WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Procter & Gamble Company v. Tuan Nguyen Xuan, NHTM / Tuan Nguyen
Case No. D2016-0081
1. The Parties
The Complainant is The Procter & Gamble Company, Cincinnati, Ohio, United States of America ("USA"), represented by BMVN International LLC, Vietnam.
The Respondent is Tuan Nguyen Xuan, NHTM / Tuan Nguyen of Hanoi, Vietnam.
2. The Domain Names and Registrar
The disputed domain names <myphamskii.com> and <skiijapan.com> are registered with Instra Corporation Pty Ltd. ("Instra"). The disputed domain names <skii-vietnam.com> and <skiivn.com> are registered with GoDaddy.com, LLC ("GoDaddy").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 15, 2016, naming Tuan Nguyen Xuan as the Respondent. The Center transmitted requests for registrar verification to Instra and GoDaddy (the "Registrars") on January 15, 2016. The Registrars both replied on the same day.
Instra confirmed that it is the Registrar of the disputed domain names <myphamskii.com> and <skiijapan.com>, that the current registrant is Tuan Nguyen, that the UDRP applies, that these domain names would remain locked during this proceeding, and that the language of the registration agreements is English. Instra stated that the current registrant registered the disputed domain name <skiijapan.com> on June 2, 2015, and <myphamskii.com> on June 2, 2016 (but this would appear to be a typographical error, 2015 being the correct year). According to Instra, both disputed domain names will expire on June 2, 2016.
GoDaddy confirmed that it is the registrar of the disputed domain names <skii-vietnam.com> and <skiivn.com>, but identified the registrant as NHTM and provided the full contact details held on its WhoIs database in respect of these domain names. These identified the registrant name for <skii-vietnam.com> as Tuan Nguyen Xuan and the registrant organization as NHTM, with <skiivn.com> being subject to a privacy service. GoDaddy confirmed that the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP") applies to these domain names, that they would remain locked during this proceeding subject to expiry, and that the language of the registration agreements is English. GoDaddy also stated that <skii-vietnam.com> had been registered to the current registrant since at least September 3, 2015, and would expire on August 2, 2016, and that <skiivn.com> had been registered to the current registrant since at least October 23, 2015, and would expire on October 24, 2016. In response to a request from the Center, GoDaddy provided on January 19, 2016, the underlying data on its WhoIs database in respect of <skiivn.com>, giving the registrant name as Tuan Nguyen Xuan and the registrant organization as NHTM.
The Center verified that the Complaint satisfied the formal requirements of the 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 paragraphs 2 and 4 of the Rules, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on January 28, 2016. In accordance with paragraph 5 of the Rules, the due date for Response was February 17, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 18, 2016.
The Center appointed Jonathan Turner as the sole panelist in this matter on February 26, 2016. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules.
Having reviewed the file the Panel is satisfied that the Complaint complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the UDRP, the Rules and the Supplemental Rules. In particular, the Panel finds, on the basis of the commonalities in the WhoIs data, that the registrant of all four disputed domain names is the same person and hence that the Complaint complies with paragraph 3(c) of the Rules.
4. Factual Background
The Complainant is a leading global business in the field of consumer products. The Complainant has used the brand SK-II for high-end cosmetic products and has registered it as a trademark in various jurisdictions including the European Union (in 2000), the USA (in 2002), Vietnam (in 2006) and the Republic of Korea (in 1999).
The Respondent is not connected with the Complainant. The disputed domain names were registered in 2015 and are directed to websites which appear to offer for sale SK-II products. The websites do not explain the relationship or lack of it between the Complainant and the Respondent.
5. Parties' Contentions
The Complainant contends that the disputed domain names are all confusingly similar to the mark SK-II in which it has registered rights. The Complainant points out that the string "skii" is very similar to the mark SK-II; that the geographical terms "japan" and "vietnam" do not differentiate the disputed domain names which include them; that the same applies to "vn", which is the two-letter code for Vietnam; and that "mypham" means "cosmetics" in Vietnamese, which is generic for the products sold under the mark SK-II and therefore provides no distinction.
The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain names. The Complainant emphasises that its SK-II trademark was registered in Vietnam and other countries long before the disputed domain names were registered by the Respondent.
The Complainant refers to the consensus view of WIPO UDRP panels that a reseller or distributor can be making a bona fide offering of goods or services through a website located by a domain name containing a mark, so as to have a legitimate interest in the domain name, only if certain conditions are met, including that the website is used to sell only genuine goods placed on the market under the mark by its owner, that the website accurately and prominently discloses the registrant's relationship with the owner of the mark, and that the registrant does not try to "corner the market" in domain names reflecting the mark.
