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WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION T Rowe Price Group, Inc v Vietnam Domain Privacy Services / Pham Dinh Nhut Case No D2019-1053 The Parties The Complainant is T Rowe Price Group, Inc., United States of America (“United States” or “US”), represented by Winterfeldt IP Group PLLC, United States The Respondent is Vietnam Domain Privacy Services, Viet Nam / Pham Dinh Nhut, Viet Nam The Domain Names and Registrar The disputed domain names , , and (hereafter referred separately as the “Disputed Domain Name” and collectively as the “Disputed Domain Names”) are registered with April Sea Information Technology Corporation (the “Registrar”) Procedural History The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on May 7, 2019 On May 8, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names On May 21, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names which differed from the named Respondent and contact information in the Complaint The Center sent an email communication to the Complainant on May 23, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint The Complainant filed an amended Complaint on May 24, 2019 The Center verified that the Complaint, together with the amended 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”) The Center sent an email communication to the parties on May 23, 2019, regarding the language of the proceeding, as the Complaint had been submitted in English and the language of the registration agreements for the Disputed Domain Names are Vietnamese The Complainant submitted a request for English to be the language of the proceeding on May 24, 2019 The Respondent did not submit any communication regarding the language of the proceeding In accordance with the Rules, paragraphs and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 29, 2019 In accordance with the Rules, paragraph 5, the due date for Response was June 18, 2019 The Respondent did not submit any response Accordingly, the Center notified the Respondent’s default on June 19, 2019 The Center appointed Pham Nghiem Xuan Bac as the sole panelist in this matter on June 21, 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 Factual Background The Complainant, T Rowe Price Group Inc., is a US-based company operating asset management services including mutual funds, subadvisory services, separate account management, recordkeeping, and related services for individuals, institutions, retirement plan sponsors, and financial intermediaries since 1937 The Complainant has offices and affiliates in various countries around the world As of 2018, the Complainant had USD 1.02 trillion in total assets under its management and was ranked as the 15th largest asset management firm in the world The Complainant has used the T ROWE PRICE trademark in the United States since 1937 and is currently holding numerous trademark registrations for T ROWE PRICE in connection with a variety of asset management services in Class 36 and related goods/services in other jurisdictions around the world, including US trademark Nos 1493517, 2785262, and 4374970, respectively registered on June 21, 1988, November 25, 2003, and July 30, 2013; Indonesia trademark No IDM000318354, registered on August 19, 2011; Malaysia trademark No 01005428, having effective priority date on April 27, 2001; Singapore trademark No T0105387J, registered on April 16, 2001; and Thailand trademark No บ16459, registered on June 26, 2002 The Complainant’s T ROWE PRICE trademarks will hereinafter be collectively referred to as the “T ROWE PRICE Trademarks” The Complainant has registered a number of domain names including its T ROWE PRICE Trademarks, the earliest of which was registered on July 6, 1995 These domain names have been used and associated with the Complainant’s business since 1995 The Disputed Domain Names , , and were registered with the Registrar on July 30, 2004, August 17, 2004, and October 5, 2004, respectively As of the date of this Decision, the Disputed Domain Names are resolving to parked pages containing sponsored links to various third-party contents, including those associated with the investment and other financial services Parties’ Contentions A Complainant 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 Names are confusingly similar to a trademark in which the Complainant has rights The Complainant states that the Disputed Domain Names are confusingly similar to the Complainant’s T ROWE PRICE Trademarks The incorporation of certain typographical variations of the Complainant’s T ROWE PRICE Trademarks, where the misspelled trademark remains the dominant or principal component of the Disputed Domain Names, and the addition of the Top-Level Domain (“TLD”) “.com” which is viewed as a standard registration requirement not remove the likelihood of confusion in the mind of the public (ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names As to legitimacy, the Complainant argues that it has never authorized the Respondent to use the T ROWE PRICE Trademarks in any