The Complainant is Công ty Cổ phần Công nghiệp Vĩnh Tường (Vinh Tuong Industrial Corporation), Viet Nam, represented by Vision & Associates, Viet Nam.
The Respondent is Cong ty TNHH Vietnamarch (Vietnamarch Co., Ltd), 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 October 20, 2020. On October 20, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 21, 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 and that the language of the registration agreement is Vietnamese. The Center sent an email communication to the Parties on October 28, 2020 related to the language of proceedings. In response to that email communication, the Complainant filed an amendment to the Complaint on October 29, 2020 requesting English to be the language of the proceeding. The Respondent, although invited to respond, did not respond. The matter is dealt with further below and in section 6A below. 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 the Respondent of the Complaint in English and Vietnamese, and the proceedings commenced on November 4, 2020. The notification email contained the following passage relating to the language of the proceeding: “Further to previous communications regarding language of proceedings, parties should please note the following. The Complaint has been submitted in English. Pursuant to Rules, paragraph 11, in the absence of an agreement between 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. According to information we have received from the concerned Registrar, the language of the registration agreement for the disputed domain name is Vietnamese. The Complainant has submitted a request that English be the language of the proceedings, to which the Respondent has not replied. Given the provided submissions and circumstances of this case, the Center has decided to: 1) accept the Complaint as filed in English; 2) accept a Response in either English or Vietnamese; 3) appoint a Panel familiar with both languages mentioned above, if available. In accordance with paragraph 11 of the Rules, the Panel has the authority to determine the language of proceedings. Having provided both parties with an opportunity to comment, any subsequent communications received by the Center from the parties regarding the language issue will be a matter for consideration at the discretion of the Panel (on appointment). The Panel may choose to write a decision in either language, or request translation of either party’s submissions.” In accordance with the Rules, paragraph 5, the due date for Response was November 24, 2020. The Respondent did not submit any response. Noting that fact, the Center sent an email communication to the Parties on November 26, 2020 informing them that it was proceeding to Panel Appointment. The Center appointed Tony Willoughby as the sole panelist in this matter on January 13, 2021. 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. When it came to the appointment of the Panel there was no panelist available familiar with both English and Vietnamese. The Panel is familiar with English, but not Vietnamese. For the reasons set out in section 6A below the Panel has decided that English be the language of the proceeding. On January 19, 2021 the Panel issued Procedural Order No. 1 requesting that the Complainant provide English translations of Vietnamese language Annexes 7 and 9 to the Complaint. Those translations were supplied in timely fashion and although the Respondent was given an opportunity to file a submission (in Vietnamese if it chose) in respect of those translations, the Respondent elected not to do so. 4. Factual Background The Complainant was incorporated in Viet Nam in 2005, but its predecessor founded the business in 1991. Since 2015 it has been a member of the Saint-Gobain building materials group. The Complainant is engaged in the manufacture and distribution of inter alia ceiling frames and partitions, plasterboard, decorative panels and accessories under and by reference to the name “Vĩnh Tường” and a VT-shaped or VT7-shaped logo device. The Complainant is the registered proprietor of numerous trade mark registrations covering the name “Vĩnh Tường” (hereinafter “VINH TUONG”) and the VTshaped or VT7-shaped logo device including by way of example: Vietnamese Registration No. 4-0031987-000 registered on September 3, 1999 (application filed on May 15, 1998) VINH TUONG (words and VT-shaped device) for a variety of goods and services in classes 6 and 19. Vietnamese Registration No. 4-0214008-000 registered on October 9, 2013 (application filed on December 9, 2011) VINH TUONG (words and VT7-shaped device) for a variety of goods and services in classes 6, 19 and 37. Vietnamese Registration No. 4-0250960-000 registered on September 10, 2015 (application filed on March 27, 2012) VINH TUONG (word) for a variety of goods and services in classes 6, 7, 19, 35 and 37. The Domain Name was registered on April 15, 2014 and is connected to a website offering for sale building and decorative products of various brands including products of the Complainant and featuring the Complainant’s logo, the subject of Vietnamese trade mark registration No. 4-0214008-000 referred to above. The Respondent was incorporated as a Vietnamese limited liability company under a long Vietnamese name, which appears on the Respondent’s business registration certificate in abbreviated form as “Vietnamarch Co., Ltd”. The Respondent’s website connected to the Domain Name features at its head a logo reading “VIETNAMARCH – SINCE 2002”. 