WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Maggie Sottero Designs, LLC v. Nguyễn Văn Lư
Case No. D2021-1226
1. The Parties
The Complainant is Maggie Sottero Designs, LLC, United States of America (“United States”), represented by Sparke Helmore, Australia.
The Respondent is OvervOvervNguyễn Văn Lư, Viet Nam.
2. The Domain Name and Registrar
The disputed domain name <maggiosottero.com> (the “Disputed Domain name”) is registered with April Sea Information Technology Corporation (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on April 21, 2021. On April 21, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 27, 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 April 28, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. In addition, the Center sent an email communication in both Vietnamese and English regarding the language of the proceeding on April 28, 2021. The Complainant replied on April 29, 2021, requesting English to be the language of the proceeding and submitting the amended Complaint in English. The Respondent did not submit any comments regarding the language of the proceeding.
The Center verified that the Complaint together with the amended 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 both English and Vietnamese of the Complaint, and the proceedings commenced on May 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 25, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 26, 2021.
The Center appointed Pham Nghiem Xuan Bac as the sole panelist in this matter on May 31, 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, Maggie Sottero Designs, LLC, is a United States-based company specializing in design, production and wholesale of bridal gowns. According to what the Complainant asserted, the Complainant has designed in excess of 3,000 styles of gowns, manufactured and sold over 1.5 million gowns worldwide, and launched more than 50 collections of gowns under its MAGGIE SOTTERO trademarks since 1997.
The Complainant’s trademarks MAGGIE SOTTERO have been registered for goods in classes 18 and 25 in a variety of countries under a number of trademark registrations, including but not limited to the United States trademark No. 2415876, registered on December 26, 2000; the United Kingdom trademark No. UK00002281954, registered on March 15, 2002.
Additionally, the Complainant is the registrant of many domain names featuring the trademarks MAGGIE SOTTERO, notably the domain name <maggiesottero.com>, registered on July 16, 2001.
The Disputed Domain Name <maggiosottero.com> was created on June 29, 2005. As of the date of this Decision, the Disputed Domain Name still resolves to a parking page containing sponsored links to various third party contents, including those associated with bridal gowns products.
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 MAGGIE SOTTERO in numerous jurisdictions.
Second, the Complainant asserts that the Disputed Domain Name is confusingly similar to the MAGGIE SOTTERO trademarks owned by the Complainant since the Disputed Domain Name incorporates the Complainant’s trademarks MAGGIE SOTTERO in its entirety while the differences which come from (i) the misspelling of “maggie” with a letter “o” instead of a letter “e”, (ii) the lack of a space between “Maggie” and “Sottero”, and (iiii) the addition of the generic Top-Level Domain (“gTLD”) “.com” could not dispel any confusing similarity. The Complainant also submits that the previous UDRP panels have found that the domain names <maggiasottero.com> and <maggiesotero.com> were confusingly similar to the MAGGIE SOTTERO trademarks.
Finally, the Complainant argues that the Disputed Domain Name is also confusingly similar to its domain name <maggiesottero.com> and therefore, there is a risk that traffic will be diverted away from its genuine website to the website under the Disputed Domain Name.
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
First, the Complainant submits that the Complainant has never authorized the Respondent to use its MAGGIE SOTTERO trademarks (or any sign that is identical with or confusingly similar to its MAGGIE SOTTERO trademarks) for the Disputed Domain Name or the website thereunder.
Second, the Complainant contends that the Respondent has infringed the MAGGIE SOTTERO trademarks by (i) using the MAGGIE SOTTERO trademarks, or something confusingly similar, as an essential element of the Disputed Domain Name; (ii) acquiring the Disputed Domain Name; and (iii) using the Disputed Domain Name to resolve to a website containing pay-per-click (“PPC”) advertising misleadingly labeled with the MAGGIE SOTTERO trademarks. Such unauthorized conducts may constitute infringements on the registered MAGGIE SOTTERO trademarks and misleading or deceptive conduct, and false or misleading representations under relevant regulations.
Finally, the Complainant argues that there is the lack of evidence that the Respondent has any rights to, nor legitimate interests in, the Disputed Domain Name. Particularly, there is no evidence that:
- the Respondent is using, or preparing to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name for a bona fide offering of goods or services.
