DECISION

 

VNG Corporation v. hoang nguyen ngoc

Claim Number: FA2204001994163

 

PARTIES

Complainant is VNG Corporation (“Complainant”), Vietnam.  Respondent is hoang nguyen ngoc (“Respondent”), Vietnam.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <zalo.win>, registered with GoDaddy.com, LLC.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

The Honorable Neil Anthony Brown QC as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on April 28, 2022; the Forum received payment on April 28, 2022.

 

On April 28, 2022, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <zalo.win> domain name is registered with GoDaddy.com, LLC , that Respondent is the current registrant of the name and that the registration agreement is in the English language.  GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On April 29, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 19, 2022 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@zalo.win.  Also on April 29, 2022, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.

 

On May 25, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honorable Neil Anthony Brown QC as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant made the following contentions.

 

Complainant, VNG Corporation, offers various computer-related services. Complainant asserts rights in the ZALO mark based upon registration with multiple trademark authorities worldwide, including the United States Patent and Trademark Office (“USPTO”) (e.g., reg. no. 5,420,334, priority date Dec. 28, 2015). See Compl. P. 3. Respondent’s <zalo.win> domain name is confusingly similar to Complainant’s mark because it contains the ZALO mark in its entirety, merely adding the generic top-level domain (“gTLD”) “.win” to form the disputed domain name.

 

Respondent does not have rights or legitimate interests in the <zalo.win> domain name. Respondent is not licensed or authorized to use Complainant’s ZALO mark and is not commonly known by the disputed domain name.

 

Respondent registered and uses the <zalo.win> domain name in bad faith. Respondent uses the disputed domain name to host content that is illegal in its jurisdiction, namely gambling material. Respondent had actual or constructive knowledge of Complainant’s rights in the ZALO mark at the time of registration.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

1.    Complainant is a Vietnamese company that offers various computer-related services including the ZALO app which is the first and most successful instant messaging application developed by a Vietnamese company.

 

2.    Complainant has established its rights in the ZALO mark based upon registration of the mark with multiple trademark authorities worldwide, including the United States Patent and Trademark Office (“USPTO”) (e.g., reg. no. 5,420,334, priority date Dec. 28, 2015).

 

3.  Respondent registered the <zalo.win> domain name on November 15, 2021.

 

4.    Respondent uses the disputed domain name to host content that is illegal in its jurisdiction, namely gambling material.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

 

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1)  the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)  Respondent has no rights or legitimate interests in respect of the domain name; and

(3)  the domain name has been registered and is being used in bad faith.

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).

 

Identical and/or Confusingly Similar

The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the ZALO mark based upon registration of the mark with multiple trademark authorities worldwide, including the USPTO (e.g., reg. no. 5,420,334, priority date Dec. 28, 2015). See Compl. P. 3. Registration of a mark with multiple trademark agencies is sufficient to demonstrate rights to a mark per Policy ¶ 4(a)(i). See Bloomberg Finance L.P. v. Jimmy Yau, FA 1764034 (Forum Jan. 25, 2018) (“The Panel finds that complainant has rights in BLOOMBERG mark under Policy ¶ 4(a)(i) based upon its registration with multiple trademark agencies, including the USPTO.”); see also Astute, Inc. v. Raviprasath C / Astute Solution Pvt Ltd, FA 1546283 (Forum Apr. 9, 2014) (finding that registrations with two major trademark agencies is evidence enough of Policy ¶ 4(a)(i) rights in the ASTUTE SOLUTIONS mark.). Since Complainant has provided evidence of registration of the ZALO mark with the USPTO, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).

