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Arbitrator resolves domain name dispute
The Arbitration and Mediation Centre of the World Intellectual Property Organisation (WIPO) has made a determination in a dispute between two Vietnamese companies relating to the rights to an internet domain name.
Under Decision No.2010-0374 of April 27, 2010, made by sole panelist James A Baker, the arbitration panel ordered that the disputed domain name honghagas.com be transferred to the complainant, Tran Hong Quan Trading Co., Ltd, one of the leading cooking gas distributors in northern Viet Nam.
A Uniform Domain Name Dispute Resolution Policy (UDRP) was adopted by Internet Corporation for Assigned Names and Numbers (ICANN) in 1999, based on recommendations made by WIPO, to address international conflicts involving domain names. The UDRP provides uniform legal grounds for mediation or arbitration of such disputes.
A domain name registrant represents and warrants to a registrar that it does not infringe on the rights or legal interests of a third party and does not register a domain name in bad faith or with an unlawful purpose. The registrant commits to be bound by the UDRP.
The UDRP also provides that parties to a dispute must choose a dispute resolution service provider accredited by ICANN. WIPO's Arbitration and Mediation Centre is one of the leading domain name dispute resolution service providers.
The complainant in this case registered the domain name honghagas with the Viet Nam Internet Network Information Centre (VNNIC) in November 2003, pursuant to the Law on Information Technology of June 2006, Government Decree No.97/2008/ND-CP of August 2008, and Ministry of Information and Communications Circular No 10/2008/TT-BTTTT of December 2008.
The defendant, TM&DV Joint Stock Company, registered the same domain name with ICANN in October 2009, D9n its website that its business was related to the gas industry.
The complainant, however, claimed that the defendant was a cybersquatter on the honghagas.com domain name and must have been aware of the existence and reputation of the complainant since both were incorporated and doing business in Ha Noi. The complainant had also been one of only a few accredited cooking gas distributors in Viet Nam since 2003, and its mark honghagas was well-known by most consumers, particularly in the northern region of Viet Nam.
The defendant argued that the disputed domain name consisted of two common words "hongha" and "gas" but failed, the centre found, to prove why "hongha" was a common term.
The defendant also said that it had a right to the domain name because it had registered it on a "first-come, first-served" basis. Moreover, the defendant argued, the disputed domain name honghagas.com was an international domain name, while the complainant had only registered its rights in Viet Nam.
In the end, the panel rejected these arguments and found that the complainant had met the three conditions in the Uniform Domain Name Dispute Resolution Policy (UDRP) for establishing its rights to the domain name.
These conditions are: (i) the defendant's domain name is identical or confusingly similar to a trademark or service mark in which the complainant claims rights; (ii) the defendant has no rights or legitimate interests in the domain name; and (iii) the defendant's domain name had been registered and was being used in bad faith.
That a domain name is identical or confusingly similar to a trademark may be proved by: (i) where and when a trademark was protected and what goods or services bearing the trademark are protected; (ii) comparison of similar characteristics between domain names and trademarks as to appearance, composition and the uniqueness or generic meaning of the domain name.
The panel in this case found that the name honghagas.com, registered by the defendant, was identical to the complainant's registered mark.
Proof of rights to and legitimate interests in a domain name may include: (i) use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; (ii) the user is an individual, business or other organisation commonly known by the domain name, even if no trademark or service mark rights have been registered; or, (iii) there is a legitimate, non-commercial or fair use being made of the domain name, without intent for commercial gain or to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The panel found that the complainant had meet these standards and rejected the defendant's first-come, first-served argument, as the complainant was able to demonstrate its longer history on the market and consumer identification with the honghagas trade name.
Evidence of registration and use in bad faith may include: (i) circumstances indicating that the other party has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring it to the complainant, who is the owner of the trademark or service mark, or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; (ii) the other party has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name; (iii) the domain name was registered primarily for the purpose of disrupting the business of a competitor; or, (iv) by using the domain name, the other party has intentionally attempted to attract internet users to its site, for commercial gain, by creating a likelihood of confusion with the complainant's mark.
The panel found that the complainant had successfully demonstrated the defendant's bad faith as the defendant had offered to sell the disputed domain name to the complainant for US$25,000.
Finding all three standards met, the panel ordered the disputed domain name honghagas.com be transferred to the complainant.
The domain name system (DNS) is a hierarchical naming system for computers, servers, or any resource connected to the internet that enables it to respectively an IP address and a domain name. In addition to enabling users to locate a computer and/or people on the internet, domain names play an important role in business identities and brand names and are protected by intellectual property rights.
A general top-level domain (gTLD) is the top-level domain of an internet address, e.g.,.com,.biz, and.net. A gTLD is also known as an international domain to distinguish it from a country-code top-level domain (ccTLD), e.g.,.vn (Viet Nam),.us (US) or.sg (Singapore).
All gTLDs are administered by ICANN, while ccTLDs are administered by national registration authorities. ICANN, a non-profit international organisation responsible for managing and co-ordinating the DNS, ensures that every address is unique and that all internet users can find valid addresses. It does this by overseeing the distribution of unique IP addresses and domain names. It also ensures that each domain name maps to the correct IP address.
Le Quang Vinh, Bross & Partners
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