WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Guy Neale, Aki Kotzamichalis, Made Wiranatha, White Horses Trading Company Limited, White Horses Investments Limited v. Iconic Locations Singapore Pte Ltd. (formerly known as Ku De Ta SG Pte Ltd.)
Case No. D2015-2197
1. The Parties
The Complainants are Guy Neale, Aki Kotzamichalis, Made Wiranatha, White Horses Trading Company Limited, White Horses Investments Limited, c/o Allen & Gledhill LLP of One Marina Boulevard, Singapore, represented by Allen & Gledhill, Singapore.
The Respondent is Iconic Locations Singapore Pte Ltd. (formerly known as Ku De Ta SG Pte Ltd.) of Singapore.
2. The Domain Name and Registrar
The disputed domain name <kudeta.com> (the “Domain Name”) is registered with Melbourne IT Ltd (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2015. On December 3, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 4, 2015, the Registrar 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 17, 2015. In accordance with the Rules, paragraph 5, the due date for Response was January 6, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 7, 2016.
The Center appointed Karen Fong as the sole panelist in this matter on January 14, 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.
4. Factual Background
The Complainants comprising three individuals and two companies are partners of the Ku de Ta Partnership. They have been operating a restaurant, bar and club business known as “Ku de Ta” in Bali (the “Ku de Ta Bali”) since 2000. The Ku de Ta Bali has acquired an international reputation.
The Third Complainant, Made Wiranatha, is the registered proprietor of the trade mark KU DE TA in a number of countries and regions including Singapore, Indonesia, Australia and the European Union (the “Trade Mark”) which he holds on trust for the Ku de Ta Partnership. The earliest trade mark registration submitted in evidence is an Indonesian trade mark that dates back to January 4, 2000. The Complainants bring this Complaint collectively, as the Ku de Ta Partnership is the beneficial owner of the Trade Marks and any goodwill which accrues to the “Ku de Ta” name. Unless otherwise stated, all the Complainants will be referred to collectively as the Complainant.
Prior to February 5, 2015, the Singapore trade mark registration number T0405181Z for KU DE TA in class 42 (registered on February 16, 2004) (“he “First Singapore Mark”) and the Singapore trade mark registration number T0907126DF for KU DE TA & nine squares device in classes 9 and 25 (registration date June 30, 2009 (“the “Second Singapore Mark”) were registered in the name of Nine Squares Pty Ltd (“Nine Squares”), a company owned and directed by an ex-partner of the Ku de Ta Partnership, Mr. Chondros (“Chondros”), and Mr. Ellaway. This was done without the authorization or knowledge of the Ku de Ta Partnership. Nine Squares subsequently purported to license the First Singapore Mark to Mr. Au, the director of the Respondent, under a License Agreement dated June 29, 2009. On November 23, 2009, Mr. Au assigned his rights under the License Agreement to the Respondent.
The Respondent is a Singapore company incorporated originally under the name “Ku De Ta SG Pte Ltd”. In September 2010, the Respondent opened a restaurant, bar and club at Marina Bay Sands styled as “Ku de Ta” (the “MBS Restaurant”).
In December 2010, the Complainant commenced in Singapore the Suit No. 955 of 2010 (“Suit 955”) against the Respondent, seeking, inter alia, an injunction to enjoin the Respondent from using the name and mark KU DE TA. In January 2011, the Complainant further commenced the Suit No. 314 of 2011 (“Suit 314”) against Nine Squares, seeking, inter alia, a declaration that the Singapore Marks were held on express trust or constructive trust for the Ku de Ta Partnership, or the invalidation of the Singapore Marks on grounds of passing off, conflict with an earlier well-known trade mark, or registration in bad faith. Suit 955 and Suit 314 were consolidated and heard together. Both actions were dismissed by the trial judge in November 2013 but these decisions were overturned by the Court of Appeal (Civil Appeal No. 171 of 2013 (“CA 171”) and 172 of 2013 (“CA 172”)). The Court ruled inter alia as follows:
1. that Nine Squares transfer the Singapore Marks to the Complainant as they were held by them on an express trust for the Complainant;
2. that the License Agreement under which the Respondent used the First Singapore Mark, was invalid;
3. that the Respondent cease using the name/mark KU DE TA or any name/mark similar thereto:
a. in its corporate name;
b. in the name of the restaurant and club located at Marina Bay Sands;
c. in the name of all current “Ku de Ta” entities that it owned;
d. on all business and corporate material, including but not limited to the Respondent’s websites;
4. that the Respondent change the name of the MBS Restaurant, its corporate name and any current “Ku de Ta” entities it owned to a name that does not contain “Ku de Ta” or any similar version;
5. that the Respondent cease using the domain names <kudeta.com.sg> and <kudeta.com> and transfer the registration of <kudeta.com.sg> to the Complainant.
