The Complainant is Hochdorf Swiss Nutrition AG, Switzerland, represented by Troller Hitz Troller & Partner, Switzerland.
The Respondent1 is Dao Tuan Minh, Viet Nam and Hoang Hoa Trung, Công Ty Cổ Phần Sinh Học Dược Phẩm Ba Đình (Ba Dinh Biopharmaceutical Joint Stock Company), Viet Nam.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2021. On December 23, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 24, 2021, 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. The Center sent an email communication to the Complainant on December 26, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint in English on January 4, 2022.
On December 26, 2021, the Center transmitted an email communication to the Parties in English and Vietnamese regarding the language of the proceeding. On December 27, 2021 and December 28, 2021, the Complainant requested that English be the language of the proceeding. On December 27, 2021 and January 4, 2022, the Respondent Dao Tuan Minh requested that Vietnamese be the language of the proceeding.
The Center verified that the Complaint together with the amended 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 January 5, 2022. In accordance with the Rules, paragraph 5, the due date for Response was January 25, 2022. The Respondent did not submit any formal response. On January 26, 2022, the Center informed the Parties that it would proceed to panel appointment.
The Center appointed Pham Nghiem Xuan Bac as the sole panelist in this matter on February 3, 2022. 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 BackgroundThe Complainant, Hochdorf Swiss Nutrition AG, is a subsidiary of Hochdorf-Group specializing in development, production and selling of nutritional products and milk-based products. According to the Complainant, the first use of BIMBOSAN trademarks dates back to 1954, and the Complainant has acquired the Swiss stock company Bimbosan AG in 2018 and has merged with effect of June 2021. Besides Switzerland, the Complainant distributes the Bimbosan-branded products internationally, including but not limited to China, Germany, Singapore and Viet Nam.
The Complainant’s trademarks BIMBOSAN have been registered for goods in Classes 5, 29, 30 and 32 in a variety of countries under a number of trademark registrations, including but not limited to the Swiss trademark registration No. 610914 registered on January 27, 2011; and the International registration No. 1119884 registered on April 27, 2012 designating Viet Nam, among others.
Additionally, the Complainant is the registrant of many domain names featuring the trademarks BIMBOSAN, notably the domain names
The Disputed Domain Name
The Complainant sent a cease and desist letter to the Respondent “Dao Tuan Minh” via email on July 29, 2021, offering an amount of USD 300 in exchange for transfer of the Disputed Domain Name. On the same day, Dao Tuan Minh replied to the cease and desist letter, counteroffering the amount of USD 1,000 for the Disputed Domain Name. On August 12, 2021, the Complainant sent a further email to Dao Tuan Minh, asking him to shut down the website under the Disputed Domain Name first, before discussing the further proceeding. However, Dao Tuan Minh did not respond further nor did he shut down the website.
5. Parties’ Contentions A. ComplainantThe 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 is the registered owner of trademark registrations for BIMBOSAN in numerous jurisdictions. Further, the Complainant submits that the trademarks BIMBOSAN has been used and registered before the registration of the Disputed Domain Name.
Second, the Complainant asserts that the Disputed Domain Name is confusingly similar to the trademarks BIMBOSAN owned by the Complainant since the Disputed Domain Name incorporates the Complainant’s trademarks BIMBOSAN in their entirety, and the addition of the geographical term “vietnam” could not dispel any likelihood of confusion.
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
First, the Complainant argues that the Respondent has no rights and legitimate interests in the registration and use of the Disputed Domain Name because the Complainant is the legal owner of the trademarks BIMBOSAN. Further, conducting a search for the term “Bimbosan” on Google leads to a list of results showing a connection with the Complainant.
Second, the Complainant submits that it has not authorized, licensed or permitted the Respondent to register or use the Disputed Domain Name or to use the trademarks BIMBOSAN as an element of a domain name. Also, the Respondent is not affiliated with the Complainant in any way. In addition, there is no other competitor commonly known by offering goods or services under the sign Bimbosan.
