WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sentosa Development Corporation v. Jang Shih Chieh

Case No. D2010-1082

1. The Parties

The Complainant is Sentosa Development Corporation of Sentosa, Singapore, represented by Allen & Gledhill, Singapore.

The Respondent is Jang Shih Chieh of Chung-Ho City, Taiwan, Province of China.

2. The Domain Name and Registrar

The disputed domain name <sentosa.com> is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 30, 2010. On July 1, 2010, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain name. On the same day, Network Solutions, LLC 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 July 7, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 27, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 28, 2010.

The Center appointed John Swinson as the sole panelist in this matter on August 5, 2010. 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.

4. Factual Background

Sentosa Island is an island located off the coast of Singapore which forms part of Singapore. It is a popular tourist destination for travellers to Singapore. Sentosa Island is primarily a resort island, consisting of theme parks, hotels, cable cars, beaches and a golf course. However, people are also able to permanently live on the island; for example, residents live in the gated community of Sentosa Cove, which includes 2,500 marina residential houses.

The Complainant was established under the Sentosa Development Corporation Act. It is a statutory board operating under the Ministry of Trade and Industry in Singapore. The Complainant oversees management of five subsidiaries and together the Complainant and its subsidiaries have been responsible for controlling, managing and developing extensive facilities, attractions and amenities on Sentosa Island. This role includes the power to issue permits for building on the island and levy contributions from property owners on the island. It appears that the Complainant is the sole entity (along with its subsidiaries) responsible for management of the Island.

The Complainant owns numerous registered trademarks for SENTOSA in a variety of classes of goods and services across Asia, including:

- Trade Mark Registration no. 07012988 for SENTOSA in Malaysia (registered July 6, 2007);

- Trade Mark Registration no. 6180930 for SENTOSA in China (registered March 7, 2010); and

- Trade Mark Registration no. T0812694F for SENTOSA in Singapore (registered from September 17, 2008).

In Singapore alone, the Complainant owns 79 registered or pending trademarks for SENTOSA or trademarks incorporating the word SENTOSA. The earliest trademark registration dates back to July 6, 2007. The Complainant (or one of its subsidiaries) also owns numerous domain names, including <sentosa.com.sg>, <sentosa.sg> and <sentosa.gov.sg>.

The Respondent, Jang Shih Chieh is an individual residing in Chung-Ho City, Taiwan, Province of China. The disputed domain name was registered on September 3, 1996.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following submissions and arguments:

The Complainant is a statutory board and was created under legislation on September 1, 1972. The Complainant is responsible for the recreational facilities, attractions and amenities on Sentosa Island. Sentosa Island is a 500 ha premier island resort destination, attracting 6 million visitors each year.

The Complainant has registered (or has pending applications for) various SENTOSA trademarks in China, Indonesia, Malaysia and Singapore, including:

- Trade Mark Registration no. 07012988 for SENTOSA in Malaysia (registered July 6, 2007);

- Trade Mark Registration no. 6180930 for SENTOSA in China (registered March 7, 2010); and

- Trade Mark Registration no. T0812694F for SENTOSA in Singapore (registered from September 17, 2008); and

- Trade Mark Application no. D007021945 (pending) for SENTOSA in Indonesia (applied for July 9, 2007).

The Complainant (or one of its subsidiaries) also owns and operates numerous domain names, including <sentosa.com.sg>, <sentosa.sg> and <sentosa.gov.sg>.

The SENTOSA trademarks and name have been used continuously since 1972 by the Complainant in Singapore and also across the world. SENTOSA has been advertised by the Complainant in Australia, China, India, Japan, Korea, Malaysia, Thailand, the United Kingdom, Vietnam and Singapore. In particular the SENTOSA trademarks and name have been used extensively by the Complainant in Taiwan.

The Complainant argues that the disputed domain name is identical or confusingly similar to the Complainant’s SENTOSA trademarks. The only difference is the suffix, “.com” which is merely the classification of the purpose for which the domain name is being used (making it irrelevant). The widespread notoriety of the Complainant’s SENTOSA trademarks makes it more likely that Internet users will assume that the disputed domain name is associated with the Complainant (and the Singapore Government).

