VisaHQ.com. Inc. v. Chau Tran / Vietnam Visa HQ
Claim Number: FA1607001683085
Complainant is VisaHQ.com. Inc. (“Complainant”), represented by Anna B. Naydonov of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., Washington D.C., United States. Respondent is Chau Tran / Vietnam Visa HQ (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vietnamvisahq.com>, registered with GoDaddy.com, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 8, 2016; the Forum received payment on July 8, 2016.
On July 11, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <vietnamvisahq.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 July 12, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 1, 2016 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@vietnamvisahq.com. Also on July 12, 2016, 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 August 9, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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.
Complainant requests the domain name be transferred from Respondent to Complainant.
A. Complainant
FACTUAL AND LEGAL GROUNDS
A. BACKGROUND FACTS
a) Complainant And Its Services
1. VisaHQ pioneered online passport and visa services. Starting in 2002, VisaHQ developed several websites, including <visahq.com>, to provide travel solutions for obtaining business and recreational travel visas for Eastern European nations.
2. Today, VisaHQ provides visa and passport services for travelers and countries all over the world.
3. Since launching <visahq.com> in 2003, VisaHQ has expanded its market presence both in the United States and internationally.
a. In 2004, VisaHQ moved its headquarters to Embassy Row in Washington, DC. This strategic location provides easy access to consular offices and embassies, and has enabled VisaHQ to forge alliances with diplomatic staff from around the world. In March 2012, VisaHQ opened an office on Fifth Avenue in the heart of Manhattan. In October 2014, it opened a branch in Los Angeles, California.
b. In September 2008, VisaHQ announced its international expansion with the opening of a new office in Ottowa, Canada. In November 2010, it changed its location to the prestigious financial district of downtown Ottowa on Bank Street, and in May 2013, VisaHQ extended its Canadian presence by opening two new offices in Toronto and Vancouver.
c. In July 2010, VisaHQ launched an office in London, England as well as a new website at <visahq.co.uk>.
d. In February 2014, VisaHQ expanded into the Middle Eastern market with office openings in Dubai and Abu Dhabi.
e. In July 2015, VisaHQ opened offices in Frankfurt and New Delhi.
f. Most recently, VisaHQ has focused on expanding its market presence to the Asia-Pacific region, by, among other things, obtaining a trademark registration for its VISAHQ Marks in China and opening an office in Indonesia in March 2016.
4. Today, VisaHQ is a leading provider of cutting-edge technology solutions for travelers, offering online visa and passport solutions that enable both United States and international travelers to apply online for visas to virtually any country in the world simply by filling out one universal, 100% paperless electronic form. VisaHQ also offers access to the world’s most comprehensive visa requirements database, a customs regulation database, and the largest online directory of embassy and consulate contact information.
5. VisaHQ advertises its services online at <visahq.com> as well as on social media. VisaHQ’s Facebook page has 51,255 followers and it has 700 followers on LinkedIn.
6. In addition to its own advertising and promotional activities, VisaHQ has received a significant amount of unsolicited worldwide media coverage.
a. In 2011, VisaHQ was added to the Inc. 5000 as #1 in Travel for the DC area, as well as #19 for Travel Nationwide in the U.S. VisaHQ was listed as #2645 overall amongst the 5000 cutting-edge, innovative companies that made this prestigious list.
b. In September 2012, the Inc 500 magazine awarded its second “Top 25” travel industry ranking to VisaHQ.
c. VisaHQ has been featured in major U.S. newspapers and news outlets, such as The Washington Post, the Chicago Tribune, Business Insider, The Huffington Post, Fox News, and NBC News.
d. VisaHQ has been featured in online news outlets aimed at Southeast Asia.
7. VisaHQ offers services directed to travel all over Southeast Asia, including Vietnam at https://vietnam.visahq.com.
b) Complainant’s Trademark Holdings
8. Complainant’s rights in the inherently distinctive VISAHQ Marks are based on its common law rights acquired through the substantial and continuous use of the VISAHQ Marks by Complainant since at least as early as October 9, 2004, and on Complainant’s trademark registrations.
9. Complainant owns trademark registrations for the VISAHQ Marks in multiple jurisdictions around the world, including the following U.S. trademark registrations (both of which are incontestable):
i. U.S. Registration No. 3,165,127 for the mark VISAHQ; filed Nov. 23, 2005; issued Oct. 31, 2006; covering services in International Class 39 (“Arranging for travel visas, passports and travel documents for persons traveling abroad.”); asserting a first use in commerce Oct. 9, 2004;
ii. U.S. Registration No. 3,384,865 for the mark VISAHQ.COM; filed June 25, 2007; issued Feb. 19, 2008; covering services in International Class 39 (“Arranging for travel visas, passports and travel documents for persons traveling abroad”); asserting a first use in commerce Oct. 9, 2004.
