The Complainant is Singapore Pools (Private) Limited of Singapore, represented by Rajah & Tann Singapore LLP, Singapore.
The Respondent is Le Thi Xuan of Ho Chi Minh City, Viet Nam.
The disputed domain name <sgpoolbet.com> (the “Disputed Domain Name”) is registered with Web Commerce Communications Limited dba WebNic.cc (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 13, 2017. On March 13, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 14, 2017, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on March 24, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 13, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 18, 2017.
The Center appointed John Swinson as the sole panelist in this matter on April 26, 2017. 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 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 operates its official website at “www.singaporepools.com.sg” (the “Complainant’s Website”). The domain name <singaporepools.com.sg> was registered on March 12, 1998. The Complainant’s Website allows customers to obtain information about the products and services offered by the Complainant and also the latest lotteries and sports betting results.
The Complainant owns Singaporean registered trade mark numbers T9308803Z and T9308804H which were registered on November 10, 1993 and Singaporean registered trade mark numbers T9609016G and
T9609017E which were registered on August 24, 1996 for SINGAPORE POOLS in device form:
(the “Trade Mark”).
The Respondent is Le Thi Xuan, an individual of Viet Nam and the registered owner of the Disputed Domain Name. The Respondent did not file a Response, and consequently little information is known about the Respondent.
The Disputed Domain Name was registered on October 3, 2016.
At the time of this decision, the Disputed Domain Name does not point to an active website. However, according to screenshots submitted by the Complainant obtained on December 29, 2016, the website associated with the Disputed Domain Name in the past appeared to offer online gaming, betting, lotteries and related customer support services.
The Complainant makes the following contentions.
Identical or Confusingly Similar
The Complainant has a long history of extensive use of the Trade Mark and the name “Singapore Pools”. The Disputed Domain Name is confusingly similar to the Trade Mark even though the Trade Mark is a device. There are previous UDRP decisions which found that the graphic elements of a trade mark need not be considered when assessing confusing similarity.
The Disputed Domain Name is confusingly similar to the Trade Mark despite differences for the following reasons:
- “sg” is a common short form or abbreviation of the word “Singapore”. Further, it is likely for customers wishing to access the Complainant’s Website to type “sg” instead of the longer form “Singapore”.
- The deletion of the letter “s” from the word “pools” constitutes a minor variation and is a case of typosquatting.
- The addition of the generic word “bet” as a suffix is not sufficient to distinguish between the Disputed Domain Name and the Trade Mark and in fact adds to the potential confusion as this term is commonly associated with the products and services provided by the Complainant and covered by the Trade Mark.
- The addition of the generic Top-level Domain (“gTLD”) “.com” is disregarded when considering identity between the Disputed Domain Name and the Trade Mark because the gTLD is a “functional necessity rather than an arbitrary trademark choice” (see Herbalife International, Inc. v. Herbalife.net, WIPO Case No. D2002-0234).
Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in the Disputed Domain Name for the following reasons:
- There is no relationship between the Complainant and the Respondent and the Complainant has not licensed or otherwise authorised the Respondent to use the Trade Mark.
- There is no evidence that the Respondent has used the Disputed Domain Name in connection with a bona fide offering of goods or services.
- The Respondent purports to use the Disputed Domain Name to provide goods or services that are illegal. It is an offence under sections 10 and 11 of the Remote Gambling Act 2014 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.
Registered and Used in Bad Faith
The Respondent used a privacy service to register the Disputed Domain Name in order to conceal the Respondent’s identity and ensure that it cannot be readily ascertained, as well as to avoid enforcement of the Complainant’s legitimate rights which indicates bad faith.
The Complainant, being the only legalised sports betting and lotteries operator in Singapore, and the Trade Mark are well-known to the public at large and have acquired substantial reputation and goodwill. The Respondent was clearly well aware of and is very familiar with the Complainant and the Trade Mark. The Respondent made express reference to the Complainant on the homepage of the website previously associated with the Disputed Domain Name with the statement “Confirm better odds than Singapore Pools”.
The Respondent has made an effort to be seen as being associated with or is passing itself off as the Complainant. The Respondent knew, or ought to have known, of the Complainant’s rights in the Trade Mark prior to registering the Disputed Domain Name. The registration of the Disputed Domain Name is an infringement of the Complainant’s rights in the Trade Mark and a calculated step by the Respondent to cyber squat on the Disputed Domain Name.
The Disputed Domain Name had resolved to a website that offered illegal goods and services which constitutes serious bad faith in registration and use, and is also against public interest.
On February 8, 2017 the Complainant sent to the Respondent a cease and desist letter drawing the Respondent’s attention to the Complainant’s rights in the Trade Mark and seeking transfer of the Disputed Domain Name to the Complainant. The letter was sent to the Respondent’s registered email address. The Respondent did not reply. The Respondent’s failure to respond to the Complainant’s cease-and-desist letter indicates a blatant disregard of the Complainant’s rights.
