WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Công Ty Cổ phần Bibomart (Bibomart Joint Stock Company) v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Do Van Tuan and Nguyen Thi Ha

Case No. D2018-1079

1. The Parties

The Complainant is Công Ty Cổ phần Bibomart (Bibomart Joint Stock Company) of Hanoi, Viet Nam, represented by Vision & Associates, Viet Nam.

The Respondents are Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) of Burlington, Massachusetts, United States of America (“United States”) / Do Van Tuan of Ha Noi, Viet Nam and Nguyen Thi Ha of Ha Noi, Viet Nam.

2. The Domain Name and Registrar

The disputed domain name <bibomart.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and <bibomart.info> is registered with Nhan Hoa Software Company Ltd. (the “Registrars”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 15, 2018. On May 15, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 16, 2018, the Registrars transmitted by email to the Center their verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 7, 2018 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 amended Complaint on June 11, 2018. Moreover, on May 31, 2018, the Center notified the Parties in both English and Vietnamese that the language of the Registration Agreement for the disputed domain name <bibomart.info> was Vietnamese. On June 1, 2018, the Complainant requested for English to be the language of the proceeding, to which the Respondent did not reply.

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 Nguyen Thi Ha of the Complaint, and the proceedings commenced on June 18, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 8, 2018. A Response was filed with the Center by the Respondent Do Van Tuan on July 8, 2018.

The Center appointed Steven A. Maier as the sole panelist in this matter on July 16, 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.

While the Complainant named the current registrant of the disputed domain names, Nguyen Tha Ha, as the Respondent in this proceeding, the Response was filed by the prior registrant, Do Van Tuan, who admits in the Response having transferred the disputed domain names to Nguyen Tha Ha upon receipt of a cease and desist letter (dated April 18, 2018) from the Complainant. The Panel determines accordingly that both Do Van Tuan and Nguyen Tha Ha are the Respondents in this proceeding.

While the language of the registration agreement for the disputed domain name <bibomart.com> is English, the language of the registration agreement for the disputed domain name <bibomart.info> is Vietnamese. The Complainant has requested that the language of the proceeding in respect of both the disputed domain names be English, arguing that the English language is commonly used by Vietnamese business in international commerce. The Complainant further submits that the Respondent Do Van Tuan is familiar with English, having an English trading name “Kids Plaza” and website at “www.kidsplaza.vn” and having registered one of the two disputed domain names under an English registration agreement. The Respondents having submitted their Response in English, and having made no objection to the language of the proceeding being English, the Panel directs that the language of the proceeding be English.

4. Factual Background

The Complainant is a company registered in Viet Nam. It is a retailer of mother and child products in Viet Nam, operating both physical stores and a website at “www.bibomart.com.vn”.

The Complainant is the owner of Viet Nam trademark registrations including registration number 195884 for a figurative mark including the name BIBO MART, registered on November 20, 2012 with a filing date of June 7, 2010 and registration number 288662 for a figurative mark including the name BIBO MART, registered on September 27, 2017 with a filing date of August 14, 2015.

The disputed domain name <bibomart.com> was first registered on November 11, 2009. On the evidence of the Complainant, which the Respondent does not dispute, it was acquired by the Respondent Do Van Tuan in or around March 2012.

The disputed domain name <bibomart.info> was registered on January 10, 2012.

As stated above, both of the disputed domain names were transferred to the Respondent Nguyen Thi Ha in or about April 2018.

The Complainant submits, and the Respondents do not dispute, that the Respondent Do Van Tuan is the operator of a retailer of mother and baby products in Viet Nam under the name “Kids Plaza”, which is a competitor of the Complainant.

According to the Complainant’s assertions and the (albeit somewhat unclear) evidence provided in this regard, which once again the Respondents do not contradict:

(a) It appears that until March 2012, the disputed domain name <bibomart.com> resolved to a website (which was not the Complainant’s) bearing the mark BIBO MART and referring to products from “Bibo Corporation”. Since March 2012, the disputed domain name <bibomart.com> redirected to a website at “www.kidsplaza.vn” and the disputed domain name <bibomart.info> resolved to a landing page containing a link to the same website;

(b) between 2016 and about May 2018, both of the disputed domain names resolved to a website displaying the name “Kids Plaza” and offering a prenatal course offered by the Respondents; and

(c) after about May 2018 onwards, both of the disputed domain names have resolved to web page offering businessmen’s accessories, including briefcases, ties, pens, watches, glasses and cellphones.

