WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Singapore Pools (Private) Limited v. Vietnam Domain Privacy Services / To Thi Thanh Tam
Case No. D2016-0292
1. The Parties
The Complainant is Singapore Pools (Private) Limited of Singapore, represented by Rajah & Tann Singapore LLP, Singapore.
The Respondent is Vietnam Domain Privacy Services of Ho Chi Minh City, Viet Nam / To Thi Thanh Tam of Ho Chi Minh City, Viet Nam, self-represented.
2. The Domain Name and Registrar
The disputed domain name, <sgpools.com> (the “Domain Name”), is registered with April Sea Information Technology Corporation (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 12, 2016. On February 12, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 17, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 17, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 18, 2016.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 19, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 10, 2016. The Response was filed with the Center on March 10, 2016.
The Center appointed Tony Willoughby as the sole panelist in this matter on March 16, 2016. 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.
As indicated above, the Center’s invitation to the Complainant to amend the Complaint stemmed from the Registrar’s response to the Center’s registrar verification request. The Respondent had been making use of a privacy protection service in whose name the Domain Name was held and the original Complaint was directed to that privacy protection service. The amended Complaint is directed to the Respondent, the underlying registrant at the time of filing of the original Complaint care of the privacy service. In this decision the Panel proposes to treat the underlying registrant as the Respondent.
On March 21, 2016 the Panel issued Procedural Order No. 1 to the parties, which provided as follows:
“The Panel has visited the DomainTools.com database, which indicates that from at least August 15, 2005 to at least November 20, 2009 the Domain Name was held in the name of Navigation Catalyst Systems Inc. of California. Thereafter, according to that database, it passed into the name of a privacy service in Arizona and did not enter into the name of the Respondent’s Vietnamese Privacy Service until the end of 2011 or beginning of 2012.
It may be, of course, that the DomainTools.com database is inaccurate or that the previous registered owners were in some way associated with the Respondent.
At all events the Respondent is invited to clarify the statement in the Response: “I have owned the domain name since 2004”.
Any response to this Procedural Order should be submitted to the Center no later than 4pm Geneva time on Thursday March 24, 2016. In the event of a response from the Respondent, the Complainant has until 4pm Geneva time on Saturday, March 26, 2016 to submit a further submission in reply.”
The Respondent did not reply to Procedural Order No. 1.
4. Factual Background
The Complainant, which was established in 1968, is the only business that is permitted to offer lotteries and sports betting in Singapore. The Complainant is a wholly owned subsidiary of the Singapore Totalisator Board, a statutory board established under the Singapore Totalisator Board Act (Cap 305A).
According to its official website connected to its domain name, <singaporepools.com.sg> (registered March 12, 1998): “Today, Singapore Pools contributes about $2 billion annually to the Government in the form of taxes and duties, and for the funding of good causes.”
The Complainant is the registered proprietor of several Singapore trade mark registrations covering a device mark comprising the word, “SINGAPORE” at the top, a stylized device of an “S” in a central square and the word “POOLS” at the bottom. The earliest of those registrations is No. T9308803Z dated November 10, 1993 in class 16 for lottery tickets. While the registrations contain limitations indicating inter alia that the registrations give no right to the exclusive use, separately, of the words “Singapore” and “Pools”, there is no limitation covering use of those words in combination.
The Domain Name was first created on July 7, 2004 and at the time of the Complaint pointed to a webpage consisting of “two blue arrows in various shades on a black background” . It still points to a webpage featuring those arrows, but is now a pay-per-click parking page featuring changing advertising links to a variety of businesses including businesses described as Singapore businesses.
On January 8, 2016 the Complainant sent to the Respondent (addressed to the privacy service used by the Respondent) a cease and desist letter drawing the Respondent’s attention to the Complainant’s trade mark rights and seeking inter alia transfer of the Domain Name. The letter (sent both by fax and by email) was successfully delivered by email but the fax attracted a delivery failure report. The Respondent did not reply.
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights; that the Respondent has no rights or legitimate interests in respect of the Domain Name; and that the Domain Name was registered and is being used in bad faith.
