WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
OVH SAS v. Nguyen Thi Kim Trung and Vu Xuan Duoc
Case No. D2012-1989
1. The Parties
The Complainant is OVH SAS of Roubaix, France, represented internally.
The Respondents are Nguyen Thi Kim Trung and Vu Xuan Duoc of Hung Yen, Viet Nam.
2. The Domain Names and Registrar
The disputed domain names <ovhdrive.com> and <ovhserver.com> are registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on October 9, 2012. On October 10, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 11, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name <ovhserver.com> which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 15, 2012.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 16, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 5, 2012. The Respondent did not submit a formal response. Accordingly, the Center notified the Parties that it would be proceeding to Panel Appointment on November 16, 2012.
The Center appointed James A. Barker as the sole panelist in this matter on November 16, 2012. 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 disputed domain name <ovhserver.com> was registered on July 6, 2012. The disputed domain name <ovhdrive.com> was registered on June 27, 2012. Evidence of the creation dates for the disputed domain names (which the Panel has, in the absence of evidence to the contrary, treated as synonymous with the registration dates) was indicated in WhoIs details attached to the Complaint.
The Complainant provides evidence of the websites at the disputed domain names as at July 11, 2012. The websites are essentially the same. The website has the appearance of being one directed to providing web hosting services. The website is prominently headed “OVHServer” above the phrase “Server hosting slution” (sic). The website advertises various webhosting services with associated prices.
The Complainant is a web hosting company founded in 1999. It describes itself as an independent European company based in Roubaix, Northern France, with 16 subsidiaries in various countries in Europe, North Africa, the United States of America and Canada. It claims to be the number one host in Europe and is the fourth largest for domain names in the world. The Complainant’s name, OVH, is the acronym for “On Vous Hérberge” (in English, “We Host You”). The Complainant says that it contacted the hosting provider of the website “ovhserver.com” on July 12, 2012, and since then the website has been suspended. Since then, the site only displays a notice that the disputed domain names are for sale.
The Complainant operates a website at <ovh.com>. That domain name was registered in 1997.
The Complainant provides evidence of having registered rights in a mark for OVH in various countries in which it has subsidiaries, and others. The earliest of those registrations was in 1999 (in France), the latest in July 2012 (in the USA), with the majority registered in 2010-2011.
Although not identified in the Complaint, the Complainant has been a complainant in a number of previous cases under the Policy. These include, for example, OVH SAS v. EE, Emre Erim, WIPO Case No. D2012-0330; OVH SAS v. Charal Investment Tust, R.D. Larach, WIPO Case No. D2012-1552. In the latter case, the then Panel found that:
- the Complainant had established rights in the OVH registered trademark the earliest being August 1999.
- the Complainant established that in the context of webhosting it is, and has for some time been, well known under and by reference to the name and mark OVH.
- in its particular markets, the Complainant is very well-known under the OVH name and mark.
5. Parties’ Contentions
The Complainant makes the following allegations against the Respondent under paragraph 4(a) of the Policy.
Firstly, the Complainant says that it has rights in the OVH mark. The Complainant provides various evidence of its registered rights for that mark. The Complainant says that the disputed domain names are confusingly similar to its mark because that mark is wholly incorporated in the disputed domain names. The Complainant points out that the term “server” refers to web hosting services provided by the Complainant, that the term “drive” is short for a disk drive, which also relates to its services. The Complainant says that the use of these terms together with its mark increase the likelihood of confusion.
Secondly, the Complainant says that the Respondent has no rights or legitimate interests in the disputed domain names. In this respect, the Complainant points to its prior trademark rights, that the Respondent is not authorized to use the Complainant’s mark, and that the Respondent has used the disputed domain names to offer webhosting services for sale. For these reasons, the Complainant says that the Respondent has registered and used the disputed domain names with an intent to profit from and exploit the goodwill associated with the Complainant’s trademark, and to disrupt the Complainant’s business.
Thirdly, the Complainant says that the disputed domain names were registered and have been used in bad faith. The Complainant says that the Respondent knew of its mark, as the Respondent is an OVH customer. The Complainant provides copies of the first Respondent’s, Nguyen Thi Kim Trung’s, bills. The Complainant says that the second Respondent, Vu Xuan Duoc, is in effect the same person as the first Respondent. This is because, when the Complainant sent an email to an email address for the first Respondent, that person responded on October 9, 2012, as follows:
“All my domain (ovhdrive.com, ovhserver.com) now donot use for any
We close all for that in long time to go and selling that domain.
My English is not good,
So, if you want to buy that domain, reply me
‘Remember, I do not use that domain for any service.’
So you can not say I played bad you.”
The Complainant says that, in emails on July 18 and 25, 2012, the Complainant contacted the owner of the disputed domain names who proposed to transfer the them to the Complainant for USD 1,000.00 each. In this respect, the Complainant says that the Respondent has offered to sell the disputed domain names for consideration in excess of its out-of-pocket costs, which is evidence of bad faith for the purpose of paragraph 4(b) of the Policy. Those emails came from “email@example.com”. The email on July 18, 2012, stated that:
“This domain ovhsever do not use for buy or sell server.
