WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Singapore Telecommunications Limited v. Domain for SALE �
Case No. D2001-1059
1. The Parties
1.1. The Complainant in this Administrative Proceeding is Singapore Telecommunications Limited a publicly-listed company incorporated under the laws of the Republic of Singapore, with its registered address and principal place of business at 31 Exeter Road, Comcentre, Singapore 239732.
1.2 The Respondent is "Domain for SALE � " with its address at 5 Tpagrichnery St., # 33 Yerevan, 375010, Armenia.
2. The Domain Name and Registrar
The domain name in dispute is registered with eNom, Inc.
3. Procedural History
3.1 A Complaint was submitted to the WIPO Arbitration and Mediation Center by email on August 23, 2001, and in hard copy on August 28, 2001.
3.2 An Acknowledgement of Receipt of Complaint was sent to the Complainant on August 24, 2001.
3.3 A request for Registrar Verification was sent to the Registrar, eNom, Inc. on August 24, 2001, requesting it to (1) confirm that a copy of the Complaint had been received by them; (2) confirm that the domain name in issue is registered with them; (3) confirm that the Respondent is the current Registrant of the domain name; (4) provide the full contact details [i.e., postal address(es), telephone number(s), fascimile numbe(s), e-mail address(es)] available in the Registrar�s WHOIS database for the Registrant of the disputed domain name, Technical Contact, Administrative Contact and Billing Contact; (5) confirm that the Uniform Domain Name Dispute Resolution Policy applies to the domain name, and (6) indicate the current status of the domain name.
3.4 On August 28, 2001, eNom, Inc. confirmed by reply e-mail that a copy of the Complaint had been received by them and that the domain name in question was registered with them, the Registrant of which was the Respondent. They also intimated that the domain name was on a "registrar lock" status. The Registrar also forwarded the requested WHOIS details and confirmed that the Policy is in effect.
3.5 The WIPO Center, on August 29, 2001, determined that the Complaint satisfies the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel has independently determined the same and agrees with the assessment of the WIPO Center in this regard. The Complainant paid on time and in the required amount the fees for a Sole Panelist.
3.6 No formal deficiencies having being recorded, on August 29, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, eNom, Inc. and ICANN), setting a deadline of September 18, 2001, by which time the Respondent could file a Response to the Complaint.
3.7 Having reviewed the communications records in the case file, the Administrative Panel finds that the WIPO Center has discharged its responsibility under paragraph 2 (a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent".
3.8 On September 19, 2001, not having received any Response, the WIPO Center sent the parties a formal Notification of Respondent Default.
3.9 On October 1, 2001, in view of the Complainant�s designation of a Single Member Panel, the WIPO Center appointed the undersigned to serve as the Sole Panelist. The Panel was required to forward its decision to WIPO by October 15, 2001.
4. Factual Background
4.1 The Complainant is a publicly-listed company which was incorporated under the laws of the Republic of Singapore on March 28, 1992 to take over the provision of telecommunications and postal services in Singapore, which had, until then, been provided by the Telecommunications Authority of Singapore.
4.2 The Complainant has been listed on the main board of the Singapore Exchange since November 1993 and is Singapore�s largest company and one of Asia�s largest in terms of market capitalisation, with assets worth S$16.2 billion (as at March 31, 2001). For the year ended March 31, 2001, the Complainant�s total operating revenue was S$2.3 billion. The Complainant trades under and is commonly known as "SingTel".
4.3 The SingTel group consists of companies whose businesses include mobile phones and paging services, publishing, consultancy, postal services, investments, repair of submarine cables and sale of telecommunications equipment. The Complainant�s subsidiary, Singapore Telecom Mobile Pte Ltd., is in the business of mobile phone services. Singapore Telecom Mobile is commonly known as and offers its mobile phone services under and by reference to the "SingTel Mobile" trademark. The Complainant is the leading mobile communications operator in Singapore with approximately 1.5 million cellular subscribers and a market share of approximately 56% (as of March 31, 2001).
4.4 The Complainant has applied for and registered the "Singtel" and "Singtel Mobile" trademarks in various trademark registries around the world including the Intellectual Property Office of Singapore. The Complainant has also registered and uses the following domain names:-
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4.5 The Respondent is an unknown individual or entity, who/which has registered the domain name with eNom, Inc. and has chosen not to disclose its genuine identity when registering the domain name despite the requirement to do so by section 7 of the Registration Agreement.
