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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

RS Components Limited v. Vietnam Domain Privacy Services / Pham Dinh Nhut

Case No. D2018-1181

1. The Parties

Complainant is RS Components Limited of Corby, United Kingdom of Great Britain and Northern Ireland (“United Kingdom” or “UK”), represented by SILKA Law AB, Sweden.

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

2. The Domain Name and Registrar

The Disputed Domain Name <rscomponent.com> 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 May 26, 2018. On May 28, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 15, 2018, after several reminders, 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. On June 20, 2018, 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 June 24, 2018, Complainant requested English to be the language of the proceeding, to which Respondent did not reply. The Center sent an email communication to Complainant on June 26, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on the same day. Moreover, a third party sent several email communications to the Center on June 20, 22, 25, and 29, and July 3, 6, 20 and 24, 2018. Complainant also sent an email communication to the Center on July 23, 2018.

The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on June 27, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 17, 2018. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 20, 2018.

The Center appointed Richard W. Page as the sole panelist in this matter on July 31, 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

Complainant was founded in 1937 and distributes electronics, automation and control, test and measurement, electrical and mechanical components, tools and consumables. Complainant is the UK, European and Asia Pacific trading brand of Electrocomponents plc.

Complainant is the owner of the registered trademark RS COMPONENTS (the “RS COMPONENTS Mark”) as a word and figure mark in several classes in the United Kingdom and as an European Union Trademark (“EUTM”), including without limitation UK Registration No. UK00001255111 registered in 1985 and EUTM Registration No. 001865369 registered in 2003.

Complainant has, through its parent company and its subsidiaries, registered a number of domain names under generic Top-Level Domains (“gTLDs”) and country code Top-Level Domains (“ccTLDs”) containing the term “rs,” for example <rs-components.com> and <rs-components.co.uk>.

The Disputed Domain Name was originally registered on July 23, 2004.

5. Parties’ Contentions

A. Complainant

Complainant contends that the Disputed Domain Name was acquired by Respondent in 2014. Complainant further contends that the Disputed Domain Name has, according to a WhoIs Archive search, been owned by several different owners in the past. Complainant further contends that the Disputed Domain Name entirely incorporates Complainant’s registered RS COMPONENTS Mark, only missing the “s” at the end.

Complainant asserts that the RS COMPONENTS Mark is clearly recognizable in the Disputed Domain Name and that the addition of the gTLD “.com” does not differentiate the Disputed Domain Name from the RS COMPONENTS Mark. Complainant further asserts that the Disputed Domain Name is confusingly similar to Complainant’s RS COMPONENTS Mark.

Complainant alleges that, in 2015, an email was sent out by Respondent from the fake email address <[…]@rscomponent.com> purporting to be from someone working for Complainant. Complainant further alleges that the email included information about Complainant and requested a wire transfer. Complainant further alleges that email sought to lure potential customers into providing sensitive data and to submitting payment to a foreign bank account not controlled by Complainant.

Complainant argues that by sending the fake email, Respondent was impersonating Complainant’s employee with the intention of attempting fraud on Complainant’s customer. Complainant denies any association with Respondent, which is deceptively misidentifying itself as Complainant’s own employee. Complainant further argues that there can be no right or legitimate interest in holding a domain name for the purpose of furtherance of a fraud through impersonation.

Complainant submits that Respondent cannot claim a right or legitimate interest in the Disputed Domain Name. Complainant explains that it has not licensed or otherwise authorized Respondent to register the Disputed Domain Name. Complainant further explains that it has discovered Respondent is not commonly known by the Disputed Domain Name and that there is no evidence that Respondent has a history of using or of preparing to use the Disputed Domain Name in connection with a bona fide offering of goods or services. Complainant further submits that the Disputed Domain Name resolves to a pay-per-click site featuring sponsored links relating to Complainant.

Complainant avers that Respondent has registered and is using the Disputed Domain Name in bad faith. Complainant further avers that, at the time of the registration of the Disputed Domain Name, Respondent was aware of Complainant and of its trademark. Complainant states that this is shown by the use of the mentioned fake email. Complainant further states that Respondent has registered the Disputed Domain Name to mimic Complainant’s official domain name.

Complaint believes that Respondent is committing fraud. Complainant cites Respondent’s emails that were signed in the name of Complainant’s employee. Complainant further believes that fraud establishes bad faith registration and use of the Disputed Domain Name.

Furthermore, Complainant submits that the registration of the Disputed Domain Name and the lack of an active website to which the Disputed Domain Name resolves is a further showing of bad faith. Complainant cannot conceive of any legitimate use to which Respondent could put the Disputed Domain Name. Neither can Complainant conceive of any legitimate use for the deceptive email address created by Respondent using the Disputed Domain Name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.”

Respondent is not obliged to participate in this domain name dispute proceeding, but when he fails to do so, asserted facts that are not unreasonable will be taken as true and Respondent will be subject to the inferences that flow naturally from the information provided by Complainant. See Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000‑0441.)

Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:

i) that the Disputed Domain Name registered by Respondent is identical or confusingly similar to the RS COMPONENTS Mark in which Complainant has rights; and,

ii) that Respondent has no 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. Language of the proceedings

Paragraph 11(a) of the Rules provides that “[u]nless 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.” Here, the Registration Agreement is in Vietnamese.

