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HSBC Holdings Plc v. David H. Gold [2001] GENDND 962 (16 May 2001)

World Intellectual Property Organization

The Complainant in this administrative proceeding is HSBC Holdings Plc, a company organised and existing under the laws of England and Wales whose registered office and principal place of business is situated at 10 Lower Thames Street, London, EC3R 6AE, United Kingdom, represented by Wragge & Co., solicitors, of 55 Colmore Row, Birmingham B3 2AS, England. The Respondent is David H. Gold, c/o The Internet World Wide Web, PO Box 100, Pinner, Middlesex HA5 4YE, United Kingdom.

The domain names in issue are <bankwithhsbc.com> and <bankwithhsbc.net> ("the Domain Names"), the Registrar of which is CORE INTERNET COUNCIL OF REGISTRARS of World Trade Center II – 29 Route de Pré-Bois, CH-1215, Geneva, Switzerland ("CORE").

The WIPO Arbitration and Mediation Center ("the Center") received on March 9, 2001 an e-mail version of the Complaint, and on March 12, 2001 a hard copy of the Complaint and accompanying documents. The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy ("the Policy"), and the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"). The Complainant made the required payment to the Center. On March 28, 2001, the Center formally notified the Respondent that this administrative proceeding had been commenced, and that date is the formal date of the commencement of this administrative proceeding.

On March 16, 2001, the Center received from CORE its Verification Response confirming that the registrant is David H. Gold, the Respondent herein, and stating that the Administrative, Technical and Zone Contact is Mr. Steve Procter of Easily.co.uk, 3, Ringway Road, Park Street, St. Albans, Herts. A12 2RE, United Kingdom.

No Response has been filed by the Respondent. The Complaint was transmitted by e-mail to the Respondent and to the Mr. Steve Procter referred to above. Hard copies were sent by courier to the Respondent at Berkeley House, 18-24 High Street, Edgware, Middlesex, the address given for the Respondent in relation to the <bankwithhsbc.com> domain name, and to Mr. Procter. It would seem that delivery to the Respondent could not be effected, the Courier’s delivery report stating "UK Recipient moved". Nevertheless, the Panelist is satisfied from a procedural point of view that the Respondent has received due notice of these proceedings.

On April 23, 2001, Notice of Respondent Default was sent by the Center to the parties. On May 3, 2001, this Panelist was appointed by the Center. The Panelist has filed a Statement of Acceptance and Declaration of Impartiality, and his decision is scheduled to be forwarded to the Center by May 16, 2001.

The Complainant is the registered proprietor of UK Trade Mark No. 1574618 covering the mark HSBC ("the Trade Mark") registered on June 8, 1994 in class 36.

In addition, the Complainant has trade mark registrations in a large number of countries throughout the world.

The Complainant asserts, inter alia, as follows:-

(i) The Complainant is the registrant of a host of domain names incorporating the mark HSBC, which include:

(a) <hsbc.com> registered on January 29, 1999;

(b) <hsbc.co.uk> registered on August 2, 2000;

(c) <hsbcdirect.co.uk> registered on December 7, 1998;

(d) <hsbcholdings.co.uk> registered on February 11, 1998;

(e) <hsbcinvestdirect.com> registered on September 4, 1998.

(ii) The Complainant and its subsidiary undertakings are one of the largest banking and financial services organisations in the world. They provide banking and financial services and information about their services under the mark HSBC through a variety of media including the internet, from their websites, all of which can be accessed from the website <hsbc.com>.

(iii) The Complainant’s international network comprises more than 6,000 offices in 81 countries and territories. It operates in the Asia-Pacific region, Europe, the Americas, the Middle East and Africa.

(iv) The operating income of the Complainant’s Group for the financial year ended 1999 was $21,002,000,000. The Complainant’s Group’s operating profit for the same year was $7,409,000,000.

(v) The Complainant and its subsidiary undertakings are widely advertised and promoted and are very well known in all of the countries in which they trade for banking and financial services under the mark HSBC. The Complainant and its subsidiary undertakings advertise their services worldwide through all media to include television, business magazines, posters and the internet.

(vi) Copy correspondence between the Respondent and the Complainant shows that the Respondent initially offered to lease or rent the domain name <bankwithhsbc.com> (the ".com Domain Name") to the Complainant by letter dated August 1, 2000. However he subsequently offered to sell the .com Domain Name to the Complainant for an unspecified sum after the Complainant rejected his original offer. From the correspondence it is apparent that the Respondent has purported to be acting on behalf of an unnamed client of his.

(vii) The Complainant, due to the Respondent’s continued refusal to transfer the .com Domain Name without receiving payment, then instructed Messrs Wragge & Co, the Complainant’s authorised representative in these proceedings.