5. Parties’ Contentions A. Complainant The Complainant contends that the Domain Name is confusingly similar to the Complainant’s VINH TUONG registered trade mark, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name has been registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Preliminary Matter: Language of Proceedings The Complaint was filed in English but the language of the registration agreement is Vietnamese. Paragraph 11(a) of the Rules provides that: “[u]nless 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”. Paragraphs 10(b) and 10(c) of the Rules read as follows: “(b) In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case. (c) The Panel shall ensure that the administrative proceeding takes place with due expedition. It may, at the request of a Party or on its own motion, extend, in exceptional cases, a period of time fixed by these Rules or by the Panel”. The matter is addressed by the panel in Groupe Auchan v. Yang Yi,WIPO Case No. D2014-2094 in the following terms, which the Panel endorses: “Whilst there is a language requirement that is provided for in paragraph 11(a) of the Rules, the Panel has to balance that against the other considerations of ensuring that the proceeding takes place with due expedition and that the parties are treated fairly and given a fair opportunity to present their case. The Panel is of the view that the language requirement should not cause any undue burden on the parties or undue delay (see Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593).” The amendment to the Complaint referred to in section 3 above came in the form of an email communication to the Center seeking to justify the Complainant’s filing of the Complaint in English rather than Vietnamese, the language of the registration agreement. The substance of that email was as follows: “The language of the registration agreement for the Disputed Domain Name (i) Both the Complainant and Respondent are doing business in trading of construction materials, which involve a lot of trade with overseas business partners. Of note, English is very popular in Vietnam and is the major language of international commerce; (ii) The website of the Respondent at http://tranthachcaovinhtuong.com/ contains elements presented in English as can be seen in Annex 8 of the Complaint; (iii) The Respondent’s name, Vietnamarch, contains the English element “arch” (please see https://dictionary.cambridge.org/vi/dictionary/english/arch). Further, the Respondent also called themselves as “VIETNAMARCH GROUP Since 2002”, as shown on their website at http://tranthachcaovinhtuong.com/. These facts show that the Respondent has ample knowledge of the English language. Therefore, the Complainant respectfully requests that the language of the proceeding be English and believe that this choice of language of proceeding is not prejudicial to either party in his or her abilities to articulate the arguments for the case.” The October 28, 2020 email from the Center, which prompted the above amendment to the Complaint was addressed to both Parties and included the following “Instructions to the Respondent”: “In all cases, if the Respondent is intending to participate in these proceedings, and/or has any comments on the Complainant’s submission replying to this notification, the Respondent is requested to submit these to the Center by November 2, 2020. Specifically in the case of the Complainant submitting (or indicating that it will submit) a request for the language of proceedings to be English, and the Respondent objects to such request, the Respondent is invited to indicate that objection for the record, and to submit any arguments/supporting materials (in light of the considerations enumerated in paragraph 3 above) as to why the proceedings should not be conducted in English. Please note that if we do not hear from you by this date, we will proceed on the basis that you have no objection to the Complainant’s request that English be the language of proceedings. Any submission by the Respondent to the Center that is required as a result of this notification, must be copied to the Complainant in accordance with the Rules, Paragraph 2(b) and 2(h). Such communication shall be submitted electronically to the Center by email to domain.disputes@wipo.int.” The Respondent did not respond to the Center. While the Respondent’s website does indeed contain “elements presented in English” as asserted by the Complainant, those elements are few and far between and form only a very small proportion of what is essentially a Vietnamese language website. However, the Panel accepts that English is widely used in Viet Nam in a trading context and notes that the Respondent’s name incorporates an English language element and that the Respondent is likely to employ people familiar with the English language. The Panel also bears in mind that the Respondent has shown no inclination to participate in this proceeding. It failed to file a Response, it failed to object to English being the language of this proceeding and it failed to make any submissions in response to the Complainant’s response to the above-mentioned Procedural Order No. 1. The Panel concludes that in all the circumstances it would be disproportionate to require the Complainant to re-file the Complaint in Vietnamese and that in light of the Respondent’s disinclination to participate in this proceeding, declaring that English be the language of the proceeding is most unlikely to cause the Respondent any inconvenience. The Panel declares that English be the language of the proceeding. B. General According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that: (i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. C. Identical or Confusingly Similar The Domain Name comprises the Vietnamese words “tran thach cao” (meaning “gypsum ceiling” in English) and “vinh tuong” (meaning “eternal wall” in English) and the “.com” generic Top-Level Domain identifier. VINH TUONG is also the Complainant’s registered trade mark. Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) explains the test for identity or confusing similarity under the first element of the Policy and includes the following passage: “While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.” The Complainant’s registered trade mark is readily recognizable in the Domain Name. The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights. D. Rights or Legitimate Interests As can be seen above, the Domain Name comprises a number of Vietnamese dictionary words capable of meanings apt for use in relation to products dealt in by the Parties. However, it is clear from the Respondent’s website that the words, “Vinh Tuong” are not being used by the Respondent for their dictionary meaning, but as the Complainant’s trade mark. The website features certain of the Complainant’s products along with the Complainant’s logo precisely as registered by the Complainant under Vietnamese Trade Mark Registration No. 4-0214008-000 as described in section 4 above. The Panel accepts the Complainant’s assertion that it has not authorized the Respondent’s use of the VINH TUONG trade marks in this or any other way. However, there are circumstances where the unauthorized use of a third party’s trade mark in a domain name may give rise to the acquisition by a respondent of rights or legitimate interests in respect of that domain name. The issue frequently falls to be considered where, as here, the respondent is using the domain name to connect to a website selling the goods of the complainant. The issue is addressed in section 2.8.1 of WIPO Overview 3.0: “Panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Outlined in the “Oki Data test” [a test derived from the decision in Oki Data Americas, Inc. v. Asdinc.com WIPO Case No. D2001-0903], the following cumulative requirements will be applied in the specific conditions of a UDRP case: (i) the respondent must actually be offering the goods or services at issue; (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. The Oki Data test does not apply where any prior agreement, express or otherwise, between the parties expressly prohibits (or allows) the registration or use of domain names incorporating the complainant’s trademark.” Here the Respondent’s website is offering the Complainant’s products, but fails the Oki Data test primarily because other brands of product (including products of the Respondent) are also offered. The Complainant has produced evidence to show that over the years since at least 2005 the Complainant has built up a significant reputation and goodwill under and by reference to the “Vinh Tuong” name and that the Respondent is likely to have included the Complainant’s trade mark in the Domain Name in order to attract traffic to its website with a view to selling a broader range of products than merely those of the Complainant. At all events the Complainant has made out a prima facie case under this element of the Policy; in other words, a case calling for an answer from the Respondent. But the Respondent has not provided an answer. The Panel finds on the evidence adduced by the Complainant and on the balance of probabilities that the Respondent has no answer to the Complainant’s contentions. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. E. Registered and Used in Bad Faith In the absence of any explanation from the Respondent and following on from the Panel’s finding under D above, the Panel finds on the unchallenged evidence of the Complainant that the Complainant’s contentions are likely to be well-founded. The Complainant contends that the Respondent’s purpose in registering a domain name featuring the Complainant’s trade mark, a trade mark which on the evidence of the Complainant has built up in its field of activity a substantial reputation and goodwill, was to deceive Internet users into believing that the website connected to the Domain Name was a website devoted to the Complainant’s products. The evidence demonstrates that visitors to the website are faced with the opportunity to purchase a wide range of products thereby providing revenue for the Respondent. If all those products were products of the Complainant, the Respondent’s choice of domain name might have had some justification. As it is, many of the products are products of other manufacturers including the Respondent. Visitors are lured into the website by the fame of the Complainant’s trade marks and then presented with commercial opportunities going far wider than the Complainant’s brand. Paragraph 4(b) of the Policy sets out a non-exhaustive list of 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. The Complainant relies upon sub-paragraph (iv), which provides: “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location.” The Panel finds that the Domain Name has been registered and is being used in bad faith within the meaning of paragraphs 4(b)(iv) and 4(a)(iii) of the Policy. 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 Domain Name, Tony Willoughby
Sole Panelist
Date: February 5, 2021
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