WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Triumph International (Vietnam) Ltd v. Tran Quoc Huy
Case No. D2017-0340
1. The Parties
The Complainant is Triumph International (Vietnam) Ltd of Di An Town, Binh Duong Province, Viet Nam, represented by BMVN International LLC, Viet Nam.
The Respondent is Tran Quoc Huy of Ha Noi, Viet Nam.
2. The Domain Name and Registrar
The disputed domain name <dolottriumph.com> is registered with Nhan Hoa Software Company Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 21, 2017. On February 21, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 1, 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.
On March 1, 2017, the Center notified the parties in both English and Vietnamese that the language of the Registration Agreement for the disputed domain name was Vietnamese. On March 2, 2017, the Complainant requested for English to be the language of the proceeding.
In response to an email communication from the Respondent of March 3, 2017, the Complainant requested a suspension of the administrative proceedings in order to explore a settlement on March 3, 2017. The administrative proceeding was suspended on March 3, 2017. On March 30, 2017, the Complainant requested re-institution of the proceeding. On the same date, the proceeding was reinstituted.
The Center verified that 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 and 4, the Center formally notified the Respondent of the Complaint, in both English and Vietnamese, and the proceedings commenced on April 6, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 26, 2017. On April 19 and 26, 2017, the Center received email communications from the Respondent. The Center notified the parties about the commencement of panel appointment process on April 27, 2017.
The Center appointed Luca Barbero as the sole panelist in this matter on May 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.
In accordance with its general powers under paragraph 10 of the Rules, the Panel extended the due date for decision from May 31, 2017, to June 9, 2017.
4. Factual Background
The Complainant is a wholly owned subsidiary of Triumph International AG (hereinafter, “Triumph International”), a German company which, directly and through its affiliated companies and global franchisees, trades underwear, lingerie, sleepwear and swimwear under the trademark TRIUMPH in 120 countries, with 1,650 stores worldwide.
The Triumph International’s founders, Johann Gottfried Spiesshofer and Michael Braun, started using the trademark TRIUMPH in 1902 following technology renovation in the production of branded lingerie products.
The Complainant, established in 1992, distributes TRIUMPH products in the Vietnamese market with 73 stores in 17 provinces throughout the country.
Triumph International currently owns over 740 trademark registrations in more than 63 countries worldwide, and its Swiss affiliate Triumph Intertrade AG (hereinafter, “Triumph Intertrade”) owns over 400 trademark registrations in more than 82 countries worldwide.
According to the documents on records, Triumph International is the owner of these national trademark registrations in Viet Nam:
No. 6226 for TRIUMPH INTERNATIONAL (figurative mark), registered on September 19, 1992, in class 25;
No. 6227 for TRIUMPH (word mark), registered on September 19, 1992, in class 25;
No. 6228 for TRIUMPH INTERNATIONAL (word mark), registered on September 19, 1992, in classes 3, 9, 10, 14, 18, 24, 25, 26 and 28.
Triumph Intertrade is, instead, the owner of the following national trademark registrations in Viet Nam:
Nos. 133162 and 133163 for TRIUMPH (figurative mark), registered on September 15, 2009, in classes 3, 25 and 35;
No. 142639 for TRIUMPH C’EST CA (figurative mark), registered on February 25, 2010, in class 25;
No. 195065 for DIVA BY TRIUMPH (word mark), registered on November 2, 2012, in class 25.
In addition to the above, Triumph Intertrade is the owner of these International trademark registrations designating Viet Nam:
No. 593478 for TRIUMPH INTERNATIONAL (figurative mark), registered on July 9, 1992, in classes 3, 9, 10, 14, 18, 24, 25, 26 and 28;
No. 1168933 for TRIUMPH (figurative mark), registered on June 4, 2013, in classes 25 and 35;
No. 1190373 for TRIUMPH THE MAKER OF LINGERIE SINCE 1886 (figurative mark), registered on December 2, 2013, in classes 25 and 35; and
No. 1265656 for TRIUMPH MAGIC BOOST (figurative mark), registered on July 2, 2015, in class 25.
