WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Resorts World at Sentosa Pte. Ltd. v. Domain Admin, Whois Privacy Corp.
Case No. D2017-0687
1. The Parties
The Complainant is Resorts World at Sentosa Pte. Ltd. of Singapore, represented by Rajah & Tann Singapore LLP, Singapore.
The Respondent is Domain Admin, Whois Privacy Corp. of Nassau, New Providence, Bahamas.
2. The Domain Name and Registrar
The disputed domain name <resortworldsentosa.com> is registered with Internet Domain Service BS Corp (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 5, 2017. On April 5, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 10, 2017, 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 April 13, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 3, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 4, 2017. Due to a clerical mistake, the Center forwarded the Notification of Complaint to the Respondent at three additional email addresses on May 9, 2017, giving the Respondent until May 19, 2017 to submit its Response. The Respondent did not submit any response and accordingly the Center sent an email on May 22, 2017, informing the Parties of commencement of Panel appointment.
The Center appointed Cherise Valles as the sole panelist in this matter on June 9, 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.
4. Factual Background
The Complainant is the owner and operator of Resorts World Sentosa, an integrated lifestyle destination resort covering approximately 49 hectares on Singapore's Sentosa Island. The resort opened in January 2010 and has been named “Best Integrated Resort” for six consecutive years since 2011 by the TTG Travel Awards, which recognizes the best of Asia-Pacific's travel industry.
The Complainant is part of the Genting group of companies (the “Group”), a multi-national conglomerate based in Malaysia. The Group operates a number of resorts around the world under the “Resorts World” brand name, which include “Resorts World Casino” in New York City, “Resorts World Genting” in Malaysia, “Resorts World Manila” in the Philippines, “Resorts World Birmingham” in the United Kingdom and “Resorts World Bimini” in the Bahamas. Over the years, the Group has undertaken intensive and extensive branding efforts in order to enhance its international reputation of its resorts as a premium destination for leisure and entertainment.
Genting International Management Limited (“GIML”) is also part of the Group and is the owner of multiple trademark registrations in Singapore and around the world for the RESORTS WORLD word and logo marks. These include, but are not limited to, the following:
- Singaporean trademark registration No. T0623198Z for RESORTS WORLD, registered on October 18, 2010, in class 14;
- Singaporean trademark registration No. T1003705Z for RESORTS WORLD, registered on March 26, 2010, in classes 16, 28, 41 and 43;
- Singaporean trademark registration No. T1008415E for RESORTS WORLD GIFT SHOP, registered on July 6, 2010, in class 35;
- Singaporean trademark registration No. T1008416C for RESORTS WORLD STORE, registered on July 6, 2010, in class 35;
- Singaporean trademark registration No. T1008429E for RESORTS WORLD CONVENTION CENTRE, registered on July 6, 2010, in class 41;
- Singaporean trademark registration No. T0913036Z for RESORTS WORLD CASINO, registered on November 9, 2009, in class 16;
- Singaporean trademark registration No. T1013459D for RESORTS WORLD CASINO, registered on October 15, 2010, in class 28;
- Singaporean trademark registration No. T0912990F for RESORTS WORLD CASINO, registered on November 9, 2009, in class 35;
- Singaporean trademark registration No. T0912999Z for RESORTS WORLD CASINO, registered on November 9, 2009, in class 41; and
- Singaporean trademark registration No. T0913000I for RESORTS WORLD CASINO, registered on November 9, 2009, in class 43.
By way of a 2013 license, GIML sub-licensed GIML’S RESORTS WORLD trademarks to the Complainant for use in Singapore and globally, such license to expire on February 28, 2037. Although ownership of GIML’s RESORTS WORLD marks has since been transferred to another entity in the Group (Genting Intellectual Property Pte Ltd), the 2013 license provides that the agreement shall be assignable and binding upon the parties’ successors-in-title. Accordingly, the Complainant continues to be a licensee of all of GIML’S RESORTS WORLD marks. The Complainant’s license is exclusive in Singapore, and non-exclusive in every other country in the world, except Malaysia.