5. Parties’ Contentions

A. Complainant

The Complainant states that it is a leading retailer of mother and child products in Viet Nam, with nearly 140 stores nationwide as of March 2018. It provides a website analysis report generated by “www.similarweb.com” dated March 2018 which states that its website at “www.bibomart.com.vn” received a total of over 930,000 visits to in the previous six months.

The Complainant states that it and its predecessor in business, Viet Nam B&B International Company, have traded continuously under the name “Bibo Mart” since 2006 and that both it and its predecessor have the same Chief Executive, Trinh Lan Phoung, who is a well-known Vietnamese businesswoman.

The Complainant exhibits media coverage and other publicity concerning its and its predecessor’s trading under the name “Bibo Mart”, including references to that business having been established in 2006. It also produces a contract with a supplier dated 2009 which makes reference to “BIBO MART” signage, and a business licence dated October 31, 2011, which makes reference to various “BIBOMART” stores.

The Complainant states that it (or its predecessor) have operated a website at “www.bibomart.com.vn” since 2010.¹

The Complainant submits that the name “Bibo Mart” is a distinctive term which was coined in 2005, which has no dictionary meaning, is not descriptive, and cannot refer to anything other than the Complainant’s business.

The Complainant submits that the disputed domain names are identical or confusingly similar to its BIBO MART trademark, comprising that mark in its entirety with the addition only of the generic Top-Level Domains (“gTLDs”) “.com” and “.info” respectively.

The Complainant submits that the Respondents have no rights or legitimate interests in respect of the disputed domain names. The Complainant states that it has never licensed or authorized the Respondents to use its BIBO MART trademark, that the Respondents have not commonly been known by the disputed domain names, and that they are making neither bona fide commercial use nor legitimate noncommercial or fair use of the disputed domain names. Instead, the Complainant submits that the Respondents have used the disputed domain names to resolve to their own website, which competes with that of the Complainant. The Complainant further submits that the Respondents have failed to use the disputed domain names for any legitimate purpose of resale of the Complainant’s goods, as neither their past nor their present website accurately disclosed the Respondents’ relationship with the Complainant and the current website does not even sell mother and child products (see e.g., Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903).

The Complainant submits that the disputed domain names have been registered and are being used in bad faith. The Complainant says that, in view particularly of its mark BIBO MART being a coined term, and the fact that the Respondent Do Van Tuan operates a directly competitive business, it would defy common sense to believe that the Respondents coincidentally selected the disputed domain names.

The Complainant submits that the Respondents have used the disputed domain names to resolve to the Respondents’ own website and to a website that promotes the Respondents’ business. The Complainant contends that the Respondents have therefore created a likelihood of confusion with the Complainant’s trademark as to an affiliation with the Complainant or sponsorship or endorsement by it.

The Complainant also relies on the fact that the Respondents internally transferred the disputed domain names directly in response to a “cease and desist” letter sent by the Complainant, which it alleges is clear evidence of “cyberflight”, i.e.,attempting to avoid the consequences of this proceeding.

Finally, the Complainant claims that the Respondents have registered a number of other domain names reflecting the trademarks of well-known manufacturers, which it says is further evidence of the Respondents’ bad faith.

The Complainant requests the transfer of the disputed domain names.

B. Respondents

The Respondents accept that the disputed domain names reproduce the name “Bibo Mart” in its entirety, but deny that the Complainant had any rights in that name at the time the disputed domain names were acquired.

In particular, the Respondents submit that “prior use” as recognized in certain common law jurisdictions does not give rise to enforceable rights in Viet Nam and that only trademark registrations could provide the Complainant with adequate protection.

The Respondents also deny that the Complainant has provided sufficient evidence that it was recognized by the name “Bibo Mart” at the date the Respondents acquired the disputed domain names. In particular, the Respondents say that the Complainant had only six retail stores at that time, has produced subjective information from its own website and has failed to demonstrate its revenues, promotional spending and other reputational matters at the material time.

The Respondents submit that, since the Complainant had no rights to prevent them from acquiring the disputed domain names, they have obtained rights or legitimate interests in respect of them. They also say that their company was established two years prior to the foundation of the Complainant and that they had gained public recognition for that company before the Complainant launched the “Bibo Mart” name.

The Respondents say that the Oki Data criteria (supra) are not relevant to the consideration of the website to which the disputed domain names currently resolve. They say that the Respondents are a multi-disciplinary concern offering a wide range of goods and services, including businessmen’s accessories, and that there is no reason why they should offer only mother and child products.

