WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
RGE pte. Ltd v. Leong, Meng Yew
Case No. D2016-2375
1. The Parties
The Complainant is RGE Pte. Ltd of Singapore, Singapore, represented by Nabarro, Singapore.
The Respondent is Leong, Meng Yew of Singapore, Singapore, self-represented.
2. The Domain Names and Registrar
The disputed domain names <sukanto.com> and <sukantotanoto.com> are 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 November 23, 2016. On November 23, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 28, 2016, 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 1, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 21, 2016. The Response was filed with the Center on December 18, 2016.
The Center appointed Francine Tan as the sole panelist in this matter on January 4, 2017. 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.
The Complainant filed a supplementary filing replying to the Response on January 4, 2017.
4. Factual Background
The Complainant (formerly known as RGE International Pte Ltd) was incorporated on April 25, 1996. It is wholly-owned by RGE Inc., a BVI company, of which Mr. Sukanto Tanoto (“Tanoto”) is the sole and beneficial owner. Tanoto is the founder and chairman of RGE Inc. and is asserted by the Complainant to be an internationally-known successful business man from Indonesia. He was named the richest man in Indonesia in 2006 and in 2016, the 14th richest man in Indonesia, with a net worth of USD1.94 billion. Tanoto has been featured in various news clippings and websites and in the Forbes Magazine.
Tanoto is a philanthropist and his Tanoto Foundation provides scholarships to students, honorariums to teachers, builds schools, and supplies equipment, books and healthcare to remote villages in Indonesia.
The Complainant obtained trade mark registrations for SUKANTO TANOTO from 2014 in Benelux, China, Hong Kong, China, Singapore and the United States of America.
The disputed domain names were registered on May 17, 2006. As at the time of filing of the Complainant, the disputed domain names did not resolve to any active webpage.
5. Parties’ Contentions
1. The disputed domain names are identical or confusingly similar to the SUKANTO TANOTO trade mark in which the Complainant has rights.
2. The Respondent has no rights or legitimate interests in respect of the disputed domain names.
The Respondent has never used the disputed domain names (registered on May 17, 2006) in connection with a bona fide offering of goods or services. The Respondent, an individual, has no connection with the Complainant, the trade marks SUKANTO TANOTO or SUKANTO. The Respondent clearly does not intend to make legitimate noncommercial or fair use of the disputed domain names. There was therefore no reason for the Respondent to have registered the disputed domain names, except for bad faith purposes.
3. The disputed domain names were registered and are being used in bad faith. The Respondent registered the disputed domain names primarily for the purpose of selling, renting, or transferring them to the trade mark owner for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain names.
On October 16, 2014, the Complainant, through a third-party representative engaged by the Complainant, contacted the Respondent to ask him if he was willing to transfer the disputed domain name <sukantotanoto.com> to the Complainant. On November 1, 2014, the Respondent indicated he would do so if paid USD 50,000. The Complainant made a counter-offer of USD 3,000. This was rejected by the Respondent who insisted on a minimum of USD 50,000. On November 11, 2014, the Complainant made a counter-offer of USD 10,000. On November 28, 2014, the Respondent changed his mind and said he was not interested in selling the disputed domain name anymore. On December 6, 2014, the Respondent increased the price of the disputed domain name to USD 100,000. In reply, the Complainant said that it was willing to pay USD 50,000. The Respondent did not respond to the email. The Respondent’s attempt to sell the disputed domain name <sukantotanoto.com> to the Complainant at increasingly inflated prices constitutes evidence of registration and use in bad faith.
The Respondent “has a record of having registered in bad faith other domain names” and “appears to have registered other domain names for cybersquatting purposes”. From WhoIs searches, the Respondent’s email address is associated with the domain names <wismaatria.com> and <vivocity.net>. Wisma Atria and Vivocity are large and prominent shopping malls in Singapore with which the Respondent has no connection. The Respondent is presumably cubersquatting on these other domain names with the intention of re-selling them to the rightful owners of the trade marks. He was a respondent in an earlier UDRP proceeding in which he was found to have registered and used the relevant domain name in bad faith. (See Singapore Press Holdings Limited v. Leong Meng Yew, WIPO Case No. D2009-1080).