 

The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s ZALO mark. Complainant contends that Respondent’s <zalo.win> domain name is confusingly similar to Complainant’s mark because it contains the ZALO mark in its entirety, merely adding the gTLD “.win” to form the disputed domain name. When a respondent’s domain name incorporates a mark in its entirety and merely adds a gTLD, then a Panel may find that the disputed domain name is identical to Complainant’s mark See Cards Against Humanity, LLC v. sri winarti, FA 1736823 (Forum July 31, 2017) (“The Panel therefore finds Respondent’s <cardsagainsthumanity.us> to be identical to Complainant’s CARDS AGAINST HUMANITY mark.”); see also Porto Chico Stores, Inc. v. Zambon, D2000-1270 (WIPO Nov. 15, 2000) (stating that the panel should resolve whether a mark is identical or confusingly similar “by comparing the trademark and the disputed domain name, without regard to the circumstances under which either may be used”). Therefore, the Panel finds that the disputed domain name is identical to the ZALO mark under Policy ¶ 4(a)(i).

 

Complainant has thus made out the first of the three elements that it must establish.

 

Rights or Legitimate Interests

It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).

 

The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:

(a) Respondent has chosen to take Complainant’s ZALO mark and to use it in its domain name in its entirety;

(b) Respondent registered the <zalo.win> domain name on November 15, 2021;

(c)  Respondent uses the disputed domain name to host content that is illegal in its jurisdiction;

(d) Respondent has engaged in these activities without the consent or approval of Complainant;

(e) Complainant contends that Respondent does not have rights or legitimate interests in the <zalo.win> domain name because Respondent is not licensed or authorized to use Complainant’s ZALO mark and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The WHOIS information for the disputed domain name lists the registrant as “hoang nguyen ngoc.” See Registrar Verification Email. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii);

(f) the evidence is that Respondent uses the domain name to resolve to a website to host content that is illegal in its jurisdiction, namely gambling material. There is no way in which such conduct could give rise to a right or legitimate interest in the domain name on the part of Respondent.

 

All of these matters go to make out the prima facie case against Respondent.

 

As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.

 

Complainant has thus made out the second of the three elements that it must establish.

 

Registration and Use in Bad Faith

It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.

 

Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.

 

First, Complainant argues that Respondent registered and uses the <zalo.win> domain name in bad faith because Respondent uses the disputed domain name to host content that is illegal in its jurisdiction. Use of a disputed domain name to host material that is illegal or promotes illegal behavior constitutes bad faith. See Google Inc. v. Domain Admin, FA 1502001605239 (Forum Mar. 22, 2015) (finding that use of a disputed domain name to aid illegal activities under Complainant’s trademark suggests Respondent’s bad faith); see also Twitter, Inc. v. Alvaro Martins / Domaina Admin / Whois Privacy Corp., FA 1703001721606 (holding that use of the disputed domain name to offer instructions on how to hack a <twitter.com> account and offer hacking services is evidence of bad faith). To support this, Complainant has provided screenshots of the disputed domain name’s resolving webpage, showing its use in hosting gambling material. See Compl. Annex 2. Complainant asserts that gambling is illegal under the Penal Code of Vietnam. Therefore, as the Panel agrees, it finds Respondent registered and uses the disputed domain name in bad faith.

 

Secondly, Complainant contends that Respondent had actual or constructive knowledge of Complainant’s rights in the ZALO mark at the time of registration. The Panel will disregard arguments of bad faith based on constructive notice as prior UDRP decisions generally decline to find bad faith as a result of constructive knowledge. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). However, it is open to the Panel to determine, as Complainant submits, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name as actual knowledge can adequately demonstrate bad faith under Policy ¶ 4(a)(iii). See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”) see also iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). To support this submission, Complainant points to its trademark registrations, its commercial presence and reputation, and the mark’s distinctive nature. As such, the Panel finds that Respondent did have actual knowledge of Complainant’s right in its mark, which supports a finding of bad faith under Policy ¶ 4(a)(iii).

 

Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the ZALO mark and in view of the conduct that Respondent has engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.

 

Complainant has thus made out the third of the three elements that it must establish.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <zalo.win> domain name be TRANSFERRED from Respondent to Complainant.

 

 

The Honorable Neil Anthony Brown QC

Panelist

Dated:  May 30, 2022

 

 

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