10. Complainant’s incontestable registrations for the VISAHQ Marks on the Principal Register constitute “conclusive” evidence of the validity of the VISAHQ Marks and Complainant’s exclusive rights to use the VISAHQ Marks throughout the United States. (15 U.S.C. § 1115(b)).
11. Registration certificates for Complainant’s trademark registrations in various jurisdictions including Asia (in China) are also attached.
c) Respondent’s Infringing Activities And Bad-Faith Acts
12. Respondent registered the Domain Name on October 17, 2014. Complainant’s research has not found any indication that this Domain Name resolved to a functional website any earlier than March 29, 2016. Therefore, Complainant’s trademark rights in the VISAHQ Marks, based on its trademark registrations in different countries, predate Respondent’s registration of the Domain Name. Complainant’s trademark rights in the VISAHQ Marks, based on its U.S. trademark registrations and its common-law rights acquired through the use of the VISAHQ Marks, predate Respondent’s registration of the Domain Name by almost a decade. Further, before Respondent registered the Domain Name and certainly before Respondent launched its website, Complainant had established an international market presence and was offering its services to users traveling to Vietnam (among numerous other countries around the world).
13. The Domain Name resolves to a website that incorporates the entirety of Complainant’s VISAHQ Marks, impersonates Complainant (by using a similar website layout and a promotional/educational video on the homepage strikingly similar to Complainant’s proprietary video), and offers services almost identical to those offered by Complainant (except that Respondent’s services specifically focus on travel to Vietnam). Respondent’s services are directed specifically to the United States market and consumers because the website is in English and recommends payment in United States dollars.
14. Respondent’s website uses Complainant’s Marks and targets Complainant’s services. The Domain Name website displays the VISAHQ mark prominently at the top of the home page, the VISAHQ.COM mark prominently within the body of the home page, and highlights in red a tab for Respondent’s “ONLINE APPLICATION.”
15. Further demonstrating Respondent’s knowledge of Complainant’s services as well as its intent to falsely suggest an association with Complainant, Respondent’s website provides a short video on its home page that explains the differences between applying for visas using Respondent’s services versus doing it yourself. The content of Respondent’s video has been copied from a strikingly similar proprietary video provided on Complainant’s website that explains the differences between applying for visas using Complainant’s services versus doing it yourself. That Respondent used Complainant’s video to create its own is evidenced by the fact that Complainant’s video was available on the day Respondent registered the Domain Name. Also, both videos are animated. In addition to the similar subject matter of the two videos, Respondent’s video incorporates other similar elements from Complainant’s proprietary video, enumerated in the Complaint at the table in ¶ 15. See Case File.
16. Like Complainant’s website, Respondent’s website states it has received unsolicited media attention. Respondent lists such news outlets as Tripadvisor, Lonely Planet, TimeOut Dubai, USA Today, and The New York Times. However, unlike Complainant’s website, Respondent’s listings do not link to the purported articles. Complainant has been unable to find any evidence that these news outlets have ever discussed or reported on Respondent’s services.
17. Respondent also uses Complainant’s VISAHQ Marks on social media sites such as Facebook. Respondent created a page under VisaHQ’s name and mark “Vietnam Visa HQ.” This name is misleading given VisaHQ’s substantial presence on Facebook.
18. By making infringing use of the VISAHQ Marks—both in the Domain Name and on Respondent’s website and social media profile—Respondent intentionally holds itself out as associated or affiliated with VisaHQ, as well as falsely implies a relationship or connection with VisaHQ that does not exist.
19. Further, the WHOIS record for the Domain Name currently lists the “Registrant Organization” contact as “Vietnam Visa HQ.” For the following reasons, Complainant asserts that Vietnam Visa HQ is not an actual business entity and that Respondent’s registration information is therefore false:
a. Complainant has been unable to find any evidence that “Vietnam Visa HQ” is an actual registered company anywhere in the world.
b. When Respondent first registered the Domain Name in October 2014, it listed the “Registrant Organization” as Viet Value Travel Co., Ltd. Respondent did not change the WHOIS “Registrant Organization” to Vietnam Visa HQ until May 31, 2016.
c. Respondent’s webpage states that Vietnam Visa HQ is “[a] property of Vietnam Gecko JSC” and provides a company registration number “0106483404.” This company registration number appears to be the registration number for Vietnam Gecko JSC, not Vietnam Visa HQ. The website <instantvietnamvisa.com>, similarly states that Instant Vietnam Visa is a property of Gecko Vietnam JSC and provides the identical company registration number. Further, the company registration number for Gecko Vietnam, JSC, according to a Vietnamese business registration database, is 0106483406, and Respondent (“Tràn Minh Châu”) is listed as the company representative.
d. Whether the company registration number provided on the <vietnamvisahq.com> website is a typo or a deliberate error meant to obfuscate the actual company in charge, Complainant believes that the company Vietnam Visa HQ is not an actual business entity.
