VNG Corporation v. Sang Le
Claim Number: FA2202001985230
Complainant is VNG Corporation (“Complainant”), Vietnam. Respondent is Sang Le (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <zalo.biz>, registered with NameSilo, LLC.
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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 21, 2022; the Forum received payment on February 21, 2022.
On February 22, 2022, NameSilo, LLC confirmed by e-mail to the Forum that the <zalo.biz> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, LLC 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 24, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 16, 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@zalo.biz. Also on February 24, 2022, the 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.
A timely Response was received on February 28, 2022.
The Response does not specifically address the statements and allegations contained in the Complaint or the basis for Respondent to retain the domain name. Thus, the Forum does not consider the Response to be in compliance with ICANN Rule 5, specifically ICAAN Rule 5(c)(i). Nevertheless, the Panel, in its discretion, chooses to accept and consider this Response. See Victoria’s Secret Stores Brand Mgmt., Inc. v. LaFond, FA 1362225 (Forum Jan. 7, 2011) (deciding that while the response was deficient, “the Panel has nonetheless decided to consider the deficient Response.”)
On March 7, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, VNG Corporation, is an internet and technology company based in Ho Chi Minh City, Vietnam. Since August 8, 2012, it has produced and sold a mobile messaging app under the brand name ZALO. Complainant has rights in the trademark ZALO and has obtained many registrations thereof in various countries including Vietnam, the earliest of which bears a priority date of August 10, 2012. Respondent, also residing in Vietnam, registered the <zalo.biz> domain name, on January 17, 2013. The disputed domain name is identical or confusingly similar to the ZALO mark because it wholly incorporates the mark merely adding in the “.biz” generic top-level domain (“gTLD”).
Respondent does not have any rights or legitimate interests in the <zalo.biz> domain name because it is not commonly known by the domain name nor has Respondent been authorized to use Complainant’s ZALO mark. Respondent is not using the domain name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use because Respondent uses the domain to pass itself off as Complainant in furtherance of a phishing scheme tied to offering fake installments of Complainant’s mobile messaging app and extracting payments from users.
Respondent registered and uses the <zalo.biz> domain name in bad faith because it uses the domain name to pass itself off as Complainant in furtherance of phishing for financial payments from users. Respondent had actual knowledge of Complainant’s fanciful ZALO mark and acted in bad faith when it registered the disputed domain name.
B. Respondent
While Respondent has not addressed the allegations of the Complaint with specificity, it has submitted emails to the Forum stating, in relevant part, as follows:
- “Hello, I have reviewed the contents of the complaint from VNG. After checking the information, I found the error from us. We are very sorry and apologize to VNG for the issue of unauthorized use of their logo without permission. The issues we have addressed are as follows: 1. Remove the ZALO logo from our website. 2. Suspend the operation of the website. --- About domain history issues. I have no expertise on this matter. I found the domain beautiful and intended to use it as a personal blog, so I bought the domain. The domain name was purchased on: 22/02/2020 at Godaddy Buynow (Expiry Domain Name Purchase). Above are the problems I have solved and regret for using the ZALO Logo.”
- “I confirm that I have deleted the Logo and suspended the website zalo.biz. And promise not to violate. This is the final response.”
- Complainant has proven that it has rights in the trademark ZALO and that such mark is distinctive and has gained a significant reputation, particularly within the country of Vietnam;
- Respondent has not demonstrated any bona fide or fair and noncommercial use or preparation to use the disputed domain name;
- Respondent had actual knowledge of Complainant’s mark by virtue of it residing in Vietnam and using the ZALO logo on its <zalo.biz> website; and
- The display of Complainant’s logo in connection with offering of unauthorized app downloads which extract funds from users demonstrates bad faith registration and use of the disputed domain name.
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.
Complainant asserts rights in the ZALO mark through its registration with trademark authorities in Vietnam. Registration of a mark with a national authority is sufficient to establish rights in a mark under Policy ¶ 4(a)(i). 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).”) Complainant provides a copy of its Vietnam trademark registration certificate for the ZALO mark (Reg. No. 217563). Therefore, the Panel finds that Complainant has rights in the ZALO mark under Policy ¶ 4(a)(i).
Complainant argues that the <zalo.biz> domain name is identical or confusingly similar to Complainant’s ZALO mark because it wholly incorporates Complainant’s mark merely adding in the “.biz” gTLD. A domain name may be identical or confusingly similar to a Complainant’s mark, under Policy ¶ 4(a)(i), despite the addition of a gTLD. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”) As the entirety of the second level of the <zalo.biz> domain name consists of the term “zalo”, the Panel finds that it is identical to Complainant’s ZALO mark under Policy ¶ 4(a)(i).
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). Should it succeed in this effort, the burden then shifts to Respondent to show that 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”).