Also, the Complainant argues that the Respondent copied the design of the Complainant’s website at “www.bimbosan.com” and offered for sale the products having identical packaging with those of the Complainant in order to mislead customers into thinking that they actually are on the Complainant’s website. By copying the Complainant’s BIMBOSAN logo, the Respondent is neither making a legitimate noncommercial nor fair use of the Disputed Domain Name without intent for commercial gain to misleadingly divert consumers.
In light of these, the Complainant argues that the Respondent cannot reasonably pretend that it was intending to develop a legitimate activity through the Disputed Domain Name. Further, it is not visible that the Respondent is commonly known by the Disputed Domain Name.
Finally, the Complainant submits that the Respondent redirected the Disputed Domain Name to the Complainant’s website at “www.bimbosan.ch” and such redirection has been created with the intention of misleading Internet users. Thus, the Respondent is not using the Disputed Domain Name in connection with any bona fide offering of goods or services.
(iii) The Disputed Domain Name was registered and is being used in bad faith.
First, the Complainant argues that the Respondent registered the Disputed Domain Name in bad faith to gain a commercial advantage by purposely misleading the consumers.
Second, the Complainant contends that the Disputed Domain Name has been registered and is being used in bad faith since the Respondent has already known of the Complainant and the trademarks BIMBOSAN when it registered the Disputed Domain Name since a quick search for the sign Bimbosan on the Internet would have revealed the Complainant’s domain names, worldwide business activities or trademark registrations. Further, the Disputed Domain Name was registered many years after the Complainant’s first BIMBOSAN trademark registration in 2010, and the Respondent copied the Complainant’s logo Bimbosan, the design and layout of the Complainant’s website at “www.bimbosan.com” and placed counterfeit products on the website under the Disputed Domain Name.
Third, the Complainant contends that the Respondent’s counteroffer of the transfer of the Disputed Domain Name in exchange for the payment of USD 1,000 is further evidence of bad faith in registration and use of the Disputed Domain Name.
Finally, the Complainant argues that the use of the Disputed Domain Name to redirect the traffic to the Complainant’s own website implies bad faith since the Respondent may at any time redirect Internet traffic to a website that does not belong, or associate with the Complainant.
With the said arguments, the Complainant requests that the Disputed Domain Name be transferred to the Complainant.
B. RespondentApart from the offer from the Respondent Dao Tuan Minh to transfer the Disputed Domain Name for USD 1,000 prior to the proceeding, and his request for Vietnamese to be the language of the proceeding, the Respondent did not formally reply to the Complainant’s contentions.
6. Discussion and Findings A. Procedural IssuesI. The Respondent’s Identity
The Panel notes that at the time the Complaint was filed on December 23, 2021, the Respondent was identified as “Dao Tuan Minh”, as shown in the WhoIs record. However, on December 24, 2021, the Registrar revealed the underlying registrant “Hoang Hoa Trung, Công ty cổ phần Sinh học Dược phẩm Ba Đình (Ba Dinh Biopharmaceutical Joint Stock Company)”. The Center sent an email communication to the Complainant on December 26, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint.
On January 4, 2022, the Complainant filed an amended Complaint, adding the underlying registrant “Hoang Hoa Trung, Công ty cổ phần Sinh học Dược phẩm Ba Đình (Ba Dinh Biopharmaceutical Joint Stock Company)” as provided by the Center.
In this regard, the Panel finds that there is a connection between the individual “Dao Tuan Minh”, the registrant shown in the WhoIs record, and the underlying registrant “Hoang Hoa Trung, Công ty cổ phần Sinh học Dược phẩm Ba Đình (Ba Dinh Biopharmaceutical Joint Stock Company)” disclosed by the Registrar, based on the followings:
- the phone number “0979090538” of Dao Tuan Minh as shown in the WhoIs record of the Disputed Domain Name is displayed on the website thereunder, for example, at “www.bimbosanvietnam.com/?product=ha-noi-chuyen-tien-quoc-te-chau-au-euro-va-nguoc-lai-phi-chi-tu-1”;
- Dao Tuan Minh responded to the Complainant’s cease and desist letter, and the Center’s email of the language of the proceeding;
- the underlying registrant disclosed by the Registrar did not have any objection to the communications from Dao Tuan Minh during the proceeding nor did it assert that Dao Tuan Minh has nothing to do with the Disputed Domain Name.
