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THE PARTIES AND CONTESTED DOMAIN NAME
The Complainant is Outblaze Limited of 3rd Floor, Nan Dao
Commercial Building, 359-361, Queen's Road Central, Hong Kong.
The Respondent is Wah Cheung Leatherware Company Limited of
Unit C, 4th Floor, Mow Shing Centre, 118, Bedford Road, Tai Kok Tsui,
Kowloon, Hong Kong.
The domain name at issue is "www.outblaze.com.hk",
registered by the Respondent with the Hong Kong Domain Name Registration
Co. Ltd. or HKDNR (previously administered as HKNIC) of 306A, HKITC,
72 Tat Chee Avenue, Kowloon Tong, Hong Kong.
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PROCEDURAL HISTORY
The Complaint (and supporting documents) was received by the Hong
Kong International Arbitration Centre ("HKIAC") in terms
of the prescribed Form A on June 14, 2001. The HKIAC contacted the
Complainant by email on June 16, 2001 requesting for confirmatory
documents which were missing and this was subsequently rectified by
the Respondent on June 19, 2001. The HKIAC forwarded the Notification
of the Complaint to the Respondent and Complainant on June 19, 2001
and the HKDNR on June 21, 2001. The HKIAC has verified that the Complaint
satisfies the formal requirements of the HKDNR Domain Name Dispute
Resolution Policy ("the Policy"), the HKDNR Domain Name
Dispute Resolution Policy Rules of Procedure ("the Rules")
and the HKIAC Supplemental Rules and that payment of the requisite
fees was properly made.
The Complaint was properly filed and notified in accordance with
the Rules.
There was no response from the Respondent and all registered mail
to the Respondent was returned to the HKIAC.
The undersigned Arbitrator was contacted by the HKIAC on July 12,
2001 and confirmed his acceptance of the case and declaration of impartiality
and independence to the HKIAC on July 16, 2001. The Complainant and
Respondent were notified of the proposed Arbitrator Panelist ("Panelist")
Appointment on July 16, 2001 and the confirmation of the Panelist
Appointment was made to the Complainant, Respondent and the undersigned
Panelist on July 19, 2001.
On July 27, 2001, the Panelist was notified by the HKIAC that there
had still been no response from the Respondent.
Following a review of the Complaint and related materials, and in
accordance with Rule 2 of the Rules, the Panelist requested on August
1, 2001 for further clarification details in relation to the "instances
of confusion" mentioned in the Complaint and invited the Complainant
to provide further documentary evidence and materials, where available.
The parties were notified of the request for further information
and a chain of correspondence ensued whereupon an extended grace period
was given to the Complainant to furnish additional clarification materials
and this evidence was separately sent to the HKIAC and Panelist on
August 11, 2001 and September 14, 2001.
No further materials were received by the HKIAC and the Panelist
thereafter.
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FACTUAL BACKGROUND
The Complainant describes itself generally as a "well-known
application service provider in the Internet market". Since its
incorporation in Hong Kong in 1998 as a private company, it has claimed
to have become the leading "application service provider of
information, communications, marketing and commerce platforms for
all businesses".
The following historical background was provided by the Complainant.
Up till May 2001, it had a workforce of up to approximately 100 people
in Hong Kong, Beijing, Seoul, San Francisco and Germany.
In its inception year, it pioneered the development and provision
of multilingual Internet community solutions ("portal solutions")
suitable for any organizations that wished to offer their own private
label web technologies without having to develop or purchase expensive
platforms. It also provides I.T. consulting services to assist all
clients, regardless of their nature or specialization in the digital
economy. Unlike many Internet start-ups, the Complainant does not
provide Web-site content but rather, the infrastructure that allows
sites to operate as portals to the Web. Portals are understood to
be supersites that provide services such as free email, online shopping,
message boards, discussion groups, etc. The Complainant basically
sets up the technological framework to enable companies to turn their
sites into portals.
Amongst its range of integrated technology products and services
are web-based email; chat; forums; mailing lists; messaging and more
importantly for this case, File Cabinet/Manager. The Complainant
has highlighted in its complaint materials a campus website by one
of its clients, Student Media Group Ltd., which won a business award
in January 2001 by using the Complainant's File Cabinet/Manager
services.
