The Complainant is Singapore Press Holdings Limited of Singapore, represented by Baker & McKenzie.Wong & Leow, Singapore.
The Respondent is Leong Meng Yew of Singapore.
The Disputed Domain Name <st7o1.com> is registered with NameSecure L.L.C.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 12, 2009. On August 12, 2009, the Center transmitted by email to NameSecure L.L.C. a request for registrar verification in connection with the Disputed Domain Name. On August 12, 2009, NameSecure L.L.C. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 18, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was September 7, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 8, 2009.
The Center appointed Kar Liang Soh as the sole panelist in this matter on September 25, 2009. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On October 9, 2009, the Panel issued Procedural Order No 1 directing the Complainant to submit a Whois report of the Complainant's domain name <st701.com> and further information relating to the use of the ST701 mark by the Complainant by October 16, 2009 and giving a corresponding opportunity to the Respondent to submit comments on the same by October 23, 2009. The Complainant complied with Procedural Order No 1 on October 15, 2009. No comments from the Respondent were received.
The Complainant is a leading newspaper, magazine and classified advertising publisher in Singapore. To reach a broader global audience, the Complainant developed an online classified advertising portal at the URL “www.st701.com” which is resolved from the Complainant's domain name <st701.com>. The Whois search of the Complainant's domain name <st701.com> indicates that it was registered on February 13, 2006.
The Complainant's ST701 trade mark was first published on March 21, 2006, in the Straits Times. The Straits Times is the Complainant's flagship publication and is a widely read newspaper in Singapore with a readership of about 1.23 million. The ST701 trade mark was published as part of a newspaper article announcing the Complainant's plan to launch their website under their domain name <st701.com> on March 24, 2006, as an online platform for classified advertisements. Pamphlets relating to the Complainant's portal were also widely distributed. Use of the ST701 trade mark by the Complainant has since expanded to Malaysia, Indonesia, Thailand and Hong Kong (SAR of China).
The Complainant owns registrations for the ST701 trade mark in various jurisdictions including the following Singapore trade mark registrations for the plain character combination “ST701”:
T0606537J ST701 16 April 6, 2006
T0606538I ST701 35 April 6, 2006
T0606539G ST701 36 April 6, 2006
T0606540J ST701 38 April 6, 2006
According to the WHOIS report, the Disputed Domain Name was registered on March 21, 2006, the day the Complainant launched their classified advertisement portal under the domain name <st701.com>.
The Complainant alleges that:
a) The Disputed Domain Name is similar to their ST701 trade marks and almost identical to their domain name <st701.com>. The Respondent's registration of the Disputed Domain Name is a case of typo-squatting;
b) The Respondent has no legitimate interests in respect of the Disputed Domain Name. As at July 24, 2009, there was no original content hosted on the website resolved from the Disputed Domain Name and merely redirected visitors to the Complainant's website. There is no evidence that the Respondent has ever been commonly known by the Disputed Domain Name. Neither has the Respondent been licensed, assigned or authorized to use the ST701 trade mark by the Complainant; and
c) The Disputed Domain Name was registered and is being used in bad faith. The Disputed Domain Name was a deliberate attempt by the Respondent to attract, for commercial gain, Internet users to another online location by creating a likelihood of confusion with the Complainant's website. The Respondent knew about the Complainant's domain name <st701.com> and its ST701 trade mark.
The Respondent did not reply to the Complainant's contentions.
To be successful in this proceeding, the following limbs of paragraph 4(a) of the Policy must be established:
(i) The Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) The Disputed Domain Name has been registered and is being used in bad faith.
The various trade mark registrations of the Complainant leave no doubt that the character combination ST701 is a trade mark in which the Complainant has rights.
The fact that the Complainant's trade marks post-date the registration of the Disputed Domain Name (barely 3 weeks later) is of little import when considering paragraph 4(a)(i) of the Policy. It is a consensus view laid out in paragraph 1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (accessible on the WIPO website) as follows:
“1.4 Does the complainant have UDRP-relevant trademark rights in a mark that was registered, or in which the complainant acquired unregistered rights, after the disputed domain name was registered?
Consensus view: Registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity. The UDRP makes no specific reference to the date of which the owner of the trade or service mark acquired rights. However it can be difficult to prove that the domain name was registered in bad faith as it is difficult to show that the domain name was registered with a future trademark in mind.”
In any event, the Panel accepts that even before the ST701 trade marks were registered by the Complainant, the registration of the Complainant's domain name <st701.com> and subsequent use of the ST701 trade mark via various avenues on- and off-line establishes prima facie that the Complainant has some rights at common law in relation to the ST701 trade mark by March 21, 2006.
There are broadly 2 categories of cases involving domain names which are confusingly similar to trade marks – (1) where the domain name is a misspelling of the trade mark; and (2) where the domain name adds a descriptive or generic prefix/suffix to the trade mark (ACCOR v. Brigit Klostermann, WIPO Case No. D2005-0627).