B. LEGAL GROUNDS
a) The Domain Name Is Confusingly Similar To Complainant’s Marks
20. The domain name <vietnamvisahq.com> is confusingly similar to Complainant’s VISAHQ Marks because it is virtually identical to Complainant’s VISAHQ Marks. The Domain Name comprises Complainant’s VISAHQ.COM mark in its entirety, adding only the geographic term “Vietnam.” Such a change is not sufficient to distinguish the Domain Name from Complainant’s VISAHQ Mark, which is the distinctive component of the Domain Name. UDRP panels have consistently held that the addition of a geographic term is inconsequential when conducting an analysis of confusing similarity. See, e.g., H-D U.S.A., LLC v. Yuusuke Asano, Case No. FA1603001666192 (NAF Apr. 27, 2016) (finding <harley-japan.net> confusingly similar to the HARLEY mark because “[p]revious panels have held that adding a gTLD, hyphen, and geographic term is insufficient to differentiate a domain from a mark to which the additions are attached”); Capital One Financial Corp. v. Yuwei Chen, Case No. FA1602001659662 (NAF Mar. 24, 2016) (finding <asiacapitalone.com> confusingly similar to CAPITAL ONE mark because the addition of a geographic term and a generic gTLD was insufficient to distinguish the domain); Google Inc. v. Md. Ashfak Ahmed Khan, Case No. FA1602001661652 (NAF Mar. 21, 2016) (finding <nexususa.mobi> confusingly similar to the NEXUS mark); Diners Club Int’l Ltd. v. Steve Bateman, Case No. FA1601001658326 (NAF Feb. 29, 2016) (finding <usadinersclub.com> confusingly similar to DINERS CLUB mark); Institute for Human Rights and Business, Ltd. v. Eustace Onuegbu, Case No. FA1509001639399 (NAF Nov. 9, 2015) (“The Domain Name comprises Complainant’s IHRB mark together with the geographic identifier ‘Africa’ and the inconsequential gTLD ‘.org.’ Panels have agreed that such additions fail to distinguish a disputed domain name from a mark in which a complainant has established rights.”); Hess Corp. v. GR, Case No. FA0608000770909 (NAF Sept. 19, 2006) (finding <hess- uk.com> confusingly similar to the HESS mark, because the addition of “uk” and a hyphen failed to sufficiently differentiate the disputed domain name from the registered mark).
b) Respondent Has No Rights Or Legitimate Interest In The Domain Name
21. Respondent has no rights or legitimate interest in the Domain Name for the following reasons.
22. First, Respondent has chosen a domain name that is confusingly similar to Complainant’s Marks to redirect users to its website for services that directly compete with those offered by Complainant for Respondent’s own commercial gain. Numerous Panel decisions have held that such uses of a domain name do not constitute a bona fide offering of goods or services, and do not constitute fair use under the UDRP. See, e.g., Institute for Human Rights and Business, Ltd. v. Eustace Onuegbu, Case No. FA1509001639399 (NAF Nov. 9, 2015) (“[T]he Panel finds that the use by Respondent of the Domain Name in competition with Complainant for funds, with knowledge of Complainant and its IHRB mark and of the Domain Name’s confusing similarity to Complainant’s mark is not a bona fide offering of goods or services under Policy ¶4(c)(i). Further, that such use is not a legitimate non-commercial or fair use of the Domain Name under Policy ¶4(c)(iii).”); Avaya Inc. v. Holdcom, Case No. FA0806001210545 (NAF Aug. 19, 2008) (use of a domain name that is confusingly similar to complainant’s mark to redirect Internet users to a competing business is not a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii)); Morgan Stanley v. Albert Jackson, Case No. FA0403000244092 (NAF Apr. 19, 2004) (“Respondent has registered a domain name, which is confusingly similar to Complainant’s MORGAN STANLEY DEAN WITTER mark, to host a website that offers services that compete with those offered by Complainant under its mark. Such use has consistently been found not to be a bona fide offering of goods or services pursuant to Policy ¶4(c)(i), nor is such use a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”); Samsonite Corporation v. Scholarcraft Commercial Furniture, Case No. FA0404000250235 (NAF May 21, 2004) (“Respondent and Complainant both sell furniture and the Panel is permitted to presume that Respondent is a competitor of Complainant and that Respondent incorporated its competitor’s trademark, namely SAMSONITE, to market Respondent’s competing goods. Such use is not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) and it is not a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”).