According to various media reports in regional and international
business and technology newspapers publications including the Far
Eastern Economic Review; Smart Investor; InternetNews.com; Business
Times; South China Morning Post, the Complainant is often hailed as
a trailblazer in the internet field and lays its claim to fame as
the first successful Hong Kong Internet Company to be funded substantially
by Hong Kong money. Its founder Yat Siu is described as an "Internet
whiz kid" and is often featured in various publications and press
stories on the internet.
The Complainant claimed to have applied for its "OUTBLAZE"
trademark in Hong Kong, the USA and the PRC in April 2000, covering
relevant services in Classes 38 and 42 and provided records relating
to the applications in Hong Kong and its recent advertisements in
the Hong Kong Trademark Gazette in this regard.
Little is known of the Respondent except for its address in Tai Kok
Tsui, Kowloon and the contact person of the disputed domain name ("www.outblaze.com.hk")
as being a Heung Chau Wah (sic) having the same postal address as
the Respondent.
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PARTIES' CONTENTIONS
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The Complainant
The Complainant contends that since the launch of the disputed
site of "www.outblaze.com.hk" by the Respondent in May
2001, the Complainant has been receiving inquiries and complaints
from its customers, business associates and own staff about this
competing site which offers "similar services" by using
the "outblaze" name.
The Complainant claims that it has built up a successful internet
business since May 1998 and hence achieved "respect" in
the business and internet fields for its strong branding and business.
The Complainant refers to its trademark applications for "OUTBLAZE"
in Hong Kong, the USA and the PRC in Classes 38 and 42 to affirm
its rights.
The Complainant argues that in light of this, the activities of
the Respondent in launching its website "www.outblaze.com.hk"
in May 2001 for similar "File Manager" services (acknowledging
at the same time that the website is still under construction) is
tantamount to taking advantage of the goodwill of the Complainant
and is an act of "passing-off". It states that the Respondent
has no legitimate rights or interests in the "outblaze"
domain name and the Respondent's use of this "OUTBLAZE"
domain name has caused a conflict with the Complainant's business.
While it is recognized that the Respondent's site is not fully
operational, the service which the Respondent offered (as evidenced
by a computer printout from the internet on May 6, 2001) is "File
Manager", which the Complainant argues, is identical to the
"File Manager" service which the Complainant offers to
its clients.
In light of the brevity of the initial supporting evidence, this
Panelist requested for an account of the "instances of confusion"
whereupon, the Complainant made the following assertions and provided
further materials:-
- During June 2001, the Complainant received numerous phone calls
from clients inquiring into the different pricing of the "File
Manager" service which they had been quoted by the Complainant's
sales team and the pricing offered at the Respondent's "www.outblaze.com.hk";
- The Respondent's website content changes periodically and the
Complainant provided an additional computer printout from the
internet on July 12, 2001 showing the Respondent's similar "Web
Solution" and "Web Mail" services;
- The Respondent has no intention to conduct real business and
has intentionally created a site that misleads online users into
believing that it is a "real solution" company;
- The Respondent has damaged the reputation of the Complainant's
company due to its false claims;
- Many consumers and business partners of the Complainant are
misled into thinking that both the Complainant and Respondent
are related companies;
- It is not coincidental that the Respondent's only (apparently)
forthcoming product "File Manager" has been named as
such and this product name has in fact been taken from the Complainant's
service stable which includes the "File Manager" service;
and
- The quality of the Web design and content at the disputed site
is very poor and inferior and this is repeatedly thought to be
the work of the Complainant because of the nature of the "Outblaze"
URL.
The only tangible example of "confusion" which has been
documented is a Testimonial Letter from one of the Complainant's
client dated August 6, 2001 [by Mr. Prawat Chimtanwan, the CEO of
Dream Concept, Bangkok, Thailand] to Ms. Kelly Leung, one of the
Complaint's sales representative, suggesting that the different
pricing advertised at the disputed site and the quotation given
by Ms. Leung had confused him and it was only after some discussions
before he realized that the disputed website did not belong to the
Complainant.
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The Respondent
The Respondent has not responded. It has therefore not contested
the allegations of the Complaint and is in default.
