{ "case_number": "CAC-UDRP-103207", "time_of_filling": "2020-07-30 09:23:26", "domain_names": [ "DANIELWELLINGTONUS.COM " ], "case_administrator": "Iveta Špiclová (Case admin)", "complainant": [ "Daniel Wellington AB" ], "complainant_representative": "SILKA Law AB", "respondent": [ "Nguyễn Thanh Dũng" ], "respondent_representative": null, "factual_background": "The Complainant is a company established in Sweden that manufactures and sells stylish design watches. It was founded in 2011 and has based its marketing efforts through extensive use of social media. The Complainant operates on global scale and enjoys popularity on major social media platforms.\r\n\r\nThe disputed domain name was registered on 22 March 2018.\r\n\r\nThe Registrar confirmed that the Respondent is the current registrant of the disputed domain name and that the language of the registration agreement is Vietnamese. On 7 September 2020, the Complainant filed request to change the language of the proceedings to English.\r\n\r\nThe Respondent has not filed a Response. CAC is unaware of whether written notice of the Complaint has been received by the Respondent. One of the e-mails sent to the Respondent was successfully relayed; the Respondent never accessed the online platform.\r\n", "other_legal_proceedings": "The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.", "no_response_filed": "NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.\r\n\r\nThe Complainant made the following contentions:\r\n \r\nThe Complainant argues that that the disputed domain name incorporates the Complainant’s trademark DANIEL WELLINGTON in its entirety adding the geographical identifier “us” for United States. The Complainant states that the geographical designation “us” does not prevent a finding of confusing similarity as the key element, DANIEL WELLINGTON, is reproduced in the disputed domain name. The gTLD .com should be disregarded for the purposes of comparison. The gTLD \".com\" is a mere technical requirement and does not affect the identity between a domain name and a trademark. The same reasoning applies in the present case and as such, the Complainant concludes that the first element of the UDRP is fulfilled.\r\n\r\nThe Complainant further contends that the Respondent has no right or legitimate interest in respect of the disputed domain name. In particular, the Complainant states that there is no bona fide offering of goods or services since the disputed domain name incorporates a trademark which is not owned by the Respondent, nor is the Respondent known by the name “Daniel Wellington”. The purpose of a domain name is to induce consumers into visiting the related website under the misapprehension that the website is, in this case, endorsed by the Complainant and\/or where the Complainant offers its watches. The disputed domain name resolves to a replica of the Complainant’s genuine website www.danielwellington.com. The website connected to the disputed domain name not only incorporates elements of the Complainant’s branding, i.e., the Complainant’s trademark, but it also offers for sale goods which are highly similar to the products offered by the Complainant on the genuine website www.danielwellington.com. The Respondent is using the disputed domain name with intent for commercial gain and misleadingly to divert consumers. This use is also intended to tarnish the trademark at hand. There is no evidence to suggest that there is due cause or legitimate interest in the use and registration of the disputed domain name. The Complainant then refers to a similar case decided by CAC (Case No. 102550 Daniel Wellington AB v. Zheng Zebiao). The Complainant goes on to conclude that there is nothing to show that the Respondent has any rights in the name DANIEL WELLINGTON and the website is clearly used for commercial purposes. Therefore, the Complainant believes it has succeeded to prove the second element of the Policy (as defined below).\r\n\r\nTurning to the bad faith argument, the Complainant asserts that the disputed domain name resolves to a website which flagrantly seeks to imitate that of the Complainant. The Complainant finds it clear that the Respondent registered the disputed domain name with full knowledge of the Complainant’s business. The behaviour of the Respondent is disrupting the business of the Complainant. The Respondent is purporting to be the Complainant and is on its website selling “Daniel Wellington”-branded products which are not authorized by the Complainant. The active business presence of the Complainant in Vietnam also makes it unlikely that the Respondent was unaware of the unlawful registration of the disputed domain name. It is evident from the screen shots that the Respondent registered the disputed domain name only due to its fame.