The Complainant is Iveco S.p.A. of Torino, Italy, represented by Studio Barbero, Italy.
The Respondent is Cong ty TNHH san xuat va TM Khang Thinh, NA, of Ha Noi, Viet Nam. 2. The Domain Name and Registrar
The disputed domain name is registered with OnlineNic, Inc. d/b/a China-C (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 11, 2015. On December 11, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 14, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s 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 proceedings commenced on December 16, 2015. In accordance with the Rules, paragraph 5, the due date for Response was January 5, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 6, 2016.
The Center appointed Richard G. Lyon as the sole panelist in this matter on January 18, 2016. The Panel finds that it was properly constituted and has jurisdiction to decide this administrative proceeding. The Panel has submitted his 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 Panel finds the following facts from the evidence submitted with the Complaint and his own examination of the website at the disputed domain name.
The Complainant is an Italian company created in 1975 by means of amalgamation of several companies in Europe each of which manufactured and sold industrial motor vehicles such as trucks. Its ownership has changed somewhat since its founding but for the past 40 years the Complainant has manufactured and sold industrial motor vehicles around the world. Worldwide business volume in 2014 exceeded 38,000 vehicles.
Since its founding the Complainant has marketed its products under the name “IVECO”, an acronym for Industrial VEhicle COrporation. The Complainant holds a number of trademarks, duly registered with the appropriate national registries around the world, for IVECO or other marks of which “IVECO” is the dominant feature. Several of these marks are valid and registered in Viet Nam, the Respondent’s domicile. The Complainant actively promotes its IVECO products, brands, and trademarks around the world, including a heavy social media presence, sponsorship of sporting events, and more than three hundred domain names.
The Respondent registered the disputed domain name in March 2014. An Internet user who enters the disputed domain name into her browser is redirected to a website at which trucks and other motor vehicles are offered for sale. The cover page (but not all content) at the website is available in Korean, Japanese, and English as well as Vietnamese. The English version notes “Copyright © 2012 PRODUCTION COMPANY TRADING KHANG THINH All rights reserved”; the other language versions appear to include a similar proprietary designation. Some of the vehicles on offer bear the Complainant’s trademark, others bear the marks of other vehicle manufacturers. The “Products” tab lists five truck brands (not including the Complainant) and “Other Products.”
The Complainant, through counsel, initiated correspondence with the Respondent in February 2015 with a cease-and-desist letter, sent by email and registered mail, that among other things demanded transfer of the disputed domain name to the Complainant. The Respondent, also through its legal representative, replied three weeks later, denying any impropriety and declining to transfer the disputed domain name. Correspondence between the parties’ legal representatives continued through late July 2015, with each party asking the other for an offer of a purchase price for the disputed domain name. Neither party provided a fixed price. The Complainant proposed “the reimbursement of the out of pocket costs directly related to the registration of the domain name, herein quantified in the maximum amount of 150 Euros,” and the Respondent countered with an amount sufficient “to cover all costs and attorney’s fees (our professional fee) incurred in connection with this case.” 5. Parties’ Contentions A. Complainant
The Complainant contends as follows:
1. The disputed domain name consists of the Complainant’s IVECO mark and the letters “vn,” an international designation for Viet Nam. It is thus confusingly similar to the IVECO marks in which the Complainant has registered trademark rights.
2. The Complainant has never authorized the Respondent to use its IVECO marks. The Respondent has never been commonly known under any name that includes the word IVECO. The Respondent’s mere assertion of use for a bona fide offering of goods and services does not establish that fact; supporting evidence is required. In fact the evidence in the record contradicts any such claim. If the Respondent be considered an unauthorized reseller, it fails to meet the criteria for legitimacy set out in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, now cited as part of a Consensus View for authorized resellers in paragraph 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), as the Respondent does not indicate on its website that it is not affiliated with or authorized by the Complainant and does not use the disputed domain name to sell only the Complainant’s products.