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DISCUSSION AND FINDINGS
General
According to paragraph 4(a) of the Policy, the Complainant has the
burden of proving that:-
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The Respondent's Domain Name is identical or confusingly similar
to a trademark or service mark in Hong Kong in which the Complainant
has rights; and
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The Respondent has no rights or legitimate interests in respect
of the Domain Name; and
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The Respondent's Domain Name has been registered and is being
used in bad faith.
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Identical / Confusing Similarity
The disputed domain name is "outblaze" and is identical
to the Complainant's distinctive "OUTBLAZE" mark which
has been recently advertised in the Hong Kong Government Gazette
on July 13, 2001 for Classes 38 and 42 (corresponding to Application
No. 07836 of 2000 and Application No. 07837 of 2000). These applications
were filed on April 11, 2000, before the application date for
the disputed domain name, which the HKIAC has confirmed to be
June 14, 2001.
It is clear from the trend of case law (see the "SeekAmerica
Networks Inc. v. Tariq Masood and Solo Signs" [WIPO Case
No. D2000-0131]; "MatchNet plc v. MAC Trading"
[WIPO Case No. D2000-0205]; "British Broadcasting Corp.
v. Renteria" [WIPO Case No. D2000-0050]) that it is not
necessary for the relevant trademark rights to be registered before
the Complainant can lay claim and establish rights to a mark.
In fact, it was recognized in these domain name cases that the
WIPO Final Report on the Internet Domain Name Process dated April
30, 1999 at paragraphs 149-150, from which the WIPO Uniform Policy
is derived and upon which the Policy is also a parallel, does
not distinguish between registered and unregistered trademarks
and service marks in the context of abusive registration of domain
names. In the case of "Bennett Coleman & Co. Ltd.
v. Steven S. Lalwani" and "Bennett Coleman &
Co. Ltd. v. Long Distance Telephone Company" [WIPO Consolidated
Cases Nos. D2000-0014 and D2000-0015], it was argued that "it
is the reputation from actual use which is the nub of the complaint,
not the fact of registration as trademarks."
Applying the "reputation" test to the evidence at hand
and in the absence of any rebuttal evidence from the Respondent,
the Panel is satisfied that there is a sufficient level of reputation
in the trade and industry in Hong Kong and the region in the unregistered
"OUTBLAZE" mark belonging to the Complainant as to give
the Complainant a claim of passing off, and hence sufficient to
constitute the Complainant's trademark rights for the purpose
of paragraph 4(a) of the Policy.
The Panel therefore concludes that the domain name "outblaze.com.hk"
registered by the Respondent is identical or confusingly similar
to a trademark or service mark in Hong Kong in which the Complainant
has rights.
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Right or Legitimate Interests of the Respondent
Paragraph 4(c) of the Policy stipulates how a Respondent can
effectively demonstrate rights or interests in the disputed domain
name.
"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
your rights or legitimate interests to the domain name for purposes
of Paragraph 4(a)(ii):
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before any notice to you of the dispute, your 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 and services in Hong Kong; or
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you (as an individual, business, or other organization) have
been commonly known by the domain name, even if you have acquired
no trademark or service mark rights in Hong Kong; or
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you are making a legitimate non-commercial or fair use of
the domain name, without intent for commercial gain to misleadingly
direct consumers or to furnish the trademark or service mark
at issue."
In this case, the Respondent made no effort to reply to the present
Complaint. The Complainant has also not licensed or otherwise
permitted the Respondent to use its "OUTBLAZE" mark
or to apply for any domain name incorporating the mark.
The Panel accepts the Complainant's argument that it cannot be
pure coincidence that has led the Respondent to choose "Outblaze"
for its Domain Name. Even though "Outblaze" is a dictionary
word meaning, inter-alia, "to blaze forth; to burst out with
ardour; to outshine in brilliancy, etc.", it is not a word
which Hong Kong traders in the internet community could legitimately
choose unless they were intending to create a false association
with the Complainant.
In the large majority of cases where the Respondent fails to
file a response to the allegations made by the Complainant, the
working principle is that "all reasonable inferences of
fact in the allegation of the Complainant are deemed to be true".
(See "Club Mediterranee v. Yoshi Hasidim" [WIPO
Case No. D2000-1350]; "CALEBTechnologies Corporation v.
