WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Singapore Pools (Private) Limited v. WHOIS IDCPrivacy Service c/o IDC (BVI) Limited / tirta maya
Case No. D2016-1995
1. The Parties
The Complainant is Singapore Pools (Private) Limited of Singapore, represented by Rajah & Tann Singapore LLP, Singapore.
The Respondent is WHOIS IDCPrivacy Service c/o IDC (BVI) Limited of London, the United Kingdom of Great Britain and Northern Ireland / tirta maya of Semarang, Indonesia.
2. The Domain Name and Registrar
The disputed domain name <singaporepools.biz> (the “Disputed Domain Name”) is registered with NetEarth One Inc. d/b/a NetEarth (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 3, 2016. On October 3, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 3, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on October 5, 2016, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on October 10, 2016.
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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 10, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 30, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 1, 2016.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on November 11, 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
Complainant states that it “was established in 1968 under it present corporate name and is the only gaming operator that is legally allowed to offer lotteries and sports betting in Singapore”. Complainant further states that it operates its official website at “www.singaporepools.com.sg”, which was created on March 12, 1998, and “allows customers to obtain information about the products and services offered by the Complainant and also the latest lotteries and sports betting results”.
Complainant states, and provides evidence to support, that it is the owner of a number of trademark registrations in Singapore that include the text “Singapore Pools”, including Reg. Nos. T9308803Z (registered November 10, 1993); T9308804H (registered November 10, 1993); T9609016G (registered August 24, 1996); and T9609017E (registered August 24, 1996). These registrations are referred to hereafter as the “SINGAPORE POOLS Trademark”.
The Disputed Domain Name was created on January 3, 2015, and is being used in connection with a website that displays what Complainant describes as “signs that are identical or substantially similar to various registered trade marks which the Complainant own and use on its own website” and “various tables containing random 6-digit numbers, which appears to be devoid of any meaning or useful purpose.” Screenshots of the website using the Disputed Domain Name attached to the Complaint contain text that includes the following: “Welcome to SINGAPORE LOTTERY and thank you for giving us the opportunity to introduce you to one of the SINGAPORE LOTTERY and one of the most popular sites today. Since opening our doors in 2014, we have been committed to giving players the best life experience by offering exciting Prizes, excellent customer care and maintaining the highest level of integrity.” The website also states: “This website is published by SINGAPORE LOTTERY Private Limited…. It is in no way associated with or related to other gaming sites. Please note that SINGAPORE LOTTERY does not offer its products online.”
Complainant states, and provides evidence to support, that it sent a demand letter to Respondent on August 28, 2016, but that it “has not received any response from the Respondent as of the date of the submission of this Complaint.”
5. Parties’ Contentions
Complainant contends, in relevant part, as follows:
- The Disputed Domain Name is confusingly similar to the SINGAPORE POOLS Trademark because, inter alia, “the words ‘SINGAPORE POOLS’ make up the entire disputed Domain Name (disregarding ‘www’ and ‘.biz’)” and “[i]t cannot be disputed that the [Disputed] Domain Name <SINGAPOREPOOLS.BIZ> is identical in all material respects to” the SINGAPORE POOLS Trademark. Further, “it has been widely accepted in domain name disputes that a domain name will still be considered identical to or confusingly similar with a registered trade mark comprising a device, even if the device has not been reproduced in the domain name.”
- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “there is no relation between the Complainant and Respondent here”; and “there is no evidence of the Respondent's use of or demonstrable preparations to use the [Disputed] Domain Name in connection with a bona fide offering of goods and/or services” because the content on Respondent’s website using the Disputed Domain Name identifies “a fictitious entity” and “is completely meaningless and devoid of any legitimate purpose”.
