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ADNDRC-decisions-summary-HK-0500059

Summary of the Decision

ADNDRC Hong Kong Office

Case ID: HK-0500059

Date of Decision: April 12, 2005

Disputed Domain Name: www.hongkongjc.com

Complainant: The Hong Kong Jockey Club

Respondent: Shizuki Kishimoto

Early Procedures:

A Complaint in this matter was filed with the Hong Kong Office of Asian Domain Name Dispute Resolution Centre (ADNDRC) dated 22 February 2005. The three-member Panel was appointed on 24 March 2005.

Facts:

The Complainant holds a statutorily imposed monopoly for the provision of horse racing in Hong Kong which was founded in 1884. The Complainant registered the trade mark "HKJC" ("Mark") in respect of betting, gaming services & etc and 248 domain names including or based around the letters "hkjc" or words "hongkong jockey club". A number of these domains are actively used as the Internet addresses for the Complainant‘s websites.

The Respondent registered the Disputed Domain on 2004-04-01.

Contentions:

The Complainant asserts that the Disputed Domain (hongkongjc.com) is substantially similar to the Mark (HKJC), on the basis that it is globally accepted that Hong Kong is usually denoted by the abbreviation "HK". It contends that the public would be easily confused to treat the Disputed Domain to be an equivalent form of "HKJC.COM"; "HKJOCKEYCLUB.COM" or "HONGKONGJOCKEYCLUB.COM" which are domain names registered by the Complainant and used as the internet addresses of the Complainant‘s official website.

The Complainant further alleges that the Respondent has no rights or legitimate interests in respect of the Disputed Domain because the Respondent has set up a website imitating the Complainant‘s official website www.hongkongjockeyclub.com. The only discrepancies between the Respondent‘s website and the Complainant‘s are: no English version and no links for certain items in the Respondent‘s website, the access page for placing bets and the contact email address.

Finally, the Complainant alleges that the Disputed Domain has been registered and used in bad faith and the Complainant‘s in-house lawyer sent a cease and desist letter to the Respondent on 17 November 2004 which went unanswered and ignored.

Findings

  1. Identical / Confusingly Similar

    2. The relevant question is whether "HONGKONGJC.COM" is confusingly similar to the Mark "HKJC". The Panel accepts the Complainant’s reason that "HK" is an acknowledged abbreviation of "Hong Kong" and is persuaded that there is an obvious relationship between HKJC, the Mark, and HongKongJC - there is very little that separates the domain name and the Mark as in reality they are variations of the abbreviations that are used by the Mark holder. To that extent, they are confusingly similar. The Panel also relies on the following facts in evaluating confusing similarity :

    1. the fact that the Complainant makes use of the Mark in its Annual Report and its websites;
    2. the fact that the Complainant has also registered the trade mark "HKJC Football" in a number of classes in Hong Kong and Macau, and makes use of "HKJC Football" in its advertising literature.

  2. Rights and Legitimate Interests

    3. The Complainant has alleged that the Respondent has no right or legitimate interest in respect of the Disputed Domain, it has raised an important allegation concerning a website imitating the Complainant‘s website being published by the Respondent. The Respondent has not answered this allegation and the Panel has no reason to doubt the veracity of the Complaint.

  3. Bad Faith

    4. The Panel accepts the overwhelming and unanswered evidence of (1) the Respondent‘s wrongful duplicate website and (2) his silence in the face of both the Complainant‘s cease and desist letter of 17 November 2004 and these proceedings, as satisfying the Complainant‘s burden of providing bad faith on the part of the Respondent.

Decision

The Disputed Domain hongkongjc.com should be transferred to the Complainant.