The Complainant is VNG Corporation, Viet Nam, represented by Pham Van Do La, Viet Nam.
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America / Dung Vo, Domain Names Company, Viet Nam.
The disputed domain name <zalopay.com> (the “Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 24, 2021. On June 24, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 25, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 1, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. In addition, the Center sent an email communication in both Vietnamese and English regarding the language of the proceeding on July 1, 2021. The Complainant replied on July 2, 2021, requesting Vietnamese to be the language of the proceeding. The Respondent did not submit any comments. The Complainant filed an amended Complaint on July 2, 2021.
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”).
The Respondent submitted informal communications on July 5, 2021, to which the Center acknowledged receipt.
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 28, 2021.
On July 28, 2021, the Center received a Response from the same email address that was disclosed by the Registrar as belonging to the Respondent. However, the Response was filed on behalf of an individual named “Nguyen Thanh Nam”, not “Dung Vo” – the Respondent.
The Center appointed Pham Nghiem Xuan Bac as the sole panelist in this matter on July 30, 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.
On August 2, 2021, the Complainant submitted an unsolicited Supplemental Filing to the Center, to which the Center acknowledged receipt.
On August 10, 2021, pursuant to UDRP Rules Paragraphs 10 and 12, the Panel issued an Administrative Panel Procedural Order No. 1, requesting (i) evidence from the Complainant to support its contention that the Respondent offered to sell the Disputed Domain Name at the price of USD 30,000, and (ii) disclosure on the relationship between Nguyen Thanh Nam and Dung Vo, and evidence from the Respondent proving that Nguyen Thanh Nam is entitled to file the Response. The due date for both parties to reply the Procedural Order No. 1 was August 12, 2021.
On August 11, 2021, the Complainant replied that the price of USD 30,000 for the Disputed Domain Name was proposed by the Respondent in a face-to-face meeting.
On August 12, 2021, Nguyen Thanh Nam replied the Procedural Order No. 1., stating that “Dung Vo” is his nickname and providing the screenshot of GoDaddy’s Administration page for the Disputed Domain Name, in which his email address and mobile number are displayed. The Respondent also submitted two Supplemental Filings to the Center, to which the Center acknowledged receipt.
The Complainant, VNG Corporation, is a Vietnamese corporation founded in 2004 under Business Registration Certificate No. 0303490096 issued by the Department of Planning and Investment of Ho Chi Minh City. The Complainant has used the trademark ZALO for an over-the-top application since 2012 and gained certain reputation with, according to the Complainant, over 100 million users and one billion messages per day in 2018. The Complainant’s ZALO application was also ranked as one of the most innovative mobile applications in Asia by Techniasia website in February 2013.
According to the Complainant, the payment intermediary services under ZALOPAY trademark was first launched for trial in 2013 by Zion Joint Stock Company – a subsidiary of the Complainant. The ZALOPAY service was granted license by the State Bank of Vietnam in January 2016.
The trademarks ZALO are registered in the name of the Complainant for goods and services in Classes 09, 38, 41, and 42, and in a variety of countries under a number of trademark registrations, including, but not limited to, the Vietnamese trademark registration Nos. 217563 and 217564, dated December 31, 2013. The trademark ZALOPAY is registered in the name of the Complainant’s subsidiary, Zion Joint Stock Company, in several classes, including Class 36 for payment services under Vietnamese trademark registration No. 303799 dated July 25, 2018.
Additionally, the Complainant and its subsidiary are the registrants of some domain names featuring the trademarks ZALO and ZALOPAY, notably the domain name <zaloapp.com> registered on October 14, 2012.
The Disputed Domain Name <zalopay.com> was registered on November 4, 2014. As of the date of this Decision, the Disputed Domain Name is resolving to a website offering money loan services from various third parties. However, according to the Complainant, the Disputed Domain Name used to resolve to a website with contents almost identical with those of the Complainant’s official websites.
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:
(i) The Disputed Domain Name is confusingly similar to the trademark in which the Complainant has rights.
