EMVCo, LLC c/o Visa Holdings v. Tran Tri Manh
Claim Number: FA2103001936445
Complainant is EMVCo, LLC c/o Visa Holdings (“Complainant”), represented by Patchen M. Haggerty of Perkins Coie LLP, Washington, USA. Respondent is Tran Tri Manh (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue, <emvqrpay.com>, <emv-qrpay.com>, <emvqrpay.net>, <emv-qrpay.net>, <emvqrcode.com> and <emvqrcode.net>, are registered with P.A. Viet Nam 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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 12, 2021; the Forum received payment on March 12, 2021.
On March 16, 2021, P.A. Viet Nam Company Limited confirmed by e-mail to the Forum that the <emvqrpay.com>, <emv-qrpay.com>, <emvqrpay.net>, <emv-qrpay.net>, <emvqrcode.com> and <emvqrcode.net> domain names are registered with P.A. Viet Nam Company Limited and that Respondent is the current registrant of the names. P.A. Viet Nam Company Limited has verified that Respondent is bound by the P.A. Viet Nam 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 March 22, 2021, the Forum served the Complaint and all Annexes, including a Vietnamese Written Notice of the Complaint, setting a deadline of April 12, 2021 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@emvqrpay.com, postmaster@emv-qrpay.com, postmaster@emvqrpay.net, postmaster@emv-qrpay.net, postmaster@emvqrcode.com, postmaster@emvqrcode.net. Also on March 22, 2021, the Vietnamese 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.
No formal Response was received but on April 8, 2021 Respondent wrote to the Forum agreeing to transfer the disputed domain names to Complainant. Complainant did not react to that offer.
On April 15, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: CONSENT-TO-TRANSFER
As stated, there was no formal Response but Respondent wrote to the Forum, as follows:
“Regarding the claim of the domains related to EMV, I would like to confirm as below:
By my own goodwill, without the establishment of an Administrative Panel, I am willing to:
(i) terminate using all of the domains immediately; and
(ii) agree to transfer the domains to EMVCo, LLC.
I kindly give this solution to you and EMVCo, LLC.
I am looking forward to receiving the response to make the transfer shortly.”
The Forum has no power of its own to order the transfer of a domain name registration. In consequence of these proceedings the Registrar has, as required, placed a hold on Respondent’s account and the role of the Forum is to implement the Panel’s decision. The Panel has an option in these circumstances to either order immediate transfer of the domain names or apply the Policy and make a finding based on the evidence before it.
It has been observed that transfer by consent provides a loophole of a kind for those who target the trademarks of others by avoiding a public decision against them. As noted, Complainant has not consented to the transfer of the disputed domain names without a decision on the merits.
On the basis of the facts in this case, set out below, the Panel decides that transfer of the disputed domain names deserves to be the result of findings in accordance with the Policy[i].
The Panel notes the Vietnamese language Registration Agreements. Under Rule 11(a) the language of these proceedings is therefore Vietnamese. Nevertheless, Complainant requests that the proceedings continue in the English language and under the Rules the Panel has discretion to allow that request.
In considering similar requests, UDRP panels have in the past taken account of factors which indicate a respondent’s proficiency with the English language[ii]. Here, the Panel need not evaluate Complainant’s submissions in that regard since it is evident from Respondent’s communication with the Forum that it is proficient in English and that message is sufficient evidence to warrant that the proceedings should continue in English.
Pursuant to Rule 11(a), the Panel determines that the remainder of the proceedings should be conducted in English[iii].
A. Complainant
Complainant asserts trademark rights in EMV and alleges that the disputed domain names are confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent registered and used the disputed domain names in bad faith.
B. Respondent
Respondent failed to submit a formal Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant provides secure payment services by reference to the trademark, EMV, registered with the United States Patent and Trademark Office (“USPTO”) as Reg. No. 3,233,769, registered April 24, 2007;
2. the domain names were registered on March 24, 2017;
3. there is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark; and
4. the disputed domain names all resolve to a website which, albeit largely in Vietnamese, appears to promote the services of a secure payment provider in competition with 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 based on 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[iv].