The terms of the injunction ordered by the Court of Appeal did not require the Respondent to transfer the Domain Name to the Complainant. This was because the Complainant had not pleaded for the transfer of the Domain Name from the Respondent to the Complainant in its original Statement of Claim in Suit 955 as at the time to the best of the Complainant’s knowledge, the Respondent was not the registrant of or making use of the Domain Name. Following the Court of Appeal decision, the Respondent refused to agree to transfer the Domain Name to the Complainant. Following correspondence between the parties and the Court of Appeal, on July 15, 2015, the Court of Appeal stated that its decision as to the scope of the Injunction was without prejudice to the Complainant’s right to seek a determination as to the ownership of the Domain Name in other forums, including under the Policy.
Following the judgment, the Respondent changed its name to its current name, “Iconic Locations Singapore Pte Ltd” and the MBS Restaurant has been re-named as “Ce La Vi”. The Singapore Register of Trade Marks was rectified with effect from February 5, 2015 to reflect the Third Complainant as the registered proprietor of the Singapore Marks holding them on trust for the Complainant.
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to the Trade Mark, the Respondent has no rights or legitimate interests with respect to the Domain Name and that the Domain Name was registered and is being used in bad faith. The Complainant requests transfer of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
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 was registered and is being used in bad faith.
B. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has rights to the Trade Mark.
The threshold test for confusing similarity involves the comparison between the trade mark and the domain name itself to determine likelihood of Internet user confusion. The trade mark would generally be recognizable within the domain name. In this case the Domain Name comprises the Trade Mark in its entirety. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain suffix.
Accordingly, the Panel finds that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights.
C. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial 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.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in paragraph 2.1 of the Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some allegations of evidence of relevant rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.
The Complainant and Respondent have litigated in the Courts of Singapore to determine whether the Respondent has any rights to use the Trade Mark KU DE TA in Singapore. The Complainant triumphed and the Court of Appeal granted the Complainant an injunction prohibiting the Respondent from using the name “Ku de Ta” as its corporate name and trading name; in connection with its websites and other business and corporate materials. The Court Order includes an order for the Respondent to cease using the Domain Name but owing to the manner in which the case was pleaded originally, there was no order for the Domain Name to be transferred to the Complainant. The Respondent appears to have made the necessary changes to comply with the terms of the injunction. There does not appear to be any evidence that the Respondent has rights to KU DE TA in any other jurisdiction which could potentially have provided it with concurrent rights and legitimate interests in the Domain Name.
In such circumstances, the Panel finds that the Complainant has made out a prima facie case, calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
D. Registered and Used in Bad Faith
To succeed under the Policy, a Complainant must show that the Domain Name has been both registered and used in bad faith. It is a double requirement.
Given the Court’s decision, it is clear that the Domain Name was registered in bad faith both by the original registrant, a director of Nine Squares and the Respondent to which it was transferred, possibly in February 2015.
With respect to whether the Domain Name is being used in bad faith, the website connected to the Domain Name, on around June 18, 2015 when the Complainant first discovered its existence, would redirect all visitors to the website “www.celavi.com”. Following the Court’s injunction on July 15, 2015, the Domain Name is no longer connected to an active website. This does not prevent a finding of bad faith. The Consensus View in paragraph 3.2 of the WIPO Overview 2.0 states that the apparent lack of active use of the domain name without any active attempt to sell or to contact the trade mark owner does not prevent a finding of bad faith. The Panel has to examine the circumstances of the case to determine whether the respondent is acting in bad faith. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa.
In this case, after lengthy court proceedings, the Singapore Court ordered the Respondent inter alia to cease use of the Domain Name. In written submissions to the Court on July 1, 2015, the Respondent asserted that it was prepared to undertake not to use the Domain Name but insisted on retaining the registration of the Domain Name. This suggests an intention to “squat” on the Domain Name without making any genuine use of the same. The Respondent presumably chose not to voluntarily transfer the Domain Name to the Complainant after the court proceedings to put the Complainant through the time and cost of filing a UDRP complaint to which the Respondent did not bother to file a response.
Further, the Respondent was using the Domain Name in bad faith when it was redirecting Internet traffic to another website. Finally, following the Court injunction, the Respondent’s passive holding of the Domain Name after the Court found that it had no right to the Ku de Ta name, also creates an inference of bad faith. Considering all the circumstances of the case, the Panel considers that Domain Name was also used in bad faith.
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, <kudeta.com>, be transferred to the Complainant.
Date: January 26, 2016