The Respondent has also registered a company named Sukanto Tanoto Pte. Ltd. To the Complainant’s knowledge, this company is not operational in Singapore. The use of the “Sukanto Tanoto” name for this company is further evidence of the Respondent’s bad faith registration and use in an attempt to take advantage of Tanoto’s name and goodwill.
Although the trade mark registrations for SUKANTO TANOTO were secured after the registration of the disputed domain names does not mean that bad faith cannot be found. Bad faith can be found if a respondent is clearly aware of the complainant and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant’s rights. In this case, it is clear that the Respondent knew of the Complainant and Tanoto from as early as 2006, given Tanoto’s status and heavy media coverage.
The fact that the disputed domain names are not actively in use does not prevent a finding of bad faith where the Complainant’s trade mark is well-known.
The Respondent denies that he registered the disputed domain names on the basis of Tanoto’s fame or that they were registered and are used in bad faith.
Tanoto was listed in the Forbes Magazine on August 6, 2006 whereas the disputed domain names were registered on May 17, 2006, “3 months before he gained his world fame”. The general public only came to know of Tanoto in August 2006 (according to Wikipedia). The earliest entry about Tanoto in Wikipedia was on October 16, 2007. Tanoto was therefore not known to the general public until late 2007, long after the disputed domain names were registered.
The Respondent further contends that:
(i) “Sukanto” is a commonly used name in South-east Asia and not exclusive to Tanoto;
(ii) the Complainant has no business, products or services under the trade name “Sukanto Tanoto” and has no trade mark registrations for SUKANTO;
(iii) Tanoto may be well-known today but the Complainant has failed to show that Tanoto was well-known globally in May 2006. Tanoto was relatively unknown at the time of the registration of the disputed domain names;
(iv) there is no evidence of use of the trade mark SUKANTO TANOTO;
(v) the Complainant did not have rights to the SUKANTO TANOTO mark in 2006;
(vi) the Complainant only registered the SUKANTO TANOTO mark in Classes 35, 36 and 41 from 2014 and not in all classes. Trade marks are meant for protecting the marks of businesses and not for “a personal biography and website”;
(vii) he is a legitimate entrepreneur and has operated many businesses since 1994;
(viii) the disputed domain names were registered with the intent of setting up a “personal services” business having the trade name “Sukanto Tanoto”, which is proven by the setting up of his company Sukanto Tanoto Pte Ltd in Singapore on September 29, 2010. As a smalltime entrepreneur, he has to prioritize his limited resources and it will take time to launch his business. He should not be pressurized to commence his business until he is ready;
(xi) there is no necessity for his website to be active;
(x) his business does not conflict with the trade mark classes covered by the Complainant’s SUKANTO TANOTO trade mark registrations;
(xi) the disputed domain names have not been used to direct Internet traffic to his website but only used for emails – this is legitimate and fair noncommercial use;
(xii) he does not have any connection with the Complainant and would not have known Tanoto in May 2006, but as he owns a company called Sukanto Tanoto Pte Ltd in Singapore (incorporated on September 29, 2010), this gives him the rights and interests in the disputed domain names. Domain name registrations operate on a first-come, first served, basis;
(xiii) he did not register the disputed domain names for the purpose of renting, selling or transferring them to the trade mark owner: the domain name registrations were made eight years before the Complainant started registering SUKANTO TANOTO, and long before Tanoto became famous; the company Sukanto Tanoto Pte Ltd was registered four years before the Complainant started registering SUKANTO TANOTO;
