Decisión del Panel Administrativo nº D2019-2224 of WIPO Arbitration and Mediation Center, November 28, 2019 (case Sika AG v. Gia Nhu, Cong Ty Co Phan Truyen Thong Suc Manh Viet)
Resolution Date | November 28, 2019 |
Issuing Organization | WIPO Arbitration and Mediation Center |
Decision | Transfer |
Dominio | Generic Domains |
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.
The disputed domain name [sikavietnam.net] (the “Disputed Domain Name”) is registered with Nhan Hoa Software Company Ltd. (the “Registrar”).
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.
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.
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...
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