WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Subur Tiasa Holdings Berhad v. Yeh, Charles
Case No. D2016-1174
1. The Parties
The Complainant is Subur Tiasa Holdings Berhad of Sarawak, Malaysia, represented by Foong Cheng Leong & Co, Malaysia.
The Respondent is Yeh, Charles of Taiwan, China represented by Subur Tiasa Technology.
2. The Domain Name and Registrar
The disputed domain name <suburtiasa.com> (the “Domain Name”) is registered with NameSecure L.L.C. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 10, 2016. On June 10, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same date 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 June 21, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 11, 2016. The Response was filed with the Center on July 10, 2016.
The Center appointed Karen Fong as the sole panelist in this matter on July 22, 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 Complainant, a listed Malaysian company, was founded in 1995. Its principal activities are investment holding, extraction and sale of logs. It has a number of subsidiaries, including Subur Tiasa Plywood Sdn Bhd (the “Subsidiary”) involved with logging, manufacturing and the plantation industries. The Subsidiary is Malaysia’s leading manufacturer and exporter of integrated forest products. The products of the Complainant’s subsidiaries are sold in many countries worldwide including Canada, China, Egypt, Hong Kong, China, India, Indonesia, Japan, New Zealand, Oman, Philippines, Qatar, Singapore, South Africa, the Republic of Korea, Thailand, Turkey, the United Arab Emirates, the United States of America, Viet Nam and Yemen.
The Complainant commenced use of the mark SUBUR TIASA in 1988 when the Subsidiary was incorporated. The Complainant was listed in the Malaysian Stock Exchange (now Bursa Malaysia Securities) in 1997. Its subsidiaries have won various international and local awards. The SUBUR TIASA name was registered as a trade mark in Malaysia in 2014. The Complainant owns the domain name <suburtiasa.com.my>, which was registered on May 15, 1998.
The Complainant holds registered trade marks for SUBUR TIASA under Malaysian TM Trade mark Nos.: 2014067484, 2014067487, 2014067497 and 2014067500 in classes 4, 19, 31 and 32 respectively dated November 24, 2014.
The Domain Name was registered on September 8, 2006. The website connected to the Domain Name (the “Website”) presents SUBURTIASA as a professional software house providing research and development advance system software for hardware vendors. It calls itself SUBURTIASA Technology.
The Respondent also owns a number of domain names which coincide with the names of Australian, Malaysian and Taiwanese companies, some of which are well known companies. Evidence that these domain names are the names of companies have been provided for the following domain names:
The websites connected to the above domain names are identical in design and content to the Website save for the domain names themselves and the name of the purported business behind it. For example Apeagers Technology is behind <apeagers.com> and Challentech Technology is behind <challentech.com>.
The Respondent has had a finding against it under the UDRP in respect of the domain name <chipmos.com> in 2006 (ChipMOS TECHNOLOGIES INC. v. Charles Yeh, ADNDRC Decision No. DE-0600080).
5. Parties’ Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy have been met and the Domain Name should be transferred.
Identical or Confusingly Similar
The Domain Name is identical to the Complainant’s registered trade marks for SUBUR TIASA under Malaysian Trade mark Nos.: 2014067484, 2014067487, 2014067497 and 2014067500 in classes 4, 19, 31 and 32 respectively dated November 24, 2014. The Complainant also has common law rights in the name SUBUR TIASA by virtue of its extensive use since 1988. The Complainant has been listed on the Stock Exchange in Malaysia since 1997. It has submitted in evidence its annual reports for 2000 and 2015. The 2000 annual report has financial information from 1999 and 2000 showing turnover figures of RM 195 million to RM 270 million whilst the 2015 annual report has financial information from 2011-2015 showing turnover figures growing from RM 600 million to RM 760 million.
Rights or Legitimate Interests
(a) Has no association with the Complainant who has not authorized or licensed the Respondent to use its trade marks.
(b) Is not using the Domain Name in connection with a bona fide offering of goods and services.
(c) Has a habit of registering the domain names of well known Australian, Malaysian and Taiwanese company names as domain names including the Domain Name which shows that he has no legitimate interest in the Complainant’s trade mark.
(d) Is using the Domain Name as part of a scheme to deprive companies of registering their names as domain names and to benefit from the registration of the domain names by income from advertisement banners of sale of products such as wireless LAN, PC Camera and mobile phones.
(e) Had registered the Domain Name in bad faith and operating a business in connection with a domain name that was registered in bad faith cannot create rights or legitimate interest even if it does become commonly known by the name.
(f) Was not making a legitimate noncommercial or fair use of the Domain Name as it was registered and being used with the intent of financial gain.
Registration and Use in Bad Faith
The Respondent registered the Domain Name to prevent the Complainant from registering a “.com” domain name comprising its trade mark. The Respondent is engaged in a pattern of registering domain names using the names of companies thus depriving them of the right to registering the “.com” version of their company names and trade marks. The Website is a scheme adopted by the Respondent to attract, for commercial gain, Internet users to the Website and the other websites referred to above. All these websites contain advertisement banner, i.e., Google Ads which generate income for the Respondent when viewed and/or clicked upon. Unsuspecting users who visit the Website will be confused in thinking that it is connected, affiliated or endorsed by the Complainant.
The Respondent denies that the Domain Name should be transferred to the Complainant for the following reasons:
Identical or Confusingly Similar
The Respondent is a professional software design house which is well known in the wireless/software industry. The Complainant may be famous in the timber industry but they are unknown by any party outside the timber industry which is a very narrow business and not related to common people unlike the Wifi business which everyone is familiar with. The Respondent also has a very popular business smartphone software. The Respondent’s business is more famous than the Complainant’s and there will be no confusion as the timber and software industries are very different and people are not stupid.
