Complainant is Triumph International (Viet Nam) Ltd. of Di An Town, Binh Duong Province, Viet Nam, represented by BMVN International LLC, Viet Nam.
Respondent is Whoisguard Protected, Whoisguard, Inc. of Panama, Panama / Ngoc Truong of Hanoi, Viet Nam. 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 February 21, 2017. On February 21, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 23, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on February 23, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on February 24, 2017.
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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 9, 2017. In response to email communication from Respondent of March 9, 2017, Complainant requested a suspension of the administrative proceedings for 30 days in order to explore a settlement on March 9, 2017. The administrative proceeding was suspended on March 10, 2017. On April 5, 2017 Complainant requested re-institution of the proceeding. On the same date, the proceeding was reinstituted.
The revised due date for Response was April 24, 2017. Respondent did not submit any formal response. Accordingly, the Center notified the parties about the commencement of panel appointment process on April 25, 2017.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on May 18, 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.
Upon review of the case record, the Panel noted that Complainant is a non-exclusive licensee of Triumph Intertrade AG, having geographically limited rights in Triumph Intertrade AG’s marks. On June 6, 2017, the Panel issued an Administrative Panel Order, giving Complainant the opportunity to provide relevant evidence, showing that Complainant is authorized by the trademark holder (i) to bring the UDRP complaint against Respondent, and (ii) to request the transfer of the domain name to Complainant as a remedy. Complainant was granted until June 16, 2017, either to present the requested evidence or to have Complainant’s licensor join the proceedings. Respondent was authorized to reply to Complainant’s submissions pursuant to the Administrative Panel Order by June 23, 2017. The decision due date was extended accordingly to June 30, 2017. On June 12, 2017, Complainant presented a letter by Triumph Intertrade AG, confirming that Complainant was authorized to bringing complaints under the UDRP and to request the transfer of the Disputed Domain Name to itself as a remedy. Respondent did not respond. 4. Factual Background
Complainant, Triumph International (Vietnam) Ltd., is the license of Triumph Intertrade AG and a subsidiary of Triumph International. The Triumph group of companies commercializes lingerie products. Triumph is listed as one of the 10 most popular lingerie brands in Viet Nam according to ELLE Viet Nam Magazine.
Complainant’s licensor, Triumph Intertrade AG, is the holder of, inter alia, the following registered trademarks, which it licensed on a non-exclusive basis to Complainant:
- , registered as a Vietnamese trademark under No. 4-0133162-000 in classes 3, 25 and 35 on September 15, 2009;
- , registered as a Vietnamese trademark under No. 4-0133163-000 in classes 3, 25 and 35 on September 15, 2009.
Complainant is authorized by its licensor to bring complaints under the UDRP and to request the transfer of the Disputed Domain Name to itself as a remedy. Triumph Intertrade AG also authorized Complainant to deal with any acts of infringement
On August 12, 2013, the Disputed Domain Name was registered. As of January 12, 2017, the Disputed Domain Name was registered, using a provider of privacy services. As of February 24, 2017, Respondent was listed as Ngoc Truong, having the address Hanoi, Hanoi, Viet Nam. The Disputed Domain Name refers to a website offering various kinds of Triumph-branded lingerie, including Triumph-branded brassieres. 5. Parties’ Contentions A. Complainant
Complainant considers the Disputed Domain Name to be confusingly similar to trademarks and service marks in which it claims to have rights. Complainant argues that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. According to Complainant, Respondent has not used the Disputed Domain Name in connection with a legitimate use. Also, according to Complainant, Respondent has not been commonly known by the Disputed Domain Name. Complainant claims that the Disputed Domain Name was registered and used in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The onus is on Complainant to make out their case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer the Disputed Domain Name. As the proceedings are administrative, the standard of proof is the balance of probabilities.