The Complainant has used the RESORTS WORLD marks extensively, not just in Singapore where the Sentosa resort is located, but in advertisements published in many countries around the world. The marks are seen by the public in Singapore and elsewhere around the world as being distinctive of the “Resorts World” brand name.
The Complainant has also registered the domain name <rwsentosa.com> as the official website for the Sentosa resort.
The disputed domain name <resortworldsentosa.com> was registered on December 7, 2006. When the Complainant first became aware of the disputed domain name in February 2014, it was registered under the Profile Group with the domain name registrar Melbourne IT Ltd. In December 2014, the registrar of the disputed domain name was changed from Melbourne IT Ltd to Uniregistrar Corp (“Uniregistry”). Uniregistry offers a Privacy.Link service that masks the identity of the registrant of the disputed domain name. The new registrant of the disputed domain name was listed as “Privacydotlink Customer 295216”. The Complainant had no way of knowing if the registrant of the disputed domain name was still the Profile Group. In June 2015, the Complainant contacted Uniregistry in an attempt to obtain the full identity of Privacydotlink Customer 295216. However, Uniregistry refused to do so and stated that it would forward the report to Privacydotlink Customer 295216. The Complainant subsequently discovered that the disputed domain name had been transferred from Privacydotlink Customer 295216 to Privacydotlink Customer 518780 on or about the date that Uniregistry had stated it would forward the report by the Complainant to Privacydotlink Customer 295216. The Complainant discovered, subsequently, that the disputed domain name had undergone yet another transfer from Privacydotlink Customer 518780 to the Respondent. The Complainant has reason to believe that the Respondent remains the Profile Group, or an affiliated company, and that all the changes and transfers to date were deliberate actions, calculated to make it more difficult for the Complainant to seek recourse. The content of the website to which the disputed domain name resolves today is slightly different from the content of the website at the time it was formally registered under the previous owners listed above.
5. Parties’ Contentions
The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, the Complainant asserts that:
The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
- The disputed domain name is confusingly similar or identical to the Complainant’s registered trademark, RESORTS WORLD, in light of the fact that it wholly incorporates the Complainant’s mark.
The Respondent lacks rights or legitimate interests in the disputed domain name.
- The Complainant states that the Respondent should be considered as having no rights or legitimate interests in the disputed domain name. The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name that included its trademarks.
The disputed domain name has been registered and is being used in bad faith.
- The Complainant asserts that the disputed domain name was registered and is used in bad faith. The mere fact of registration of a domain name that is confusingly similar or identical to a famous trademark by an entity that has no relationship to that mark is itself evidence of bad faith registration and use.
The Complainant requests the Panel to issue a decision finding that the disputed domain name be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Policy provides specific remedies to trademark owners against registrants of domain names where the owner of the mark (a complainant) establishes each of the following elements:
(i) the domain name is identical or confusingly similar to a trademark 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.
The Complainant has the burden of proof in establishing each of these elements.
The Respondent has failed to file a response in these proceedings and is therefore in default. The Panel may draw appropriate inferences from the available evidence submitted by the Complainant.
A. Identical or Confusingly Similar
To prove this element, the Complainant must have trademark rights and the disputed domain name must be identical or confusingly similar to the Complainant’s trademark.
The Complainant is the licensee of the RESORTS WORLD mark on an exclusive basis in Singapore and on a non-exclusive basis in all other countries (except Malaysia).
Each of GIML’s marks contains the words “Resorts World”. The only difference between the disputed domain name and GIML’s RESORTS WORLD and RESORTS WORLD AT SENTOSA word and logo marks is the omission in the disputed domain name of the “s” at the end of the word “resort” and of the word “at”. The registration of the disputed domain name is an act of “typosquatting”, whereby the Respondent has aimed to redirect consumers attempting to reach the Complainant’s website.
