WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sika AG v. Gia Nhu, Cong Ty Co Phan Truyen Thong Suc Manh Viet

Case No. D2019-2224

1. The Parties

The Complainant is Sika AG, Switzerland, represented by BMVN International LLC, Viet Nam.

The Respondent is Gia Nhu, Cong Ty Co Phan Truyen Thong Suc Manh Viet, Viet Nam.

2. The Domain Name and Registrar

The disputed domain name <sikavietnam.net> (the “Disputed Domain Name”) is registered with Nhan Hoa Software Company Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on September 13, 2019. On September 13, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 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.

On September 18, 2019, the Center transmitted an email in English and Vietnamese to the Parties regarding the language of the proceeding. The Complainant submitted a Vietnamese translation of the Complaint and its annexes to the Center. The Respondent sent no response.

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 in Vietnamese of the Complaint, and the proceedings commenced on October 14, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 3, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 5, 2019.

The Center appointed Pham Nghiem Xuan Bac as the sole panelist in this matter on November 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.

4. Factual Background

The Complainant, Sika AG, is a Switzerland-based company founded in 1910, specializing in the development and production of systems and products for bonding, sealing, damping, reinforcing, and protecting in the building sector and motor vehicle industry.

The Complainant’s trademark SIKA has been registered for goods and services in Classes 1, 2, 5, 17, 19, 27, 37, and 42 in a variety of countries, including in Viet Nam, where the Respondent resides, under International Registrations No. 239591 dated January 26, 1961, No. 251500 dated January 16, 1962, 619314, No. 619315 dated January 7, 1994, and No. 1311066 dated June 9, 2016.

The Complainant also owns a number of domain names featuring the trademark SIKA, among which the notable one is <sika.com> that was registered in 1995.

The Respondent registered the Disputed Domain Name <sikavietnam.net> on February 13, 2012. As of the date of this Decision, the Disputed Domain Name is resolving to a web shop, via which the Complainant’s products under the trademark SIKA are advertised and offered for sale.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:

(i) The Disputed Domain Name is confusingly similar to the trademark in which the Complainant has rights.

Firstly, the Complainant contends that the Complainant's SIKA trademark is well known in the industry worldwide and in Viet Nam.

Secondly, the Complainant contends that the Disputed Domain Name is confusingly similar to a mark owned by the Complainant by arguing that:

(a) the Disputed Domain Name reproduces entirely the well-known trademark SIKA; and

(b) The addition of the geographical term "vietnam" could not dispel any likelihood of confusion. On the contrary, this geographical term suggests that the Disputed Domain Name is somehow related to or sponsored by or affiliated with the Complainant and its SIKA products in Viet Nam, while this is not the case. Therefore, the likelihood of confusion is heightened.

Finally, the Complainant submits that the addition of the generic Top-Level Domain (“gTLD”) suffix “.net” in the Disputed Domain Name does not add any distinctiveness to the Disputed Domain Name.

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

The Complainant submits that the elements set forth in Policy, paragraph 4(c) are not fulfilled.

Firstly, the registration and use of the trademark SIKA preceded the registration of the Disputed Domain Name for years. Moreover, the Respondent must have been well aware of the Complainant’s SIKA trademark when it registered and started using the Disputed Domain Name, given a number of false references to the Complainant made by the Respondent as shown on the website under the Disputed Domain Name, including a cover picture taken at a warehouse of the Complainant, the list categories of Sika’s products at the left side of the site, the Complainant’s product images and descriptions as well as the heading of “Sika - Headquarter and Retailing Store” (original in Vietnamese: “Sika - Trụ Sở Chính Và Cửa Hàng Bán Sản Phẩm”) in the footer of the website.

Secondly, the Respondent is neither a licensee of the Complainant, nor otherwise authorized to use the Complainant’s SIKA trademark. Moreover, the website under the Disputed Domain Name fails to accurately disclose that the Respondent is an independent business entity and that there is no relationship between the Complainant and the Respondent. In contrast, it self-declared false references to mislead Internet users and relevant consumers that it is an authorized distributor / retailer of the Complainant in Viet Nam, while the Complainant has never appointed that role.

Further, the Complainant contends that the Respondent is not using the Disputed Domain Name for a bona fide offering of goods or services, but is attempting to use the SIKA trademark and the Disputed Domain Name to redirect consumers to the Respondent’s website for commercial gain.

Finally, the Complainant argues that given the strong reputation of the Complainant’s SIKA trademark, the Respondent did not register the Disputed Domain Name for any legitimate or fair-use purpose, but to appropriate the fame and reputation of the Complainant and the SIKA trademark for the Respondent’s own profit.

(iii) The Disputed Domain Name was registered and is being used in bad faith.

