Procedural History

1. The disputed domain name is www.pps.com.hk (the Subject Domain Name) registered with the Hong Kong Domain Name Registration Company Limited (HKDNR). The Complainants are PCCW-HTK Limited and Electronic Payment Services Co. (H.K.) Ltd. (the Complainants) and the Respondent designated as Post Production Shop Limited (the Respondent).
   
   
2. On 16 May, 2003, the Complainants submitted their Complaint to the Hong Kong International Arbitration Centre (the HKIAC), in accordance with the Domain Name Dispute Resolution Policy (the Policy) of the HKDNR adopted by the HKDNR on 24 April 2001 and which came into effect on 1 June 2001, HKDNR Domain Name Dispute Resolution Policy Rules of Procedure (the Rules), and the HKIAC Supplemental Rules (the HKIAC Supplemental Rules).
   
   
3. The Complainants sought a single person panel.
   
   
4. On 16 May 2003 the HKIAC received the required filing fee from the Complainants and on the same day confirmed the receipt of the Complaint and the filing fee to the Complainants. On 16 May 2003 the HKIAC attempted to notify the Respondent by email of the claim by the Complainants but the email could not be delivered. On 20 May 2003 the HKIAC forwarded a copy of the Complaint to the Respondent by double-registered post, and on the same date the HKIAC notified the HKDNR, as Registrar of the Subject Domain Name, of the pending proceeding. The HKIAC, however, was unable to deliver the Complaint to the Respondent although it attempted to send the Complaint to the Respondent at the Respondent's email and postal addresses as set out in the HKDNR's WHOIS. Both the email and post were returned. The HKIAC also attempted to telephone the Respondent at the telephone number indicated for the Respondent in the HKDNR's WHOIS, but the telephone number proved to be a dead line.
   
   
5. The Respondent did not file a Response.
   
   
6. Having received on 16 June 2003 a Declaration of Impartiality and Independence and a Statement of Acceptance from Gavan Griffith Q.C., on 20 June 2003 the HKIAC notified the Complainant and the Respondent that Gavan Griffith, Q.C. was appointed as the sole Panelist in this matter. Again, the notification to the Respondent proved to be undeliverable.
   
   
7. On 25 June 2003, the HKIAC transferred the case file to the Panelist by post.
   
   
8. The Panelist finds that the Arbitration Panel was properly constituted and appointed in accordance with the Policy, the Rules and the HKIAC Supplemental Rules.
   
   
9. The Panelist has not received any further requests from the Complainants or the Respondent regarding other submissions, waivers or extensions of deadlines. There is no need, as an exceptional matter, to hold any in-person hearings as necessary for deciding the Complaint, as provided for in Paragraph 13 of the Rules.
   
   
10. The language of the proceeding is English, it being the language of the Registration Agreement, pursuant to Paragraph 11(a) of the Rules, and there being no express agreement to the contrary by the parties.

FACTUAL BACKGROUND

11. The factual and legal grounds on which the Complaint is based (without attaching the relevant exhibits are as follows.
    
    
1. The Complainants are Hong Kong companies, carrying on, in Hong Kong and elsewhere, the businesses of, among other things, telecommunications and electronic payment system services.
   
   
2. The Complainants are the joint proprietors of the following trade marks:-
   
   
1. "PAYMENT BY PHONE SERVICE & device" in Class 38 by registration dated 13th January 1995 granted by the Registrar of Trade Marks in Hong Kong and subsequently renewed;
2. "PAYMENT BY PHONE SERVICE & device" in Class 36 by Application No. 02251 of 2002 dated 18th February 2002, made with the Registrar of Trade Marks in Hong Kong;
3. "PPS" in plain text in Class 36 by Application No. 02252 of 2002 dated 18th February 2002, made with the Registrar of Trade Marks in Hong Kong; and
4. "PPS" in plain text in Class 38 by Application No. 02253 of 2002 dated 18th February 2002, made with the Registrar of Trade Marks in Hong Kong.
   
   (The above are hereinafter collectively referred to as "the Trade Marks" and each a Trade Mark")
   
   
3. The Complainants commenced using the Trade Marks as early as 1993 in relation to their services, namely electronic payment services, in Hong Kong and have made extensive use thereof in their business.
   
   
4. As for the Respondent, according to the records at the Companies Registry in Hong Kong, was wound up and dissolved in 1999.