First, the Complainant contends that the Complainant is the registered owner of trademark registrations for ZALO in numerous jurisdictions. Further, the Complainant submits that its trademarks ZALO have gained wide reputation in Viet Nam and over the world. Besides, the Complainant is the owner of several domain names consisting ZALO trademarks.
Second, the Complainant asserts that the Disputed Domain Name is confusingly similar to the ZALO trademarks owned by the Complainant since the Disputed Domain Name incorporates the Complainant’s trademarks ZALO in its entirety, and the addition of the generic term “pay” could not dispel any likelihood of confusion.
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
First, the Complainant argues that the Complainant has established its rights to the ZALO trademarks for a long time before the Respondent registered and used the Disputed Domain Name.
Second, the Complainant submits that the Complainant and Respondent do not have any partnership or permission for the Respondent to use, exploit, promote ZALO-branded products/services or use the Disputed Domain Name associated with the ZALO trademarks. The Disputed Domain Name is registered and used by the Respondent after the Complainant has established its rights over the ZALO trademark.
Third, the Complainant contends that the Respondent has been violating Vietnamese regulations and infringing the legitimate rights and interest of the Complainant. Further, the Complainant argues that the posting by the Respondent of contents from the Complainant’s website alongside information on some services that are subject to limitations and conditions under the laws of Viet Nam would mislead consumers into believing that the Complainant is providing infringing products/services; this adversely affects the Complainant’s reputation.
Finally, the Complainant submits that the Complainant and its subsidiary, Zion Joint Stock Company, have registered many domain names featuring trademarks ZALO and ZALOPAY to use and protect their trademarks.
(iii) The Disputed Domain Name was registered and is being used in bad faith.
First, the Complainant contends that the Respondent’s registration of the Disputed Domain Name infringes the Complainant’s rights to the ZALO trademarks, since the Disputed Domain Name was registered on November 4, 2014, which is after the filing date of the Complainant’s trademarks ZALO of August 10, 2012. Besides, the ZALO trademarks have been widely known in Viet Nam and around the world, and the payment intermediary service by the Complainant and its subsidiary Zion JSC was built and first launched for trial in 2013.
Second, the Complainant argues that the Respondent’s unauthorized use of the Complainant’s trademarks ZALO and ZALOPAY, as well as contents of and information about the Complainant’s products, services, and promotional materials/programs over a long period of time has caused serious confusion for the Complainant’s customers. At present, almost all the Complainant’s promotional programs are used by the Respondent for posting in the website under the Disputed Domain Name.
Further, the Complainant contends that the Respondent registered the Disputed Domain Name with an intention to hold and re-sell it to the Complainant at the hefty price of USD 30,000. Upon seeing no response from the Complainant, the Respondent continued posting more contents from Complaint’s official websites, and contents regarding sensitive products/services of third parties on the website under the Disputed Domain Name; this causes serious confusion and misleading to customers.
Fourth, the Complainant submits that the Respondent has posted a notice to sell the Disputed Domain Name on the iNet domain name trading platform, with the price from VND 1,000,000 to VND 1,000,000,000.
Finally, the Complainant submits that the Respondent was a former employee of the Complainant in the period from July 30, 2012, to February 19, 2014, and the Respondent had a sensitive sense of market as well as information about ZALOPAY development products shared by the Complainant. Therefore, the Respondent registered the Disputed Domain Name to take it from the Complainant.
From the above arguments, the Complainant concludes that the Respondent’s registration of the Disputed Domain Name is for the purpose of reselling it to the Complainant, and this evidences the act of registering, using the Disputed Domain Name on bad faith.
With the said arguments, the Complainant requests that the Disputed Domain Name be transferred to the Complainant.
