WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Singapore Flyer Pte Ltd v. Alan Hartono
Case No. D2008-0082
1. The Parties
The Complainant is Singapore Flyer Pte Ltd, of Singapore, represented by Allen & Gledhill LLP, of Singapore.
The Respondent is Alan Hartono, of Indonesia.
2. The Domain Name and Registrar
The disputed domain name is registered with eNom, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 22, 2008. That day the Center transmitted by email to eNom, Inc a request for registrar verification in connection with the domain name at issue and eNom, Inc 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”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 28, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was February 17, 2008. An informal Response was filed with the Center on February 3, 2008.
The Center appointed Alan L. Limbury as the sole panelist in this matter on February 21, 2008. 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 disputed domain name was registered on June 27, 2003 by a Mr. Eric Sim of Singapore. Mr. Sim transferred it to the Respondent, his uncle, on or about November 1, 2007.
The Complainant was incorporated as a Singapore company on July 1, 2003. Its principal business is to design, construct and operate a circular giant observation structure (planned as early as 2002 to be the world’s largest moving man-made land object and the tallest observation wheel in the world, taller by 43 meters than the London Eye); to develop and operate urban entertainment centre and to provide retail space. Construction of the observation wheel began at the end of 2005 and it is expected to be open to the public from March 1, 2008.
The Complainant has applied for and registered the following trademarks in Singapore:
Pending application T0722961Z filed on December 5, 2007 for the words SINGAPORE FLYER; and
Trademarks T0309763H registered on August 23, 2005 and T0309765D registered on February 3, 2004 for SINGAPORE FLYER and ellipse incomplete, upon applications filed on July 2, 2003.
The Complainant registered the domain name on June 30, 2004.
5. Parties’ Contentions
A. Complainant
In addition to its registered trademarks, the Complainant claims common law rights in the mark SINGAPORE FLYER by virtue of extensive use, evidence of which it has provided on a CD exhibited to the Complaint. It seeks the transfer to it of the disputed domain name on the grounds that it is identical or confusingly similar to the Complainant’s marks and that the Respondent has no rights or legitimate interests in the disputed domain name, which was registered and is being used in bad faith.
As to legitimacy, the Complainant says the domain name has not been used and remains inactive. The Complainant specifically addresses and contends that none of the circumstances contemplated by paragraph 4(c) of the Policy are present.
As to bad faith, the Complainant says the domain name was initially registered by Mr. Sim for the sole purpose of selling it to the Complainant as owner of the SINGAPORE FLYER trademarks or to its competitors. In support of this contention, the Complainant relies on communications it had with Mr. Sim between October 4, 2007 and November 1, 2007, during which Mr. Sim initially sought S$100,000 and later S$50,000 for the domain name and the Complainant offered S$5,000 for it. On November 1, 2007, Mr. Sim said he was no longer the owner of the domain name.
The Complainant says the domain name was transferred from Mr. Sim to the Respondent for the purpose of selling it to the Complainant as owner of the SINGAPORE FLYER marks or to its competitors. In support of this contention the Complainant relies on communications it had with the Respondent between November 20, 2007 and November 30, 2007, during which the Complainant offered to compensate the Respondent for the “sizeable sum” he would have paid in purchasing the domain name from Mr. Sim; the Respondent said Mr. Sim had told him about his lengthy negotiation with the Complainant and the Respondent asked the Complainant what was its reasonable sum; the Complainant suggested the Respondent propose a sum that would “at the very least” cover the price paid to Mr. Sim and any costs the Respondent had incurred in the transaction; the Respondent replied that he had written off S$60,000 in debt that his nephew Eric owed him, he had finalized the design of the website and would have an obligation to his online customers once the website was ready, saying the valuation of this under development domain is S$67,000; the Complainant asked the Respondent to confirm that he would be prepared to sell the domain name to the Complainant for that sum, indicating that if the Respondent could prove that he had incurred the expense of S$60,000 by writing off the debt to [scil. from] Mr. Sim, then the Complainant’s board of directors might be more amenable to the amount of S$67,000; and the Respondent made no reply, leaving the alleged debt unproven and the additional S$7,000 unsubstantiated.
The Complainant submits that in all the circumstances, the conduct of the prior owner should be imputed to the Respondent because the transfer was a sham calculated to deprive the Complainant of its right to the domain name.