23. Nor can Respondent argue that its use of “VISA HQ” constitutes fair use. First, Complainant’s VISAHQ mark is an inherently distinctive, immediately protectable mark. Second, Complainant’s VISAHQ marks have acquired marketplace distinctiveness through over a decade of substantial commercial success, promotion, international expansion, and publicity. Third, Complainant’s VISAHQ mark is the subject of incontestable U.S. trademark registrations (i.e., the mark cannot be attacked on descriptiveness grounds). Complainant is not seeking to prevent Respondent’s non-trademark uses of the terms “travel visas”/ “visas” to describe its travel services, but rather Respondent’s blatant copying of the entirety of the VISAHQ brand for commercial gain. Respondent’s meticulous copying of many aspects of Complainant’s branding (in addition to the VISAHQ mark) shows that Respondent seeks to capitalize on the goodwill and name of Complainant. As illustrated above, Respondent’s services not only directly compete with Complainant’s services, but Respondent’s website incorporates elements of Complainant’s website (e.g., the animated video) that, in addition to other evidence, demonstrate Respondent’s knowledge of Complainant’s business and Respondent’s intent to take advantage of the domain name’s association with Complainant’s name and Marks. See Metropolitan Life Ins. Co. v. Interpress Inc., Case No. FA1109001409082 (Nov. 22, 2011) (“[T]he Panel believes that Respondent is using the disputed domain name to unfairly trade on Complainant’s METROPOITAN [sic] mark rather than to provide goods or services related to the plain meaning of the name’s descriptive terms. Thus, the Panel finds that Respondent’s use of the disputed domain name, which furnishes links to the websites of Complainant’s competitors, is not ‘a bona fide offering of goods or services’ per Policy paragraph 4(c)(i).”); Gibson, LLC v. Jeanette Valencia, Case No. D2010-0490 (WIPO May 22, 2010) (“Respondent claims that the term ‘Modern Cowgirl’ is a descriptive term and therefore that she has a legitimate interest in using this descriptive term for her website. Although that assertion might be accurate with respect to a website that blogs about modern cowgirls, it is not true with respect to the portion of the site that advertised the sale of goods under a name that infringes Complainant’s registered trademark. A trademarked descriptive term may be used for its descriptive value, but it is not legitimate to use the term ‘because of its value as a trademark.’”).
24. In addition, Respondent is not commonly known by the Domain Name, and Complainant has not authorized it to use the VISAHQ Marks. Though the WHOIS record for the Domain Name lists the “Registrant Organization” as “Vietnam Visa HQ,” Complainant has been unable to find any evidence that Respondent was known by this name prior to March/May 2016 or that this company actually exists. No outside evidence in the record suggests any association between Respondent and the “Vietnam Visa HQ” name beyond Registrant’s own self-serving association. See Institute for Human Rights and Business, Ltd. v. Eustace Onuegbu, Case No. FA1509001639399 (NAF Nov. 9, 2015) (finding no rights or legitimate interests in the domain name where “Respondent says it is registered in Gambia and has been in operation for less than one year. There is no evidence under Policy ¶4(c)(ii) that, prior to the registration of the Domain Name, Respondent was commonly known by the Domain Name.”); Chevron Intellectual Property LLC v. Phillip Thomas/Chevron Pacific, Case No. FA1504001615524 (NAF May 29, 2015) (where, among other things, the respondent registered the domain name <chevronpacificep.com> under the false name “Chevron Pacific,” the panel found “Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name”); Giant Eagle, Inc. v. Giant Eagle/Giant Eagle Inc., Case No. FA1410001586562 (NAF Dec. 6, 2014) (“The WHOIS information lists ‘Giant Eagle’ of ‘Giant Eagle Inc’ as the registrant. Nevertheless, there is no evidence of any outside association between Respondent and the ‘Giant Eagle Inc’ name beyond Respondent’s own self-serving association. Accordingly, the Panel holds that Respondent is not commonly known by the gianteagleinc.com> name pursuant to Policy ¶4(c)(ii).”); AOL LLC v. AIM Profiles, Case No. FA0704000964479 (NAF May 20, 2007) (no legitimate rights or interests in the domain name <aimprofiles.com> where, although respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name).
c) Respondent’s Bad Faith Under Section 4(b) Of The UDRP
25. Respondent’s registration and use of the Domain Name meet the grounds of bad faith outlined in the UDRP, as well as additional grounds of bad faith defined in previous UDRP decisions.