4.6 The webpage contains an invitation to make an offer to purchase domain names. The webpage specifically mentions that any offer below US$550 will be ignored. The Respondent presently uses the domain name to divert traffic to a website at which offers pornographic material.
4.7 Therefore, the Complainant has instituted the present proceeding.
5. Parties� Contentions
A. The Complainant has delineated its contentions under three broad heads as below:
Identical or Confusing Similarity
5.1 The domain name is identical or confusingly similar to the Complainant�s SingTel and SingTel Mobile names and trademarks and also identical to the Complainant�s domain names, in particular the domain name. The Complainant relies upon Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047, to contend that when a domain name incorporates, in its entirety, a distinctive mark, that creates sufficient similarity between the mark and the domain name to render it confusingly similar.
5.2 It is also contended that the use or absence of punctuation marks, such as hyphens and spaces, does not alter the fact that a domain name is identical to a mark (Rolls-Royce PLC v. Hallofpain, WIPO Case No. D2000-1709) and that the suffix is an irrelevant distinction which does not change the likelihood for confusion (Microsoft Corporation v. Amit Mehrotra, WIPO Case No. D2000-0053).
No Rights/Legitimate Interests
5.3 The Respondent has not used the name to offer bona fide goods or services since registration. The Respondent does not appear to have registered or to operate any business or commercial venture using the "SingTel Mobile" name. The Respondent has no known rights, products, services or trademarks using the same name. To date, the domain name has simply been used to redirect the public to , a website offering pornographic material, and to offer the sale of the domain name to any interested buyer for a profit.
5.4 The Respondent is not a licensee of the Complainant or in any other way authorized to use the Complainant�s "SingTel" or "SingTel Mobile" trademarks. Mere registration or earlier registration does not establish rights or legitimate interests in the disputed domain name (Pharmacia & Upjohn Company v. Moreonline, WIPO Case D2000-0134).
Bad Faith
5.5 The domain name was registered and/or maintained for the sole purpose of sale to the Complainant, its competitors or other interested parties. This can be gathered by the fact that the name of the Respondent/Registrant is given in the WHOIS record as "Domain For SALE" and that the webpage given as part of the name contains an invitation to make an offer to purchase domain names. The use of "Domain For SALE" as part of the Registrant�s name is evidence of registration and use in bad faith (Parfums Christian Doir v. QTR Corporation, WIPO Case No. D2000-0023, Microsoft Corporation v. Amit Mehrotra, WIPO Case No. D2000-0053, The J. Paul Getty Trust v. Domain 4 Sale & Company, Claim No. FA0007000095262).
5.6 The unconditional rejection by the Respondent of all offers below US$550 is evidence of the Respondent�s desire to profit from the transfer of the domain name. This constitutes evidence of the Respondent�s bad faith use/registration of the domain name, according to paragraph 4 (b) (i) of the Policy (National Football League Properties, Inc. and Chargers Football Company v. One Sex Entertainment Co., a/k/a , WIPO Case No. D2000-0118, 3636275 Canada, dba eR v. eR, WIPO Case No. D2000-0110). The offer to sell the domain name in excess of the Respondent�s out-of-pocket costs directly related to the domain name also constitutes use in bad faith within the meaning of the Policy (paragraph 6 of World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D99-0001).
5.7 By linking the domain name with a pornographic website, the SingTel Mobile name and thus the Complainant, will be associated with pornography, an association which is highly detrimental to the Complainant�s reputation and goodwill. The Complainant relies upon CCA Industries Inc. v. Bobby R. Dailey, WIPO Case No. D2000-0148 to contend that association with a pornographic website can itself constitute bad faith.
B. The Respondent has not filed any Response in these proceedings.
6. Discussions and Findings
6.1 Paragraph 4(a) of the Policy requires the Complainant to prove the following:
a) that the domain name registered by the Respondent is identical and confusingly similar to a trademark or service mark in which the Complainant has rights; and
b) that the Respondent has no legitimate interests in respect of the domain name; and
c) that the domain name has been registered and is being used in bad faith.
Each of these requirements will be dealt with separately.
A. Complainant�s Trademark Rights; Identical/Confusing Similarity
Trademark Rights
The Complainant has trademark registrations for the mark "SingTel" in Singapore, covering goods (such as telecommunication apparatus and other electronic apparatus in class 9), as well as services (all services in class 38 and services in class 42 such as scientific consultancy services).