On July 28, 2021, the Response was filed with the Center by an individual named “Nguyen Thanh Nam”, not “Dung Vo” – the Respondent. Nonetheless, for the purpose of this Decision, the Panel summarizes the arguments by Nguyen Thanh Nam as follows:
In the Response and two Supplemental Filings, Nguyen Thanh Nam requests the Panel to deny the Complainant’s requests with the following contentions:
First, Nguyen Thanh Nam submits that the Complainant is the defendant in many music piracy lawsuits nationally and internationally. As such, Nguyen Thanh Nam assumes that the Complainant is using sophisticated tricks to reverse hijack the Disputed Domain Name.
Second, Nguyen Thanh Nam contends that the Complainant does not own the trademarks ZALO since there exists several domain names containing the word ZALO in the name of third parties, while the Complainant has not sought any remedies against them. Additionally, the Complainant had not obtained the United States of America trademark registration, or International Trademark registration for ZALO or ZALOPAY before the registration of Disputed Domain Name.
Third, Nguyen Thanh Nam argues that the Complainant uses this proceeding to rob domain names from other holders, especially those who do not have enough resources to protect themselves or hire a lawyer.
For each of the three elements specified in paragraph 4(a) of the Policy, Nguyen Thanh Nam refutes the Complainant’s contentions as follows:
(i) The Disputed Domain Name is confusingly similar to the trademark in which the Complainant has rights.
First, Nguyen Thanh Nam contends that the Complainant does not have trademark or service mark rights to the word “zalo”, and even if it did, the Disputed Domain Name was not identical or confusingly similar due to the following reasons:
- The word “zalo” is not unique and indistinguishable, since the word “zalo” means “good”, and Nguyen Thanh Nam wants to bring “good” loans to consumers. Further, Nguyen Thanh Nam submits that the word “zalo” is also a popular name in Belgium.
- Nguyen Thanh Nam registered the Disputed Domain Name and launched its business two years before the appearance of the Complainant’s trademark ZALOPAY. Therefore, it is the Complainant that caused the similarity, not the Respondent. Further, Nguyen Thanh Nam argues that since it takes the Complainant seven years to file the Complaint, this shows the Complainant’s uncertain belief and position on its own trademark rights and business model.
- The Complainant’s business is completely different from Nguyen Thanh Nam’s business and, therefore, cannot cause confusion to consumers. Namely, Nguyen Thanh Nam's business is for matching borrowers and lenders while the Complainant’s business relates to payments.
Second, Nguyen Thanh Nam contends that the Complainant did not have any United States of America trademark or international trademark for ZALO and ZALOPAY before the registration date of the Disputed Domain Name, thus Nguyen Thanh Nam requests the Panel to deny the Complainant's ownership of the ZALO trademarks.
(ii) Nguyen Thanh Nam has no rights or legitimate interests in respect of the Disputed Domain Name.
First, Nguyen Thanh Nam contends that Nguyen Thanh Nam’s business and website were active long before the Complainant’s ZALOPAY product appeared, and the revenue of the website under the Disputed Domain Name first came from Google Adsense by displaying ads related to small loans. Nguyen Thanh Nam then became an agent and affiliate of AccessTrade.vn.
Second, Nguyen Thanh Nam submits that Nguyen Thanh Nam’s business from the website under the Disputed Domain Name, which generates income from AccessTrade.vn, is legitimate, and has been recorded with the Tax Authority.
Finally, Nguyen Thanh Nam argues that by having a clear business model, a long-time running, and earning legitimate revenues, Nguyen Thanh Nam has legitimate rights and interests in respect of the Disputed Domain Name, and therefore, Nguyen Thanh Nam requests the Panel to hold that Nguyen Thanh Nam has rights and legitimate interests over the Disputed Domain Name.
(iii) The Disputed Domain Name was registered and is being used in bad faith.
First, Nguyen Thanh Nam contends that Nguyen Thanh Nam has registered the Disputed Domain Name and has not used the Disputed Domain Name in bad faith for the following reasons:
- The Disputed Domain Name was created almost seven years ago, and the Complainant seems to assume that Nguyen Thanh Nam is the original registrant.
- Nguyen Thanh Nam has conducted a legitimate business that has revenues and pays tax.