26. First, Respondent’s registration and use of the Domain Name meet the bad-faith element set forth in Section 4(b)(iv) of the UDRP. Specifically, Respondent intentionally selected, registered, and is using the Domain Name to attract internet users to its website for commercial gain by engendering confusion and mistake with Complainant and its VISAHQ Marks and name as to the source, sponsorship, affiliation, connection, and/or endorsement of Respondent’s services. Respondent’s website increases the confusion by incorporating the Marks on the website and by incorporating elements taken from Complainant’s website (including the video). Respondent’s intent is also evidenced by the fact that the Domain Name takes advantage of the fact that Complainant’s services directed to Vietnam are offered at the almost identical URL “vietnam.visahq.com.” Users seeking Complainant may inadvertently type Complainant’s URL incorrectly and arrive at Respondent’s website. Further, Respondent exploits the confusion with Complainant’s Marks to offer services that directly compete with Complainant’s. UDRP Panels have consistently held that such activities constitute bad faith. See MathForum.com, LLC v. Weiguang Huang, Case No. D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark); H-D Michigan LLC v. Nathan Bingham, Case No. FA0902001248203 (NAF Apr. 8, 2009) (“In this case, Respondent’s registration and use of the Domain Name meets the bad-faith element set forth in Section 4(b)(iv) of the Policy. Specifically, Respondent uses the Domain Name to intentionally attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with Complainant and its HARLEY-DAVIDSON mark as to the source, sponsorship, affiliation, and/or endorsement of Respondent’s website, and the competing motorcycle rental services advertised on Respondent’s website.”); Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. ICN-Toshiba, Case No. D2004-0941 (WIPO Dec. 28, 2004) (“The [r]espondent’s use of the disputed domain name has all the hallmarks of bad faith. The incorporation of the trademark in the domain name, the use of the mark on the website and the website layout similar to Toshiba’s authorized websites, the use of the business name, are together calculated to create confusion or deception as to the existence of some connection by way of sponsorship, endorsement, sanction or control between the Complainant and the website to which the disputed domain name resolves (see Paragraph 4(b)(iv) of the Policy)”).
27. Second, Respondent’s registration and use of the Domain Name constitute bad faith under Section 4(b)(iii) of the UDRP because Respondent has disrupted Complainant’s business by using the Domain Name for a website that offers services that compete with Complainant. See Vanguard Trademark Holdings USA LLC v. Warren Lee Adams, Case No. FA1604001671754 (NAF May 25, 2016) (“Complainant argues that Respondent’s registration and use of the <drivehappymotors.com> domain name serves as a disruption of Complainant’s legitimate business purposes pursuant to Policy ¶4(b)(iii) because Respondent is using the domain name to offer services that compete with Complainant. Panels have found a respondent’s diversion of a complainant’s customers to its competing business to constitute bad faith disruption under Policy ¶4(b)(iii).”); ABS-CBN Int’l v. Daryl Untalan, Case No.
FA1604001671368 (NAF May 23, 2016) (“Respondent is acting as a competitor of Complainant because Respondent is replaying Complainant’s video content without authorization.
Respondent’s use of Complainant’s TFC mark diverts Complainant’s customers to Respondent’s competing website in bad faith under Policy ¶4(b)(iii).”); OneWest Bank, N.A. v. Matthew Foglia, Case No. FA1503001611449 (NAF Apr. 26, 2015) (“Respondent uses the at-issue domain name to direct Internet users to a website which competes with Complainant. Using the domain name in this manner disrupts Complainant’s business and demonstrates Respondent’s bad faith pursuant to Policy ¶4(b)(iii).”).
28. Third, to the extent the company name “Vietnam Visa HQ” is only an unregistered company and Vietnam Gecko JSC (or Gecko Vietnam JSC) is the actual company in control, Respondent’s registration and use of the Domain Name constitute bad faith under the UDRP because Respondent has provided false registration information on its WHOIS records. See j2 Global Canada, Inc. and Landslide Technologies, Inc. v. Vijay S Kumar/Strategic Outsourcing Services Pvt Ltd, Case No. FA1411001647718 (NAF Jan. 4, 2016) (“False or misleading contact information indicates bad faith registration and use.”); Chevron Intellectual Property LLC v. Phillip Thomas/Chevron Pacific, Case No. FA1504001615524 (NAF May 29, 2015) (“Complainant’s use of false registration data and its unexplained redirection of the disputed domain name to Complainant’s own website are further indications of such bad faith.”); McDonald’s Corp. v. Holy See, Case No. FA0304000155458 (NAF June 27, 2003) (“The Panel finds that Respondent provided false contact information in the registration certificates and that such actions, even though not specifically enumerated in the Policy, may form the basis for a finding of bad faith registration and use.”); Mars, Incorporated v. RaveClub Berlin, Case No. FA0106000097361 (NAF July 16, 2001) (providing false registration and contact information for infringing domain names evidenced Respondent’s bad faith); Home Director, Inc. v. HomeDirector, Case No. D2000-0111, (WIPO Apr. 11, 2000) (same).
