WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Thi Factory S.A. v. Vietnam Domain Privacy Services , Nguyễn Văn Lư
Case No. D2019-2596
1. The Parties
The Complainant is Thi Factory S.A., Belgium, represented by Ebrand Services, France.
The Respondent is Vietnam Domain Privacy Services, Viet Nam / Nguyễn Văn Lư, Viet Nam.
2. The Domain Name and Registrar
The disputed domain name <thayls.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 October 17, 2019. On October 23, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 29, 2019, 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 October 29, 2019 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 on October 29, 2019.
The Center sent an email communication in English and Vietnamese to the parties on October 29, 2019 regarding the language of the proceeding, as the Complaint has been submitted in English and the language of the registration agreement for the Disputed Domain Name is Vietnamese. The Complainant submitted a request for English to be the language of the proceeding on October 30, 2019. The Respondent did not comment on the language of the proceeding by the due date.
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, and the proceedings commenced on November 6, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 26, 2019. The Respondent sent several emails. The Center notified the Commencement of Panel Appointment Process on December 9, 2019.
The Center appointed Pham Nghiem Xuan Bac as the sole panelist in this matter on December 12, 2019. 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, Thi Factory S.A., is a part of the company Thalys, specializing in the railway travelling services. Besides the Complainant, another part of Thalys company is Thalys International, which has been operated since 1995.
The Complainant’s trademarks THALYS have been registered for goods and services in Classes 12, 14, 16, 18, 24, 25, 28, 35, 38, 39, 41, 42 in a variety of countries under a number of trademark registrations, including, but not limited to, the International Trademark No. 623372 dated July 25, 1994; the International Trademark No. 625840 dated September 14, 1994 and the United States of America trademark No. 2018629 dated May 4, 1994.
The Complainant also owns a number of domain names featuring the trademark THALYS, among which the notable one is <thalys.com> that was registered in 1996.
The Respondent registered the Disputed Domain Name <thayls.com> on April 21, 2005. At the time of filing the Complaint and 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 train 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 has prior rights on the trademark THALYS since it owns a large portfolio of national and international trademark registrations containing the element “Thalys”.
Secondly, the Complainant asserts that the Disputed Domain Name is confusingly similar to THALYS Trademarks owned by the Complainant since the Disputed Domain Name composed of the element “Thayls”, which looks almost identical to the mark THALYS with the inversion of two letters “L” and “Y”. In addition, the Disputed Domain Name is redirected to sponsored links referring to the Complainant’s activities, creating the confusion to the Internet users.
Finally, the Complainant submits that the addition of the Top-Level Domain (“TLD”) suffix “.com” in the Disputed Domain Name does not add any distinctiveness to the Disputed Domain Name.
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
The Complainant submits that the elements set forth in Policy, paragraph 4(c) are not fulfilled.
First, the Complainant contends that before any notice of the dispute, the Respondent did not use the Disputed Domain Name in connection with a bona fide offering of goods or services. The Disputed Domain Name was first used in 2008 for redirecting to sponsored links referring to the Complainant’s business activities until now.
Second, the Respondent was not commonly known by the Disputed Domain Name and was not authorized to register and use the Disputed Domain Name referring to the mark THALYS. The Complainant submitted that they neither found any company named “Thayls” nor any trademark THAYLS registered in Viet Nam.
Finally, the Complainant argues that the Respondent is actually using the Disputed Domain Name for commercial gain and misleadingly diverts consumers, excluding any legitimate noncommercial or fair use of the Disputed Domain Name. Particularly, the Disputed Domain Name is being used in monetized parked page containing sponsored links to various third-party contents associated with the Complainant.
(iii) The Disputed Domain Name was registered and is being used in bad faith.
According to what the Complainant established, the Complainant sent to the Respondent a Cease & Desist letter on July 19, 2019 and a reminder on September 4, 2019, requesting for the free transfer of the Disputed Domain Name. In two emails dated September 9 and 17, 2019, the Respondent informed the Complainant that he can block all IP addresses from Europe and the name “Thayls” was referring to a political movement in the 40’s in southern Viet Nam after independence. Further, the Respondent offered for sale the Disputed Domain Name at the price of USD 3,999.