3. The Complainant’s IVECO marks are distinctive, using a coined word. In these circumstances the Respondent cannot credibly deny knowledge of those marks. That fact suggests that Respondent’s purpose in registering the disputed domain name was “to capitalize on the reputation of Complainant’s mark by diverting Internet users seeking information about Complainant’s trademark and products to its own website and attempting to derive profits also from the sale of Complainant’s competitors products.” Bad faith is reinforced by the Respondent’s failure to include any disclaimer of affiliation with Complainant, even following formal notice from the trademark owner. Accordingly the Respondent has intentionally attempted to attract for commercial gain Internet users to its website, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of its website and of the websites linked thereto, as proscribed by paragraph 4(b)(iv) of the Policy. B. Respondent
Although the Respondent did not formally reply to the Complainant’s contentions, in the parties’ correspondence referred to in the preceding section the Respondent’s legal representative provided his reasons for his client’s refusing to transfer the disputed domain name. Rather than paraphrase the Panel chooses to quote1 from two of this lawyer’s emails:
1. The domain name is considered to be distinguishable from your client’s trademark “iveco” in terms of the structure and pronunciation, namely:
- The word “ivecovn” consists of 7 letters while your client’s trademark “iveco” consists of 05 letters.
- Although the prefix “ive” of the two words is the same, the suffix “covn” sounds different from the suffix “co” because of the difference of vowel “o” plus consonants “v” and “n” from vowel “o”.
- Therefore, the domain name is not similar to your client’s trade mark “iveco”.
2. Khang Thinh has been using the domain name in connection with a bona fide offering of their services.
3. Khang Thinh are making a fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish your client’s trademark.
4. Khang Thinh spent much money and time to register the domain name and then for the establishment and activation of the website www.. Khang Thinh now has been commonly known by the domain name .
5. Khang Thinh does not use your clien’t trademark “iveco” and/or any commercial indications that are likely to mislead consumers or take unfair advantage of or cause damage to the reputation and prestige of the products or brands of IVECO S.p.A or to confuse consumers of the origin, production methods, function, quality or brands of IVECO S.p.A.
6. The domain name has registered and is being used in faith by Khang Thinh.
7. Concerning your statements that “we could nevertheless suggest them to exceptionally offer Khang Thinh company with a reimbursement of the registration fees related to the disputed domain name” and “please indicate the amount of the expenses Khang Thinh company actually sustained for the registration of , providing us with the related evidence, and we will report it to Iveco SpA for their evaluation” we would like to inform you that
- Khang Thinh has registered the domain name no for the purpose of selling.
- As you know the registration fees is a little expensive. While Khang Thinh spent much time and money to register, active and maintan this domain name which include but not limited to the registration fees. Therefore, it is hard to indicate the amount of the expenses with certainty as well as providing you with the related evidence.”
The Panel will consider these arguments in deciding this proceeding. Rules, paragraph 10(b). 6. Discussion and Findings A. Identical or Confusingly Similar
“Application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string in the [disputed] domain name.” So long as the trademark at issue is “recognizable” in the disputed domain name, the addition of additional letters ordinarily will not obviate confusing similarity. WIPO Overview 2.0, paragraph 1.2. Under this well-established rule, the disputed domain name is confusingly similar to the Complainant’s IVECO marks. Particularly is that so when those marks are a distinctive invented word and the letters added are a common abbreviation.2 The Complainant has met its burden of proof under this Policy head. B. Rights or Legitimate Interests
As paragraph 4(a)(ii) of the Policy requires the Complainant to prove a negative, the Complainant must first make out a prima facie case that the Respondent lacks rights or a legitimate interest. Upon doing so the burden of production shifts to the Respondent to demonstrate the contrary with evidence, with the ultimate burden of proof remaining with the Complainant. WIPO Overview 2.0, paragraph 2.1. The Complainant here makes its prima facie case by demonstrating without contradiction that it has not authorized the Respondent to use its marks and that the Respondent has not been commonly known by the disputed domain name.
The Panel may summarily dispense with all but one of the Respondent’s contrary contentions. The only evidence that “Khang Thinh now has been commonly known by the domain name ” is its use of the disputed domain name; ordinarily a respondent’s right or legitimate interest must be demonstrated independently of registration or use of the domain name at issue. An allegation of bona fide use, like any other allegation in a Policy proceeding, has no force or effect without supporting proof, and here there is no proof of anything other than the conduct which the Complainant charges is infringing. Neither “iveco” nor “ivecovn” means anything in Vietnamese. The Respondent’s use is self-evidently commercial.