The Complainant asserts that the Respondent’s registration and use of the Disputed Domain Name are a form of opportunistic bad faith, given that the Disputed Domain Name wholly and purposefully incorporates the Complainant’s well-known and prior-registered SIKA trademark, and was registered by the Respondent long after the Complainant’s SIKA trademark became widely known to consumers and the relevant trade.

Secondly, the Respondent has been using the Disputed Domain Name in connection with a website that seeks to misleadingly entice consumers to buy products through the Respondent as if the Respondent is an authorized distributor or retailer of the Complainant in Viet Nam, when it has never been the case. After seeing the SIKA trademark as a prominent constituent element of the Disputed Domain Name, consumers will initially be confused as to the Disputed Domain Name’s association with or sponsorship by the Complainant.

With the said arguments, the Complainant requests that the Disputed Domain Name be transferred to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Procedural matters

Language of Proceedings

The Complaint was filed in English on September 13, 2019. On September 18, 2019, the Registrar informed that the language of the Registration Agreement is Vietnamese, and the Center invited the Complainant to submit either (i) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceeding should be in English, or (ii) a translation of the Complaint in Vietnamese, or (iii) a substantiated request for English to be the language of the proceeding; and invited the Respondent to comment on the language of the proceeding.

On September 20, 2019, the Complainant submitted a Vietnamese translation of the Complaint and the annexes to the Center. The Respondent did not give any comments on this issue.

According to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

Similar to previous UDRP decisions, the Panel finds that the spirit of paragraph 11(a) is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfortability with each language, the expenses to be incurred and possibility of delay in the proceeding in the event translations are required and other relevant factors (see, e.g., Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679).

In the present case, in consideration of the above circumstances of the proceeding, including, but not limited to:

(i) the fact that the Complainant, a Swiss business entity, does not appear to be able to communicate in Vietnamese, and therefore, if the Panel’s decision is rendered in Vietnamese, the Complainant would have to incur substantial expenses for translation; and

(ii) English is a common language in global business and quite popular in Viet Nam, where the Respondent is located, and it is also evidenced to the Panel that the website under the Disputed Domain Name contains English contents; these suggest that the Respondent have ample knowledge of the English language and be able to communicate quite well in English.

(iii) the Respondent did not object for English to be the language of the proceeding and did not submit a response in neither English nor Vietnamese.

For the purpose of easy comprehension of the Complainant (the only party actively taking part in the proceeding) of the Panel’s decision without any necessity of translations, and in the interest of fairness to both Parties as well as the Panel’s obligation under paragraph 10(c) of the Rules, which provides that “the Panel shall ensure that the administrative proceeding takes place with due expedition”, the Panel hereby decides, under paragraph 11(a) of the Rules, that the language of the proceeding shall be English and shall render its decision in English.

B. Identical or Confusingly Similar

The Complainant is required to establish the following: (i) that it has trademark rights, and, if so, (ii) that the Disputed Domain Name is identical or confusingly similar to its trademark.

First of all, the Panel finds that the Complainant has clearly evidenced that it has registered trademark rights to SIKA, well before the Disputed Domain Name was registered. Also, the Complainant has sufficiently demonstrated and evidenced that it had a lengthy use of its trademark for its commercial activities, and in particular to offer chemical-related products and services worldwide.

Second, the Disputed Domain Name comprises the main distinctive element “sika” of the Complainant’s trademark, in which the Complainant has exclusive rights. The difference between the Disputed Domain Name and the trademark is the addition of the suffix “Vietnam”, evidently refers to the name of the country where the Respondent resides, i.e., Viet Nam.

It is well established that the addition of geographic term (such as “Vietnam”) does not prevent confusing similarity. Thus, in the Panel’s view, the addition of the said suffix does nothing to dispel confusing similarity, as it was found in previous UDRP decisions (see, e.g., Royal Canin SAS v. Ong Pham Duc Thang, WIPO Case No. D2017-2567).

Third, the Panel finds, similarly to other UDRP panels, that the addition of the generic Top- level Domain (“gTLD”) suffix “.net” to the Disputed Domain Name does not constitute an element that may help avoid confusing similarity (see, e.g., Volkswagen AG v. Privacy Protection Services, WIPO Case No. D2012-2066; The Coca-Cola Company v. David Jurkiewicz, WIPO Case No. DME2010-0008).

On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s SIKA trademark, and the first element under paragraph 4(a) of the Policy is established.

C. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the Disputed Domain Name for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads:

“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 your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(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 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.”

The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent did not reply to the Complainant’s contentions and, therefore, did not refute the Complainant’s contentions.

Regarding paragraph 4(c)(i) of the Policy, the Panel finds, in light of the Complainant’s asserted facts, that no license, permission or authorization of any kind to use the Complainant’s trademark has been granted to the Respondent. There is no evidence available that the Respondent holds any registered or unregistered trademark rights in any jurisdiction. Thus, the Panel finds that the Respondent has no rights in the trademark SIKA.

