The Complainant is Xerox Corporation of Norwalk, Connecticut, United States of America (“United States”), represented by Steven M. Levy, United States.
The Respondent is Domain Admin, C/O ID#10760, Privacy Protection Service INC d/b/a PrivacyP of Queensland, Australia / Ong Le Trung Kien of Tinh Yen Bai, Viet Nam, self-represented. 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 in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 12, 2017. On June 13, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 13, 2017, the Complainant filed the first amended Complaint. On June 14, 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 and stating that the language of the registration agreement of the disputed domain name is Vietnamese. The Center sent an email communication to the Complainant on June 16, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed the second amended Complaint on June 19, 2017.
Pursuant to the Complaint submitted in English and the registrar verification dated June 14, 2017 stating that Vietnamese is the language of the registration agreement of the disputed domain name, on June 16, 2017, the Center sent a request in English and Vietnamese that the Parties submit their comments on the language of the proceeding. On June 19, 2017, the Complainant submitted its request for English to be the language of the proceeding. On the same day, the Respondent submitted its request for Vietnamese to be the language of the proceeding.
The Center verified that the Complaint together with the amended Complaints 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 in both English and Vietnamese, and the proceedings commenced on June 22, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 12, 2017. The Respondent submitted an informal email communication in Vietnamese on June 19, 2017 but did not submit a formal response. Accordingly, the Center notified the Parties that it would proceed to the Panel appointment.
The Center appointed Steven A. Maier as the sole panelist in this matter on July 20, 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.
On July 31, 2017, the Panel ordered that the Complainant supply a translation of the Complaint into Vietnamese by August 10, 2017 and that the Respondent have until August 30, 2017 to file a Response accordingly. The Complainant duly provided a translation on August 8, 2017 but the Respondent failed to file any Response by the date referred to above.
For reasons of administrative efficiency and noting that the Respondent did not provide a reply to the Panel Order, the Panel has determined that the Decision in this proceeding be provided in English pursuant to paragraph 11(a) of the Rules. 4. Factual Background
The Complainant is a corporation located in Norwalk, Connecticut, United States. It is a supplier of copiers and related products under trademarks including FUJI XEROX and XEROX.
The Complainant is the owner of trademark registrations for the mark FUJI XEROX in numerous territories. Its registrations in Far Eastern territories include Malaysia trademark number 91005509 for FUJI XEROX registered on September 6, 1999 for copying machines and related products in Class 9.
The disputed domain name was registered on September 23, 2016.
The Respondent has used the disputed domain name for the purposes of a website, the home page of which was headed “Fuji Xerox Business Centre Authorized Dealer” and which appeared to offer the Complainant’s products for sale, in addition to products from several other copier companies. 5. Parties’ Contentions A. Complainant
The Complainant submits that it has traded under marks including FUJI XEROX and XEROX since 1962 and that it supplies products in over 160 countries under those trademarks. It provides details of substantial worldwide revenues, numbers of employees and public recognition and submits that as a result of these matters the marks FUJI XEROX and XEROX are widely recognized by customers as distinguishing the Complainant’s products.
The Complainant submits that the disputed domain name is identical to its trademark FUJI XEROX save for the addition of the term “vietnam” which is a geographical identifier and does not serve to distinguish the disputed domain name from the Complainant’s trademark. On the contrary, the Complainant contends that, owing to its own sales and services in Viet Nam, consumer confusion will only be enhanced.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant states that it is not affiliated with the Respondent and has never authorized the Respondent to use its FUJI XEROX mark. The Complainant states that the Respondent has not commonly been known by the disputed domain name and denies that the Respondent is making either bona fide commercial use or legitimate noncommercial or fair use of the disputed domain name. In particular, the Complainant submits that the Respondent has used the disputed domain name for the purpose of a website that offers products from the Complainant’s competitors as well as the Complainant’s, and that the website fails anywhere to make clear that it is unaffiliated with the Complainant, instead falsely stating that the Respondent is an “authorized dealer” of the Complainant’s products.
The Complainant submits that the disputed domain name was registered and is being used in bad faith. The Complainant states that, owing to the worldwide fame of the FUJI XEROX trademark and the Respondent’s use of that trademark on its website in relation to the Complainant’s products, the Respondent must have been aware of that mark when it registered the disputed domain name. The Complainant contends that the Respondent is taking unfair advantage of the Complainant’s trademark by offering the products of the Complainant’s competitors is addition to those of the Complainant. Further, the Complainant submits evidence by way of a translation of an email dated April 28, 2017 that the Respondent has attempted to sell the disputed domain name to the Complainant for an inflated price, by rejecting an offer of USD 200 to cover its out-of-pocket costs and stating: “I had intended to transfer it at a higher price and I would like more price from you.” B. Respondent
The Respondent did not file a formal Response in this proceeding. However, on June 19, 2017, the Respondent submitted an email to the Center in Vietnamese stating that it registered the domain name with the aim of supplying Fuji Xerox products in Vietnam, that it offered only the Complainant’s products and that it was not impersonating the Complainant. The Panel determines that this communication shall stand as the Respondent’s Response in this proceeding. 6. Discussion and Findings
In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has established that it has longstanding registered trademark rights in the mark FUJI XEROX and that the trademark is widely known internationally. The disputed domain name comprises the Complainant’s trademark together with the geographical identifier “vietnam”. The Panel accepts the Complainant’s submission that this addition does not serve to distinguish the disputed domain name from the Complainant’s mark, but rather gives the impression of a connection with the Complainant in that territory. The Panel finds in the circumstances that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. B. Rights or Legitimate Interests
The Respondent has used the disputed domain name for the purposes of a website which describes the Respondent as an “Authorized Dealer” of the Complainant’s products and purports to offer those products and also those of the Complainant’s competitors for sale. In certain circumstances, a reseller of a trademark owner’s products, even if unauthorized, may legitimately use that trademark for the purposes of a domain name: see, e.g., section 2.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). However it does not appear to the Panel that the conditions for such legitimate use have been met in this case. In particular, the Panel finds that the Respondent is offering not only the Complainant’s goods but also competing goods; and that the Respondent has not accurately and prominently disclosed its relationship with the Complainant, but has instead misrepresented that it is an “Authorized Dealer” of the Complainant’s products. There being no other evidence of rights or legitimate interests on the Respondent’s part, the Panel finds that that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The Respondent has used the disputed domain name specifically to refer to the Complainant’s trademark and its products and the Panel infers in the circumstances that the Respondent registered the disputed domain name with the Complainant’s trademark in mind. The Panel further finds that, by using the disputed domain name to offer the Complainant’s competitors’ products as well as those of the Complainant, the Respondent has taken unfair advantage of the substantial goodwill that attaches to the Complainant’s trademark, and has therefore used the disputed domain name in bad faith in the circumstances contemplated by paragraph 4(b)(iv) of the Policy. The Panel also views the Respondent’s email to the Complainant dated April 28, 2017 as a further indication of bad faith, inferring in particular that the Respondent sought at that time to sell the disputed domain name to the Complainant for a sum in excess its out-of-pocket costs associated with the registration of the name. The Panel concludes in all the circumstances that the disputed domain name has been 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 the Complainant.
Steven A. Maier
Sole Panelist
Date: August 31, 2017
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