XFM Joint Stock Company v. Le Xuan Khoa
Claim Number: FA2202001984655
Complainant is XFM Joint Stock Company (“Complainant”), Vietnam. Respondent is Le Xuan Khoa (“Respondent”), International.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <xoneradio.com>, registered with iNET CORPORATION.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honorable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 17, 2022; the Forum received payment on February 17, 2022. The Complaint was received in English.
On February 18, 2022, iNET CORPORATION confirmed by e-mail to the Forum that the <xoneradio.com> domain name is registered with iNET CORPORATION and that Respondent is the current registrant of the name. iNET CORPORATION has verified that Respondent is bound by the iNET CORPORATION registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 21, 2022, the Forum served the English language Complaint and all Annexes, including a Vietnamese and English language Written Notice of the Complaint, setting a deadline of March 14, 2022 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@xoneradio.com. Also on February 21, 2022, the Vietnamese and English language Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On March 21, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honorable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Preliminary Issue: Language of Proceeding
The Panel notes that the Registration Agreement relating to the domain name is written in Vietnamese, thereby making the language of the proceedings Vietnamese. However, pursuant to UDRP Rule 11, the Panel may decide in all the circumstances that another language is more appropriate. See FilmNet Inc. v. Onetz, FA 96196 (Forum Feb. 12, 2001) (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English).
Complainant has alleged that Respondent is conversant and proficient in English, and for that reason the proceeding should be conducted in the English language. In support of that contention, it has adduced evidence to the following effect:
(a) The Disputed Domain Name <xoneradio.com> contains an invented Latin word having no meaning in Vietnamese and the English word “Radio” which indicates the Respondent is familiar with the English language;
(b) The site to which the disputed domain name resolves contains many English words and clauses, such as: Asia Tune, News, Radio, Video, Host, Xone with stars, Trending News, Radio for life, Hooligan and “hosts” named Sebastian and Christian among others;
(c) Respondent lives in Vietnam where English is a popular language and taught from a young age.
On the basis of that evidence, the Panel finds not only that Respondent probably has a good working knowledge of the English language, but that it would be surprising if it did not have that knowledge. Accordingly, conducting the proceeding in English would cause no hardship or inconvenience to Respondent. Moreover, conducting the proceeding in Vietnamese would cause undue delay to all concerned as the documents would in any event have to be translated into English.
Pursuant to Rule 11(a), the Panel therefore finds that persuasive evidence has been adduced by Complainant to suggest the probability that the Respondent is conversant and proficient in the English language. After considering all of the circumstance, the Panel decides that the proceeding should be conducted in the English language.
A. Complainant
Complainant made the following contentions.
Complainant, XFM Joint Stock Company, provides radio services and entertainment Information. Complainant has rights in the XONE mark based on registration with the National Office of Intellectual Property of Vietnam (e.g., Reg. No. 63185, registered May 30, 2005). See Compl. Annex 0.3. Respondent’s <xoneradio.com> domain name is confusingly similar to Complainant’s XONE mark since it incorporates the entire mark and simply adds the descriptive term “radio” and the “.com” generic top level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <xoneradio.com> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not license or permitted Respondent to use the XONE mark. Additionally, Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the dispute domain name to pass off as Complainant.
Respondent registered and uses the <xoneradio.com> domain name in bad faith. Respondent uses the disputed domain name to pass off as Complainant on the resolving website. Additionally, Respondent had actual knowledge of Complainant’s rights in the XONE mark as it is a coined term and based on the inclusion of the term “radio” in the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a Vietnamese company that provides radio services and entertainment Information.
2. Complainant has established it trademark rights in the XONE mark based on registration with the National Office of Intellectual Property of Vietnam (e.g., Reg. No. 63185, registered May 30, 2005).
