The Complainant is Speakasia Online Pte. Ltd.of Singapore, Singapore, represented by A. K. Singh & Co., India.
The Respondent is Speak Asia / Dikosta Dikson of Singapore, Singapore.
The disputed domain name <onlinespeakasia.net> is registered with Wild West Domains, LLC. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on August 21, 2012. On August 21, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 22, 2012, 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 August 23, 2012 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 August 28, 2012.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 30, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 19, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 21, 2012.
The Center appointed Loke-Khoon Tan as the sole panelist in this matter on October 11, 2012. 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.
The Complainant is Speakasia Online Pte. Ltd., a company incorporated and registered in Singapore. It was incorporated on December 15, 2006.
The Respondent is Speak Asia / Dikosta Dikson. Little information is known about the Respondent. A Response was not filed.
The disputed domain name was registered on May 6, 2012.
The Complainant makes the following submissions:
The Complainant was the first to conceive of, use and promote the name “Speakasia” in respect of an online survey group in the Asian sub-continent. It has over 1.5 million panelists registered with it and has a presence in Singapore, Malaysia, Indonesia, Viet Nam and India, where its trade marks are well known. Through events and marketing activities, the Complainant has generated goodwill and reputation internationally in the name “Speakasia”. It has pending applications for registration of the trade mark SPEAKASIA in India and other countries.
The Complainant is the owner of the domain name <speakasiaonline.com>, the official website of the Complainant. The Complainant’s domain name was registered in 2010, prior to the registration of the disputed domain name in 2012. The Complainant has extensively and prominently used the mark SPEAKASIAONLINE, as well as its domain name, in marketing and advertising efforts.
The disputed domain name <onlinespeakasia.net> is confusingly similar to the Complainant’s SPEAKASIA mark as it incorporates the Complainant’s mark in its entirety. Incorporation of a trade mark in its entirety in the domain name is sufficient to establish that the domain name is identical or confusingly similar (Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505). The disputed domain name is also phonetically, visually and conceptually confusingly similar to that of the Complainant.
First, the Respondent was not offering, bona fide, any goods or services before the dispute. The website at the disputed domain name was merely claiming to be a portal or Internet forum of the Complainant and/or to provide information about the Complainant. The Complainant has given no authorisation or consent for the Respondent to do so.
Secondly, the Respondent is not commonly known by the disputed domain name.
Thirdly, the Respondent has not made legitimate noncommercial or fair use of the disputed domain name. The disputed domain name was adopted by the Respondent for commercial gain, to deceive Internet users into believing that the Respondent’s website is that of the Complainant, to divert business and tarnish the repute and goodwill of the Complainant.
The Respondent, being aware of the goodwill and repute of the Complainant’s website, subsequently and mala fide, registered a domain name incorporating the Complainant’s marks. The disputed domain name copies the content, logo and color scheme of the Complainant’s website and public notices given by the Complainant. The Respondent’s website also publishes the Complainant’s contact details and provides information as to internal matters of the Complainant, such as legal documents at the disputed domain name. It attempts to project the image that the website is that of the Complainant.
The Respondent deliberately attempted to attract, for commercial gain, Internet users to its online site by creating confusion with the Complainant’s similar domain name and mark. The Respondent’s website offers the option for people to register as a panelist for a fee, which is much lower than the registration fee prescribed by the Complainant. Through its fake website, the Respondent also attempts to obtain advertising assignments from companies who seek to advertise their products through the Complainant.
The Respondent did not reply to the Complainant’s contentions.
To obtain relief, the Complainant must prove each of the following elements under paragraph 4(a) of the Policy:
i. The disputed domain name is identical or confusingly similar to the trade mark or service mark in which the Complainant has rights;
ii. The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
iii. The disputed domain name has been registered and is being used in bad faith.
The standard of proof is the civil standard of “preponderance of evidence”, or “balance of probabilities”. The Complainant must establish that a claimed fact is more likely than not to be true (Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847).