(viii) Messrs Wragge & Co sent a fax to the Respondent on October 24, 2000, setting out the Complainant’s position in relation to the .com Domain Name and requested a response by October 31, 2000. No response was received and so the Complainant’s authorised representative, Mrs Brodie of Messrs Wragge & Co, telephoned the Respondent on November 1, 2000. In that conversation the Respondent acknowledged receipt of the letter of October 24, 2000, but stated that he did not intend to respond to it. The Respondent also acknowledged, despite his reference to "clients" in correspondence, that he is the legal owner of the .com Domain Name. The Respondent offered to sell the .com Domain Name to the Complainant for a price in the region of £2,000 to £5,000.

(ix) Messrs Wragge & Co discovered that the Complainant was also the registered holder of the domain name <bankwithhsbc.net> (the ".net Domain Name") in a Whois search conducted on February 16, 2001.

(x) On February 20, 2001, Messrs Wragge & Co faxed the Respondent according to the Complainant’s instructions, requesting that the Respondent confirm his intentions regarding the .net Domain Name. The Respondent telephoned Miss Mortimer of Messrs Wragge & Co and left a message for Miss Mortimer to return his telephone call. Miss Mortimer then telephoned the Respondent who stated that his intentions regarding the .net Domain Name were to do nothing at all. When asked what his intentions had been in registering the .net Domain Name, the Respondent refused to comment. Messrs Wragge & Co sent a fax to the Respondent on February 23, 2001, confirming the details of this telephone conversation. No response has been received from the Respondent.

(xi) It should be noted that neither of the Domain Names is active and both resolve to the site of the Respondent’s ISP, easily.co.uk.

(xii) The Domain Names are identical to the Complainant’s mark HSBC because the distinguishing element of the Domain Names is "hsbc". The portion of the Domain Names, "bankwith", is merely descriptive of the services provided by the Complainant and as such may be disregarded. The Domain Names are therefore identical to:

(a) the Complainant’s registered trade mark, HSBC;

(b) the Complainant’s trading name, HSBC, which was announced in respect of the Complainant’s Group in November 1998 and which was adopted and has been used without interruption in the UK since 1999.

(c) the Complainant’s company name, HSBC Holdings plc.

(xiii) In the alternative, the Domain Names are confusingly similar to the Complainant’s rights in the mark HSBC as identified in (xii) (a) to (c) above. The Domain Names are rendered confusingly similar due to the use of the Complainant’s trade mark, company name and trading name, HSBC, with the words "bankwith" which refer directly to services offered by the Complainant, strengthening the connection between the Domain Names and the Complainant in the public’s mind.

(xiv) The Respondent should be considered as having no rights or legitimate interests in respect of the Domain Names because there is no evidence that the Respondent conducts any legitimate business under the name HSBC or has any present or bona fide interest in establishing any legitimate business under this name.

(xv) Further, the Panel is requested to infer from the Respondent’s failure and refusal to advance any rights or legitimate interests in the Domain Names and the fact that the Respondent is not operating any active website under the Domain Names that the Respondent has no rights or legitimate interests in respect of the domain names. Evidence to support this proposition is provided in the telephone conversations between the Respondent and Messrs Wragge & Co. In the telephone conversation between the Respondent and Mrs Brodie on November 1, 2000 the Respondent stated that he had no intention to use the .com Domain Name or trade under it and promptly offered the same for sale. In the telephone conversation between the Respondent and Miss Mortimer on February 20, 2001 the Respondent stated that his intentions regarding the .net Domain Name were to do nothing at all and refused to comment on his intentions in registering the .net Domain Name. The Respondent has not previously provided the Complainant with any indication of an intention to use the Domain Names. Furthermore:

(a) before any notice to the Respondent of the dispute (and indeed to date), there is no evidence of the Respondent’s use of, or demonstrable preparations to use, the Domain Names or names corresponding to the Domain Names in connection with a bona fide offering of goods or services;

(b) the Respondent (as an individual, business, or other organisation) has not been commonly known by any of the Domain Names; and

(c) the Respondent is not making a legitimate non-commercial or fair use of the Domain Names, without intent for commercial gain; and

(d) there is no relationship between the Complainant and the Respondent that would give rise to any licence, permission or other right by which the Respondent could use the Complainant’s trade marks or own or use the Domain Names.

(xvi) The Domain Names should also be considered as having been registered and used in bad faith for the reasons set out above. Furthermore, given the Complainant’s trade mark registrations and its wide reputation in the mark HSBC it is highly likely that the Respondent was aware of such reputation at the time of registration of the Domain Names. In fact the conjunction of the mark HSBC with the words "bankwith" serves to strengthen the implication that the Complainant registered the Domain Names as a result of the goodwill and reputation attaching to the mark HSBC in relation to the Complainant’s services.

