The Complainant is Vestergaard Frandsen SA of Lausanne, Switzerland, represented by PATRADE A/S, Denmark.
The Respondent is Ong Ngan Van Hoang of Ha Noi, Viet Nam. 2. The Domain Name and Registrar
The disputed domain name is registered with Mat Bao Trading & Service Company Limited d/b/a Mat Bao (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 4, 2014. On July 4, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 7, 2014, 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 sent an email communication, both in English and in Vietnamese, to the parties on July 9, 2014, on the language of the proceedings given that the concerned Registrar informed that the language of the registration agreement for the disputed domain name is Vietnamese. On July 17, 2014, the Complainant replied requesting that English be the language of the proceedings. The Respondent did not reply to the communications sent by the Center. Given the submissions and circumstances of the case the Center decided, on July 22, 2014, to accept the Complaint as filed in English and to accept a Response either in English or Vietnamese.
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 in both, English and Vietnamese, and the proceedings commenced on July 22, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was August 11, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 12, 2014.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on August 27, 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 the owner of Swiss trademark registration No. 655685 for LIFESTRAW filed on January 29, 2014, and registered on March 5, 2014, as well as of several domain names such as , registered on October 10, 2004 (Annex 2 to the Complaint).
The disputed domain name was registered on May 16, 2014. The disputed domain name resolves to a webpage that states “Authorized LifeStraw in Viet Nam” (Annex 3 to the Complaint). 5. Parties’ Contentions A. Complainant
According to the Complainant, the disputed domain name reproduces its registered trademark and domain names in numerous countries (Annex 2 to the Complaint), being confusingly similar to the LIFESTRAW trademark given that the addition of the prefixes “máy lọc nước” are not relevant and contribute to creating a link to the Complainant’s products and services, which could mislead Internet users into believing that the disputed domain name is owned by the Complainant or by a related company.
Furthermore, “máy lọc nước” which translated into English means “water softner”, “water filter” or “water mill” are terms somewhat descriptive in Vietnamese to the Complainant’s products, which will probably create an impression that the disputed domain name belongs to, or is affiliated with the Complainant.
As to the absence of rights or legitimate interests, the Complainant argues that:
(i) the disputed domain name is being used in connection with a webpage that claims to be that of the authorized dealer of the Complainant’s products in Viet Nam, which is not true given that the Respondent is neither an authorized dealer nor a customer of the Complainant;
(ii) it has not found that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name; and
(iii) the Respondent is not making a legitimate noncommercial of fair use of the disputed domain name.
In what relates to bad faith in registration and use of the disputed domain name, the Complainant asserts that the Respondent’s knowledge of the Complainant’s well-known trademark is evident given the reproduction of its logotype and products on the Respondent’s website. The only possible conclusion that can be made is thus that the Respondent knew about the Complainant’s trademark and reputation, and used them to his advantage in bad faith.
Lastly, the Respondent, by using the disputed domain name, is not making a legitimate noncommercial or fair use without intent for commercial gain, but is misleadingly diverting consumers for his own commercial gain by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement with the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
(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 has been registered and is being used in bad faith.
The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain name transferred to it, according to paragraph 4(a) of the Policy.
Before turning to these questions, however, the Panel needs to address the issue of the language of the proceeding. A. Language of the Proceeding
The Complainant made a request that the language of the proceeding be English in spite of the fact that the registration agreement is Vietnamese. The Center accepted the Complaint to be filed in English with which the Panel agrees. Considering that the Respondent did not reply to any of the communications sent by the Center, both in English and in Vietnamese, this Panel finds that translating the Complaint into Vietnamese would create an unnecessary and unjustified burden on the Complainant, thus accepting the Complainant’s request for English to be the language of the proceeding. B. Identical or Confusingly Similar
The Complainant has established its rights in the LIFESTRAW trademark.
The disputed domain name fully incorporates the Complainant’s trademark. The addition of the prefixes “máy lọc nước” does not prevent a finding of confusing similarity. Moreover, in this Panel’s view the prefixes “máy lọc nước” which translated into English means “water softener”, “water filter” or “water mill”, which in Vietnamese is used when referring to the Complainant’s products are easily associated with the Complainant, thus not sufficient to avoid a risk of undue association by the Complainant’s customers or Internet users in general.
For the reasons above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that indicate the Respondent’s rights to or legitimate interests in the disputed domain name. These circumstances are:
(i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed 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 disputed domain name, in spite of not having acquired trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to and/or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainant to make a prima facie case against the Respondent.
In that sense, the absence of any indication that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name as well as the Complainant’s statement that no authorization or license was granted for the use of the LIFESTRAW trademark in the disputed domain name corroborate with the indication of a lack of rights or legitimate interests in the disputed domain name.
Furthermore, the Respondent states on the website that resolves from the disputed domain name to be the “Autorized LifeStraw in Viet Nam”, which the Complainant says is not true, given that the Respondent is neither an authorized dealer nor a customer of the Complainant. That in addition to the reproduction of the Complainant’s products and logotype, leads this Panel to the conclusion that the Respondent was seeking to create a false impression of association with the Complainant, which does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name. D. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b)(iv) of the Policy that bad faith registration and use can be found in respect of the disputed domain name, where a respondent has intentionally attempted to attract, for commercial gain, Internet users to the website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
In this case, both the registration and use of the disputed domain name in bad faith can be found in view of the reproduction of the Complainant’s trademark logotype in connection with the Complainant’s products on the website that resolves from the disputed domain name and the Respondent’s attempt to create a false impression of association with the Complainant, by stating on the website at the disputed domain name to be the “Authorized LifeStraw in Viet Nam”.
The Respondent’s use of the disputed domain name not only clearly indicates full knowledge of the Complainant’s trademark but also an attempt to misleadingly divert consumers for his own commercial gain.
For the reasons above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain name pursuant to paragraph 4(b)(iv) 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.
Wilson Pinheiro Jabur
Sole Panelist
Date: September 10, 2014
Full & Egal Universal Law Academy