A reseller or distributor may be making a bona fide offering of goods and services and thus have rights or legitimate interests in a domain name if its use meets certain requirements, which are described in the decision Oki Data Americas, Inc. v. ASD, Inc, WIPO Case No. D2001-0903 ("Oki Data"), including:

- the respondent must actually be offering the goods or services at issue;

- the respondent must use the site to sell only the trademarked goods (otherwise, there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods);

- the site itself must accurately disclose the respondent’s relationship with the trademark owner; and

- the respondent must not try to “corner the market” in all relevant domain names, thus depriving the trademark owner of the ability to reflect its own mark in a domain name.

In this particular case, the Panel finds the Respondent does not place any statement or disclaimer disclosing accurately its relationship with the Complainant. Further, the website under the Disputed Domain Name also contains a cover picture taken at a warehouse of the Complainant as well as its product images and descriptions.

In addition, the website under the Disputed Domain Name also comprises the indications “Sika - Trụ Sở Chính Và Cửa Hàng Bán Sản Phẩm” (in English: “Sika - Headquarter and Retailing Store”) and “Sika - Cửa Hàng Và Kho Hàng Sika” (in English: “Sika - Retailing Store and Warehouse of Sika products”). These indications may mislead consumers into believing in a connection or association between the Respondent and the Complainant, where such connection or association does not exist in reality.

With such a view, the Panel finds that the unauthorized use of the Disputed Domain Name does not meet the Oki Data criteria and thus, does not constitute a bona fide use within paragraph 4(c)(i) of the Policy.

Regarding paragraphs 4(c)(ii) and 4(c)(iii) of the Policy, the Panel finds that there is no evidence that would suggest that the Respondent, as an individual, business, or other organization, has been commonly known by the Disputed Domain Name, or that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name. In fact, as it appears following the Complainant’s assertions and evidence with regard to the Respondent's registration of the Disputed Domain Name, the Respondent had full knowledge of the SIKA trademark and had an intention to gain profit by riding on the goodwill and reputation of the Complainant.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, and the second element, paragraph 4(a)(ii) of the Policy is established.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, including:

“(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

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”

Each of the four circumstances in paragraph 4(b) of the Policy, if found, is an instance of “registration and use of a domain name in bad faith”.

The Panel finds that the Complainant has put forth evidence that the Respondent has registered and used the Disputed Domain Name in bad faith. The Respondent did not reply to the Complainant’s contentions and, therefore, has not refuted the Complainant’s contentions.

The Panel further finds that the Complainant’s SIKA trademark has been registered in numerous countries. The Complainant’s trademark has been registered and used in, among other countries, Viet Nam where the Respondent resides. These trademark registrations well predate the registration of the Disputed Domain Name.

The Disputed Domain Name comprises the SIKA trademark in its entirety, adding only the geographical term “vietnam”. Given the extensive use of the SIKA trademark for chemical-related products and services by the Complainant, which occurs in numerous countries, including in Viet Nam, where the Respondent resides, it is very unlikely that the Respondent registered the Disputed Domain Name in a fortuity. Also, in consideration of the use of the Disputed Domain Name and the contents of the website thereunder, the Panel is of the view that the Respondent obviously knew of the Complainant and its SIKA trademark when it registered the Disputed Domain Name, and the Panel considers the registration an attempt by the Respondent as to take advantage of the Complainant’s goodwill.

On the date of this Decision, the Panel accesses the Disputed Domain Name and finds that it is resolving to a web shop offering the chemical products branded with the Complainant’s SIKA trademark. In addition to the adoption of the Complainant’s SIKA trademark as a uniquely distinctive part in the Disputed Domain Name, the Respondent used a cover picture taken at a warehouse of the Complainant as well as its product images and descriptions on the website, and falsely represented itself like an affiliate or distributor of the Complainant by the indications “Sika - Trụ Sở Chính Và Cửa Hàng Bán Sản Phẩm” and “Sika - Cửa Hàng Và Kho Hàng Sika”.

The Panel takes the view that any Internet users seeking to purchase the Complainant’s SIKA products would very likely mistakenly believe that the Respondent is either connected to or associated with the Complainant. However, no such connection exists in fact. Such misleading behavior is indicative of bad faith within the meaning of paragraph 4(b)(iv) of the Policy, on the part of the Respondent.

Taking into account all of the above and the available record, the Panel finds that the Disputed Domain Name was registered and used by the Respondent in bad faith and the third element under paragraph 4(a)(iii) of the Policy is established.

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 <sikavietnam.net> be transferred to the Complainant.

Pham Nghiem Xuan Bac
Sole Panelist
Date: November 28, 2019