WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Cong ty Trach Nhiem Huu Han Thuong mai Tran Hong Quan v. Cong ty TNHH TM & DV Truc Tuyen Sieu thi A Case No. D2010-0374 1. The Parties
The Complainant is Cong ty Trach Nhiem Huu Han Thuong mai Tran Hong Quan of Hanoi, The Socialist Republic of Viet Nam represented by Bross & Partners of The Socialist Republic of Viet Nam.
The Respondent is Cong ty TNHH TM & DV Truc Tuyen Sieu thi A of Hanoi, The Socialist Republic of Viet Nam. 2. The Domain Name and Registrar
The disputed domain name is registered with OnlineNic, Inc. d/b/a China-C. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 10, 2010. On March 12, 2010, the Center transmitted by email to OnlineNic, Inc. d/b/a China-C. a request for registrar verification in connection with the disputed domain name. On March 15, 2010, OnlineNic, Inc. d/b/a China-C 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 18, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was April 7, 2010. The Response was filed with the Center on April 3, 2010.
The Center appointed James A. Barker as the sole panelist in this matter on April 13, 2010. 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 disputed domain name was registered on October 28, 2009.
The Complainant maintains a website at . Although not explained in detail in the Complaint, the Complainant appears to be an entity that trades in natural gas.
The Complainant provides a screenshot of the Respondent's website as at March 10, 2010. That website contains the heading “STA Gas” and otherwise contains text in Vietnamese. But the photographs and logos on the website suggest that it is a site related to the gas industry. (Despite statements in the Complaint, the case file does not contain a translation of that webpage.)
At the date of this decision, the disputed domain name reverts to a website under the title “Gold Flame”, with icons that link to other websites such as Twitter and Facebook. 5. Parties' Contentions A. Complainant
The Complainant claims that it is the owner of a word mark registered in Viet Nam in April 2008 for HONG HA (in Vietnamese characters), and a design mark registered in November 2003 for HONGHA GAS and design. (The Complainant provided translations of its registration certificates for those marks). The Complainant claims that the disputed domain name is identical to its registered mark.
The Complainant suggests that the Respondent must have been aware of the Complainant, because the Respondent is a Vietnamese entity incorporated in Hanoi where the Complainant also has its place of business; the Respondent has offered gas provision services in direct competition with those offered by the Complainant; the Complainant is one of the few accredited processed gas providers in Viet Nam, particularly in northern Viet Nam since 2003; and because the Complainant's mark is commonly known by most consumers in northern Viet Nam, especially in the area of Hanoi City.
The Complainant claims that the Respondent has used the disputed domain name for commercial gain, by advertising gas provision services and by writing articles on the gas market, whereby consumers might be confused between the Respondent and Complainant.
The Complainant claims that the disputed domain name has been registered and used in bad faith. The Complainant refers to its registration of the domain name in 2006 and the registration of the disputed domain name in 2009. The Complainant says that it sent a warning that the Respondent's use of the disputed domain name infringed the Complainant's rights (although no evidence of that communication was provided in the Complaint). After that warning, the Complainant says that the Respondent removed the word “Honghagas” from the main banner of the Respondent's website. The Complainant says however, the Respondent's website is still used to offer gas for sale and provide gas-related information. The Complainant also states that the Respondent then offered the disputed domain name for sale for USD 25,000, which the Complainant did not accept. (Again, no direct evidence of that communication is provided). The Complainant says that the Respondent has registered the disputed domain name to disrupt its business.
The Complainant says that the Respondent is also cybersquatting on the which incorporates the name of another leading Vietnamese gas provider. B. Respondent
The Respondent says that the disputed domain name is made up of two common words “hong ha” and “gas”, and provides the statistics of Google results for a search of those terms.
The Respondent does not deny that the disputed domain name is identical to the Complainant's mark for HONG HA. However, the Respondent denies that there has been any confusion or indeed any risk of confusion. The Respondent denies that it ever tried to mislead or divert Internet users.
The Respondent contends that it has rights or legitimate interests in the disputed domain name. The Respondent says that this is because the Respondent is entitled to register the disputed domain name on a “first come, first served” basis. The Respondent also says that the disputed domain name is an “international domain name” whereas the Complainant's mark is only protected in Viet Nam. The Respondent says that, prior to registering the disputed domain name, it carried out searches on the Internet but did not find any registered trademarks or Internet sites of the Complainant. The Respondent refers to a number of websites which, when the Panel sought to visit them, indicated that they were “under construction” and otherwise contained text in Vietnamese. (The Respondent does not make clear what inference it wishes to have drawn from those sites.)
The Respondent says that the website at the disputed domain name collects information about “common gas, not for commercial purposes, [and] no information related the confusion for the customers as the Complainant's allegations.”
The Respondent denies that the disputed domain name was registered and used in bad faith. The Respondent says that the Complainant exhibits a lack of understanding of how search engines work. Among other things, the Respondent says that “each search engine has criteria for placing the site on their engine which is dependent on several factors and not just on metatags…The search engines usually decide the language in placement of site.”
The Respondent also says that it doesn't use any form of marketing or advertising for the disputed domain name. The Respondent does not offer any competing products or services on its website and does not link to competitors of the Complainant. The Respondent denies that it registered the disputed domain name to sell or profit from it. It was the Complainant that approached the Respondent with an offer to purchase the disputed domain name. The Respondent merely responded with a price for the proposed transfer. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
These elements are discussed as follows.