The Complainant notes that the websites located by the disputed domain names do not disclose the lack of connection between the Respondent and the Complainant. The Complainant also contends that the Respondent has sought to "corner the market" in domain names reflecting its SK-II mark.
The Complainant adds that the Respondent is not commonly known by the disputed domain names and that he is not making legitimate noncommercial or fair use of them.
The Complainant alleges that the disputed domain names were registered and are being used in bad faith. The Complainant contends that the Respondent intended to profit from confusion as to the Respondent's association or affiliation with the Complainant by attracting Internet users to his websites for commercial purposes, misleading them into placing orders in the belief that the Respondent is part of the Complainant's retailing network.
The Complainant requests a decision that the disputed domain names be transferred to it.
As stated above, the Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, to succeed in its Complaint in respect of each of the disputed domain names, the Complainant must prove: (i) that the disputed domain name is identical or confusingly similar to a mark in which it has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith. It is appropriate to consider each of these requirements in turn.
In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences as it considers appropriate from the Respondent's default in failing to file a response. This includes the acceptance of plausible evidence of the Complainant which has not been disputed.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has registered rights in the mark SK-II.
The Panel is also satisfied that each of the disputed domain names is confusingly similar to this mark. Each of the disputed domain names consists of the string "skii" together with descriptive or generic elements. The Panel accepts that the omission of the hyphen is liable to be overlooked or discounted by Internet users and does not provide sufficient differentiation. As has been found in numerous cases, the generic Top-Level Domain suffix ".com" should also be discounted, since it provides no real differentiation for Internet users.
In the case of two of the disputed domain names, <skiijapan.com> and <skii-vietnam.com>, the only other additional elements are the names of countries. These also fail to provide any differentiation, since Internet users will naturally assume that these domain names locate websites relating to the sale of the Complainant's SK-II products in these countries. The same point applies to the disputed domain name <skiivn.com> since "vn" is commonly known as the two-letter code for Vietnam. The additional element in the fourth domain name <myphamskii.com> is the term "mypham" meaning "cosmetics" in Vietnamese. This is a generic description of the goods sold under the Complainant's SK-II mark and would not differentiate this domain name from this mark in the eyes of Vietnamese Internet users.
The first requirement of the UDRP is satisfied.
B. Rights or Legitimate Interests
As noted in section 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), many UDRP panels have followed the guidance in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (the "Oki Data"decision), as to the circumstances in which a reseller who is using a domain name corresponding to a supplier's mark may be regarded as making a bona fide offering, and hence as having a legitimate interest in the domain name in accordance with paragraph 4(c)(i) of the UDRP. The Panel regards this guidance as correct and will apply it in this case.
According to this guidance, the reseller may have a legitimate interest provided that all of the following conditions are satisfied: it is actually offering the supplier's products; the website at the domain name is used to sell only those products; the website accurately and prominently discloses the true relationship between the registrant and the supplier, and the respondent does not attempt to register all domain names that reflect the supplier's mark.
In this case, the Respondent's websites, to which the disputed domain names are directed, do not accurately and prominently disclose the Respondent's relationship with the Complainant. Therefore the third of the conditions specified in the guidance is not satisfied. In these circumstances, the Respondent cannot be regarded as making a bona fide offering within the meaning of paragraph 4(c)(i) of the UDRP so as to give him a right or legitimate interest in the disputed domain names.
Furthermore, it is evident that the Respondent is not commonly known by any of the disputed domain names and that he is not making a legitimate noncommercial or fair use of the disputed domain names. Nor is there any other basis on which the Respondent could claim any rights or legitimate interests in respect of the disputed domain names. The Panel concludes that he has no such rights or legitimate interests and that the second requirement of the UDRP is satisfied.
C. Registered and Used in Bad Faith
As noted above, there is no indication on the Respondent's websites dispelling the impression, created by the use of the disputed domain names, that they locate official websites authorized by the Complainant to sell its SK-II brand products.
The Panel finds on the undisputed evidence that by using the disputed domain names, the Respondent has intentionally attempted to attract Internet users to his websites for commercial gain, in the form of sales of the products marketed on them, by creating a likelihood of confusion with the Complainant's mark SK-II as to their source, affiliation or endorsement.
In accordance with paragraph 4(b)(iv) of the Policy, this constitutes evidence of registration and use of the disputed domain names in bad faith. This presumption is not displaced by any contrary evidence. In all the circumstances, the Panel concludes that the third requirement of the UDRP is satisfied in relation to each of the disputed domain names.
All three substantive requirements of the UDRP are therefore satisfied in relation to each of the disputed domain names and it is appropriate to direct that they be transferred to the Complainant.
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, <myphamskii.com>, <skiijapan.com>, <skii-vietnam.com> and skiivn.com>, be transferred to the Complainant.
Date: March 9, 2016