The Complainant is Singapore Airlines Limited of Singapore represented by Sheppard Mullin Richter & Hampton of United States of America (“USA”).
The Respondents are Wilson Yang and Chuan Lee of California, USA.
The disputed domain name <silverkris.com> (the “Domain Name”) is registered with GoDaddy.com, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 12, 2009, naming Wilson Yang as the Respondent.
The Center transmitted its request for registrar verification to the Registrar on August 13, 2009. The Registrar responded on August 13, 2009, stating that it had received a copy of the Complaint, that the Domain Name was registered with it; that the Respondent, Wilson Yang, was the registrant of the Domain Name; that the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) applied to the Domain Name; that the Domain Name would expire on July 5, 2010 and would remain locked during this proceeding subject to expiry; that the registration agreement was in English; and that the Domain Name was transferred to the Registrar in the name of the Respondent, Wilson Yang, on February 7, 2004. The Registrar also provided the contact details held in respect of the Domain Name on its WhoIs database.
The Center verified that the Complaint satisfied the formal requirements of the 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent, Wilson Yang, of the Complaint, and the proceedings commenced on August 18, 2009. By a fax received by the Center on August 31, 2009, the Respondent Wilson Yang stated that the true owner of the Domain Name was Chuan Lee of California, USA.
In accordance with paragraph 5(a) of the Rules, the due date for Response was September 7, 2009. A Response was filed with the Center by Chuan Lee on September 7, 2009.
The Center appointed Jonathan Turner as the sole panelist in this matter on September 9, 2009. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules.
Having reviewed the file, the Panel is satisfied that the Complaint complied with applicable formal requirements, was duly notified to the Respondents and has been submitted to a properly constituted Panel in accordance with the UDRP, the Rules and the Supplemental Rules.
The Complainant operates Singapore Airlines, a leading international air-carrier. The Complainant has used “Silverkris” as the name of its in-flight magazine since 1976 and of its airport lounges in major airports since 1967. The Complainant has registered SILVERKRIS as a trademark in numerous countries. The name was derived from “kris”, a Malay weapon used in the 14th century.
The Domain Name is currently directed to a website which appears to offer a take-away service of a restaurant called “Gourmeto Demo” in San Francisco, although the telephone number provided is invalid.
The Complainant contacted the Respondent by email on April 15, 2009. The Complainant noted that the Respondent was the registrant of the Domain Name and pointed out that it was the owner of the trademark SILVERKRIS and had used this mark as the title of its in-house magazine since 1976 and of its airport lounges long before the Respondent's registration of the Domain Name. The Complainant asked the Respondent if he would consider relinquishing the Domain Name to the Complainant and stated that the Complainant was prepared to pay fair and reasonable costs to arrange its transfer.
The Complainant's email was expressed to be “Without Prejudice and With All Rights Reserved”. It was addressed to Wilson Yang and sent to the email address […]@yahoo.com. The reply, by email of April 21, 2009, from the same email address, thanked the Complainant for its interest in the Domain Name and went on:
“I haven't considered relinquishing this domain name as I have been working on a series of projects with <silverkris.com>. However, I may consider leasing this domain name to Singapore Airlines for, say, 5 to 10 years, at US $2000 a month.
Please let me know if you're still interested.
The Complainant contends that it owns the mark SILVERKRIS and that the Domain Name is identical or confusingly similar to it.
The Complainant submits that the Respondent has no rights or legitimate interests in the Domain Name. It states that there is no evidence of his use of the Domain Name in connection with a bona fide offering of goods or services, that he has not been commonly known by the Domain Name, that he has acquired no trademark rights in it and that he is not making legitimate non-commercial or fair use of the Domain Name. In connection with the last point, the Complainant notes that when it first learned of the registration of the Domain Name, it was not directed to any active website, but since then it has been directed to the website described above.
The Complainant alleges that the Domain Name was registered and is being used in bad faith. According to the Complainant, the Respondent registered the Domain Name for the sole purpose of generating commercial gain by intentionally and misleadingly diverting to his website Internet users seeking information regarding the Complainant's in-flight magazine or airport lounges, contrary to paragraph 4(b)(iv) of the UDRP.
In the alternative, the Complainant alleges that the Domain Name was registered or acquired primarily for the purpose of selling, renting or otherwise transferring it to the Complainant or a competitor of the Complainant for valuable consideration in excess of the Respondent's out-of-pocket costs, contrary to paragraph 4(b)(i) of the UDRP. In support of this allegation the Complainant refers to the correspondence described above and submits that it is admissible in line with previous decisions under the UDRP.
The Complainant further relies on the fact that its mark is widely known and that the Respondent cannot provide any evidence of actual or contemplated good faith use of the Domain Name.
The Complainant requests a decision that the Domain Name be transferred to it.
The Respondent, Chuan Lee, states that from the beginning when he registered the Domain Name, there were plans to feature a book called “Silver Kris” and other works on the website. He asserts that he is the owner of the Domain Name and has all along maintained ownership and control through the email address […]@yahoo.com; and that Wilson Yang is the technical administrator.
The Respondent points out that he originally registered the Domain Name through the registrar, Register.com, in 1999 and has since maintained it through several registrars to facilitate web-hosting. He states that he is of Chinese-Malay heritage and read about the Muslim warrior and his legendary kris when he was eight years old.
The Respondent says he has been a very avid reader and conceived the idea of writing books at an early age. In 1999 he worked on a thesis project on the philosopher Merleau-Ponty at San Francisco State University, which led him to conceive the idea for the book “Silver Kris”. He says that the legendary kris is used in the plot both as a physical and figurative instrument to connect the characters of the story outside the confines of time and space.