The Complainant states that there has never been any relationship between the Complainant and the Respondent. The Complainant has not authorised or licensed the Respondent to use the disputed domain name. The Respondent does not operate any business or have any interest in any company using the name “Sentosa”. The Respondent does not possess any rights or interests in any trade names or trademarks comprising or incorporating the name “Sentosa”.

The Respondent’s website shows the words “under construction” and when this link is clicked on, the words “this ‘under construction’ page is an automatically generated placeholder Web page for a domain name that is not yet attached to an active Web site” appear. The Complainant contends that it is therefore clear that the Respondent has not used and has not demonstrated any serious preparations to use the disputed domain name in connection with a bona fide or legitimate offering of goods or services.

The Respondent has also registered several other domain names including <kending.com> (which the Complainant asserts actually refers to Genting) and <langkawi.com>, both of which also refer to other major holiday destinations in Malaysia. Therefore the Respondent has shown a pattern of conduct by acquiring domain names which incorporate or are identical or confusingly similar to the names of major holiday destinations in Asia, in which the Respondent has no rights or legitimate interests.

The fact that the disputed domain name incorporates the entire “Sentosa” name (with nothing else) is also evidence of bad faith, because it will cause world wide confusion both as to the origin or quality of the Respondent’s goods or services. It will also cause confusion as to any affiliation or association between the Respondent and the Complainant, the Singapore government and the citizens of Singapore. The Complainant argues that the SENTOSA trademarks and name are so obviously connected with the Complainant that the registration and use of the disputed domain name suggests “opportunistic bad faith” (Veuve Clicquot Ponsardin, Malson Fondee en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163).

Prior to the date of registration of the disputed domain name, the Complainant was well-known in Asia, including in Taiwan. It is therefore submitted that the Respondent would have had knowledge of the Complainant’s rights in the well-known SENTOSA trademarks and name due to the widespread use, advertisement and promotion of SENTOSA in that country by the Complainant.

The Complainant contends that the Respondent has failed to use the disputed domain name to sell or provide goods or services. This is further evidence of bad faith (Chanel, Inc. v. BuyBeauty.com, WIPO Case No. D2000-1126 and Fairmont Hotel Management, L.P. and Fairmont Hotels & Resorts (U.S.) Inc., v. 613181 BC Ltd, WIPO Case No. D2001-1050). It is further submitted that the Respondent’s passive holding of the disputed domain name amounts to use and registration of the disputed domain name in bad faith for the following reasons:

- there is extensive international brand recognition of the Complainant’s SENTOSA trademarks and name;

- the disputed domain name includes the “Sentosa” name, which is distinctive, in its entirety;

- there is evidence that the Respodnent had knowledge of the Complainant’s rights in the SENTOSA trademarks and name; and

- the Respondent has engaged in a pattern of registering domain names of well-known island resorts that he is extremely unlikely to have any legitimate claim to.

The doctrines of limitation, delay, acquiescence and laches do not operate to bar a complainant from making a complaint. See The Hebrew University of Jerusalem v. Alberta Hot Rods, WIPO Case No. D2002-0616, The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447 and Liat (1974) Ltd. v. Mark Armstrong, WIPO Case No. D2006-1574.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(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 onus of proving these elements is on the Complainant.

A. Identical or Confusingly Similar

“Sentosa” is a geographical term, being the name of an island in Singapore. It is noted that geographic terms do not technically fall within the scope of the Policy (see City of Potsdam v. Transglobal Networx Inc., WIPO Case No. D2002-0856 and Empresa Municipal Promocion Madrid S.A. v. Easylink Services Corporation, WIPO Case No. D2002-1110). However where the Complainant owns a trademark that includes a geographic term or has common law rights in use of a geographic term, such mark can be used for the purposes of paragraph 4(a)(i) of the Policy (see City of Potsdam v. Transglobal Networx Inc., WIPO Case No. D2002-0856 and Commune of Zermatt and Zermatt Tourismus v. Activelifestyle Travel Network, WIPO Case No. D2007-1318).