manner Besides, the Disputed Domain Names were registered well after the Complainant had registered the T ROWE PRICE Trademarks and not reflect the Respondent’s common name or organization name Further, by evidencing that the Respondent’s use of the Disputed Domain Names in connection with monetized parked pages containing sponsored links to various third-party content, which is associated with the competitors of the Complainant, does not meet the requirements for a bona fide offering of goods or services The Complainant states that the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Names, thus the burden of production shifts to the Respondent to rebut the Complainant’s contentions (iii) The Disputed Domain Names were registered and are being used in bad faith The Complainant contends that the Respondent registered and used the Disputed Domain Names in an attempt to (a) prevent the Complainant from reflecting common misspellings of its T ROWE PRICE mark in corresponding domain names, and (b) take advantage of the confusion caused by the similarity of the Disputed Domain Names to the T ROWE PRICE Trademarks, particularly by directing Internet users to parked pages generating revenue for the Respondent through the use of various monetization platforms The Complainant also argues that the Complainant’s rights in the T ROWE PRICE Trademarks are well established, and its “T Rowe Price” brand has achieved a level of recognition and fame such that the Respondent has no colorable argument that he is unaware of the Complainant The Complainant further notes that the Respondent has been the losing respondent in a number of previous proceedings under the Policy for similar activity as presented in this case The Respondent’s use of a proxy service also evidences bad faith On basis of the above assertions, the Complainant requests the transfer of the Disputed Domain Names B Respondent The Respondent did not reply to the Complainant’s contentions Discussion and Findings A Procedural Issues (i) The Respondent’s identity The Panel notes that the present case involves privacy registration services At the time the Complaint was filed on May 7, 2019, the Respondent was identified as “Vietnam Domain Privacy Services” On May 21, 2019, the Registrar revealed the underlying registrant to be “Pham Dinh Nhut” Therefore, in accordance with section 4.4.5, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the Panel determines the identity of the Respondent in this case to be the disclosed underlying registrant (ii) Language of the Proceedings The Complaint was filed in English However, the Registrar confirmed that the language of the Registration Agreement was Vietnamese On May 24, 2019, the Complainant submitted a request that English be the language of the proceeding The Respondent did not comment on the language of the proceeding According to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding Similar to previous UDRP decisions, the Panel finds that the spirit of paragraph 11(a) is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfort with each language, the expenses to be incurred and possibility of delay in the proceeding in the event translations are required and other relevant factors (See, e.g., Deutsche Messe AG v Kim Hyungho, WIPO Case No D2003-0679) In the case at hand, the Panel takes the circumstances of the proceeding into account, including, but not limited to: (i) the fact that the Complainant, a US business entity, does not appear to be able to communicate in Vietnamese, and therefore, if the Complainant were required to have the documents translated into Vietnamese, the proceeding would be unduly delayed, and the Complainant would have to incur substantial expenses for translation; (ii) English is a common language in global business, and it is also evidenced to the Panel that the websites at the Disputed Domain Names contain English contents, suggesting that the Respondent has knowledge of the English language and would be able to communicate in English; and (iii) the Respondent had ample opportunity to raise objections in relation to the language of the proceeding or make known its preference, but it did not provide any response in this regard Pursuant to paragraph 10(c) of the Rules, which provides that “the Panel shall ensure that the administrative proceeding takes place with due expedition”, the Panel hereby decides, under paragraph 11(a) of the Rules, that the language of the proceeding shall be English and shall render its decision in English (iii) Delay in bringing the Complaint The Panel finds that the Disputed Domain Names were registered with the Registrar on July 30, 2004, August 17, 2004, and October 5, 2004, respectively, but the Complaint was not filed with the Center until May 7, 2019 In considering this delay of nearly 15 years in challenging the Respondent’s registrations of the Disputed Domain Names, the Panel is of the same views as decisions mentioned in section 4.17 of WIPO Overview 3.0 that “the doctrine or defense of laches as such does not generally apply under the