WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hillsong Church Inc v. Nguyễn Văn Lư
Case No. D2021-0368
1. The Parties
The Complainant is Hillsong Church Inc, Australia, internally represented.
The Respondent is Nguyễn Văn Lư, Viet Nam.
2. The Domain Name and Registrar
The disputed domain name <hillsongworship.com> (the “Disputed Domain Name”) 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 February 8, 2021. On February 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 10, 2021, 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. Further, the Registrar disclosed that the registration agreement for the Disputed Domain Name is Vietnamese. The Center sent an email communication to the Complainant on February 11, 2021, in both English and Vietnamese, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint in English on February 15, 2021.
On February 11, 2021, the Center notified the Parties in both English and Vietnamese that the language of the registration agreement for the Disputed Domain Name is Vietnamese. On February 16, 2021, the Complainant requested for English to be the language of the proceeding. The Respondent did not submit any request regarding the language of the proceeding.
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 English and in Vietnamese, and the proceedings commenced on February 18, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 10, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default in English and Vietnamese on March 11, 2021.
The Center appointed Pham Nghiem Xuan Bac as the sole panelist in this matter on March 15, 2021. 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, Hillsong Church Inc., is a Christian church founded in 1983. Nowadays, the Complainant operates in 28 countries around the world, with an average global weekly attendance of over 150,000 people. The Complainant’s worship has accumulated over 3.2 billion streams across Apple Music and Spotify and 2.3 billion views on YouTube since 2008.
According to the Complaint, the Complainant has a 24-Hour-7-day-per-week Television Station called “The Hillsong Channel”, which is broadcasted directly into 15 countries and indirectly to many others. The Complainant won a Recording Academy Grammy Award in 2018 for “Best Contemporary Christian Song/Performance”.
The Complainant’s trademarks HILLSONG have been registered for goods and services in Classes 09, 16, 25, 38, 42, and 45 in a variety of countries under a number of trademark registrations, including but not limited to the United States Trademarks No. 2578165 registered on June 11, 2002, International Trademark No. 810901 registered on May 29, 2003.
The Complainant also owns several domain names featuring the trademark HILLSONG, notably the domain name <hillsong.com> registered on November 5, 1998.
The Disputed Domain Name <hillsongworship.com> was created on March 16, 2005. As of the date of this Decision, the Disputed Domain Name is resolving to a parking page containing sponsored links to various third-party contents, including those associated with church services.
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 HILLSONG in numerous countries around the world.
Secondly, the Complainant submits that the Disputed Domain Name is confusingly similar to the HILLSONG Trademarks owned by the Complainant since the Disputed Domain Name incorporates the Complainant’s trademark HILLSONG in its entirety. In addition, the element “worship” in the Disputed Domain Name refers to one of the main areas of the Complainant’s business, creating the confusion to the Internet users.
Finally, the Complainant submits that as the mark HILLSONG of the Complainant is a well-known mark, it is likely that the Respondent is aware and was aware of the mark HILLSONG when registering the Disputed Domain Name.
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
First, the Complainant contends that the Respondent does not demonstrate any legitimate use of the domain with the bona fide offering of goods or services, since the website under the Disputed Domain Name is left blank.
Second, the Complainant submits that the Complainant does not have any affiliation with the Respondent and the Respondent is not authorized to use the Disputed Domain Name referring to the mark HILLSONG.
Third, the Complainant argues that the Respondent is not widely known by the Disputed Domain Name since the Google search of the keyword “hillsongworship.com” shows top 10 results related to the Complainant’s activities and there is no other mention of the Respondent except in relation to the Disputed Domain Name usage. In addition, there is no evidence to support that the Respondent has a business that is commonly known by the Disputed Domain Name.
(iii) The Disputed Domain Name was registered and is being used in bad faith.
First, the Complainant argues that the Respondent’s non-use of the Disputed Domain Name is an indicator of bad faith because the Respondent registered the Disputed Domain Name to mislead consumers and divert internet traffic away from the goods and services provided by the Complainant.
Second, the Complainant submits that the Respondent took deliberate steps to conceal its true identity because the Respondent did not respond to the Complainant’s warning emails dated February 7, 2020, and January 18, 2021.
Third, the Complainant contends that the Complainant is the owner of the similar domain name <hillsongworshipdirect.com> and the Respondent registered the Disputed Domain Name to prevent the Complainant from registering domain name <hillsongworship.com>.
