WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BWX Ltd. v. Ong Nguyen Chi Cong

Case No. D2021-0015

1. The Parties

The Complainant is BWX Ltd., Australia, represented by IP Wealth Pty Ltd, Australia.

The Respondent is Ong Nguyen Chi Cong, Viet Nam.

2. The Domain Name and Registrar

The disputed domain name <sukinvn.com> (“Disputed Domain Name”) is registered with Mat Bao Corporation (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 5, 2021. On January 5, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 8, 2021, 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 Registrar also disclosed that the registration agreement for the Disputed Domain Name was in Vietnamese.

Pursuant to paragraph 11 of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), the Center sent an email communication to the Parties in English and Vietnamese on January 8, 2021, disclosing that the registration agreement for the Disputed Domain Name was Vietnamese. The Complainant was invited to submit satisfactory evidence of an agreement between the Complainants and the Respondent to the effect that the proceedings should be in English; or, submit the Complaint translated into Vietnamese; or, submit a request for English to be the language of the administrative proceedings. The Respondent was similarly invited to submit any comments on the Complainant’s submission regarding the language of the proceeding.

The Complainant emailed the Center on January 11, 2021, requesting that English be the language of the proceedings and providing arguments thereto. The Respondent emailed the Center on January 12, 2021, requesting that Vietnamese be the language of the proceedings and providing arguments thereto.

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, in English and Vietnamese, of the Complaint, and the proceedings commenced on January 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 4, 2021. The Response was filed with the Center on February 3, 2021, by the Respondent.

The Center appointed Pham Nghiem Xuan Bac as the sole panelist in this matter on February 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, BWX Ltd., is the parent company of several wholly owned subsidiaries including BWX Brands Pty Ltd., Sukin Australia Pty Ltd, and BWX Australia Pty Ltd. Since the foundation date in 2001, the Complainant has specialized in manufacturing and providing natural skincare cosmetics and related products in Australia, Canada, China, the United Kingdom, the United States of America (“United States), and many other countries. In 2016, SUKIN becomes one of the most popular skincare brands in Australia.

The Complainant owns 52 registered trademark registrations for the trademark SUKIN in 27 countries throughout the world, including, but not limited to, Australian Trademark Registration No. 1162952 registered on February 23, 2007, and No. 1270021 registered on October 30, 2008; United States Trademark Registration No. 3701034 registered on October 27, 2009.

The SUKIN trademark has been used by the Complainant on the domain names <sukinorganics.com> and <sukinorganics.com.au> since 2008 and the Facebook page “https://www.facebook.com/SukinNaturalSkincare” since September 2010.

The Disputed Domain Name <sukinvn.com> was registered on August 14, 2017. The Disputed Domain Name used to resolve to a website containing the Complainant’s SUKIN logo and trademark in the website’s header, footer, and title for offering skin care cosmetics under the brand SUKIN and other third parties’ brands. However, as of the date of this Decision, the website under the Disputed Domain Name has a slightly different interface, in which the Complainant’s SUKIN logo is not displayed.

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 identical or confusingly similar to a trademark or service mark, in which the Complainant has rights.

First, the Complainant contends that the Complainant is the registered owner of trademark registrations for SUKIN in numerous countries around the world. The Complainant further asserts that the Complainant benefits from a worldwide reputation in respect of the SUKIN trademark.

Second, the Complainant contends that the Disputed Domain Name is confusingly similar to the SUKIN mark owned by the Complainant since the Disputed Domain Name reproduces entirely the registered trademark SUKIN, and the addition of the suffix “vn”, which is an abbreviation or a country code for Vietnam that could not dispel any confusing similarity.

Third, the Complainant submits that the addition of the generic Top-Level Domain (“gTLD”) 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 Respondent is neither a licensee of the Complainant, nor otherwise authorized to use the Complainant’s SUKIN trademark.

Secondly, the Complainant asserts that the Respondent is not commonly known by the Disputed Domain Name or the name SUKIN, since the Disputed Domain Name is not the corporate name of the Respondent prior to the creation of the Disputed Domain Name, also, the Respondent does not have any registered trademark bearing the element SUKIN.