Accordingly, the Panel finds that the Disputed Domain Name is under a common control of both Dao Tuan Minh and Hoang Hoa Trung, Công ty cổ phần Sinh học Dược phẩm Ba Đình (Ba Dinh Biopharmaceutical Joint Stock Company). Hence, for thorough consideration of this case, the Panel hereby decides to record both “Dao Tuan Minh” and “Hoang Hoa Trung, Công ty cổ phần Sinh học Dược phẩm Ba Đình (Ba Dinh Biopharmaceutical Joint Stock Company)” as the named Respondent.
II. Language of the Proceeding
The Complaint was filed in English. However, the Registrar confirmed that the language of the Registration Agreement is Vietnamese.
As the Complaint was filed in English, the Center, in its notification dated December 26, 2021, 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 (iii) a substantiated request for English to be the language of the proceeding by December 29, 2021.
On December 27 and December 28, 2021, the Complainant sent two emails to the Center, requesting that English be the language of the proceeding.
On December 27, 2021 and January 4, 2022, the Respondent submitted that he did not understand English and requested that Vietnamese 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) of the Rules 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 the 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 following circumstances of the proceeding, including, but not limited to:
(i) the fact that the Complainant, a Swiss 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 resides, especially in the trading context; the website under the Disputed Domain Name contains English content; and as proven by the Complainant, the Respondent Dao Tuan Minh in his email dated July 29, 2021, has replied to the cease and desist letter of the Complainant in English. These suggest that the Respondent has ample knowledge of the English language and be able to communicate quite well in English.
Therefore, in the interests 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.
III. The Respondent’s Failure to Respond
The Respondent’s failure to reply to the Complainant’s contentions 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 in light of the particular facts and circumstances of the case.
B. Identical or Confusingly SimilarThe Complainant is required to establish the two following elements: (i) that it has trademark rights, and, if so, (ii) that the Disputed Domain Name is identical or confusingly similar to its trademark.
First, the Panel finds that the Complainant has evidenced that it has trademark rights in and to the trademarks BIMBOSAN, which were registered in a number of countries before the registration of the Disputed Domain Name.
Second, the Disputed Domain Name comprises entirely the Complainant's BIMBOSAN trademarks, in which the Complainant has exclusive rights. The difference between the Disputed Domain Name and the trademarks BIMBOSAN is the addition of the suffix “vietnam” which is the country of Viet Nam where the Respondent resides.
The Panel finds that “bimbosan” remains clearly recognizable in the Disputed Domain Name. It is well established that the addition of a geographical identifier does not prevent a finding of confusing similarity, as it was found in previous UDRP decisions (see, e.g., International Business Machines Corporation v. Le Van Hai,WIPO Case No. D2019-3000; Philip Morris Products S.A. v. Nguyen Van Thanh,WIPO Case No. D2019-1867; Supercell Oy v. See Privacy Guardian.org / Mediastack,WIPO Case No. D2017-2177; Johnson & Johnson v. Tung Nguyen, WIPO Case No. D2017-1635; SAP AG v. Subba Rao Parvathaneni,WIPO Case No. D2010-1813).
Finally, the Panel finds, similarly to other UDRP panels, that the addition of the generic Top-Level Domain (“gTLD”) “.com” to the Disputed Domain Name is viewed as a standard registration requirement and as such is disregarded under the first element for confusing similarity test (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).
Based on the foregoing findings, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s BIMBOSAN trademarks, and paragraph 4(a)(i) of the Policy is established.
