{ "case_number": "CAC-UDRP-106960", "time_of_filling": "2024-10-21 13:19:20", "domain_names": [ "legrandvietnam.com" ], "case_administrator": " Iveta Špiclová (Czech Arbitration Court) (Case admin)", "complainant": [ "Legrand France" ], "complainant_representative": "Coöperatie SNB-REACT U.A.", "respondent": [ "Mr. Hung Manh Nguyen " ], "respondent_representative": null, "factual_background": "

The Complainant is a global specialist in electrical and digital building infrastructures, committed to fostering technological, societal, and environmental advancements worldwide. Founded in 1904 in France, the Complainant now operates in over 90 countries, employing more than 38,000 individuals globally. Present in Vietnam since 1994, the Complainant is recognized as a leading solution provider across all market segments in Vietnam, with two representative offices located in Ho Chi Minh City and Hanoi. All of the Complainant’s products are marketed under the renowned “LEGRAND” trademark, which is distributed in nearly 180 countries and widely acknowledged for its high quality and innovative features.<\/p>\n

The disputed domain name was registered on September 30, 2020. The website associated with the disputed domain name prominently displays a copy of the Complainant’s mark at the top and in other parts of the page. At the bottom of the page, the Respondent has included the designation “LEGRAND VIỆT NAM,” which is nearly identical to the trade name of the Complainant’s subsidiary in Vietnam, i.e.<\/em>, “CÔNG TY TNHH LEGRAND VIỆT NAM” (its English name being LEGRAND VIETNAM COMPANY LIMITED). Below this designation, the Vietnamese text is translated into English as: “Legrand is one of the world's leading corporations in the field of providing high-end electrical equipment and electronic switching equipment specialized for civil, industrial, and commercial markets.<\/em>”<\/p>", "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.<\/p>", "no_response_filed": "

COMPLAINANT:<\/p>\n

(i) The Complainant holds rights in the LEGRAND marks as detailed in the “Identification of Rights” section above. The disputed domain name is confusingly similar to the Complainant's LEGRAND mark, as it fully incorporates the Complainant’s mark with the mere addition of the geographic term “Vietnam.”<\/p>\n

(ii) The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is neither known, nor has ever been known, by the distinctive LEGRAND mark. The Respondent has not been authorized or licensed by the Complainant to register a domain name incorporating the LEGRAND mark or any confusingly similar variation thereof. Furthermore, the Respondent has not used, nor demonstrated preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. Instead, the disputed domain name resolves to a website that misrepresents itself as the Complainant or impersonates the Complainant by prominently displaying the Complainant’s marks and using the trade name of the Complainant’s subsidiary in Vietnam. Between May and September 2024, the Complainant’s representatives issued multiple takedown requests to the host, registrar of the domain name, and the WHOIS-listed e-mail address of the Respondent, as well as the e-mail address provided on the website associated with the disputed domain name. However, the Respondent has not provided any response or explanation for its choice of the disputed domain name. The website also lacks any form of disclaimer.<\/p>\n

(iii) The Respondent has registered and is using the disputed domain name in bad faith. The Respondent registered the disputed domain name with prior knowledge of the Complainant’s trademarks, deliberately targeting these marks. By prominently featuring the Complainant's visual marks “LEGRAND” on the website linked to the disputed domain name and including the designations “LEGRAND VIỆT NAM” and the statement “Legrand is one of the world's leading corporations in the field of providing high-end electrical equipment and electronic switching equipment specialized for civil, industrial, and commercial markets” in Vietnamese, the Respondent is passing off as or impersonating the Complainant. <\/p>\n

RESPONDENT:<\/p>\n

No administratively compliant Response has been filed.<\/p>", "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).<\/p>", "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).<\/p>", "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).<\/p>", "procedural_factors": "

Language of Proceedings<\/strong><\/p>\n

The Panel observes that the Registration Agreement for the disputed domain name is written in Vietnamese, which would typically make Vietnamese the language of the proceedings. However, the Complainant has requested that the proceedings be conducted in English. Pursuant to UDRP Rule 11(a), the Panel has the discretion to determine the appropriate language of the proceedings, taking into account the specific circumstances of the case. Reference is made to WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition<\/em>, Section 4.5, and Lovehoney Group Limited v. yan zhang<\/em>, CAC 103917 (CAC August 17, 2021), where the Panel found it appropriate to conduct proceedings in English under Rule 11, despite the Registration Agreement designating Japanese as the required language.<\/p>\n

The Complainant has provided compelling arguments in support of its request, asserting the following:<\/p>\n

    \n
  1. The disputed domain name is registered with “P.A. Viet Nam Company Limited,” whose Registration Agreement is available in both Vietnamese and English.<\/li>\n
  2. The disputed domain name incorporates the English-language trademark \"LEGRAND\" and the English word \"Vietnam.\" Additionally, the Registration Agreement references ICANN regulations regarding the “Rights and Responsibilities of gTLD Domain Name Registrants,” which are provided in English. This indicates that by registering the domain name through this registrar, the Respondent was likely aware of English-language provisions.<\/li>\n
  3. The Respondent has demonstrated a capacity to understand English. Although the website associated with the disputed domain name is primarily in Vietnamese, it includes various English terms. Moreover, the disputed domain name is registered in the international .com<\/em> zone, and English is commonly used in international business. English is also widely understood and used in Vietnam, where the Respondent is located.<\/li>\n
  4. Conducting the proceedings in Vietnamese would impose undue costs and delays on the Complainant, creating an unfair disadvantage by requiring the translation of the Complaint into Vietnamese.<\/li>\n<\/ol>\n

    The Panel finds the Complainant’s arguments persuasive. Given the circumstances of this case, including the absence of a Response from the Respondent and no objection to the Complainant's request, the Panel determines that the proceedings shall be conducted in English, in accordance with UDRP Rule 11(a).<\/p>\n

    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.<\/p>", "decision": "Accepted", "panelists": [ "Mr. Ho-Hyun Nahm Esq." ], "date_of_panel_decision": "2024-11-25 00:00:00", "informal_english_translation": "

    The Complainant has registered the “LEGRAND” trademark for a broad range of goods in numerous countries worldwide, including Vietnam. The “LEGRAND” trademark was initially registered in France for goods in Classes 6, 8, 9, and 17 under Registration No. 946593 on February 23, 1976. The Complainant holds ownership of the LEGRAND trademark through various international trademark registrations, inter alia<\/em>, as outlined below:<\/p>\n

      \n
    • Mark: LEGRAND (wordmark<\/em>): Registration No. 425730, registered on August 16, 1976.<\/li>\n
    • Mark: LEGRAND (semifigurative mark<\/em>): Registration No. 510016, registered on August 11, 1986.<\/li>\n<\/ul>\n

      The Complainant has operated its official domain name, <legrand.com>, since December 22, 1995.<\/p>", "decision_domains": { "legrandvietnam.com": "TRANSFERRED" }, "panelist": null, "panellists_text": null }