Ripple Labs, Inc. v. Ong Nguyen Manh Chinh
Claim Number: FA1706001737604
Complainant is Ripple Labs, Inc. (“Complainant”), represented by Rachel Jacques of Maschoff Brennan, Utah, U.S.A. Respondent is Ong Nguyen Manh Chinh (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ripple-vietnam.com>, registered with MAT BAO 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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 27, 2017; the Forum received payment on June 27, 2017.
On June 28, 2017, MAT BAO CORPORATION confirmed by e-mail to the Forum that the <ripple-vietnam.com> domain name is registered with MAT BAO CORPORATION and that Respondent is the current registrant of the name. MAT BAO CORPORATION has verified that Respondent is bound by the MAT BAO 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 June 30, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 20, 2017 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@ripple-vietnam.com. Also on June 30, 2017, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On July 25, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, 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. 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.
A. Complainant
i) Complainant is a leading software developer, and registered the RIPPLE mark with the United States Patent and Trademark Office (“USPTO”) in furtherance of its business (Reg. No. 4,453,543, registered Dec. 24, 2013). Respondent’s <ripple-vietnam.com> domain name is confusingly similar to Complainant’s RIPPLE mark because the domain name incorporates the mark in its entirety and merely adds the geographic term “vietnam” and a generic top-level domain name (“gTLD”), “.com.”
ii) Respondent has no rights or legitimate interests in the disputed domain name. Respondent is neither commonly known by the disputed domain name nor has Complainant authorized Respondent to use its RIPPLE mark. Respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Respondent is using the disputed domain name to promote and advertise its own services to customers. Respondent’s intent to divert Internet users can be deduced from the fact that Respondent copied entire portions of Complainant’s official website.
iii) Respondent registered, and is using, the disputed domain name in bad faith. Despite receiving a cease and desist letter from Complainant, Respondent continues to use the disputed domain name. Respondent’s entire business depends upon trading on the goodwill of Complainant’s RIPPLE mark and confusing Internet users into believing that some sort of affiliation exists between Complainant and Respondent from which Respondent subsequently benefits commercially. Furthermore, at the time Respondent registered the domain name, Respondent was certainly aware of Complainant’s rights in the RIPPLE mark. This fact is evidenced by Respondent’s appropriation of portions of Complainant’s website.
B. Respondent
Respondent has not submitted a response for this proceeding. The Panel notes that <ripple-vietnam.com> was registered on November 10, 2016.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name 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."
Preliminary Issue -Language of the proceeding:
The Panel notes that Complainant 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. The grounds of Complainant’s request are: i) the Respondent intentionally registered a Domain Name that is comprised solely of English words; ii) Respondent created a functional website which uses the appropriated RIPPLE marks in English; iii) Respondent has intentionally placed
videos on the website corresponding to the Domain Name which are solely in English; iv) Respondent has taken care to copy certain text, pictures and videos directly from Complainant’s official www.ripple.com website, which indicates a clear understanding of the English language by Respondent; and v) because Respondent has picked certain aspects from Complainant’s official website www.ripple.com to copy and use, Respondent has demonstrated a clear understanding of the English language in appropriating certain aspects of Complainant’s website, but not others.
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 demonstrate familiarity with the English language, filing of a trademark registration with an entity which shows an understanding of the English language, and any evidence (or lack thereof) exhibiting 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.”).
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the 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.
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 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 (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.”).
The first prong of Policy ¶ 4(a)(i) requires that a complainant demonstrate its rights in a trademark. Complainant claims to have registered the RIPPLE mark—used in software development—with the USPTO as early as 2013 (e.g., Reg. No. 4,453,543, registered Dec. 24, 2013), which it contends demonstrates its longstanding rights in the marks. Registration of a mark with the USPTO or other entities sufficiently establishes the required rights in the mark for purposes of the Policy. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office). Accordingly, the Panel concludes that Complainant has established its rights in the RIPPLE mark under Policy ¶ 4(a)(i).
