WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

NTT DOCOMO, Inc. v. Nguyen Minh Dai, Vien May Tinh

Case No. D2018-2477

1. The Parties

The Complainant is NTT DOCOMO of Tokyo, Japan, represented by Vision & Associates, Viet Nam.

The Respondent is Nguyen Minh Dai, Vien May Tinh of Ho Chi Minh, Viet Nam.

2. The Domain Name and Registrar

The disputed domain name <docomovietnam.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 October 31, 2018. On October 31, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 5, 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.

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 of the Complaint, and the proceedings commenced on November 7, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 27, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 28, 2018.

The Center appointed Francine Tan as the sole panelist in this matter on December 5, 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 is Japan’s largest telecommunications company. It provides mobile services and LTE‑advanced networks nationwide and serves over 73 million customers in Japan. Outside of Japan, the Complainant provides technical and operational expertise to mobile operators and other partner companies and contributes to the global standardization of new mobile technologies.

The Complainant has expanded its distribution network across various territories and established offices/subsidiaries in the United States of America, China, Singapore, the United Kingdom of Great Britain and Northern Ireland, Germany, Brazil, and the Philippines.

In 2011, the Complainant acquired an approximate 25% stake in Viet Nam’s largest mobile content provider, VMG Media Joint Stock Company, which owns a market share in Viet Nam of approximately 25%.

The Complainant began the use of its DOCOMO trade marks in Japan in 1992. In other countries, including in Viet Nam, use of the DOCOMO trade marks began as early as 2000. The DOCOMO trade marks are used extensively by the Complainant in relation to telephone products and services across the world. From 2011‑2016, the total number of products sold under the DOCOMO trade marks was 117,967,000.

The DOCOMO trade marks have been registered in over 46 countries including in Viet Nam (Registration Nos. 160542, registered on March 25, 2011; 179842, registered on February 23, 2012; 160101, registered on March 22, 2011; and 160541, registered on March 25, 2011).

The Complainant has registered domain names such as <nttdocomo.co.jp> (registration date: August 4, 2011) and <nttdocomo.com> (registration date: October 23, 1997). The domain name registrations are used for the Complainant’s online sale and promotion of its goods and services.

The disputed domain name was registered on November 28, 2013. The disputed domain name resolves to website pages where the Complainant’s DOCOMO trade marks are displayed prominently alongside a logo of the Respondent. The Respondent by its website claims to specialize in the repair and maintenance of DOCOMO-branded products such as mobile phones and tablets. The logos and brands of other manufacturers such as APPLE, ASUS, ACER, and SONY are displayed. By clicking a logo, one is led to another website advertising the repair and maintenance services for products bearing the corresponding logo.

A cease and desist letter was sent to the Respondent by the Complainant on November 15, 2017. A reminder was sent on November 30, 2017. The Respondent did not reply to these letters but shut down its website for a period of time. The Complainant noted that since around June 2018, the Respondent’s said website was reactivated and that the disputed domain name was this time registered under a privacy shield.

5. Parties’ Contentions

A. Complainant

The disputed domain name is identical or confusingly similar to the Complainant’s trade mark in which it has rights. The DOCOMO trade mark is wholly reproduced in the disputed domain name. The addition of the term “Vietnam”, which is merely a geographical name, does not distinguish the disputed domain name from the Complainant’s DOCOMO trade mark.

The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has exclusive ownership of the DOCOMO trade marks and has not licensed or permitted the Respondent to use any of its trade marks or to register the disputed domain name incorporating the DOCOMO trade mark.

The Respondent is not making a bona fide offering of goods and services as it does not use its website to offer only services for the repair of DOCOMO products, but also those of other competing brands. Further, the Respondent’s website does not accurately disclose the Respondent’s relationship with the trademark owner. Contrary to that, at the top of the webpage, the Respondent claims to be the “Official Maintenance Centre”. This statement is misleading and causes Internet users to think that the Respondent is an authorized service provider of, or is in some way associated or endorsed by the Complainant. There is no evidence that the Respondent has been commonly known by the disputed domain name.