There a number of decisions under the Policy where complainants have succeeded, even though their trademark is also the name of a geographical place. Complainants have been successful in situations, either where the complainant has a registered trademark, or where the complainant is found to have has common law rights in the mark. See, for example:

- Raisio plc and Town of Raisio v. Lee Joohee, Yang Youngo, WIPO Case No. D2005-1041 (<raisio.com>) where the complainant owned registered trademarks for RAISO;

- City of Potsdam v. Transglobal Networx Inc., WIPO Case No. D2002-0856 (<potsdam.com> and others) where the complainant owned a registered trademark for POTSDAM;

- Skipton Building Society v. Peter Colman, WIPO Case No. D2000-1217 (<skipton.com>) where the complainant owned a registered trademark for SKIPTON;

- Daydream Island Resort Investments Pty Ltd v. Alessandro Sorbello, eResolution Case No. AF-0586 (<daydreamisland.com>) where the complainant had common law rights in DAYDREAM ISLAND RESORT and registered trademarks that included the words DAYDREAM ISLAND; and

- Sydney Markets Limited v. Nick Rakis trading as Shell Information Systems, WIPO Case No. D2001-0932 (<sydneymarkets.com>) where the complainant had common law rights in SYDNEY MARKETS.

Conversely, there have been cases where the complainant has not been successful in the transfer of the disputed domain name:

- Brisbane City Council v. Joyce Russ Advertising Pty Limited, WIPO Case No. D2001-0069 (<brisbane.com>) where it was found that the complainant did not have sufficient trademark or common law rights in either BRISBANE CITY or BRISBANE sufficient to be successful in their complaint;

- Maui Land and Pineapple Co., Inc and Kapalua Land Co., Ltd .v. Sullivan Properties Inc, Case No. FA0008000095544 (<kapalua.com> and another) where the complainant was successful in proving the first element, however was unsuccessful overall, as the panel found that the respondent had rights and legitimate interests in respect of the disputed domain name; and

- Stadt Heidelberg v. Media Factory, WIPO Case No. D2001-1500 (<heidelberg.net>) where it was found that the complainant had produced no evidence to show that its name had acquired distinctiveness as a trademark.

Here the Complainant is able to show that it is the registered owner of numerous trademarks throughout Asia (in Singapore, China and Malaysia) for the word mark SENTOSA. As stated above, in Singapore alone, the Complainant owns 79 registered or pending trademarks for SENTOSA or trademarks incorporating the word SENTOSA. The earliest trademark registration dates back to July 6, 2007. The Complainant can also show common law rights in SENTOSA. The disputed domain name is identical to the SENTOSA in which the Complainant has trademark and common law rights. The suffix “.com” can be ignored for this purpose.

Accordingly, the first element has been met.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in the disputed domain name:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The Complainant is required to make out an initial prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

It is clear that the Complainant has not licensed or otherwise authorised the Respondent to use the SENTOSA trademarks and that there is no relationship between the Complainant and the Respondent. The Respondent does not appear to be commonly known by the disputed domain name and there is no evidence that the Respondent runs or operates a business from or in relation to Sentosa Island.

The Respondent has not provided any evidence of its use, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services before any notice of the dispute. The only evidence available to the Panel is by accessing the website that revolves from the disputed domain name. The Complainant has focused on the “under construction” element of the website and the information surrounding this notice to argue that the Respondent has not used and has not demonstrated any serious preparations to use the disputed domain name in connection with a bona fide or legitimate offering of goods or services.

The Panel notes that this notice is only part of the website. Further examination of the website shows that it is actually being hosted and managed by Network Solutions LLC to show “pay-per-click” advertisements. The main page of the website includes headings such as “Discount Theme Park Tickets”, “Hotel in Singapore” and “Travel Singapore”. When each of these heading is clicked on, the viewer is confronted with a list of sponsored advertisements. For example, when the “Hotel in Singapore” heading is clicked on, the viewer sees a list of third party advertisements for hotels in Singapore. As well as these advertisements, the website also shows information on how to purchase domain names from Network Solutions LLC.

