The Complainant is Kubota Corporation, Japan, represented by The GigaLaw, Douglas M. Isenberg, Attorney at Law, LLC, United States of America.
The Respondent is CONG TY TNHH 01TV SX-TM DV HOANG GIANG, CONG TY TNHH 01TV SX-TM & DV HOANG GIANG, 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 February 5, 2020. On February 6, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 9, 2020, 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. On February 13, 2020, the Center transmitted an email in English and Vietnamese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on February 17, 2020. The Respondent did not comment on the language of the proceeding. 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 in English and Vietnamese of the Complaint, and the proceedings commenced on February 24, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 15, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 16, 2020. The Center appointed Pham Nghiem Xuan Bac as the sole panelist in this matter on March 25, 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, Kubota Corporation, is a Japanese Corporation, which was founded in 1890, and specializes in agriculture, water, and living environment products, with a worldwide network over 120 areas. The Complainant owns at least 757 trademark registrations that consist of or contain the trademark KUBOTA in a variety of countries, including, but not limited to, Japanese Trademark Registration No. 634,179 dated January 16, 1964, the United States of America trademark No. 922,330 dated October 19, 1971 and Philippines Trademark Registration No. 36,119 dated October 23, 1986. In Viet Nam, where the Respondent resides, the trademark KUBOTA has been registered in a number of classes of goods and services, including, but not limited to, Classes 07 and 12 for “agricultural machines” under Vietnamese Trademark Registration Nos. 1193, 1681, 43276, 186141, 224523, and 293881 since as early as 1989. In fiscal year 2018, the Complainant has the consolidated revenue of JPY 1,850.3 billion and the consolidated net sales of JPY 885.3 billion. In this year, the Complainant counts 40,202 consolidated employees and 11,226 nonconsolidated employees. The Complainant, in connection with the operation of its business, operates a website at the The Respondent registered the Disputed Domain Name on December 16, 2016. As of the date of this Decision, the Disputed Domain Name is resolving to a web shop of the Respondent, via which, the tractors, combine harvesters bearing the trademark KUBOTA and spare parts are advertised and offered for sale. On the web shop, there is a statement that “QuocTuan Group has over 10 years of experience in the field of sales and distribution of Kubota machines.” The Complainant sent a demand letter to the Respondent on June 6, 2019, requesting for a transfer of the Disputed Domain Name. However, the Respondent did not respond to the demand letter. 5. Parties’ Contentions A. Complainant The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows: (i) The Disputed Domain Name is confusingly similar to the trademark in which the Complainant has rights. First, the Complainant contends that the Complainant owns at least 757 trademark registrations that consist of or contain the trademark KUBOTA in a variety of countries. Also, the Complainant asserts that the Disputed Domain Name was registered after over 53 years since its first registration for the trademark KUBOTA in 1964. Second, the Complainant submits that the addition of the Top-Level Domain (“TLD”) suffix “.com” in the Disputed Domain Name does not add any distinctiveness to the Disputed Domain Name. Third, the Complainant contends that Disputed Domain Name is confusingly similar to the trademark KUBOTA owned by the Complainant since the Disputed Domain Name reproduces entirely the trademark KUBOTA, which is clearly recognizable in the Disputed Domain Name. Finally, the addition of the indicator “Philippines”, which is a geographical indication, could not dispel any likelihood of confusion. (ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant submits that the elements set forth in Policy, paragraph 4(c) are not fulfilled. First, the Complainant contends that the Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use neither the trademark KUBOTA nor the Disputed Domain Name in any manner. Second, the Complainant submits that the Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services since the Respondent is using the Disputed Domain Name in connection with a website that appears to be a website for the Complainant by prominently displaying the Complainant’s trademark KUBOTA and offering for sale of the Complainant’s products. Third, the Complainant contends that the Respondent’s website under the Disputed Domain Name does not meet Oki Data principles because it does not accurately and prominently disclose the registrant’s relationship with the trademark holder. Therefore, the Respondent cannot establish rights or legitimate interests as a