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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Doka Gesellschaft mit beschränkter Haftung (GmbH) v. Thu Ngan Tran

Case No. D2018-2095

1. The Parties

The Complainant is Doka Gesellschaft mit beschränkter Haftung (GmbH) of Amstetten, Austria, represented by Tigges Rechtsanwälte, Germany.

The Respondent is Thu Ngan Tran of Long An, Viet Nam.

2. The Domain Name and Registrar

The disputed domain name <doka.shop> is registered with eNom, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 13, 2018. On September 13, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 13, 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.

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, and the proceedings commenced on September 24, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 14, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 26, 2018.

The Center appointed Eduardo Machado as the sole panelist in this matter on November 1, 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 is an international producer and supplier of formwork used in the construction sector. The company is based in Austria. The Complainant is now in more than 70 countries and has been founded in 1958.

Complainant is the owner of several trademark registrations for the DOKA mark in various countries and regions, including but not limited to the European Union and Viet Nam. The oldest trademark registration dates back to 1965 (International trademark No. 305272).

Complainant also owns and operates a number of different domain names, such as <doka.com>, <doka.cn>, <doka.eu> and <doka.hk>.

The disputed domain name <doka.shop> was registered on October, 31, 2016.

5. Parties’ Contentions

A. Complainant

1. The disputed domain name is identical to the Complainant’s registered mark;

2. The disputed domain name incorporates, without alteration, the entirety of the Complainant’s trademark registration for DOKA;

3. The generic Top-level Domain (“gTLD”) “.shop” does not affect the similarity;

4. The disputed Domain Name may cause confusion among consumers, as Internet users will expect and assume business contact details and information on the Complainant;

5. The Respondent has no rights or legitimate interests in respect of the disputed domain name as the Respondent does not own any trademark rights or license to use the trademark;

6. The disputed domain name is currently redirecting Internet users to an inactive website, showcasing no content at all;

7. The Respondent is not commonly known by the disputed domain name and is not making legitimate noncommercial or fair use of the disputed domain name;

8. The gTLD “.shop” is only intended for online shops, as well as offline retailers building an online presence, thus if the Respondent wants to use the disputed domain name at any time, it has to be for a commercial purpose.

9. The Respondent has intentionally registered and is using the domain name in bad faith, as registration, followed by a passive holding of the domain name can amount to use in bad faith;

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

According to the Policy, paragraph 4(a)(i), the Complainant has to prove that the disputed domain name is identical or confusingly similar to a trademark or servicemark in which the Complainant has rights.

The Panel finds that the Complainant has proven to be the holder of numerous trademark registrations around the world consisting of the DOKA mark.

It is well established in previous UDRP decisions that, where the disputed domain name incorporates a complainant’s registered trademark, this may be sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.

In view of the above, this Panel concludes that the Complainant has fulfilled the first requirement under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

According to the Policy, paragraph 4(a)(ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.

The Panel notes that prior panels developed a consensual view that it is deemed sufficient for a complainant to make a prima facie case that the respondent lacks rights or legitimate interests in a domain name. Once a prima facie case has been made, it is the respondent’s burden to demonstrate its rights or legitimate interests. If it fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

On the record, the Panel verifies that the Complainant is the owner of several DOKA trademark registrations and that it has no businesses or other relationships with the Respondent.

With respect to paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that the Respondent has ever been commonly known by the disputed domain name. Besides, no active use of the domain name has been made until the start of this Complaint.

Furthermore, with respect to paragraph 4(c)(iii) of the Policy, the Respondent has not made or is not making a legitimate noncommercial or fair use of the disputed domain name.

Accordingly, considering the absence of a response, meaning that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name, the Panel finds that the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name.

Thus, the Panel considers paragraph 4(a)(ii) of the Policy fulfilled.

C. Registered and Used in Bad Faith

For a complaint to succeed, a panel must be satisfied that a domain name has been registered and is being used in bad faith, according to the Policy, paragraph 4(a)(iii).

In the present case, the Panel finds that the Respondent has intentionally registered the disputed domain name, which is confusingly similar to the Complainant’s marks and domain names and could mislead consumers. Based on all the above facts, it is highly unlikely that the Respondent was not aware of the Complainant’s trademark rights when the disputed domain name was registered.

The Panel also notes that the allegations of bad faith made by the Complainant were not contested, as the Respondent did not reply to the Complaint. Examining the evidence provided by the Complainant, it is confirmed that its trademarks, as well as domain names, have been in use long before the disputed domain name was registered.

Additionally, the Panel verifies that the disputed domain name resolves to an inactive website and notes that the passive holding of the disputed domain name does not prevent a finding of bad faith. See section 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). In the absence of any supporting assertions or evidence from the Respondent, the Panel also agrees there to be no plausible bona fide use that the Respondent could make of the disputed domain name that would not interfere with the Complainant’s prior rights. As such, the Panel finds the Respondent’s passive holding of the disputed domain name to amount to bad faith use.

Last but not least, the Panel notes that there are no facts set out in the available record which could possibly justify the registration or passive holding of the disputed domain name by the Respondent.

In view of the above, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith.

Therefore, the Panel finds that the Complainant has established the third element of paragraph 4(a) 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 <doka.shop> be transferred to the Complainant.

Eduardo Machado
Sole Panelist
Date: November 15, 2018

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