WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sun International (IP) Limited v. NameSentinel Admin and Sun Ventures Development Limited, Arthur Tsang
Case No. D2014-1190
1. The Parties
The Complainant is Sun International (IP) Limited of Sandown, Sandton, South Africa, represented by Adams & Adams Attorneys, South Africa.
The Respondents are NameSentinel Admin of Isle of Man, United Kingdom of Great Britain and Northern Ireland ("UK") and Sun Ventures Development Limited, Arthur Tsang of Makati City, Philippines, represented by John Berryhill, Ph.d., Esq., United States of America ("USA").
2. The Domain Name and Registrar
The disputed domain name <sunbet.com> (the "Domain Name") is registered with Mesh Digital Limited (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 8, 2014. On July 8, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 14, 2014 and July 16, 2014, the Registrar transmitted by email to the Center its verification responses 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 July 16, 2014, 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 July 21, 2014.
The Center verified that the Complaint together with the amended 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 July 22, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was August 11, 2014. The Response was filed with the Center on August 11, 2014.
The Center appointed Tony Willoughby, David Taylor and the Hon Neil Brown Q.C. as panelists in this matter on September 2, 2014. The Panel finds that it was properly constituted. Each member of 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.
Arthur Tsang, the second of the named Respondents, is identified in the Response as "a technical employee" of Sun Ventures Development Limited, the entity named as the "Registrant Organization" in the Registrar's WhoIs database and is the underlying registrant behind the privacy service provided by the first-named Respondent. Hereafter, all references to the "Respondent" in this decision are references to Sun Ventures Development Limited, which is the entity responsible for having acquired the Domain Name and for the use that is being made of it and is the entity on whose behalf the Response was filed.
4. Factual Background
The Complainant, a South African corporation, is a wholly owned subsidiary of Sun International Limited and is, as its name indicates, the intellectual property holding company in the Sun International Group of companies, of which Sun International Limited is the holding company. The Sun International Group was founded in 1983 and is the proprietor of a number of luxury hotels, casinos and holiday resorts. It operates in Africa and Latin America.
The Complainant is the registered proprietor of four Mozambican trade mark registrations of SUNBET, namely Nos. 022564/2012 (class 28), 022565/2012 (class 9), 022566/2012 (class 41) and 022567/2012 (class 42) all dated November 1, 2012. According to the Complainant, it is also the applicant for numerous SUNBET trade mark applications in its main territories, applications which are currently pending. The earliest of its trade mark applications was made on September 7, 2012.
The Complainant also uses its SUNBET trade mark in relation to its online sports betting facility, which it launched in South Africa in November 2013. Since that date betting stakes in excess of ZAR (South African Rand) 100 million have been placed on the Complainant's website connected to its <sunbet.co.za> domain name, which it acquired in 2013.
The Respondent is a corporation, which was incorporated under the laws of the British Virgin Islands on March 29, 2007. The Respondent is engaged in the provision of online betting and gaming services, primarily to an Asian clientele and through a variety of websites.
The Domain Name has had a chequered history. It was first registered on August 4, 1999 in the name of Kersaf Investments Limited, whose address was at that time in the same street as that in which the Complainant currently resides and which from the evidence filed by the Respondent appears to be or to have been a company associated with the Sun International Group. More recently, the Domain Name appears to have undergone a number of registrant name changes, but the Panel accepts the evidence of the Respondent (specifically the declaration of the Head of Operations for Xela Holdings Limited, which is said to be the corporate and regulatory service arm of the Respondent) that despite the different named registrants of the Domain Name since August 7, 2012, the underlying beneficial owner of the Domain Name registration has since that date been the Respondent.
The Domain Name is currently connected to a Mandarin language website featuring a logo comprising (a) the device of a sun, (b) Mandarin characters, which are said by the Respondent to mean "Sun Bet (or Sun Game)" and below those characters (c) the name/word "SUNBET". The website and those to which it links offer a variety of online betting services. However, it appears from the unchallenged claim of the Complainant that the Domain Name was not connected to any active website until after the filing of the original Complaint.
Between October 2013 and March 2014, the Complainant's representatives made various attempts to acquire the Domain Name for the Complainant, but without success.
On May 21, 2014, the Complainant's representatives sent a letter to the then named registrant of the Domain name, the first-named Respondent NameSentinel Admin, drawing attention to the Complainant's trade mark rights and seeking transfer of the Domain Name. No reply to that letter was received.
5. Parties' Contentions
The Complainant contends that the Domain Name is identical to its SUNBET trade mark in which it claims both registered and unregistered trade mark rights; that the Respondent has no rights or legitimate interests in respect of the Domain Name; and further that the Domain Name was registered and is being used in bad faith.
The Respondent accepts that the Domain Name is identical to the Complainant's SUNBET trade mark, but contends that "the Complainant's trade mark rights post-date those of the Respondent". The Respondent asserts that by August 2012 at the latest it was a well-established provider of online betting services under and by reference to the Mandarin characters which mean "sun bet" or "sun game". On that basis it contends that it has rights and legitimate interests in respect of the Domain Name and that the Domain Name was registered and is being used in good faith.
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.
B. Identical or Confusingly Similar
There is no dispute (nor could there be) that the Domain Name, absent the generic Top-Level Domain identifier ".com", is identical to the Complainant's SUNBET trade mark. The fact that the Respondent's trade mark rights may be senior to those of the Complainant is irrelevant to this element of the Policy. The significant point insofar as this element of the Policy is concerned is that as at the date of the Complaint the Complainant had trade mark rights in respect of the word/name SUNBET.
