ADNDRC-decisions-summary-HK-0400044

Early Procedures:

On 5 May 2004, the Complainant submitted the Complaint to the Hong Kong Office of the Asian Domain Name Dispute Resolution Centre. The Complainant has sought a three-person Panel. The Respondent did not file a Response with the Centre. On 12 July 2004 the Centre transferred the case file to the Presiding Panelist and the other Panelists by post.

Facts:

The Complainant was established in 1996 and operates one of the largest superstores in Hong Kong. The Complainant owns the domain name “citysuper.com.hk” and operates a website under this domain name offering online shopping services. The Complainant has submitted evidence in the form of advertising materials and publications to show that it has established a substantial reputation and goodwill in the trade name “CITYSUPER”. The Complainant has also submitted evidence in the form of trade mark registration certificates to show that it owns various trade marks involving the word “CITYSUPER” in Classes 42 and 35 in Hong Kong.

On inspection by the Panelist on 5 August 2004 the Disputed Domain Name was found to resolve to no active website. Internet browsers are unable to find any website when the Disputed Domain Name is entered.

The Respondent did not respond to the Complaint or participate in these proceedings save for one email dated 18 June 2004 in the following terms: “I am living in Guangzhou and I cannot reach the URL adndrc.com. Therefore I am not able to make response to the case through the web interface.”

Contentions:

The Complainant asserts that the Respondent has no connection with the trade name “CITYSUPER” and has no material or legal interest in the business activities of City Super Limited.

The Complainant asserts that the Respondent set up a simple one-page website under the Disputed Domain Name with no substantial function or content but containing only a few sentences and subsequently removed the website from the server when the Complainant contacted the Respondent about the dispute. The Complainant asserts that this shows a lack of bona fide use of the Disputed Domain Name by the Respondent.

The Complainant further asserts that the inclusion of the words “Welcome to CitySuper.com – enjoyable and healthy!....Have a nice day” in the scroll text of the Respondent’s one-page website indicated an intention to confuse customers into thinking that the website had a connection with the Complainant, since the Complainant has trained its sales staff to say “Thank you, have a nice day!” to every customer they serve.

Save as outlined above, the Respondent did not participate in these proceedings.

Findings & Reasoning

1. Identical / Confusingly Similar

The Complainant relies on its registrations and use of various trade marks involving the word “CITYSUPER” (the “Mark”) and asserts that the Disputed Domain Name has incorporated the entirety of the Mark and that the Disputed Domain Name differs from the Complainant’s domain name “citysuper.com.hk” only by the deletion of “.hk”. The addition of the country code top level domain name “.hk” is without legal significance since it does not serve to identify a specific service provider as a source of goods or services. The Panel is satisfied that the Complainant owns and uses the trade mark “CITYSUPER”.

2. Rights and Legitimate Interests

The Panel finds that the dormant state of the website is an indication that the Respondent has no legitimate interest in the Disputed Domain Name. The Complainant has not authorised, licensed, endorsed or otherwise permitted the Respondent to register or use the Disputed Domain Name or to use the Complainant’s “CITYSUPER” trade mark. The Complainant has prior rights in the “CITYSUPER” trade mark which precede the Respondent’s registration of the Disputed Domain Name. The combination of the words “city” and “super” to form “citysuper” is not a common usage in the English language. The Complainant is well-known throughout Hong Kong under the trade mark and commercial name “CITYSUPER”.

The Respondent is not commonly known by the Disputed Domain Name. It is highly likely that the Respondent is aware that “CITYSUPER” corresponds to a trade mark since his place of residence at the time of registering the Disputed Domain Name was Hong Kong.

3. Bad Faith

The original one-page website which lacked substantial function or content and the subsequent dormant state of the Disputed Domain Name is evidence of bad faith on the part of the Respondent. The inclusion of the Complainant’s slogan “Have a nice day!” in the original website indicates an intention on the part of the Respondent to confuse the public into thinking that the Disputed Domain Name has a connection with the Complainant. Furthermore, passive holding of a domain name that is identical or confusingly similar to a famous mark has been found to constitute bad faith in itself. In the present case, it appears that the passive holding of the site occurred immediately after the Complainant contacted the Respondent requesting transfer of the Disputed Domain Name. This strongly suggests that the Respondent does not have a bona fide intention to use the Disputed Domain Name. Therefore, the continuing passive holding of the Disputed Domain Name, which prevents the legitimate owner from using it, indicates bad faith.

The failure of the Respondent to reply to the Complainant’s Cease and Desist letter and reminder indicate bad faith on the part of the Respondent. The Respondent has not given his full address and contact details for the registration record of the WHOIS database and responded only once to the emails of the Provider to say that he could not submit a response to the Complaint online and took no further part in these proceedings. These facts indicate a lack of good faith on the part of the Respondent.

Decision

The Panel orders that the Disputed Domain Name be transferred to the Complainant.

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