reseller. Furthermore, the Complainant asserts that the Respondent has not commonly known by the Disputed Domain Name. Specifically, according to the WHOIS record, the registrant of the Disputed Domain Name is “CONG TY TNHH 01TV SX-TM DV HOANG GIANG / CONG TY TNHH 01TV SX-TM & DV HOANG GIANG” and the website itself appears to identify the operator of it as “Quoc Tuan Group” – not “Kubota” or anything similar thereto. In addition, since the trademark KUBOTA has been registered worldwide and the oldest of which was registered 55 years ago, the Respondent could not be commonly known by this trademark. Finally, the Complainant submits that a court in Philippines found that the trademark KUBOTA was infringed on website under the Disputed Domain Name. In light of this order, the Respondent has no right or legitimate interest in respect of the Disputed Domain Name. (iii) The Disputed Domain Name was registered and is being used in bad faith. The Complainant asserts that the Respondent’s bad faith in the registration and use of the Disputed Domain Name is established by the fact that the Disputed Domain Name was registered by the Respondent after the Complainant's trademark KUBOTA became well known around the world. Secondly, the Complainant contends that the Respondent has registered the Disputed Domain Name primarily to disrupt the Complainant’s business. Third, the Complainant submits that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the trademark KUBOTA as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of a product or service on the Respondent’s website. Moreover, a court in the Philippines found that Quoc Tan (the entity identified on the website using the Disputed Domain Name) committed trademark infringement and trade name infringement when it used the registered trademark KUBOTA PHILIPPINES in its website at “www.kubotaphilippines.com”, so Quoc Tan is ordered to cease and desist from using the trademarks KUBOTA PHILIPPINES, KUBOTA DEVICE. In light of this order, the Complainant contends that any use of the Disputed Domain Name is in violation of this court order and, therefore, in bad faith. Finally, the Complainant sent a demand letter to the Respondent on June 6, 2019, requesting for a transfer of the Disputed Domain Name. However, the Respondent has never responded to this letter. Such failure to respond to a demand letter is additional evidence of bad faith. With the said arguments, the Complainant requests that the Disputed Domain Name be transferred to the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Procedural Issues (i) Language of the Proceeding The Complaint was filed in English. However, the Registrar confirmed that the language of the Registration Agreement was Vietnamese. As the Complaint was filed in English, the Center, in its notification dated February 13, 2020, invited the Complainant to submit either (i) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceeding should be in English, or (ii) submit the Complaint translated into Vietnamese, or (ii) a substantiated request for English to be the language of the proceeding. On February 17, 2020, the Complainant submitted a request that English be the language of the proceeding. The Respondent filed no reply. According to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the 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. Similar to previous UDRP decisions, the Panel finds that the spirit of paragraph 11(a) is to ensure fairness in the selection of language by giving full consideration to the Parties' level of comfortability with each language, the expenses to be incurred and possibility of delay in the proceeding in the event translations are required and other relevant factors (see, e.g., Deutsche Messe AG v. Kim Hyungho,WIPO Case No. D2003-0679). In the present case, the Panel takes into account the circumstances of the proceeding, including, but not limited to: (i) the fact that the Complainant, a Japanese business entity, does not appear to be able to communicate in Vietnamese, and therefore, if the Complainant was required to have the documents translated into Vietnamese, the proceeding would be unduly delayed, and the Complainant would have to incur substantial expenses for translation; (ii) the English language is quite popular in Viet Nam, where the Respondent is located, and the Disputed Domain Name itself contained the English word “philippines” as well as its associated website mostly contains English content; these suggest that the Respondent has ample knowledge of the English language and is able to communicate in English; (iii) the Respondent did not object for English to be the language of the proceeding and did not submit a response in neither English nor Vietnamese. Therefore, for the purpose of easy comprehension of the Complainant (the party majorly taking part in the proceeding) of the Panel’s decision without any necessity of translations, and in the interest of fairness to both Parties as well as the Panel’s obligation under paragraph 10(c) of