- the Respondent is commonly known by the Disputed Domain Name, or “Maggio Sottero”, or holds any pending or registered trademark consisting of “Maggio Sottero”.
- The Respondent is not using the Disputed Domain Name for a legitimate noncommercial or fair use, without intent for commercial gain to misleadingly divert consumers or to tarnish the MAGGIE SOTTERO trademarks.
(iii) The Disputed Domain Name was registered and is being used in bad faith.
First, the Complainant contends that Disputed Domain Name was acquired, and is being used, in bad faith given that: (i) the Respondent knew, or should have known, at the time of acquisition that the Disputed Domain Name was identical with or confusingly similar to the MAGGIE SOTTERO trademarks; (ii) the Respondent has no rights or legitimate interests in the Disputed Domain Name or the name “Maggio Sottero”; and (iii) the Respondent registered and uses the Disputed Domain Name for the purpose of taking unfair advantage of the confusing similarity between the Disputed Domain Name and the MAGGIE SOTTERO trademarks (and the domain names owned by the Complainant featuring the MAGGIE SOTTERO trademarks) in order to attract Internet users to the website thereunder.
Second, the Complainant argues that the Respondent was concealing its location and information to avoid being contacted in relation to a domain name dispute, and this supports a finding of bad faith.
Third, the Complainant argues that the Registrar is commonly used by, and may facilitate, cybersquatters who register and use the domain names that are identical or confusingly similar to well-known trademarks. On February 9, 2021, the Complainant sent a demand letter to the Registrar, asking for the termination of the Disputed Domain Name and disclosure of the registrant’s information. However, the Registrar did not respond to such letter.
With the said arguments, the Complainant 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
(i) The Respondent’s Identity
The Panel notes that at the time the Complaint was filed on April 21, 2021, the Respondent was identified as “REDACTED FOR PRIVACY”. On April 27, 2021, the Registrar revealed the underlying registrant “Nguyễn Văn Lư”. The Center sent an email communication to the Complainant on April 28, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint.
On April 29, 2021, the Complainant filed an amended Complaint, adding the underlying registrant disclosed by the Registrar.
(ii) Language of the Proceeding
The Complaint was filed in English. However, the Registrar confirmed that the language of the Registration Agreement is Vietnamese.
As the Complaint was filed in English, the Center, in its notification dated April 28, 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 (iii) a substantiated request for English to be the language of the proceeding by May 1, 2021.
On April 29, 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, an American 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 Vietnam, where the Respondent appears to be located, and the website’s contents under the Disputed Domain Name is in English; these suggest that the Respondent has knowledge of the English language and would be able to communicate 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 (ultimately, the party solely 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) Delay in bringing the Complaint
The Panel finds that the Disputed Domain Name was registered on June 29, 2005, but the Complaint was not filed with the Center until April 21, 2021. In considering this delay of almost 16 years in challenging the Respondent’s registration of the Disputed Domain Name, the Panel is of the same view as UDRP decisions mentioned in section 4.17 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) that “panels have widely recognized that mere delay between the registration of a domain name and the filing of a complaint neither bars a complainant from filing such case, nor from potentially prevailing on the merits”. However, similar to previous decisions, the Panel has taken into account this delay when considering the second and third elements requiring the Complainant to establish that the Respondent lacks rights or legitimate interests and that the Respondent has registered and used the Disputed Domain Name in bad faith (see, e.g., CeltonManx Limited v. Pham Dinh Nhut, WIPO Case No. D2014-0109).
(iv) 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 rights in and to the trademarks MAGGIE SOTTERO, which were registered in a number of countries before the registration of the Disputed Domain Name. In addition, it is evidenced that the Complainant has widely used the MAGGIE SOTTERO trademarks for bridal gowns products.
Second, the Disputed Domain Name almost comprises the Complainant’s MAGGIE SOTTERO trademarks in entirety, in which the Complainant has exclusive rights. The only difference between the Disputed Domain Name and the MAGGIE SOTTERO trademarks is the replacement of the letter “e” in the MAGGIE SOTTERO trademarks with the letter “o” in the Disputed Domain Name. In this regard, in accordance with paragraph 1.9 of the WIPO Overview 3.0, a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by UDRP panels to be confusingly similar to the relevant mark for purposes of the first element. Thus, the replacement of the letter “e” with the letter “o” does not prevent a finding of confusing similarity between the Disputed Domain Name and the MAGGIE SOTTERO trademarks. In the Panel’s view, the Disputed Domain Name is confusingly similar to the Complainant’s MAGGIE SOTTERO trademarks.