Complainant requests that English be the language of the proceeding as Respondent communicated in English when sending the evidenced email impersonating Complainant, and Complainant would be put to unnecessary trouble and delay if Vietnamese were made the language of the proceedings.

In light of Respondent’s failure to object to Complainant’s request, and to the evidence which demonstrates that Respondent has familiarity with English, the Panel determines that the language of the proceedings is English.

B. Identical or Confusingly Similar

Complainant asserts that it is the owner of the registered RS COMPONENTS Mark as a word and figure mark in several classes in the United Kingdom and as an EU mark, including without limitation UK Registration No. UK00001255111 registered as early as 1985 and EUTM Registration No. 001865369 registered in 2003.

Prior UDRP decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption. See, EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047.

The Panel finds that Complainant has established a prima facie case that it enjoys enforceable trademark rights for purposes of this proceeding and that Respondent has failed to contest this prima facia case.

Complainant further asserts that the Disputed Domain Name is identical with and confusingly similar to the RS COMPONENTS Mark to the Policy paragraph 4(a)(i).

Complainant contends that the Disputed Domain Name entirely incorporates Complainant’s registered RS COMPONENTS Mark, only missing the “s” at the end and that the addition of the gTLD “.com” does not differentiate the Disputed Domain Name from the RS COMPONENTS Mark.

Numerous UDRP decisions have recognized that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark. See, F. Hoffmann-LaRoche AG v. P Martin, WIPO Case No. D2009-0323; Dixons Group Plc. v. Mr. Abu Abdullaah, WIPO Case No. D2001-0843; V&S Vin & Sprit AB v. Ooar Supplies, WIPO Case No. D2004-0962; Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227; Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign, WIPO Case No. D2004-0206; SoftCom Technology Consulting Inc. v. Olariu Romeo/Orv Fin Group S.L., WIPO Case No. D2008-0792.

The Panel finds that the Disputed Domain Name incorporates the entirety of the RS COMPONENTS Mark and that the missing “s” and “.com” suffix are non-distinctive. Therefore, Complainant has met the necessary elements of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

Complainant contends that Respondent has no rights or legitimate interest in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy.

Paragraph 4(a)(ii) of the Policy requires Complainant to prove that Respondent has no rights or legitimate interests in the Disputed Domain Name. Section 2.1 of the WIPO Overview 3.0 states that once Complainant makes a prima facie case in respect of the lack of rights or legitimate interests of Respondent, Respondent carries the burden of demonstrating it has rights or legitimate interests in the Disputed Domain Name. Where Respondent fails to do so, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

Paragraph 4(c) of the Policy allows three nonexclusive methods for the Panel to conclude that Respondent has rights or a legitimate interest in the Disputed Domain Name:

(i) before any notice to you [Respondent] of the dispute, your 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; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Disputed Domain Name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Complainant has alleged that Respondent sent a fake email to Complainant’s prospective customers seeking sensitive data and payment to a foreign bank account not controlled by Complainant. Complainant further alleges that such activity is fraud and prevents Respondent from any claim of having provided bona fide goods or services.

Complainant submits that it has not licensed or otherwise authorized Respondent to register the Disputed Domain Name. Complainant further explains that it has discovered Respondent is not commonly known by the Disputed Domain Name. Complainant further submits that the Disputed Domain Name resolves to a pay-per-click site featuring sponsored links relating to Complainant, which precludes Respondent from claiming legitimate noncommercial or fair use.

The Panel finds that these allegations are a sufficient prima facie showing under paragraph 4(a)(ii) of the Policy. Respondent has not contested these allegations.

Therefore, the Panel finds that Complainant has established Respondent’s lack of rights or legitimate interests under paragraphs 4(c) and 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith in violation of paragraph 4(a)(iii) of the Policy.

The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of the Disputed Domain Name:

(i) circumstances indicating that you [Respondent] have registered or you have acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to Complainant who is the owner of the RS COMPONENTS Mark or to a competitor of Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Disputed Domain Name; or

(ii) you [Respondent] have registered the Disputed Domain Name in order to prevent Complainant from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you [Respondent] have registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Disputed Domain Name, you [Respondent] 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 RS COMPONENTS Mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product.

Complainant avers that, at the time of the registration of the Disputed Domain Name, Respondent was aware of Complainant and the RS COMPONENTS Mark. Complainant states that this is shown by the use of a fake email. Complainant further states that Respondent has registered the Disputed Domain Name to mimic Complainant’s official domain name. Complaint alleges that Respondent is committing fraud. Complainant cites Respondent’s emails that were signed in the name of Complainant’s employee.

Furthermore, Complainant submits that the registration of the Disputed Domain Name and the lack of any content on the website to which the Disputed Domain Name resolves is a further showing of bad faith.

Respondent has not contested Complainant’s allegations of bad faith.

The Panel finds that Complainant has made a proper showing under paragraph 4(b)(iv) and paragraph 4(a)(iii) of the Policy.

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 <rscomponent.com> be transferred to Complainant.

Richard W. Page
Sole Panelist
Date: August 14, 2018

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