- There is no evidence that Nguyen Thanh Nam ever contacted the Complainant in an effort to sell the Disputed Domain Name, instead, the Complainant made an effort to purchase the Disputed Domain Name. Further, since many people tried to approach Nguyen Thanh Nam to buy the Disputed Domain Name, Nguyen Thanh Nam decided to list the Disputed Domain Name on iNet platform with a hefty price to prevent them from reaching Nguyen Thanh Nam.
Second, Nguyen Thanh Nam argues that it is normal practice to post promotional contents on the website under the Disputed Domain Name, and there are many websites reposting the promotional contents of the Complainant, but the Complainant didn’t file against any website. Further, Nguyen Thanh Nam submits that Nguyen Thanh Nam posts not only the promotional contents of the Complainant, but also those of other brands, for the purpose of benefiting Nguyen Thanh Nam’s customers.
Third, Nguyen Thanh Nam rebuts the Complainant’s contention that Nguyen Thanh Nam has been shared the information about ZALOPAY products from the Complainant. Nguyen Thanh Nam submits that at the time from July 30, 2012, to February 19, 2014, no one from the Complainant had the idea of the ZALOPAY product. It was proved by the fact that the Complainant registered its official domain name <zalopay.vn> on May 5, 2016, which is at least 2 years and 3 months later than the date Nguyen Thanh Nam quit his job at the Complainant. Furthermore, Nguyen Thanh Nam registered the Disputed Domain Name on November 4, 2014, which is after nine months from the last working day of Nguyen Thanh Nam at the Complainant.
Finally, Nguyen Thanh Nam argues that Nguyen Thanh Nam did not have the intention to prevent the Complainant from using the name ZALOPAY, or to sell, rent or transfer the Disputed Domain Name to the Complainant. In contrast, Nguyen Thanh Nam’s use of the Disputed Domain Name is purely for genuine business purposes and does not have any bad intentions.
(i) Respondent’s Identity
The Panel notes that at the time the Complaint was filed on June 24, 2021, the named Respondent in the Complaint was identified as “Nguyen Thanh Nam”. On June 25, 2021, the Registrar revealed the underlying registrant as “Dung Vo”. The Center sent an email communication to the Complainant on July 1, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint.
On July 2, 2021, the Complainant filed an amendment to the Complaint, adding the underlying “Dung Vo” to the Complaint. On July 28, 2021, the Response was filed on behalf of “Nguyen Thanh Nam”, who claims himself as the registrant of Disputed Domain Name.
On August 10, 2021, pursuant to UDRP Rules Paragraphs 10 and 12, the Panel issued an Administrative Panel Procedural Order No. 1, requesting the Respondent to disclose the relationship between Nguyen Thanh Nam and Dung Vo, and submit evidence proving that Nguyen Thanh Nam is entitled to file the Response.
On August 12, 2021, Nguyen Thanh Nam replied to Procedural Order No. 1, stating that “Dung Vo” is his nickname and providing the screenshot of GoDaddy’s Administration page for the Disputed Domain Name, in which his email address and mobile number are displayed.
Considering Nguyen Thanh Nam’s reply to the Procedural Order No. 1, the Panel finds that the statement by Nguyen Thanh Nam about this nickname is merely a self-declaration without any evidence, hence it is insufficient in proving that Nguyen Thanh Nam is the actual Registrant of the Disputed Domain Name, despite the fact that the phone number and email address of Nguyen Thanh Nam are displayed in the screenshot of the Registrar’s page, as well as in the WhoIs records. Therefore, the Panel still keeps the view that the Respondent on record is “Dung Vo”, not “Nguyen Thanh Nam”. As such, the Panel can, at its discretion, decide not to accept the Response filed on July 28, 2021, by Nguyen Thanh Nam, since as a matter of laws, it is not duly filed by the Respondent on record Dung Vo.
However, for the purpose of settling the dispute comprehensively, the Panel may still make inference from the Response as filed by Nguyen Thanh Nam, and address some arguments therein should they be considered relevant. For this purpose, in the below discussions, Nguyen Thanh Nam and the Respondent on record Dung Vo may be called by their name individually, or as the context so requires, as “Nguyen Thanh Nam/Dung Vo” mutually.