the Rules, which provides that “the Panel shall ensure that the administrative proceeding takes place with due expedition”, the Panel hereby decides, under paragraph 11(a) of the Rules, that the language of the proceeding shall be English and shall render its decision in English. (ii) The Respondent’s Failure to Respond The Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant (see, e.g., Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn,WIPO Case No. D2010-1413, and M. Corentin Benoit Thiercelin v. CyberDeal, Inc.,WIPO Case No. D2010-0941). However, the Panel may draw appropriate inferences from the Respondent’s default. B. Identical or Confusingly Similar The Complainant is required to establish the following: (i) that it has trademark rights, and, if so, (ii) that the Disputed Domain Name is identical or confusingly similar to its trademark. First of all, the Panel finds that the Complainant has clearly evidenced that it has registered trademark rights to KUBOTA, well before the Disputed Domain Name was registered. Second, the Disputed Domain Name comprises the Complainant's trademark KUBOTA, in which the Complainant has exclusive rights. The difference between the Disputed Domain Name and the trademark is the addition of the suffix “philippines”, which is a country name. The Panel finds that “kubota” remains the dominant element in the Disputed Domain Name. It is well established that the addition of a country name (such as “philippines”) to a trademark does not prevent confusing similarity. Thus, in the Panel’s view, the addition of the said suffix does nothing to distinguish the Disputed Domain Name from the trademark, nor to dispel confusing similarity, as it was found in previous UDRP decisions (see, e.g., Research In Motion Limited v. Russel Donato, WIPO Case No. D2012-0726; Société des Produits Nestlé S.A. v. Cess De Los Reyes, WIPO Case No. D2011-0020). Third, the Panel finds, similarly to other UDRP panels, that the addition of the generic Top-Level Domain (“gTLD”) “.com” to the Disputed Domain Name does not constitute an element as to avoid confusing similarity for the Policy purposes (see, e.g., Volkswagen AG v. Privacy Protection Services,WIPO Case No. D2012-2066; The Coca-Cola Company v. David Jurkiewicz,WIPO Case No. DME2010-0008; Telecom Personal, S.A., v. NAMEZERO.COM, Inc.,WIPO Case No. D2001-0015; F. Hoffmann La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant's trademark KUBOTA, and the first element of the Policy is established. C. Rights or Legitimate Interests Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent's rights or legitimate interests in the Disputed Domain Name for the purposes of paragraph 4(a)(ii) of the Policy, including: “(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” The Panel finds that the Complainant has made a prima facie evidence on that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent did not refute the Complainant’s contentions. The consensus of previous UDRP decisions is that while the overall burden of proof in UDRP proceedings is on the Complainant, once a prima facie case is made, the burden of production shifts to the Respondent to come forward with relevant evidence demonstrating his rights or legitimate interests in the Disputed Domain Name (see e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270; Julian Barnes v. Old Barn Studios Limited,WIPO Case No. D2001-0121). In this instant case, the Panel finds that the Respondent has failed to meet that burden since no response was submitted for evidence to the contrary. Regarding paragraph 4(c)(i) of the Policy, the Panel finds, in light of the Complainant’s asserted facts, that no license, permission or authorization of any kind to use the Complainant’s trademark has been granted to the Respondent. There is no evidence available that the Respondent holds any registered or unregistered trademark rights for the trademark KUBOTA in any jurisdiction. Thus, the Panel finds that the Respondent has no rights in the trademark KUBOTA. A reseller or distributor may be making a bona fide offering of goods and services and thus have rights or legitimate interests in a domain name if its use meets certain requirements, which are described in the decision Oki Data Americas, Inc. v. ASD, Inc, WIPO Case No. D2001-0903 (“Oki Data”), including: - the respondent must actually be offering the goods or services at issue; - the respondent must use the site to sell only the trademarked goods (otherwise, there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods); - the site itself must accurately disclose the respondent's relationship with the trademark owner; and - the respondent must not try to “corner the market” in all relevant domain names, thus depriving the trademark owner of the ability to reflect its own mark in a domain name. In this particular case, the Panel finds the Respondent does not place any statement or disclaimer disclosing accurately its relationship with the Complainant. On the contrary, the Complainant’s trademark