B. Respondent
The informal Response says the Complaint should be denied because this is a case of reverse domain name hijacking, since the domain name was registered before the Complainant was incorporated and before its trademarks were registered. The words “Singapore” and “flyer” are common words, the latter meaning a small handbill advertising an event or product. The domain name is intended to be used as a website promoting a flyer business in Singapore. There was an active webpage but it was removed in November 2007 after the previous owner received endless harassment and numerous legal warning letters from the Complainant.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered in the name of the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
A respondent is not obliged to participate in a proceeding under the Policy but if it fails to do so, asserted facts may be taken as true and reasonable inferences may be drawn from the information provided by the complainant; Reuters Limited v. Global Net 2000, Inc.,WIPO Case No. D2000-0441. See also Microsoft Corporation v. Freak Films Oy,WIPO Case No. D2003-0109; SSL International plc v. Mark Freeman,WIPO Case No. D2000-1080 and Alta Vista Company v. Grandtotal Finances Limited et al.,WIPO Case No. D2000-0848.
A. Identical or Confusingly Similar
For the purposes of this element, the relevant time at which it is necessary for trade mark rights to be shown to exist is the date of filing of the Complaint; Valve Corporation v. ValveNET, Inc., v. Charles MorrinWIPO Case No. D2005-0038.
The Panel finds that the Complainant has acquired common law rights in the SINGAPORE FLYER mark through extensive use of that mark in relation to the observation wheel that it has constructed and which is itself a significant landmark. The disputed domain name is clearly identical to the Complainant’s common law mark and confusingly similar to its registered marks. The Complainant’s pending trademark application does not give rise to trademark rights: Aspen Grove, Inc. v. Aspen Grove,WIPO Case No. D2001-0798 and Spencer Douglass MGA v. Absolute Bonding Corporation,WIPO Case No. D2001-0904.
The Complainant has established this element.
B. Rights or Legitimate Interests
The Complainant’s assertions are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in the disputed domain name on the part of the Respondent. The evidentiary burden therefore shifts to the Respondent to show by concrete evidence that it does have rights or legitimate interests in that domain name; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 and the cases there cited.
Paragraph 4(c) of the Policy sets out, without limitation, circumstances which, if proved, establish the registrant’s rights or legitimate interests to the disputed domain name. Having regard to the Complainant’s trademark rights and the substantial publicity given to the Complainant’s mark, the words ‘Singapore flyer’ in combination are distinctive of the Complainant. Hence the Panel does not accept as plausible the Respondent’s claimed intent to use the domain name to operate a website promoting an advertising flyer business in Singapore. The Respondent offers no other basis for a finding of legitimacy.
The Complainant has established this element.
C. Registered and Used in Bad Faith
The Respondent argues that the Complaint must fail because the date of the original registration of the domain name by Mr. Sim preceded the Complainant’s acquisition of trademark rights. If that date were the relevant date for present purposes, the Complainant would indeed be in considerable difficulty because there is no evidence that the name ‘Singapore Flyer’ was publicly known prior to the Complainant’s incorporation nor that Mr. Sim had advance knowledge of the plans of those who subsequently incorporated the Complainant under that name and went on to develop the trademark.
However, the relevant date for present purposes is the date of the transfer of the domain name from Mr. Sim to the Respondent, on or about November 1, 2007, since the Respondent’s acquisition of the domain name constitutes registration; MC Enterprises v. Mark Segal (N),WIPO Case No. D2005-1270.
By that time, the Complainant had acquired common law and registered trademark rights in SINGAPORE FLYER, the construction of the observation wheel known as the Singapore Flyer had received significant publicity and the Respondent had been told by Mr. Sim about his lengthy negotiation with the Complainant. When contacted by the Complainant, the Respondent sought payment of S$67,000 for the domain name and failed to substantiate, either to the Complainant or to this Panel, his claim to have written off a debt of S$60,000 as consideration for the transfer.
This Panel concludes, on the material before it, that there was no such debt and that the Respondent acquired the domain name from his nephew in furtherance of his nephew’s plan to extract a substantial price for it from the Complainant. Hence the domain name was registered by the Respondent for the purpose of selling it to the Complainant, the owner of the trademark, for a substantial sum in excess of his out of pocket costs directly related to the domain name. Pursuant to paragraph 4(b)(i) of the Policy, this is evidence of both bad faith registration and bad faith use.
The Complainant has established this element.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, , be transferred to the Complainant.
Alan L. Limbury
Sole Panelist
Dated: March 6, 2008
Full & Egal Universal Law Academy