The Complainant is AVK Holding A/S of Galten, Denmark, represented internally.
The Respondent is Le Duc Dung of Ho Chi Minh, Viet Nam, self-represented. 2. The Domain Name and Registrar
The disputed 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 December 20, 2013. On December 20, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 21, 2013, 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. On January 3, 2014, the Center informed the Complainant that the Complaint was administratively deficient. On January 6, 2014, the Complainant filed an amendment to the Complaint.
The Center verified that the Complaint together with the amendment to 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 January 10, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 30, 2014. On January 22, the Center received an email communication from the Respondent (the text of which is reproduced under Section 5.B. below). No further communications were filed with the Center. Accordingly, the Center notified the parties of the commencement of the panel appointment process on January 31, 2014.
The Center appointed Yong Li as the sole panelist in this matter on February 7, 2014. 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 leading company for manufacturing and selling high quality valves and different segments including water distribution. The Complainant has been in the Vietnamese market since mid 1990’s and has a sales company with offices in both, Ho Chi Minh City and Hanoi. The Complainant owns AVK trademarks which have been registered in many countries worldwide including Viet Nam. The earliest registration date of the trademark AVK is August 8, 1994, according to the registration certificates provided by the Complainant.
The disputed domain name was created on October 11, 2007. The Respondent was a former employee of the Complainant in Viet Nam. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademark AVK. The buyers of valves will automatically get the impression that the disputed domain name originates from the Complainant or one of its subsidiaries. Buyers will without doubt be confused to believe that the disputed domain name is a website of the Complainant regarding the sales of AVK products in Viet Nam.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent’s name is Le Duc Dung and he has not been commonly known as “AVK”. The content of the website of the disputed domain name is referring to the Complainant’s products, showing the AVK logo, but the contact details on the website belongs to the Respondent. The Respondent is not making a legitimate noncommercial use of the disputed domain name. The intention is to mislead buyers and to disrupt the business of the Complainant. Cybersquatting can never be legitimate.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith. The content of the website of the disputed domain name includes references, links, photos regarding the AVK products and the AVK logo. Thus the Respondent clearly had knowledge of the Complainant and the trademarks thereof. The Complainant has tried to solve the issue amicably with the Respondent. However the Respondent demands the Complainant to pay USD 15,000. This proves that the disputed domain name must have been registered with the aim to disrupt the Complainant’s business or to sell or rent the disputed domain name to the Complainant.
The Complainant requests the Panel to issue a decision that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions in a formal Response but simply wrote an email sent to the Center on January 22, 2014, with the following content:
“[…]Last time, when I worked for the AVK company. I have repeatedly suggested AVK buy domain names www. to cater for work, but the always refused and I had to pay for domain name www. by myself. When I did not continue to work for the company AVK, the IT department and I forgot to change the look of the website but until they receive complaints of AVK company we have changed the look of the website.
Now, I am trading in audio device so I will use www. domain name for my business areas are: Audio, video and karaoke and will take the brand is "avkvietnam" means: Audio, video and karaoke of Vietnam.” 6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant’s request for the transfer of the disputed domain name must satisfy the following three elements: 1) Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; 2) Respondent has no rights or legitimate interests in the disputed domain name; and 3) Respondent has registered the disputed domain name and is using it in bad faith. A. Identical or Confusingly Similar
The Complainant is the owner of the International Trademark Registrations No. 971496 and No. 624473A for both word AVK and logo AVK. The disputed domain name incorporates the Complainant’s trademark in its entirety. The disputed domain name differs from the Complainant’s trademark only by adding a country name “Viet Nam” and by an additional generic Top-Level Domain (gTLD) “.com”.