The Respondent says he considered several titles, including “The Kris”, “Kris” and “Legendary Kris”, which he rejected as being, respectively, boring, a person's name, and irrelevant. He eventually decided on “Silver Kris” which is reflective of the physical appearance of the kris. He exhibits a Prologue and Chapter I of the book.
The Respondent adds that he has a collection of old coins from Malaysia featuring the kris, some of which have been used in art projects in 1997 and 1999. He also has a credit card for expenditure relating to the <silverkris.com> website and he exhibits a statement for the month to May 23, 2009, addressed to “Chuan H Lee, Silver Kris”.
The Respondent submits that there is no likelihood of confusion between the parties' use of the “silver kris” name and that even if someone looking for the Complainant mistakenly accessed his website any confusion would be quickly dispelled.
The Respondent argues that the Domain Name is based on two common words in the English language and that the Complainant cannot claim absolute rights in the phrase “silver kris”. According to the Respondent, to allow the Complainant to take the Domain Name from the existing registrant would be to take away rights to use common English words in potentially all of nearly 300 top level domains, opening the floodgates to countless illegitimate complaints against the spirit of ICANN's core values.
The Respondent states that he gave the technical administrator of the Domain Name full authority in 2004 to work on projects and that the latter has authority to rent or lease the website at the Domain Name to any clients for the purpose of test marketing and sales programs as part of his business operations.
According to the Respondent, Chuan Lee, the technical administrator responded to the Complainant's email within his authority, offering to rent or lease the website as a possibility, but the administrator has not been authorized to relinquish the Domain Name to anyone. The Respondent notes that the Complainant initiated the contact and the discussion about the possible sale of the Domain Name. According to the Respondent, the technical administrator had spent a considerable amount of time and energy on the website and had acquired goodwill from the Respondent's clients. The Respondent also asks whether the Complainant was serious about obtaining the Domain Name or whether its email was a ploy to entrap him.
The Respondent states that the website at the domain name is being used for testing marketing and sales programs and that when problems are encountered the content is taken down and corrected, which would account for the Complainant's observation that the Domain Name was not directed to any website when it first learned about the registration. The Respondent adds that “Gourmeto Demo” is not the name of a restaurant, but rather is being used in a “demo” or “test” page at the Domain Name for the Respondent's clients.
The Respondent notes the length of time taken by the Complainant to file the Complaint and asks if it is exploiting the economic downturn to harass the Respondent into relinquishing the Domain Name. The Respondent invites the Panel to make a finding of reverse domain name hijacking.
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding, the Complainant must prove (i) that the Domain Name is identical or confusingly similar to a mark in which it has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith. These requirements will be considered in turn.
The Panel finds on the evidence that the Complainant has registered and unregistered rights in the mark SILVERKRIS.
The Domain Name is identical to the mark for the purpose of the UDRP. As is well established, the generic top level domain is discounted when making the comparison between a complainant's mark and a contested domain name.
The first requirement of the UDRP is satisfied.
The Panel finds that the Respondents do not have rights or legitimate interests in the Domain Name.
The essay of the Respondent, Chuan Lee, on Merleau-Ponty's Phenomenology of Perception does not appear to have any connection with the name “Silverkris”. The Prologue and Chapter 1 entitled “SILVER KRIS” are undated and the Respondents have provided no evidence of any use or demonstrable preparations for use of the Domain Name in connection with a bona fide offering of any such book. Similarly, there is no evidence of any use or demonstrable preparations for use of the Domain Name in connection with the Respondent' alleged art installations.
The Respondents do not claim to be commonly known by the Domain Name or to be making legitimate non-commercial or fair use of it.
On the record, the Panel finds that the Respondents cannot claim a right or legitimate interest in the Domain Name on any other basis. The second requirement of the UDRP is satisfied.
The Panel notes the Complainant's longstanding use of the mark SILVERKRIS and that the Respondent does not deny that he was aware of the Complainant's use of this mark when he registered the Domain Name. The Panel concludes on the balance of probabilities that the Respondent, Chuan Lee, registered the Domain Name knowing of the Complainant's use of the identical mark.
The Panel next notes that the Respondent has not provided any evidence of any use of the Domain Name for anything connected with a legendary kris sword in the ten years since he registered it. The Panel infers that the Respondent registered the Domain Name on account of the Complainant's use of the mark SILVERKRIS, and that the references in his Response to his book and art installations represent an after-thought, perhaps in the light of the reference in the Complaint to the derivation of the Complainant's mark.
The Panel further notes the response to the Complainant's email, offering to lease the Domain Name to the Complainant at an elevated price. The Complainant's email was sent to the email address […]@yahoo.com, through which Chuan Lee claims to have maintained ownership control of the Domain Name all along, and the reply email was sent from the same address. However, the reply email was signed in the name “Wilson” and Chuan Lee claims that it was sent by the administrator in accordance with his authority. On this evidence, the Panel finds that the offer to lease the Domain Name to the Complainant was in fact made by Chuan Lee and regards his attempt to dissociate himself from it as corroborating the allegations of bad faith against him.
Having reviewed the evidence as a whole, the Panel finds that the Domain Name was registered primarily for the purpose of sale or rental to the Complainant for valuable consideration in excess of out-of-pocket costs. In accordance with paragraph 4(b)(i) of the UDRP this finding constitutes evidence of bad faith registration and use of the Domain Name. In the Panel's view, this presumption is not displaced by any other evidence on the file. On the contrary, the Panel concludes on the totality of the evidence that the Domain Name was registered and is being used in bad faith. The third requirement of the UDRP is satisfied.
Since the Panel finds that the Complaint is justified, the allegation of reverse domain name hijacking must be rejected.
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 <silverkris.com> be transferred to the Complainant.
Dated: September 22, 2009