Slight variations and/or misspellings, including the inclusion or deletion of a single letter, have been considered by the panel in several past decisions to nevertheless constitute typosquatting. See, for example, Mattel, Inc. v Magic 8 ball factory, WIPO Case No. D2013-0058, in which the panel held that that the addition of the letter “s” “constitutes only a minor variation” and recognized that sort of conduct as “’typosquatting’, a practice which involves the use of a domain name of virtually identical and/or confusingly similar marks to a complainant's trade mark”. Similarly, the omission of the word “at” in the disputed domain name does not prevent it from being confusingly similar to the Complainant’s marks. Previous panels have held that the insertion or omission of minor words in the form of “typosquatting” satisfies the threshold for virtual identicality and/or confusing similarity under the Policy. See, for example, Edmunds.com, Inc v Yingkun Guo, dba This domain is 4 sale, WIPO Case No. D2006-0694, in which the panel confirmed that “essential” or “virtual” identity is sufficient for the purposes of establishing confusing similarity.
In the light of the foregoing, the Panel finds that the disputed domain name <resortworldsentosa.com> is confusingly similar to the Complainant’s registered mark and that paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
The burden of proof is on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. Under the UDRP, if a prima facie case is established by the Complainant, then the burden of production of evidence shifts to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy enumerates three non-exclusive ways in which a respondent may demonstrate rights or legitimate interests in a domain name: “[a]ny 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 your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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 Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).
Previous panels have established that, in order to shift the burden of proof to the Respondent, it is sufficient for the Complainant to make a prima facie showing that the Respondent has no right or legitimate interest in the disputed domain name.
The Respondent does not have any registered trademarks or trade names corresponding to the disputed domain name. The Respondent is not in any way associated with the Complainant and has never sought, nor received, authorization or a license to use GIML’s RESORTS WORLD trademark in any way or manner, including for registering a domain name containing the term “Resorts World”. Previous panels have held that the mere registration of a domain name does not give the owner a right or a legitimate interest in respect of the domain name. See, for example, Educational Testing Service v TOEFL, WIPO Case No. D2000-0044.
In the light of the foregoing, the Panel finds that the Complainant has established an unrebutted prima facie case and concludes that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(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;
(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 its website or other on-line 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 its website or location.
As mentioned in Section A above, the registration of the disputed domain name constitutes a clear act of typosquatting. Previous panels have held that where a respondent registers a domain name in a deliberate attempt to attract Internet users who are attempting to reach a similar domain name, and where such domain name resolves to a website which provides click-through opportunities to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with a complainant’s mark, this constitutes bad faith registration and use. See Delta Air Lines, Inc v Web Marketing 360, WIPO Case No. DCO2012-0038. Moreover, typosquatting has been recognized by previous panels as use in bad faith. See, for example, Briefing.com Inc v Cost New Domain Manager, WIPO Case No. D2001-0970.
The Respondent must have been aware of the existence of GIML’s rights in the trademarks when registering the disputed domain name. The transfer of ownership of the disputed domain name to the Respondent occurred approximately 10 years after the registration of GIML’s marks. By this time, the Sentosa resort had already begun to receive popularity and recognition among consumers and the industry. Previous panels have held that the registration of a domain name obviously connected with well-known trademarks by someone without any connection to these trademarks suggests bad faith. See, among others, Veuve Clicquot Ponsardin, Maidon Fondee en 1772 v The Poly genix Group Co, WIPO Case No. D2000-0163.
As mentioned above, after Uniregistry informed the Complainant that it would forward the Complainant’s report to Privacydotlink Customer 295216, the disputed domain name was transferred to the Privacydotlink Customer 518780, whose identity is similarly hidden by Uniregistry’s Privacy.Link service. Previous panels have held that the transfer of the registration of a disputed domain name after administrative proceedings have commenced constitutes “cyberflying”. See Unilever PLC v ABC Corp, WIPO Case No. D2003-0164. Moreover, the Respondent employs “robots.txt”, a circumvention mechanism which prevents access to historical website content. The Panel concludes from the use of such a mechanism that the Respondent was attempting to block access by the Panel to relevant evidence and accordingly the Panel draws an inference of bad faith on the part of the Respondent.
Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name under paragraph 4(a)(iii) 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 <resortworldsentosa.com> be transferred to the Complainant.
Date: June 24, 2017