The Complainants are Givi Vietnam Co., Ltd., Viet Nam, and Kelin S.R.L., Italy, represented by Investip Industrial Property Joint Stock Company, Viet Nam.
The Respondent is Huynh Nguyen Luu Vien, Viet Nam. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 11, 2020. On August 11, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 12, 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 August 13, 2020, the Complainants filed with the Center an amended Complaint, in which the Remedies Requested was changed. On August 20, 2020, the Center transmitted an email in English and Vietnamese to the Parties regarding the language of the proceeding. The Complainants confirmed the request that English be the language of the proceeding on August 21, 2020, and also confirmed the Remedies Requested in the amended Complaint filed with the Center on August 13, 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 of the Complaint, and the proceedings commenced on August 26, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 15, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 16, 2020. The Center appointed Pham Nghiem Xuan Bac as the sole panelist in this matter on September 24, 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. On October 15, 2020, the Panel issued an Administrative Panel Procedural Order No. 1, requesting the Complainants’ clarification on the requested remedy. On October 20, 2020, the Complainants replied, clarifying that they were seeking a “transfer” of the Disputed Domain Name to the Complainants. 4. Factual Background The Complainants are Kelin S.R.L. and its Vietnamese licensee, Givi Vietnam Co., Ltd., specializing in the production, sale and advertising of motorcycle accessories. The Complainants started using the mark GIVI 30 years ago and are now able to offer their products in more than 85 countries. In Viet Nam, since 2009, the Complainants have developed their distribution system under the nrme Givi Point. The trademark GIVI, device has been registered for motorcycle accessories in Classes 09, 12, 18, 25 and 35 in a variety of countries, including in Viet Nam, where the Respondent resides, under International Registrations No. 764256 dated July 5, 2001 and No. 837911 dated June 3, 2004. The Respondent registered the Disputed Domain Name According to what the Complainants asserted, the Respondent was an employee of Givi Vietnam Co., Ltd. After leaving Givi Vietnam Co., Ltd., the Respondent found a company named “Công Ty TNHH Thương Mại – Dịch Vụ Phụ Kiện Phượt” (in English: “Phuot Accessories Trading – Service Company Limited”), which became a sales agent of Givi Vietnam Co., Ltd. on December 20, 2018. To settle this dispute, the Complainants contacted with the Respondent via the Registrar, Mat Bao Corporation. On June 3, 2020, the Registrar sent an email to the Complainants, informing them that the Respondent proposed to sell the Disputed Domain Name at the price of USD 25,000. 5. Parties’ Contentions A. Complainants The Complainants contend 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 Complainants have rights. First, the Complainants contend that they own the GIVI, device trademark in numerous jurisdictions, including, but not limited to, Viet Nam. Second, the Complainants assert that the Disputed Domain Name is confusingly similar to Trademark GIVI device owned by the Complainants since the element “givi” in the Disputed Domain Name is confusingly similar to the registered trademark GIVI, device, and the addition of the non-distinctive word “point” could not dispel any likelihood of confusion. On the contrary, this term increases the likelihood of confusion since “Givi point” means a typical shop selling GIVI products and is owned by the Complainants. Furthermore, the stylization of the registered trademark GIVI, device is not enough for distinguishing the Disputed Domain Name from the registered trademark GIVI, device. (ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainants submit that the elements set forth in Policy, paragraph 4(c) are not fulfilled. First, the Complainants do not permit the Respondent to register nor to use the trademark GIVI, device and trade name GIVI. Second, the Complainants assert that the Respondent signed the Contractual Obligations stating that the use of the wording “givi” in any Internet address is strictly reserved for the Complainants, and any use of the Intellectual Property must be approved by the Complainants in writing. Through such Contractual Obligations as well as the Labor Contract between two parties, the Respondent should understand that: (a) the Respondent does not have the right to use the word “givi” in any Internet address; and (b) the Respondent and/or his company is not a “GIVI POINT” - the typical shop owned by the Complainants. (iii) The Disputed Domain Name was registered and is being used in bad faith. The Complainants submit that the Respondent registered the Disputed Domain Name primarily for the purpose of selling the Disputed Domain Name to the Complainants at the price of USD 25,000, which is in excess of the Respondent’s out-of-pocket cost directly related to the Disputed Domain Name. In addition, the Disputed Domain Name has not been used by the Respondent for business since the registration date of December 4, 2013. Second, the Complainants assert that since the Respondent was a salesman, and after that a dealer, of the Complainants, the Respondent knew of the Complainants’ trademark GIVI, device when registering the Disputed Domain Name. With the said arguments, the Complainants request that the Disputed Domain Name The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings A. Procedural Issues (i) Consolidation of Multiple Complainants The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides at section 4.11.1, in respect of the issue “Multiple complainants filing against a single respondent” that: “Paragraph 10(e) of the UDRP Rules grants a panel the power to consolidate multiple domain name disputes. [...] In assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation.” The present proceeding involves two Complainants bringing a single complaint against a common Respondent. The Panel finds, based on the documents as filed, that the Complainants have a specific common grievance against the Respondent, in that the Complainants have a common legal interest as related entities that hold and use the trademark GIVI. Therefore, the Panel finds that it is equitable and procedurally efficient to grant the Complainants’ request for consolidation. (ii) Respondent’s Identity The Panel notes that the present case involves privacy registration services. In the Complaint as originally filed and then amended, the Respondent was identified as “Mr. Huynh Nguyen Luu Vien”, addressed at “[a]”. However, on August 12, 2020, the Registrar revealed that the underlying registrant is still named “Huynh Nguyen Luu Vien”, but at another address of “[b]”. In order to verify the identity of the Respondent, the Panel conducted an independent search on the Vietnam National Portal of Enterprise Registration and found that the address “[b]”, as revealed by the Registrar, is also the previous headquarter address of the Respondent’s company “Phuot Accessories Trading – Service Co., Ltd”, which has been relocated to the current address “[a]” later. Therefore, it is evidence that Mr. Huynh Nguyen Luu Vien, the Respondent of the Complaint, is exactly the Registrant of the Disputed Domain Name. (iii) 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 August 20, 2020, invited the Complainants to submit either (i) satisfactory evidence of an agreement between the Complainants and the Respondent to the effect that the proceeding should be in English, or (ii) submit the Complaint translated into Vietnamese, or (iii) a substantiated request for English to be the language of the proceeding. On August 21, 2020, the Complainants submitted a request that English be the language of the proceeding. 