(ii) Language of the Proceeding
The Complaint was filed in both English and Vietnamese. The Registrar confirmed that the language of the Registration Agreement was English.
As the Complaint was filed in English and Vietnamese, the Center, in its notification dated July 1, 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 Vietnamese, or (ii) a substantiated request for Vietnamese to be the language of the proceeding by July 4, 2021.
On July 2, 2021, the Complainant submitted a request that Vietnamese be the language of the proceeding. The Respondent did not submit any comment.
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.
In the present case, the Panel finds that the Complaint and Response are submitted in both languages English and Vietnamese, and the communication emails between parties and the Center are in English; these suggest that both Complainant and Respondent have ample knowledge of the English language and would be able to communicate well in English.
Therefore, for the purpose of issuing a Decision without any delay, while still maintaining decent comprehension of the Decision, and according to paragraph 11(a) of the Rules, which provides that “the language of the proceeding shall be the language of the Registration Agreement”, the Panel hereby decides that the language of the proceeding shall be English and shall render its decision in English.
(iii) Delay in bringing the Complaint
The Panel finds that the Disputed Domain Name was registered on November 4, 2014, but the Complaint was not filed with the Center until June 24, 2021. In considering this delay of seven years in challenging the Respondent’s registration of the Disputed Domain Name, the Panel is of the same view as those previous UDRP decisions mentioned in section 4.17 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) that “[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 previous UDRP decisions, the Panel has taken into account this delay when considering the second and third element requiring the Complainant to establish that the Respondent lacks rights or legitimate interests and that the Respondent registered and used the Disputed Domain Name in bad faith (see, e.g., CeltonManx Limited v. Pham Dinh Nhut, WIPO Case No. D2014-0109).
(iv) Supplemental Filings
On August 2, 2021, the Complainant submitted an unsolicited Supplemental Filing to the Center, rebutting some arguments in the Response.
On August 12, 2021, Nguyen Thanh Nam also submitted two Supplemental Filings to the Center, repeating his arguments mentioned in the Response and requesting the Panel to dismiss the arguments and evidences submitted by the Complainant in the reply to the Procedural Order No. 1.
The Center acknowledged receipt of the Supplemental Filings and notified the parties that under the Rules, no express provision is made for Supplemental Filings by either party. However, paragraphs 10 and 12 of the Rules in effect grant the Panel sole discretion to determine the admissibility of Supplemental Filings. For a thorough review of the case, the Panel hereby decides to additionally review the Supplemental Filings of both parties, alongside with their replies to Procedural Order No.1.
The Complainant is required to establish the two following elements: (i) that it has trademark rights, and, if so, (ii) 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 mark ZALO, and via its subsidiary Zion JSC, the mark ZALOPAY through a number of trademark registrations, including, but not limited to, two (2) Vietnamese Regs. Nos. 217563 and 217564 granted for ZALO in 2013. In addition, the Panel finds that the Complainant has widely used the trademarks ZALO for an over-the-top application, which was launched in 2012, and has at least one domain name comprising the word ZALO registered in 2012, i.e., the domain name <zaloapp.com>. All the mentioned registrations and use of the ZALO trademarks well predate the registration of the Disputed Domain Name (2014).
In this regard, the Panel rejects Nguyen Thanh Nam’s arguments that the Complainant does not have trademark rights to ZALO, and that the word “zalo” is not unique and indistinguishable. Under the trademark laws of Viet Nam, where both the Complainant and Nguyen Thanh Nam reside, as well as according to the worldwide trademark principle, the fact that a word is meaningful in a certain language (i.e., the Bulgarian language in this case), or that it used to be incorporated in domain names of third parties, or that it is people’s names in certain countries, does not prevent such a word from being chosen and then registered as a trademark of a company. The Panel notes that the Bulgarian language is not a common language in the world, including in Viet Nam. Hence, an ordinary consumer would have a better chance to perceive it as a coined (or at least arbitrary) word without any dictionary meaning, rather than a meaningful word in the Bulgarian language. As such, the arguments by Nguyen Thanh Nam in this regard are ungrounded from the perspective of the trademark laws.
