19 February, 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 <vpower.hk> (“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.
First published on Anchovy News: Anchovy® is our a comprehensive and centralised online brand protection service for global domain name strategy, including new gTLDs together with portfolio management and global enforcement using a unique and exclusive online platform developed in-house.
