WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Federal Express Corporation v. Domain Admin, Domain Whois Protection Service / Hoang Van Thang

Case No. D2018-2243

1. The Parties

The Complainant is Federal Express Corporation of Memphis, Tennessee, United States of America (“US”), represented by BMVN International LLC, Viet Nam.

The Respondent is Domain Admin, Domain Whois Protection Service of Viet Nam / Hoang Van Thang, Hoang Van Thang of Thanh Hoa, Viet Nam.

2. The Domain Name and Registrar

The disputed domain name <fedexvietnam.com> is registered with P.A. Viet Nam Company Limited (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on October 3, 2018. On October 3, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 4, 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.

On October 5, 2018, the Center transmitted an email in English and Vietnamese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on October 8, 2018. The Respondent did not reply.

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 in English and Vietnamese of the Complaint, and the proceedings commenced on October 23, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 12, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 13, 2018.

The Center appointed Pham Nghiem Xuan Bac as the sole panelist in this matter on November 22, 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, Federal Express Corporation, is a US-based company, which is a multinational courier delivery services company.

According to the information provided by the Complainant, the Complainant’s service networks reach more than 220 countries and territories, with over 12 million shipments each business day. The Complainant is recognized as one of the world’s largest transportation and delivery service providers.

The name “FedEx” is a syllabic abbreviation of the Trade Name of the Complainant (i.e., Federal Express). The Complainant has established its rights to the FEDEX-composite trademarks since 1984 under both standard and stylized forms through formal registration in various countries (including, but not limited to, the European Union, the United States of America, France and Viet Nam) for, inter alia, shipping and delivery services.

The trademark FEDEX has been registered for services in Class 39 in a variety of countries, including in Viet Nam, where the Respondent resides, under National Registrations No. 8135 dated April 26, 1993, and No. 16605 dated April 29, 1995. The Complainant’s trademark FEDEX has been designated and allowed for protection in Viet Nam under International Registrations No. 1147004 and No. 1141243 since 2012.

In addition, the Complainant owns a number of domain names featuring the trademark FEDEX, among which notably is <fedex.com> that was registered on February 26, 1991.

The Respondent registered the Disputed Domain Name <fedexvietnam.com> on May 19, 2016. As of the date of this Decision, the Disputed Domain Name is resolving to a website offering website design services. However, the Disputed Domain Name used to resolve to another website of the Respondent, via which the delivery service under the FEDEX brand was promoted.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:

(i) The Disputed Domain Name is confusingly similar to the trademark in which the Complainant has rights.

First, the Complainant contends that the Complainant is the registered owner of trademark registrations for FEDEX in a variety of countries, including the country of the Respondent’s residence (Viet Nam). The FEDEX trademark has been used extensively by the Complainant and recognized as a well-known trademark in China and Indonesia. The Complainant is also the owner of the domain name <fedex.com>. All these trademark and domain name registrations predate the registration of the Disputed Domain Name.

Secondly, the Complainant contends that the Disputed Domain Name is confusingly similar to mark owned by the Complainant by arguing that:

(a) The Disputed Domain Name reproduces entirely the well-known trademark FEDEX; and

(b) The addition of the geographical term “vietnam” could not dispel any likelihood of confusion. On the contrary, this geographical term misleads the Internet users into thinking that the Disputed Domain Name is somehow related to or sponsored by or affiliated with the Complainant and its FEDEX services in Viet Nam. Therefore, the likelihood of confusion is heightened.

(c) According the Conclusion of Assessment No. NH220-18YC/KLGD dated May 17, 2018 issued by the Viet Nam Intellectual Property Research Institute (VIPRI), the indication “FedEx VIETNAM.COM”, as shown on the website under the Disputed Domain Name at the time of making the bailiff record, is confusingly similar to the Complainant’s FEDEX Trademark under International Registration No. 1147004, which is protected in Viet Nam.

Finally, the Complainant submits that the addition of the generic Top-Level Domain (“gTLD”) suffix “.com” in the Disputed Domain Name does not add any distinctiveness to the Disputed Domain Name.

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

The Complainant submits that the elements set forth in Policy, paragraph 4(c) are not fulfilled.

First, the registration of the trademark FEDEX long preceded the registration of the Disputed Domain Name. Moreover, the Respondent must have been well aware of the Complainant’s FEDEX trademark when it registered and started using the Disputed Domain Name, given a number of false references to the Complainant made by the Respondent as shown on the website under the Disputed Domain Name.

Second, the Respondent is neither a licensee of the Complainant, nor otherwise authorized to use the Complainant’s FEDEX trademark.

Additionally, the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name due to the Respondent’s intention for commercial gain through the offer for the express delivery services on the webpage.

Finally, the website under the Disputed Domain Name fails to accurately disclose that the Respondent is an independent business entity and that there is no relationship between the Complainant and the Respondent. In contrast, the Respondent placed in the website under the Disputed Domain Name false references, misleading Internet users and relevant consumers that it is an agent of the Complainant in Viet Nam.

