WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Royal Canin SAS v. Ong Pham Duc Thang

Case No. D2017-2567

1. The Parties

The Complainant is Royal Canin SAS of Aimargues, France, represented by AB INITIO, France.

The Respondent is Ong Pham Duc Thang of Ha Noi, Viet Nam.

2. The Domain Name and Registrar

The Disputed Domain Name <royalcaninvietnam.com> is registered with Mat Bao Corporation (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2017. On December 22, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 25, 2017, 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. The Center transmitted an email on January 12, 2018 to the Registrar requesting for its further verification and received its reply on January 13, 2018.

On January 3, 2018, 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 on January 5, 2018. The Respondent did not comment on the language of the proceeding by the specified due date.

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 of the Complaint, and the proceedings commenced on January 18, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 7, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 12, 2018.
The Center appointed Pham Nghiem Xuan Bac as the sole panelist in this matter on March 1, 2018. 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, Royal Canin SAS, is a worldwide manufacturer and supplier of pet food. Both the Complainant and the trademark ROYAL CANIN were established in France in 1968 and now are well-recognized in the field of pet nutrition in France, Europe and worldwide.

The Complainant is the registered owner of numerous trademark registrations for the ROYAL CANIN trademarks in numerous countries over the world, in relation to veterinary products in Class 05 and/ or pet food in Class 31 with the earliest registration obtained in France in 1982. The ROYAL CANIN trademarks have also been protected in Viet Nam, where the Respondent resides.

The Complainant also owns and uses numerous domain names under generic Top-level Domain (“gTLD”) and country-code Top-Level Domain (“ccTLD”) for the promotion and sale of products branded ROYAL CANIN, including, among others, its official domain name <royalcanin-world.com>, and those with “.vn” ccTLD, namely <royal-canin.com.vn>, <royalcanin.com.vn>, <royalcanin.vn> and <royal-canin.vn>.

All these trademarks and domain names predate the registration of the Disputed Domain Name.

The Respondent registered the Disputed Domain Name <royalcaninvietnam.com> on December 9, 2013.

The website under the Disputed Domain Name had been under operation for promotion and sale of products under the ROYAL CANIN trademarks. At the date of this Decision, the Disputed Domain Name resolves to an inactive website.

5. Parties’ Contentions

A. Complainant

The 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 identical or confusingly similar to a trademark or service mark, in which the Complainant has rights.

The Complainant contends that the Complainant is the registered owner of numerous trademark registrations for ROYAL CANIN all over the world, including in its home country (France) and in the country of the Respondent’s residence (Viet Nam). The trademark ROYAL CANIN has been a worldwide leading brand in the pet food market for 50 years. The Complainant is also the owner of a variety of domain names incorporating the ROYAL CANIN trademark. All these trademark registrations and domain names predate the Disputed Domain Name.

The Disputed Domain Name is reproducing the ROYAL CANIN trademarks, domain names and trade name of the Complainant. The word “Vietnam” is merely a geographical term, which does not distinguish the Disputed Domain Name from the Complainant’s ROYAL CANIN trademarks.

Thus, the Disputed Domain Name is confusingly similar to the Complainant’s prior registered trademarks, domain names and company/business name.
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
The Complainant argues that the Respondent is neither affiliated with the Complainant nor has been authorized to register and use the Complainant’s trademark ROYAL CANIN, or to seek registration of any domain name incorporating the aforementioned trademark.

Further, the Respondent is not known under the Disputed Domain Name. The Respondent is clearly not using the Disputed Domain Name in connection with a bona fide offering of goods or a legitimate activity.

The Respondent’s choice of registering the Disputed Domain Name cannot be a mere coincidence, and is the demonstration of a malicious intent in order to misleadingly divert consumers.

Thus, the Respondent has no rights or legitimate interests in the Disputed Domain Name.

(iii) The Disputed Domain Name was registered and is being used in bad faith.

The Complainant asserts thatthe trademark ROYAL CANIN is well-known in the market of veterinary products and pet food since many years and enjoys notoriety in France and worldwide. Given the Complainant’s trademark reputation it is unconceivable that the Respondent could have registered the Disputed Domain Name without actual knowledge of the Complainant’s earlier rights, especially when the Complainant has been active in Vietnam for several years through its local importer.

