The Complainant is V-Guard Industries Limited of Vennala, India, represented by LexOrbis, India.
The Respondent is Taesong Chong of Busan, Republic of Korea (“Korea”), self-represented.
The disputed domain name <vguard.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 15, 2018. On September 17, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 18, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details of the registrant.
The Center verified that the 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 the Respondent of the Complaint, and the proceedings commenced on September 27, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 17, 2018. The Center received an email from the Respondent dated September 27, 2018, in Korean, requesting that the proceeding be conducted in Korean. The Center replied on September 28, 2018, noting that this request would be transmitted to the Panel, once appointed, but that the proceeding would commence in English because that is the language of the registration agreement. The Response was filed with the Center on October 4, 2018.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on October 30, 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.
The Complainant is an Indian limited company established in 1977 that manufactures and sells voltage stabilizers and other electrical and electronic equipment to consumers and businesses throughout India. The company’s stock is publicly traded on the Bombay and National Stock Exchanges. According to the Complaint and the Complainant’s website at “www.vguard.in”, the Complainant currently has more than 2,000 employees and more than 8,000 dealers and distributors, and its products are sold by more than 20,000 retailers across India. Its fiscal year 2017 revenues exceeded INR 23 billion (approximately USD 320 million).
The Complainant holds Indian Trade Mark Registration Number 413948 for V-GUARD as a word mark (application date December 3, 1983, published March 16, 1989) and numerous Indian trademark registrations for figurative trademarks featuring the letters “V-GUARD” along with the image of a kangaroo. The record shows that the V-GUARD mark has been used extensively in advertising, catalogs, and print material since 1977 and in recent years online and in social media, apparently all aimed at the Indian market. The Complaint cites 2016 and 2018 Indian judicial opinions finding that the V-GUARD mark is well known in India.
According to the Registrar, the Domain Name was created on January 15, 2004 and is currently registered in the name of the individual Respondent Taesong Chong of Busan, Korea, listing no registrant organization. The Domain Name resolves to a landing page simply headed with the Domain Name itself and featuring “Related Links” to third-party advertisers, presumably on a per-per-click (“PPC”) basis (see the parking terms published at “www.sedo.com”). In two places on the landing page the Domain Name itself is advertised for sale “for an asking price of 50000 GBP”. The following statement appears at the bottom of the page:
“This webpage was generated by the domain owner using Sedo Domain Parking. Disclaimer: Sedo maintains no relationship with third party advertisers. Reference to any specific service or trademark is not controlled by Sedo nor does it constitute or imply its association, endorsement or recommendation.”
The Complainant argues that the Domain Name fully incorporates its V-GUARD mark and that the Respondent has no rights or legitimate interests in it.
The Complainant contends that the Respondent should have been aware of the long-established and highly publicized V-GUARD mark and suggests that the Respondent sought to exploit the goodwill associated with the mark. The Complainant also infers bad faith from the Respondent’s “passive holding” of the Domain Name when no legitimate use could be conceived, as well as from the Respondent’s advertising the Domain Name for sale at a price far in excess of out-of-pocket costs.
The Respondent does not challenge the Complainant’s trademark but denies that it is famous and specifically denies any prior knowledge of the Complainant. The Respondent, located in Korea, observes that the Complainant does not have a United States of America trademark or International Trademark.
The Respondent states that it acquired the Domain Name to use in connection with a “virtual security guard business” in the near future and never attempted to sell it to the Complainant. Annoyed by receiving numerous anonymous emails inquiring about purchasing the Domain Name, the Respondent “parked the domain with a high price tag.”
The Respondent accuses the Complainant of reverse domain name hijacking.
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
The Respondent requested that this proceeding be conducted in Korean but submitted a Response in English. The Panel declines to order that the proceeding be conducted in Korean.
The Rules, paragraph 11, provides that in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of a UDRP administrative proceeding shall be the language of the registration agreement, subject to the authority of the Panel (once appointed) to determine otherwise. Here, the registration agreement is in the English language.
The Panel finds no compelling reason to depart from the default rule in this instance. Indeed, the circumstances indicate substantial fairness to the Parties in proceeding in English. The Domain Name consists of a string of Latin not Hangul characters, and it has been used only to resolve to a website in the English language, with third-party advertising exclusively in English, advertising the Domain Name itself for a price denominated in English not Korean currency. Thus, the Respondent itself has placed the Domain Name and its use deliberately in an English-language environment. The Complainant, an Indian company, operates an English-language website and evidently conducts business across India in the English language. In these circumstances, it is not unfair to oblige the Respondent to present its Response in English. On the other hand, requiring the Complainant to translate the Complaint and supporting documents into Korean would entail unfair delay and expense. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5.1.