In addition to this, they have a number of trademark applications for the mark and logo, "SingTel Mobile" in respect of goods/services in classes 9, 38 and 42 respectively. Apart from the above, the Complainant has also furnished extensive evidence of the use of the marks "Singtel" and "Singtel Mobile". The Panel therefore finds that the trademarks "SingTel" and "SingTel Mobile" are extremely well known and that the Complainant has exclusive rights in the same.
Identical/Confusing Similarity
The domain name is identical to the Complainant�s trademark "SingTel Mobile". The mere fact that the domain name contains a hyphen as well as the extension does not make it any less similar to the trademark (See Rolls-Royce PLC v. Hallofpain, WIPO Case No. D2000-1709 and Digitronics Inventioneering Corporation v. @Six.Net Registered, WIPO Case No. D2000-0008).
Apart from the above, the impugned domain name is also confusingly similar to the Complainant�s registered trademark "SingTel".
Therefore, the Panel finds that the domain name is identical to the Complainant�s trademark "SingTel Mobile" and confusingly similar to the Complainant�s other trademark "SingTel".
B. Rights/Legitimate Interests
Paragraph 4 (c) of the Policy enumerates circumstances which, if found by the Panel to be proved will demonstrate the Respondent�s rights or legitimate interests to the domain name.
In the present case, the Respondent does not seem to have used the domain name in connection with a bona fide offering of goods and services. In fact, the only purpose for which they seem to have used it is to redirect users to a pornographic website. Moreover, the Respondent is known by the name "Domain For SALE" and the webpage of the Respondent contains an invitation to make an offer to purchase various domain names. This clearly negates the possibility of an intention by the Respondent to use the domain name in connection with any bona fide offering of goods and services.
Moreover, the Respondent also does not appear to be commonly known by the name "SingTel Mobile". In the absence of any submissions by the Respondent, the Panel is inclined to agree with the Complainant�s contention that the Respondent has no rights or legitimate interests in the impugned domain names.
C. Bad Faith
Paragraph 4 (b) of the Policy enumerates the following circumstances which, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
i) circumstances indicating that the Respondent has registered or has acquired the domain name primarily for the purposes 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.
In the present case, the Panel finds that the domain name was registered by the Respondent primarily for the purpose of selling it to the Complainant, its competitors or other interested parties for an amount in excess of its out-of-pocket costs incurred in relation to registering the domain name. This is borne out by the following facts:
a) The name of the Respondent given in the WHOIS record is "Domain For SALE" and it therefore appears that the Respondent is in the business of registering and selling domain names. (See The J. Paul Getty Trust v. Domain 4 Sale & Company, Claim No. FA0007000095262, where it was held that the use of "Domain 4 Sale" as part of the Registrant�s name is evidence of registration and use in bad faith).
b) The webpage of the Respondent contains an invitation to make an offer to purchase domain names.
c) The webpage categorically states that any offer below US$550 will be ignored, thus clearly asking for a consideration which will be more than the Respondent�s documented out-of-pocket costs.
Therefore the Panel finds that the elements of paragraph 4 (b) (i) of the Policy have been met.
Apart from the above, the Panel finds that the Respondent has registered the domain name in order to prevent the Complainant from reflecting their trademark in a corresponding domain name (as required by paragraph 4 (b) (ii) of the Policy). The fact that the Respondent is in the business of registering and selling domain names demonstrates a "pattern of such conduct".
Lastly, the Panel also finds that the fact that the impugned domain name redirects users to a pornographic website shows that the Respondent is intentionally attempting to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant�s mark "SingTel Mobile" (as required by paragraph 4(b) (iv) of the Policy).
The Respondent has not contested any of the Complainant�s allegations above mentioned. For all the reasons mentioned above, the Panel finds that the impugned domain name has been registered and is being used in bad faith by the Respondent.
7. Decision
For all of the foregoing reasons, the Panel decides that the domain name registered by the Respondent is identical and confusingly similar to the trademarks in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain name at issue, and that the Respondent�s domain name has been registered and is being used in bad faith. Accordingly, pursuant to paragraph 4 (i) of the Policy, the Panel requires that the impugned domain name be transferred to the Complainant.
Pravin Anand
Sole Panelist
Dated: October 12, 2001
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