3. Respondent registered the disputed domain name on October 13, 2021.
4. Respondent has used the disputed domain name to pass itself off as Complainant.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the XONE mark based on registration with the National Office of Intellectual Property of Vietnam (e.g., Reg. No. 63185, registered May 30, 2005). See Compl. Annex 0.3. Registration of a mark with a governmental intellectual property office is a valid showing of rights in a mark. See Teleflex Incorporated v. Leisa Idalski, FA 1794131 (Forum July 31, 2018) (“Registration of a mark with governmental trademark agencies is sufficient to establish rights in that mark for the purposes of Policy ¶ 4(a)(i).”). Since Complainant provides evidence of registration of the XONE mark with a governmental authority, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s XONE mark. Complainant argues that Respondent’s <xoneradio.com> domain name is confusingly similar to Complainant’s XONE mark since it incorporates the entire mark and simply adds the descriptive term “radio” and the “.com” gTLD. The addition of a descriptive term and a gTLD to a mark does not negate any confusing similarity between a disputed domain name and a mark under Policy ¶ 4(a)(i). See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”); see also Miller Brewing Co. v. Domain Active Pty. Ltd., FA 243606 (Forum Apr. 23, 2004) (finding that the <millerbeers.com> domain name was confusingly similar to the complainant’s MILLER mark, because “[t]he addition of a descriptive term that describes Complainant’s business to Complainant’s registered mark, does not remove the domain from the realm of confusing similarity with regard to Policy ¶ 4(a)(i).”). In the present case it is clear that the internet user would see the domain name as being an official domain name of Complainant as it expresses exactly the function of Complainant, namely the provision of radio services under the XONE mark. Thus, the Panel finds that the disputed domain name is confusingly similar to the XONE mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
(a) Respondent has chosen to take Complainant’s XONE mark and to use it in its domain name adding only the generic word “word” to the mark;
(b) Respondent registered the disputed domain name on October 13, 2021;
(c) Respondent uses the disputed domain name to pass itself of as Complainant;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent lacks rights or legitimate interests in the <xoneradio.com> domain name because Respondent is not commonly known by the disputed domain name and Complainant has not licensed or permitted Respondent to use the XONE mark. When no response is submitted, WHOIS information and a lack of authorization to use a mark can be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See SPTC, Inc. and Sotheby’s v. Tony Yeh shiun, FA 1810835 (Forum Nov. 13, 2018) (finding no rights or legitimate interests in the <sothebys.email> domain name where the WHOIS identified Respondent as “Tony Yeh shiun,” Complainant never authorized or permitted Respondent to use the SOTHEBY’S mark, and Respondent failed to submit a response.). Here, the WHOIS information identifies “Le Xuan Khoa” as the registrant and Complainant asserts it has not permitted Respondent to use the XONE mark. See Registrar Verification Email. Thus, the Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the dispute domain name to pass itself off as Complainant. Using a dispute domain name to pass off as a complainant by mimicking a complainant’s own website does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business). Here, Complainant provides screenshots showing that the disputed domain name resolves to a website mimicking the look and feel of Complainant’s website and featuring Complainant’s logo, mark, and photos of Complainant’s employees. See Compl. Annexes 1 & 2. Thus, the Panel agrees with Complainant and finds that Respondent is not using the domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the <xoneradio.com> domain name in bad faith because Respondent uses the disputed domain name to pass itself off as Complainant on the resolving website. Using a disputed domain name to pass off as a complainant may be evidence of a bad faith attempt to attract users for commercial gain. See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). The Panel notes that Complainant provides screenshots showing the resolving website for the disputed domain name that features Complainant’s mark, logo, and related content. It also features as alleged “hosts” personalities who are in fact employed by Complainant on its own radio service. See Compl. Annexes 1 & 2. It is obvious from a comparison of Complainant’s official site with the site to which the disputed domain name resolves that the latter is an attempt to copy the former and to give the false impression that it is the radio service of Complainant. Therefore, the Panel finds bad faith registration and use by Respondent within the meaning of Policy ¶ 4(b)(iv).
Secondly, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the XONE mark as it is a coined term and based on the inclusion of the term “radio” in the disputed domain name. Per Policy ¶ 4(a)(iii), actual knowledge of a complainant’s trademark rights is sufficient to establish bad faith and can be demonstrated by the name chosen for the disputed domain name. See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Forum Dec. 1, 2003) (“Because of the fanciful nature of the ZYBAN mark, the Panel can infer that Respondent knew of Complainant's rights in the mark at registration.”); see also Availity, L.L.C. v. lin yanxiao, FA 1955211 (Forum Aug. 17, 2021) (Respondent uses the disputed domain name to advertise health insurance. Each of the links directs users to competitors of Complainant. . . .[t]he Panel infers, due to the manner of use of the disputed domain name and the way of making the disputed domain name combining Complainant’s AVAILITY mark with the term “insurance” for which Complainant’s mark is used that Respondent registered with actual knowledge of Complainant’s rights in the AVAILITY mark, thus constituting bad faith registration under Policy ¶ 4(a)(iii).”). Therefore, the Panel agrees with Complainant and finds Respondent had actual knowledge of Complainant’s rights in the XONE mark and thus registered the domain name in bad faith and consequently has used it in bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <xoneradio.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown QC
Panelist
Dated: March 23, 2022
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