Ovhserver.com domain name is legally registered.
And we do not use for purposes of profit for business purposes.
If you would like us can fully transfer the domain name for you.
Price we are asking is: $ 1, 000”
The Complainant states that the disputed domain name <ovhdrive.com> has been used by the Respondent to forward Internet users to the website at <megasync.net>. Megasync is a file hosting provider.
The Complainant says that the Respondent has used the disputed domain names to sell services similar to those of the Complainant and has used the Complainant’s mark on its websites. This, says the Complainant, is indicative of an intent to deceive customers into believing that the disputed domain names are somehow associated with, or endorsed by, the Complainant.
The Respondent did not reply to the Complainant’s contentions. The only evidence of the Respondent’s communications in connection with this case are those evidenced in the Complaint (referred to above). In addition, after the filing of the amended Complaint, the Respondent sent an email to the Center from an email address ostensibly in the name of the first Respondent (and the same email address from which an email was sent to the Complainant on October 9, 2012). That email said only:
I don’t have money pay for you because disputes
Why i buy 1 domain, and I can use it
The Center acknowledged receipt of that email, and noted the due date for the Response and that the Complainant bears the cost of the proceedings if the parties agree to a single member panel. The Respondent sent a further communication on November 3, 2012, as follows:
“This is my domain
Why I buy that first, and I can’t use it for my service
Fuck your law.
I don’t have a lot of money.
I can’t give you 2000$ for response complain.
Exclusive, fascist, flood, robbery.”
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that the Respondent must submit to a mandatory administrative proceeding in the event that a third party (a complainant) asserts, in compliance with the Rules, that:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
The Complainant in this case has made those assertions in compliance with the Rules. In this administrative proceeding, the Complainant must prove that each of these three elements are present. As such, each of these three elements are discussed in turn as follows, immediately after consideration of a procedural issue regarding the identity of the Respondent.
A. Identity of the Respondent
The Complainant provided evidence of a WhoIs search on October 3, 2012, which identified the first Respondent (Nguyen Thi Kim Trung) as the registrant of the disputed domain names. At some time between the time of that search and the registrar’s reply on October 11, 2012, the second Respondent (Vu Xuan Duoc) became the named registrant. There is no evidence in the case file of any communication in the name of the second Respondent. The Complainant received emails from the first Respondent in July, 2012, and also on October 9, 2012, immediately before the formal commencement of this dispute (but after the Complaint was sent to the first Respondent). The Center also received communications from the first Respondent after the commencement of this dispute, despite the change in the name of the registrant of the disputed domain names. This strongly suggests that the first Respondent retained a continuing ownership interest in the disputed domain names.
The Complainant bases its arguments in part on the identity of the two identified Respondents being, in effect, the same. This is because the Complainant makes its arguments by reference to the correspondence it received in July 2012, OVH bills in the name of the first Respondent, and emails in the name of the first Respondent on October 9, 2012.
On the facts set out above, the Panel considers there is reasonable inference that the correspondence to the Complainant in July and October was from the same person. It follows that the email to the Center after those dates from the same address can also be inferred to be from the same person, notwithstanding the change in the named registrant of the disputed domain names. There is no evidence that the control or ownership of the disputed domain names changed in fact. As such, the Panel finds that the first Respondent remains the owner of the disputed domain names in fact and, as such, remains a proper party to these proceedings. There is no evidence that the second Respondent is any more than a name. However, as the named registrant at the date of the commencement of this dispute, the second Respondent is also properly included as a party.
In these circumstances, the Panel also considers that the change in the named registrant is indicative of an attempt to avoid these proceedings. This is an inference open to the Panel under paragraph 14(b) of the Rules. That paragraph provides that if a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, the Panel shall draw such inferences therefrom as it considers appropriate. The Respondent has failed to submit a Response in this case, either formally or in substance, and has not otherwise provided evidence to rebut the Complainant’s case in accordance with paragraph 5 of the Rules.
B. Identical or Confusingly Similar
The first issue under paragraph 4(a)(i) of the Policy is whether the Complainant has rights in a mark and, if so, whether the disputed domain name is identical or confusingly similar to that mark.
The Complainant provided evidence of its registered rights for OVH and, as such, the Panel finds that the Complainant has established those rights. Those rights have been recognized in previous decisions under the Policy.
The Panel also finds that the disputed domain name is confusingly similar to the Complainant’s OVH mark. The following are the Panel’s reasons for this conclusion.
The Complainant’s registered mark is entirely and prominently incorporated in the disputed domain names. Prior UDRP panels have found that the incorporation of a complainant’s trademark in a disputed domain name can be sufficient for a finding of confusing similarity. See e.g. Nokia Group v. Mr. Giannattasio Mario, WIPO Case No. D2002-0782. Added to this, the Complainant’s mark is the first-appearing element in the disputed domain names. Each disputed domain name adds a descriptive term to the OVH element, which serves to highlight the letters “OVH”.
