WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

AWI Licensing Company v. Cao Viet

Case No. D2018-2012

1. The Parties

Complainant is AWI Licensing Company of Wilmington, Delaware, United States of America (“US”), represented by T&G Law Firm LLC, Viet Nam.

Respondent is Cao Viet of B\u1eafc Ninh, Viet Nam.

2. The Domain Name and Registrar

The Disputed Domain Name <armstrongvietnam.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 4, 2018. On September 4, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 5, 2018, the Registrar transmitted by email to the Center its verification response registrant and contact information for the disputed domain name that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on September 11, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on September 14, 2018.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 19, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 9, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 10, 2018.

The Center appointed Roberto Bianchi as the sole panelist in this matter on November 1, 2018. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Complainant is a subsidiary of Armstrong World Industries, Inc. (AWI), a designer and manufacturer of commercial and residential ceiling, wall, and suspension system solutions. AWI has over 3,700 employees. In fiscal year 2015, AWI had revenues from ceiling operations in excess of USD 1.2 billion. Since 1999, Complainant operates its primary websites at “www.armstrongworldindustries.com” and <armstrongceilings.com> to promote its products.

Complainant owns registrations for the ARMSTRONG trademark in various classes in several countries. In Viet Nam, Complainant owns, inter alia, the ARMSTRONG trademark, Registration No. 4-0046411-000, Registration Date April 29, 2003, covering goods in International Classes 6, 17, 19 and 27. Duly renewed (Expire Date November 26, 2023).

The Disputed Domain Name was registered on July 26, 2018.

The website at the Disputed Domain Name essentially consists of a list of links mostly redirecting to third party websites of providers of floors and floorings, apparently in competition with Complainant.

5. Parties’ Contentions

A. Complainant

Complainant contends as follows:

The Disputed Domain Name is confusingly similar to Complainant’s ARMSTRONG mark because it wholly incorporates this mark notwithstanding the addition of the geographic indication “Vietnam” and the generic Top-Level Domain (“gTLD”) “.com”. This will lead Internet users into thinking that the Disputed Domain Name is associated with Complainant’s industry and commercial establishment in Viet Nam.

Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. Respondent neither is a licensee of, nor is otherwise affiliated with Complainant. Complainant has never authorized, condoned or consented to Respondent’s registration of the Disputed Domain Name.

Respondent is not commonly known by the Disputed Domain Name. Moreover, Respondent has not made any preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services, nor has Respondent used the Disputed Domain Name for any legitimate noncommercial or fair use purpose.

Respondent is using the Disputed Domain Name to advertise and trade in aluminum frames and gypsum board ceilings. Given that the website associated with the Disputed Domain Name displays the ARMSTRONG trademark, the registration and use of the Disputed Domain Name clearly is intended to cause consumers to falsely believe that the domain name corresponds to an official AWI website. Respondent’s operation of a website using AWI’s trademarks misleadingly to divert consumers for commercial gain is an illegitimate, commercial, and unfair use of the disputed domain name and therefore establishes a prima facie case that Respondent lacks rights or legitimate interests in a website. Moreover, Respondent’s use of the well-known trademark ARMSTRONG on the website is an infringing use of Complainant’s trademarks because the ARMSTRONG trademark enjoys broad protection in light of its fame. Respondent’s use and registration of a domain name incorporating the famous ARMSTRONG mark, as well as the prominent use of the ARMSTRONG mark on the website to attract consumers does not qualify as a bona fide offering of goods and services.

The Disputed Domain Name was registered and is being used in bad faith. Respondent clearly knew of the ARMSTRONG mark at the time it registered and used the Disputed Domain Name. Such knowledge is sufficient to establish that Respondent appropriated the Disputed Domain Name in bad faith. Because the ARMSTRONG marks are world-famous, it is extremely unlikely that an individual would include ARMSTRONG as part of a domain name for any reason other than unfairly to create an impression of an association with Complainant. Given the worldwide fame of the ARMSTRONG mark and Complainant’s reputation for ceiling/flooring products, there is a legal presumption of bad faith when Respondent should have been aware of Complainant’s trademarks, actually or constructively.

Respondent has registered the Disputed Domain Name to attract Internet users believing that the website is authorized by or associated with AWI, and to profit from sales of its products through that website. Such use amounts to bad faith registration of the Disputed Domain Name for commercial gain. Furthermore, by using Complainant’s ARMSTRONG mark on the website at the Disputed Domain Name, Respondent has falsely indicated that Complainant endorses Respondent’s website. In addition, Respondent falsified the contact information (i.e., the mailing address) when registering the Disputed Domain Name. There is no such address as “B\uleafc Ninh” in Viet Nam. In fact, this is clearly a nonsense term. In addition, Respondent uses a privacy or proxy service, which provides further evidence of bad faith.