“Typo-squatting” is a special instance of the former category where the misspelling takes the form of character variations which are similar (eg, replacing letter “i” with letter “l”, letter “i” with number “1”, number “l” with letter “1”, or vice versa). The present case epitomizes such a form of misspelling. The letter “o” (in the Disputed Domain Name) and the number “0” (in the ST701 trade mark) are essentially closed circular outlines, differing mainly in height and/or width. In some typefaces, the letter “o” and the number “0” are very difficult to distinguish.
Adding further to the potential for confusion is the common practice of reading the number “0” as the letter “o” in ordinary speech when reciting a string of numbers (eg, “90210” could be read as “nine-oh-two-one-oh”). It was not surprising that previous panels have found confusing similarity where the letter “o” in a trade mark was swapped with the number “0” in the domain name (<gameb0y.com> in Nintendo of America Inc. v. Max Maximus, WIPO Case No. D2000-0588; <0pusdei.com> in Prelatura Personal Opus Dei, Región de España v. 0pusdei.com is for sale. Send, WIPO Case No. D2003-0213; <accorh0tels.com> in ACCOR v. Brigit Klostermann). Although, the present case involves the opposite situation of swapping the number “0” in a trade mark with the letter “o” in the domain name, the reasoning does not differ.
Therefore, this Panel holds that the Disputed Domain Name is confusingly similar to the ST701 trade mark. Further, not only is confusingly similarity made out, in view of the strong visual and potential verbal similarity between the number “0” and the letter “o”, it will be nigh impossible for a domain name to be regarded as other than identical to a trade mark if the only difference is the swapping of the number “0” with the letter “o”, or vice versa.
The Complainant's serious allegations against the Respondent in relation to the Respondent's lack of rights or legitimate interests in the Disputed Domain Name have not met any hint of challenge or resistance from the Respondent. The Panel is satisfied that the Complainant's contentions in this regard have been made out and it is established prima facie that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. Not having been refuted by the Respondent, the finding under the second limb of paragraph 4(a) stands for the Complainant.
Before addressing the issue of bad faith proper, it is pertinent to address paragraph 1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions which highlights that the difficulty of proving bad faith registration as it is difficult to show that the domain name was registered with a future trademark in mind. The Panel acknowledges this difficulty but does not regard it as a concern under the present facts.
Even though the Complainant's trade mark registrations post-date the registration of the Disputed Domain Name, the Complainant's first use of the ST701 trade mark to distinguish its offerings started much earlier as a domain name on February 13, 2006. The significant publicity surrounding the ST701 trade mark and the Complainant's portal on March 21, 2006, and the registration of the Disputed Domain Name on the same date prima facie provides a reasonable and fair explanation that the Disputed Domain Name was registered with the ST701 trade mark in mind.
The Disputed Domain Name does not resolve to an independent website but redirects to the Complainant's website at “www.st701.com”. This clearly indicates that the Respondent is aware of the Complainant, the Complainant's website and the content on the Complainant's website. It is otherwise inconceivable as to why the Respondent would implement the redirection. It leads to the inexorable conclusion that the Respondent is either aware of the association between the Disputed Domain Name and the ST701 trade mark or desires to associate the Disputed Domain Name with the ST701 trade mark, or both.
The fact that the Disputed Domain Name was registered on the very day of the launch of the Complainant's website at “www.st701.com” is very suspicious. The subsequent action of the Respondent in redirecting traffic to the Complainant's website removes any doubt that coincidence was at play. If such were not the case, the Respondent had every opportunity to clarify and/or explain. All these serious allegations were raised by the Complainant and communicated to the Respondent. Regardless, no reaction could be elicited from the Respondent.
The panels in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, Compagnie Gervais Danone v. Yao Renfa, WIPO Case No. D2008-0582, UPM-Kymmene Corporation v. yongxi zhang, WIPO Case No. D2009-0882, and many others had to deal with similar circumstances featuring the following key ingredients:
1) The respondent was an individual, not a business entity;
2) It was not possible to conceive of any plausible, legitimate, actual or contemplated use of the disputed domain name by the respondent;
4) There was no apparent evidence of actual or contemplated use of the disputed domain name by anyone; and
5) The respondent failed to respond to the complaint.
Granted, most of these cases involved a well-known mark. The Complainant in this case has not claimed that ST701 is a well-known mark and the evidence provided does not assist in reaching any conclusion in that regard. However, the principle that can be gleaned from these cases is unmistakable, namely, that the respondent could not deny knowledge of the trade mark (because it is a well-known mark) and then claim to have adopted the disputed domain name in good faith in the circumstances.
In the present case, whether the ST701 trade mark is well-known mark is immaterial. By redirecting visitors to the Complainant's website, the Respondent has admitted by conduct that he knows of the ST701 trade mark. Similarly, as in the cases highlighted above:
1) The Respondent is an individual, not a business entity;
2) It was not possible to conceive of any plausible, legitimate, actual or contemplated use of the Disputed Domain Name by the Respondent;
4) There was no apparent evidence of actual or contemplated use of the Disputed Domain Name by anyone (other in the form of redirecting to the Complainant's website); and
5) The Respondent failed to respond to the Complaint.
Having considered the circumstances, this Panel concludes that the Disputed Domain Name was registered and used in bad faith by the Respondent.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <st7o1.com>, be transferred to the Complainant.
Kar Liang Soh
Dated: November 6, 2009