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights[v]. Complainant provides evidence of its USPTO registration for the trademark EMV and so the Panel finds that Complainant has rights in that trademark.
The domain names take the trademark and appends descriptive words or generic abbreviations and a gTLD. None of those additions carry any distinctive value. The trademark remains the first and distinctive part of the disputed domain names which the Panel finds to be confusingly similar to the trademark for the purposes of paragraph 4(a)(i) of the Policy[vi].
Accordingly, Complainant has satisfied the first element of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved, based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests[vii].
The publicly available WhoIs information identifies of the domain name registrant as “Tan Tri Manh”. That name does not provide any prima facie evidence that Respondent might be commonly known by any of the disputed domain names. The disputed domain names all resolve to the one website and Complainant provides screenshots of the resolving pages which promote the services of “vnpay”, a Vietnamese business providing secure payment services. Clearly, the disputed domain names are not being used in connection with a bona fide offering of goods or services, or that a legitimate non-commercial or fair use under the Policy. The Panel finds that Complainant has made a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names[viii].
The onus shifts to Respondent to establish a legitimate interest and, absent a Response, that prima facie case is not rebutted and the Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied this second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered and used in bad faith.
Guidance is found in paragraph 4(b) of the Policy which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.
Complainant argues, reasonably, for the application of paragraph 4(b)(iv) above but since a finding of “commercial gain” under that scenario would be inferential the Panel prefers to make separate findings of both registration and use in bad faith[ix].
Absent a reasoned Response, the Panel has not been presented with any explanation for use of Complainant’s trademark. In accordance with paragraph 14(b) of the Rules, the Panel draws the reasonable inference that Respondent knew of the trademark and of Complainant’s business at the time it registered the disputed domain names. The Panel finds that Respondent did not have a legitimate use in mind when registering the domain names and so finds registration in bad faith under the Policy.
The disputed domain names were evidently used in bad faith from what has been said earlier of the competitive use without authority.
The Panel finds registration and use in bad faith and so finds that Complainant has satisfied the third and final element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <emvqrpay.com>, <emv-qrpay.com>, <emvqrpay.net>, <emv-qrpay.net>, <emvqrcode.com> and <emvqrcode.net> domain names be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: April 20, 2021
[i] See, for example, Graebel Van Lines, Inc. v. Tex. Int’l Prop. Assocs., FA 1195954 (Forum July 17, 2008).
[ii] See, for example, The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009); see also Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006).
[iii] See, for example, 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; see also Coupang Corp. v. Hyung Jun Lim, Case No. FA1906001847602 (Forum July 20, 2019); CrossFit, Inc. v. Whois Agent, Domain Whois Privacy Prot. Serv. / James Chang, Case No. D2016-1893 (WIPO Nov. 9, 2016).
[iv] See, for example, 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; 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.”)
[v] See, for example, State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”)
[vi] See, for example, Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i); see also Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901 (Forum Jan. 19, 2016) concluding that the addition of a generic term and top level domain to a trademark is inconsequential under a Policy ¶ 4(a)(i) analysis; see also Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Svensson Viljae, FA 1784650 (Forum June 1, 2018) finding confusing similarity where “[t]he disputed domain name <skechers-outlet.com> adds a hyphen and the generic term ‘outlet’ to Complainant's registered SKECHERS mark, and appends the ‘.com’ top-level domain.”).
[vii] See, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
[viii] See, for example, Invesco Ltd. v. Premanshu Rana, FA 1733167 (Forum July 10, 2017) (“Use of a domain name to divert Internet users to a competing website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.”).
[ix] See, for example, Bloomberg Finance L.P. v. Nikita A Paskhalnyy / Private Person, FA 1638757 (Forum Nov. 5, 2015) (the panel noting that Policy ¶ 4(b) factors “are meant to be merely illustrative of bad faith, and that Respondent’s bad faith may be demonstrated under the totality of the circumstances”). The Panel notes that there is no evidence that Respondent is connected with the “vnpay” business and so a finding of commercial gain would involve an inference of referral fees for the redirections and, whilst such inference is reasonable in the circumstances, a finding in line with the decision is to be preferred.
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