The Complainant is Singapore Pools (Private) Limited of Singapore, represented by Rajah & Tann Singapore LLP, Singapore.
The Respondent is WhoIs Agent, Domain Protection Services, Inc. of Denver, Colorado, United States of America ("United States") / Geisha Rocky of Jakarta, Indonesia. 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with N, Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 5, 2017. On December 5, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 6, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 7, 2017 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 December 12, 2017.
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 December 20, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 9, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 10, 2018.
The Center appointed Jane Seager as the sole panelist in this matter on January 26, 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 Singapore Pools (Private) Limited. The Complainant was established in 1968 under its present corporate name, and is the only gaming operator that is legally allowed to offer lotteries and sports betting in Singapore. The Complainant is a wholly owned subsidiary of the Singapore Totalisator Board, a statutory board which is established under the Singapore Totalisator Board Act.
The Complainant's official website is available at "www.m.sg". It registered the corresponding domain name in 1998.
The Complainant has provided evidence that it is the owner of at least four trade marks in Singapore, each being a device mark in stylized form comprising a letter "s" with above it the word "Singapore" and below it the word "pools" (hereinafter referred to as the "SINGAPORE POOLS Trade Marks").
The Domain Name was registered on May 3, 2016 and previously pointed to a website offering gambling services, although such services were restricted to users outside of Singapore (when customers from within Singapore tried to sign up to such services, a message appeared saying that they were not available, while customers from outside Singapore were redirected to a page inviting them to create an account).
On November 18, 2017, the Complainant sent a cease-and-desist letter to the Respondent. The Respondent did not reply to the Complainant's communications, although the Domain Name then started to redirect to the Complainant's website. 5. Parties' Contentions A. Complainant
The Complainant asserts that the Domain Name is identical to its SINGAPORE POOLS Trade Marks, which contain the textual component "Singapore Pools" and predate the registration of the Domain Name. The Complainant argues that it has been widely accepted in domain name disputes that a domain name will still be considered identical to or confusingly similar with a registered trade mark comprising a device, even if the device cannot be reproduced in the domain name.
The Complainant points out that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the mere registration of a domain name does not establish rights or legitimate interests. There is no relation between the Complainant and the Respondent, the Respondent is not a licensee of the Complainant and has not obtained any authorisation from the Complainant. The Complainant submits that there is no evidence that the Respondent is using the Domain Name in connection with a bona fide offering of goods and/or services. In fact the Respondent is purporting to use the Domain Name to provide goods or services that are illegal as it is an offence under sections 10 and 11 of the Remote Gambling Act of Singapore for a person to provide remote gambling services (regardless of whether the services are Singapore-based or are based overseas with a Singapore-customer link). The Complainant argues that the fact that the website associated with the Domain Name purports to provide illegal services itself establishes that the Respondent has no rights or any legitimate interests in respect of the Domain Name, as it has not used the Domain Name for a bona fide offering of goods and/or services. The Complainant further argues that the Respondent took steps to avoid detection by the Complainant by restricting the illegal products and services to Internet users outside Singapore by using a geolocation blocker.
The Complainant asserts that the Respondent has registered and used the Domain Name in bad faith and in full knowledge of the Complainant's rights. The fact that the Respondent used a privacy service to register the Domain Name to conceal its identity evidences its intention to avoid enforcement of the Complainant's legitimate rights. The Complainant further states that the Respondent used false contact information, which is in breach of its obligations under Clause 2(1) of the registration agreement relating to the Domain Name, and also constitutes bad faith. The Complainant submits that it is the only authorized operator that is legally allowed to offer lotteries and sport betting in Singapore and that its trade marks are well-known to the public at large and have acquired substantial reputation and goodwill. The Complainant contends that there is clear evidence that the Respondent is well aware of and is very familiar with its services given that, upon receipt of the Complainant's cease and desist letter, the Respondent immediately redirected the Domain Name to the Complainant's website. The Complainant further states that the Respondent, being aware of the Complainant's prior rights in the term "Singapore Pools", blatantly registered the Domain Name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's trade mark. In the Complainant's view, the fact that the website associated with the Domain Name previously resolved to a website offering illegal services constitutes bad faith registration and use against the public interest. In addition, the Complainant contends that the subsequent redirection to its own website is also evidence of bad faith, as the Respondent's continued control of the Domain Name represents a threat to the Complainant. The Complainant further argues that the Respondent's failure to respond to its cease-and-desist letter indicates a blatant disregard for the Complainant's rights. Finally, in the Complainant's opinion, the Respondent's use of the Domain Name amounts to passing off and infringement of the SINGAPORE POOLS Trade Marks. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that to obtain the transfer of the Domain Name, the Complainant must prove each of the following three elements:
(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 has been registered and is being used in bad faith.
The standard of proof is on the balance of probabilities (see Nintendo of America Inc. v. Fernando Sascha Gutierrez,WIPO Case No. D2009-0434).
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Furthermore, paragraphs 10(b) and 10(d) of the Rules provide that the Panel shall ensure that the parties are treated with equality and shall determine the admissibility, relevance, materiality and weight of the evidence.
In addition, paragraph 14(b) of the Rules further provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, the Rules, the Panel shall draw such inferences therefrom as it considers appropriate.
The Panel notes that the Respondent has failed to respond to the Complaint. The Respondent's failure to respond, however, does not automatically result in a decision in favor of the Complainant, although the Panel is entitled to draw appropriate inferences therefrom, in accordance with paragraph 14(b) of the Rules. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0").