According to a non-exclusive license agreement signed between Triumph Intertrade and the Complainant on December 2, 2013 and duly registered with the National Office for Intellectual Property of Viet Nam (“NOIP”) on March 17, 2014, the Complainant has the right to use the TRIUMPH trademarks in Viet Nam, particularly those under registrations Nos. 133162, 133163 and 142639.
The trademark TRIUMPH is promoted online via the website at the domain name <triumph.com>, registered on August 23, 1994, and other domain names including <triumph.com.vn> and <triumph.vn>, registered in the name of Triumph International on February 28, 2000 and June 2, 2006, respectively.
The disputed domain name <dolottriumph.com> was registered on July 21, 2012 and is pointed to a website displaying images taken from Triumph advertising campaigns and promoting the sale of Triumph lingerie along with underwear of other brands.
5. Parties’ Contentions
The Complainant claims to have rights in the trademark TRIUMPH since it is a subsidiary of Triumph International and has been duly licensed to use the trademark in Viet Nam by Triumph Intertrade.
It states that there has been significant third-party recognition of the reputation of the trademark TRIUMPH, and that Superbrands, an organization that publishes surveys, books and publications related to brands, recognized the TRIUMPH trademark as an aspiration brand and a fashion icon.
The Complainant also asserts that Triumph is listed as one of the 10 most popular lingerie brands in Viet Nam according to ELLE Viet Nam Magazine, the Vietnamese edition of the fashion magazine ELLE Magazine.
The Complainant contends that the disputed domain name <dolottriumph.com> is confusingly
similar to the trademark TRIUMPH for the purpose of paragraph 4(a)(i) of the Policy because (i) the disputed domain name incorporates in its entirety the word “triumph” and (ii) the word “dolot” in the disputed domain name means “lingerie” in English and does not decrease, but to the contrary increases, confusion for consumers.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of
the disputed domain name because:
- The word “triumph” does not automatically give the Respondent rights or legitimate interests in the disputed domain name despite being a dictionary word as the Respondent’s offer of TRIUMPH products on the correspondent website demonstrates that the purpose of the Respondent’s use of this word is unrelated to the dictionary meaning and is meant to indicate the TRIUMPH trademark of the products that it offers;
- The Respondent fails to use the disputed domain name for a bona fide offering of goods for the purpose of paragraph 4(c)(i) of the Policy, as i) the Respondent has no connection or affiliation with the Complainant, its parent company and affiliated companies, and has not received any franchise, license or consent, express or implied, to use the TRIUMPH trademark in a domain name or in any other manner; ii) the Complainant has reasonable grounds to suspect that the TRIUMPH branded lingerie that the Respondent is offering to sell on the website under the disputed domain name are unauthorized products or even counterfeit goods; iii) the Respondent is also using the website under the disputed domain name to sell lingerie products bearing other brands, including Format, Regart, Scandale and La Senza; and iv) the website under the disputed domain name fails to accurately disclose that the Respondent is an independent seller and that there is no relationship between the Respondent and the Complainant, its parent and affiliated companies, publishing a statement “Hãy đến với Triumph để cảm nhận sự khác biệt!” (which means “Come to Triumph to feel the difference!” in English), the TRIUMPH Trademark and images whose copyright belong to the Complainant and its affiliated companies, which could mislead Internet users into believing that the Respondent is an authorized distributor or in some way related to the Complainant or its affiliated companies;
(iii) the Respondent has never been known by the disputed domain name; and
(iv) the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers.
The Complainant submits that the Respondent registered and is using the disputed domain name in bad faith because the trademark TRIUMPH became famous long before the registration date of the disputed domain name and, therefore, it is clear that, by registering and using the disputed domain name, the Respondent intended to exploit the well-known status of the trademark, by intentionally attempting to attract, for commercial gain, Internet users to its website by creating a confusion about the affiliation or association between the Respondent and the Complainant, its parent company and affiliated companies.
The Respondent denies the confusing similarity between the disputed domain name and the Complainant’s trademark, stating that the addition of the word “dolot” to “triumph” in the disputed domain name is sufficient to distinguish it from the Complainant’s well-known trademark.
