The Complainant is VNG Corporation, Viet Nam, represented internally.
The Respondent is John Robb / Park.io Privacy, Privacy.cc, United States of America.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2021. On December 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 22, 2021, and January 18, 2022, the Registrar and the .io Registry transmitted by email to the Center their verification responses 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 January 18, 2022, 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 on January 18, 2022.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the .IO Domain Name Dispute Resolution Policy (the “Policy”), the Rules for .IO Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .IO 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 January 19, 2022. In accordance with the Rules, paragraph 5, the due date for Response was February 8, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 10, 2022.
The Center appointed Adam Taylor as the sole panelist in this matter on February 16, 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.
On March 3, 2022, the Respondent emailed the Center stating “[T]hank you for your patience as we were not able to respond until today!” and purporting to set out its Response. Paragraph 10(d) of the Rules provides that the Panel shall consider the admissibility, relevance, materiality and weight of the evidence. The Panel has decided not to admit the Response as it was filed over three weeks late, without any explanation for the delay and after the due date for the decision, which had been notified to the Respondent. The Panel would add, however, that even if it had been admitted, the late Response (which it has read) would have made no difference to the outcome of this case.
4. Factual BackgroundThe Complainant has operated an instant messaging app called “Zalo” since 2012. The app currently delivers some 1.5 billion messages per day, with over 100 million accounts worldwide.
The Complainant’s main website is located at “www.zalo.me”.
The Complainant owns many trade marks for ZALO including International Registration No. 1308037 for the stylised term ZALO, registered on December 28, 2015, in classes 9, 38, 41, and 42.
The disputed domain name was registered on April 25, 2021.
On December 12, 2021, the Complainant emailed the Respondent asserting that the disputed domain name was liable to mislead Internet users and tarnish the Complainant’s well-known trade mark. The Complainant invited the Respondent to transfer the disputed domain name to the Complainant at a reasonable price.
The Respondent replied on December 14, 2021, claiming that it was the auctioning the disputed domain name, that it had already been offered USD 95,000 for the disputed domain name by a “San Francisco-based VC-backed Tech Startup that intends to launch a SaaS (software as a service) product”. The Respondent invited the Complainant to make an offer for the disputed domain name, or to purchase it at the “buy it now” price of USD 225,000.
On December 14, 2021, the Complainant responded that the offer was very high and noted that the Complainant was the exclusive owner of the well-known ZALO trade mark. The Complainant asked the Respondent to explain why the price was so high or to provide a link to the auction. The Respondent did not respond.
As of December 21, 2021, the disputed domain name resolved to a Registrar holding page, which included the message “INTERESTED IN THIS DOMAIN? GET IN TOUCH” followed by a link to contact the owner of the disputed domain name.
5. Parties’ Contentions A. ComplainantThe following is a summary of the Complainant’s contentions.
The Complainant’s mark is known worldwide and is very famous.
The disputed domain name is identical or confusingly similar to the Complainant’s trade mark.
The Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant has not authorised the Respondent to use its mark.
The Respondent does not own any trade mark relation to the disputed domain name. Nor is the Respondent commonly known by the disputed domain name.
The holding page used for the disputed domain name does not constitute a bona fide offering of goods or services.
The disputed domain name was registered or is being used in bad faith.
They disputed domain name was registered only eight months ago, long after launch of the Complainant’s highly popular service.
The Complainant created the highly distinctive word “zalo”, which is not one that anyone else would choose unless seeking to create an impression of an association with the Complainant.
The Respondent set out to blackmail the Complainant by claiming that it had received an offer for the disputed domain name from a competitor of the Complainant and by seeking an unreasonable price from the Complainant, many times higher than the actual cost of the disputed domain name.
The disputed domain name constitutes a passive holding in bad faith and/or has been used to promote the Registrar’s services by creating a likelihood of confusion in accordance with paragraph 4(b)(iv) of the Policy.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsUnder the Policy, the Complainant is required to prove on the balance of probabilities that:
- the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights;
- the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- the disputed domain name has been registered or is being used in bad faith.
The Complainant has established rights in the mark ZALO by virtue of its registered trade marks as well as unregistered trade mark rights deriving from its extensive worldwide use of that mark.
Disregarding the country code Top-Level Domain (“ccTLD”), i.e., “.io” suffix, the disputed domain name is identical to the Complainant’s trade mark. See, for example, Government Employees Insurance Company (“Geico”) v. Privacy.cc / Bulent Tekmen,
WIPO Case No. DIO2020-0003. Accordingly, the Panel finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
As explained in section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), 1 the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element.
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
Paragraph 4(c) of the Policy gives examples of circumstances which, if proved, suffice to demonstrate that a respondent possesses rights or legitimate interests.
As to paragraph 4(c)(i) of the Policy, there is no evidence of any use of the disputed domain name for a bona fide offering of goods or services, nor of any demonstrable preparations for such an offering.
Nor is there any evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.
For the above reasons, the Panel concludes that the Complainant has established the second element of paragraph 4(a) of the Policy.
C. Registered or Used in Bad FaithUnder the Policy, it is sufficient for the Complainant to establish that the disputed domain name was either registered or is being used in bad faith.
For the following reasons, the Panel is satisfied that the disputed domain name was registered in bad faith:
1. The Complainant’s mark, which is distinctive and well-known, long predates the disputed domain name.
2. The Respondent has failed to provide any evidence of actual or contemplated good-faith use of the disputed domain name.
3. The Respondent’s email of December 14, 2021, did not deny knowledge of the Complainant’s mark or contest the Complainant’s assertion that the disputed domain name was liable to mislead Internet users.
4. In that email, the Respondent claimed to have received a substantial offer for the disputed domain name from a San Francisco-based company; and the Panel notes that the Respondent has not disputed the Complainant’s assertion that the alleged offeror was a competitor of the Complainant. Furthermore, the Respondent’s email asserted that the disputed domain name was under auction, but the Respondent failed to verify this when requested by the Complainant. In these circumstances, and in the absence of any justification from the Respondent, the Panel considers it reasonable to infer that the Respondent’s communication attempted blackmail and/or misrepresentation in order to encourage the Complainant to pay a substantial price for the disputed domain name.
For all of the above reasons, the Panel considers that the Complainant has established the third element of paragraph 4(a) of the Policy.
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,
Adam Taylor
Sole Panelist
Date: March 3, 2022
1 Although WIPO Overview 3.0 is directed to the Uniform Domain Name Dispute Resolution Policy (“UDRP”), given the similarity between the UDRP and the Policy, it is appropriate to have regard to these principles except to the extent that the Policy diverges from the UDRP.