The Complainant is Yayasan Putera Sampoerna (Putera Sampoerna Foundation) of Jakarta, Indonesia, represented by IP Mirror Pte Ltd, Singapore.
The Respondent is Nvmporn Inc / keepwalking289 of Bangkok, Thailand. 2. The Domain Name and Registrar
The disputed domain name is registered with Dynadot, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 13, 2015. On January 13, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 14, 2015, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 15, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 4, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 5, 2015.
The Center appointed C. K. Kwong as the sole panelist in this matter on February 25, 2015. 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 of the trademark consisting of or comprising the words SAHABAT WANITA which was registered on September 15, 2011, in respect of certain goods/services under Classes 41 (see Annex 7 to the Complaint).
The uncontradicted evidence produced by the Complainant shows that the registration of its aforesaid SAHABAT WANITA mark occurred 3 years before the registration of the disputed domain name on September 22, 2014.
Other than the particulars shown on the WhoIs database and the website to which the disputed domain name resolves, there is no evidence in the case file concerning the background of the Respondent and its business. 5. Parties’ Contentions A. Complainant
The Complainant has made the following contentions:
The Complainant has rights in the trademark SAHABAT WANITA. The Complainant has also established the “Sahabat Wanita” foundation in Indonesia since January 7, 2010, which promotes the social welfare of those living in rural communities by improving healthcare and skill development, empowering women in rural areas by providing vocational trainings, promoting and protecting the rights of women and ensuring gender equality (see Annexes 5 and 6 to the Complaint).
The disputed domain name is virtually identical to the Complainant’s SAHABAT WANITA mark.
The Respondent is not commonly known by the disputed domain name and they do not own any SAHABAT WANITA trademark.
The Complainant’s SAHABAT WANITA trademark is distinctive, famous and popular. Despite the prior use and registration of the mark SAHABAT WANITA by the Complainant, the Respondent has chosen to take advantage of the same by registering the disputed domain name embodying the Complainant’s trademark SAHABAT WANITA which is well-known as a result of extensive and long term use in relation to a recognized social cause. Tremendous costs were incurred by the Complainant in promoting their work and services by reference to the trademark SAHABAT WANITA which enjoys a good reputation and recognition.
The Respondent has no rights or legitimate interests in the disputed domain name. The disputed domain name resolves to a website loaded with pornographic contents (see Annex 8 to the Complaint).
Such activity has caused tremendous damage to the reputation of the Complainant and its associated trade name and trademark. By the use of the disputed domain name, the Respondent has intentionally attempted to create confusion. It has also prevented the Complainant from registering and using the disputed domain name.
The Respondent has registered the disputed domain name primarily for the purpose of disrupting the business and work of the Complainant which were to help women, enrich their lives and promote education. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Notice of Proceedings
The contact particulars of the Respondent and the disputed domain name were fully set out in the WhoIs search results provided in Annex 2 to the Complaint and the WhoIs search results updated to January 15, 2015.
Such contact details also concur with those provided by the Registrar to the Center on January 14, 2015.
On January 15, 2015, the Center forwarded the Notification of Complaint and Commencement of Administrative Proceeding to the Respondent in accordance with the contact details above by courier - through the Written Notice – and email with copies to the Registrar.
The Panel finds that as long as the Complainant or the Center as the case may be has communicated with the Respondent using the contact information which the Respondent has chosen to provide to the Registrar as reflected in the above contact details, their respective obligations of such communications will be discharged and the Respondent is bound accordingly.
The Panel is satisfied that the Center has discharged its responsibility under paragraph 2(a) of the Rules to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint and that the failure of the Respondent to furnish a reply is not due to any omission or inadequate communication by the Center. B. The Three Elements
In rendering its decision, the Panel must adjudicate the dispute in accordance with paragraph 15(a) of the Rules which provides that, “[t]he Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 14(b) of the Rules further provides that, “[i]f a Party, in the absence of exceptional circumstances, does not comply with any provisions of, or requirement under these Rules or any requests from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate”. Paragraph 5(e) of the Rules further provides that, “[i]f a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint”.