With such a view, Nguyen Thanh Nam’s arguments that the Complainant did not have a United States of America trademark or International Trademark for ZALO and ZALOPAY before the registration date of the Disputed Domain Name, which is also two years before the official launch of ZALOPAY trademark by the Complainant, are irrelevant. Under section 1.1.3, the WIPO Overview 3.0, the two Vietnamese trademark registrations Nos. 217563 and 217564, which were granted in 2013, can well serve as a ground for the trademark rights over the ZALO mark, which was established by the Complainant before the registration of the Disputed Domain Name. The contention by Nguyen Thanh Nam on the difference regarding the services of “matching borrowers and lenders” and “payment” is also incorrect. Under the trademark practice, these two services are usually considered similar as they are both categorized as financial services under the Nice International Classification of Goods and Services (Edition No. 11-2021). Regardless, the goods and/or services for which a mark is registered is not considered relevant for purposes of the first element. See section 1.1.2, the WIPO Overview 3.0.
Therefore, the Panel upholds the Complainant’s assertion that it has trademark right in the mark ZALO, and through its subsidiary Zion JSC, the mark ZALOPAY.
Second, the Panel finds that the Disputed Domain Name comprises the Complainant’s ZALO trademarks, in which the Complainants have exclusive rights. The difference between the Disputed Domain Name and the trademarks ZALO is the addition of the suffix “pay”, which does not prevent a finding of confusing similarity.
As such, the term “pay” is a dictionary term, making the element “zalo” the sole distinctive element that remains clearly recognizable in the Disputed Domain Name. It is well established that the addition of a dictionary (or other) term does not prevent confusing similarity, as it was found in previous UDRP decisions (see, e.g., Philip Morris Products S.A. v. Halil Cakir, WIPO Case No. D2018-1656; Continental Exchange Solutions Inc. DBA Ria Financial v. Red Soul, WIPO Case No. D2013-1690; SAP AG v. Subba Rao Parvathaneni, WIPO Case No. D2010-1813).
Further, the Disputed Domain Name is identical to the Complainant’s ZALOPAY trademark.
Finally, the Panel finds, similarly to other UDRP panels, that the addition of the generic Top-Level Domain (“gTLD”) “.com” to the Disputed Domain Name does not constitute an element as to prevent confusing similarity for the Policy purposes (see, e.g., Volkswagen AG v. Privacy Protection Services, WIPO Case No. D2012-2066; The Coca-Cola Company v. David Jurkiewicz, WIPO Case No. DME2010-0008; Telecom Personal, S.A., v. NAMEZERO.COM, Inc., WIPO Case No. D2001-0015; F. Hoffmann La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
Based on the foregoing findings, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant's trademarks, and paragraph 4(a)(i) of the Policy is established.
Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the Disputed Domain Name for the purposes of paragraph 4(a)(ii) of the Policy, including:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Panel finds that the Complainant has made a prima facie evidence on that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
The 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).
Regarding paragraph 4(c)(i) of the Policy, the Panel finds, in light of the Complainant’s asserted facts, that no license, permission, or authorization of any kind to use the Complainant’s trademarks ZALO or ZALOPAY has been granted to the Respondent. There is no evidence that Nguyen Thanh Nam or the Respondent holds any registered or unregistered trademark rights related to “zalo” or “zalopay” in any jurisdiction. Thus, the Panel finds that Nguyen Thanh Nam/Respondent has no rights in the trademarks ZALO and ZALOPAY.
