The Complainant is Julius Blum GmbH, Austria, represented by Patentwälte Torggler & Hofinger, Austria.
The Respondent is Nguyen Chi Thuc, Viet Nam. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on November 26, 2019. On November 27, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 29, 2019, 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 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”). On December 6, 2019, the Center transmitted an email in English and Japanese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on December 9, 2019. The Respondent did not comment on the language of the proceeding. In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent in English and Japanese of the Complaint, and the proceedings commenced on December 16, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 5, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 9, 2020. The Center appointed Douglas Clark as the sole panelist in this matter on January 21, 2020. 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, founded in 1952, is an international company which is one of the largest manufacturers of furniture fittings in the world. The Complainant has almost 8,000 employees around the world. The Complainant is the owner of various BLUM trademarks in various countries. International trademarks designating Viet Nam include international registrations no. 598611 registered on February 16, 1993 in classes 6, 7, 20, and 26; no. 996626 registered on November 18, 2008 in classes 6, 9, 11, and 20; no. 1161863 registered on December 12, 2012 in classes 9, 16, 35 and 42; and, no. 1171363 registered on April 29, 2013 in classes 6, 7, 9, and 20. The Complainant is also the owner of the domain name The Respondent is an individual based in Viet Nam. The disputed domain name was registered on March 10, 2016. The disputed domain name at the time of filing of the complaint resolved to a website on which furniture fittings of various manufacturers are offered. 5. Parties’ Contentions A. Complainant Identical or Confusingly Similar The Complainant contends that the disputed domain name The Complainant states that the other part “hafele” of the disputed domain name is another international company which provides hardware and fittings with more than 7,800 employees and a history of almost 100 years. Hafele is a wholesale dealer of furniture fittings, inter alia of the Complainant’s products. Hafele is responsible for the distribution of the Complainant’s products in a number of jurisdictions. The Complainant contend that the addition of the suffix “hafele” to “blum” does not alter the underlying meaning of the disputed domain name nor eliminate the likelihood of confusion with the Complainant’s mark. No Rights or Legitimate Interests The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant submits that it has never licensed or in any way authorized the Respondent to register or use its trademark BLUM as a domain name. The Complainant also contends that by creating a domain name that uses the mark BLUM together with the company name of one of its distribution partner, the Respondent is improperly confusing consumers into believing that they have reached the Vietnamese website of the Complainant or of the distributor Hafele concerning products of the Complainant. Therefore, the Respondent is creating a false impression that the Respondent is associated or affiliated with the Complainant or the Hafele. The Complainant further submits that a reseller of trademark goods that is unaffiliated with or unauthorized by a trademark holder may have certain use rights regarding the mark, but such use is carefully bounded by the requirement that a reseller may not make use of a mark in a way that is likely to confuse consumers as to an affiliation between the trademark holder and the reseller. (General Electric Company v. Japan, Inc.,WIPO Case No. D2001-0410). The Complainant contends that the disputed domain name clearly suggests an affiliation with the Complainant, and customers seeking spare parts or support for the Complainant’s products would enter the disputed domain name expecting to contact the Complainant’s or Hafele’s Vietnamese subsidiary. Whereas, in fact, a person entering the disputed domain name ends up at the webpage not affiliated or associated with the Complainant. The Complainant also submits that the name “blum” in the disputed domain name give rise to the expectation of the customers to enter a website where only furniture fittings of the Complainant would be obtained. In fact, furniture fittings of the Complainant’s competitors are offered. Registered and Used in Bad Faith The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith and with the fraudulent intent to lure Internet users into the belief that the Respondent is, or is affiliated with, the Complainant. By using the disputed domain name, the Respondent is intentionally attempting to attract Internet users for financial gain to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark. The Complainant also contends that the Respondent, when registering the disputed domain name, must have been aware of the Complainant which has been doing business in Viet Nam for over 20 years. The disputed domain name has been designed to imply that there is an affiliation between the Respondent and the Complainant or that the Complainant endorses the Respondent’s activities even though no such affiliation or endorsement exists, and it is bad faith to misrepresent an affiliation with a third party where none exists. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Language of the proceedings The Language of the Registration Agreement is Japanese. The Complainant requested the language of proceedings be in English on the grounds that (i) it is an unfair burden for the Complainant not to use English as the most common language in international trade, (ii) the Respondent offers products from the Complainant which have been ordered in English, (iii) English expressions like “hotline”, “e-mail” and “fanpage Facebook” can be found on the Respondent’s website, (iv) the Registrar’s website is in English, and (v) the Complainant’s authorized representative have been asked by the Registrar to use English language to communicate. The Respondent did not respond to this request. Paragraph 11(a) of the Rules provides that: “Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.” The Center made a preliminary determination to: 1) accept the Complaint as filed in English; The final determination of the language of the proceedings lies with this Panel. The Respondent did not respond to the Center’s preliminary determination. This Panel decided in Zappos.com, Inc. v. Zufu aka Huahaotrade,WIPO Case No. D2008-1191, that a Respondent’s failure to respond to a preliminary determination by the Center as to the language of the proceedings “should, in general, be a strong factor to allow the Panel to decide to proceed in favour of the language of the Complaint”. As set out below, the Panel considers the merits of the case to be strongly in favour of the Complainant. Translating the Complaint would cause unnecessary delays and expense. This factor leads the Panel to determine to follow the Center’s preliminary determination. As the only pleading before the Panel is in English, the Panel will render its decision in English. 6.2 Substantive issues A. Identical or Confusingly Similar The Panel finds the disputed domain name The first element of paragraph 4(a) of the Policy is therefore satisfied. B. Rights or Legitimate Interests The Respondent has not responded to the Complaint to assert any rights or legitimate interests. Section 2.1 of the WIPO Overview 3.0 provides: “While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.” Considering the absence of a response by the Respondent to the Complainant’s contentions and the fact that the Respondent was granted neither a license nor an authorization to register or use the Complainant’s mark as a domain name, the Panel finds the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name. In relation to the bona fide use of a disputed domain name by a reseller, it is helpful to consider the principles set out in the case of Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 (“Oki Data”). Oki Data outlined the following factors to determine whether a reseller has legitimate interests in respect of a disputed domain name: (i) the respondent must actually be offering the goods or services at issue; Based on the evidence before the Panel, the Respondent’s use of the disputed domain name does not meet all the factors set out in the Oki Data test. While the Respondent is offering products from the Complainant, he or she is also using the disputed domain name to sell goods from the Respondent’s competitors. The Panel finds the Respondent is not making a bona fide offering of the Complainant’s products and thus has no legitimate interests in the disputed domain name. The second element of paragraph 4(a) of the Policy is therefore satisfied. C. Registered and Used in Bad Faith Based on the evidence, the Panel has no hesitation in finding that the disputed domain name The Panel is satisfied that, when the disputed domain name was registered, the Respondent must have known the Complainant’s Mark and the name of the Complainant’s distributor Hafele, and contemplated the confusion that would no doubt follow in the minds of Internet users to belief that the Respondent is associated with the Complainant and its distributor Hafele. As such, the Panel finds the Respondent has registered the disputed domain name in bad faith with an intention to generate financial gain. This case falls within paragraph 4(b)(iv) of the Policy which provides that a registrant has registered and is using a domain name in bad faith where: “(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.” For the above reasons, the third part of the paragraph 4(a) of the Policy is therefore satisfied. 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 Douglas Clark 1 The Panel notes that the disputed domain name also incorporates the name of the Complainant’s distributor, “Hafele”. No consent has been obtained by the Complainant from Hafele for transfer of the domain name to the Complainant. For this reason, the Panel did consider whether and order for cancellation would be more appropriate. However, given the possibility that upon cancellation the domain name could then be re-registered, it is more appropriate to order a transfer. The transfer is however ordered to without prejudice to any claim a third party may wish to make.
2) accept a Response in either English or Japanese;
3) appoint a Panel familiar with both languages mentioned above, if available.
(ii) the respondent must use the site to sell only the trademarked goods or services;
(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and
(iv) the respondent must not try to “corner the market” in domain names that reflect the trademark.
Sole Panelist
Date: February 3, 2020
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