The Response was submitted in the form of an email to the Center reading verbatim as follows:
“I am not located Singapore. I have never been to Singapore. I know nothing about this company and have never competed with Singapore Pools in any way whatsoever using this domain name which in itself proves that there is no bad faith in owning this highly generic domain name. In fact, I am aware of a company called “South Georgia Pools” (see: southgeorgiapools.com), which could equally try to hijack my domain name from me, but again, they would not since they own the trademark for South Georgia Pools. In the complaints argument they themselves state:
‘The names ‘SINGAPOREPOOLS’, ‘SINGPOOLS’, ‘SGPOOLS’ and variants thereof are widely associated by the Singapore public at large with the Complainant and no other, and ‘SINGAPOREPOOLS’ is a mark that is well-known to the public at large (the ‘Well-Known Mark’).’
Is the complainant in a position to declare unilaterally that “SGPOOLS” is a somehow synonymous with ‘Singapore Pools’ and that it’s ‘Well Known’. With all do respect, I’ve never even heard of Singapore Pools, and more to this point their Trademark is not for SGPOOLS, it’s for Singapore Pools. Again, I’ve never been to Singapore and more to this point, I’ve never heard of this doman name.
This larger company is picking on me. Can’t this domain name be used for ‘Saigon (SG) Pools’. They have no right to this domain name. I have owned this domain name since 2004. That’s 12 years. Now, 12 years later, they think SG Pools has something to do with their company? I have never been in contact with them, I’ve never heard of them, and now they simply want to hijack my domain name.
This domain name is generic and they complainant simply covets my domain name. They are engaging in reverse hijackng of this domain name and it should be noted as such.
I am sorry for the simple response. I cannot afford expensive lawyers to draft these documents for this reverse hijacking.
Regards, To Thi Thanh Tam.”
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
In coming to a decision the Panel has to have regard to paragraph 15(e) of the Rules and in particular the following sentence, namely:
“If after considering the submissions the Panel finds that the Complaint was brought in bad faith, for example in an attempt at reverse domain name hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its Decision that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”
B. Preliminary Issue
Pursuant to Paragraph 12 of the Rules, which provides that “[…] the Panel may request, in its sole discretion, further statements or documents from either of the Parties”, the Panel issued Procedural Order No. 1. The terms of that Order are set out in full in section 3 above. In seeking to verify the Respondent’s claim to have held the Domain Name since 2004, the Panel, making use of the WhoIs History search facilities of “DomainTools.com”, obtained information indicating that the Respondent was unlikely to have acquired the Domain Name prior to 2011/2012. By Procedural Order No.1 the Respondent was invited to clarify the position. The Respondent did not respond.
Paragraph 14(b) of the Rules provides that “If a Party, in the absence of exceptional circumstances, does not comply with […] any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.”
The inferences that the Panel draws from the Respondent’s failure to respond to Procedural Order No. 1 are as follows:
(i) The Respondent acquired the Domain Name in 2011/2012, not 2004 as claimed in the Response;
(ii) The Respondent has no acceptable explanation for the “error”;
(iii) The Respondent’s assertions are not to be relied upon unless independently verified/verifiable.
C. Identical or Confusingly Similar
As indicated in section 4 above, the Complainant’s registered trade mark is a device mark prominently featuring the words “Singapore” above and “Pools” below a device of a stylized “S”. The limitation on the scope of protection afforded by the registration (see section 4 above) does not extend to the use of those words in combination. While the mark is a device mark, the Panel is satisfied on the evidence before it that the registration covers use of the expression “Singapore Pools”.
In assessing identity and confusing similarity for the purposes of paragraph 4(a)(i) of the Policy it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) identifier of the domain name where the gTLD identifier serves no distinguishing and/or distinctive purpose. Here the “.com” gTLD serves no purpose other than its purely technical purpose and the Panel ignores it.
Accordingly the comparison is between “sgpools” on the one hand and “Singapore Pools” on the other.
