Prior UDRP panels have held “the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks”. Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. The Panel finds here that the disputed domain name wholly incorporates Complainant’s registered HSBC mark.
Accordingly, the Panel finds that Complainant has met the requirements of paragraph 4(a)(i) of the Policy.
Under the second element of the Policy, a complainant is first required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. If the complainant makes that showing, the burden of production on this element shifts to the respondent to come forward with relevant evidence of such rights or legitimate interests in the domain name. If the respondent fails to come forward with such evidence, a complainant is generally deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. See also, Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393.
Complainant has established, prima facie, that Respondent lacks rights or legitimate interests in the disputed domain name. First, Complainant asserts that it has not licensed or otherwise permitted Respondent to use the HSBC mark in any manner, nor is Respondent in any way or manner a representative or partner associated with or related to Complainant. Complainant has also submitted persuasive evidence in the record that Respondent is not commonly known by the disputed domain name.
It is generally regarded as prima facie evidence of no rights or legitimate interests if a complainant shows that the disputed domain name is identical or confusingly similar to the complainant’s trademark, that the respondent is not commonly known by the disputed domain name, and that the complainant has not authorized the respondent to use its mark (or an expression which is confusingly similar to its mark), whether in the disputed domain name or otherwise. See, Roust Trading Limited v. AMG LLC, WIPO Case No. D2007-1857.
Further, the disputed domain name does not resolve to an active website, and there is therefore no evidence that the Respondent has made demonstrable preparations to use the disputed domain name for legitimate purposes. Similarly, there is no evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods and/or services.
Most importantly, Complainant’s evidence shows Respondent has used the disputed domain name to send “spoofing” emails to Complainant’s customers in return for commercial gain. Specifically, Respondent has sent fraudulent emails to Complainant’s customers to purposely mislead recipients to wrongly believe that such emails were legitimate, and that investment products Respondent offered under the HSBC mark were sent by Complainant or its affiliates. Financial regulatory authorities under their “clone firm detail” alerted Complainant of Respondent’s fraudulent activities and issued a public warning notice regarding fraudulent emails sent from an email address at the disputed domain name.
Prior UDRP panels have held that illegal activity can never confer rights or legitimate interests on a respondent. See WIPO Overview 3.0, section 2.13.1. The evidence submitted establishes Complainant’s prima facie showing under paragraph 4(a)(ii) of the Policy and combined with the inferences drawn due to Respondent’s failure to respond, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name.
Because Complainant’s HSBC mark is well known worldwide, having been used to identify financial services provided to millions of consumers for over 150 years, it is implausible to believe that Respondent was not aware of that mark when it registered its confusingly similar disputed domain name which incorporates Complainant’s HSBC mark in its entirety as found in section 6.A. above. UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. See, WIPO Overview 3.0, section 3.1.4.
The Panel also notes here additional factors from which the Panel may infer bad faith registration: (i) Respondent’s incorporation of the prefix “gbm” in the disputed domain where “GBM” is an acronym widely used by Complainant to refer to its Global Banking and Markets business line, (ii) Complainant’s official website for such business line is accessed at “www.gbm.hsbc.com”, a strikingly similar string, which suggests Respondent targeted Complainant’s mark when it picked the disputed domain name <gbmhsbc.com>, (iii) the lack of Respondent’s rights to or legitimate interests in the disputed domain name registered to engage in per se illegitimate activity for commercial gain. Given the circumstances of this case, such a showing is sufficient to establish bad faith registration. See, WIPO Overview 3.0, section 3.2.1.
Bad faith use is also clear from Respondent’s illegal conduct as discussed in detail in section 6.B. above, sending fraudulent emails suggesting an affiliation with Complainant and offering investments to bank customers for Respondent’s commercial gain. See, BHP Billiton Innovation Pty Ltd v. Domains By Proxy LLC / Douglass Johnson, WIPO Case No. D2016-0364.
For these reasons, the Panel finds bad faith registration and use, and Complainant has met its burden under paragraph 4(a)(iii) 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 disputed domain name <gbmhsbc.com> be transferred to Complainant.
Scott R. Austin
Sole Panelist
Date: August 4, 2020