First, the Complainant argues that a generic Top Level Domain could be used internationally and given that the Disputed Domain Name is a misleading typographical variant of a trademark well-known from the Europe audience but also in Asia, the Respondent’s intention was not to limit the scope of the domain to Viet nam.
Secondly, the Respondent proposed to block access to the Disputed Domain Name to European IP addresses, but this proposal has not been followed up since the parking page is still accessible. Further, blocking the accessibility of content to European IP addresses does not prevent the use of the Disputed Domain Name for sending fraudulent emails for phishing purposes.
The Complainant contends that by using the Disputed Domain Name, the Respondent intentionally attempted to attract for commercial gain, Internet users to the 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 the Respondent’s website or location or of a product or service on the Respondent’s web site or location.
The Complainant further argues that the Disputed Domain Name was registered for the sole purpose of selling to the Complainant for high price, namely USD 3,999, which is much higher than the average cost of USD 30 for a domain name “.com” according to several registrars’ prices.
Finally, via the search of the Complainant, the political movement mentioned in the Respondent’s email seems never existed in Viet Nam or was not generally known. Moreover, if the Respondent was willing to use the Disputed Domain Name in connection with this political movement, he would have created a dedicated website which would not have infringed the Complainant’s intellectual property rights and would not have redirected the Disputed Domain Name to a page presenting links related to the Complainant’s activities.
With the said arguments, the Complainant requests that the Disputed Domain Name <thayls.com> be transferred to the Complainant.
B. Respondent
On November 6, 11 and 13, 2019, the Respondent sent to the Center three emails in the Vietnamese language, in which the Respondent requested Vietnamese to be the language of the proceeding and for suspension of the proceeding until a three-member panel is appointed. The Respondent also stated that:
- The Complaint is trying to steal his Disputed Domain Name and never contacted him directly.
- The Respondent intends to file a complaint to the local court.
- Now, he is bearing the burden of translating the documents into Vietnamese.
6. Discussion and Findings
A. Procedural Issues
(i) Respondent’s Identity
The Panel notes that at the time the Complaint was filed on October 17, 2019, the Respondent was identified as “Vietnam Domain Privacy Services”. On October 29, 2019, the underlying respondent and its contact information was disclosed by the Registrar’s verification response. At the Center’s invitation, on the same date of October 29, 2019, 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 October 29, 2019, 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, (ii) submit the Complaint translated into Vietnamese, or (iii) a substantiated request for English to be the language of the proceeding by November 1, 2019.
On October 30, 2019, the Complainant submitted a request that English be the language of the proceeding.
On November 11, 2019, the Respondent sent an email to the Center, requesting Vietnamese to be the language of the 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 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 Belgian business 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 the website under the Disputed Domain Name consists entirely of English content;
(iii) the Respondent’s request for Vietnamese to be the language of the proceeding was submitted after the due date of November 3, 2019; in this regard, the Center proceeded to issue the Notification of Complaint and Commencement of Administrative Proceeding in both English and Vietnamese, as the Center did not hear from the Respondent by the due date.
The Panel quotes the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5.1 with approval: “Noting the aim of conducting the proceedings with due expedition, paragraph 10 of the UDRP Rules vests a panel with authority to conduct the proceedings in a manner it considers appropriate while also ensuring both that the parties are treated with equality, and that each party is given a fair opportunity to present its case.
Against this background, panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. Such scenarios include (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant’s mark, (iii) any content on the webpage under the disputed domain name, […] or (x) other indicia tending to show that it would not be unfair to proceed in a language other than that of the registration agreement.
The credibility of any submissions by the parties and in particular those of the respondent (or lack of reaction after having been given a fair chance to comment) are particularly relevant.”
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 notes that the Disputed Domain Name was registered on April 21, 2005, but the Complaint was not filed with the Center until October 17, 2019. In considering this delay of 14 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 WIPO Overview 3.0 that “[p]anels 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 a previous decision, 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 registered and is using the Disputed Domain Name in bad faith (see, e.g., CeltonManx Limited v. Pham Dinh Nhut, WIPO Case No. D2014-0109).
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 THALYS Trademarks, 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 THALYS Trademarks in providing services of travelling and transporting via international rail links.
In the case at hand, the Panel notes that the Complainant does not have a registered trademark for THALYS 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.
