Công ty Cổ Phần VNG v. Do Minh Thong
Claim Number: FA2203001987815
Complainant is Công ty Cổ Phần VNG (“Complainant”), Việt Nam. Respondent is Do Minh Thong (“Respondent”), Việt Nam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <zalo.xyz>, registered with Nhan Hoa Software Company Ltd..
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 Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 11, 2022; the Forum received payment on March 11, 2022. The Complaint was submitted in both English and Vietnamese.
On March 15, 2022, Nhan Hoa Software Company Ltd. confirmed by e-mail to the Forum that the <zalo.xyz> domain name is registered with Nhan Hoa Software Company Ltd. and that Respondent is the current registrant of the name. Nhan Hoa Software Company Ltd. has verified that Respondent is bound by the Nhan Hoa Software Company Ltd. 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 15, 2022, the Forum served the Vietnamese and English language Complaint and all Annexes, including a Vietnamese language Written Notice of the Complaint, setting a deadline of April 4, 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.xyz. Also on March 15, 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 April 11, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honorable Neil Anthony Brown QC 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.
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDINGS
The Panel notes that the Registration Agreement is written in Vietnamese, thereby making the language of the proceedings to be Vietnamese. However, pursuant to Rule 11(a) the Panel has power to determine that in all the circumstances, a different language would be more appropriate. Here it must be said that this is the second filing of a Complaint to resolve the present dispute. The first filing was in matter No. FA 1978275 in the Forum and the decision in that proceeding is Annex 0.4 to the present Complaint. In that case, the Complainant submitted that, as contemplated by Rule 11(a), the proceeding should be conducted in the English language because it could be assumed that Respondent had sufficiency in English. However, the Panel in that proceeding did not agree and decided that Complainant had not adduced sufficient evidence to justify a finding that the proceeding should be conducted in the English language and the Complainant was therefore denied.
Complainant has now refiled its complaint and it says in effect that as it cannot have the proceeding conducted in English, it should be conducted in Vietnamese, as that is the language of the registration agreement. The Panel agrees. Moreover, The Panel also determines that the Vietnamese language requirement has been satisfied through the Vietnamese language Complaint and Commencement Notification that have been filed and served. Adequate notice must therefore have already been given to Respondent by those Vietnamese language documents. The Panel also finds that because no Response has been filed by Respondent, the remainder of the proceeding may be conducted in the English language. The Panel is of the view that in all the circumstances that is the proper course to be followed and that it is fair to both parties. The proceedings may therefore go forward on that basis, namely that the language of the proceeding is Vietnamese and that the Vietnamese language requirement has been satisfied.
A. Complainant
Complainant made the following contentions.
Complainant is the owner and developer of the ZALO app, used in Vietnam for sending and receiving messages and voice/audio notes. Complainant submits that it has rights in the ZALO mark through its registration of the mark with the Intellectual Property Office of Vietnam (e.g., Reg. No. 217,563, registered on December 31, 2013). See Compl. Ex. 0.3. Respondent’s <zalo.xyz> domain name is identical or confusingly similar to Complainant’s ZALO mark, as it incorporates the mark in its entirety, only adding the “.xyz” generic top-level domain (gTLD).
Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not authorized or licensed Respondent to use the ZALO mark, nor is Respondent commonly known by the disputed domain name. Further, Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services or legitimate noncommercial or fair use as the resolving website is currently inactive.
Respondent registered and uses the <zalo.xyz> domain name in bad faith. Respondent registered and uses the disputed domain name with actual notice of Complainant’s rights in the mark, evidenced by the fame and notoriety of the mark, as well as Respondent’s use of Complainant’s contact information. Additionally, Respondent only holds the domain name to redirect users to an inactive website that lacks any substantive content.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a Vietnamese company engaged in the development of online games, platforms, the provision of finance and payment services, cloud systems, apps including the ZALO app, and related goods and services, used in Vietnam for sending and receiving messages and voice/audio notes.
2. Complainant has established its trademark rights in the ZALO mark through its registration of the mark with the Intellectual Property Office of Vietnam (e.g., Reg. No. 217,563, registered on December 31, 2013).
3. Respondent registered the disputed domain name on August 5, 2020.
4. Respondent has caused the disputed domain name to resolve to a currently inactive website.
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(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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the ZALO mark through its registration of the mark with the Intellectual Property Office of Vietnam (e.g., Reg. No. 217,563, registered on December 31, 2013). See Compl. Ex. 0.3. When a complainant registers a mark with a governmental agency, it is sufficient to establish rights in the mark per Policy ¶ 4(a). 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).”). Therefore, the Panel finds Complainant has sufficiently established rights in the ZALO mark by registering the mark with Vietnam’s trademark agency.