Taking the aforementioned provisions into consideration, the Panel finds as follows: A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Panel to first consider whether the Complainant has established relevant trade mark rights. In the Panel's opinion, the Complainant has provided adequate evidence that it has rights in the SINGAPORE POOLS Trade Marks.
The Panel is also required under paragraph 4(a)(i) of the Policy to examine whether the Domain Name is identical or confusingly similar to the Complainant's trade mark. The Panel agrees with the Complainant that the most prominent element of the SINGAPORE POOLS Trade Marks are the words "SINGAPORE POOLS", which are wholly incorporated in the Domain Name. Prior panels deciding under the Policy have held that, when a domain name wholly incorporates a complainant's trade mark, it is sufficient to establish identity or confusing similarity. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525.
Furthermore, it is widely accepted that the ".co" country-code Top-Level Domain ("ccTLD") is generally irrelevant for the purpose of assessing identity or confusing similarity between a trade mark and a domain name.
The Panel therefore finds that the Domain Name is identical to the Complainant's trade mark.
Accordingly, the Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a list of non-exhaustive circumstances that may suggest that a respondent has rights or legitimate interests in a domain name, including:
(i) before any notice to the respondent 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 (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent 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.
A complainant is required to establish a prima facie case that a respondent does not have rights or legitimate interests in a disputed domain name. Once such prima facie case is made, the burden of proof shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name in question. If, however, the respondent fails to come forward with such relevant evidence, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See section 2.1 of the WIPO Overview 3.0.
The Panel has considered the evidence put forward by the Complainant and considers that the Complainant has made a prima facie showing of the Respondent's lack of rights or legitimate interests in the Domain Name and that, as a result of its default, the Respondent has failed to rebut such a showing.
The Complainant has asserted that it has not authorized the Respondent to make any use of its trade mark and the Respondent cannot be considered to be making a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy referred to above, given that, before the Complainant's cease and desist letter was sent, the Domain Name was resolving to a website offering similar gambling services to the Complainant. The Panel finds that such use of the Domain Name is not bona fide because it deliberately sets out to confuse Internet users as to the source of the services offered. See Microsoft Corporation v. M aka Tarek Ahmed,WIPO Case No. D2000-0548 ("by using a domain name and establishing a website deliberately designed to confuse Internet users and consumers regarding the identity of the seller of the goods and services, Respondent has not undertaken a bona fide or good faith offering of the goods and services"). The Respondent's subsequent use of the Domain Name to redirect to the Complainant's website cannot be classed as bona fide either, and in this regard the Panel agrees with the Complainant that the Respondent's continued control over the redirection of the Domain name constitutes an ongoing threat to the Complainant.
There is no evidence that the Respondent is "commonly known" by the Domain Name or a similar name, in accordance with paragraph 4(c)(ii) of the Policy, given the notoriety of the SINGAPORE POOLS Trade Marks.
The Respondent's use of the Domain Name, as described above, cannot be said to be a legitimate non-commercial or fair use of the Domain Name within the meaning of paragraph 4(c)(iii) of the Policy. Based on the evidence put forward by the Complainant, the Panel finds that the Respondent's use of the Domain Name clearly demonstrates its intent to unduly profit from the Complainant's goodwill, in particular by offering similar gambling services to the Complainant.
The Panel is also of the view that the Respondent's failure to submit a response is, in the circumstances of this case, also evidence of the Respondent's lack of rights or legitimate interests in the Domain Name. See Pomellato S.p.A v. Richard Tonetti,WIPO Case No. D2000-0493 ("non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one's own rights").
The Panel therefore finds that the Respondent has no rights or legitimate interests in the Domain Name.
Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, including:
(i) circumstances indicating that the respondent has registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the respondent has registered the disputed domain name in order to prevent the complainant from reflecting the complainant's trade mark or service 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed 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.
The Complainant has trade mark rights in the term SINGAPORE POOLS that significantly predate the date of registration of the Domain Name. The Complainant has acquired substantial reputation and goodwill, being Singapore's only legalized sports betting and lotteries operator. Given the nature of the Domain Name, which identically reproduces the most prominent element of the Complainant's SINGAPORE POOLS Trade Marks, in conjunction with the nature of the different websites to which it resolved prior to and after the Complainant's cease-and-desist letter, the Panel considers that the Respondent clearly had the Complainant in mind at the time of the registration of the Domain Name and deliberately registered it to take advantage of the Complainant's rights. The Panel therefore finds that the Respondent registered the Domain Name in bad faith.
The Panel further finds that the Respondent's previous use of the Domain Name to resolve to a website providing gambling services that gave the false impression that it was operated by the Complainant when in fact it was not constitutes bad faith within the meaning of paragraph 4(b)(iv) of the Policy, as the Respondent was intentionally attempting to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website or services provided therein. The Respondent's subsequent redirection of the Domain Name to the Complainant's website after the Respondent was put on notice of the dispute also clearly indicates the Respondent's attempt to avoid detection, and thus its bad faith.
The Panel is of the view that the Respondent's use of both a privacy protection service and false WhoIs details are further evidence of bad faith. Finally, the Panel also draws adverse inferences from the Respondent's failure to respond to the Complainant's cease-and-desist letter and to take part in the present proceedings.
The Panel therefore finds that the Domain Name was registered and is being used in bad faith.
Accordingly, the Complainant has satisfied 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.
Jane Seager
Sole Panelist
Date: February 9, 2018
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