(xiv) the Complainant contacted him to buy the disputed domain name <sukantotanoto.com> but he had no intention to sell it. His reason for inflating the price was in the hope of chasing away the Complainant. If he had an intention to sell the disputed domain name, he would have pursued the negotiations with the Complainant. The USD 50,000 offered was at least 15-fold the fair value of the disputed domain name <sukantotanoto.com> and if he were a professional domain name squatter, he would have sold it to the Complainant at a windfall. He did not as he had registered the disputed domain names solely for the purpose of his business - Sukanto Tanoto Pte Ltd, SukantoTanoto.com and Sukanto.com;
(xv) he owns many domain names but has never solicited, sold, transferred or received any moneys or benefits for the sale/transfer of any domain names before. The <wismaatria.com> and <vivocity.net> domain names are names he fancies and keeping for personal use, for a “fancy email address”;
(xvi) the earlier UDRP proceeding he was involved in was a one-off case and he did not challenge Singapore Press Holdings Limited’s claim in that case where he exercised bad judgment in registering the relevant domain name;
(xvii) to protect his business entity and name, he registered SukantoTanoto as a trade mark in Class 45 in Singapore. He changed his company name to reflect different businesses that he was engaged in at the moment;
(xviii) the Complainant has not shown evidence that he has ever produced any product or service under the SUKANTO TANOTO mark;
(xix) the Complainant has failed to prove his “heavy media coverage” prior to September 2006. There is no evidence showing media coverage on Tanoto’s name on or before May 17, 2006. The Respondent therefore could not have abused the Complainant’s claimed fame in Tanoto’s name;
(xx) the Complainant’s mark is not a well-known trade mark so the Complainant’s reliance on paragraph 3.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) is wrong. When the disputed domain names were registered, the Complainant did not have a registration for the mark SUKANTO TANOTO;
(xxi) there is reverse domain name hijacking in this case by the Complainant.
6. Discussion and Findings
The Complainant submitted on its own initiative a supplementary filing and annexes on January 4, 2017. A supplementary filing was not requested by the Panel pursuant to paragraph 12 of the Rules. Paragraph 12 states that “[i]n addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties”. The question therefore is whether the unsolicited filing by the Complainant is precluded.
The WIPO Overview at paragraph 4.2 states that “Panels have discretion whether to accept an unsolicited supplemental filing from either party, bearing in mind the need for procedural efficiency, and the obligation to treat each party with equality and ensure that each party has a fair opportunity to present its case. The party submitting its filing would normally need to show its relevance to the case and why it was unable to provide that information in the complaint or response”.
The Panel does not find any merit in an argument that, whenever an allegation of Reverse Domain Name Hijacking is made by a respondent, as a matter of course, a complainant should have a right to submit a supplementary filing in response. This would give rise to a practice that goes against the Policy aim for UDRP proceedings to take place in an expeditious, efficient and low-cost manner. The Panel is of the view that it is capable of making a determination on the issue, based on the Complaint and Response.
The Panel does not find any “exceptional circumstances” (per paragraph 4.2 of the WIPO Overview 2.0) to justify a delay of the proceeding. Each party is essentially given one opportunity to establish its case and to put forward all the supporting evidence it wishes to rely on.
The decision herein is therefore based on the Complaint and Response filed by the parties.
A. Identical or Confusingly Similar
The Complainant has established it has registered trade mark rights in SUKANTO TANOTO.
The question therefore to be addressed is whether the disputed domain names are identical or confusingly similar to the trade mark SUKANTO TANOTO. The first disputed domain name comprises the said trade mark in its entirety without any difference apart from the generic Top-Level Domain “.com” (“gTLD”). It is a well-established principle that the gTLD is to be disregarded when considering the issue of identity or confusing similarity of a domain name with a trade mark of a complainant. The Panel finds that the first disputed domain name is identical with the Complainant’s SUKANTO TANOTO trade mark.