With the said arguments, the Complainant requests that the Disputed Domain Name <hillsongworship.com> be transferred to the Complainant.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Procedural Issues
(i) Respondent’s Identity
The Panel notes that at the time the Complaint was filed on February 8, 2021, the Respondent was identified as “Private”. On February 10, 2021, 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. The Center sent an email communication to the Complainant on February 11, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint.
On February 15, 2021, the Complainant filed an amendment to the Complaint, adding the respondent named in the initial Complaint with the underlying registrant.
(ii) 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 February 11, 2021, 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 (ii) submit the Complaint translated into Vietnamese, or (ii) a substantiated request for English to be the language of the proceeding by February 14, 2021.
On February 16, 2021, the Complainant submitted a request that English be the language of the proceeding.
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 the 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, a Australian 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;
(ii) the English language is quite popular in Viet Nam, where the Respondent is located, and importantly the website under the Disputed Domain Name contains English contents; these suggest that the Respondent has ample knowledge of the English language and be able to communicate quite well in English;
(iii) the Respondent did not object for English to be the language of the proceeding and did not submit a response in neither English nor Vietnamese.
Therefore, for the purpose of easy comprehension of the Complainant (the party majorly 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.
(iii) The Respondent’s Failure to Respond
The Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant (see, e.g., Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn, WIPO Case No. D2010-1413, and M. Corentin Benoit Thiercelin v. CyberDeal, Inc., WIPO Case No. D2010-0941). However, the Panel may draw appropriate inferences from the Respondent’s default.
B. Identical or Confusingly Similar
The Complainant is required to establish the two following elements: (1) that it has trademark rights, and, if so, (2) that the Disputed Domain Name is identical or confusingly similar to its trademark.
First, the Panel finds that the Complainant has evidenced that it has trademark rights in and to the mark HILLSONG, which were registered before the registration of the Disputed Domain Name. In addition, it is evidenced that the Complainant has a wide use of its HILLSONG trademark in providing goods and services related to worship activities around the world.
In the case at hand, the Panel notes that the Complainant does not have a registered trademark for HILLSONG in Viet Nam. However, it is well established that the jurisdictions where the trademark is valid, its date of registration (or claimed first use), and the goods and/or services for which it is registered or used in commerce, are all irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP. See the section 1.1 of the WIPO Overview 3.0.
The Panel finds that “hillsong” remains the dominant element in the Disputed Domain Name. It is well established that the addition of an indistinctive term (such as “worship”) to a trademark does not prevent confusing similarity. Needless to say, the word “worship” in the present case refers directly to the business that the Complainant is carrying on under its HILLSONG trademarks. Thus, in the Panel’s view, the addition of the said suffix does nothing to distinguish the Disputed Domain Name from the trademark, nor to dispel confusing similarity, as it was found in previous UDRP decisions (see, e.g., Philip Morris Products S.A. v. Halil Cakir, WIPO Case No. D2018-1656; Continental Exchange Solutions Inc. DBA Ria Financial v. Red Soul, WIPO Case No. D2013-1690; SAP AG v. Subba Rao Parvathaneni, WIPO Case No. D2010-1813).
Third, the Panel finds, similarly to other UDRP panels, that the addition of the generic Top-Level Domain (“gTLD”) “.com” to the Disputed Domain Name does not constitute an element as to avoid confusing similarity for the Policy purposes (see, e.g., Volkswagen AG v. Privacy Protection Services, WIPO Case No. D2012-2066; The Coca-Cola Company v. David Jurkiewicz, WIPO Case No. DME2010-0008; Telecom Personal, S.A., v. NAMEZERO.COM, Inc., WIPO Case No. D2001-0015; F. Hoffmann La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
Based on the foregoing findings, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant's HILLSONG Trademarks, and paragraph 4(a)(i) 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 made a prima facie showing 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, has not refuted the Complainant’s contentions.
The consensus of UDRP panels is that while the overall burden of proof in UDRP proceedings is on the complainant, once a prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating its rights or legitimate interests in the Disputed Domain Name (See e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270; Julian Barnes v. Old Barn Studios, WIPO Case No. D2001-0121; section 2.1 of the WIPO Overview 3.0). In this instant case, the Panel finds that the Respondent has failed to meet that burden since no response was submitted for evidence to the contrary.
Regarding paragraph 4(c)(i) of the Policy, the Panel finds no evidence available that the Respondent holds any registered or unregistered trademark rights to the Disputed Domain Name.
The Complainant has submitted relevant evidence showing that the Disputed Domain Name resolves to a parked page with Pay-Per-Click (“PPC”) links that redirect Internet users to other online locations. In this regard, section 2.9 of the WIPO Overview 3.0 holds that “the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users”.