The disputed domain name was registered and is being used in bad faith. The Complainant’s rights in the DOCOMO trade mark in Viet Nam were established through trademark registration and use since 2000, long before the registration of the disputed domain name.

It is highly unlikely that the Respondent registered the disputed domain name without knowledge of the Complainant’s DOCOMO trade marks. The Respondent shut down its website after receiving the Complainant’s cease and desist letter in 2017 but reactivated it sometime around June 2018.

The Respondent has also persisted in intentionally exploiting the Complainant’s DOCOMO trade mark in the disputed domain name despite having been put on notice of the Complainant’s ownership of the DOCOMO trade marks.

The Complainant also found that the Respondent has 71 other domain name registrations comprising the brands of third parties. Examples of these domain name registrations are <baohanhmicrosoft.com>, <baohanhsamsung.com> <linhkienasus.com>, <linhkienlenovo.com>, <baohanhdell.com>, and <trungtambaohanhleica.com>. This shows a pattern of trademark abuse by the Respondent.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has established it has rights in the trade mark DOCOMO. The disputed domain name incorporates the DOCOMO trade mark in its entirety. The only difference lies in the addition of the geographical name, “Vietnam”. It has been well established by numerous UDRP panel decisions that the addition of generic or descriptive word(s) in a disputed domain name would not serve to remove the confusing similarity with a complainant’s trade mark where the trade mark is incorporated and recognizable within the domain name.

The Panel therefore finds that the first element of paragraph 4(a) of the Policy has been satisfied.

B. Rights or Legitimate Interests

The Panel finds that a prima facie case has been established by the Complainant that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant did not authorize the use of the DOCOMO trade mark by the Respondent and there is no evidence that the Respondent is known by the disputed domain name. Even if the Respondent may be genuinely offering repair services of the Complainant’s DOCOMO-branded products, the Panel is of the view that the circumstances in this case are not such as to show that the Respondent has rights or legitimate interests in the disputed domain name.

Section 2.8.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states that:

“Panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Outlined in the “Oki Data test”, the following cumulative requirements will be applied in the specific conditions of a UDRP case:

(i) the respondent must actually be offering the goods or services at issue;

(ii) the respondent must use the site to sell only the trademarked goods or services;

(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and

(iv) the respondent must not try to “corner the market” in domain names that reflect the trademark.

The Respondent fails the Oki Data test as it has been using the website to which the disputed domain name resolves to offer repair for the products of other competing brands, and it does not accurately and prominently disclose the Respondent’s relationship with the Complainant.

The Respondent has not only failed to respond to this proceeding but failed to respond to the Complainant’s cease and desist letter.

In the absence of any response from the Respondent, the Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain name.

The second element of paragraph 4(a) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

The Panel finds that the disputed domain name was registered and used in bad faith. The Complainant’s DOCOMO is well known and is obviously known to the Respondent, as the Respondent claims to be an official maintenance service provider of DOCOMO-branded products (amongst other brands). Taking into account the fact of the Complainant’s acquisition of a substantial stake in Viet Nam’s largest mobile content provider, VMG Media Joint Stock Company, the Panel does not doubt that the Respondent, “by using the [disputed] domain name, [has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site 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 [its] web site or location or of a product or service on [its] web site or location” (paragraph 4(b)(iv) of the Policy).

Furthermore, the Panel finds that there has been a “pattern of conduct” on the part of the Respondent as it has registered many other domain names which incorporate the brand names of third parties, e.g., ASUS, SAMSUNG, LEICA, LENOVO and MICROSOFT, all in an apparent bid to “prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name” (paragraph 4(b)(ii) of the Policy).

The bad faith is also demonstrated by the Respondent’s failure to respond to the Complainant’s cease and desist letter, and the subsequent reactivation of the Respondent’s website. The Respondent could have, but failed to file a response to refute the inference drawn.

The third element of paragraph 4(a) of the Policy has therefore been satisfied.

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, <docomovietnam.com>, be transferred to the Complainant.

Francine Tan
Sole Panelist
Date: December 7, 2018