PARTIES CONTENTIONS

For Claimants

12. According to the Claimants, they are the joint proprietors of the Trade Marks.
    
    
13. The Complainants contend that they commenced using the Trade Marks as early as 1993 in relation to their services, namely electronic payment services, in Hong Kong. The Trade Marks have been extensively used in Hong Kong. The Complainants assert that they provide a 24-hour bill payment service under the "PAYMENT BY PHONE" and "PPS" marks which allows customers or users to settle a wide range of bills simply by a tone phone or the Internet anytime, anywhere, and absolutely free of charge. The Complainants assert that the domain name: www.ppshk.com is held in the name of their holding company, PCCW-HKT DataCom Services Limited. At present, the Complainants have over 160 business partners which cover various industry, including utility companies, government departments, telecommunication companies, banking and credit card companies, insurance companies, educational institutions, charitable organizations etc. in Hong Kong and the "PPS" mark has been extensively displayed in the stores, kiosks, machines etc. which are associated with the services provided by the Complainants. In addition the Trade Marks have been used in the advertisements which were published widely in local newspapers and magazines, flyers, circulars, leaflets and directories. The Trade Marks have also been in the bill statements, letterheads, envelopes, user guides, stationeries, instruction panels, directories and various souvenirs such as memo pads and stickers which are produced by the Complainants for the purposes of trade. Copies of such material were submitted by the Complainants Furthermore, according to the Complainants a substantial proportion of the Hong Kong public have become customers or users of the services provided under the Trade Marks. The Complainants state that the annual turnover in relation services which are the subject of the Trade Marks has increased steadily year by year, from over HK$7,900,000.00 (approximately US$1,000,000.00) in 1995 to HK$62,800,000.00 (approximately US$8,000,000.00) in 2002. Uses of the Trade Marks have been extended to other services as claimed in classes 36 and 38.
    
    
14. Moreover, the Complainants contend that the Trade Marks have also been extensively promoted and advertised in Hong Kong and Asia Pacific. The annual advertising expenditures spent by the Complainants has increased from HK$2,400,000.00 (US$300,000.00) in 1998 to over HK$4,700,000.00 (US$600,000.00) in January to March 2003.
    
    
15. As a result of the foregoing, the Complainants contend, the Trade Marks have become well known in Hong Kong and have acquired strong reputation and goodwill.
    
    
16. The Complainants state that It has recently come to their attention that the Respondent is the registered holder of the Subject Domain Name, which, according to the Complainants, is confusingly similar to the Complainants' Trade Marks and domain name. The Complainants assert that they have received inquiries and complaints from their customers, business associates and staff evidencing confusion created by the Disputed Domain Name.
    
    
17. The Complainants go on to contend that their solicitors attempted on several occasions to approach the Respondent in regard to the Subject Domain Name but they were unable to contact the Respondent. The Complainants' solicitors attempted to approach the Respondent in February and March 2003 by email and post. However, the emails were returned by system default and the posted letter was returned to the sender through the dead letter system. Evidence was presented in regard to the Complainants' attempts to contact the Respondent. The Complainants go on to say that upon searching the records at the Hong Kong Companies Registry, it was found that the Respondent was wound up and dissolved in 1999. Evidence to such effect was presented by the Complainants.
    
    
18. The Complainants state that they are not aware of the use by the Respondent of the Subject Domain Name.
    
    
19. The Complainants further believe that the Respondent has no legitimate rights or interests in the Subject Domain Name.
    
    
20. By reason of the aforesaid, the Complainants pray for a transfer of the Subject Domain Name to them from the Respondent.

For Respondent

21. The Respondent has not participated in the proceedings.

Findings

22. Two issues arise for determination:- (A) Have the Complainants met the standards of proof required of them under the Policy? And if so, (B) are the Complainants entitled to the remedy of the Subject Domain Name being transferred to them?
    
    
23. Paragraph 4 (a) of the Policy requires the Complainants to establish that:
    
    
1. the Subject Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
   
   
2. the Respondent, as the registered holder of the Subject Domain Name, has no rights or legitimate interests in respect thereto; and
   
   
3. the disputed domain name has been registered and is being used in bad faith.
   
   This matter must be resolved in the context of the Policy based on the information provided to the Arbitration Panel, in the present case by the Complainants alone.

Identical/Confusingly Similart

24. The Panelist finds that the Complainants clearly have established rights for to the Trade Mark "PAYMENT BY PHONE SERVICE & device" originally registered in the Register of Trade Marks in Hong Kong on 13th January 1995 under No. BO6422. The Panelist notes that the device in this Trade Mark is a stylised "PPS".
    