Complainant argues that Respondent does not have any rights or legitimate interests in the <zalo.biz> domain name because Respondent is not commonly known by the domain name nor has Respondent been authorized to use Complainant’s ZALO mark. Identifying WHOIS information may be considered when determining if a respondent is commonly known by a domain name, under Policy ¶ 4(c)(ii), particularly where a respondent does not provide evidence to the contrary. Further, a complainant’s unrebutted assertion that a respondent lacks authorization to use a complainant’s mark may also be persuasive. See Deutsche Lufthansa AG v. Mohamed elkassaby, FA 1801815 (Forum Sept. 17, 2018) (“The WHOIS lists “Mohamed elkassaby” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).”) The WHOIS information for the <zalo.biz> domain name, as verified by the concerned Registrar, lists the Registrant as “Sang Le”. Complainant asserts that it has not licensed or otherwise permitted Respondent to use Complainant’s ZALO mark and Respondent does not refute this. Therefore, the Panel finds no evidence upon which to conclude that that Respondent is commonly known by the <zalo.biz> domain name under Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent is not using the <zalo.biz> domain name in connection with a bona fide offering of goods or services and that it is not making a legitimate noncommercial or fair use thereof because Respondent uses the domain name to pass itself off as Complainant in furtherance of a scheme to collect money from unsuspecting users who seek to download the ZALO messaging app. Use of a domain name in furtherance of a phishing scheme is not a bona fide offering of goods or services nor is it a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”) The submitted screenshots of Respondent’s website shows that it displays the ZALO logo and claims to offer downloads of Complainant’s messaging app. Complainant asserts that Respondent has engaged in a phishing scheme because its website falsely implies an association with Complainant and has been reported, via third-party outlets (copies supplied by Complainant), as having fraudulently withdrawn money from the accounts of users who have used it to download the app. Although Respondent’s emails to the Forum state that “I have reviewed the contents of the complaint”, it does not address or contest Complainant’ assertions or evidence beyond stating that “I found the domain beautiful and intended to use it as a personal blog”. However, no evidence is provided of Respondent’s preparation to use the domain name for this purpose and, in light of the notoriety of the ZALO mark in Vietnam, Respondent’s country of residence, the Panel finds Respondent’s statement to be questionable. Therefore, the Panel finds that Complainant has made out a prima facie case, which has not been adequately rebutted, that Respondent is not using or preparing to use the <zalo.biz> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use thereof under Policy ¶¶ 4(c)(i) and (iii).
Complainant argues that Respondent registered the <zalo.biz> domain name in bad faith because Respondent had actual knowledge of the ZALO mark. Actual knowledge of a Complainant’s rights in a mark can provide a foundation upon which to build a case for bad faith under Policy ¶ 4(a)(iii) and may be shown through the entirety of circumstances surrounding registration and use of the disputed domain name. See IntraFi Network LLC v. John Stevens, FA 1964234 (Forum Oct. 18, 2021) (finding bad faith where “Respondent’s actual knowledge is evident from the notoriety of the ASSETPOINT trademark, from Respondent’s incorporation of Complainant’s trademark in the domain along with the suggestive term ‘advisors’ and from Respondent’s use of the domain name to impersonate Complainant and inappropriately capitalize on the ASSETPOINT trademark” (i.e., a website whose content is designed to suggest that Complainant is the website’s sponsor)). Complainant asserts that “the ZALO app has been launched since 08 Aug 2012 and quickly become [sic] extremely popular”. It further claims that “the ZALO mark is highly distinctive and was created by the Complainant…” In support, it provides copies of its own website as well as of third-party news articles which mention the ZALO app and its success in reaching over 45 million Vietnamese-speaking users located in Vietnam, South Korea, the United States, Russia, and beyond for ten years. It further submits screenshots of the <zalo.biz> website dated February 17, 2022 and April 19, 2013 (the latter from Archive.org) showing use of a copy of Complainant’s graphic ZALO logo in connection with a solicitation to download the messaging app. The Panel notes Respondent’s claim to have acquired the disputed domain name through a registrar auction on February 22, 2022 but it provides no supporting evidence for this. Further, Respondent notes that it “deleted the Logo and suspended the website” but this was only done after it received service of the present Complaint and was thus on notice of the present dispute. Finally, if Respondent was the original registrant of the <zalo.biz> domain name on January 17, 2013, this is still after the 2012 launch date of Complainant’s app and the August 10, 2012 filing of its trademark application in Vietnam which ultimately resulted in the December 31, 2013 registration that is asserted in these proceedings. The relevant date in which rights are conferred in a registered mark is determined by the application filing date. See Micha Advanced Health dba LEMYKA v. Shanshan Huang / This domain name is for sale, FA 1772893 (Forum Apr. 9, 2018) (“The relevant date for acquiring rights in a registered mark is the application filing date.”) Thus, upon considering all of the circumstances of this case, including the mark’s reputation, both parties residing in Vietnam, and the use made of the disputed domain name, the Panel finds it more likely than not that Respondent had actual knowledge of Complainant’s ZALO mark at the time it registered or acquired the <zalo.biz> domain name.
Next, Complainant argues that Respondent acted in bad faith because it uses the <zalo.biz> domain name to pass itself off as Complainant in furtherance of a phishing scheme. Use of a domain name to pass oneself off as a complainant in furtherance of a phishing scheme may be evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Wells Fargo & Co. v. Mihael, FA 605221 (Forum Jan. 16, 2006) (“Complainant asserts,…that soon after the disputed domain name was registered, Respondent arranged for it to resolve to a web site closely resembling a legitimate site of Complainant, called a ‘doppelganger’ (for double or duplicate) page, the purpose of which is to deceive Complainant’s customers into providing to Respondent their login identification, social security numbers, and/or account information and Personal Identification Numbers…. The Panel finds that Respondent’s behavior, as alleged, constitutes bad faith registration and use of the subject domain name pursuant to Policy ¶ 4(a)(iii).”) According to Complainant, the disputed domain name and its resolving website uses the ZALO mark to confuse users as to an association with Complainant and it has been reported, in articles submitted into evidence, that downloads from the <zalo.biz> website have sought to steal money from users. Respondent does not seek to rebut or contest these assertions or evidence but only apologizes for its actions and notes that it has removed the ZALO logo and disabled its website. Upon a preponderance of the evidence presented, the Panel finds that Respondent did register and use the <zalo.biz> domain name in bad faith under Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <zalo.biz> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: March 9, 2022
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