(xvii) Additionally, the exhibited correspondence and attendance notes constitute compelling evidence that the primary purpose behind the registration of the .com Domain Name was to transfer it to the Complainant for valuable consideration in excess of the Respondent’s out-of-pocket costs and expenses directly related to it. The Panel is requested to infer from the Respondent’s conduct in relation to the .com Domain Name and from the Respondent’s refusal to tell Miss Mortimer the reason for the registration of the .net Domain Name in the telephone conversation on February 20, 2001, that this was also the primary purpose behind the registration of the .net Domain Name.

(xviii) Furthermore, by registering both the .com and the .net Domain names, the Respondent has engaged in a pattern of conduct in registering domain names in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name.

The Respondent has not filed a Response.

The onus is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the ICANN policy, as follows:

(a) the domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(b) the Respondent has no rights or legitimate interests in respect of the domain name; and

(c) the domain name has been registered and is being used in bad faith

As to element (i), the Domain Names comprise two elements, "bankwith" and "hsbc". Accordingly, the Trade Mark and the Domain Names are not identical. The question is therefore whether they are confusingly similar. The Complainant uses the Trade Mark in relation to its banking and allied financial services. Although it has carried on business under the name HSBC for as little as 2 years, such is the size and reputation of the Complainant’s group of companies in the banking field that the Panelist has no doubt that the name HSBC became very well known almost instantly. Given that the Complainant’s reputation to the general public is primarily that of a bank, the addition to "HSBC" of the words "bank with" is purely descriptive of the Complainant’s best-known activity. The Domain Names are manifestly confusingly similar to the Trade Mark.

As to element (ii) of paragraph 4(a) of the ICANN Policy, the Respondent has done nothing to demonstrate that he has any rights or legitimate interests in the Domain Names. There is nothing to suggest that any of the circumstances mentioned in paragraph 4(c) of the ICANN Policy apply (ie before notice of the dispute preparation to use the Domain Names, being commonly known by the Domain Names or making a legitimate non-commercial or fair use of the Domain Names). The facts put forward by the Complainant make it plain that the Respondent has no rights or legitimate interest in the Domain Names.

Lastly, the Complainant must establish element (iii), ie that the Domain Names have been registered and are being used in bad faith. Paragraph 4(b)(i) of the Policy indicates to a respondent that the following circumstances shall be evidence of registration and use of a domain name in bad faith:

The following facts, in the Panelist’s opinion suffice to satisfy him that the Complainant has established element (iii):-

(i) The Domain Names were plainly registered in bad faith, in that the decision to combine the words "bank with" and "hsbc" can only have been taken in bad faith.

(ii) The Respondent’s only interest in the .com Domain Name was either to rent or sell it. The Panelist notes that the Respondent (who appears to be well acquainted with the Rules) would not put any figure in writing, but mentioned to the Complainant’s solicitors a figure of £2,000 - £5,000 on the telephone.

(iii) It was not until February of this year that the Complainant became aware of the.net Domain Name, so it had not featured in the correspondence and telephone discussions during the latter half of the year 2000. Nevertheless, it appears from CORE’s verification that the Domain Names were registered on the same day, namely July 7, 200. In relation to the .net Domain Name the Respondent stated, in the telephone conversation of February 20, 2001 (see para. 5(A)(x) above) that his intentions were "to do nothing at all" with the .net Domain Name. When challenged to explain why he had registered the .net Domain Name in the first place, according to Miss Mortimer’s attendance note, the Respondent refused to comment, stating that this was a different issue entirely. It seems clear that by February of this year the Respondent had realized he was likely to face proceedings under the Rules, and so became evasive. The Panelist concludes that had the Complainant initially raised the issue of the .net Domain Name simultaneously with that of the .com Domain Name, the Respondent would have attempted to rent or sell it as well.

The Telstra case (WIPO Case No. D2000-0003) supports the proposition that non-use of the .net Domain Name in the above circumstances does in fact amount to use of the domain name in bad faith. The Panelist finds the Respondent’s conduct in relation to the .com Domain Name reinforces the finding of use in bad faith of the .net Domain Name.

In the light of the findings in paragraph 7 above, the Panelist concludes that:-

- the domain names <bankwithhsbc.com> and <bankwithhsbc.net> are confusingly similar to the trademark HSBC of the Complainant;

- the Respondent has no rights or legitimate interests in the domain names;

- the domain names have been registered and are being used in bad faith.

Accordingly, the Panelist orders that the domain names <bankwithhsbc.com> and <bankwithhsbc.net> be transferred to the Complainant, HSBC Holdings Plc.

Christopher Tootal
Sole Panelist

Dated: May 16, 2001