Rights or Legitimate Interests
The Respondent is very well known in the software industry as it has been operating its business for many years. The Respondent’s website is a bug case management system. Without the Domain Name, the Respondent’s software business will be heavily impacted.
Registration and Use in Bad Faith
The Respondent has been using the Domain Name for its software design business for 10 years and has every right to use the Domain Name. The Complainant is in fact reverse domain name hijacking. The Complainant in fact is a notorious company in Malaysia and its statements are not believable. Evidence was submitted of newspaper articles with complaints and criticisms by organisations like GreenPeace and Global Timber Organisation regarding the Complainant’s group of companies record in protecting the environment, upholding human rights and logging activities.
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;
(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 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 Panel is satisfied that the Complainant has rights to the SUBUR TIASA trade mark by virtue of its Malaysian trade mark registrations. The Panel also finds that the Complainant has common law rights in the SUBUR TIASA name. The company name also incorporates the trade mark. In order for it to be listed in 1997, it would have had to demonstrate its financial stability and growth potential. The financial information submitted in evidence shows a company of a substantial size which trades not just in Malaysia but all over the world. The Complainant has provided sufficient evidence to establish that the name SUBUR TIASA which is an invented name to become a distinctive identifier associated with the Complainant or its goods or services.
The Domain Name comprises the SUBUR TIASA 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 domain suffix. The Panel finds that the Domain Name is identical to a trade mark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
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 trade mark 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 trade mark or service mark at issue.
Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative proposition, requiring information that is primarily if not exclusively within the knowledge of the Respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in the domain name, once the complainant has made a prima facie showing indicating the absence of such rights or legitimate interests. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
In this case, the Complainant relies on the fact that the Respondent has not been authorised by the Complainant to use its trade mark as a domain name or otherwise and he also has a history of registering and using the names of other companies as domain names offering identical services as those on the Website and connected to websites with identical content and layout to the Website. The registration and use of a domain name in bad faith does not create rights and legitimate interests. This effectively shifts the burden to the Respondent to demonstrate rights or legitimate interests in the Domain Name.
The Respondent alleges that his professional software design house is very well known in the software industry through use for the past 10 years. It is not clear whether he is suggesting that he is commonly known by the name “Suburtiasa Technology.” In any event, no evidence was submitted in relation to turnover or number of members and what the charges are. The Respondent has not explained how the Respondent came up with this unusual name which comprises an invented word. Neither has he explained why he owns so many domain names which are the names of companies which he is not connected to. It is also highly unusual to have a software design house under at least 20 different domain names and related business names all with websites almost identical to the Website. That being the case, it does not appear likely that he is commonly known by the Domain Name.
The Panel does not find that the Respondent has presented sufficient evidence of rights or legitimate interests in the Domain Name to rebut the Complainant's prima facie case to the contrary. The fact that the Respondent has been using the Domain Name for 10 years does not necessarily create rights or legitimate interests if the registration and use of the Domain Name is in bad faith. In Neteller plc v. Protoprom, WIPO Case No. D2007-1713, the panel found that a cybersquatter who registers a domain name in bad faith, and then operates a business under that domain name long enough for the business to become “commonly known by” the domain name, does not acquire a complete defence under paragraph 4(c)(ii). The same argument applies here. A cybersquatter who for whatever reason manages to avoid detection for a period of time does not acquire a defence under paragraph 4(c)(ii) especially when there is no explanation as to why the Domain Name was adopted in the first place. The Panel concludes that the second element of the Complaint has been established.
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.
The date to consider whether registration was in bad faith is the date that the Domain Name was registered on September 8, 2006. The Panel is satisfied that the Complainant had established common law rights in the trade mark SUBUR TIASA by that date. It was listed in the Malaysian stock exchange in 1997 after commencing use in 1988. The Panel is also of the view that the Respondent was aware of the trade mark SUBUR TIASA when it registered the Domain Name. The name as a whole is an invented word comprising a combination of a Malay word “Subur” meaning fertile and lush and a purely invented word “Tiasa”. The Respondent has provided no reasonable explanation as to why he decided to adopt this word as his Domain Name. He has also not provided any explanation for the registration of other company trade marks and names as domain names all having almost identical websites to the Website. All these companies are based in Australia, Malaysia or Taiwan. The fact that the Complainant operates in a different industry from the Respondent does not matter if the intent to register in bad faith is present especially since the Domain Name will prevent the Complainant from being able to register and use a domain name reflecting its trade mark under the “.com” Top-Level Domain. The registration of the other domain names evidences the Respondent engaging in a pattern of such conduct falling within the provisions of paragraph 4(b)(ii). Thus the Panel concludes that the Respondent deliberately registered the Domain Name in bad faith.
The Panel also finds that the actual use of the Domain Name is in bad faith. The use of the Complainant’s trade mark as the Domain Name is intended to capture Internet traffic from Internet users who are looking for the Complainant’s products and services. The Website contains advertisement banners which generate income for the Respondent. The Respondent himself alleges that the Wifi business is for the “common people” because everyone requires such services. Having almost identical websites which incorporate the names of well-known regional companies providing software services has been calculated to create confusion by leading potential customers to the Respondent’s Website and providing a market for his goods and services even calling the business “Suburtiasa Technology.” This shows a clear intention on the part of the Respondent to attract for commercial gain by confusing and deliberately misleading Internet users who are looking for the Complainant or its products and services to click onto the Website that it is connected to. The Panel therefore concludes that the Domain Name was registered and is being used in bad faith under paragraph 4(b)(iv) of the Policy.
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, <suburtiasa.com>, be transferred to the Complainant.
Date: July 28, 2016