    
25. The Panelist also finds, having regard to all the evidence provided by the Complainants regarding their extensive and long use of the term "pps" in their business, and in their promotional and other printed material, the impressive expenditure made by the Complainants to promote the term "pps", the extensive use of the term on the www.ppshk.com website, the no doubt high recognition which the Hong Kong public has in identifying the term ‘pps" with the Complainants services and products, combined with the established registered trade mark rights the Complainants do have leads the Panelist to conclude that the Complainants have rights to the common law trade mark "pps".
    
    
26. In addition, the Panelist finds that the Subject Domain Name is confusingly similar to the trade marks to which the Complainants have rights. On the evidence presented this has already occurred.
    
    
27. Accordingly, the Arbitration Panel is satisfied that the Complainants have met the requirements of Paragraph 4(a)(i) of the Policy.

Rights and Legitimate Interest

28. Paragraph 4(c) of the Policy states in effect that:-
    
    Any of the following circumstances, in particular but without limitation, if found by an Arbitration Panel to be proven based on its evaluation of all evidence presented to it, shall demonstrate a domain name holder's rights or legitimate interests to the domain name :-
    
    
1. before any notice of the dispute to the domain name holder, the latter's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services in Hong Kong ;or
   
   
2. the domain name holder (as an individual, business, or other organisation) have been commonly known by the domain name, even if it has acquired no trade mark or service mark rights in Hong Kong; or
   
   
3. the domain name holder is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
   
   
29. It should be stated at this time that the Panelist typed in www.pps.com.hk into his web browser and found that the address did not resolve to anything. The webpage which should have been at that address could not be found.
    
    
30. The Complainants have proven that the Respondent no longer exists at all as a legal entity, having been dissolved and struck of from the Hong Kong Companies Registry in 1999. There is no suggestion in the materials presented to the Panelist that the Subject Domain Name was transferred or purported to be transferred to another entity before the Respondent's dissolution. Indeed, the Respondent's name is still listed in the HKDNR's WHOIS as being the registered holder of the Subject Domain Name. As a result none of the three points referred to in Paragraph 30 above, which would assist a domain name holder to show its rights or legitimate interest in the Subject Domain Name. Indeed it seems difficult for the Panelist to see, in the circumstances, how the Respondent could possibly have any right or legitimate interest in the Subject Domain Name because it must follow as of course that on its winding up the Respondent ceased to have the capacity to have any legitimate interest in a registered domain name, including the Subject Domain Name.
    
    
31. The Arbitration Panel is satisfied that the requirements of Paragraph 4(a)(ii) of the Policy have been met.

Bad Faith

32. The next question to be determined is – was the Subject Domain Name registered and was it or is it being used in bad faith?
    
    
33. Paragraph 4(a)(iii)of the Policy puts forward in effect that the following circumstances, in particular but without limitation, if found by an Arbitration Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:-
    
    
1. circumstances indicating that a domain name holder has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to a Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the domain name holder's documented out-of-pocket costs directly related to the domain name; or
   
   
2. the domain name holder registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the domain name holder has engaged in a pattern of such conduct; or
   
   
3. the domain name holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
   
   
4. by using the domain name, the domain name holder has intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with a Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
   
   
34. Because of the somewhat unique circumstances of this case there does not seem to be any evidence that the Subject Domain Name was registered or used in bad faith. There is no evidence as to how the Subject Domain Name was registered or how it was used, except, as stated above, the address of the domain name does not resolve to anything. Moreover, it is hard for the Panelist to see how a non-existent entity could have any intent, good or bad, with regard to the Subject Domain Name.
    
    
35. Accordingly, the Arbitration Panel is not satisfied that the Complainants have met the requirements of paragraph 4(a)(iii).
    
    
36. In light of the foregoing, the Arbitration Panel cannot and will not order the transfer of the Subject Domain Name to the Complainants.
    
    
37. The Arbitration Panel, however, is of the view that in light of the fact that Respondent no longer exists as a legal entity and is thus not capable of holding any interest in the Subject Domain Name, the registration of the Subject Domain Name which is currently in the Respondent's name, should be cancelled.

Status

Decision

It is the determination of the Panel that the current registration of the domain name www.pps.com.hk in the name of the Respondent should be removed from the register of domain names kept by the Hong Kong Domain Name Registration Company Limited and to the extent necessary to effect such removal it is hereby directed that the said registration be cancelled.