In addressing each of these elements, the Panel notes that it has found both the parties stated cases somewhat difficult to follow. In part, this is perhaps because these proceedings have been conducted in English, whereas the native language of both parties would appear to be Vietnamese. It is understandable that parties who are not proficient in the language of the Registration Agreement may not be able to express their case as clearly as they otherwise might. Paragraph 11(a) of the Rules provides that the language of proceedings is the language of the Registration Agreement “unless otherwise agreed by the Parties”. In this case, the language of the Registration Agreement is English. The parties have not however made an agreement to conduct these proceedings in a different language to English. A. Identical or Confusingly Similar
It is clear that the Complainant has registered trademark rights for, at least, HONG HA and a design mark for HONG HA GAS in Viet Nam. The Respondent did not deny that the Complainant had such rights. The Complainant also provided evidence of its registered rights in that respect.
The Panel finds that the disputed domain name is identical to the Complainant's HONG HA GAS mark. There is no relevant textual difference between them. The Respondent also does not deny that the Complainant's mark is identical to the disputed domain name. The Respondent instead denies that there has been any actual confusion. But, having accepted that the disputed domain name is identical to the Complainant's mark, the presence of absence of actual (or likely) confusion ceases to be relevant to proving this ground. This is because paragraph 4(a)(i) requires the Complainant to establish that a domain name is identical or confusingly similar to its mark.
For this reason, the Panel finds that the Complainant has established this first element. B. Rights or Legitimate Interests
The Respondent does not provide any direct evidence from which rights or legitimate interests might be found, or to rebut the Complainant's prima facie case under paragraph 4(a)(ii) of the Policy. Similarly, the Respondent provides no evidence that would support it having rights or legitimate interests of the kinds set out in paragraph 4(c) of the Policy.
The Respondent rests its possible rights or legitimate interests on a number of arguments. However, the Panel considers that these arguments are misplaced for the following reasons.
Firstly, the Respondent suggests that the disputed domain name comprises the common words “hong ha” and “gas”. The latter is clearly a common word in English. Whether the former is a common word in Vietnamese is not supported by evidence or explanation, either by the Complainant or Respondent. The Complainant provides no explanation as to the meaning of that term. The Respondent does not explain why the term “hong ha” should be considered as a common word. Importantly, that term is registered in a trademark by the Complainant. As such, the Panel considers that it is entitled to a presumption of distinctiveness as a mark.
Secondly, the Respondent says that it has rights because it acquired the disputed domain name on a “first come, first served” basis. But such an argument ignores the operation of the Policy. The Policy operates to allow the transfer of a domain name where a complainant establishes the circumstances set out in paragraph 4(a), regardless of the Respondent first acquiring the disputed domain name.
Thirdly, the Respondent argues that the disputed domain name (in the “.com” gTLD) is an “international” domain name, whereas the Complainant has registered rights only in Viet Nam. That argument is also misplaced. There is nothing in the terms of the Policy that support such an argument, and it is contrary to the vast majority of cases decided under the Policy. Trademarks are, fundamentally, rights conferred territorially, and give rights from which allegations may be made under the Policy.
Finally, the Respondent's claims that it carried out searches prior to registering the disputed domain name are unconvincing. The implication suggested by the Respondent is that it thought it was free to register the disputed domain name because it had no notice of the Complainant's rights. This argument does not, however, directly establish that the Respondent has rights or legitimate interests – it merely suggests a belief that the Complainant had none. In any event, the Panel considers that this argument is implausible. The Respondent is based in the same city, and same country as the Complainant. The Respondent's website concerned, for a period, the same field of business as the Complainant. The Complainant claims, and the Respondent does not deny, that the Complainant is a large supplier of gas in Viet Nam. The Complainant also has trademark rights which significantly pre-date the registration of the disputed domain name. In these circumstances, it is implausible that the Respondent's search, if it was conducted, gave it no indication of the Complainant's rights.
For these reasons, the Panel finds that the Complainant has established this second element. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out illustrative circumstances which are evidence of bad faith for the purpose of paragraph 4(a)(iii) of the Policy. Relevantly to the evidence in this case, paragraph 4(b)(iv) provides that bad faith may be established where:
“by using the domain name, you [the Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”
The Panel finds that the evidence in this case supports a finding under this paragraph.
The disputed domain name is relevantly identical to the Complainant's mark, and so there is an obvious likelihood of confusion. The evidence also suggests that it is likely that the Respondent was aware of the Complainant's mark (for the reasons set out in the last point above, under “B. Rights or Legitimate Interests”). The Respondent's intention to exploit on the value of the Complainant's mark is also suggested by the subject matter of the Respondent's former website, combined with a lack of evidence that the Respondent has any real or legitimate business in relation to that subject matter.
While neither party provided direct evidence of it, both parties stated that the Respondent had offered the disputed domain name for sale, in response to an approach by the Complainant. Relevantly, paragraph 4(b)(i) of the Policy provides that bad faith may be found in circumstances indicating that the Respondent registered the disputed domain name “primarily” for the purpose of selling it. The Panel does not however consider that the evidence supports a finding that the sale of the disputed domain name was the Respondent's primary purpose. However, in all the circumstances of this case outlined above, the Panel considers that the Respondent's offer to sell the disputed domain name at least reinforces a finding of bad faith.
The Panel therefore considers that the Complainant has established this third element. 7. Decision
For all 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.
James A. Barker
Sole Panelist
Dated: April 27, 2010
Full & Egal Universal Law Academy