The Respondent claims to be an official distributor of Triumph Vietnam Co., Ltd since 2014, that the company knew of the Respondent’s website since then but did not react, and that it has been using the disputed domain name for legitimate purposes, in order to promote mainly genuine TRIUMPH products. It also states that on the website at the disputed domain name a statement makes clear that the website is operated by a Triumph distributor and concludes that, in this way, customers cannot be mistaken.
The Respondent further asserts that the logo displayed on its website is different from the Complainant’s and that, when searching on search engines “Triumph Underwear”, people will also see the results of the official Triumph website in the top right-hand corner while the Respondent’s website is at the bottom. Therefore, the Respondent states that there are no signs of confusion with the trademark TRIUMPH and that the Complainant has failed to prove that users were actually misled by its website.
The Respondent further states that it has spent money in advertising and promoting its website at the disputed domain name and that it has been posting a number of products other than Triumph on its website for the purpose of providing more choice to its customers.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that 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) 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.
A. Preliminary Procedural Issue: Language of the Proceeding
The Complaint was filed in English. According to the Center’s verifications with the concerned Registrar, the language of the Registration Agreement that applies to the disputed domain name is Vietnamese. Therefore, the Center notified the parties, with a communication written both in English and Vietnamese, that the language of the Registration Agreement was Vietnamese and requested the Complainant to provide at least one of the following:
1) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; or
2) submit the Complaint translated into Vietnamese; or
3) submit a request for English to be the language of the administrative proceedings.
The Complainant submitted a request for English to be the language of the proceedings, relying on an English version of the Registration Agreement found by the Complainant on the Registrar’s website and stating that the Respondent is familiar with English since, on the website at the disputed domain name, it uses various currencies including Vietnamese Dong, USD, Euro and Pound Sterling, thus demonstrating that it is familiar with receiving orders from customers using currencies of English-speaking countries, who likely use English in their communication with the Respondent.
In reply to the Complainant’s request for English to be the language of the proceedings, the Respondent sent an email communication to the Center, in Vietnamese language. In addition, after the notification of the Complaint, the Respondent sent another email communication to the Center in Vietnamese.
The Panel notes that the Respondent did not provide any comment on the Complainant’s request for English to be the language of the proceedings and replied to the merits of the Complainant’s assertions, demonstrating that it was able to understand the Complaint, which was written in English. The Panel reviewed the Respondent’s submission and could understand the related content availing of a public translation software.
In view of the above, in exercising its powers under paragraphs 10 and 11 of the Rules, the Panel deems appropriate to accept the Complainant’s request to held the proceedings in English. Moreover, as the Panel could understand the Respondent’s allegations, it has decided to consider the Respondent’s submissions, as summarized in section 5.B above, without requesting a translation to the Respondent. The Panel finds that this solution complies with the obligations prescribed by paragraph 10 (b) and (c) of the Rules, requiring, respectively, that the parties are treated with equality and each party is given a fair opportunity to present its case and that the administrative proceeding takes place with due expedition.
B. Identical or Confusingly Similar
The Complainant relies on trademark registrations valid in Viet Nam consisting of TRIUMPH alone or with the addition of other words or device elements.
As highlighted above, said trademark registrations are registered in the name of Triumph International and Triumph Intertrade. However, the Complainant has demonstrated that it is a wholly-owned subsidiary of Triumph International, and that it has rights to use some of the trademarks registered by Triumph Intertrade in Viet Nam based on a non-exclusive license agreement signed in 2013.
According to paragraph 1.4.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), a trademark owner’s affiliate such as a subsidiary of a parent or of a holding company is considered to have rights in a trademark under the UDRP for purposes of standing to file a complaint.
Based on the documents submitted by the Complainant, the Panel is satisfied that the Complainant has rights in the trademark TRIUMPH for the purpose of paragraph 4(a)(i) of the Policy.
The Panel finds that the core of all the trademarks on which the Complainant relies is constituted of the term“triumph”, and that the addition of the descriptive term “dolot” – the Vietnamese for “lingerie” – as a prefix in the disputed domain name is not sufficient to avoid confusing similarity.