In the present case, the Respondent did not file a response and there are no exceptional circumstances for the failure of the Respondent to submit a response. Therefore, the Panel infers that the Respondent does not deny the facts asserted and the conclusions which the Complaint asserts can be drawn from these facts (Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441). Asserted facts that are not unreasonable will be taken as true and the Respondent will be subject to the inferences that flow naturally from the information provided by the Complainant (Allianz, Compañía de Seguros y Reaseguros S.A. v. John Michael, WIPO Case No. D2009-0942; Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441).
i. Complainant's trade mark rights
The Complainant does not have any registered trade mark rights but it has applied for trade mark registration in India and other countries. It is noted that evidence of such trade mark applications were not included in the Complaint. As the Complainant did not provide the Panel with evidence of trade mark registration, the first issue is whether the Complainant has common law or unregistered trade mark rights in the trade mark.
For the purposes of the UDRP, the Complainant must show that the name has become a distinctive identifier associated with the Complainant or its goods or services (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, “WIPO Overview 2.0”, paragraph 1.7). The Panel notes that authorities show that relevant factors include length and amount of sales, nature and extent of advertising, consumer surveys and media recognition under the trade mark (See, e.g. Fairview Commercial Lending, Inc. v. Aleksandra Pesalj, WIPO Case No. D2007-0123).
The Panel finds that the Complainant possesses unregistered trade mark rights in the term “SpeakAsia”, and potentially variations, such as “SpeakAsia Online”. The Panel notes first, that the Complainant has provided evidence of public and media recognition and marketing campaigns showing use of the trade mark in India. It has hosted a large scale consumer fair in India, in which over 10,000 “Speakasians” and the chairperson of Speakasia Online were present. Advertisements for Speakasia’s events and services also feature its logo and domain name. There is little evidence as to the length of use of the trade mark but the Panel notes that most of the dated evidence provided is dated 2011 which is prior to the registration of the disputed domain name. The timing of trade mark rights may also be considered in determining the issue of bad faith registration on the part of the Respondent (See, e.g. Reckitt Benckiser Plc v. Eunsook Wi, WIPO Case No. D2009-0239).
Secondly, the use by the Respondent of the Complainant’s mark on its website confirms to the Panel the reputation and goodwill of the Complainant amongst consumers, of which the Respondent was certainly aware when he registered the disputed domain name (see Imperial College v. Christophe Dessimoz, WIPO Case No. D2004-0322).
ii. Confusing similarity between the disputed domain name and the Complainant's trade mark rights
The Panel finds that the disputed domain name is confusingly similar to the Complainant's common law trade mark. The disputed domain name <onlinespeakasia.net> includes the Complainant's common law trade mark, SPEAKASIA, in its entirety. That alone is sufficient under the circumstances to establish confusing similarity (National Association of Realtors v. John Fothergill, WIPO Case No. D2010-1284; Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc., WIPO Case No. D2010-1141). Mere addition of the descriptive word “online”, which describes an aspect of the Complainant's business, does not detract from the dominant portion of the domain name (here, “speakasia”) nor vitiate the confusing similarity between the trade mark and the disputed domain name (Office Holdings Limited v. Hocu To d.o.o. and Office Shoes d.o.o., WIPO Case No. D2009-1277; Orbital Sciences Corporation. v. Finseth International, WIPO Case No. D2007-1482). Moreover there is striking similarity between the disputed domain name <onlinespeakasia.net> and the Complainant’s domain name <speakasiaonline.com>.
Accordingly, the first element of the Policy is satisfied.
Secondly, the Complainant must establish under paragraph 4(a)(ii) of the Policy that the Respondent has no rights or legitimate interests in the disputed domain name. Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances through which the Respondent may demonstrate its rights and interests. These include:
(i) (Demonstrable preparations to) use of the disputed domain name in connection with a bona fide offering of goods or services prior to the dispute;
(ii) Evidence that the Respondent has been commonly known by the disputed domain name; and
(iii) Legitimate noncommercial or fair use of the disputed domain name, without intent to misleadingly divert consumers or to tarnish the mark at issue.