Besides the similarity between the Disputed Domain Name and the Complainant’s trademarks, the Panel further finds that it is well proven and evidenced by Bailiff Records in Annex 3 and Annex 4 of the Complaint that at least on December 23, 2017, and May 26, 2021, the website at the Disputed Domain Name displayed contents which are almost identical to those of the Complainant’s official websites at ”www.zalopay.vn”, ”www.promotion.zalopay.vn/promotion/home”, including the Complainant’s ZALOPAY logos, names of the Complainant and its affiliate, while no statement or disclaimer disclosing accurately and prominently the relationship between the Complainant and Nguyen Thanh Nam or the Respondent is placed.
In this regard, the Panel also conducted an independent search on ”www.web.archive.org” and found that the Disputed Domain Name, by January 22, 2019, and May 25, 2021, resolved to the website displaying the said identical contents. These may mislead the Internet users into believing in a connection or association between Nguyen Thanh Nam/Respondent and the Complainant, where such connection or association does not exist in reality. See section 2.5.1 of the WIPO Overview 3.0. As such, the Panel finds Nguyen Thanh Nam/Respondent’s use of the Disputed Domain Name, cannot be considered a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy. The fact that Nguyen Thanh Nam allegedly earned some revenues from Google Adsense or AccessTrade.vn, and paid taxes for those revenues is not sufficient for making the use of the Disputed Domain Name bona fide, especially where, as said, such use involves an unauthorized use of the Complainant’s trademark and copyrighted materials.
As of the date of this Decision, the Panel finds that the Disputed Domain Name is resolving to a parking page with Pay-Per-Click (“PPC”) links that redirect Internet users to other online locations offering money loan services of various third parties, such as “Tima”, “24hPlus”, “F88”, etc. In this regard, section 2.9 of the WIPO Overview 3.0 holds that “the use of a domain name to host a parking 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”.
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 in a domain name, and providing connection to goods or services competitive with the trademark owner, does not establish a 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 Nguyen Thanh Nam or the Respondent has been commonly known by the Disputed Domain Name. Therefore, it is not evidenced that Nguyen Thanh Nam/Respondent is identified by “zalopay” or that Nguyen Thanh Nam/Respondent has any right in it.
Regarding paragraph 4(c)(iii) of the Policy, the Panel finds that there is no evidence that Nguyen Thanh Nam or the Respondent is making any legitimate noncommercial or fair use of the Disputed Domain Name.
Accordingly, the Panel finds that Nguyen Thanh Nam/Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, and the second element under paragraph 4(a)(ii) of the Policy is established.
Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, including:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The above four circumstances are not exhaustive and bad faith may be found by the Panel alternatively.
In this regard, the Complainant contends that the Respondent registered the Disputed Domain Name for the purpose of holding and reselling it to the Complainant. Considering all contentions and submissions by the parties, including those by the Complainant and Nguyen Thanh Nam in the Complaint, the Response, Supplemental Filings, and their replies to the Procedural Order No. 1, the Panel is of the view that there do exist some communications between the parties regarding a possible sale of the Disputed Domain Name to the Complainant in exchange for the payment of USD 30,000. However, the Panel finds no evidence as to ascertain from which side (the Complainant or Nguyen Thanh Nam/Respondent) and under whose intention such communications were initiated. Hence, the Panel is of the view that the available information and evidence do not suffice to conclude that Nguyen Thanh Nam/Respondent registered the Disputed Domain Name primarily for the purpose of holding and selling the Disputed Domain Name to the Complainant.
Nonetheless, the Panel finds that the Complainant’s ZALO trademarks have been registered in a variety of jurisdictions around the world, and have been put in use for a long period of time and gained certain reputation for an over-the-top application. The Complainant’s ZALO trademark registration and use predate the registration of the Disputed Domain Name.