In addition, the Disputed Domain Name directs to a website bearing the same identification elements, and offering the same products. The reproduced identification elements include the trademark ROYAL CANIN in the same color and same font, the same logo, and the same general presentation of the pages of the website, including the reproduction of pictures of animals, which are directly copied from the Complainant’s official website “www.royalcanin.com.au”.

By some statements and indications in the website under Disputed Domain Name, the Respondent is creating confusion with the Complainant’s trademark by pretending to be the company ROYAL CANIN. The fact that the Respondent did not comply with the demand of voluntary transfer is also an additional evidence of bad faith. The use of a privacy protection service for concealing its contact details is another evidence of bad faith.

As such, the Complainant contends that the Respondent intentionally attempted to attract for commercial gain, Internet users to its 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 on the Respondent’s website or location. Therefore, the Complainant considers that the Respondent registered and is using the Disputed Domain Name in bad faith.

With the said arguments, the Complainant requests that the Disputed Domain Name be transferred to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Procedural issues

Language of the Proceeding

The Complaint was filed in English on December 21, 2017. On December 25, 2017, the Registrar informed that the language of the Registration Agreement is Vietnamese, and the Center 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) a translation of the Complaint in Vietnamese, or (iii) a substantiated request for English to be the language of the proceeding; and invited the Respondent to comment on the language of the proceeding.

On January 5, 2018, the Complainant sent the Center an email requesting for English to be the language of the proceeding in the Complaint. The Respondent did not give any comments on this issue.

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) 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 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, in consideration of the above circumstances of the proceeding, including, but not limited to:

(i) the fact that the Complainant, a French business 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 in substantial expenses for translation;

(ii) the website under the Disputed Domain Name contains messages and descriptions in English, suggesting that the Respondent is familiar with the English language;

(iii) the English language is quite popular in Viet Nam, where the Respondent is located, making it likely to be understandable to the Respondent;

For the purpose of easy comprehension of the Complainant (the only party actively taking part in the proceeding) of the Panel’s decision without any necessity of translations, and in the interest 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 the Panel shall render its decision in English.

The Respondent’s Failure to Respond

The Respondent’s failure to file a response 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 from the Respondent’s default.

In accordance with paragraph 4(a) of the Policy, in order to decide on the remedy sought by the Complainant, the Panel will examine whether each the following three elements are present:

(i) the Disputed Domain Name registered by the Respondent 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.

B. Identical or Confusingly Similar

The Complainant is required to establish the two following elements: (1) that it has trademark rights, and, if so, (2) that the Disputed Domain Name is identical or confusingly similar to its trademark.

Firstly, the Panel finds that the Complainant has clearly evidenced that it has registered trademark rights to ROYAL CANIN, well before the Disputed Domain Name is registered. Also, the Complainant has sufficiently demonstrated and evidenced that it has a lengthy and extensive use of its trademark for its commercial activities, and in particular for manufacturing and supplying pet food to consumers worldwide. Through such use, the ROYAL CANIN mark has become well-known around the world in relation to the Complainant’s pet food products.

Secondly, the Disputed Domain Name comprises the Complainant’s distinctive and widely-known ROYAL CANIN mark, in which the Complainant has exclusive rights. The difference between the Disputed Domain Name and the trademark is the addition of the geographic term “vietnam”, which evidently refers to the name of the country where the Respondent resides, i.e., Viet Nam.

The Panel finds that “royalcanin” remains the dominant element in the Disputed Domain Name. It is well established that the addition of geographic term (such as “vietnam”) to a trademark does not prevent confusing similarity. Thus, in the Panel’s view, the addition of the said suffix does nothing to distinguish the Disputed Domain Name from the trademark, nor to dispel confusing similarity, as it was found in previous UDRP decisions (see, e.g., Royal Canin SAA v. Kazuo Kawado, WIPO Case No. D2009-0874).

Thirdly, the Panel finds, similarly to other prior UDRP panels, that the addition of the gTLD “.com” to the Disputed Domain Name does not constitute an element so as to avoid confusing similarity for the first element purposes (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).

On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s ROYAL CANIN trademark, and the first element under paragraph 4(a)(i) of the Policy is established.