29. Fourth, Respondent registered the Domain Name in October 2014, but does not appear to have used it for an active website until March 2016. Respondent’s passive holding, coupled with the Respondent’s knowledge of Complainant’s trademark rights constitutes bad faith use and registration. See Beat the Bookstore, LLC v. May Enterprise, Case No. 0510000589501 (NAF Dec. 19, 2005) (“Various panels, including this one, have held that passive holding, coupled with a respondent’s knowledge of trademark rights of a complainant in the name being so held -- as is clearly the case here, can amount to bad faith use under paragraph 4(a)(iii) of the Policy.”) (citing cases).
30. Finally, given Complainant’s federal registrations of its VISAHQ Marks, Complainant’s world-wide presence, Complainant’s long-standing use of the VISAHQ Marks, the fact that Respondent’s website incorporates so many similar elements as Complainant’s website (including an animated video that contains similar content), and the fact that the Domain Name comprises Complainant’s VISAHQ.COM mark in its entirety, Respondent undoubtedly knew of Complainant’s rights in the VISAHQ Marks prior to registering the Domain Name. By registering the Domain Name with knowledge of Complainant’s rights in the VISAHQ Marks, Respondent acted in bad faith. See Church Mutual Ins. Co. v. Paul Looney, Case No. FA1603001668317 (NAF May 17, 2016) (“Due to: (1) Complainant’s federal registrations (2) fame of the CHURCH MUTUAL mark (3) Complainant’s use of the mark (4) the domain name being confusingly similar to the CHURCH MUTUAL mark, and (5) Respondent impersonating Complainant through the disputed domain name, Respondent had actual knowledge of Complainant’s rights in the mark when Respondent registered the disputed domain
name. Therefore, Respondent registered the <churchrnutual.com> domain name in bad faith under Policy ¶4(a)(iii).”); OneWest Bank, FSB v. One West Capital a/k/a Andrew Mason, Case No. FA11112001420470 (NAF Jan. 31, 2012) (holding respondent registered the domain name
<onewestcapital.com> in bad faith with knowledge of Complainant’s ONEWEST Marks because the string ONEWEST is “somewhat unique” and the term “capital” in the domain name is suggestive of Complainant’s banking business); Academy of Country Music v. Pablo Palermo, Case No D2008-0818 (WIPO July 28, 2008) (finding bad faith registration where “[t]he domain name at issue, <acmawards.com>, includes Complainant’s trade mark ACM and consists of Complainant’s trade mark ACM AWARDS in combination with the generic top level domain descriptor ‘.com’. It is difficult to conceive how Respondent could have created the domain name in dispute without prior knowledge of Complainant’s trademarks ACM and ACM AWARDS.”); Apple Computer, Inc. v. Tim Lackey, Case No. DME2014-0001 (WIPO Apr. 6, 2014) (“The APPLE Marks were well-known and famous at the time Respondent registered the Domain Name incorporating the APPLE trademark. The Domain Name appears to have been chosen by Respondent for its specific reference to Complainant and its APPLE Marks and ‘My Apple ID’ services. The ‘myappleid’ string is quite distinctive and there is no other plausible reason for why Respondent would have chosen it, other than targeting Complainant.”).
B. Respondent
Respondent failed to submit a Response in this proceeding. However, Respondent submitted a number of non-conforming emails (meaning they don’t constitute an answer), such as:
“Hi,
Firstly, HQ in visa HQ is the abbreviation of Headquarter then any one can use it.
We did not register a domain such as VisaHQ.net or VisaHQ.org or smth like that.
We provide a visa on arrival Vietnam then we use “Vietnam” on our domain name Vietnamvisahq.com
I received the warning email for domain dispute few week ago and i thought that it’s a spam and did not respond it.
How about visa.com and visahq.com? visaHQ can use "visa" as a domain name of visa card and they use HQ for Headquarter as well.
What’s the different in this case?
I believe that we can use domain name of Vietnamvisahq.com is this case.”
and
“Hi,
Actually, i used this domain for last 02 years and we offer a Vietnam visa on arrival service.
When we register a company name, there are many name such as Hanoivisahq, Saigonvisahq…
That is the reason why we have to chose Vietnamvisahq.
We also provide Vietnam visa service then we are not allow to use “Vietnam” and “Visa” on our website name?
We also has a headquarter in Vietnam then we can not use “HQ” on our website name?
So many famous site out there that use the same part of name.
We appreciate for your consideration so that we can keep using our domain name.