The Respondent did not reply to the Complainant’s contentions.
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed 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 Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
The onus of proving these elements remains on the Complainant even though the Respondent has not filed a Response.
The Respondent’s failure to file a Response does not automatically result in a decision in favour of the Complainant (see, e.g., Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyProtect.org, WIPO Case No. D2013-2059). However, the Panel may draw appropriate inferences from the Respondent’s default.
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
The Panel is satisfied that the Complainant has rights in the words “Singapore Pools” by virtue of its ownership and use of the Trade Mark and use as the domain name for the Complainant’s Website. This use significantly precedes registration of the Disputed Domain Name. Although the Trade Mark is a device mark, the textual component is “Singapore Pools” which features prominently. Previous panels have typically assessed confusing similarity between a domain name and device marks by comparing the alpha-numeric and the dominant textual components of the relevant trade mark, given that design elements in a trade mark are generally incapable of representation in a domain name (see, e.g. Sweeps Vacuum & Repair Centre, Inc. v. Nett Corp., WIPO Case No. D2001-0031).
In this case, the gTLD “.com” is irrelevant in assessing confusing similarity under the Policy and may be ignored.
Accordingly, the relevant comparison is between “sgpoolbet” and “Singapore Pools”.
The Panel accepts the Complainant’s contentions that “sg” is a well-known and well-established abbreviation for Singapore, that the deletion of the letter “s” from the word “pools” constitutes a minor variation and that the addition of the generic suffix “bet” does not prevent confusing similarity and in these circumstances is immaterial for trade mark distinguishing purposes (see, e.g. Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110 and The Sporting Exchange Limited v. Josh Adams, WIPO Case No. D2008-0343). Further, the Panel agrees that the generic term “bet” is descriptive of the Complainant’s goods and services. In the circumstances, the Panel considers the Disputed Domain Name to be confusingly similar to the Trade Mark.
In light of the above, the Complainant succeeds on the first element of the Policy.
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel finds that the Complainant has made out a prima facie case. This finding is based on the following:
- The Respondent has not used, or made demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services. The website at the Disputed Domain Name (when it was active) appeared to offer online betting and lotteries clearly targeted to the Singaporean market, which are goods and services that only the Complainant is legally permitted to provide. The connection to Singapore is evidenced by the abbreviation to “sg” in the Disputed Domain Name (as discussed above) and is inferred by reference to a number of preferred banking partners on the home page, all of which are banks based in Singapore. In the circumstances, this is not a bona fide use of the Disputed Domain name under the Policy.
- The Panel accepts the Complainant’s submission that the Complainant has not licensed or otherwise authorised the Respondent to use the Disputed Domain Name.
- There is no evidence that the Respondent has been commonly known by the Disputed Domain Name or the Trade Mark, or has registered or common law trade mark rights in relation to the Trade Mark.
- The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain. Currently, there is no content at the Disputed Domain Name, or other evidence before the Panel, which would suggest such use. Previously, the website associated with the Disputed Domain Name appeared to offer lottery and betting services, presumably for commercial gain.
The Respondent had the opportunity to demonstrate his rights or legitimate interests, but did not do so. In the absence of a Response from the Respondent, the prima facie case established by the Complainant has not been rebutted.
In light of the above, the Complainant succeeds on the second element of the Policy.
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and used the Disputed Domain Name in bad faith.
The Complainant is a subsidiary of a Singaporean statutory body that has been operating for almost 50 years and is the only operator legally allowed to run lotteries in Singapore.
The Disputed Domain Name was registered on October 3, 2016. In light of the reputation of the Complainant and the Trade Mark, as well as the express reference to the Complainant on the home page of the website associated with the Disputed Domain Name at a time when it was active, it is clear that the Respondent had knowledge of the Trade Mark at the time of registering the Disputed Domain Name. Here, the Panel can reasonably infer that the Respondent sought to take advantage of the reputation of the Complainant and the Trade Mark and registered the Disputed Domain Name because of this reputation. This is bad faith registration.
It is likely that the Respondent intended to divert traffic from the Complainant’s Website to the Disputed Domain Name. This is particularly the case given that the website at the Disputed Domain Name (when it was active) purported to offer similar goods and services as the Complainant, which, under Singaporean law, only the Complainant is authorised to provide. The Respondent’s illegal activity in this respect is evidence of bad faith use. The Respondent’s current passive holding of the Disputed Domain Name is further evidence of bad faith.
In these circumstances, the registration of the Disputed Domain Name using a privacy service also supports a finding of bad faith (see e.g., The Uder Company Pty Ltd and Stay In Bed Milk & Bread Pty Ltd (trading as Aussie Farmers Direct) v. PrivacyProtect.org, Domain Admin, ID # 10760, WIPO Case No. D2012-0924 and cases cited therein).
In light of the above, the Panel finds that the Complainant has succeeded on the third element of the Policy.
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 <sgpoolbet.com> be transferred to the Complainant.
John Swinson
Sole Panelist
Date: May 10, 2017