Decision for dispute CAC-UDRP-106981

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.

Chocoladefabriken Lindt & Sprüngli AG (the “Complainant”) is the owner of the European Union trademark LINDT, registered on September 7, 1998 (Reg. No. 134007), in class 30. There are many other national and international registrations of this trademark, including with designation to Vietnam, registered on July 22, 2004 (Reg. No. 839882), in classes 35 and 43.

The Complainant, founded in 1845, is globally well-known as the leading premium quality chocolate maker based in Switzerland. LINDT goods are also available in Vietnam through various retailers and distributors.

The Complainant also owns domain names containing the trademark LINDT, such as the domain names <lindt.com>, <lindt.ch>, <lindt.cn>, etc. The Complainant is also the holder of <lindt.vn> domain name and uses <lindt-spruengli.com> for its main corporate website.

The disputed domain name <lindtvietnam.com> was registered on May 6, 2023, i.e. many years after the first registration of the Complainant’s LINDT globally well-known trademark, and resolved to a site which contains pay-per-click (‘PPC’) links, under categories including ‘Chocolate Gifts’, that compete with the Complainant’s confectionery-related offerings.

The Complainant’s representatives sent cease-and-desist correspondence to the Respondent via the registrar’s registrant contact form at the end of January and in early February. The Respondent has not responded to these messages.

The Complainant contends that the requirements of the Policy have been met and that the disputed domain name should be transferred to it.
No administratively compliant Response has been filed.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

The Panel agrees with the Complainant that the disputed domain name <lindtvietnam.com> is confusingly similar to the Complainant's trademark LINDT. The evidence presented by the Complainant shows the extensive use of its trademark internationally and it is, therefore, regarded as the well-known trademark. The Panel agrees with the Complainant that the addition of geographical term “Vietnam” to the well-known sign does not set aside the confusing similarity between the disputed domain name and the Complainant's trademark (see section 1.8 of WIPO Overview 3.0). On the contrary, the addition of the term “Vietnam” refers directly to the Complainant’s sales and marketing of its production in Vietnam.

The Panel acknowledges that the Complainant presented prima facie evidence that the Respondent is not sponsored by or affiliated with Complainant in any way. Furthermore, the Complainant has not licensed, authorized, or permitted Respondent to use Complainant’s trademarks in any manner, including in domain names. The Respondent's name (Nguyen Linh) does not resemble the disputed domain name in any manner. Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services or a legitimate non-commercial or fair use.

On these bases, the Panel concludes that the Respondent does not have any rights or legitimate interests in regard to the disputed domain name.

As no administratively compliant response has been provided to the Panel and the prima facie evidence was not challenged by the Respondent, the Panel concludes that the Respondent meant Complainant's trademark LINDT, when he/she registered the disputed domain name <lindtvietnam.com> (see WIPO Overview 3.0, para. 3.1.3 and 3.2). Previous UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. Accordingly, the Panel finds that the disputed domain name was registered in bad faith.

The disputed domain name was used as the pay-per-click website featuring sponsored links to competing sites and services (e.g., manufacturers/sellers of chocolate). This means that the Respondent could have obtained financial gain by advertising the competing sites on the website associated to the disputed domain name. In conclusion, the Respondent was using the disputed domain name to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's LINDT trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. Therefore, this is nothing else but the use of the domain name in bad faith (para. 4(b)(iv) of the Policy).

In view of the foregoing, the Panel concludes that the disputed domain name was, both, registered and used in bad faith (Para. 4(a)(iii) of the Policy).