Furthermore, the Complainant contends that the Respondent has not made use of, or demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services. Particularly, the website under the Disputed Domain Name uses the Complainant’s registered logo alongside products that copy the look of the Complainant’s goods including the same label.

Finally, by copying the Complainant’s SUKIN logo on the associated website, the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain to misleadingly divert consumers.

(iii) The Disputed Domain Name has been registered and is being used in bad faith.

First, the Complainant asserts that the SUKIN trademark is known internationally, with trademark registrations across numerous countries. The Complainant has marketed and sold its goods and services using this trademark well before the Respondent’s registration of the Disputed Domain Name on August 14, 2017.

Secondly, the Complainant submits that it is evident from the Respondent’s use of the Disputed Domain Name that the Respondent knew of the Complainant’s SUKIN trademark when registering the Disputed Domain Name.

Furthermore, it is also evident that by copying the Complainant’s SUKIN trademark, logo and placing the phrase “CHÀO MỪNG BẠN ĐẾN VỚI SUKIN VIỆT NAM” (in English: “WELCOME TO SUKIN VIETNAM”) as well as blog articles referring to the Complaint, the Respondent registered and used the Disputed Domain Name with the intention to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s SUKIN trademark as to the source, sponsorship, affiliation or endorsement of its website or a product/service.

Therefore, the Complainant considers that the Respondent registered and is using the Disputed Domain Name in bad faith under Policy 4(b)(iii).

With the said arguments, the Complainant requests that the Disputed Domain Name be transferred to the Complainant.

B. Respondent

On February 3, 2021, the Respondent submitted a response, confirming that he carefully read the Complaint and contending that:

(i) The website under the Disputed Domain Name has been put in genuine use and operation by the Respondent since 2017.

First, the Respondent asserts that the Disputed Domain Name and its associated website are owned by Sukin Viet Nam Company Limited of the Respondent, Mr. Nguyen Chi Cong. The website “https://sukinvn.com/” has been used for trading cosmetics and health care products of many brands since August 14, 2017. The Respondent shows several printout screens of Product Order Receipts since August 15, 2017, as the evidence of using the website and the Disputed Domain Name for trading products of third parties, prior to trading the Complainant’s SUKIN products.

Secondly, the Respondent submits that the Disputed Domain Name is coincidently created. At the time of registration in 2017, since the Complainant did not have any distributor nor any trademark registration in Viet Nam, the Respondent did not acknowledge the existence of the Complainant’s SUKIN trademark.

(ii) The Respondent is the distributor of genuine SUKIN products, which are directly imported from Sukin Australia.

The Respondent contends that since 2018 the Respondent has the right to sell genuine SUKIN products under the agreement between Vietnam Sukin Company, Ltd. (“Sukin Vietnam”, the company owned by the Respondent) and Boloho Company Limited (“Boloho”), which is authorized by Beautizon Vietnam Company Limited (“Beautizon”) for trading, marketing SUKIN products. According to the Respondent, Beautizon is the official local importer and distributor of SUKIN products of BWX. According to the Respondent, the Respondent is authorized to sell SUKIN products, and that is why they use the images and information regarding the SUKIN products on its website, similarly to the way they apply for products of other brands that they are distributing through the website. The Respondent further contends that this is a common commercial practice, and such use are necessary to inform the consumers of the products.

In addition, the Respondent submits that their e-commerce website under the Disputed Domain Name is lawfully registered with the Ministry of Industry and Trade of Vietnam.

(iii) Since the commencement of the website “https://sukinvn.com/”, the Respondent has not received any warning or indication from BWX or any official distributors of SUKIN brand in Viet Nam regarding the Respondent’s use of the Disputed Domain Name. Furthermore, the Respondent contends that since the Complaint’s SUKIN trademark is not well-known in Viet Nam, there is no reason that the Respondent needs to cause confusion to the public and take advantage of the Complainant’s goodwill.

(iv) The Respondent is willing to amend the content of the website “https://sukinvn.com/” to avoid any likelihood of confusion, besides their replacement of the logo and product’s photos. In addition, the Respondent wishes to settle the dispute in an amicable way, instead of forcibly revoking the Disputed Domain Name, in which the Respondent has invested a lot.