As it is difficult to prove a negative, the Complainant bears the burden of showing a prima facie case (see, e.g. Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455). If the Respondent fails to respond and satisfy the burden of rebuttal, the Complainant will typically be deemed to have satisfied the Policy paragraph 4(a)(ii) requirement (see, e.g., De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005).
The Panel finds that the Complainant has made out a prima facie case under Policy, paragraph 4(a)(ii). The Panel is persuaded by the following, non-disputed, circumstances brought forward by the Complainant:
(i) There was no bona fide offering of goods or services. The Respondent was offering services under the disputed domain name through purporting to be, or authorised by, the Complainant. The Complainant has no connection with the Respondent and has given no authorization for the Respondent to use the disputed domain name or any other domain name. The Respondent was not a licensee, agent nor authorized user of the Complainant's mark.
(ii) There is no indication that the Respondent is commonly known by the disputed domain name.
(iii) There was no legitimate noncommercial or fair use of the disputed domain name. The Panel determines that the disputed domain name was selected solely for the purpose of falsely representing to Internet users that the Respondent is connected with or authorized by the Complainant in order to profit from its reputation and goodwill. The Respondent’s site mirrors the look and content of that of the Complainant to deceive users and divert business to the Respondent.
Use of a domain name is not bona fide if the name “serves as a “bait” to attract customers to Respondent’s website, rather than merely as a descriptor of the Respondent's products” (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455, citing Adobe Systems Incorporated v. Domains OZ, WIPO Case No. D2000-0057).
The Panel concludes that the Respondent does not have any rights or legitimate interests in the disputed domain name.
The third element that the Complainant must establish under paragraph 4(a)(iii) of the Policy is that the disputed domain was registered and is being used by the Respondent in bad faith.
Paragraph 4(b) of the Policy details a list of non-exhaustive circumstances that evidence bad faith. These circumstances include one in which the Respondent, by using the domain name, has intentionally attempted 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 Respondent’s site (paragraph 4(b)(iv), Policy).
The Panel finds that the Respondent registered and used the disputed domain name in bad faith.
The Respondent registered the disputed domain name in 2012, about two years after registration of the Complainant’s website. It purports to be the Complainant by providing the name and address of the Complainant as the name and address of the registrant. Where the Respondent provides a fraudulent address, the Panel can make reasonable inferences of bad faith (Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393).
The Panel is of the opinion that the Respondent intended to create confusion as to the source, affiliation or endorsement of the Respondent's website by purporting to be, or authorised by, the Complainant. The Respondent’s site blatantly copies the content, layout, logo and color scheme from the Complainant’s site. The disputed domain name incorporates in full the two elements of the Complainant’s domain name, “speakasia” and “online”, reversing only the sequential order of the two terms.
The Respondent intended to capitalize on user confusion for commercial gain. The Respondent’s website offers registration of members of the public as panelists, for a fee that is lower than the registration fee prescribed by the Complainant’s official website. Further, by projecting itself as the Complainant, or at least authorised by the Complainant, the Respondent seeks to obtain advertisement assignments thereby likely gaining unlawful money from companies who seek to advertise their products through the Complainant.
It is to be noted, the fact that the Respondent has chosen not to submit a Response is particularly relevant to the issue of whether the Respondent has registered and is using the disputed domain name in bad faith (Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441).
Accordingly, the Panel finds that the Respondent has knowingly incorporated the Complainant’s trade mark to profit from user confusion as to the source, sponsorship, affiliation or endorsement of the Respondent’s website with intent for commercial gain.
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 <onlinespeakasia.net> be transferred to the Complainant.
Loke-Khoon Tan
Sole Panelist
Dated: October 25, 2012