03-Apr-2016
The dismissal of a complaint brought under the Domain Name Dispute
Resolution Policy for .hk domain names (“DNDRP”) highlighted the
importance of adducing sufficient evidence to back up assertions of bad
faith. This is especially so when the disputed domain name was
registered before the complainant had acquired rights in the relevant
trade mark.
In this case, the complainant was Vpower Engineering (Shenzhen) Ltd.
(“Complainant”), a power provider in Greater China and Southern Asia.
The respondent was allegedly a local business by the name of “VPOWER”
(“Respondent”). The disputed domain name was (“Domain
Name”). It was registered on 10 November 2008 by the Respondent with
the Hong Kong Domain Name Registration Company Limited.
Under paragraph 4(a) of the DNDRP, a complainant must satisfy the following three requirements:
- The domain name registered by the respondent is identical or confusingly similar to a trade mark or service mark in Hong Kong in which the complainant has rights (emphasis added); and
- The respondent has no rights or legitimate interests in respect of the domain name; and
- The domain name has been registered and is being used in bad faith.
These requirements are largely based on those under the UDRP, with
the notable difference that the complainant must prove rights in the
relevant trade mark or service mark in Hong Kong.
Regarding the first requirement, the Panel considered that the
Complainant satisfied this limb by identifying a Hong Kong trade mark
registration for a composite mark containing the mark “VPOWER” in
question. However, in respect of a number of other trade marks and
domain names apparently held in the names of the Complainant’s
affiliated companies, the Complainant failed to explain how those trade
mark registrations and domain names would amount to or be relevant to “a trade mark or service mark in Hong Kong in which the Complainant has rights“.
In particular, ownership of a domain name incorporating the trade mark
in question per se does not prove or constitute the requisite rights to
that trade mark in Hong Kong.
Regarding the second requirement, the Panel found in favour of the
Complainant as the Panel was unable to conclude that the Respondent had
rights or legitimate interests in the Domain Name. There was
inconclusive evidence as to the Respondent’s business status. The
Complainant made out a prima facie case and the Respondent failed to
submit evidence on whether “VPOWER” was its trade name or trade mark or
whether it has been commonly known by the Domain Name. The Panel
therefore found that the Complainant satisfied the second limb of
paragraph 4(a) of the DNDRP.
Regarding the third requirement, however, the Panel considered that:
- None of the Complainant’s cited trade mark applications and registrations preceded the date of registration of the Domain Name;
- As such, this was a case where the Domain Name was registered before
the Complainant had acquired rights to a trade mark or service mark in
Hong Kong. While this conclusion by itself does not preclude a finding
of bad faith, in such circumstances it would generally require stronger
evidence to prove that the Domain Name was registered in bad faith (e.g.
see “WIPO Overview 2.0“)
because normally the Respondent could not have contemplated the
Complainant’s then non-existent rights. To overcome this, the
Complainant would have to adduce clear evidence to show that at the time
of registration of the Domain Name, the Respondent was somehow aware of
the Complainant and such rights to a trade mark or service mark that
the Complainant is going to acquire;
- The Complainant did not adduce evidence of any unregistered rights
in the Complainant’s trade mark in Hong Kong (e.g. that the Complainant
has acquired any goodwill in Hong Kong)prior to registration of the
Domain Name;
- The Complainant did not adduce evidence that the Respondent was
aware of the Complainant and its relevant trade mark rights in Hong Kong
when the Domain Name was registered; and
- The Complainant only made bare assertions that the Respondent’s use
of the Domain Name would create a likelihood of confusion with the
Complainant’s trade mark amongst Internet users, without giving the
Panel any guidance as to what is considered confusing and where the
comparison should be drawn between.
The Panel therefore concluded that the Complainant failed to prove
that the Respondent had registered and used the Domain Name in bad
faith. Since the Complainant failed to satisfy the essential elements
in paragraph 4(a) of the DNDRP, the Complaint was dismissed.
The decision is available here.
This case is a timely reminder that complainants must adduce
sufficient evidence to the panel to support allegations of bad faith.
Bare assertions are not enough. This is especially so where the
complainant failed to acquire or prove earlier rights to the relevant
trade mark under the relevant country-code domain name dispute
resolution policy, such as the DNDRP here.