We used it for last 02 years and tried our best to build a website as well as online marketing, SEO service….”
C. Additional Submissions
While Complainant did not submit an additional submission, it submitted an email that read:
“Dear Panelist / NAF,
On August 9, 2016, the Forum issued a letter to the parties noting that Respondent had failed to file a formal response to VisaHQ’s complaint. Because Respondent did not file a response, complainant filed no additional submissions under Forum Supp. Rule 7(a).
Respondent’s failure constitutes a technical default and the Panel may take this fact as evidence against Respondent. See Rule 14(b) (“If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.”); see also Junk My Car, LLC v. Chesly Cherizol, Case No. FA0901001245300 (NAF Mar. 18, 2009) (the fact that respondent did not submit “any kind of substantial response to the Complainant, according to Paragraph 14(b) of The Rules, constitutes a technical default, which allows the Panelist to take such fact as evidence against the party in default, i.e., the Respondent.”); President Casinos, Inc. v. Holger Aulenbach d/b/a DiamantClub Ltd., Case No. FA0405000271202 (NAF July 13, 2004) (“The fact that Respondent submitted the Response after the deadline, according to Paragraph 14(b) of the Rules, constitutes a technical default, which allows the Panel to take such fact as evidence against the party in default, i.e., Respondent.”); Australia and New Zealand Banking Group Limited v. kashala / satish more, Case No. FA1201001427043 (NAF March 12, 2012) (“As a result of Respondent’s absence of reply to the allegations, the Panel may draw the inference that Respondent lacks rights or legitimate interests in the disputed domain name.”).
If the Panel chooses to consider arguments that go to the merits of this case raised in Respondent’s email, Complainant makes the following rebuttal points.
First, Respondent asserts there are many names such as Hanoivisahq and Saigonvisahq and others that use Complainant’s mark. Tellingly, respondent provides no evidence supporting this assertion. In fact, the <hanoivisahq.com> and <saigonvisahq.com> domain names are not registered and do not resolve to an active website.
Second, even if these domains were registered and active, that alone would not demonstrate Respondent’s good faith registration and use. To the extent Respondent suggests its use of the Domain Name is merely descriptive, Complainant has already made clear why the fair use defense does not apply here. VISAHQ is a valuable trademark, which is the subject of incontestable trademark registrations in the U.S. (and registrations in other countries) and which has acquired substantial marketplace distinctiveness. Even if Complainant’s mark had descriptive value, Respondent’s use of the domain name shows his intent was not to exploit this descriptive value, but rather its value as a trademark. St. Andrews Links Ltd. v. Refresh Design, Case No. D2009-0601 (WIPO June 22, 2009) (“If instead and notwithstanding a potential generic use, the intention was to take advantage of a domain name’s association with the business of another, then there will not be a legitimate interest (see WIPO Overview paragraph 2.2). . . . Given [the panel’s bad faith] finding it does not matter if the Respondent can show that it has engaged in demonstrable preparations to use the Domain Name for an offering of services. If the intention was to do that through a domain name that sought to take advantage of associations with the Complainant that is not a bona fide offer of services for the purposes of the Policy.”); HSBC Finance. Corporation v. Clear Blue Sky Inc. and Domain Manager, Case No. D2007-0062 (WIPO June 4, 2007) (“[T]he domain name must have been registered because of, and any use consistent with, its attraction as a dictionary word or descriptive term, and not because of its value as a trademark.”).
Thank you for your consideration.”
The Panel notes the submissions, notes they are non-conforming to the rules and elects to ignore all of them for that reason. The fact Respondent tries to negotiate its position is meaningless without a formal submission.
(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.
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant uses the VISAHQ mark in connection with its business of providing visa and passport services for travelers to countries all over the world. Complainant registered the VISAHQ mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,165,127, registered Oct. 31, 2006). Registration of a trademark with a governmental authority (such as the USPTO) adequately demonstrates Complainant’s trademark rights under Policy ¶4(a)(i). Complainant is not required to prove rights (much less superior rights) in Respondent’s home country; merely that Complainant has some rights somewhere. See Homer TLC, Inc. v. Artem Ponomarev, FA 1623825 (Forum July 20, 2015) (finding Policy ¶4(a)(i) rights “without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or operates (here Russia).”). Complainant has established rights in the VISAHQ mark under Policy ¶4(a)(i).
While Respondent appears to claim Complainant’s mark is generic, this Panel will not (and should not) second guess a mark registered by a governmental authority.