This is a typical case of a deliberate misspelling of a trademark (so-called “typosquatting”), by omitting, adding, or substituting the order of letters of a trademark, where numerous UDRP panels in the past have found confusing similarity to be present, see, inter alia, Airlinen Ltd v. Deyan Dimitrov, Laundryheap, VenturePoint Ltd, WIPO Case No. D2019-2542; Mirova v. WhoisGuard Protected, WhoisGuard, Inc. / Brian Tranter, WIPO Case No. D2020-0142.
Finally, 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, 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 MAGGIE SOTTERO 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, including:
“(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 evidence on that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent did not refute the Complainant’s contentions.
The consensus of previous UDRP decisions 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 his 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 Limited, WIPO Case No. D2001-0121). In this instant case, the Panel finds that the Respondent has failed to meet that burden since no response was submitted providing arguments or evidence to the contrary.
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 in any kind to use the Complainant’s trademarks 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 trademarks MAGGIE SOTTERO.
The Complainant has submitted relevant evidence showing that the Disputed Domain Name resolves to a parked page with 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 some of the PPC links on the website at the Disputed Domain Name are referring to bridal gown products 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 despite the long period of time since its registration. This finding is substantiated by the fact that there is 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 “maggiosottero” or that the Respondent has any rights in it.
Regarding 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)(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, including:
“(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, did not refute the Complainant’s contentions.
The Panel has considered the Complainant’s assertions and evidence with regard to the Respondent’s registration and use of the Disputed Domain Name. In this regard, the Panel finds that the Complainant’s MAGGIE SOTTERO trademarks have been registered in a variety of jurisdictions around the world. In addition, the Complainant’s MAGGIE SOTTERO trademarks have been put in use for a long period of time and gained certain reputation in the sector of bridal gown products. The Complainant’s MAGGIE SOTTERO trademarks and its domain name <maggiesottero.com> all predate the registration of the Disputed Domain Name.
The Disputed Domain Name almost comprises the MAGGIE SOTTERO trademarks in its entirety, the only difference between them is the replacement of the letter “e” with the letter “o” in “maggie”. Given the extensive use of the MAGGIE SOTTERO trademarks for bridal gown products by the Complainant, which occurs in numerous countries, 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 (a parked page with some PPC links referring to bridal gown products of the Complainant’s competitors), the Panel is of the view that the Respondent obviously knew of the Complainant and its MAGGIE SOTTERO trademarks before the registration of the Disputed Domain Name, and the Panel considers such registration is an attempt by the Respondent as to take advantage of the Complainant’s goodwill.
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, registration of a domain name, in which a respondent has no rights or legitimate interests coupled with no credible explanation for the respondent’s choice of the domain name, may be considered as bad faith.
On the date of this Decision, the Panel accessed the Disputed Domain Name and found that it is still resolving to PPC parking page, where some of the PPC links are also referring to the bridal gown products of the Complainant’s competitors. With all these facts and findings, the Panel finds that by using the Disputed Domain Name in this manner, the Respondent has intentionally attempted to attract Internet users to his website and generate income from such PPC links by creating a likelihood of confusion with the Complainant’s MAGGIE SOTTERO trademarks as to the source, sponsorship, affiliation or endorsement of his 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; Skyscanner Limited v. Nguyễn Văn Lư, WIPO Case No. D2020-0672; xHamster IP Holdings Ltd v. Nguyễn Văn Lu, WIPO Case No. D2020-3163; CenterPoint Energy, Inc. v. Nguyễn Văn Lư, WIPO Case No. D2020-3300; Hillsong Church Inc. v. Nguyễn Văn Lư, WIPO Case No. D2021-0368.
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 <maggiosottero.com> be transferred to the Complainant.
Pham Nghiem Xuan Bac
Sole Panelist
Date: June 14, 2021