As for the second disputed domain name <sukanto.com>, the question is whether it is confusingly similar to the Complainant’s SUKANTO TANOTO trade mark. The difference lies in the absence of the word “tanoto”. The application of the confusing similarity test under the Policy “typically involve[s] a straightforward visual or aural comparison of the trade mark with the alphanumeric string in the domain name” and “the relevant trademark would generally need to be recognizable as such within the domain name”. (See paragraph 1.2 of the WIPO Overview 2.0). Applying these tests, the Panel finds that the SUKANTO TANOTO trade mark is recognizable within the first disputed domain name and furthermore, “sukanto” is the first element in the Complainant’s SUKANTO TANOTO trade mark.
The Complainant has therefore satisfied the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that “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 [the Respondent’s] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to [the Respondent] 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] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the Respondent 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.”
The Panel is of the view that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. The burden of production therefore shifts to the Respondent to show he has rights or legitimate interests in the disputed domain names.
In this regard, the Panel does not find the Respondent’s argument, that because Tanoto was listed in the Forbes Magazine on August 6, 2006, that date was the precise time when Tanoto “gained his world fame”. It is obvious that the fact that Tanoto made it to the Forbes Magazine in August 2006 meant that Tanoto had already for some time become a well-established and recognized figure on the international stage. Hence, there was already a pre-existing reputation and goodwill associated with Tanoto’s name.
The Panel notes that at no point did the Respondent explain how and why he chose the name “sukanto tanoto” for his domain name registration. It is difficult to conceive it being the result of a pure coincidence.
Much as the Respondent has thrown up a smokescreen of arguments, the Panel is of the view that the Respondent has failed to show he has rights or legitimate interests in the disputed domain names. There is no evidence of demonstrable preparations to use the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services. Whilst the Respondent claims to have operated many businesses since 1994, at the same time, he says he is a small-time entrepreneur. There is also no evidence relating to his claimed “personal services” business under the company name Sukanto Tanoto Pte Ltd. There is therefore no evidence that he has been commonly known by the disputed domain names nor evidence that he is making a legitimate non-commercial or fair use thereof, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Respondent has not met the burden of showing with evidence that he has rights or legitimate interests in the disputed domain names.
The Complainant has therefore satisfied the second element of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or 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.
The Panel finds from the evidence submitted by the Complainant that the circumstances of this case fall within paragraphs 4(b)(i) and (iv) of the Policy. The incorporation of the entire trade mark SUKANTO TANOTO in the disputed domain name <sukantotanoto.com> with no explanation of how the Respondent came to adopt the specific combination of words gives rise to a strong presumption that the Respondent had registered the disputed domain names (the registration of the second disputed domain name having been made on the same day, and was clearly tied to and intended to be associated with the name “Sukanto Tanoto”) with the specific intention of attracting, at some point in time, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. Tanoto had, by the time of the registration of the disputed domain names, already been a known figure in the international stage. Further, the offers by the Respondent to sell the disputed domain names to the Complainant’s representative for a large sum of money way in excess of reasonable out-of-pocket costs directly related to the disputed domain names is an indication of the Respondent’s primary intention to profit from the domain name registrations which contain the first name and full name of Tanoto. It is notable that the Respondent did not indicate in his communications with the Complainant’s representative that the disputed domain names were being used by him for his alleged business; he simply said that the price offered was too low, and later declined to sell them.
It is highly improbable that the Respondent was not aware of Tanoto at the time of registering the disputed domain names. It is an odd combination and choice of words for a domain name or a name for a business where the Respondent has no known or obvious connection with Indonesia. The Respondent’s failure to explain the derivation of the disputed domain names is a factor the Panel has considered. The Panel also draws an adverse inference from the Respondent’s registration of the <wismaatria.com> and <vivocity.net> domain names where he has no apparent legitimate rights or interests in these names which correspond to the well-known names of shopping malls in Singapore.
In the premises, the Panel finds that the third element of paragraph 4(a) of the Policy has been satisfied.
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 names, <sukanto.com> and <sukantotanoto.com> be transferred to the Complainant.
Date: January 10, 2017