The Respondents deny having registered or used the disputed domain names in bad faith. They submit, in particular, that that was no reason for them to register the disputed domain names to compete with a company that only came into existence after their own company.

The Respondents submit that they internally transferred the disputed domain names after receiving the Complainant’s “cease and desist” letter to avoid any conflict with the Complainant’s business, and not in the interests of “cyberflight”.

Concerning their registration of domain names allegedly reflecting other manufacturers’ trademarks, the Respondents say that they used to be a distributor for the relevant manufacturers in Viet Nam and registered the relevant domain names in connection with that business.

6. Discussion and Findings

In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:

(i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) that the Respondents have no rights or legitimate interests in respect of the disputed domain names; and

(iii) that the disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has demonstrated that it has registered trademark rights in Viet Nam for marks including the term BIBO MART. The disputed domain names are effectively identical to that trademark, but for the addition of the gTLDs “.com” and “.info” which are typically to be disregarded for the purposes of comparison. While the Complainant’s first trademark was not registered until November 2012 (although with priority from 2010), some months after the Respondents acquired each of the disputed domain names, this is not material to the comparison carried out under paragraph 4(a)(i) of the Policy, which is directed only to the Complainant’s current standing to bring the Complaint.

The Panel therefore finds that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Respondents do not appear to dispute that they are competitors of the Complainant or that the disputed domain names reflect the Complainant’s trading name, being a coined term. Instead, the thrust of their case is that, under local law, the Complainant did not have any relevant rights at the time the Respondents acquired the disputed domain names, because only actual trademark registrations would be effective for this purpose. They also say that, in any event, the Complainant has failed to provide adequate evidence that the name “Bibo Mart” had become distinctive of the Complainant in business.

While the Panel expresses no view on local law, the relevant considerations for the purpose of this proceeding derive from the Policy and not from any particular national law. In this regard, section 1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states as follows:

“To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services.”

In this case, the Panel finds that the Complainant has sufficiently established that the coined name “Bibo Mart” has been used for the purpose of its business since 2006 with an online commercial presence since 2010. The Complainant has also provided adequate evidence of public recognition of the name “Bibo Mart” as being distinctive of its business prior to the registration of the disputed domain names. Further, the Panel accepts the Complainant’s evidence (which the Respondents do not dispute) that the name “Bibo Mart” is not a dictionary or descriptive term and has no meaning other than to refer to the Complainant’s business.

In the circumstances, the Panel concludes that the Respondents registered and have used the disputed domain names in the knowledge of the Complainant’s “BIBO MART” name and trademark and with the intention of referring to that mark. The Panel rejects the Respondents’ contention that the Respondents were at liberty to do so in the absence of an actual trademark registration. The Panel finds that both the disputed domain names are inherently misleading, in that they wholly incorporate the Complainant’s trademark without any distinguishing element, thereby giving the misleading impression that they are in some manner connected with or authorized by the Complainant. The Panel finds in these circumstances that none the Respondents’ uses of the disputed domain names, either before or after April 2018, gave rise to any rights or legitimate interests in respect of either of the disputed domain names, and that the Respondents have no rights or legitimate interests in respect of the disputed domain names.

C. Registered and Used in Bad Faith

For the reasons stated above, the Panel finds that the Respondents both registered and have used the disputed domain names in the knowledge of the Complainant’s name and trademark BIBO MART and with the intention of making reference to that mark. It is also apparent to the Panel that the Respondents have done so in their capacity as a competitor of the Complainant, their only explanation being that they were (allegedly) entitled to act as they did under local law. The Panel does not consider this explanation to be legitimate, and finds that the Respondents have used the disputed domain names in a manner calculated to take unfair advantage of the Complainant’s rights by resolving to or promoting websites that competed with the Complainant, and subsequently to commercial websites having no connection with the Complainant. The Panel therefore concludes that the Respondents registered the disputed domain names to prevent the Complainant from reflecting its mark BIBO MART in corresponding domain names, and/or that by using the disputed domain names, the Respondents have intentionally attempted to attract, for commercial gain, Internet users to their websites by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of their websites or of a product or service on those websites (paragraph 4(b)(iv) of the Policy).

The Panel therefore finds that the disputed domain names have been registered and are being used in bad faith.

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 names, <bibomart.com> and <bibomart.info> be transferred to the Complainant.

Steven A. Maier
Sole Panelist
Date: August 3, 2018

¹ The Panel has undertaken an independent search at “www.web.archive.org”, which discloses a website at the above address from February 24, 2010, offering mother and baby goods for sale online under the name “Bibo Mart”.