In this present case, the Panel finds that the PPC links in question are referring to services of the Complainant’s competitors. Hence, in light of foregoing viewpoint and similarly to a number of well-established prior UDRP decisions, the Panel upholds that operating PPC parking page using a distinctive trademark and providing connection to goods and/or services competitive with the trademark owner, does not establish bona fide offering of goods or services (see, e.g., Virgin Enterprises Limited v. LINYANXIAO aka lin yanxiao, WIPO Case No. D2016-2302; Merck Sharp & Dohme Corp. v. Domain Administrator, PrivacyGuardian.org / George Ring, DN Capital Inc., WIPO Case No. D2017-0302;
Archer-Daniels-Midland Company v. Wang De Bing, WIPO Case No. D2017-0363).
Regarding paragraph 4(c)(ii) of the Policy, the Panel finds that there is no evidence showing that the Respondent has been commonly known by the Disputed Domain Name. Further, there is also no evidence showing that the Respondent operates any bona fide business or organization under the Disputed Domain Name. Therefore, it is not evidenced that the Respondent is identified by HILLSONG or that he has any right in it.
Further, the coupling together of the Complainant’s trademark with the descriptive term “worship”, indicative of the services of the Complainant, further strengthens the implied affiliation suggested by the composition of the Disputed Domain Name and as such, the nature of the Disputed Domain Name cannot constitute fair use. This is further supported by the commercial nature to which the Disputed Domain Name resolves. Thus, under paragraph 4(c)(iii) of the Policy, the Panel finds that there is no evidence that the Respondent is making any noncommercial or fair use of the Disputed Domain Name.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, and the second element under paragraph 4(a) of the Policy is established.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists four circumstances that, without limitation, 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 online 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.”
The above four circumstances are not exhaustive and bad faith may be found by the Panel alternatively. 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.
Registration in bad faith
The Panel has considered the Complainant’s assertions and evidence with regard to the Respondent’s registration of the Disputed Domain Name. In this regard, the Panel finds that the Complainant’s HILLSONG trademarks have been registered in a variety of jurisdictions around the world. In addition, the Complainant’s HILLSONG trademarks have been put in use over a lengthy period of time (since 1983) and gained certain reputation in the field of church services and worship activities. The Complainant’s HILLSONG trademarks and its domain name <hillsong.com> predate the registration of the Disputed Domain Name.
The Disputed Domain Name incorporates the Complainant’s trademark HILLSONG in its entirety with the addition of the term “worship” which squarely targets the Complainant, while such mark is not descriptive and devoid of meaning other than the goods and services of the Complainant. Hence, it is very unlikely that the Respondent would have registered the Disputed Domain Name containing the Complainant’s HILLSONG trademarks without knowledge of the HILLSONG trademark and it defies common sense to believe that the Respondent coincidentally selected the Disputed Domain Name without any knowledge of the Complainant and its HILLSONG trademarks.
These facts show that the Respondent did not register the Disputed Domain Name in a fortuity. The Respondent obviously knew of the Complainant and its HILLSONG trademarks before the registration of the Disputed Domain Name, and the Panel considers the registration an attempt by the Respondent as to take advantage of the Complainant’s goodwill.
Use in bad faith
In Section 6.C. above, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name. In the Panel’s view, use of domain name, to which one has no rights or legitimate interests, is very often a clear indication of use in bad faith.
As discussed earlier, the Disputed Domain Name resolves to PPC parking site, where the PPC links are also referring the goods and services of the Complainant’s competitors. These facts, in the Panel’s opinion, further evidence bad faith use.
With all these facts and finding, the Panel finds that by using the Disputed Domain Name in this manner, the Respondent has intentionally attempted to attract Internet users to its websites and earn income from such links on a PPC basis by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement of its website, for commercial gain.
In addition, the Panel finds that the Respondent, Nguyễn Văn Lư, was involved in a pattern of several cybersquatting cases of domain name disputes, namely Thi Factory S.A. v. Vietnam Domain Privacy Services, Nguyễn Văn Lư, WIPO Case No. D2019-2596; Squarespace, Inc. v. April Sea Information Technology Company Ltd. / Nguyễn Văn Lư, WIPO Case No. D2019-3064.
Taking into account all of the above, the Panel finds that the Disputed Domain Name was registered and is being used by the Respondent in bad faith under paragraph 4(b) of the Policy, and the third element under paragraph 4(a) 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 <hillsongworship.com> be transferred to the Complainant.
Pham Nghiem Xuan Bac
Sole Panelist
Date: March 29, 2021