In light of the above, Respondent is clearly holding the Disputed Domain Name willfully, in bad faith, and in complete disregard of AWI’s exclusive rights to use its ARMSTRONG mark.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

Complainant submits a printout taken from the database of the Vietnamese Trademark Office showing that it owns a registration for the ARMSTRONG mark covering goods in various International Classes. Therefore, the Panel is satisfied that Complainant has rights in this mark for purposes of Policy paragraph 4(a)(i),

The Panel notes that in the Disputed Domain Name the ARMSTRONG mark is incorporated in its entirety, with the only addition of the geographic term “Vietnam” as a suffix, and the gTLD “.com”. It is well established that such kind of additions generally are inapt to prevent a finding of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), paragraph 1.8 (“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements.”).

The Panel concludes that the disputed domain name is confusingly similar to a mark in which Complainant has rights.

B. Rights or Legitimate Interests

Complainant says that it has never authorized, condoned or consented to Respondent’s registration of the Disputed Domain Name, and the Panel does not see any evidence on the casefile showing otherwise. The Panel also notes that as informed by the registrar in reply to the Center’s request, the registrant of the Disputed Domain Name is Cao Viet, and there is also no evidence that Respondent is known by the Disputed Domain Name. Thus, Policy paragraph 4(c)(ii) clearly does not apply.

In exercise of its general powers, on November 14, 2018 the Panel visited the website at the Disputed Domain Name and noticed that the website basically displays a list of “related links” entitled “Composite Wood Flooring”, “Lino Laminate Flooring”, “Wooden Flooring Tile”, “Hard Wood Flooring”, “Engineered Oak Floor”, etcetera, each of which in turn redirects to a provider of floors and floorings, apparently in competition with Complainant.^1< This fact supports Complainant’s contention that by using the ARMSTRONG trademark Respondent’s registration and use of the Disputed Domain Name is intended to cause consumers to falsely believe that the website corresponds to an official AWI website. The Panel agrees with Complainant that such use to divert consumers presumably looking for Complainant and Complainant’s ARMSTRONG products is an illegitimate and unfair use of the Disputed Domain Name, which prevents the application of Policy paragraphs 4(c)(i) or 4(c)(iii). Thus, Complainant has succeeded in establishing a prima facie case that Respondent lacks rights or legitimate interests in the Disputed Domain Name.

For its part, Respondent failed to explain the reasons for choosing and using the Disputed Domain Name as described, and to provide the Panel with some element in its own favor. Therefore, the Panel concludes that Respondent does not have any rights or legitimate interests in the Disputed Domain Name.

C. Registered and Used in Bad Faith

Complainant has shown that its registration for the ARMSTRONG trademark in Viet Nam – the country of residence of Respondent – predates the registration of the Disputed Domain Name by over 15 years. See section 4 above. In addition, a basic search on the Internet for the term “Armstrong” by using a common browser would have revealed, among the very first results, the existence of Complainant, its official websites and products, covered by the ARMSTRONG trademark. These facts and the very content of the website at the Disputed Domain Name, consisting in links to competitors of Complainant, suggest that Respondent clearly was aware of Complainant and its ARMSTRONG mark and products, and was targeting them when it registered the Disputed Domain Name. In other words, the registration of the Disputed Domain Name was in bad faith.

The Panel notes the nature of the Disputed Domain Name and that the addition of the term “Vietnam” creates the impression that the Disputed Domain Name belongs to or is operated by a kind of Vietnamese business conducted by Complainant. See InfoSpace.com, Inc. v. Hari Prakash, WIPO Case No. D2000-0076 (The addition in the disputed domain name of the word “India” appears to be made to induce Internet users to believe that they are connecting their computers with a site pertaining to an Indian affiliate of the Complainant, or to some kind of “Indian operation” of the Complainant.); see also Volvo Trademark Holding AB v. SC-RAD Inc., WIPO Case No. D2003-0601 “The Panel adopts the findings in Harrods Limited v. John Griffin, WIPO Case No. D2002-0641 (“The only difference between the disputed domain names and the HARRODS trademarks is the addition of the geographic designation ‘usa’ to the HARRODS name. The geographic designation ‘usa’ adds nothing distinctive, and the emphasis remains on the name HARRODS to attract the attention of Internet users”.)

The Panel also notes that Respondent is using the Disputed Domain Name on a website presumably for profit, by displaying a list of “related links” that redirect to third-party websites of a commercial nature, offering products such as floors and floorings, in competition with Complainant. See section 6.B. above. By using the Disputed Domain Name in such manner, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location. Under Policy paragraph 4b)(iv), this is a circumstance of registration and use of the Disputed Domain Name in bad faith.

Lastly, per the relevant WhoIs data, Respondent appears to have provided false and/or incomplete contact details at the time of registering the Disputed Domain Name. This fact and its failure to submit any argument or evidence in this proceeding contribute to the Panel’s overall impression that Respondent is acting in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name, <armstrongvietnam.com> be transferred to the Complainant.

Roberto Bianchi
Sole Panelist
Date: November 14, 2018

¹ See WIPO Overview 3.0, paragraph 4.8 (“Noting in particular the general powers of a panel articulated inter alia in paragraphs 10 and 12 of the UDRP Rules, it has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision. This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent or its use of the domain name, consulting historical resources such as the Internet Archive (“www.archive.org) in order to obtain an indication of how a domain name may have been used in the relevant past, reviewing dictionaries or encyclopedias (e.g., Wikipedia), or accessing trademark registration databases.”)