Caleb Technologies, Inc." [NAF Case No. FA0006000095033],
for example).
In the circumstances and in accordance with Clause 14(b) of the
Rules, the Panel is led to draw a negative inference from such
inaction by the Respondent and concludes that the Respondent has
no rights or legitimate interests in respect of the Domain Name.
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Bad Faith
Under Paragraph 4(b) of the Policy, the following circumstances,
in particular but without limitation, shall be considered evidence
of the registration and use of a domain name in bad faith.
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"you have registered the domain name primarily
for the purpose of disrupting the business of a competitor;
or
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by using the domain name, you have 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 the 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."
The Respondent's acts in registering and using the domain name
"outblaze.com.hk", in itself, is "suggestive"
of "bad faith" as the Respondent is resident in Hong
Kong where the Complainant has an established business presence
and distinguished profile in the internet community for several
years and an established goodwill for the "OUTBLAZE"
trademark and tradename. The Respondent's "bad faith"
is arguably compounded by its repeated failure to reply to the
present Complaint and related correspondence from the HKIAC.
However, the Complainant gives only a few examples of the offering
of similar services (e.g. the offering of the "File Manager";
"Web Solution"; "Web Mail" services) by the
Respondent and provides some evidence of the disruption of business
and consumer confusion arising from these activities. In light
of the grace/extended period given to the Complainant to furnish
more substantial evidence, this Panelist notes that the efforts
of the Complainant in substantiating the bad faith of the Respondent
could have been greater. The Panelist is cognizant of the case
of "eMedicine.com Inc. v. Aspen Grove Consulting"
[WIPO Case No. D2001-0147], wherein the Respondent had no legitimate
interest in the domain name and it was confusingly similar, yet
due to lack of evidence of disruption of the Complainant's business,
bad faith was not established by the Complainant and the request
of transferring the domain name to the Complainant was denied.
In the absence of better evidence, it is therefore less clear
cut whether the Complainant has proved the third element in Paragraph
4(a) of the Policy, namely that the domain name "has been
registered and is being used in bad faith"
by the Respondent, a "conjunctive" rather than a "disjunctive"
test.
This Panelist tried to access the disputed website on several
occasions but without success. It appears that the disputed domain
name does not resolve to an active website or other "on-line"
presence (please see "Parfums Christian Dior v. QTR Corporation"
[WIPO Case No. D2000-0023]).
As with the case of "Telstra Corporation Limited v. Nuclear
Marshmallows" [WIPO Case No. D2000-00003], there appears
similarly in this case to be no positive action being undertaken
by the Respondent in relation to the domain name. The test which
was suggested in the Telstra case is, on balance, a judicious
and rational one, i.e., "whether, in all the circumstances
of the case, it can be said that the Respondent is acting in bad
faith". The Panelist in that case explains that "it
is possible, in certain circumstances, for inactivity by the Respondent
to amount to the domain name being used in bad faith".
In other words, the circumstances of bad faith identified in
Paragraph 4(b) can equally be found in a situation of "inaction"
(e.g. "passive holding" of the domain name registration).
After all, the circumstances identified in Paragraph 4(b) are
"without limitation".
Looking at the "circumstances" of the Complaint in
this case, this Panelist believes that the Respondent had acted
in bad faith. What holds sway is the fact that the Complainant
has an established reputation and is widely known in the internet
community and trade, both in Hong Kong and outside Hong Kong.
The Respondent has provided no evidence whatsoever of any actual
or contemplated good faith use by it of the "OUTBLAZE"
domain name. In the circumstances and drawing a negative inference
from the Respondent's silence, "passive holding" of
the domain name registration can only be reflective of the Respondent
acting in "bad faith".
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ARBITRATION DECISION
In light of the abovementioned findings, the Panel decides:-
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That the "Outblaze.com.hk" Domain Name is identical
or confusingly similar to the "OUTBLAZE" trademark or
service mark in Hong Kong in which the Complainant has rights;
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That the Respondent has no rights or legitimate interests in
respect of the "outblaze.com.hk" Domain Name; and
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That the Respondent's "outblaze.com.hk" Domain Name
has been registered and is being used in "bad faith".
As such, the Panel requires that the registration of the "outblaze.com.hk"
Domain Name be transferred to the Complainant.
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