6. Discussion and Findings

A. Procedural Issues

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 communication dated January 8, 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) the Complaint translated into Vietnamese, or (iii) a substantiated request for English to be the language of the proceeding.

On January 11, 2021, the Complainant filed a request that English be the language of the proceeding for the reasons that the Respondent can understand English as the Respondent’s website has many English contents, i.e. “About Us” page, images, wording description; the translation of the Complaint into Vietnamese would create extremely high costs and may prolong the administrative procedure.

On January 12, 2021, the Respondent filed a request that Vietnamese be the language of the proceeding since the website is owned by Vietnamese people and totally operated in Viet Nam, in which the most popular language is Vietnamese. In addition, the English words used in the website are just the name of the products or common words; and the Respondent is not able to read and understand documents in the English language.

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 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 Australian 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, especially in the trading context. Although the Respondent stated that he was not able to read and understand the documents in English, the Panel finds evidence proving that the Respondent has ample knowledge of the English language and could be able to communicate in English, namely

- the Principle Contract between Vietnam Sukin (the company owned by the Respondent) and Boloho (the authorized dealer of the Complainant’s importer and distributor) is in English; and

- the Respondent states in Section 4 of their Response dated February 3, 2021, that he has carefully read the Complainant’s arguments, which are all written in English.

Therefore, 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. The Panel notes that, despite the above finding, the Panel has accepted and reviewed the Party submissions in the language they were submitted.

B. Identical or Confusingly Similar

The Complainant is required to establish the following: (i) that it has trademark rights, and, if so, (ii) that the Disputed Domain Name is identical or confusingly similar to its trademark.

First of all, the Panel finds that the Complainant has clearly evidenced that it has registered trademark rights to SUKIN, well before the Disputed Domain Name was registered. In addition, it is evidenced that the Complainant has a wide use of its SUKIN trademark in offering cosmetic products.

In the case at hand, the Panel notes that the Complainant does not have a registered trademark for SUKIN in Viet Nam. However, it is well established that the jurisdictions, where the trademark is valid, is irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP (See the section 1.1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”).

Second, the Disputed Domain Name comprises the Complainant’s SUKIN mark, in which the Complainant has exclusive rights. The difference between the Disputed Domain Name and the trademark is the addition of the suffix “vn”, which is the common short form of “Viet Nam”, the name of the country where the Respondent resides. As such, the Panel finds that the SUKIN mark remains clearly recognizable in the Disputed Domain Name. It is well established that the addition of the short-formed country name “vn”, to a trademark does not prevent confusing similarity, as it was found in previous UDRP decisions (see, e.g., Supercell Oy v. See Privacy Guardian.org / Mediastack, WIPO Case No. D2017-2177; Johnson & Johnson v. Tung Nguyen, WIPO Case No. D2017-1635).

Third, 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).

On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s SUKIN trademark, and the first element 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 out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. 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 regard, the Panel finds that the Respondent submitted a Response on February 3, 2021, which comprises, among others, a copy of the Principle Contract signed between Vietnam Sukin (the company owned by the Respondent) and Boloho (the authorized dealer of the Complainant’s local importer and distributor). In review of this Principle Contract, the Panel finds that it is merely a sale contract, which contemplates the sale and purchase of Sukin products from Boloho and Viet Nam Sukin. No clause in this Principle Contract allows or permits, either explicitly or implicitly, the Respondent to use the Complainant’s Sukin trademarks in any manner, including to use it as part of any domain names or in the website, for any purpose. In a strict sense, the Viet Nam Sukin and Boloho agreed in Article 1.2 of the Principle Contract that “The contents in the contract shall only be amended under a common agreement of two parties, which is presented in a document”. In absence of any evidence on any amendment to this Principle Contract, the Panel is of the view that the Complainant is not permitted or allowed by the Complainant or any entities related to the Complainant, including Boloho and Beautizon, to register or use the domain name incorporating the Complainant’s Sukin trademark, as well as to use the Sukin trademark in the website related thereto.

Further, the Complainant did assert that no license, permission, or authorization of any kind to use the Complainant’s trademark has been granted to the Respondent. Also, no evidence is available to the extent that the Respondent holds any registered or unregistered trademark rights in any jurisdiction, including Viet Nam and other countries. Thus, the Panel finds that the Respondent has no rights in the trademark SUKIN.

