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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Phoenix Contact GmbH & Co. KG v. The Hoang, Cong Ty Co Phan Tu Dong Tien Hung

Case No. D2020-1211

1. The Parties

Complainant is Phoenix Contact GmbH & Co. KG, Germany, represented by Taylor Wessing, Germany.

Respondent is The Hoang, Cong Ty Co Phan Tu Dong Tien Hung, Viet Nam.

2. The Domain Name and Registrar

The disputed domain name <phoenixcontact-vietnam.com> is registered with OnlineNic, Inc. d/b/a
China-Channel.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 13, 2020. On May 13, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 14, 2020, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on May 15, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 4, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 5, 2020.

The Center appointed Lorelei Ritchie as the sole panelist in this matter on June 12, 2020. 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 a multinational company based in Germany. Complainant is a global leader in the market for components, systems, and solutions in electrical engineering, electronics, and automation. Complainant has about 20,000 employees worldwide, and operates in over 100 countries. Since 1982, Complainant has operated under the mark PHOENIX CONTACT. Complainant owns trademark registrations for the PHOENIX CONTACT mark in various jurisdictions, including International Trademark Registration No. 1125907 (registered on October 28, 2011).

The disputed domain name <phoenixcontact-vietnam.com> was registered on December 22, 2019. Respondent has no affiliation with Complainant. Respondent has had the URL associated with the disputed domain name resolve to a parked webpage, that was inactive as of the filing date of the Complaint. Complainant has not authorized any activities by Respondent, nor any use of its trademarks thereby.

5. Parties’ Contentions

A. Complainant

Complainant contends that (i) the disputed domain name <phoenixcontact-vietnam.com> is identical or confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith.

In particular, Complainant contends that its PHOENIX CONTACT mark is “famous” and known globally in the areas of electrical engineering and related fields. Complainant further contends that it has trademark registrations in various jurisdictions for the PHOENIX CONTACT mark. Complainant further contends that Respondent has no rights or legitimate interests in the domain name registration or use of the disputed domain name. Rather, Complainant contends that Respondent has acted in bad faith in previously having a webpage associated with the disputed domain name that referenced Complainant’s products, but which was subsequently rendered inactive.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

This Panel must first determine whether the disputed domain name <phoenixcontact-vietnam.com> is identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that it is. The disputed domain name directly incorporates Complainant’s registered trademark PHOENIX CONTACT, and merely adds the geographically descriptive term “Vietnam” and a hyphen.

Complainant’s trademark is clearly recognizable in the disputed domain name.

Numerous UDRP panels have agreed that supplementing or modifying a trademark with dictionary or descriptive words, including geographically descriptive wording, does not prevent a finding of confusing similarity for purposes of satisfying this first prong of paragraph 4(a)(i) of the Policy. See, for example,Inter-IKEA v. Polanski, WIPO Case No. D2000-1614 (transferring <ikeausa.com>); General Electric Company v. Recruiters, WIPO Case No. D2007-0584 (transferring <ge-recruiting.com>); Microsoft Corporation v. StepWeb, WIPO Case No. D2000-1500 (transferring <microsofthome.com>); CBS Broadcasting, Inc. v. Y2K Concepts Corp., WIPO Case No. D2000-1065 (transferring <cbsone.com>). See also section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The Panel therefore finds that the disputed domain name is confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Policy provides some guidance to respondents on how to demonstrate rights or legitimate interests in the domain name at issue in a UDRP dispute. For example, paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that Respondent has been “commonly known by the domain name”; or (iii) “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”.

Based on the evidence and Complainant’s contentions mentioned above, the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights and legitimate interests in the disputed domain name. No evidence has been presented to the Panel that might support a claim of Respondent’s rights or legitimate interests in the disputed domain name, and Respondent has no license from, or other affiliation with, Complainant.

Therefore, the Panel finds that Complainant has provided sufficient evidence of Respondent’s lack of “rights or legitimate interests” in accordance with paragraph 4(a)(ii) of the Policy, which Respondent has not rebutted.

C. Registered and Used in Bad Faith

There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or of a product or service on [the] website or location”. As noted in Section 4 of this Panel’s decision, Respondent has previously set up a webpage at the URL associated with the disputed domain name, which is now inactive. It is well established that having an inactive website does not necessarily shield a respondent from a finding of bad faith. SeeWIPO Overview 3.0, section 3.3, which notes that the “non-use of a domain name” does not necessarily negate a finding of bad faith.

Rather, a panel must examine “the totality of the circumstances,” including, for example, whether a complainant has a distinctive trademark, and whether a respondent conceals his/her identity and/or replies to the complaint. Respondent here did not formally respond to the Complaint, and appears to have provided false contact information to the Registrar, with an undeliverable address.

Considering the totality of the circumstances, this Panel finds that Respondent has registered and is using the disputed domain name in bad faith in accordance with paragraph 4(a)(iii) of the Policy.

7. Decision

For all 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 <phoenixcontact-vietnam.com> be transferred to Complainant.

Lorelei Ritchie
Sole Panelist
Dated: June 22, 2020

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