The Nemours Foundation v. Pham Dinh Nhut
Claim Number: FA1509001640051
Complainant is The Nemours Foundation (“Complainant”), represented by Lucy Jewett Wheatley of McGuireWoods LLP, Virginia, USA. Respondent is Pham Dinh Nhut (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <mynemours.com> and <mynemours.org>, registered with April Sea Information Technology Company Limited.
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 Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 29, 2015; the Forum received payment on September 29, 2015.
On October 4, 2015, April Sea Information Technology Company Limited confirmed by e-mail to the Forum that the <mynemours.com> and <mynemours.org> domain names are registered with April Sea Information Technology Company Limited and that Respondent is the current registrant of the names. April Sea Information Technology Company Limited has verified that Respondent is bound by the April Sea Information Technology Company Limited 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 October 6, 2015, the Forum served the Complaint and all Annexes, including a Vietnamese language Written Notice of the Complaint, setting a deadline of October 26, 2015 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@mynemours.com and postmaster@mynemours.org. Also on October 6, 2015, the Vietnamese 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 October 30, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 names be transferred from Respondent to Complainant.
Supported Language Request
Complainant makes requests that the language of this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the Vietnamese language Registration Agreement. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Factors which previous panels have seen as particularly compelling are: WHOIS information which establishes Respondent in a country which would evince a familiarity with the English language, filing of a trademark registration with an entity which evinces an understanding of the English language, and any evidence (or lack thereof) evincing Respondent’s understanding of the Vietnamese language included in the Registration Agreement. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). Further, the Panel may weigh the relative time and expense in enforcing the Vietnamese language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”). Therefore, pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by the Complainant to suggest the likely possibility that Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
A. Complainant
Complainant has rights in the NEMOURS mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,777,710, registered October 28, 2003). Respondent’s <mynemours.com> and <mynemours.org> domains are confusingly similar to Complainant’s NEMOURS mark because the domains merely add the generic term “my” and a generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the disputed domain names. Respondent has not been commonly known by the disputed domain names nor been authorized or licensed to use Complainant’s NEMOURS mark. Further, Respondent’s use of the disputed domain names, to host click through links, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent has registered and is using the disputed domain names in bad faith. Respondent has demonstrated a pattern of bad faith registrations that support a finding of bad faith in this case. Respondent disrupts Complainant’s business through hosting links to competing health service companies. Further, Respondent uses the goodwill associated with Complainant’s mark to attract users to a commercial website that hosts click through links. Respondent also had knowledge of Complainant’s rights in the NEMOURS marks at the time of registration because the word NEMOURS lacks meaning absent its association with Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, The Nemours Foundation, is a non-profit organization dedicated to children’s health. Complainant has rights in the NEMOURS mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,777,710, registered October 28, 2003). Respondent’s <mynemours.com> and <mynemours.org> domains are confusingly similar to Complainant’s NEMOURS mark because the domains merely add the generic term “my” and a generic top-level domain (“gTLD”).
Respondent, Pham Dinh Nhut, registered the <mynemours.com> domain name on March 14, 2011 and the <mynemours.org> domain name, on June 26, 2011.
Respondent’s use of the disputed domain names, to host click through links, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent has registered and is using the disputed domain names 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:
(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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant has rights in the NEMOURS marks under Policy ¶ 4(a)(i) through registration with the USPTO. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Respondent’s disputed <mynemours.com> and <mynemours.org> domains are confusingly similar to the NEMOURS mark under Policy ¶ 4(a)(i). The domains both add the generic term “my” and a gTLD to the NEMOURS mark.
Complainant claims that Respondent has no rights or legitimate interests in the disputed domain names under Policy ¶ 4(c)(ii). Respondent has not been commonly known by the <mynemours.com> and <mynemours.org> domain names. Complainant has not authorized Respondent to use the NEMOURS mark. The WHOIS information identifies “Pham Dinh Nhut” as the registrant. See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Respondent’s use of the disputed domain names, to host generic click through links, is not 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). See 4 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For Sale, FA 187429 (Nat. Arb. Forum Sep. 26, 2003) (holding that Respondent’s use of the <24hrsfitness.com>, <24-hourfitness.com> and <24hoursfitness.com> domain names to redirect Internet users to a website featuring advertisements and links to Complainant’s competitors could not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Respondent has registered and is using the <mynemours.com> and <mynemours.org> domain names in bad faith. Complainant first claims that Respondent has demonstrated a pattern of bad faith registrations that support a finding of bad faith in this case. Previous UDRP decisions have held that the Respondent has demonstrated a pattern of bad faith registration. See Chex Systems, Inc. v. Pham Dinh Nhut, FA 1548788 (Nat. Arb. Forum Apr. 26, 2014); Miller-Motte Business College, Inc. v. Pham Dinh Nhut, FA 1517897 (Nat. Arb. Forum Oct. 16, 2013). Prior panels have held that a history of adverse UDRP decisions is sufficient to allow for a finding of bad faith under Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants). The Panel concludes that the Respondent’s prior adverse URDP decisions allow for a finding of bad faith in this proceeding under Policy ¶ 4(b)(ii).
Respondent disrupts Complainant’s business in bad faith under Policy ¶ 4(b)(iii) through hosting links to competing health service companies. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Respondent’s bad faith is also evident through Respondent exploiting the goodwill associated with Complainant’s mark to attract users to a commercial website that hosts click through links. Respondent uses the disputed domains to display numerous commercial links related to employment and the healthcare industry. Panels have held that a respondent commercially exploiting the goodwill associated with a mark has acted in bad faith. See Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005) (“[T]he Panel finds that Respondent is capitalizing on the confusing similarity of its domain names to benefit from the valuable goodwill that Complainant has established in its marks. Consequently, it is found that Respondent registered and used the domain names in bad faith under Policy ¶ 4(b)(iv).”). The Panel finds that Respondent has acted in bad faith pursuant to Policy ¶ 4(b)(iv).
Respondent had actual knowledge of Complainant's rights in the NEMOURS mark. Therefore, Respondent registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mynemours.com> and <mynemours.org> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: November 13, 2015
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