The Complainant indisputably holds a registered V-GUARD trademark. The Domain Name is almost identical, lacking only a hyphen, which has little effect visually or aurally. As in most cases, the generic Top‑Level Domain (“gTLD”) “.com” is not a distinguishing feature. See WIPO Overview 3.0, section 1.11.
The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the disputed domain name”. See WIPO Overview 3.0, section 1.7. The Panel concludes under this test that the Domain Name is confusingly similar for purposes of the first element of the Policy.
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s 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) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial 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.
Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a disputed domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1. Here, the Complainant has established a prima facie case by establishing its trademark rights, confusing similarity, and the lack of permissive use, a corresponding business or brand name, or other evident legitimate interest. This shifts the burden to the Respondent.
The Respondent has only parked the Domain Name to date, offering it for sale and allowing it to be used for software-generated PPC advertising by third parties. Such use is not typically viewed as sufficient to support a claim of rights or legitimate interests. See WIPO Overview 3.0, section 2.9. The Respondent asserts its original intent to use the Domain Name for a website concerning a “virtual security guard business”, but the Respondent has not offered evidence of “demonstrable preparations” for such use, as required by the Policy, paragraph 4(c)(i).
Accordingly, the Panel finds in favor of the Complainant on the second element of the Complaint.
The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name):
“(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”
The Domain Name was created almost 15 years ago. The Respondent does not indicate when it acquired the Domain Name, and the Complaint seems to assume that the Respondent is the original registrant (“The Respondent registered the Domain Name on January 15, 2004”). In any event, there is no evidence in the record that the Respondent ever contacted the Complainant in an effort to sell the Domain Name, or, indeed, that the Complainant ever made an effort to purchase the Domain Name over the course of all those years. The Respondent, an individual in Korea, denies knowing about the Complainant, a company that evidently does business only in India, and this is not implausible. The Complainant’s inference on this record that the Respondent registered the Domain Name, as early as 2004, “primarily” to sell it to the Complainant for an excessive price is simply not persuasive.
The Complainant’s other arguments for bad faith all similarly hinge on its conclusion that the Respondent “ought to have been aware of the goods under the trademark V-GUARD which have been covered and promoted in various forms of print and digital media” and therefore must have been seeking a “free ride on the established goodwill and hard-earned reputation of the Complainant”. The Complainant’s V-GUARD mark is unquestionably well known in India. But the record does not indicate that the Complainant advertises and sells internationally, e.g., online.
It is true that search engine results for “vguard” prominently direct Internet users to the Complainant’s website. However, these results also show that other firms and products exist with similar names in other countries, such as the security firms Vguard International Ltd (United Kingdom of Great Britain and Northern Ireland) and Virtual Guard International Ltd (Republic of Ireland), where “v” or “virtual” refers to a computer network-enabled security service. Thus, it is hardly self-evident that the Respondent, despite its denials, could not conceivably have meant to refer to anything other than the Complainant and “must” have been targeting the Complainant’s mark. It is, in the Panel’s view, plausible that the Respondent was unaware of the Complainant and simply parked the Domain Name for possible future use in connection with a virtual security offering.
The Complainant has the burden to establish bad faith, and the Panel is not persuaded that the evidence undermines the Respondent’s explanation for the registration and use of the Domain Name. The Panel concludes that the Complainant has not met its burden on the third element.
Paragraph 15(e) of the Rules provides that, if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking (“RDNH”) or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”. The Respondent has requested such a finding here.
RDNH is defined under the Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”. Mere lack of success of a complaint is not sufficient to find RDNH. See WIPO Overview 3.0, section 4.16. A finding of RDNH is warranted, for example, when a panel finds that the complainant (especially one represented by counsel) should have recognized that it could not succeed on one of the three elements of the complaint under any fair interpretation of the available facts or brings a complaint based “on only the barest of allegations without any supporting evidence” (id.). That is not the case here, where the Domain Name was only used for a parking site and the Respondent’s explanation, not one supported by any actual evidence at that, appeared only in the UDRP proceeding. Hence, the Panel denies the request for a finding of RDNH.
For the foregoing reasons, the Complaint is denied.
W. Scott Blackmer
Date: November 12, 2018
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