C. Rights or Legitimate InterestsParagraph 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 out a prima facie case 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 its 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 formal Response was submitted providing arguments or 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 in any kind to use the Complainant’s BIMBOSAN trademarks has been granted to the Respondent. There is no evidence available that the Respondent holds any registered or unregistered trademark rights in any jurisdiction related to Bimbosan. Thus, the Panel finds that the Respondent has no rights in the term Bimbosan.
A reseller or distributor may be making a bona fide offering of goods and services and thus, has rights to 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 or services (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 and prominently 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 and prominently its relationship with the Complainant on the website under the Disputed Domain Name. Further, the Respondent claimed itself as “Bimbosan Vietnam”, and the website under the Disputed Domain Name contains the Complainant’s logo and trademarks BIMBOSAN, as well as the introduction about the Complainant at “https://bimbosanvietnam.com/?page_id=91”. These may mislead consumers into believing that there is a connection or association between the Respondent and the Complainant, where such connection or association does not exist in reality.
In addition, the Panel finds that, the Respondent also advertises and offers for sales of the nutritional products under other brands, such as Kindervital, Schoenenberger, Blutquick, Mommy’s Bliss, Salus and California Farms, besides the Bimbosan-branded products.
With such a view, the Panel finds that the 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 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. Also, no evidence or argument supports that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name. In fact, as it appears following the Complainant’s assertions and evidence with regard to the Respondent’s registration of the Disputed Domain Name, the Respondent had full knowledge of the BIMBOSAN trademarks and had an intention to gain profit by riding on the goodwill and reputation of the Complainant.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, and the second element under paragraph 4(a)(ii) of the Policy is established.
D. Registered and Used in Bad FaithParagraph 4(b) of the Policy lists four circumstances that, without limitation, shall be evidence of the registration and use of a domain name in bad faith:
“(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 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.”
The above four circumstances are not exhaustive and bad faith may be found by the Panel alternatively.
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 formally reply to the Complainant’s contentions and, therefore, has not refuted the Complainant’s contentions.
The Panel has considered the Complainant’s assertions and evidence with regard to the Respondent’s registration of the Disputed Domain Name. In this regard, the Panel finds that the Complainant’s BIMBOSAN trademarks have been registered in a variety of jurisdictions around the world. In addition, the Complainant’s BIMBOSAN trademarks have been put in use for a long period of time and have gained certain reputation in the sector of nutritional products, especially baby foods. The Complainant’s registrations and use of the trademarks BIMBOSAN and its domain names
The Disputed Domain Name comprises the BIMBOSAN trademarks in their entirety, adding the geographical identifier “vietnam” at the end. Given the extensive use of the BIMBOSAN trademarks for nutritional products by the Complainant, which occurs in numerous countries, 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 BIMBOSAN trademarks when it registered the Disputed Domain Name. Thus, the Panel considers the registration of the Disputed Domain Name is an attempt by the Respondent as to take advantage of the Complainant’s reputation and goodwill in its BIMBOSAN trademarks.
On the date of this Decision, the Panel accesses the Disputed Domain Name and finds that it is still resolving to an online store offering nutritional products branded with the Complainant’s trademarks BIMBOSAN. The Panel further notes that when clicking certain tabs on the website, e.g., “products”, the website redirects Internet users to the Complainant’s website at “www.bimbosan.ch”. In addition to the adoption of the Complainant’s BIMBOSAN trademark as a uniquely distinctive part in the Disputed Domain Name, the Respondent also uses the Complainant’s trademarks and logo on the website and the sign “Bimbosan Vietnam” which appears to suggest that the website is related to the Complainant’s business in Viet Nam.
The Panel takes the view that any Internet users seeking to purchase the Complainant’s BIMBOSAN products would very likely mistakenly believe that the Respondent is either connected to or associated with the Complainant, while 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 is being used by the Respondent in bad faith and the third element under paragraph 4(a)(iii) of the Policy is established.
7. DecisionFor 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: February 17, 2022
1 For reasons explained in section 6A.I. below, the Panel will refer to the Respondents collectively as “the Respondent” unless it is necessary to refer to them separately.