The failure of the Respondent to respond does not automatically result in a favourable decision to the Complainant, which is specifically required under paragraph 4(a) of the Policy to establish each of the three elements as provided therein. See The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064 and Berlitz Investment Corp. v. Stefan Tinculescu,WIPO Case No. D2003-0465.
The said three elements are considered below. 1. Identical or Confusingly Similar
On the evidence available before the Panel, it has no hesitation in finding that the Complainant has rights in the trademark SAHABAT WANITA by reason of its trademark registration as recited in Section 4 above.
Furthermore, the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s trademark SAHABAT WANITA.
The distinctive feature of the disputed domain is SAHABAT WANITA, being the Complainant’s trademark in entirety. It is well established practice to disregard the top-level part of the domain name like “.com” and “.org”, when assessing whether a domain name is identical or confusingly similar to the mark in issue. Société Anonyme des Eaux Minerales d’Evian and Société des Eaux de Volvic v. Beroca Holdings B.V.I. Limited,WIPO Case No. D2008-0416. After removing the generic Top-Level Domain, only the words SAHABAT WANITA are left in entirety.
Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy is established. 2. Rights or Legitimate Interests
The Complainant needs to establish a prima facie case showing that the Respondent has no rights or legitimate interests in respect of the disputed domain name. See Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455. Once such prima facie case is made, the burden will shift to the Respondent to prove that it has rights or legitimate interests in the disputed domain name.
In the present case, the Complainant has asserted registration and use of the trademark SAHABAT WANITA well before the Respondent’s registration of the disputed domain name on September 22, 2014. It is clear from the pornographic contents of the website to which the disputed domain name resolves, that the Complainant would not have licensed or authorized the Respondent to register or use the disputed domain name for such operation, being diametrically opposite to the social purpose of the Complainant’s enterprise, being to promote the social welfare and protect the rights of women.
There is no explanation on the record as to why it was necessary for the Respondent to adopt the words SAHABAT WANITA in its domain name.
There is also no evidence available to demonstrate any legitimate noncommercial or fair use of the disputed domain name by the Respondent.
In light of the Respondent’s default, and the unrebutted prima facie case of the Complainant, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name. 3. Registered and Used in Bad Faith
The printout of the website to which the disputed domain name resolves as shown in Annex 8 to the Complaint shows that it is loaded with pornographic contents. Due to language constraint, the Panel is unable to tell whether it is a free or paid website. Irrespective of that, according to previous decisions by earlier UDRP panels, such activity can by itself constitute evidence of bad faith. ESPN, Inc. v. XC2,WIPO Case No. D2005-0444 and V&S Vin & Sprit AB v. VCN – Whois Protection Service Panama,WIPO Case No. D2010-0715.
The choice of the words “Sahabat Wanita” in their entirety for the disputed domain name which is identical to the Complainant’s trademark without any explanation and the use of the disputed domain name for a Thai language website with pornographic content is for this Panel too much of a coincidence and demonstrates the Respondent’s knowledge of the Complainant and its trademark at the time of registration and use of the disputed domain name.
The Panel finds that the Respondent has registered the disputed domain name and allowed the operator of the website to which the disputed domain name resolves, to use it primarily for offering goods or services to Internet users in a way which may disrupt the business of the Complainant. On the basis of the evidence produced, the Panel finds that this is a further indicator of bad faith.
Moreover, by using, whether directly or indirectly, authorizing or permitting the use of the disputed domain name by the operator of the said website in the manner described above, the Respondent intentionally attempted to attract, presumably for commercial gain, Internet users to go to the said website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or of the products or services on the website. The Panel accordingly finds that paragraph 4(b)(iv) of the Policy has been successfully invoked by the Complainant.
Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith under paragraph 4(a)(iii) of the Policy. 7. Decision
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 be transferred to the Complainant.
C. K. Kwong
Sole Panelist
Date: March 11, 2015
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