\r\n\r\nThe Complainant adds that the submitted evidence demonstrates that the Respondent is not only using the Complainant’s trademark on the website but also displays the same look and feel as that of the Complainant’s website. The disputed domain name is used for a website similar to that of the Complainant and uses the Complainant’s trademark including the logotype. The pictures and the layout of the website clearly resemble that of the Complainant’s own main website.\r\n\r\nFinally, the Complainant points to the fact that the Respondent is using a privacy shield. Although use of a privacy or proxy registration service is not in itself an indication of bad faith, the manner in which such service is used can in certain circumstances constitute a factor indicating bad faith. The Complainant would like to emphasize that the reason for using a privacy service in this instance seems to have been to increase the difficulty for the Complainant of identifying the Respondent, which does not reflect good faith. Consequently, the Complainant argues that there is an increased risk of confusion as customers may more easily be confused or misled into believing that the disputed domain name and website belongs to or is associated with the Complainant. With all that in mind, the Complainant concludes that the Respondent should be considered to have registered and to be using the disputed domain name in bad faith. ", "rights": "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). ", "no_rights_or_legitimate_interests": "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). ", "bad_faith": "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). ", "procedural_factors": "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.\r\n\r\nThe Complainant requested that the language of the proceedings be changed from Vietnamese to English. The Rules (as defined below) provide that the language of proceedings is the language of the registration agreement (in this case, Vietnamese): “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative 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”.\r\n\r\nIn support of its request, the Complainant notes that its mark is well known internationally; that the Respondent will not suffer no prejudice if English is made the language of the proceedings if it will default in these proceedings; and that references to the English word “US\" for the United States in the domain name as well as certain element of images on the website in English suggest that the Respondent must be conversant in English language. The Complainant also makes the point that the proceedings would become inadequately costly and lengthy should they be conducted in Vietnamese.\r\n\r\nGiven that the Respondent has not submitted its Response and has not accessed the platform, it has failed to address the issue of language of proceedings. Upon query from the Panel, the CAC confirmed that it had notified the Complaint to the Respondent also in Vietnamese.\r\n\r\nTaking in consideration the facts of the matter as well as the Complainant’s arguments, and having regard to the principle of fairness, equality and efficiency of proceedings, the Panel has decided to accept the change of the language of the proceedings to English. Given the flagrant infringement of the Complainant’s various rights by imitating its website, given the use of English-worded trademark in the disputed domain name, given the use of English language elements on the website operated on the disputed domain, and given the fact that according to the CAC the Respondent received notification of the Complaint in the language of the registration agreement (i.e. Vietnamese), the Panel considers it justified to allow the change of language of proceedings to English. The Respondent was given fair opportunity to comment and it chose not to act.\r\n", "decision": "Accepted", "panelists": [ "Mgr. Vojtěch Chloupek" ], "date_of_panel_decision": "2020-09-25 00:00:00", "informal_english_translation": "The Complainant submitted evidence that it is the registered owner of the following registrations for the trademark \"DANIEL WELLINGTON\":\r\n\r\n- the international trademark registration No. 1135742 for word \"DANIEL WELLINGTON\", registered since 3 July 2012 for the classes 9, 14 and 35, designating numerous countries (including Vietnam); and\r\n\r\n- the international trademark registration No. 1260501 for device \"DW Daniel Wellington\", registered since 11 March 2015 for the classes 9, 14, 18, 25 and 35, designating numerous countries (including Vietnam).\r\n\r\nThe Complainant has also registered several domain names, under various top-level domains, containing the term \"danielwellington\" or its abbreviation \"dw\", for example (created on 16 February 2011); (created on 2 July 2015); (created 30 May 2013); and (created on 22 September 2016).", "decision_domains": { "DANIELWELLINGTONUS.COM": "TRANSFERRED" }, "panelist": null, "panellists_text": null }