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THE PARTIES AND CONTESTED DOMAIN NAME
The Complainant is Management Reports International (H.K.) Limited
of 26th Floor, Wing On Centre, 111 Connaught Road, Central, Hong Kong.
The Respondent is Reckon Hong Kong Limited (formerly, Intuit
Hong Kong Ltd.) of Unit D, 13th Floor, Guandong Tours Centre, 18 Perrington
St., Causeway Bay, Hong Kong.
The domain name at issue is "quicken.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
A Complaint in respect of "quicken.com.hk" was filed
with the Hong Kong International Arbitration Centre ("HKIAC")
in terms of the prescribed Form A on 5th December 2002.
The undersigned arbitrator was contacted by the HKIAC on 24th December
2002 and confirmed his acceptance of the case and declaration of impartiality
and independence to the HKIAC on 29th December 2002. The Form A Complaint
and supporting documents were sent to the Panelist on 31st December
2002.
The parties were given 7 days to object to Mr. Francis's appointment.
No adverse comment having been received from the parties, Mr. Francis's
appointment was confirmed on 2nd January 2003.
Following a review of the Complaint, the Panelist requested further
clarification of certain issues and invited the Complainant to provide
further evidence to support its claim. The Panelist received such
evidence on 20th February 2003.
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FACTUAL BACKGROUND
For Claimant
The Complainant states that it is a company registered in Hong Kong
and is a wholly owned subsidiary of Intuit Inc. ("Intuit"),
a corporation organized and existing under the laws of the State of
California, USA. The Complainant asserts that Intuit is the worldwide
owner of the trademark QUICKEN in connection with financial, accounting
and tax related goods and services, including online services.
In relation to the QUICKEN trade mark, the Complainant has submitted
documents to how that Intuit has 3 pending trade mark applications
in Hong Kong in Classes 9, 36 and 38 (filed in 1996 and 1997).
The Complainant has provided the following historical background,
together with supporting documentation (where appropriate).
Intuit has licensed to the Complainant the right to use the QUICKEN
mark for the purposes of registering and maintaining it as a domain
name in Hong Kong. The Respondent was a former distributor of Intuit
in Hong Kong. However, at no time did Intuit, either formally or informally,
give the Respondent the right to register the QUICKEN mark as a domain
name in Hong Kong.
The Complainant has submitted documents to demonstrate that the Respondent
has now been liquidated and that this process was completed on 10th
October 2002.
Prior to the liquidation, the Complainant attempted to obtain a transfer
of the domain name through the mechanism provided by HKDNR. The Complainant
has submitted a copy of a letter dated 5th April 2002 from Reckon
Pacrim Pty Limited ("Reckon Pacrim"), a company which wholly
owned the Respondent and which asserted that it was a beneficial owner
of the quicken.com.hk domain name prior to the Respondent's liquidation.
Reckon Pacrim stated in the letter that it consented to and raised
no objection to the transfer of the domain name to Intuit on condition
that Intuit bore the costs of such transfer. However, it appears that
the transfer was not completed at this time.
Subsequently, the liquidator of the Respondent was not in a position
to authorize the transfer of the domain name in issue given that the
request to transfer the domain name was made by the Complainant on
19th October 2002, after the liquidation had been completed. Accordingly,
the Complainant's attempts to transfer the domain name were unsuccessful.
The Complainant has also submitted a letter dated 17th December 2002
from Reckon Limited ("Reckon") (formerly, Reckon Software
Pty. Ltd.), the technical contact of the domain name, in which Reckon
stated that it consented to and raised no objection to the transfer
of the domain name, quicken.com.hk, to the Complainant.
For Respondent
The Respondent has been wound-up. Accordingly, the Respondent has
not filed any documents by way of background.
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PARTIES' CONTENTIONS
The Complainant
The Complainant contends that the registration of the domain name
should be transferred to it. The Complainant has filed evidence to
support its Complaint.
The Respondent
The Respondent has been wound-up. Accordingly, the Respondent has
not filed any response to the Complaint nor any evidence in support
thereof.
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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.
Identical / Confusing Similarity
The Complainant has provided evidence to substantiate that it has
rights in the trade mark "QUICKEN" in Hong Kong in terms
of both registered rights (and applications therefor) and unregistered
rights (through Intuit and the Complainant carrying on business under
and by reference to the trade mark in Hong Kong). The domain name
in issue, namely quicken.com.hk, is identical to the trade mark "QUICKEN"
in which the Complainant has rights. As such, the Panel finds that
the domain name in issue registered by the Respondent is identical
or confusingly similar to trade marks in Hong Kong in which the Complainant
has rights.
Right or Legitimate Interests of the Respondent
The Complainant asserts that Intuit granted only a limited licence
to the Respondent to use its trade marks. Furthermore, the Complainant
has filed evidence to the effect that the Respondent was not permitted
by Intuit to apply for or use any domain name incorporating its trade
marks. The Respondent has not provided any evidence of any circumstances
giving rise to a right to or legitimate interests in respect of the
domain name in issue. In fact, given that the Respondent has been
wound up and its liquidation has been completed, there is currently
no beneficiary owner of the Respondent's registration of the domain
name in issue. The Panel therefore concludes that the Respondent has
no rights or legitimate interests in the domain name in issue.
Bad Faith
The test for bad faith is conjunctive and there must be evidence
not only that the domain name has been registered in bad faith, but
also that it is being used in bad faith. The Complainant has provided
prima facie evidence of bad faith on the part of the Respondent in
registering the domain name. The Respondent was the Hong Kong distributor
of Intuit and registered the domain name without obtaining Intuit's
permission.
In terms of use of the domain name, the Respondent has already been
wound up, it no longer conducts any business activity and it cannot
now use the domain name.
It was established in "Telstra Corporation Limited v. Nuclear
Marshamallows" [WIPO Case No. D2000-0003] (and applied in "Outblaze
Limited -v- Wah Cheung Leatherware Company Limited" [HKIAC Case
No. 0106-0001]) that inactivity and passive holding of a domain name
may be construed as positive action in bad faith if relevant circumstances
are present. In the instant case, the following circumstances are
present:
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there has been a lack of use of the Respondent's website as a
result of the Respondent's liquidation;
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the permanence of the domain name registration and the existence
of an inaccessible website may lead internet users to believe
that the Complainant does not own the quicken.com.hk pages or
that it is not technically able to maintain an active website
(see "Group Financiero Inbursa, S.A. de C.V. -v- Alejandro
Delgado-Ayala" [WIPO Case No. D2001-0172]); and
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the Respondent has provided no evidence of any actual or contemplated
good faith use by it of the domain name (Telstra, above).
The circumstances listed above are relevant and lead the Panel to
infer and to find, in the absence of any evidence from the Respondent
to the contrary, that the domain name in issue was registered and
is being used in bad faith.
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ARBITRATION DECISION
The Panel requires that the domain name, quicken.com.hk, be transferred
from the Respondent to the Complainant..