Only the assertion of “fair use” merits more than cursory discussion, and that only because of an earlier UDRP proceeding involving this Complainant and its IVECO marks. In IVECO S.p.A. v. Zeppelin Trading Company Limited,WIPO Case No. D2008-1725, the three-member panel found that the respondent’s “accurate and clear” disclaimer of affiliation with the Complainant and its otherwise meeting the Oki Data criteria constituted proof of a legitimate interest. This Respondent’s lack of a disclaimer or other explanation of non-affiliation distinguish that case from this one, as does the fact that the Respondent uses the disputed domain name primarily to market products competitive with the Complainant’s.
Though not strictly necessary to resolution of this case, the Panel notes his belief that even the Respondent’s meeting the Oki Data criteria would likely not furnish a defense under the facts of this case. Rather those facts illustrate some of the dangers of automatically giving an unauthorized reseller the benefit of an evaluation under the Oki Data criteria, a practice that this Panel has viewed with considerable skepticism.3 The Panel knows nothing of Vietnamese law on “fair use” or its equivalent, or as to whether local (Vietnamese) or other law should apply in the circumstances of this case. Under United States law, the apparent basis for the Oki Data test and hence the decisions under the Policy relying upon it, fair use requires that the mark be “used only so much as is necessary for . . . identification” of the respondent’s services. See Project Management Institute v. CMN.com,WIPO Case No. D2013-2035, citing New Kids on the Block v. News American Publishing, Inc., 971 F.2d 302 (9th Cir. 1992) and Toyota Motor Sales, U.S.A., Inc. v. Tabari, 610 F.3d 1171 (9th Cir. 2010). Whether or to what extent the American doctrine of nominative fair use ever allows use of another’s mark as the dominant feature of a reseller’s domain name without proper authorization is an open issue under the Policy. A persuasive line of UDRP decisions implies that unadorned use of the mark by itself in a domain name in those circumstances is not permissible.4 Heavy equipment such as the Complainant’s products is often subject to local regulation for safety and environmental purposes; how might Vietnamese law on that affect “fair use”?
Even if the parties were fully and fairly to inform a UDRP panel on these matters, resolution of the questions raised by them would overly complicate what is intended as a streamlined process focused upon a narrow question of entitlement of a domain name owner to use another’s mark in his domain name. Better to leave such prolix matters to the national courts. As this Panel pointed out in BSH Home Appliances, supra note 2, “While not ruling out the possibility that inclusion of a mark together with a descriptive term in a domain name may in some circumstances be nominative fair use this Panel is skeptical about such use being ‘only so much as is necessary for . . . identification.’”
But one thing is clear here: whether or not Oki Data applies, the Respondent has not demonstrated a right or legitimate interest. The Complainant has carried its burden of proof under paragraph 4(a)(ii). C. Registered and Used in Bad Faith
The Complaint succeeds under paragraph 4(a)(iii) as well. This case is a textbook illustration of the example of evidence of bad faith set out in paragraph 4(b)(iv) of the Policy, using a recognized mark to “attempt[ ] 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.” Given that the Respondent has from the start used the disputed domain name to sell the Complainant’s products there is no question of its knowledge of the Complainant, its products, and its trademarks. From that knowledge and those sales targeting the value of those marks may be readily inferred. 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.
Richard G. Lyon
Sole Panelist
Date: January 27, 2016
1 Paragraph numbering comes from this Panel.
2 .vn is the country code top-level domain for Viet Nam and the ISO designation for that country.
3 See, e.g., discussion in BSH Home Appliances Corporation v. Michael Stanley / Michael Sipo,WIPO Case No. D2014-1433, section 6.C.2.
4 See, e.g., NVIDIA Corporation v. Giovanni Laporta, Y Ltd.,WIPO Case No. D2014-0770; Starwood Hotels & Resorts Worldwide, Inc., Sheraton LLC, Sheraton International IP, LLC v. Giovanni Laporta / y,WIPO Case No. D2014-0686; Statoil ASA v. Giovanni Laporta, Yoyo.Email Ltd.,WIPO Case No. D2014-0637; Mejeriforeningen Danish Dairy Board v. Domain Manager, Y,WIPO Case No. D2014-0730.
Full & Egal Universal Law Academy