WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Schibsted Classified Media Hungary v. Vietnam Domain Privacy Services
Case No. D2018-1618
1. The Parties
The Complainant is Schibsted Classified Media Hungary of Budapest, Hungary, represented by Nóra Nagy-Baranyi, Hungary.
The Respondent is Vietnam Domain Privacy Services of Ho Chi Minh, Viet Nam.
2. The Domain Name and Registrar
The disputed domain name <hasznaltautok.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 July 18, 2018. On July 18, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 27, 2018, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant cured the deficiency on August 8, 2018. On August 13, 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 August 16, 2018, the Complainant requested for English to be the language of the proceeding, to which the Respondent did not reply.
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 the Respondent of the Complaint in both Vietnamese and English, and the proceedings commenced on August 20, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 9, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 10, 2018.
The Center appointed Douglas Clark as the sole panelist in this matter on September 19, 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 is the registrant of the domain name <hasznaltauto.hu> and since 1999 has also owned and operated the “www.hasznaltauto.hu” website where classified advertisements for cars are published and edited into a searchable online database and which is now a significant platform in Hungary for the trade in used cars.
The Complainant is registered under the corporate name of Használtautó Ltd and is the owner of the Hungarian trademarks HASZNÁLTAUTÓ (Reg. No. 187831, filed on December 12, 2005 and registered on December 14, 2006) and HASZNÁLTAUTÓ.HU (Reg. No. 188321, filed on May 17, 2004 and registered on January 12, 2007).
The Respondent is a privacy service in Ho Chi Minh City, Viet Nam. The Registrar has confirmed that the Privacy Service is the registrant of the disputed domain name.
The Respondent registered the disputed domain name <hasznaltautok.com> on April 6, 2005. The disputed domain name resolves to a website “www.hasznaltautok.com” which appears to be a parking page containing hyperlinks in the Hungarian language to car trading websites.
5. Parties’ Contentions
The Complainant’s contentions are as follows:
Identical or confusingly similar
The disputed domain name is confusingly similar to the HASZNÁLTAUTÓ and HASZNÁLTAUTÓ.HU trademarks because it incorporates in its entirety the HASZNÁLTAUTÓ trademark with only the addition of the letter “k”, which signifies the plural form of a noun in the Hungarian language.
No rights or legitimate interests
The Respondent (as an individual, business, or other organization) owns no trademarks in “hasznaltautok” and is not commonly known by the disputed domain name, which resolves to a website with hyperlinks in the Hungarian language to other websites offering similar services to the Complainant. This shows that the Respondent is not making a legitimate, noncommercial or fair use of the disputed domain name, without intent or commercial gain misleadingly to divert.
The disputed domain name was registered and is being used in bad faith
The website to which the disputed domain name resolves shows that the Respondent registered the disputed domain name primarily for the purpose of disrupting the business of the Complainant. Numerous domain name complaints against the Respondent show a pattern of bad faith behavior. The Complainant claims that there is no logical explanation for a Vietnamese service-provider to choose a Hungarian word to identify its services other than to gain unfair advantage from the Complainant’s trademark.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Preliminary Matter: Language of the Proceeding
The language of the Registration Agreement is in Vietnamese. 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.”
The Complainant requested the language of the proceeding to be English on the grounds that it is based in Hungary and does not understand Vietnamese and that it would be expensive for the Complainant to translate the Complaint into Vietnamese. Further, the disputed domain name resolves to a website which connects Internet users to English language webpages.
In the alternative, the Complainant requested the language of the proceeding to be Hungarian on the grounds that the disputed domain name resolves to a website that uses Hungarian and is clearly designed for the Hungarian market.
The Respondent did not respond to this request.
The final determination of the language of the proceeding lies with this Panel.
The website under the disputed domain name is a parking page in Hungarian and German. The disputed domain name appears to have no meaning in Vietnamese. Translating the Complaint would cause unnecessary delay in this matter.
The Respondent did not respond to the Complainant’s request or to the proceedings in any way. Given the lack of response to assert any rights and the other factors mentioned above, the Panel determines the language of proceedings to be English.
6.2 Substantive Issues
A. Identical or Confusingly Similar
The disputed domain name <hasznaltautok.com> is confusingly similar to the Complainant’s HASZNÁLTAUTÓ trademark.
A side-by-side comparison of the disputed domain name and the Complainant’s HASZNÁLTAUTÓ trademark shows the mark is clearly recognizable within the disputed domain name. The Complainant’s HASZNÁLTAUTÓ trademark remains sufficiently recognizable notwithstanding the addition of the letter “k” to the disputed domain name, whether this was added to create a plural or by intentional misspelling and this makes the disputed domain name confusingly similar. (See Section 1.9 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Panel notes that the Complainant does not have a registered trademark for HASZNÁLTAUTÓ in Viet Nam. The ownership of a trademark is generally considered to be a threshold standing issue. The location of the trademark, its date of registration (or first use) and the goods and/or services for which it is registered, are all irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP. These factors may however bear on a panel’s further substantive determination under the second and third elements. (See section 1.1.2 of the WIPO Overview 3.0).
The first element of paragraph 4(a) of the Policy is therefore satisfied.
B. Rights or Legitimate Interests
Section 2.1 of the WIPO Overview 3.0 provides:
“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. There is no evidence that the Respondent is commonly known by the disputed domain name, that the Respondent has attempted to use, or made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of good or services and that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name.
The second element of paragraph 4(a) of the Policy is therefore satisfied.
C. Registered and Used in Bad Faith
The Complainant provided evidence that it owns and operates the “www.hasznaltauto.hu” website where classified advertisements for cars are published and edited into a searchable online database since 1999. The Complainant filed its trademark for HASZNÁLTAUTÓ.HU on May 17, 2004.
Section 3.8.2 of the WIPO Overview 3.0 states that “where the facts of the case establish that the respondent’s intent in registering the domain name was to unfairly capitalize on the complainant’s nascent (typically as yet unregistered) trademark rights, panels have been prepared to find that the respondent has acted in bad faith.”
In the present case, is more likely than not that the Respondent was aware of the Complainant’s business when registering the disputed domain name, since the Complainant operates its website since 1999.
This case falls with paragraph 4(b)(iv) of the Policy which provides that a registrant has registered and is using a domain name in bad faith where:
“(iii) 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 complainant'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.”
This is clearly demonstrated by the fact that the disputed domain name resolves to an active pay-per-click website that attracts Internet users and then redirects them via hyperlinks to competitor’s websites, thereby adversely affecting the Complainant’s business by diverting existing or new customers.
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 <hasznaltautok.com> be transferred to the Complainant.
Date: October 5, 2018