C. Rights or Legitimate Interests

Paragraph 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. Paragraph 4(c) of the Policy reads:

“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, shall 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 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, in light of the Complainant’s asserted facts, that no license, permission or authorization of any kind to use the Complainant’s trademark has been granted to the Respondent and there is no evidence that the Respondent holds such rights. Thus, the Respondent has no rights in the trademark ROYAL CANIN.

Considering whether or not the Respondent is making a bona fide offering of goods and services via using the Disputed Domain Name, the Panel finds that on the website under the Disputed Domain Name, the Respondent does not place any statement or disclaimer disclosing the lack of relationship with the Complainant. Further, the website under the Disputed Domain Name also contains the Complainant’s
logo-typed trademark and bears the same font, colors and general presentation of the pages of the Complainant’s website, including the reproduction of the animal pictures, which are presented in one of the Complainant’s websites.

In addition, the website under the Disputed Domain Name also comprises some indications/ statements, such as, “Royal Canin Vietnam”, “Royal Canin Vietnam│Đại lý phân phối thức ăn chó mèo chính hãng” (in English “Royal Canin Vietnam, the authorized distributor of cat and dog food”), and “© 2017 Royal Canin Vietnam”. These indications and statements may mislead consumers into believing in a connection or association between the Respondent and the Complainant, where such connection or association does not exist in reality. For all foregoing reasons, the Panel finds the Respondent’s use of the Disputed Domain Name cannot be considered a bona fide offering of goods or services.

Moreover, 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.

The Panel further finds that no evidence has been presented 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 trademark and had an intention to gain profit by riding on the good reputation of the Complainant.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The second element under paragraph 4(a)(ii) of the Policy is established.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy identifies, in particular but without limitation, four 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. Paragraph 4(b) of the Policy reads:

“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, 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 on-line 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.”

Each of the four circumstances in paragraph 4(b) of the Policy, if found, is an instance of “registration and use of a domain name in bad faith”.

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 reply to the Complainant’s contentions and, therefore, has not refuted the Complainant’s contentions.

The Panel further finds that the Complainant’s ROYAL CANIN trademark has been registered in numerous countries. The Complainant’s ROYAL CANIN trademark has been registered and used in, among other countries, Viet Nam where the Respondent resides. Besides functioning as a trademark, “Royal Canin” is also being used in the Complainant’s trade name and domain names, such as <royalcanin-world.com>, <royal-canin.com.vn>, <royalcanin.com.vn> and <royalcanin.vn>, which all well predate the registration of the Disputed Domain Name.

The Disputed Domain Name comprises the ROYAL CANIN trademark in its entirety, adding only the geographical term “vietnam”. Given the extensive use of the ROYAL CANIN trademarks by the Complainant, which occurs in numerous countries, including in Viet Nam, where the Respondent resides, 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 ROYAL CANIN trademarks when it registered the Disputed Domain Name, and the Panel considers the registration an attempt by the Respondent as to take advantage of the Complainant’s goodwill.

On the date of this Decision, the Panel accesses the Disputed Domain Name and finds that it resolves to an inactive website. However, it is well proved and evidenced by the Complainant that by the date, on which the Complaint was filed, the website under the Disputed Domain Name had been used for selling the cat and dog food products branded with the Complainant’s ROYAL CANIN trademark. In that period, in addition to the adoption of the Complainant’s trademark as a uniquely distinctive part in the Disputed Domain Name, the Respondent used the Complainant’s logo-typed trademark on the website and falsely represented itself like an affiliate or distributor of the Complainant. Hence, the Respondent’s subsequent taking down of the website does not alter the Panel’s finding.

With the said facts, the Panel finds that the Respondent intentionally registered and used the Disputed Domain Name for commercial gain and that the Respondent’s actual use of the Disputed Domain Name appears to mislead consumers and confuse them by making them believe that the website is associated, fostered or recommended by the Complainant. 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 used by the Respondent in bad faith under paragraph 4(b)(iv) of the Policy, and the third element under paragraph 4(a)(iii) of the Policy is established.

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, <royalcaninvietnam.com>, be transferred to the Complainant.

Pham Nghiem Xuan Bac
Sole Panelist
Date: March 13, 2018