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 Kelin S.R.L., an Italian business entity, does not appear to be able to communicate in Vietnamese, and therefore, if the Complainants were required to have the documents translated into Vietnamese, the proceeding would be unduly delayed, and the Complainants would have to incur expenses for translation; (ii) the English language is quite popular in Viet Nam, where the Respondent is located; and (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 Complainants (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. (iv) 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 Complainants (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 Complainants are required to establish the following: (i) that they have trademark rights, and, if so, (ii) that the Disputed Domain Name is identical or confusingly similar to the trademark. First of all, the Panel finds that the Complainants have clearly evidenced that they have registered trademark rights to GIVI, device, well before the Disputed Domain Name was registered. Second, the Disputed Domain Name comprises the Complainant’s GIVI mark, in which the Complainants have exclusive rights. The difference between the Disputed Domain Name and the trademark is the addition of the suffix “point”, which is an indistinctive term. The Panel finds that “givi” remains the dominant element in the Disputed Domain Name. It is well established that the addition of an indistinctive term (such as “point”) to a trademark does not prevent confusing similarity. Thus, in the Panel’s view, the addition of the said prefix 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., Philip Morris Products S.A. v. Halil Cakir, WIPO Case No. D2018-1656; Continental Exchange Solutions Inc. DBA Ria Financial v. Red Soul, WIPO Case No. D2013-1690; SAP AG v. Subba Rao Parvathaneni,WIPO Case No. D2010-1813). 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 Complainants’ trademark GIVI, 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 Complainants have made a prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent did not refute the Complainants’ contentions. The consensus of previous UDRP decisions is that while the overall burden of proof in UDRP proceedings is on the Complainants, once a prima facie 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, in review of the documents as submitted by the Complainant, the Panel finds that the Respondent used to work as an employee of the Complainant, and then set up its own company under the name “Phuot Accessories Trading- Service Company Limited”, which then became the Complainants’ dealer. In the Contractual Obligations signed on January 7, 2019 by the Respondent as the legal representative of Phuot Accessories Trading – Service Company Limited, it is stated that “the use of the wording ‘givi’ in any Internet address is strictly reserved for our company (the Complainant), and covered by copyright. Any use of our copyright and intellectual property must be approved in writing from our office (the Complainant)”. Therefore, the Panel finds, in light of the Complainants’ asserted facts, that no license, permission or authorization of any kind to use the Complainants’ trademark has been granted to the Respondent. In addition, there is no evidence available that the Respondent holds any registered or unregistered trademark rights in any jurisdiction. Thus, the Panel finds that the Respondent has no rights in the trademark GIVI. Regarding paragraphs 4(c)(ii) and 4(c)(iii) of the Policy, the Panel finds that there is no evidence that would suggest that the Respondent, as an individual, business, or other organization, has been commonly known by the Disputed Domain Name, or that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name. In fact, as it appears following the Complainants’ assertions and evidence with regard to the Respondent’s registration of the Disputed Domain Name, the Respondent had full knowledge of the trademark GIVI and had an intention to gain profit by riding on the goodwill and reputation of the Complainants. 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 Complainants have put forth evidence that the Respondent has registered and used the Disputed Domain Name in bad faith. The Respondent did not reply to the Complainants’ contentions and, therefore, did not refute the Complainants’ contentions. The Panel further finds that the Complainant’s trademarks GIVI have been registered in numerous countries. The Complainants’ trademarks have 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 GIVI in its entirety, adding only the indistinctive term “point”. Given the extensive use of the trademark GIVI for accessories for motorcycles by the Complainants, which occurs in numerous countries, including Viet Nam, where the Respondent resides, and that as said, the Respondent used to be an employee of the Complainants before the registration date of the Disputed Domain Name, and then became the Complainants’ dealer, it is very unlikely that the Respondent registered the Disputed Domain Name in a fortuity. Instead, the Panel is of the view that the Respondent obviously knew of the Complainants and their trademark GIVI at the time he registered the Disputed Domain Name, and the Panel considers the registration an attempt by the Respondent as to take advantage of the Complainants’ goodwill. It is further noted that as of the date of this Decision, the Disputed Domain Name Previous UDRP panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. While UDRP panels will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put. The Panel finds that the Complainants have established that the Respondent registered the Disputed Domain Name Further, the Panel also notes that the Respondent offered the Disputed Domain Name for sale at the price of USD 25,000, as mentioned in the correspondence email to the Complainants on June 3, 2020. With the said fact, the Panel opines that the Respondent registered the Disputed Domain Name not for actual use, but primarily for the purpose of selling it to the Complainants for a commercial gain, should he stand a chance. This is indicative of bad faith under paragraph 4(b)(i) of the Policy in the Panel’s view. 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: October 22, 2020
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