The second component of Policy ¶ 4(a)(i) requires that complainants demonstrate that the disputed domain name is identical or confusingly similar to the mark or marks at issue. Here, Complainant argues that the disputed domain name is confusingly similar to its RIPPLE mark because it is composed entirely of the mark but with the addition of a hyphen and a geographic location, “vietnam”. Neither of these, Complainant argues, sufficiently distinguishes the disputed domain name from its RIPPLE mark. The addition of a geographic term does not sufficiently distinguish a disputed domain name from a mark. See Avaya Inc. v. Evelyn Dayda / Avaya Unlimited Sources LLC, FA 1611255 (Forum May 4, 2015) (finding that as “the ‘usa’ portion of the disputed domain name is a generic geographic term, the internet user will assume that the domain name deals with the activities of Complainant in the USA and that it will lead to a website dealing with that subject. The domain name is therefore confusingly similar to the AVAYA mark and the Panel so finds.”). Further, the addition of the “.com” gTLD is insufficient to preclude a finding of confusing similarity. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Therefore, this Panel finds that the additions made to Complainant’s RIPPLE mark in <ripple-vietnam.com> do not serve to differentiate the two for the purposes of 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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006)
(“Complainant must first 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, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain
names.”).
Complainant argues that Respondent has no rights or legitimate interests in the <ripple-vietnam.com> domain name as required by Policy ¶ 4(a)(ii). In addition to asserting that it has neither authorized nor licensed Respondent’s use of the RIPPLE mark, Complainant contends that Respondent is not commonly known by the disputed domain name within the meaning of Policy ¶ 4(c)(ii). When a respondent fails to submit a response, panels may look to the WHOIS records to establish the lack of affiliation between a registrant and a domain name. See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). Here, the Panel observes that the WHOIS information concerning <ripple-vietnam.com> identifies “Ong Nguyen Manh Chinh” as the registrant, which Complainant argues provides no evidence that Respondent is commonly known by the domain name. As such, the Panel concludes that Respondent is not commonly known by, and thus lacks rights and legitimate interest in, the <ripple-vietnam.com> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant also argues that Respondent is not using the disputed domain name to make a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent, by copying and using whole portions of Complainant’s website, is attempting to divert Internet users to its website for the purposes of promoting Respondent’s competing services. Using a disputed domain name to trade off on Complainant’s good will for the purpose of advertising competing services is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Respondent’s resolving website appears to imitate Complainant’s website in many ways, and therein offers competing services. Accordingly, the Panel finds that Respondent uses the disputed domain name to offer competing services, which is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Complainant insists that Respondent is attempting to attract Internet users for commercial gain and therefore that Respondent registered, and is using, the disputed domain name in bad faith. Using a disputed domain name to offer competing services can support a finding of bad faith. See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). Respondent’s resolving website appears to exactly imitate Complainant’s website in many ways and offers competing services. Therefore, the Panel finds that Respondent is using the disputed domain name to attract Internet users for commercial gain and therefore that Respondent registered, and is using, the disputed domain name in bad faith.
In analyzing bad faith, the Panel may also look beyond the enumerated parameters of Policy ¶ 4(b) to the totality of the circumstances surrounding a particular dispute. See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”). Complainant argues that Respondent had actual knowledge of Complainant’s rights and therefore that Respondent registered and is using the disputed domain name in bad faith. Complainant arrives at this conclusion based on the fact that Respondent copied whole portions of Complainant’s website for the purpose of offering competing services. A respondent’s awareness of Complainant’s activities associated with its mark, can be inferred from its attempt to plagiarize Complainant. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Respondent’s resolving website appears to imitate Complainant’s website in many ways, which Complainant claims evinces actual knowledge. Therefore, the Panel finds that Respondent registered, and is using, the disputed domain name in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ripple-vietnam.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: August 2, 2017
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page