The Disputed Domain Name comprises the ZALO trademarks, with the addition of the indistinctive term “pay” at the end, while such trademarks have been used extensively by the Complainant in Viet Nam, where the Respondent resides. Further, the Disputed Domain Name comprises wholly the ZALOPAY trademark of the Complainant’s subsidiary. In this regard, taking into account the facts that (i) Nguyen Thanh Nam is a former employee of the Complainant from July 30, 2012 to February 19, 2014, (ii) the contents of the website under the Disputed Domain Name were almost identical with those of the Complainant’s official websites, including the display of the ZALOPAY logo and descriptions about ZALOPAY products/services, the Panel considers that Nguyen Thanh Nam/Respondent already knew about the trademarks ZALO and anticipated mark ZALOPAY of the Complainant by the time it registered the Disputed Domain Name. The Panel considers such registration is an attempt by Nguyen Thanh Nam/Respondent as to take advantage of the Complainant’s goodwill. See WIPO Overview 3.0 section 3.8.2 as to ZALOPAY.
In this regard, Nguyen Thanh Nam argues that in the period of time from July 30, 2012, to February 19, 2014, the Complainant did not have the idea of ZALOPAY products. However, as evidenced by Annex 9 of the Complainant’s Supplemental Filing, the Complainant already had the plan for the ZALOPAY products/services from at least December 2, 2013. Additionally, the Complainant submitted that it had launched for trial the payment intermediary services since 2013, and Nguyen Thanh Nam did not rebut this contention. Hence, the Panel rebut the mentioned assertion of Nguyen Thanh Nam and upholds that as a former employee of the Complainant, Nguyen Thanh Nam already knew about the ZALOPAY products/services by the time it registered the Disputed Domain Name.
It is well proven and evidenced by the Complainant that the Disputed Domain Name used to resolve to a website that has contents almost identical with those of the Complainant’s official websites including ZALOPAY logos, the Complainant’s name, and name of the Complainant’s affiliate. The Panel takes the view that any Internet users seeking to use the Complainant’s services under the ZALOPAY trademarks would very likely mistakenly believe that Nguyen Thanh Nam/Respondent is either connected to or associated with the Complainant, while no such connection exists in fact. Such misleading behavior is further indicative of bad faith within the meaning of paragraph 4(b)(iv) of the Policy, on the part of Nguyen Thanh Nam/ Respondent.
Even in consideration of the current PPC website under the Disputed Domain Name, which offers money loan services from various third parties, the Panel keeps the view that Nguyen Thanh Nam/ Respondent is using the Disputed Domain Name in bad faith as by using the Disputed Domain Name, the Respondent intends to ride on the reputation of the ZALO, ZALOPAY trademarks, namely, baiting consumers and then switching them to the services of third parties.
As of the date of this Decision, the Panel accessed the Disputed Domain Name and found that it was resolving to a PPC website offering money loan services from many third parties. However, it does not change the Panel’s finding of bad faith of the Respondent.
With all these facts and findings, the Panel finds that by using the Disputed Domain Name in this manner, Nguyen Thanh Nam/Respondent has intentionally attempted to attract Internet users to its websites by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement of its website, for commercial gain.
Finally, Nguyen Thanh Nam argues that since it takes almost seven years for the Complainant to file the Complaint, the Complainant seems to assume that the Respondent is the original registrant. The Panel disagrees to this contention, particularly the assumption that the Complainant considers the Respondent as the original registrant since it is a mere statement without any evidence – and even if it is true, the Panel has found clear evidence of bad faith. Given all the facts and circumstances pertaining to the use of the Disputed Domain Name for the website thereunder, the Panel is of the view that, the delay of seven years in challenging the Respondent’s registration of the Disputed Domain Name does not significantly affect the findings of the Panel in this case nor does it cure the bad faith.
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 and the third element under paragraph 4(a)(iii) of the Policy is established.
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 <zalopay.com> be transferred to the Complainant.
Pham Nghiem Xuan Bac
Sole Panelist
Date: August 16, 2021
1 The Panel notes that the Complaint was initially filed against “Nguyen Thanh Nam”, a former employee of the Respondent, whose information was connected to the Disputed Domain Name. The Complaint was amended to reflect the name disclosed by the Registrar as belonging to the registrant of the Disputed Domain Name (i.e., the Respondent, “Dung Vo”), but also maintained the information relating to Nguyen Thanh Nam. The issue of Respondent identity will be addressed in the decision.