Whether or not “pay-per-click” advertising is use of the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services has been the subject of a number of prior panel decisions. For example in Express Scripts, Inc. v. Windgather Investments Ltd./Mr Cartwright, WIPO Case No. D2007-0267, the respondent had allowed a third party to place advertisements on its website. In this case, the panel found that by allowing the third party “free-reign” over the content of the site, the respondent had no legitimate rights or interest in the domain name.

The Respondent did not provide any response to the Complainant’s contentions.

The Panel therefore finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and as the Respondent did not submit a response, it has not rebutted the prima facie case established by the Complainant.

Accordingly, on the evidence available to it, the Panel finds that the second element has been met.

C. Registered and Used in Bad Faith

The Complainant must show that the Respondent both registered and used the disputed domain name in bad faith.

The date of registration of the disputed domain name by the Respondent is unknown. All that is known is that the disputed domain name was first registered on September 3, 1996. Assuming this is the date that the Respondent did register the disputed domain name; then the Complainant arguably only had common law rights in the trademark SENTOSA at this time and no registration rights.

The Complainant was created under legislation in 1972, since that date it has been responsible for overseeing the development, management and promotion of Sentosa Island. It appears that the Complainant is the sole entity (along with its subsidiaries) responsible for management of the Island. The Complainant has advertised Sentosa extensively in Asia and in Taiwan (the Respondent’s place of residence). The Complainant has been advertising in Taiwan since at least 1992. The Panel finds that due to the fact that the Respondent is located in Asia and the Respondent’s pattern of conduct in registering other holiday destinations in Asia as domain names, the Respondent likely knew of the Sentosa trademark (and potentially, the Complainant) when registering the disputed domain name. The Complainant appears to be a fairly successful and profitable body. The Complainant’s gross income from operating its facilities relating to the island for the financial year ending March 31, 2009 was S$2,559,148,040. It owns an extensive trademark portfolio and has advertised Sentosa all over the world. It is certainly reasonable to infer that people in other Asian countries may have been aware of the Complainant.

The disputed domain name includes the entire SENTOSA trademark (with nothing else) (see a similar situation in Fairmont Hotel Management, L.P. and Fairmont Hotels & Resorts (U.S.) Inc., v. 613181 BC Ltd, WIPO Case No. D2001-1050). Such use is likely to cause confusion in the market as it will convey a false affiliation or association between the parties. As the Complainant is a statutory body, it may even lead to confusion as to an association between the Respondent and the government of the Republic of Singapore.

The Respondent has shown a pattern of registering domain names that are identical or confusingly similar to other holiday destinations in Asia. The Panel considers that such registration will only be considered a pattern of bad faith if it infringes someone else’s trademark or common law rights. As no further information has been provided in relation to this evidence, the Panel merely notes that this behaviour could show evidence of bad faith, however further information would be needed to draw this conclusion. The Panel further notes that the Complainant argues that the domain name registration of <kending.com> actually referred to Genting, a holiday destination in Malaysia. The Panel does not necessarily accept this conclusion, as there is a place in Taiwan called Kending.

The Respondent has allowed Network Solutions LLC to use the disputed domain name as a “pay-per-click” landing page. There is no evidence submitted by the Respondent to show when this first occurred. Many of these advertisements of the Respondent’s site offer information about tourism in Singapore and are therefore closely related to the activities of the Complainant. Such use is often considered to be in bad faith.

Even if the disputed domain name was not used as a “pay-per-click” landing page for the whole of the period of registration, failure to use the disputed domain name for a significant period of time may also amount to bad faith.

In this case, given that there are a number of factors indicating bad faith, the Panel finds that the disputed domain name has been registered and used in bad faith.

Accordingly, on the evidence available to it, the Panel finds that the third element has been met.

D. Delay in commencement of proceedings

The Panel accepts the Complainant’s arguments that there is no limitation period in the Policy and that the doctrines of acquiescence or laches do not apply in UDRP proceedings. See The Hebrew University of Jerusalem v. Alberta Hot Rods, WIPO Case No. D2002-0616 and Liat (1974) Ltd. v. Mark Armstrong, WIPO Case No. D2006-1574.

7. Decision

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 <sentosa.com> be transferred to the Complainant.

John Swinson
Sole Panelist
Dated: August 20, 2010