The Complainant is Singapore Pools (Private) Limited of Singapore, represented by Rajah & Tann Singapore LLP, Singapore.
The Respondent is Privacy Protection Service INC d/b/a PrivacyP of Nobby Beach, Queensland, Australia / Komunitas SGP Indonesia of Singapore. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 3, 2016. On October 3, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 4, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 5, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 10, 2016.
The Center verified that the Complaint together with the amended 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 October 11, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 31, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 2, 2016.
The Center appointed Francine Tan as the sole panelist in this matter on November 21, 2016. 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 a wholly-owned subsidiary of the Singapore Totalisator Board, a Singapore statutory board. It is the only gaming operator that is legally allowed to offer lottery and sports betting services in Singapore. It was established in 1968.
The Complainant owns several trade mark registrations in Singapore for the SINGAPORE POOLS & device mark, namely TM Nos. T9308803Z, T9308804H, T9609016G and T9609017E, the earliest registration dating back to 1993.
The Complainant owns the domain name from which it operates its official website. The domain name was registered on March 12, 1998. The Complainant also acquired several other domain name registrations following favourable decisions issued in earlier UDRP proceedings, including: , , and .
The disputed domain name was registered on October 11, 2014.
A cease and desist letter was sent to the Respondent on August 28, 2016 via the website privacyp, and another was sent to the host of the website to which the disputed domain name resolved. The Complainant was informed by email on August 31, 2016 and September 10, 2016 that the underlying domain name registrant had been informed. 5. Parties’ Contentions A. Complainant
1. The disputed domain name is identical to the SINGAPORE POOLS trade mark in which the Complainant has rights. The Complainant’s SINGAPORE POOLS trade mark is well known in Singapore, having been in long use since 1968. Further, registrations of the SINGAPORE POOLS & device mark were registered in 1993 and 1996, long before the registration of the disputed domain name. The words “Singapore Pools” make up the disputed domain name in its entirety. It is trite that the generic Top-Level Domain (“gTLD”) “.info” may be disregarded when considering the issue of identity between a disputed domain name and the complainant’s trade mark.
2. The Respondent has no rights or legitimate interests in the disputed domain name, and this is supported by the following circumstances:
(i) there is no relationship between the Complainant and the Respondent – the latter is not a licensee and it did not obtain any authorization from the Complainant to use the SINGAPORE POOLS mark and to register it in a domain name; and
(ii) there is no evidence of the Respondent’s use of or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
3. The disputed domain name was registered and is being used in bad faith. Bad faith is demonstrated by these facts:
(a) The use of the privacy service by the Respondent is evidence of its intention to evade being located by the Complainant and indicates that the Respondent has “something to hide”. The use of a private registration service, especially for the registration of a domain name that contains a protected trade mark, is already in itself an indication of bad faith.
(b) The Respondent gave false contact information when it registered the disputed domain name, in breach of its obligations under Clause 2(1) of the Registration Agreement. The address it gave was the Complainant’s registered business address, and the telephone number given was false and does not exist in Singapore.
(c) The Respondent is clearly familiar with the Complainant and its SINGAPORE POOLS marks. The content of the Respondent’s website to which the disputed domain name resolves shows that the Respondent is well clued-in on lotteries and gaming. It features the well-known local terms “Singapore 4D” and “Singapore Toto”. The Respondent used on its website, without the Complainant’s authorization, signs that are substantially similar to the Complainant’s registered SINGAPORE POOLS and device trade mark. Further, it made available on the website a video which is proprietary material of the Complainant, featuring the Complainant’s “Lottery Draw Process” and the Complainant’s SINGAPORE POOLS trade marks.
(d) The Respondent did not respond to the Complainant’s cease-and-desist letter. However, it made minor changes to certain content on the website but continued to infringe the Complainant’s intellectual property rights.
The above circumstances show that the Respondent knew of the Complainant’s prior rights in the SINGAPORE POOLS trade mark and made an effort to be seen as being associated with the Complainant. There can be no actual or contemplated good faith use by the Respondent of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant is obliged to prove each of these elements before it can obtain an order in its favour:
“(i) [the Respondent’s] domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) [the Respondent has] no rights or legitimate interests in respect of the domain name; and
(iii) [the Respondent’s] domain name has been registered and is being used in bad faith.” A. Identical or Confusingly Similar
The Complainant has established it has rights in the trade mark SINGAPORE POOLS, as a result of its long, continued use and trademark registrations. The only difference between the disputed domain name and the SINGAPORE POOLS trade mark lies in the addition of the gTLD “.info”. It is indeed a well-established principle that gTLDs such as “.com” and “.org” are to be disregarded when considering whether a disputed domain name is identical or confusingly similar to a complainant’s trade mark.
The first element of paragraph 4(a) of the Policy has therefore been established. B. Rights or Legitimate Interests
The Panel agrees that the SINGAPORE POOLS mark is well known in Singapore and it would indeed be very difficult for the Respondent to disclaim knowledge of the Complainant and/or of its trade mark where it has clearly referenced and reproduced proprietary material of the Complainant on its website. The Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s assertions and in light of the repute of the SINGAPORE POOLS trade mark, it would by no means be easy for the Respondent to be able to explain its choice of the disputed domain name and to provide clear and persuasive evidence of a right or legitimate interest therein. In any case, the Respondent has not filed a response in the proceeding.
The second element of paragraph 4(a) of the Policy has therefore been established. C. Registered and Used in Bad Faith
The primary objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trade mark of another. 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 or 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) circumstances indicating that the respondent 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) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt 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”.
The disputed domain name was registered a very substantial period after the Complainant had started the use of the SINGAPORE POOLS marks. The Panel has already concluded that the Respondent lacks rights or legitimate interests in the disputed domain name. It also draws an adverse inference from the fact that (i) the Respondent has sought to conceal its identity and to avoid being located, (ii) its use of copyrighted material belonging to the Complainant, and (iii) the attempt to pass off itself as associated with the Complainant or authorized or endorsed by the Complainant. The Panel concludes that the circumstances in this case fall within those described in paragraph 4(b)(iv) of the Policy.
The third element of paragraph 4(a) of the Policy has therefore been established. 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.
Francine Tan
Sole Panelist
Date: November 26, 2016
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