(iii) The Disputed Domain Name was registered and is being used in bad faith.

The Complainant contends that because the Disputed Domain Name wholly and purposefully incorporates the Complainant’s well-known and prior registered FEDEX trademark, and was registered by the Respondent long after the Complainant’s FEDEX trademarks became widely known to consumers and the relevant trade, the registration and use of the Disputed Domain Name are a form of opportunistic bad faith.

Further, the Respondent has been using the Disputed Domain Name in connection with a website that seeks to misleadingly entice consumers to use the express delivery services through the Respondent as if the Respondent is an agent of the Complainant in Viet Nam, while it has never assumed that role.

Finally, the Complainant contends that the Respondent’s bad faith is also established by the likelihood that Internet users will mistakenly believe the Disputed Domain Name is connected to or associated with the Complainant, given that the FEDEX trademark is a prominent element of the Disputed Domain Name.

Therefore, the Complainant argues that three elements of a UDRP case have been established and on that basis, requests that the Disputed Domain Name be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

A. Procedural Issues

Language of the Proceeding

The Complaint was filed in English. However, the Registrar confirmed that the language of the Registration Agreement was Vietnamese.

As the Complaint was filed in English, the Center, in its notification dated October 5, 2018, invited the Complainant to submit either (i) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceeding should be in English, or a translation of the Complaint in Vietnamese, or (ii) a substantiated request for English to be the language of the proceeding.

On October 8, 2018, the Complainant sent the Center an email, requesting that English be the language of the proceeding. The Respondent submitted neither request nor comment.

According to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the 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.

Similar to previous UDRP decisions, the Panel finds that the spirit of paragraph 11(a) is to ensure fairness in the selection of language by giving full consideration to the Parties’ level of comfortability with each language, the expenses to be incurred and possibility of delay in the proceeding in the event translations are required and other relevant factors (see, e.g., Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679).

In the present case, the Panel takes into account the circumstances of the proceeding, including, but not limited to:

(i) the fact that the Complainant, an American business entity, does not appear to be able to communicate in Vietnamese, and therefore, if the Complainant was required to have the documents translated into Vietnamese, the proceeding would be unduly delayed, and the Complainant would have to incur substantial expenses for translation; and

(ii) the English language is quite popular in Viet Nam, where the Respondent is located, and the English is also the common language in the industry of international delivery services. In addition, the website under the Disputed Domain Name, as recorded by the Bailiff on April 17, 2018, contains English contents. These suggest that the Respondent has knowledge of the English language and be able to communicate in English.

For the purpose of easy comprehension of the Complainant (the only party actively taking part in the proceeding) of the Panel’s decision without any necessity of translations, and in the interest of fairness to both Parties as well as the Panel’s obligation under paragraph 10(c) of the Rules, which provides that “the Panel shall ensure that the administrative proceeding takes place with due expedition”, the Panel hereby decides, under paragraph 11(a) of the Rules, that the language of the proceeding shall be English and shall render its decision in English.

B. Identical or Confusingly Similar

The Complainant is required to establish the following: (i) that it has trademark rights, and, if so, (ii) that the Disputed Domain Name is identical or confusingly similar to its trademark.

First of all, the Panel finds that the Complainant has clearly evidenced that it has registered trademark rights to FEDEX, well before the Disputed Domain Name was registered.

Second, the Disputed Domain Name comprises the Complainant’s FEDEX mark, in which the Complainant has rights. The difference between the Disputed Domain Name and the trademark is the addition of the suffix “vietnam”, evidently referring to the name of the country where the Respondent resides, i.e., Viet Nam.

The Panel finds that “fedex” remains the dominant element in the Disputed Domain Name. It is well established that the addition of geographic term (such as “vietnam”) to a trademark does not prevent confusing similarity. Thus, in the Panel’s view, the addition of the said suffix does nothing to dispel confusing similarity, as it was found in previous UDRP decisions (see, e.g., Royal Canin SAS v. Ong Pham Duc Thang, WIPO Case No. D2017-2567).

Third, the Panel finds, similarly to other UDRP panels, that the addition of the gTLD “.com” to the Disputed Domain Name does not constitute an element as to avoid confusing similarity for the Policy purposes. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.1.

On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s FEDEX trademark, and the first element of the Policy is established.

C. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the Disputed Domain Name for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The Panel finds that the Complainant has presented sufficient evidence that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent did not reply to the Complainant’s contentions and, therefore, did not refute the Complainant’s contentions.

Regarding paragraph 4(c)(i) of the Policy, the Panel finds, in light of the Complainant’s asserted facts, that no license, permission or authorization of any kind to use the Complainant’s trademark has been granted to the Respondent. There is no evidence available that the Respondent holds any registered or unregistered trademark rights in any jurisdiction. Thus, the Panel finds that the Respondent has no rights in the trademark FEDEX.

