VNG Corporation v. Nguyen Khac Anh
Claim Number: FA2205001996783
Complainant is VNG Corporation (“Complainant”), Vietnam. Respondent is Nguyen Khac Anh (“Respondent”), International.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <zalopc.com>, which is registered with iNET CORPORATION.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 18, 2022; the Forum received payment on May 18, 2022. The Complaint was submitted in English.
On May 19, 2022, iNET CORPORATION confirmed by e-mail to the Forum that the <zalopc.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 May 20, 2022, the Forum served the Complaint and all Annexes, including a Vietnamese and English language Written Notice of the Complaint, setting a deadline of June 9, 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@zalopc.com. Also on May 20, 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 June 15, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Preliminary Issue: Language of Proceeding
In the ordinary course, UDRP Rule 11(a) provides that the language of this proceeding should be the language of the registration agreement governing the challenged domain name. That language is Vietnamese. However, Complainant has requested that the language of the proceeding should instead be English. In support of this request, Complainant submits, among other things, that:
(i) Respondent evidently resides in Vietnam, where the English language is very popular;
(ii) the disputed domain name wholly contains English characters;
(iii) the domain name contains the two-letter combination “pc,” a common abbreviation for the English term “personal computer;”
(iv) the content of the website resolving from the domain name includes the English terms “Blog,” “Office,” “Windows,” “MacOS,” “Linux,” “Android,” “Windows Phone,” “Web,” “GB” (abbreviation for “Gigabyte”), “Meeting,” “Micro,” “Web,” “Video Call,” “QR Code,” “Update,” “Emoji,” “Livestream,” “About.me” and “Casino;” and
(v) these facts demonstrate Respondent’s proficiency in English;
Respondent does not contest any of these assertions. For that reason, and because the record before us reflects that Respondent has received a Vietnamese language Written Notice of the Complaint, as well as that translating into Vietnamese the documents required to prosecute this proceeding would put Complainant to a substantial financial burden and unnecessarily delay this proceeding, we look to UDRP Rule 11(a), which permits this Panel to proceed in a language other than that of the governing registration agreement “having regard to the circumstances of the administrative proceeding.” We therefore conclude that it would be in the interests of justice, efficiency and economy for us to grant Complainant’s request. See, for example, International Business Machines Corporation v. Le Van Hai, D2019-3000 (WIPO March 4, 2020):
[T]he English language is quite popular in Viet Nam, where the Respondent is located, and the website under the Disputed Domain Name contains English contents; these suggest that the Respondent has ample knowledge of the English language and [will] be able to communicate quite well in English.
See also The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (a panel there exercising discretion in deciding that the language of a proceeding should be English, notwithstanding the different language of the pertinent registration agreement, based on evidence that a respondent had command of the English language).
Accordingly, this proceeding will be conducted in the English language.
A. Complainant
Complainant, the leading Internet and technology company in Vietnam, offers the most popular instant messaging app in that country and much of Southeast Asia, with over 100 million registered accounts.
One of Complainant’s products is “Zalo PC,” which is designed for use on personal computers and can be downloaded from Complainant’s official website at <zalo.me.>
Complainant holds a registration for the ZALO trademark, which is on file with the Intellectual Property Office of Vietnam (“IPOV”) as Registry No. 217,563, registered December 31, 2013.
Respondent registered the domain name <zalopc.com> on August 1, 2021.
The domain name is confusingly similar to Complainant’s ZALO mark.
Respondent has not been commonly known by the domain name.
Complainant has not licensed or otherwise authorized Respondent to use its ZALO mark.
Respondent does not use the disputed domain name for either a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Instead, the domain name resolves to a web page displaying Complainant’s logo in an attempt to pass Respondent off as being affiliated with Complainant in pursuit of an effort to deceive and divert Complainant’s customers for Respondent’s commercial gain, part of which effort includes both promoting illegal online gambling and purporting to supply tools and guidance to facilitate cracking commercial software.
Respondent has no legitimate rights to or interests in the domain name.