Second, the Panel finds that the Disputed Domain Name differs from the THALYS Trademarks by merely the inversion of letter “L” after letter “Y” with regard to <thayls.com>. In accordance with section 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 panels to be confusingly similar to the relevant mark for purposes of the first element. Thus, the inversion of letters does not prevent a finding of confusing similarity between the Disputed Domain Name and the THALYS Trademarks. In the Panel’s view, “Thayls” is confusingly similar to the Complainant’s trademarks in terms of structure and presentation.
Given the wide use of the trademark THALYS by the Complainant and the fact that the website under the Disputed Domain Name contains links to train services, which are the renowned services of the Complainant, the Panel opine that this case appears to be 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, Yurtici Kargo Servisi A.S. v. Yurticicargo Yurticikargo, WIPO Case No. D2003-0707; CareerBuilder, LLC v. Azra Khan, WIPO Case No. D2003-0493; The Sportsman’s Guide, Inc. v. Vipercom, WIPO Case No. D2003-0145; Neuberger Berman Inc. v. Alfred Jacobsen, WIPO Case No. D2000-0323.
Thirdly, the Panel finds, similarly to other UDRP panels, that the addition of the applicable TLD “.com” to the Disputed Domain Name is viewed as a standard registration requirement and as such can be disregarded in the determination of confusing similarity (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). Therefore, in this present case, the addition of the TLD “.com” does not prevent a finding of confusing similarity for purposes of the Policy.
Based on the foregoing findings, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s 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 showing that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent did not submit a substantive 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 Limited, 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 substantive response was submitted, while the Complainant has presented evidence to the Panel that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
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 parked pages 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 and others. Hence, in light of foregoing viewpoint and similarly to a number of well-established prior UDRP decisions, the Panel upholds that operating PPC parking pages using a distinctive trademark or its intentionally-misspelled version in a domain name, 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. As the Respondent had utilized a privacy service until that shield was lifted by the Registrar, it is plain to the Panel that the Respondent does not have a name reflecting 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 “Thayls” or that he 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) 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, 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 submit a substantive 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 THALYS Trademarks have been registered in a variety of jurisdictions around the world. In addition, the Complainant’s THALYS Trademarks have been put in use over a lengthy period of time (since 1995) and gained certain reputation in the field of train services. The Complainant’s THALYS Trademarks and its domain names <thalys.com>, <thalys.net> well predate the registration of the Disputed Domain Name.
The Disputed Domain Name in fact incorporates typographical errors of the THALYS Trademarks. Further, “Thalys” as a whole is not descriptive and devoid of meaning other than the services of the Complainant. Hence, it is very unlikely that the Respondent would have registered the Disputed Domain Name incorporating the typographical errors of the Complainant’s trademarks without knowledge of the THALYS Trademarks and it defies common sense to believe that the Respondent coincidentally selected the Disputed Domain Name without any knowledge of the Complainant and its trademarks.
The Panel also has conducted an independent search for the term “Thayls” but found no result referring to a political movement in the 40’s in southern Viet nam after independence, as the Respondent claimed in his email to the Complainant dated September 17, 2019. In addition, due to the fact that the Disputed Domain Name is not put in use for the political movement, but is resolving to parking page containing sponsored links to train services, the Respondent’s argument on the registration of Disputed Domain Name is not rational.
Further, the Panel also notes that the Respondent offered the Disputed Domain Name for sale at the price of USD 3,999, as mentioned in his emails to the Complainant on September 9, 2019. With the said fact, the Panel opines that the Respondent registered the Disputed Domain Name partly for the purpose of selling it to the Complainant for a commercial gain, should it stand a chance. This is indicative of bad faith under paragraph 4(b)(i) of the Policy in the Panel’s view.
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 THALYS 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 Respondent is typosquatting the Complainant’s Trademarks in the Disputed Domain Name. The Disputed Domain Name resolves to PPC parking sites, where the PPC links are also referring the services of the Complainant’s competitors and others. These facts, in the Panel’s opinion, further evidence bad faith use.
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 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 of its website, for commercial gain, and earning.
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 <thayls.com> be transferred to the Complainant.
Pham Nghiem Xuan Bac
Sole Panelist
Date: December 26, 2019