- The Disputed Domain Name was registered and is being used in bad faith because, inter alia, “the registrant’s concealment of its identity is indicative of its bad faith”; Respondent “registered the Domain Name using false contact details” because “[a] search on Google Maps shows that the address [for Respondent disclosed by the Registrar] does not exist” and “[a] search on an international phone validation website reveals that the Respondent’s alleged telephone number is ‘invalid’”; by using design marks on its website that are similar to Complainant’s design marks, “it is clear that the Respondent knows the Complainant and its business very well, and has made an effort to be seen as being associated with and/or passing off as the Complainant by infringing the Complainant’s various intellectual property rights”; “there is no actual or contemplated good faith use by the Respondent of the [Disputed] Domain Name”; Respondent failed to respond to Complainant’s demand letter; and “the content of the [website using the Disputed Domain Name] would cause confusion to visitors of the [website using the Disputed Domain Name].”
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) 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. Policy, paragraph 4(a).
A. Identical or Confusingly Similar
Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the SINGAPORE POOLS Trademark.
As to whether the Disputed Domain Name is identical or confusingly similar to the SINGAPORE POOLS Trademark, the relevant comparison to be made is with the second-level portion of this domain name only (i.e., “singaporepools”), as it is well established that the Top-Level Domain (i.e., “.biz”) may generally be disregarded for this purpose. See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2 (“[t]he applicable top-level suffix in the domain name (e.g., ‘.com’) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark.”)
The Disputed Domain Name is identical to the textual element of the SINGAPORE POOLS Trademark. The Panel agrees with the decisions cited by Complainant, EFG Bank European Financial Group SA v. Jacob Foundation, WIPO Case No. D2000-0036 (finding confusing similarity where “[o]nly the graphic elements of [complainant’s] trademark (triangular device and special font), which anyway cannot be reproduced in a domain name, were left out [of the disputed domain name]”); and Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031 (finding identicality where “graphic elements…, not being reproducible in a domain name, need not be considered when assessing identity or confusing similarity”).
Accordingly, the Panel finds that Complainant has proven the first element of the Policy.
B. Rights or Legitimate Interests
Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “there is no relation between the Complainant and Respondent here”; and “there is no evidence of the Respondent's use of or demonstrable preparations to use the [Disputed] Domain Name in connection with a bona fide offering of goods and/or services” because the content on Respondent’s website using the Disputed Domain Name identifies “a fictitious entity” and “is completely meaningless and devoid of any legitimate purpose.”
Under the Policy, “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 fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” WIPO Overview 2.0, paragraph 2.1.
The Panel finds that Complainant has established its prima facie case and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has satisfied the second element of the Policy.
C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the respondent has registered or the respondent has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or (ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location. Policy, paragraph 4(b).
In this case, Complainant apparently argues that bad faith exists pursuant to Policy paragraph 4(b)(iv), for the reasons set forth above.
It is obvious that the website associated with the Disputed Domain Name uses design marks that are similar to Complainant’s design marks and contains text that is associated with Complainant and its SINGAPORE POOLS Trademark. Such similarity and references are likely to create confusion. See, e.g., The Dow Chemical Company v. dowaychemical firstname.lastname@example.org +86.7508126859, WIPO Case No. D2008-1078 (transfer of <dowaychemical.com>). In that case, as here, the respondent was “in effect fraudulently impersonating the Complainant.” As a result, the panel found bad faith because “[t]he Respondent was clearly specifically targeting the Complainant’s trademark and attempting to divert Internet users searching for the Complainant’s product to the Respondent’s website.” See also Career Education Corporation v. Nuengnoong Phoothong / Mr. Kazemi, WIPO Case No. D2014-2130 (finding bad faith where respondent’s website “contain[ed] text sections identical with the content available at the Complainant’s website as well as a logo similar to the Complainant’s”); and Clearwire Communications LLC v. Yvan Edwards, WIPO Case No. D2010-1440 (“Respondent is using the mark at issue to resolve to a web site at which… Complainant’s logo and marks are prominently displayed such that a user would believe that he was on a web site sanctioned by Complainant”).
Accordingly, the Panel finds that Complainant has proven the third element 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 disputed domain name <singaporepools.biz> be transferred to Complainant.
Douglas M. Isenberg
Date: November 24, 2016