As mentioned in Section 2.8.2 of the WIPO Overview 3.0, in the absence of prior agreement between the parties regarding the registration or use of domain name incorporating the Complainant’s trademark, a reseller or distributor may be making a bona fide offering of goods and services and thus have rights or legitimate interests in a domain name if its use meets certain requirements, which are described in the decision Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“Oki Data”), including:

- the respondent must actually be offering the goods or services at issue;

- the respondent must use the site to sell only the trademarked goods (otherwise, there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods);

- the site itself must accurately disclose the respondent’s relationship with the trademark owner; and

- the respondent must not try to “corner the market” in all relevant domain names, thus depriving the trademark owner of the ability to reflect its own mark in a domain name.

In this particular case, the Panel finds that the Respondent does use the website at the Disputed Domain Name to sell the Sukin products. However, the Sukin products are not the only products that the website under the Disputed Domain Name is promoting; instead the Respondent also advertises for sale of products of other manufacturers, for example, the Trilogy cosmetics. This is also admitted by the Respondent in its Response dated February 3, 2021, (Sections 1 and 2). In the Panel’s view, the use of the verbal element “sukin” in the Disputed Domain Name as well as of the Sukin logo and other information relating to the Sukin products in the website thereunder for selling, besides the Sukin products, cosmetics under other brands is highly likely to cause confusion to consumers. Even, there is a possibility that the Respondent is using the trademark SUKIN in the Disputed Domain Name to bait consumers and then switch them to other goods.

In addition, the Panel finds the Respondent does not place any statement or disclaimer disclosing accurately its relationship with the Complainant. As provided in the Complaint, the Panel finds that the website under the Disputed Domain Name used to contain the Complainant’s SUKIN logo and trademark in the website’s header, footer, and title, as so submitted by the Complainant. These indications may mislead consumers into believing in a connection or association between the Respondent and the Complainant, where such connection or association does not exist in reality.

In this regard, the Panel emphasizes that as of the date of this decision, it is true that the Respondent has slightly modified the website interface by removing the Sukin trademark. Nonetheless, even with that modification, the website under the Disputed Domain Name still contains so many elements referring to the Complainant and its SUKIN trademarks, such as pictures of Sukin products (in which the SUKIN trademark is presented), and especially, the tab titled “Câu chuyện Sukin” (“The Sukin Story”) directly under the main tab “Về chúng tôi” (“About us”), which falsely suggests a relationship between the Respondent and the Sukin products, while a clear statement or disclaimer accurately describing the relationship between the Respondent and the Complainant is still not available. In addition, the timing of the modification of the website at the Disputed Domain Name, after submission of the Complaint, tends to cast doubt on the motivation for this modification.

Further, the nature of the Disputed Domain Name, comprising the geographical term “vn” and the SUKIN trademark, tends to suggest sponsorship or endorsement by the trademark owner. (See section 2.5.1 of the WIPO Overview 3.0.)

With such a view, the Panel finds that the unauthorized use of the Disputed Domain Name does not meet the Oki Data criteria and thus, does not constitute a bona fide use within paragraph 4(c)(i) of the Policy.

Regarding paragraph 4(c)(ii) of the Policy, the Respondent submits that he operates a company named “Viet Nam Sukin Company Limited” incorporating the SUKIN mark. In this regard, the Panel conducted an independent search in the database of the National Business Registration Portal of Viet Nam and finds that such company was established on September 14, 2018.

In this regard, the Panel notes that in the Response dated February 3, 2021 (Paragraph 2, Section 1 and paragraph 1, Section 2), the Respondent states that “Not until 2018 did Sukin have its distributors in Viet Nam”, and that “In 2018, we received an offer for cooperation from Boloho […] in relation to the Sukin products in Viet Nam”. With such statements, it is arguable that the Respondent registered its company name after the Complainant’s Sukin products had entered the Viet Nam market, and that this company was set up for the purpose of distributing the Sukin products by the Respondent. In these circumstances, and taking into account the fact that the SUKIN trademark had been registered (in its home country) and the Sukin products had been launched since as early as 2007, which well-predates the registration of the Respondent’s company name, the Panel is of the view that by the time the Disputed Domain Name was registered, any mention to “Sukin” in any commercial indications would likely refer consumers to Sukin products and its manufacturer, rather than the Respondent. Furthermore, the Panel notes that mere registration of a company name may not on its own provide sufficient evidence to confirm that a respondent has rights or legitimate interests in a domain name, particularly if other circumstances would tend to show an attempt to unfairly trade off of a third party trademark. Hence, in the circumstances of this case and in the absence of strong evidence of the Respondent’s renown, the Panel finds that the Respondent is not commonly known under the Disputed Domain Name.