Accordingly, the Panel finds that the Domain Name is identical to a trade mark in which the Complainant has rights.
C. Rights or Legitimate Interests
A surprising aspect of this case is that, as claimed by the Respondent, the Domain Name appears to have been registered originally back in 1999 by a company associated with the group of companies of which the Complainant is a member, but allowed the Domain Name to lapse. The Complainant does not mention that fact in the Complaint and the Respondent categorises that omission as reprehensible. The Panel has not sought to investigate the background to that issue and ignores it for the purpose of this Decision. It may very well be that those responsible for drafting the Complaint were unaware of the history. It is noteworthy that the "creation" date appearing in the Registrar's database is given as 2002, which post-dates the date when the Domain Name is said to have been held by an associate of the Complainant; thus there was nothing in the WhoIs record to alert an investigator that there had been a previous registration of the Domain Name.
When the Complaint was filed the Complainant was unaware of the true identity of the underlying registrant, the Respondent, and could not have been alerted to the relevance of the fact asserted by the Respondent that the two Mandarin characters used by the Respondent on its website and in relation to its sponsorships (e.g., the Watford and Newcastle United English Premier League Football Clubs) mean both "SunGame" and "SunBet". If it is indeed the case that that is what those characters mean and that the Respondent has been using them legitimately with that in mind without any thought of the Complainant's Sunbet facility, clearly the Respondent has a legitimate interest in respect of the Domain Name.
While the Response contains very little detailed information on the Respondent's trading since its incorporation in August 2007, it is clear that since that date the Respondent has held a corporate name featuring the word "Sun". It also appears to be the case from a screenshot exhibited by the Respondent that an online review at the "www.bettingprophet.com" website dated August 29, 2012, identified the Respondent (then trading as 138sungame.com) as being "already established as one of the leading brands across Asia under different domains such as sun988.com […]". Accordingly, prior to the Complainant's acquisition of trade mark rights in the SUNBET mark and over a year prior to the Complainant's launch of its Sunbet online sports betting facility, the Respondent was a substantial player in the gaming industry and trading under the "Sun" and "SunGame" names. Whether the two Mandarin characters referred to in the Response and currently in use were in use in August 2012 is not clear beyond doubt. The characters featuring alongside the "138" numeral in the <bettingprophet.com> review are four in number and different.
When the Respondent first started using the "SunBet" name (as such) is not clear from the Respondent's evidence. The screenshots provided by the Respondent featuring the name all appear to post-date the Complainant's acquisition of trade mark rights in the name and neither party has exhibited any screenshots from the Respondent's websites dating back to August 2012. Nonetheless, as appears from the above review the name "SunGame" was clearly in use in August 2012. Is it unreasonable to conclude that, as asserted by the Respondent, the Mandarin characters meaning "SunGame" were then in use and that they also mean "SunBet"? The Panel does not believe so.
It is of course possible that the Respondent only adopted the "SunBet" anglicisation of the Mandarin characters after it became aware of the Complainant's SunBet facility which was launched in November 2013, but while there may be room for doubt there is nothing before the Panel to justify a finding to that effect.
Given that the burden of proof is on the Complainant, any doubt in the matter has to be resolved in favour of the Respondent.
The Panel finds that the Complainant has failed to satisfy the Panel that the Respondent has no rights or legitimate interests in respect of the Domain Name.
D. Registered and Used in Bad Faith
In light of the Panel's finding under C above, it is unnecessary for the Panel to address this element of the Policy.
However, despite the fact that there may be some scope for doubt as to precisely when and why the Respondent first started using the "SunBet" name, a key requirement under this head of the Policy is for the Complainant to prove on the balance of probabilities that the Respondent both registered and is using the Domain Name in bad faith. Even if the Panel was to conclude (which it is not) that the Domain Name is being used in bad faith, what was the Respondent's state of mind in August 2012 when it acquired the Domain Name?
First, it should be noted that by August 2012 the Respondent had been incorporated for five years under a name, the primary feature of which was the word "Sun". Secondly, it has always been engaged in the gaming industry and "bet" is self-evidently a descriptive word commonly used in that industry. Thirdly, the Complainant, on its own evidence, had no trade mark rights in the "Sunbet" name as at that date. Fourthly, the Complainant did not launch its "Sunbet" online betting facility until over a year later.
Under those circumstances, it is inconceivable to this Panel that as at date of registration of the Domain Name the Respondent could reasonably be said to have had a bad faith intent directed at the Complainant's SUNBET trade mark.
On one view, this Complaint could be said to have been flawed from the outset. How could it have been launched with any hope of success?
The first problem for the Complainant was that it was not made aware of the identity of the Respondent, the underlying registrant, until after it first filed the original Complaint and following the Registrar's response to the Center's request for registrar verification. Secondly, it was not until the Response was filed with an explanation of the history of the Respondent's "ownership" of the Domain Name going back several years that the Complainant was alerted to the fact that the registrant name change on May 8, 2014, the last name change prior to the filing of the original Complaint, was not indicative of any material change of ownership. The Panel observes that much of this could perhaps have been avoided if the Respondent had responded informatively to any one of the Complainant's communications with the various named registrants between October 2013 and May 2014.
For the foregoing reasons, the Complaint is denied.
The Hon Neil Brown Q.C.
Date: September 11, 2014