The Complainant is Alpha Sealing Pte.Ltd. of Singapore, Singapore, represented by Mirandah Law, Singapore.
The Respondent is Billing Department, Ilabs Private Limited of Singapore, Singapore. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with eNom, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 8, 2018. On March 8, 2018, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Name. On March 8, 2018, the Registrar transmitted by e-mail 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 March 14, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 3, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 4, 2018.
The Center appointed Karen Fong as the sole panelist in this matter on April 20, 2018. 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 maritime and shipping supplier based in Singapore whose business involves the manufacture and sale of a wide range of ship related products including butterfly seal rings, packings and gaskets for use on board crude oil, product and chemical tankers in the maritime industry in Singapore. The Complainant’s company was incorporated in 2007. The Complainant trades under the mark ALPHA SEALING.
The Complainant does not have a trade mark registration and claims to have unregistered and common law rights to the Alpha Sealing trade mark by reason of the long and extensive use of the trade mark in Singapore and Cyprus, Norway, Monaco, India and Hong Kong, China where the Complainant supplies its goods and services.
The Complainant owns and operates a website under the domain name (“the Complainant Website”) since March 2015. The Complainant Website is a single static webpage. At the top of the page, there is an image of a building with the name of the Complainant “ALPHA SEALING PTE LTD”. To the left of the name is the company’s globe logo with the words ALPHA SEALING. The webpage has information about the Complainant and images of its products. There are no links to other web pages.
The Respondent is a domain name registration and web-hosting company based on Singapore. In September 2007, the Complainant entered into an agreement with the Respondent to arrange for the registration and hosting of the Domain Name in connection with the Complainant’s business. The Complainant understood that the Domain Name would be registered by the Respondent on its behalf and the Domain Name would be in the name of the Complainant. In the “Frequently Asked Questions” section on the Respondent’s website, in response to the question: “Who owns the rights to the Domain Name”, the answer is as follows:
“Your company owns the full rights to use the Domain Name. We act as the web-hosting company only. As long as the licence is renewed on a continual basis, a business can literally own the Domain Name forever.”
The Complainant received a receipt for the payment of an invoice for registering and hosting the Domain Name in September 2007. Evidence of the annual renewal invoices and receipts from the Respondent to the Complainant from 2007 until 2016 were submitted. An invoice dated August 10, 2017 was issued by the Respondent to the Complainant for two “products” – one was for the Domain Name fee for two years from August 10, 2017 to August 9, 2019 and the other for web and e-mail hosting for one year from August 10, 2017 to August 9, 2018. The invoice was paid in full on November 20, 2017.
The Complainant had not been aware that the Domain Name was registered in the Respondent’s name without the Complainant’s authority. It is not clear from the Complaint when the Complainant became aware of this. It appears that the Domain Name was connected to an active website from at least 2011 until just shortly before August 2017 (the “Website”). The Complainant did not submit in evidence screen shots of the Website.
On December 5, 2017, the Complainant’s legal representatives wrote to the Respondent requesting the transfer of the Domain Name. It stated that the Complainant had tried on many occasions to contact the Respondent to transfer the Domain Name back to it but to no avail. No evidence of when and how many requests were made. The Respondent responded on December 21, 2017 denying any such requests and asked that the Complaint refer to the invoices sent to them. The Respondent also disabled the Website shortly after receipt of the demand letter. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is confusingly similar to the trade mark, “Alpha Sealing”, the Respondent has no rights or legitimate interests with respect to the Domain Name and that the Domain Name was registered and being used in bad faith. The Complainant requests transfer of the Domain Name. B. Respondent
The Respondent did not file a response to the Complaint. 6. Discussion and Findings 6.1 General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark 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 Domain Name was registered and being used in bad faith. 6.2. Substantive Analysis A. Identical or Confusingly Similar
The Complainant is relying on unregistered common law rights in the trade mark “Alpha Sealing” in connection with its complaint. Section 1.3 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides that to establish registered or common law trade mark rights for the purposes of the UDRP, the Complainant must show that its mark has become a distinctive identifier which consumers associate with the Complainant’s goods and services. Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint. Conclusory allegations, even if undisputed by a respondent, would not normally suffice.
The Complainant has submitted in evidence a copy of its tax assessment for the year 2017 and listings of the company in specialist business directories. The trade mark is part of the company and business name of the Complainant. It would have been helpful if the Complainant had also provided company sales and marketing figures for the past three to five years and a selection of invoices to support these figures.
Since the Complainant did not submit screen shots of the Website when it was active, the Panel reviewed archived pages of the Website on the Way Back Machine. There were 16 captures between June 18, 2009 and August 11, 2017. The Panel could not access the snapshot of the Website on 2009. The snapshot in 2011 provided details of the Complainant’s contact details and said that that the site was under construction. The snapshots in 2013 through March 2016 were identical. In October 2016, the snapshot changed. The webpage showed at the top of the page the ALPHA SEALING trade mark with a globe logo, an image of two ships in the Singapore dock and details about the company. The text is identical to that on the Complainant Website. In February 2017, the snapshot shows the same image of the Complainant’s company name and brand as it appears on the Complainant Website. It also has the same images of the products as on the Complainant Website. The main difference is the text format. The snapshot in April 2017 is identical to the Complainant Website. This remained the case in May 2017 until the final capture in August 2017 which says that the Domain Name has expired.
Given the size of Singapore and the specialist nature of the products and services in the maritime industry, the Complainant has just about scraped through with sufficient evidence in this instance to show acquired distinctiveness. The circumstances of the registration and refusal by the Respondent to transfer the Domain Name also support the Complainant’s assertion that its mark has achieved significance as a source identifier. The Panel finds that the Complainant has established unregistered rights in the ALPHA SEALING trade mark for purposes of the Policy.
The threshold test for confusing similarity involves the comparison between the trade mark and the domain name itself to determine whether the domain name is confusingly similar to the trade mark. The trade mark would generally be recognizable within the domain name. In this case the Domain Name contains the Complainant’s trade mark ALPHA SEALING in its entirety.
For the purposes of assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) as it is viewed as a standard registration requirement.
The Panel finds that the Domain Name identical or confusingly similar to a trade mark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers, or to tarnish the trade mark or service mark at issue.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of WIPO Overview 3.0 that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some allegations of evidence of relevant right or legitimate interest, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.
The Complainant contends that its agreement with the Respondent was that in return for fees, the Respondent would procure the registration of the Domain Name and host the Website on its behalf. The Domain Name would belong to the Complainant. The registration of the Domain Name was done on behalf of the Complainant which is generally the case with domain name registration and web hosting companies. This agreement between the parties does not grant the Respondent rights or legitimate interests to the Domain Name.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. C. Registered and Used in Bad Faith
To succeed under the Policy, the Complainant must show that the Domain Name has been both registered and used in bad faith. It is a double requirement. The circumstances showing bad faith to be present under paragraph 4(b) of the Policy are just examples and a complainant is not limited by them.
Based on the available record, the Domain Name was clearly registered in bad faith as the Respondent should have registered the Domain Name in the name of its client to whom it was offering domain name registration and web hosting services. There is no reason why this was not done.
The Domain Name is also used in bad faith. All content on the Website related to the Complainant. The Respondent’s fees in connection with the services it provided over the 10 year period had been fully paid by the Complainant. The Respondent’s failure to register the Domain Name in the name of the Complainant and its continual refusal to transfer the Domain Name is bad faith use of the Domain Name under paragraph 4(b) 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 Domain Name be transferred to the Complainant.
Karen Fong
Sole Panelist
Date: May 14, 2018
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