Respondent registered the domain name with knowledge of Complainant’s rights in the ZALO mark.
Respondent both registered and now uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name has been registered and is being used by Respondent in bad faith.
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
Complainant has rights in the ZALO trademark sufficient for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, in this instance the IPOV. See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):
[T]he Panel finds that USPTO [United States Patent and Trademark Office] registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights….
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <zalopc.com> domain name is confusingly similar to Complainant’s ZALO trademark. The domain name incorporates the mark in its entirety, with only the addition of the generic Top Level Domain (“gTLD”) “.com,” plus the two-letter combination “pc,” which, together with the mark immediately preceding it, mimics the name of one of Complainant’s products. These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy.
See, for example, Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding that adding to the mark of another a gTLD and the generic term “finance,” which described a UDRP complainant’s financial services business conducted under that mark, did not distinguish the resulting domain name from the mark under Policy ¶ 4(a)(i)).
See also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum September 27, 2002):
[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.
This is because every domain name requires a gTLD or other TLD.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent has neither rights to nor legitimate interests in the <zalopc.com> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP¶4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <zalopc.com> domain name, and that Complainant has not licensed or otherwise authorized Respondent to use the ZALO mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Nguyen Khac Anh,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner).
We next observe that Complainant asserts, without objection from Respondent, that Respondent’s domain name resolves to a web page which displays Complainant’s logo in an attempt to pass Respondent off as being affiliated with Complainant in pursuit of an effort to deceive and divert Complainant’s customers to Respondent’s own website for its commercial gain, part of which effort includes both promoting illegal online gambling and purporting to supply tools and guidance to facilitate “cracking” commercial software. It should go without saying that this employment is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, Google Inc. v. Domain Admin, FA 1605239 (Forum March 22, 2015) (finding that use of a disputed domain name in aid of illegal activities under cover of a UDRP complainant’s trademark demonstrates a respondent’s bad faith registration and use of the domain name.)
See also Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding that a respondent did not use a contested domain name to make a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use as provided in Policy ¶ 4(c)(iii) where the website resolving from the domain name featured a UDRP complainant’s mark and various photographs related to that complainant’s business). Further see Finex Inc. v. Yuri Hefetz / Genie-Solution, FA 1789385 (Forum July 9, 2018) (finding that a respondent’s mimicking a UDRP complainant’s website in order to cause existing or potential customers to believe they were setting up a new account with that complainant was evidence of that respondent’s lack of rights to or legitimate interests in a disputed domain name).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent uses the <zalopc.com> domain name to resolve to a web page displaying Complainant’s logo in an attempt to deceive and confuse Internet users by passing Respondent off as being associated with Complainant in an effort to deceive and thus divert Complainant’s customers to Respondent’s own website for its commercial gain, part of which effort includes both promoting illegal online gambling and purporting to supply tools and guidance to facilitate “cracking” commercial software. Under Policy ¶ 4(b)(iv), this stands as proof of Respondent’s bad faith in registering and using the domain name. See, for example, Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum December 27, 2017) (finding bad faith registration and use of a domain name under Policy ¶ 4(b)(iv) where:
Respondent registered and uses the … 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.
See also Google Inc. v. Domain Admin, FA 1502001605239 (Forum March 22, 2015) (finding that a respondent’s use of a disputed domain name to aid in furthering illegal activities under cover of a UDRP Complainant’s trademark suggested that respondent’s bad faith in registering the domain name).
We are also convinced by the evidence that Respondent knew of Complainant and its rights in the ZALO mark when it registered the <zalopc.com> domain name. This further illustrates Respondent’s bad faith in registering it. See, for example, Yahoo! Inc. v. Butler, FA 744444 (Forum August 17, 2006) (finding bad faith registration of a domain name that was confusingly similar to the mark of a UDRP complainant where a respondent was "well-aware of the complainant's … mark” at the time of domain name registration).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the domain name <zalopc.com> be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: June 21, 2022
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