Thus for Complainant to succeed, they must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:
(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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 Panel will deal with each of these requirements in turn. A. Identical or Confusingly Similar
To prove this element, Complainant must first establish that there is a trademark or service mark in which it has rights. Complainant has clearly established that there are registered TRIUMPH trademarks in which Complainant has rights. The trademark has been registered and used in various territories, including in Viet Nam, where Respondent seems to reside.
The Disputed Domain Name incorporates Complainant’s trademark in its entirety, adding the word “aonguc”, which is likely to be read by Vietnamese speakers as “ào ngực”, which stands for “bra” or “brassiere” in English. The Panel is of the opinion that the mere addition of non-distinctive text to a complainant’s trademark does not avoid a finding of confusing similarity, as set out in paragraph 4(a)(i) of the Policy (see Karen Millen Fashions Limited v. Akili Heidi,WIPO Case No. D2012-1395, where the domain name was held to be confusingly similar to the KAREN MILLEN trademark; Belstaff S.R.L. v. Jason Lau, Sharing,WIPO Case No. D2012-0783, where the domain name was held to be confusingly similar to the BELSTAFF trademark; Lime Wire LLC v. David Da Silva / C,WIPO Case No. D2007-1168, where the domain name was held to be confusingly similar to the LIME WIRE trademark, especially with addition of the word “download” because users typically download complainant’s software).
Accordingly, Complainant has made out the first of the three elements of the Policy that it must establish. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, a complainant has the burden of establishing that the respondent has no rights or legitimate interests in respect of the disputed domain names.
It is well established under the Policy that it is sufficient for a complainant to make a prima facie showing that the respondent has no rights or legitimate interests in the disputed domain name in order to place the burden of production on the respondent. See Champion Innovations, Ltd. v. Udo Dussling (45FHH),WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110.
The Panel notes that Respondent has not apparently been commonly known by the Disputed Domain Name and that Respondent does not seem to have acquired trademark or service mark rights. Respondent’s use and registration of the Disputed Domain Name was not authorized by Complainant. There are no indications that a business connection exists between Complainant and Respondent. In addition, Respondent does not show to be an authorized reseller of Complainant. Nevertheless, Respondent uses the Disputed Domain Name to refer to a website offering various kinds of Triumph-branded lingerie, including Triumph-branded brassieres. Complainant suspects that Respondent is offering counterfeit goods on the website. Respondent did not reply.
Therefore, the Panel finds that Complainant has established that Respondent has no rights or legitimate interests in the Disputed Domain Name. C. Registered and Used in Bad Faith
Complainant must prove on the balance of probabilities both that the Disputed Domain Name was registered in bad faith and that it is being used in bad faith (see, e.g., Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd,WIPO Case No. D2006-1052).
Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. Among these factors demonstrating bad faith registration and use is the use of a domain name to intentionally attempted to attract, for commercial gain, Internet users to a web site 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 web site or location or of a product or service on the web site or location.
In the present case, it is inconceivable that Respondent was unaware of Complainant and its trademark rights when it registered the Disputed Domain Name. The Disputed Domain Name includes Complainant’s TRIUMPH trademark in its entirety, adding the Vietnamese word for the type of products Complainant’s group of companies is known for. Hence, it is apparent that Respondent had Complainant in mind when registering the Disputed Domain Name. This is also apparent from the fact that the website associated to the Disputed Domain Name contains product images whose copyright belongs to Complainant’s group of companies.
Respondent is using Complainant’s trademark and copyright protected images without Complainant’s authorization and without disclosing its relationship with Complainant. Doing so, consumers are likely misled into believing that Respondent’s website is operated by Complainant itself or a company affiliated to Complainant. The likelihood of confusion with Complainant’s mark is clearly with the intention of attracting Internet users for commercial gain, since the purpose of the website is to sell TRIUMPH-branded goods, which are likely counterfeit products.
Finally, Respondent did not formally take part in the administrative proceedings. According to the Panel, this serves as an additional indication of Respondent’s bad faith.
Therefore, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the Disputed Domain Name was registered and is being used in bad faith. 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 Complainant.
Flip Jan Claude Petillion
Sole Panelist
Date: June 30, 2017
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