Complainant claims Respondent’s <vietnamvisahq.com> domain is confusingly similar to the VISAHQ mark because it incorporates the mark in its entirety, merely adding the geographic term “Vietnam.” The domain includes the generic top-level domain (“gTLD”) “.com.” A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. Adding a geographical descriptor does not adequately distinguish a domain name from a mark in the same channel of commerce under a Policy ¶ 4(a)(i) analysis. See Avaya Inc. v. Evelyn Dayda / Avaya Unlimited Sources LLC, FA 1611255 (Forum May 4, 2015) (finding that as “the ‘usa’ portion of the disputed domain name is a generic geographic term, the internet user will assume that the domain name deals with the activities of Complainant in the USA and that it will lead to a website dealing with that subject. The domain name is therefore confusingly similar to the AVAYA mark and the Panel so finds.”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Respondent’s <vietnamvisahq.com> domain name is confusingly similar to Complainant’s VISAHQ mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case 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 has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant claims Respondent has no rights or legitimate interests in the <vietnamvisahq.com> domain name. Respondent is not commonly known by the disputed domain name. The WHOIS information lists “Chau Tran / Vietnam Visa HQ” as registrant of record. Respondent has not provided any affirmative evidence Respondent is commonly known by the disputed domain name. It appears there is no such entity as “Vietnam Visa HQ,” even though it was disclosed as the registrant. Respondent has not explained this conundrum and elected to have this Proceeding proceed on a default basis. In light of the record, there is no evidence which would support a conclusion Respondent is commonly known by the disputed domain name under Policy ¶4(c)(ii). 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); see also Google Inc. v. S S / Google International, FA1506001625742 (Forum Aug. 4, 2015) (“Respondent did identify itself as ‘Google International’ in connection with its registration of the Disputed Domain Name, and this is reflected in the WHOIS information. However, Respondent has not provided affirmative evidence from which the Panel can conclude that Respondent was commonly known by the Disputed Domain Name before Respondent’s registration thereof.”). Therefore, this Panel concludes Respondent has no rights or legitimate interests in the <vietnamvisahq.com> domain name.
Complainant claims Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the <vietnamvisahq.com> domain name. The domain name resolves to an active website prominently displaying the VISAHQ mark (with a space inserted), and offering services almost identical to those offered by Complainant. Such a competitive use by a respondent is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Alcon, Inc. v. ARanked, FA 1306493 (Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) or a noncommercial or fair use pursuant to Policy ¶4(c)(iii).”). Respondent lacks rights and legitimate interests in the disputed domain name.
The Panel finds Policy ¶ 4(a)(ii) satisfied.
Complainant claims Respondent’s use of the <vietnamvisahq.com> domain name disrupts Complainant’s legitimate business purposes pursuant to Policy ¶ 4(b)(iii) because Respondent offers competing services. A respondent’s use of a domain to promote directly competing services constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See Fitness International, LLC v. ALISTAIR SWODECK / VICTOR AND MURRAY, FA1506001623644 (Forum July 9, 2015) (“Respondent uses the at-issue domain name to operate a website that purports to offer health club related services such as fitness experts, fitness models, fitness venues, exercise programs, and personal training, all of which are the exact services offered by Complainant. Doing so causes customer confusion, disrupts Complainant’s business, and demonstrates Respondent’s bad faith registration and use of the domain name pursuant to Policy ¶4(b)(iii).”). Respondent’s domain name was registered and is used in bad faith under Policy ¶ 4(b)(iii).
Complainant claims Respondent has attempted to attract Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website. Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iv) because it directly competes with Complainant. Respondent obviously makes a profit from the competing services, therefore constituting bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶4(b)(iv).”).
Complainant claims Respondent provided false registration information on its WHOIS records. Specifically, the company named “Vietnam Visa HQ” does not exist. The actual company which appears to control the disputed domain name is “Vietnam Gecko JSC” (and this fact is not disclosed anywhere in a conspicuous fashion). In the commercial context, failing to provide accurate WHOIS information raises the rebuttable presumption Respondent registered the domain name and is using it in bad faith. Respondent has done nothing to rebut this presumption, except to try to negotiate. That is not an adequate response. See Home Dir., Inc. v. HomeDirector, D2000-0111, (WIPO Apr. 11, 2000) (finding that providing false or misleading information in connection with the registration of the domain name is evidence of bad faith). Respondent registered and uses the domain name in bad faith.
Complainant claims Respondent had actual knowledge of Complainant's rights in the VISAHQ mark. Complainant has multiple trademark registrations in several countries. Complainant has been mentioned in the worldwide press. Complainant recently announced an expansion into this area of the world. Respondent’s use of elements on its website are strikingly similar to Complainant’s website. This indicates to the Panel’s satisfaction Respondent knew of Complainant's mark when the domain was registered…and Respondent intended to capitalize on that fact.
The Panel finds Policy ¶ 4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered the <vietnamvisahq.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Wednesday, August 17, 2016
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