Intellectual Property – Domain Name Arbitration – Hong Kong Domain Name Registration Policies, Procedures and Guidelines for .hk and .香港 domain names (“Policy”) – Arbitration Ordinance – misleading visits to a website selling products from competitors of the genuine manufacturer amounts to a finding that the registration and use of the Disputed Domain Name in bad faith
First Complainant (hereinafter “C1”) was a developer and manufacturer of Drone control systems and drone solutions incorporated in 2006 in Shenzhen PRC with branches setting up in Beijing, Hong Kong, the US, Germany, Japan and elsewhere. C1 had also registered trade marks incorporating “DJI” (“Trade mark”) in Hong Kong and Mainland China. Second Complainant (hereinafter “C2”) was formed in 2008 as an operative arm of C1’s business in Hong Kong. Respondent (“R”) engaged in a trading business in Hong Kong selling drones, aerial photography equipment and related products similar to C1 and C2 (hereinafter “Cs”).
On 13 January 2016, Cs jointly filed a complaint in Chinese language against R with Hong Kong International Arbitration Centre (“HKIAC”) seeking to transfer the Disputed Domain Name to C2 based on the following elements, namely:
- Disputed Domain Name was identical or confusingly similar to Cs’ trade mark in Hong Kong in which Cs had rights;
- R had no rights or legitimate interests in respect of Disputed Domain Name. Cs had neither licensed R to use the registered trade mark “dji” nor authorised R to use their Intellectual Property. Further, upon checking the database of Hong Kong Intellectual Property Department (“IPD”), no registered trade mark in connection with “dji” was found; and
- The Disputed Domain Name had been registered and was being used in bad faith.
R rebutted Cs’ Complaint by submitting, among other things:
- Cs’ trade mark was not identical to the Disputed Domain Name see HKIAC Case, DHK-1000058 <mls.com. hk>. Since Cs’ device could be read in various ways and thus the Disputed Domain Name and Trade mark are not confusingly similar to each other.
Held, granting the relief sought, that:
- The Panel was satisfied that the Disputed Domain Name was confusingly similar, if not identical, to C1’s common law trade mark rights in Hong Kong.
- The Panel was of the view that by infringing upon C1’s name and mark to mislead and misdirect Internet users to R’s website, R was blocking Cs from making direct Internet sales through C1’s website and the cost of a middle man or distributor, in this case R, would presumably be saved. R’s use of the Disputed Domain Name wrongfully mislead Cs’ potential customers to R’s own website and also increased the risk to C that potential Internet customers would purchase drones and related products from Cs’ competitors, thereby depriving Cs’ sales altogether. The Panel was satisfied that R registered and used the Disputed Domain Name in bad faith.
The Panel ordered that the Disputed Domain Name be transferred to C2.
(The full decision can be downloaded in the website of HKIAC at http:// www.hkiac.org/sites/default/files/ ck_filebrowser/IP/hk/decision/DHK- 1600128_Decision.pdf)