The Respondent has observed correctly that the letters “SG” could be an acronym for a wide variety of names and cites “South Georgia” and “Saigon” as examples. In so doing, the Respondent has recognized that the letters “sg” and the word “pools” are likely to be recognized as separate elements of the Domain Name. The Complainant for its part has produced ample evidence to demonstrate that in a wide variety of contexts the letters “SG” are internationally recognized to be an acronym for “Singapore”.
The Panel finds that the Domain Name is likely to be recognized by Internet users as indicating “Singapore Pools” and is therefore confusingly similar to a trade mark in which the Complainant has rights.
D. Rights or Legitimate Interests
The Complainant has satisfied the Panel that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights, has made it clear that it has granted no rights to the Respondent to use its trade mark or the abbreviation “SG Pools” and contends that on the evidence none of the factors listed in paragraph 4(c) of the Policy is applicable. The Respondent has no obvious connection with the expression “SG Pools”.
The Panel is satisfied that the Complainant has made out a prima facie case calling for an answer from the Respondent.
The Respondent’s answer set out in full in section 5B above contains no explanation for the Respondent’s choice of the Domain Name. The Respondent says that he has never been to Singapore and has never heard of the Complainant. He points out that other entities could legitimately claim a right or interest in the abbreviation “SG”. He asserts that the Domain Name is generic.
Nowhere, however, does the Respondent give any reason why he should be found to have a right or legitimate interest in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
E. Registered and Used in Bad Faith
In two previous UDRP cases the Respondent has been found to have registered and used a domain name in bad faith. The first was Higher Education Loan Authority of the State of Missouri (MOHELA) v. To Thi Thanh Tam / Vietnam Domain Privacy Services, WIPO Case No. D2014-1602 regarding the domain name, <mohlea.com>, and the complainant’s trade mark, MOHELA; the second was CNU Online Holdings LLC v. To Thi Thanh Tam / Vietnam Domain Privacy Services (VDPS), WIPO Case No. D2014-1896 regarding the domain name, <cashusanet.com>, and the complainant’s trade mark, CASHNETUSA. In neither case did the Respondent respond. In both those cases the domain names in issue were connected to pay-per-click parking pages.
That history is of no direct relevance to this case, but it is nonetheless a factor for the Panel to bear in mind.
Why did the Respondent select the Domain Name? The Respondent had the opportunity of answering that question by responding to the Complainant’s letter of January 8, 2016, but he elected not to do so. He also had the opportunity of answering the question in his response to the Complaint, but he did not do so. These are also factors for the Panel to bear in mind when assessing this, the third element.
Another factor for the Panel to bear in mind is the fact that the Respondent failed to respond to the Panel’s Procedural Order No. 1, which drew the Respondent’s attention to what appeared to be a potentially significant factual error in the Response. In failing to clarify the situation in response to the Panel’s invitation for him to do so, it cannot be any surprise to him that the Panel has come to the conclusion that nothing that the Respondent has stated in his Response can be taken at face value unless independently verified/verifiable.
One thing that the Respondent’s history with domain names tells us is that he is no novice in the field and is experienced in the monetization of domain names. Is it credible that he was unaware that the letters “SG” are widely known internationally to be the acronym for Singapore and are the country code Top-Level Domain for the Singaporean domain? If he was aware of the Singaporean significance of those letters, is it credible that he selected the Domain Name unaware of the existence of the Complainant and its Singapore Pools betting service?
The Respondent denies any knowledge of the Complainant and its Singapore Pools betting service, but as set out in C above the Panel has reason to doubt the veracity of the Respondent. On the evidence before it the Panel is unable to accept that denial.
The Panel finds on the evidence before it that the Respondent registered or acquired the Domain Name fully aware of the significance of the letters “SG”, with knowledge of the Complainant and its Singapore Pools betting service and intending to attract traffic to its pay-per-click parking page for commercial gain.
The Panel finds that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
F. Reverse Domain Name Hijacking
The Panel is satisfied that the Complainant launched this administrative proceeding in good faith to protect its SINGAPORE POOLS trade mark. The Panel dismisses the Respondent’s allegation of Reverse Domain Name Hijacking.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <sgpools.com>, be transferred to the Complainant.
Date: March 26, 2016
1 Description taken from the Complaint.