The Complainant is De’Longhi Appliances S.r.l of Treviso, Italy, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Delonghi Delong, Delonghi of Ho Chi Minh, Vietnam.
The disputed domain name <delonghivietnam.com> (the “Disputed Domain Name”) is registered with OnlineNic, Inc. d/b/a China-Channel.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 15, 2019. On January 15, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 16, 2019, 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.
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 January 17, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 6, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 7, 2019.
The Center appointed John Swinson as the sole panelist in this matter on February 15, 2019. 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 De’Longhi Appliances S.r.l, a company incorporated in Italy. The Complainant is part of the De’Longhi Group. According to the Complaint, The De’Longhi Group is a leading global manufacturer and supplier of portable heaters and air conditioners, small domestic appliances, such as coffee makers, as well as of household cleaning and ironing products.
The Complainant owns a number of registered trade marks for DELONGHI, the earliest of which is International registered trade mark number 498944, registered on August 2, 1985 (the “Trade Mark”). The Complainant is also the owner of numerous domain names which incorporate the Trade Mark, including <delonghi.com>.
The Respondent is Delonghi Delong, Delonghi of Vietnam. The Respondent did not file a response, and consequently little information is known about the Respondent. The Disputed Domain Name was registered on July 4, 2012. The website at the Disputed Domain Name is being used to resell coffee machines and other related products.
The Complainant makes the following submissions.
Identical or confusingly similar
The Disputed Domain Name incorporates the entirety of the Trade Mark, with the addition of the word “Vietnam”. It is well established that the addition of a geographic term does not alter the underlying trade mark or negate confusingly similarity (see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
Rights or legitimate interests
The Respondent has no rights or legitimate interests in the Disputed Domain Name because:
- the Respondent is not sponsored by or affiliated with the Complainant in any way. Further, the Complainant has not licensed or otherwise permitted the Respondent to use the Trade Mark;
- the Respondent is not commonly known by the Disputed Domain Name;
- the Respondent does not own any trade marks associated with the Disputed Domain Name; and
- the Respondent is not using the Disputed Domain Name for a legitimate purpose, but rather purely for the purpose of reselling without authorization.
Registered and used in bad faith
The Respondent has attempted to imitate the Complainant’s official website and sell the Complainant’s products without authority as well as competing products. It is therefore highly implausible that the Respondent had no knowledge of the Complainant at the time the Respondent registered the Disputed Domain Name.
The Respondent has attempted to create a likelihood of confusion with the Complainant and its Trade marks by copying the Complainant’s website design, color scheme, and pictures. The Respondent’s use of the Disputed Domain Name constitutes a disruption of the Complainant’s business as the Disputed Domain Name is being used to offer the Complainant’s goods or counterfeit goods without the Complainant’s authorization.
The Respondent’s use of the Disputed Domain Name creates a likelihood of confusion as to the affiliation of its website for the purpose of confusing consumers for commercial gain.
The Respondent did not reply to the Complainant’s contentions.
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark 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.
The onus of proving these elements remains on the Complainant even though the Respondent has not filed a Response.
The Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant (see, e.g., Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyProtect.org, WIPO Case No. D2013-2059). However, the Panel may draw appropriate inferences from the Respondent’s lack of a Response.
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights.
The Disputed Domain Name incorporates the entirety of the Trade Mark, with the addition of the geographical term “Vietnam”. A domain name which incorporates a registered trade mark only with the addition of a geographical term is often considered by panels to be confusingly similar to the relevant trade mark for the purposes of the first element (see WIPO Overview 3.0 at section 1.8).
The Panel considers that the Disputed Domain Name is confusingly similar to the Trade Mark. The Complainant succeeds on the first element of the Policy.
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel considers the Complainant has made out a prima facie case. This finding is based on the following:
- The Panel accepts the Complainant’s submission that the Complainant has not authorised or otherwise given the Respondent permission to use the Disputed Domain Name.
- There is no evidence that the Respondent has been commonly known by the Disputed Domain Name, or has registered, or has common law trade mark rights in relation to this name. The name of the Respondent is Delonghi Delong, Delonghi. This is not a believable name for a person selling De’Longhi products.
- The Respondent has not been making a legitimate non-commercial or fair use of the Disputed Domain Name without intent for commercial gain. The Respondent is using the website at the Disputed Domain Name to resell the Complainant’s coffee machines as well as other company’s coffee machines and other related products.
It is generally accepted that the use of a trade mark within a domain name – with other terms appended to the mark as within the domain name – by a reseller, may be considered bona fide in certain circumstances. Those circumstances are set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“Oki Data”), in which the panel stated that a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in a domain name if it meets certain requirements. However, in this case the Respondent does not meet the principles in Oki Data as the Respondent is using the website at the Disputed Domain Name to sell trade marked goods other than those made by the Complainant, and the site does not make any attempt to disclose the Respondent’s relationship with the Complainant, or its status as an unauthorized reseller.
Further, the Respondent is potentially running a “bait and switch” scam, where it is using the Trade Mark and advertising the Complainant’s products for sale to generate Internet traffic and selling competing products and potentially counterfeit goods.
The Respondent had the opportunity to demonstrate its rights or legitimate interests, but did not do so. As such, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy.
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
If circumstances indicate that the Respondent’s intent in registering the Disputed Domain Name was to profit in some fashion from, or otherwise exploit, the Complainant’s Trade Mark, panels will find bad faith on the part of the Respondent (see section 3.1.1 of the WIPO Overview 3.0).
The Complainant’s brand is well-known internationally, having been in operation since 1902. The Complainant’s registration of the Trade Mark predates the registration of the Disputed Domain Name by 27 years. The Panel accepts the Complainant’s submission that it is highly likely the Respondent registered the Disputed Domain Name with the Complainant in mind. This is evident based on the fact that the Disputed Domain Name incorporates the entirety of the Trade Mark only with the additional geographic term ”Vietnam”. Further, as addressed in Section B above, the Respondent is using the website at the Disputed Domain Name to resell the Complainant’s coffee machines as well as other companies’ coffee machines and other related products.
In the circumstances, the Panel finds that the Respondent registered and is using the Disputed Domain Name in an intentional attempt to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Trade Mark as to the source, sponsorship, affiliation, or endorsement of its website, location, or of a product or service on its website or location. This is evidence of registration and use in bad faith under paragraph 4(b)(iv) of the Policy.
In light of the above, and in the absence of a response and any evidence rebutting bad faith registration and use, the Complainant succeeds on the third element of the Policy.
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 <delonghivietnam.com> be transferred to the Complainant.
Date: February 28, 2019
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