The terms “OVH” and “driver/server”, used separately, might have a range of connotations. While the Complainant alleges it is well-known in the web-hosting industry, the Complainant did not provide a substantial amount of evidence to support this allegation, beyond references to its own websites and its trademark registrations. However, it is significant that the disputed domain names respectively contain both the elements “OVH” and “driver/server”. As noted by the Complainant, the letters “OVH” are an acronym in French standing for “we host you”, and the Complainant uses its OVH mark in connection with web hosting. As such, the use of the term “OVH” together with “driver/server” in the disputed domain names is clearly suggestive of the Complainant’s business and, by association, its mark. This use has the obvious potential to create confusion in the minds of those Internet users who might be aware of the Complainant’s business. When used together the terms strongly suggest a connection with the Complainant’s mark. As relevantly stated by the panel in Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Javier Llorens, WIPO Case No. D2000-1319: “The words…used together create a strong similarity and impression that could easily induce the general public into believing that the Domain Name, the Domain Name proprietor and any web site operated from the Domain Name are associated with the Complainant.”
Finally, although the Complainant did not provide direct evidence of its reputation in Viet Nam, where the Respondent has his address (or elsewhere), the Panel has accepted that the Complainant has such a reputation, at least in the relevant market. The Respondent provided no response to the Complainant’s assertions that it has such a reputation.
The limited informal communications from the Respondent do not generally address the matters raised in the Complaint. However, in one communication the Respondent appears to suggest that it has not used the disputed domain names “for any service” – an assertion which is contradicted by evidence provided in the Complaint. In these circumstances, the Panel has inferred that the Respondent is not able to provide evidence in response to the Complaint because the essential facts in the Complaint are true.
C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to establish that the Respondent has no rights or legitimate interests. Once a Complainant establishes a prima facie case against the Respondent under this ground, the burden shifts to the Respondent to rebut it. The overall burden of proof remains with Complainant. See e.g. Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270.
The Complainant has established a strong prima facie case against the Respondent in this case, which is not otherwise contradicted by the evidence in the case file or the communications from the Respondent. Paragraph 4(c) of the Policy enumerates several ways in which a respondent may, in response, demonstrate rights or legitimate interests in the disputed domain name: “Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, is to be taken to demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the subject matter of the dispute, your bona fide use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with an offering of goods or services (not being the offering of domain names that you have acquired for the purpose of selling, renting or otherwise transferring); 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 non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the name, trademark or service mark at issue.
There is little evidence to support any of these grounds. To the contrary, as evidenced by screenshots of the website at the disputed domain names in July 2012, the website had the superficial appearance of a legitimate website connected with web-hosting and prominently displaying the Complainant’s OVH mark. This strongly suggests that the Respondent was using the Complainant’s mark to mislead Internet users by creating the false impression of an association with the Complainant. Such activity cannot be a basis for a legitimate interest under paragraph 4(a) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy next requires the Complainant to prove that the Respondent has registered and used the disputed domain name in bad faith. Paragraph 4(b) of the Policy sets out a number of illustrative circumstances which may be evidence of bad faith for the purpose of paragraph 4(a)(iii). These include:
(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the disputed domain name; or
(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.
The Panel finds that the evidence in this case is equivocal as to whether the circumstances described in paragraph 4(b)(i) are present. While the Respondent has made an offer to sell the disputed domain names, the evidence is not clearly suggestive that this was the Respondent’s “primary” motivation.
However, the evidence more strongly indicates that the circumstances described in paragraph 4(b)(iv) of the Policy are present. For the reasons set out above, the disputed domain names are confusingly similar to the Complainant’s marks. The Respondent has used those domain names in connection with a website which misleadingly suggests an association with the Complainant. There is no evidence that the Respondent does, in fact, carry out a legitimate business. As argued by the Complainant, the nature of the Respondent’s website in July 2012 leaves little doubt that the Respondent was aware of the Complainant and its mark. That website, to which the disputed domain names direct, refers to the Complainant’s mark in conjunction with the primary business activities of the Complainant. This website advertised commercial services. As such, there is a reasonable inference that the Respondent used the disputed domain names to commercially benefit from potential confusion with the Complainant’s mark. The Panel finds that this is sufficient to demonstrate bad faith for the purpose of paragraph 4(b) of the Policy. See e.g. Gerd Petrik v. Johnny Carpela, WIPO Case No. D2004-1043; Nokia Corporation v. Nokia Ringtones & Logos Hotline, WIPO Case No. D2001-1101.
In addition, as indicated above, the change in the name of the registrant of the disputed domain names shortly before the formal commencement of these proceedings is also suggestive of bad faith. Such a finding is consistent with prior decisions under the Policy which are relevantly similar. See e.g. LPG SYSTEMS v. Jerry / Mr. Jeff Yan, WIPO Case No. D2010-0387.
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 names, <ovhdrive.com> and <ovhserver.com>, be transferred to the Complainant.
James A. Barker
Date: November 30, 2012