WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Herald & Weekly Times Pty Limited v. Vietnam Domain Privacy Services / Pham Dinh Nhut
Case No. D2016-1162
1. The Parties
The Complainant is Herald & Weekly Times Pty Limited of Southbank, Australia, represented by Crowell & Moring, LLP, Belgium.
The Respondent is Vietnam Domain Privacy Services / Pham Dinh Nhut both of Ho Chi Minh City, Vietnam.
2. The Domain Name and Registrar
The disputed domain name, <heraldsunsupercoach.com> (the “Domain Name”), is registered with April Sea Information Technology Corporation (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 9, 2016. On June 9, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 21, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 21, 2016 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 June 21, 2016.
The Center verified that the Complaint with the amended Complaint (together 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”).
On June 21, 2016 the Complainant, noting that the Registration Agreement in respect of the Domain Name is in Vietnamese requested nonetheless that the language of this proceeding be English. This issue is dealt with in Section 6B below.
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint in both English and Vietnamese, and the proceeding commenced on June 28, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 18, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 19, 2016.
The Center appointed Tony Willoughby as the sole panelist in this matter on July 22, 2016. 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.
The invitation from the Center to the Complainant to file an amended Complaint stemmed from the fact that the underlying registrant of the Domain Name had been using a privacy service. In this decision the Panel treats the underlying registrant, Pham Dinh Nhut, as the Respondent.
4. Factual Background
The Complainant is an Australian publisher of inter alia newspapers. Its trade mark portfolio includes the following trade mark registrations:
- HERALD SUN (word), trade mark registered with IP Australia under number 543306 on August 10, 1994 (application filed October 4, 1990) in class 16;
- SUPERCOACH (word), trade mark registered with IP Australia under number 1102961 on December 10, 2008 (application filed March 10, 2006) in classes 9, 16 and 41;
- The Domain Name was registered on March 29, 2007, but appears, according to the unchallenged evidence of the Complainant, to have come into the hands of the Respondent in 2009 or later. The Domain Name is connected to a Pay-Per-Click (“PPC”) parking website.
The Respondent has been involved in a large number of previous proceedings under the Policy, including the following:
Arnold Clark Automobiles Limited v. Vietnam Domain Privacy Services / Pham Dinh Nhut, WIPO Case No. D2016-0562; WordPress Foundation v. Pham Dinh Nhut, NAF Case No. FA1502001603156; Pentair, Inc. v. Vietnam Domain Privacy Services / Pham Dinh Nhut, WIPO Case No. D2014-2161).
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to its HERALD SUN and SUPERCOACH registered trade marks, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name has been registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
B. Preliminary Issue - Language of the Proceeding
Paragraph 11(a) of the Rules provides that “Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative 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”.
In this case the language of the Registration Agreement is Vietnamese, but the Complainant has requested that the language of this proceeding be English. In support of its request the Complainant observes that the Domain Name is in English, the website to which it is connected is in English and that in other cases under the Policy in which the Respondent has been involved (see Section 4 above) other panels have found that the Respondent is likely to have had a sufficient familiarity with the English language for those proceedings to proceed in English.
Having regard to the above, none of which has been challenged by the Respondent, and having regard also to the fact that the Respondent has shown no desire to participate in this administrative proceeding, the Panel finds that it would be unduly onerous for the Complainant, who is not familiar with the Vietnamese language, to be required to translate the Complaint and the annexes into Vietnamese. Moreover, to decide that the language of this proceeding should be English rather than Vietnamese will not, in the view of the Panel, disadvantage the Respondent in any way.
C. Identical or Confusingly Similar
The Domain Name comprises the Complainant’s HERALD SUN trade mark together with the Complainant’s SUPERCOACH trade mark and the “.com” generic Top-Level Domain (“gTLD”) identifier.
The Panel finds that the Domain Name is confusingly similar to trade marks in which the Complainant has rights.
D. Rights or Legitimate Interests
The Domain Name comprises an unusual (possibly unique) combination of words representing the Complainant’s registered trade marks without adornment save for the “.com” gTLD identifier.
On the evidence before the Panel it is plain to the Panel that in selecting the Domain Name the Respondent had the Complainant in mind. Yet, the Complainant has no connection with the Respondent, the Respondent does not have a name reflecting the Domain Name, the website to which the Domain Name is connected (a PPC parking website) does not feature the name “Herald Sun Supercoach” and there is nothing in the case file to indicate why the Respondent might reasonably be said to have any right or legitimate interest in respect of the Domain Name.
In the absence of any explanation from the Respondent the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
E. Registered and Used in Bad Faith
The Complainant contends that in selecting the Domain Name and connecting it to a PPC parking page the Respondent has been acting in bad faith within the meaning of paragraph 4(b)(iv) of the Policy which provides:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainan’'s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”.
The Panel has already found that the Respondent selected the Domain Name with the Complainant in mind and without any justification for having done so. The Complainant asserts that in connecting the Domain Name to a PPC parking website the Respondent is deriving advertising revenue from the PPC links. The Respondent has not challenged that assertion, which on the evidence is likely to be well-founded.
The inevitable conclusion, in the absence of any other explanation, is that the Respondent selected the Domain Name to attract in visitors to his website on the back of the fame of the Complainant’s trade marks and with a view to deriving commercial gain.
The Panel finds that the Domain Name has been registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <heraldsunsupercoach.com>, be transferred to the Complainant.
Date: July 23, 2016