Considering whether or not the Respondent is making a bona fide offering of goods and services via using the Disputed Domain Name, the Panel finds that on the website under the Disputed Domain Name, the Respondent does not place any statement or disclaimer disclosing the lack of relationship with the Complainant. Further, as it is well-evidenced in the Bailiff’s record dated April 17, 2018, the website under the Disputed Domain Name contains the “FEDEX VIETNAM.COM” sign, which is confusingly similar to the Complainant’s FEDEX trademark.

In addition, the website under the Disputed Domain Name also bears some indications and statements, such as the statement of “collecting FEDEX international courier in Viet Nam” at the top of the website and the introduction page about the Complainant’s history at “http://fedexvietnam.com/gioi-thieu.html”. These indications and statements may mislead consumers into believing in a connection or association between the Respondent and the Complainant, where such connection or association does not exist in reality. For all foregoing reasons, the Panel finds the Respondent’s use of the Disputed Domain Name cannot be considered a bona fide offering of goods or services.

Moreover, the Panel finds that there is no evidence that would suggest that the Respondent, as an individual, business, or other organization, has been commonly known by the Disputed Domain Name.

The Panel further finds that no evidence has been presented that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name. In fact, as it appears following the Complainant’s assertions and evidence with regard to the Respondent’s registration of the Disputed Domain Name, the Respondent had full knowledge of the trademark and had an intention to gain profit by riding on the goodwill and reputation of the Complainant.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The second element under paragraph 4(a)(ii) of the Policy is established.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy reads:

“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you 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 complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

Each of the four circumstances in paragraph 4(b) of the Policy, if found, is an instance of “registration and use of a domain name in bad faith”.

The Panel finds that the Complainant has put forth evidence that the Respondent has registered and used the Disputed Domain Name in bad faith. The Respondent did not reply to the Complainant’s contentions and, therefore, has not refuted the Complainant’s contentions.

The Panel further finds that the Complainant’s FEDEX trademark has been registered in numerous countries. The Complainant’s FEDEX trademark has been registered and used in, among other countries, Viet Nam where the Respondent resides. These trademark registrations well predate the registration of the Disputed Domain Name.

The Disputed Domain Name comprises the FEDEX trademark in its entirety, adding only the geographical term “vietnam”. Given the extensive use of the FEDEX trademark for delivery services by the Complainant, which occurs in numerous countries, including in Viet Nam, where the Respondent resides, it is very unlikely that the Respondent registered the Disputed Domain Name in a fortuity. Also, in consideration of the use of the Disputed Domain Name and the contents of the website thereunder, the Panel is of the view that the Respondent obviously knew of the Complainant and its FEDEX trademark when it registered the Disputed Domain Name, and the Panel considers the registration an attempt by the Respondent as to take advantage of the Complainant’s goodwill.

On the date of this Decision, the Panel accesses the Disputed Domain Name and finds that it resolves to another website that is different from the one shown in the Bailiff Record on April 17, 2018. However, it is well proved and evidenced by the Complainant that the website under the Disputed Domain Name used to offer for delivery services branded with the Complainant’s FEDEX trademark. In addition to the adoption of the Complainant’s FEDEX trademark as a uniquely distinctive part in the Disputed Domain Name, the Respondent used the “FEDEX VIETNAM.COM” sign confusingly similar to the Complainant’s FEDEX trademark and falsely represented itself like an agency of the Complainant. Hence, the Respondent’s change of the website under the Disputed Domain Name does not alter the Panel’s finding.

The Panel would like to note that even in consideration of the current website under the Disputed Domain Name, which offers and promotes the website design services that are totally different from the delivery services of the Complainant, the Panel retains the view that the Respondent is using the Disputed Domain Name in bad faith as when using for a different services, the Disputed Domain Name will likely dilute the distinctiveness of the well-known mark FEDEX of the Complainant. The Panel finds the act of changing the content of the website under the Disputed Domain Name is evidence of the Respondent’s persistence in holding the Disputed Domain Name, despite the notification of the UDRP proceeding by the Centre, and thus, another indication of bad faith on the side of the Respondent.

With the said facts, the Panel finds that the Respondent intentionally registered and used the Disputed Domain Name for commercial gain and that the Respondent’s actual use of the Disputed Domain Name appears to mislead consumers and confuse them by making them believe that the website is associated, fostered or recommended by the Complainant. Such misleading behavior is an indication of bad faith within the meaning of paragraph 4(b)(iv) of the Policy, on the part of the Respondent.

Taking into account all of the above and the available record, the Panel finds that the Disputed Domain Name was registered and used by the Respondent in bad faith under paragraph 4(b)(iv) of the Policy, and the third element under paragraph 4(a)(iii) of the Policy is established.

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 <fedexvietnam.com> be transferred to the Complainant.

Pham Nghiem Xuan Bac
Sole Panelist
Date: December 5, 2018