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s ZALO mark. Complainant argues Respondent’s <zalo.xyz> domain name is identical to Complainant’s ZALO mark, as it incorporates the mark in its entirety and only adds the “.xyz” gTLD. The mere addition of a gTLD is not sufficient to differentiate a disputed domain name from a mark. See Kellog North America Company v. Private Registration, FA 1613347 (Forum June 2, 2015) (finding that the <kelloggs.xyz> domain name is identical to the complainant’s KELLOGG’S mark under Policy ¶ 4(a)(i)). The Panel therefore finds the <zalo.xyz> domain name is identical to Complainant’s ZALO mark.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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), then the burden shifts to Respondent to show 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)).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s ZALO mark and to use it in its domain name;
(b) Respondent registered the domain name on August 5, 2020;
(c) Respondent has caused the disputed domain name to resolve to a currently inactive website;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends Respondent lacks rights and legitimate interests in the <zalo.xyz> domain name because Respondent is not commonly known by the disputed domain name. Previously, panels have referenced the available WHOIS information to determine whether a Respondent is commonly known by the disputed domain name. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Furthermore, Complainant submits that Respondent is not authorized to use the ZALO mark. Lack of authorization to use a mark serves as further indication that a respondent is not commonly known by the disputed domain name. See Radio Flyer Inc. v. er nong wu, FA 2011001919893 (Forum Dec. 16, 2020) (“Here, the WHOIS information lists “er nong wu” as the registrant and no information suggests Complainant has authorized Respondent to use the RADIO FLYER mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii)”). Here, the WHOIS information shows Respondent is known as “Do Minh Thong” and there is no evidence to suggest Complainant authorized Respondent to use the ZALO mark. See Compl. Ex. 0.1; see also Registrar Verification Email. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues Respondent does not use the <zalo.xyz> domain name for a bona fide offering of goods and services or legitimate noncommercial or fair use because the resolving website is currently inactive. Hosting a domain name only to redirect users to an inactive website is not a bona fide offering of goods and services or legitimate noncommercial or fair use. See Activision Blizzard, Inc. / Activision Publishing, Inc. / Blizzard Entertainment, Inc. v. Cimpress Schweiz GmbH, FA 1737429 (Forum Aug. 3, 2017) (“Complainant insists that Respondent has made no demonstrable preparations to use the disputed domain name. When Respondent is not using the disputed domain name in connection with an active website, the Panel may find that Respondent is not using the disputed domain name for a bona fide offering of goods or services… As Respondent has not provided a response to this action, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.”). In the present case, Complainant provides a screenshot of the resolving website, which shows it is inactive. See Compl. Ex. 2. Therefore, the Panel finds Respondent’s use of the <zalo.xyz> domain name to host an inactive website is not a bona fide offering of goods and services or legitimate noncommercial or fair use.
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the <zalo.xyz> domain name in bad faith under Policy ¶ 4(a)(iii). When analyzing bad faith, the Panel may look beyond the Policy ¶ 4(b) to the totality of the circumstances. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith).
Secondly, Complainant submits that Respondent registered the disputed domain name in bad faith because Respondent had actual notice of Complainant’s rights in the ZALO mark, evidenced by the fame and notoriety of the mark, as well as Respondent’s use of Complainant’s contact information. Past panels have looked at how famous a mark is, as well as the respondent’s use of the mark, to determine whether a respondent had actual notice of a complainant’s rights. See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”). In this case, Complainant argues Respondent had actual knowledge because Respondent uses Complainant’s contact information, the ZALO mark is a notorious and a coined name, and the mark is famous in Vietnam. See Compl. Exs. 0.1 and 1. As the Panel agrees that Respondent had actual notice of Complainant’s rights in the ZALO mark, the Panel finds Respondent registered the domain name in bad faith.
Thirdly, Complainant contends the inactive nature of the disputed domain name further evidences bad faith. Failure to make active use of a disputed domain name indicates bad faith. See Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) (“Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent uses the domain name to host an inactive website.”). Here, the Panel again notes the screenshot of the resolving website that is in evidence and which makes it very clear that the resolving website is inactive. See Compl. Ex. 2. Since the disputed domain name resolves to an inactive website, the Panel finds bad faith use of the domain name.
Complainant has thus made out the third of the three elements that it must establish.
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.xyz> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown QC
Panelist
Dated: April 12, 2022
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