It is well-established by previous UDRP panels that the addition of a country name to a trademark does not necessarily eliminate a likelihood of confusion. See美国礼来制药公司诉 Xi Li Shi, WIPO Case No. D2013-1176 (The panel of that case has the view that the domain name is constructed by adding the term “china” after the distinctive portion of the domain name “xilishi” “China” is a country name and has less distinctive function. By adding the term, it is even more possible to mislead the consumers to believe that the domain name is registered in China by the complainant.). This Panel finds that the disputed domain name is confusingly similar to the AVK trademark, since the distinctive portion of the disputed domain name is “avk”, in which the Complainant has established rights, and the additional country name does not serve to distinguish the disputed domain name from the Complainant’s trademark. Also it is well-established by previous UDRP panels that the addition of the gTLD “.com” to a domain name does not avoid confusing similarity (see F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
Consequently, the Panel finds that the disputed domain name is confusingly similar to the trademarks in which the Complainant has rights. As a result, the Complainant has met the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name. See Paragraph 2.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
In the present case, the Complainant has demonstrated that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. The Panel finds that the Complainant has established a prima facie case in this regard. The Respondent has not provided evidence of circumstances of the type specified in the Policy, paragraph 4(c), to prove that the Respondent has rights or legitimate interests in respect of the disputed domain name. Furthermore, the Respondent has not provided evidence of any other circumstances giving rise to rights or legitimate interests in the disputed domain name. The Complainant’s evidence shows that the website of the disputed domain name is referring to the AVK products and, with regard to the description of the products, it links to the Complainant's website. However, the contact details on the website of the disputed domain name belong to the Respondent. The Panel finds that providing misleading contact information on the website as mentioned above does not represent a use of the disputed domain name in connection with a bona fide offering of goods and services.
Accordingly, the Panel finds that the Respondents have no rights or legitimate interests in respect of the disputed domain name. As a result, the Panel finds that the Complainant has satisfied the requirements under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that evidence of registration and use in bad faith by the holder of the disputed domain name includes, but is not limited to:
(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder's documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder'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 holder's website or location or of a product or service on the holder's website or location.
By reviewing the evidence submitted by the Complainant, particularly the evidence showing that the content of the website of the disputed domain name includes references to the AVK products but the contact details on the website belong to the Respondent, who was a former employee of the Complainant in Viet Nam, the Panel finds that the Respondent had actual knowledge of the Complainant’s trademark when acquiring the disputed domain name.
Previous UDRP panels have established that circumstances of proposing for negotiations with the trademark owners or offering for sale domain names to the trademark owners can be evidence of registration and use of a domain name in bad faith based on paragraph 4(b)(i) of the Policy. See Sonera Ojy and Telia AB (Publ.) v. Daungsoo Ghim,WIPO Case No. D2002-0403 (“In his reply to the Complainants’ first Complaint, the Respondent stated: “If you really need the domain name, I am amicably willing to negotiate for settlement.” This is a clear indication that the Respondent was willing to sell the registration in exchange for money – more than likely in excess of his out-of-pocket costs.”). Also seeClairol Incorporated v. Jean-Pierre Fux,WIPO Case No. DTV2001-0006 (“the Complainant has also submitted a declaration from one of its attorneys describing a telephone conference with the Respondent's authorized representative who offered the domain name in issue for sale for $10,000 as well as e-mail messages from the Respondent subsequently offering the domain name for sale for $5,000.”. “The Panelist finds that the Respondent has registered the domain name in issue for the purpose of selling or transferring the domain name registration to the Complainant for valuable consideration in excess of documented out-of-pocket costs.”). This Panel shares the views of the above-mentioned panels.
In this case, the evidence shows that the Respondent sent an email on November 20, 2013 to the Complainant stating that “[…] if you want to buy the domain you have to pay usd 15,000.00.” Considering the above evidence together with the circumstances that the Respondent had actual knowledge of the Complainant’s mark when acquiring the disputed domain name and the website of the disputed domain name reflects the links of the Complainant’s products with wrong contacting information, the Panel is persuaded that the Respondent’s actions are within the scope of paragraph 4(b)(i) of the Policy. The Respondent has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant, who is the owner of the trademark, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name.
Accordingly, having regard to the circumstances of this case, the Panel finds that the Complainant has met its burden under 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.
Yong Li
Sole Panelist
Date: February 20, 2014
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