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 Names, and the second element, 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.”

Each of the four circumstances in paragraph 4(b) of the Policy, if found, is an instance of “registration and use of a domain name in bad faith”.

The Panel finds that the Complainant has put forth evidence that the Respondent has registered and used the Disputed Domain Name in bad faith. Particularly, 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 SUKIN trademark has been registered and used in commerce for quite a long period of time. Besides functioning as a trademark, SUKIN is also being used in the Complainant’s domain names <sukinorganics.com> and <sukinorganics.com.au>.

The Disputed Domain Name comprises the SUKIN trademark in its entirety, adding only the suffix “vn”. In this regard, the Panel notes that the Respondent, in its Response dated February 3, 2021, contends that “the domain name <sukinvn.com> was chosen inadvertently for the purpose of providing a variety of products”. Nonetheless, it comes to the Panel’s attention that following the Respondent’s contentions, coincidence occurs in this case too many times, first with the choice of the domain name, then with the distribution of the products that by chance bear the same name with the key element of the domain name, followed by the offer for cooperation by the dealer of the Complainant in relation to those very products, and the registration of the company name that also comprises the verbal element “Sukin” as key element. These circumstances, as well as those discussed in the second element above, make the contentions by the Respondent unpersuasive to the Panel, especially given that “Sukin” is a coined term, without any dictionary meaning, and the extensive use of the SUKIN trademark for cosmetic products by the Complainant, which occurs in numerous countries, including in Viet Nam, where the Respondent resides.

Hence, in the Panel’s view, it is very unlikely that the Respondent registered the Disputed Domain Name in a fortuity. In contrary, in consideration of the use of the Disputed Domain Name and the content of the website thereunder, the Panel is of the view that the Respondent obviously knew of the Complainant and its SUKIN trademark when it registered the Disputed Domain Name, and the Panel considers the registration an attempt by the Respondent as to take advantage of the Complainant’s goodwill, or at least to lure consumers to its website while the use of the SUKIN trademark in the Disputed Domain Name and the website thereunder has not been approved or permitted by the Complainant as the trademark holder.

Furthermore, as submitted by the Complainant, the Panel finds that in addition to the adoption of the Complainant’s SUKIN trademark as a uniquely distinctive part in the Disputed Domain Name, the website under the Disputed Domain Name used to contain the Complainant’s SUKIN logo and trademark in the website’s header, footer, and title, as well as pictures of the Complainant’s products and blog articles referring to the Complainant. Except for the SUKIN logo, the said pictures and blog articles remain in the website under the Disputed Domain Name until now. The Panel duly notes that the tab titled “Câu chuyện Sukin” (“The Sukin Story”) is still put directly under the main tab “Về chúng tôi” (“About us”). This structure falsely suggests a relationship between the Respondent and the Sukin products or the Complainant, while such relationship does not exist in reality.

Therefore, the Panel takes the view that any Internet users seeking to purchase the Complainant’s SUKIN product would very likely mistakenly believe that the Respondent is either connected to or associated with the Complainant, while as said, no such connection exists in fact. Hence, by using the Disputed Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website thereunder by creating a likelihood of confusion as to the affiliation or endorsement of its website by the Complainant. Such misleading behavior is a kind of bad faith within the meaning of paragraph 4(b)(iv) of the Policy, on the part of the Respondent.

Taking into account all of the above, the Panel finds that the Disputed Domain Name was registered and used by the Respondent in bad faith and the third element under paragraph 4(a)(iii) 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 <sukinvn.com> be transferred to the Complainant.

Pham Nghiem Xuan Bac
Sole Panelist
Date: March 1, 2021