In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to registered trademarks in which it has established rights as prescribed by paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
The Complainant is required to make a prima facie case that the Respondent lacks rights or legitimate interests and, once such prima facie case is made, the burden of production shifts to the Respondent to submit appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0100; Banco Itau S.A. v. Laercio Teixeira, WIPO Case No. D2007-0912; Wal-Mart Stores, Inc. v. WalMart Careers, Inc., WIPO Case No. D2012-0285.
The Complainant stated to have no relation with the Respondent and that the Respondent has not obtained any authorization to use the trademark TRIUMPH or the disputed domain name. The Respondent claimed to be a Triumph authorized reseller, but did not provide evidence of any agreement with the Complainant or other companies of the Triumph group.
In addition, there is no indication before the Panel that the Respondent might be commonly known by the disputed domain name.
The Respondent has been using the disputed domain name to advertise and sell purported TRIUMPH products along with underwear products of competitors.
According to paragraph 2.8.1 of the WIPO Overview 3.0, “resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Outlined in the ‘Oki Data test’, the following cumulative requirements will be applied in the specific conditions of a UDRP case:
(i) the respondent must actually be offering the goods or services at issue;
(ii) the respondent must use the site to sell only the trademarked goods or services;
(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and
(iv) the respondent must not try to ‘corner the market’ in domain names that reflect the trademark.
The Oki Data test does not apply where any prior agreement, express or otherwise, between the parties expressly prohibits (or allows) the registration or use of domain names incorporating the complainant’s trademark”.
In the case at hand, there is no evidence on records of any agreement executed between the parties as to the resale of TRIUMPH products and/or the authorization or prohibition to register the disputed domain name. Therefore, the Panel shall evaluate the presence of the cumulative requirements prescribed by the Oki Data test to determine whether the Respondent could be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name.
According to the screenshots submitted by the parties and the Panel’s review of the Respondent’s website published at the disputed domain name, the first condition is met as the Respondent appears to actually offer for sale TRIUMPH products; although there is no evidence that the Respondent might have tried to corner the market in domain names reflecting the trademark, the second and third conditions are not fulfilled, since the Respondent is advertising and selling also products of competitors on the website at the disputed domain name and has not published an accurate and prominent disclaimer aimed at informing users about its relationship with the trademark owners. Rather, the Respondent appears to simply signal that it is a distributor of the Complainant in its contact details.
In view of the above, the Panel finds that the Respondent is not making a bona fide offering of goods or services under the disputed domain name. Moreover, since the Respondent’s activity on its website is clearly commercial in nature, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
Therefore, the Panel finds that also the requirement prescribed by paragraph 4(a)(ii) of the Policy has been met.
D. Registered and Used in Bad Faith
In view of the prior registration and use of the trademark TRIUMPH in Viet Nam and the Respondent’s combination of the trademark with a term in Vietnamese (“dolot”, meaning “lingerie” in English) which is descriptive of products commercialized under the trademark TRIUMPH, the Panel finds that the Respondent’s registration of the disputed domain name cannot amount to a mere coincidence.
In addition, the Respondent’s statements and its use of the disputed domain name to advertise and sell primarily TRIUMPH products demonstrate the Respondent’s actual knowledge of the trademark.
In view of the above, the Panel finds that, in all likelihood, the Respondent registered the disputed domain name with the Complainant’s trademark in mind.
The Panel also finds that, by pointing the disputed domain name to a website promoting and offering for sale TRIUMPH and competing products, publishing images taken from Triumph advertising campaigns and failing to accurately and prominently disclose the relationship with the trademark owner, the Respondent has intentionally attempted to attract Internet users to its website for commercial gain, by causing a likelihood of confusion with the trademark TRIUMPH as to the source, sponsorship, affiliation or endorsement of its website and the products promoted therein according to paragraph 4(b)(iv) of the Policy.
In view of the above, the Panel finds that the Complainant has proven that the disputed domain name has been registered and is being used by the Respondent in bad faith.
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 <dolottriumph.com> be transferred to the Complainant.
Date: June 12, 2017