KUBOTA has been displayed prominently on the website under the Disputed Domain Name. In addition, there is a statement that “QuocTuan Group has over 10 years of experience in the field of sales and distribution of Kubota machines.” Besides this statement, no other representation explicitly and correctly clarifying the relationship between the Respondent and the Complainant is presented in the website under the Disputed Domain Name. Hence, the mentioned trademark use and statement may mislead consumers into believing in a connection or association between the Respondent and the Complainant, where such connection or association does not exist in reality. With such a view, the Panel finds that the unauthorized use of the Disputed Domain Name does not meet the Oki Data criteria and thus, does not constitute a bona fide use within paragraph 4(c)(i) of the Policy. Regarding paragraph 4(c)(ii) of the Policy, the Panel finds that there is no evidence showing that the Respondent has been commonly known by the Disputed Domain Name. On the contrary, in the Website under the Disputed Domain Name, the Panel finds the name of the owner of the web shop as “Công ty TNHH Một thành viên Xuất nhập khẩu Máy nông nghiệp Quốc Tuấn” (in English: “Quoc Tuan Import & Export Agricultural Machinery One-membered Co., Ltd.”). In absence of evidence on relationship between the named Quoc Tuan Import & Export Agricultural Machinery One-membered Co., Ltd. and the Respondent, the Panel opine the Respondent is not commonly known by the Disputed Domain Name. Regarding paragraph 4(c)(iii) of the Policy, the Panel finds that there is no evidence that the Respondent is making any noncommercial or fair use of the Disputed Domain Name. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, and the second element, paragraph 4(a)(ii) of the Policy is established. D. Registered and Used in Bad Faith Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, including: “(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or (ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 website or location or of a product or service on your website or location.” Each of the four circumstances in paragraph 4(b) of the Policy, if found, is an instance of “registration and use of a domain name in bad faith”. The Panel finds that the Complainant has put forth evidence that the Respondent has registered and used the Disputed Domain Name in bad faith. The Respondent did not reply to the Complainant’s contentions and, therefore, did not refute the Complainant’s contentions. The Panel further finds that the Complainant’s trademark KUBOTA have been registered in numerous countries. The Complainant’s trademark KUBOTA has been registered and used in, among other countries, Viet Nam where the Respondent resides. These trademark registrations well predate the registration of the Disputed Domain Name. The Disputed Domain Name comprises the trademark KUBOTA in its entirety, adding only the country name “philippines”. Given the extensive use of the trademark KUBOTA for agricultural products by the Complainant, which occurs in numerous countries, including Viet Nam, where the Respondent resides, it is very unlikely that the Respondent registered the Disputed Domain Name in a fortuity. Also, in consideration of the use of the Disputed Domain Name and the contents of the website thereunder, the Panel is of the view that the Respondent obviously knew of the Complainant and its trademark KUBOTA when it registered the Disputed Domain Name, and the Panel considers the registration an attempt by the Respondent as to take advantage of the Complainant’s goodwill. On the date of this Decision, the Panel accesses the Disputed Domain Name and finds that it resolves to a website shop selling tractors, combine harvesters, rice transplanters bearing the trademark KUBOTA. In addition to the adoption of the Complainant’s trademark KUBOTA as a uniquely distinctive part in the Disputed Domain Name, the Respondent uses the Complainant’s trademark on the website and falsely represents itself as an affiliate or distributor of the Complainant by the statement “QuocTuan Group has over 10 years of experience in the field of sales and distribution of Kubota machines.” Hence, the Panel takes the view that any Internet users seeking to purchase the Complainant’s KUBOTA products would be very likely to mistakenly believe that the Respondent is either connected to or associated with the Complainant. However, no such connection exists in fact. Such misleading behavior is indicative of bad faith within the meaning of paragraph 4(b)(iv) of the Policy, on the part of the Respondent. Taking into account all of the above and the available record, the Panel finds that the Disputed Domain Name was registered and used by the Respondent in bad faith and the third element under paragraph 4(a)(iii) of the Policy is established. 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 Pham Nghiem Xuan Bac
Sole Panelist
Date: April 9, 2020
Full & Egal Universal Law Academy