WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

All States Ag Parts, Inc. v. Vietnam Domain Privacy Services / Pham Dinh Nhut

Case No. D2017-1475

1. The Parties

The Complainant is All States Ag Parts, Inc. of Downing, Wisconsin, United States of America ("United States"), represented by Westman, Champlin and Kelly, P.A., United States.

The Respondent is Vietnam Domain Privacy Services of Ho Chi Minh, Viet Nam / Pham Dinh Nhut of Ho Chi Minh, Viet Nam.

2. The Domain Name and Registrar

The disputed domain name <allstatesagparts.com> is registered with April Sea Information Technology Corporation (the "Registrar").

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on July 28, 2017. On July 31, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 4, 2017, 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 August 4, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same day, the Center transmitted an email in English and Vietnamese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding. The Respondent requested that Vietnamese be the language of the proceeding. The Complainant filed an amended Complaint on August 8, 2017.

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 August 16, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 5, 2017. The Respondent did not submit any Response by the specified due date. The Center notified the Parties in English and Vietnamese of the commencement of Panel Appointment on September 6, 2017.

The Center appointed Mario Soerensen Garcia as the sole panelist in this matter on September 17, 2017. 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 Complainant is All States AG Parts, Inc., acts in the United States in the retail store and telephone shopping services in the field of new, used and rebuilt parts for agricultural equipment, as well as related goods and services.

The Complainant owns trademark registrations in the United States for the following marks:

- No. 2,542,124 for ALL STATES AG PARTS, INC., registered on February 26, 2002 in international class 35, used in commerce for the first time on February 17, 1999.

- No. 3,629,988 for ALL STATES AG PARTS, PARTS A.S.A.P. & design, registered on June 2, 2009, in international class 35, used in commerce for the first time on August 31, 2005.

The Complainant is also the owner of the domain name <tractorpartsasap.com>, registered on October 31, 2006.

The disputed domain name was registered on October 8, 2007 and resolves to a generic landing page, containing PPC links to various third-party sites.

5. Parties' Contentions

A. Complainant

The Complainant states that it owns trademark registrations for the marks ALL STATES AG PARTS, INC. and for ALL STATES AG PARTS, PARTS A.S.A.P. & design in the United States and that the disputed domain name incorporates its trademarks in their entirety.

According to the Complainant, the disputed domain name is confusingly similar to its trademarks, creating a strong likelihood that customers and others will be confused, mislead or deceived into believing that the Respondent's website originated from, is sponsored or endorsed by or is affiliated with the Complainant.

The Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain name, is not commonly known by the disputed domain name and it has not acquired any trademark rights related to the disputed domain name.

In addition, the Complainant alleges that the Respondent's use of the disputed domain name resolved to a page containing PPC links, some of which are to sites providing information about the Complainant's competitive products in the field of agricultural machines and parts, while other of the third-party sites are unrelated to the Complainant's products, which might deceive Internet users, who may incorrectly understand they are referred to the Complainant's services.

The Complainant asserts that a further indication of bad faith is the fact that the Complainant's registration preceded the registration of the disputed domain name for years, which means that the Respondent knew or should have known of its mark.

The Complainant also mentions that since the disputed domain name expires on October 8, 2017, it reached out to the Registrant prior to the filing of this UDRP action with offers to purchase it, but the offers were ignored.

The Complainant concludes that the Respondent is trying to benefit from the fame of the Complainant's trademarks and requests the transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant's contentions before the due date for Response.

6. Discussion and Findings

6.1. Language of the Proceeding

Paragraph 11(a) of the Rules provides that the language of the administrative proceeding shall be the language of the Registration Agreement, unless otherwise agreed by the parties. Paragraph 11(a) also states that the determination of the language of the proceeding is "subject to the authority of the Panel… having regard to the circumstances of the administrative proceeding". The language of the Registration Agreement in this case is Vietnamese. The Complainant submitted its Complaint in English, and requested that English be the language of the proceeding.

Based on the record, the Panel finds that the Respondent likely understands English. The Respondent sent an email to the Center in English, requesting "Vietnamese as language of proceedings". The Respondent has also registered several domain names with English words and has been a party to other UDRP disputes. Moreover, the Panel notes that the Center's case‑related communications have been in both Vietnamese and English, the Respondent has failed to participate in the proceeding other than requesting that the language of the proceeding be Vietnamese.

Accordingly, the Panel determines that the language of this proceeding will be English. See Kravet, Inc. v. Vietnam Domain Privacy Services / Pham Dinh Nhut, WIPO Case No. D2017-1397.

6.2. Substantive Issues

As per paragraph 4(a) of the Policy, the Complainant must prove that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The evidence presented demonstrates that the Complainant is the owner of the trademarks ALL STATES AG PARTS INC. and for ALL STATES AG PARTS, PARTS A.S.A.P. & design in the United States, registered and used before the registration of the disputed domain name. Therefore, the Panel finds that the Complainant has trademark rights for purposes of the Policy.

The disputed domain name reproduces the Complainant's trademarks almost in their entirety. As numerous prior UDRP panels have recognized, the incorporation of a trademark in its entirety or a dominant feature of a trademark is sufficient to establish that a domain name is identical or confusingly similar to the complainant's registered mark. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0").

The Panel finds that paragraph 4(a)(i) of the Policy has been established by the Complainant, i.e., the disputed domain name is confusingly similar to the Complainant's trademarks.

B. Rights or Legitimate Interests

The Respondent has not submitted a response to the Complainant's contentions.

There is no evidence that the Respondent has any authorization to use the Complainant's trademarks or to register domain names containing the Complainant's trademarks.

There is no evidence that the Respondent is commonly known by the disputed domain name.

There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name or that before any notice of the dispute, the Respondent has made use of, or demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. Instead, there is evidence that the Respondent was using the disputed domain name to divert Internet users to websites that directly compete with the Complainant's activities.

Based on the evidence in the Complaint, the Panel finds that the use of the disputed domain name, which reproduces the Complainant's trademarks, does not correspond to a bona fide use of domain names under the Policy.

For the above reasons, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied, i.e., the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The trademarks ALL STATES AG PARTS, INC. and ALL STATES AG PARTS, PARTS A.S.A.P. & design are registered by the Complainant in the United States, and have been in use for years and can be considered well-known in its field of activities.

The disputed domain name reproduces almost in their entirety the Complainant's trademarks and the Respondent has no rights or legitimate interests in the disputed domain name.

There is evidence in the Complaint that the Respondent was using the disputed domain name to redirect customers to links of the Complainant's competitors.

This Panel finds that the Respondent knew of the Complainant's marks when it registered the disputed domain name and that the intention of taking undue advantage of the Complainant's trademarks has been demonstrated.

For the above reasons, the Panel finds that the conditions of paragraph 4(a)(iii) of the Policy have been satisfied, i.e., the disputed domain name has been registered and is being used in bad faith.

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 <allstatesagparts.com> be transferred to the Complainant.

Mario Soerensen Garcia
Sole Panelist
Date: September 27, 2017