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The
Parties Information
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Claimant
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City Super Limited
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Respondent
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C.K. Li
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Procedural
History
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On 5 May 2004, the Complainant submitted the
Complaint to the Hong Kong Office of the Asian Domain Name Dispute
Resolution Centre
(the “ADNRCâ€ﾝ
of the “Centreâ€ﾝ),
in accordance with the Uniform Domain Name Dispute Resolution
Policy (the “Policyâ€ﾝ)
adopted by the Internet Corporation for Assigned Names and Numbers
(“ICANNâ€ﾝ)
on 26 August 1999, the Rules for Uniform Domain Name Dispute
Resolution Policy Disputes (the “Rulesâ€ﾝ),
and ADNDRC Supplemental Rules for Uniform Domain Name Dispute
Resolution Policy Disputes (the “ADNDRC
Supplemental Rulesâ€ﾝ).
The
Complainant has sought a three-person Panel.
On 5 May 2004,
the Centre confirmed to the Complainant receipt of the Complaint
and forwarded a copy to the Respondent by on-line
notification
(without the Complaint attached) on 24 May 2004. The 20 day
deadline for the Respondent to respond calculated
from 24 May 2004
expired on 13 June 2004. The Respondent did not file a Response
with the Centre.
On 18 June 2004, the Centre contacted the
Respondent informing him that the Complainant has chosen a
three-member Panel to decide
the dispute and asking him to submit
a list of three Panelists by 21 June 2004. The Respondent replied
by email to say that
he could not submit a response to the
Complaint online since he was unable to access the URL adndrc.com
from Guangzhou where
he is living. The Centre responded saying
that the due date for making a response had passed and that the
Respondent must apply
for an extension if he wanted to make a
response to the case.
No further communication was made by
the Respondent in this case and the Centre contacted the three
Panelists on 8 July 2004.
On 12 July 2004 the Centre
transferred the case file to the Presiding Panelist and the other
Panelists by post. On 2 August
2004 the deadline for submitting
the decision was extended to 8 August 2004 and a further extension
of the deadline to 16 August
2004 was subsequently granted.
The
Presiding Panelist finds that the Administrative Panel was
properly constituted and appointed in accordance with the Rules
and the ADNDRC Supplemental Rule
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Factual
Background
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For
Claimant
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The following facts are asserted by the
Complainant in the Complaint and have not been disputed. The Panel
finds that these
facts are proved.
The Complainant was
established in 1996 and operates one of the largest superstores in
Hong Kong, offering for sale a variety
of goods such as food,
household necessities, gifts, stationary, books, magazines and
other lifestyle items.
The Complainant owns the domain name
“citysuper.com.hkâ€ﾝ
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
“CITYSUPERâ€ﾝ.
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 “CITYSUPERâ€ﾝ
in Classes 42 and 35 in Hong
Kong.
The Complainant makes it clear that it is in no way
related or connected with the Respondent.
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.
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For
Respondent
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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:
Dear Dennis
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.
C.K. Li
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Parties'
Contentions
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Claimant
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The Claimant asserts that the Respondent has no
connection with the trade name “CITYSUPERâ€ﾝ
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
Claimant asserts that this shows a lack of bona fide use of the
Disputed Domain
Name by the Respondent.
The Claimant
further asserts that the inclusion of the words “Welcome
to CitySuper.com –
enjoyable and
healthy!....Have a nice dayâ€ﾝ
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!â€ﾝ
to every customer they serve.
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Respondent
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Save as outlined above, the Respondent did not
participate in these proceedings.
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Findings
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Identical
/ Confusingly Similar
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The Complainant relies on its registrations and
use of various trade marks involving the word “CITYSUPERâ€ﾝ
(the “Markâ€ﾝ)
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.hkâ€ﾝ
only by the deletion of
“.hkâ€ﾝ.
The addition of the country code top level domain (ccTLD) name
“.hkâ€ﾝ
is without legal significance
since it does not serve to identify a specific service provider as
a source of goods or services
(see CBS Broadcasting Inc. v
Worldwide Webs, Inc., WIPO Case No.D2000-0834, where a similar
finding was made in respect of
the generic top-level domain (gTLD)
name “.comâ€ﾝ).
The
Panel is satisfied that the Complainant has met the requirements
of paragraph 4(a)(i) on the basis of the factual finding
that the
Complainant owns and uses the trade mark “CITYSUPERâ€ﾝ.
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Rights
and Legitimate Interests
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The Complainant asserts that the Respondent
does not have any rights or legitimate interests in respect of the
Disputed Domain
Name because the Respondent originally set up only
a one-page website under the Disputed Domain Name with no
substantial function
or content and subsequently removed the
website from the server altogether after the Complainant contacted
the Respondent complaining
about the registration of the Disputed
Domain Name. 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.
Furthermore, 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 “CITYSUPERâ€ﾝ
trade mark in relation to its
business as a business name or otherwise.
The Complainant
has prior rights in the “CITYSUPERâ€ﾝ
trade mark which precede the
Respondent’s registration of the Disputed
Domain Name. The combination of the
words “cityâ€ﾝ
and “superâ€ﾝ
to form “citysuperâ€ﾝ
is not a common usage in the
English language. The Complainant is well-known throughout Hong
Kong under the trade mark and commercial
name “CITYSUPERâ€ﾝ
to designate its superstores and
online shopping services.
The Respondent is not commonly
known by the Disputed Domain Name. It is highly likely that the
Respondent is aware that “CITYSUPERâ€ﾝ
corresponds to a trade mark
since, although the Respondent now claims to be living in
Guangzhou, his place of residence at the
time of registering the
Disputed Domain Name was Hong Kong, as indicated by the WHOIS
search result.
The Panel is satisfied that the
Complainant has met the requirements of paragraph 4(a)(ii).
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Bad
Faith
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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!â€ﾝ
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. Futhermore, 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 (Telstra
Corporation Limited v Nuclear Marshmallows,
WIPO Case
No.D2000-0003). In deciding whether passive holding amounts to
acting in bad faith the Panel should give close attention
to all
the circumstances of the Respondent’s
behaviour. 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 Respondent has no prior right to the mark
“CITYSUPERâ€ﾝ
and no authorisation to use this
mark in any form. The Respondent is an individual originally
located in Hong Kong and is likely
to know that this is a
notorious mark in Hong Kong. The Complainant has submitted
evidence to show that the name “CITYSUPERâ€ﾝ
is not commonly known and used
as a word other than in relation to the Complainant’s
business.
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.
The Panel is satisfied that the
Complainant has met the requirements of paragraph 4(a)(iii) in
showing bad faith registration
and use of the Disputed Domain
Name.
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