UDRP, and that delay in bringing a complaint does not of itself prevent the Complainant from filing under the UDRP, or from being able to succeed under the UDRP, where the Complainant can establish a case on the merits under the requisite three elements” However, similar to a previous UDRP decision, the Panel shall take into account this delay when considering the second and third element requiring the Complainant to establish that the Respondent lacks rights and legitimate interests and that the Respondent registered and used the Disputed Domain Names in bad faith (see, e.g., CeltonManx Limited v Pham Dinh Nhut, WIPO Case No D2014-0109) (iv) The Respondent's Failure to Respond The Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant (see, e.g., Tradewind Media, LLC d/b/a Intopic Media v Jayson Hahn, WIPO Case No D2010-1413,and M Corentin Benoit Thiercelin v CyberDeal, Inc., WIPO Case No D2010-0941) However, the Panel may draw appropriate inferences from the Respondent’s default In accordance with paragraph 4(a) of the Policy, in order to decide on the remedy sought by the Complainant, the Panel will examine whether each of the following three elements is present: (i) the Disputed Domain Names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and (iii) the Disputed Domain Names have been registered and are being used in bad faith B Identical or Confusingly Similar The Complainant is required to establish the two following elements: (1) that it has trademark rights, and, if so, (2) that the Disputed Domain Names are identical or confusingly similar to its trademark First, the Panel finds that the Complainant has evidenced that it has trademark rights in and to the T ROWE PRICE Trademarks, which were registered before the registration of the Disputed Domain Names In addition, it is evidenced that the Complainant has a wide use of its T ROWE PRICE Trademarks for its asset management services and offers global investment management products, tools, and services, including mutual funds, subadvisory services, separate account management, recordkeeping, and related services for individuals, institutions, retirement plan sponsors, and financial intermediaries In the case at hand, the Panel notes that the Complainant does not have a registered trademark for “T ROWE PRICE” in Viet Nam However, it is well established that the jurisdictions where the trademark is valid, its date of registration (or claimed first use), and the goods and/or services for which it is registered or used in commerce, are all irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP See the section 1.1 of the WIPO Overview 3.0 Second, the Panel finds that the Disputed Domain Names differ from the T ROWE PRICE Trademarks by merely the omission of the letter “r” after the letter “t” and prior to the letter “o” with regard to , or an addition of the letter “c” between letters “i” and “c” with regard to , or substitution of the letter “”" by the letter “o” with regard to In accordance with section 1.9 of the WIPO Overview 3.0, a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element Thus, the omission , addition, or substitution does not prevent a finding of confusing similarity between the Disputed Domain Names and the T ROWE PRICE Trademarks In the Panel's view, “toweprice”, “trowepricce”, and “troweproce” are confusingly similar to the Complainant's trademarks in terms of structure, presentation, and pronunciation This is a typical case of a deliberate misspelling of a trademark (so-called “typosquatting”), by omitting, adding, or substituting the order of letters of a trademark, where numerous UDRP panels in the past have found confusing similarity to be present, see, inter alia, Yurtici Kargo Servisi A.S v Yurticicargo Yurticikargo, WIPO Case No D2003-0707; CareerBuilder, LLC v Azra Khan, WIPO Case No D2003-0493; The Sportsman's Guide, Inc v Vipercom, WIPO Case No D2003-0145; Neuberger Berman Inc v Alfred Jacobsen, WIPO Case No D2000-0323 Thirdly, the Panel finds, similarly to other UDRP panels, that the addition of the applicable TLD “.com” to the Disputed Domain Names is viewed as a standard registration requirement and as such can be disregarded in the determination of confusing similarity (see, e.g., Volkswagen AG v Privacy Protection Services, WIPO Case No D2012-2066; The Coca-Cola Company v David Jurkiewicz, WIPO Case No DME2010-0008; Telecom Personal, S.A., v NAMEZERO.COM, Inc., WIPO Case No D2001-0015; F Hoffmann La Roche AG v Macalve e-dominios S.A., WIPO Case No D2006-0451; Telstra Corporation Limited v Nuclear Marshmallows, WIPO Case No D2000-0003) Therefore, in this present case, the addition of the TLD “.com”, does not prevent a finding of confusing similarity for purposes of the Policy Based on the foregoing findings, the Panel finds that the Disputed Domain Names are confusingly similar to the Complainant's Trademarks, and paragraph 4(a)(i) of the Policy is established C Rights or Legitimate Interests Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the Disputed Domain Names for the purposes of paragraph 4(a)(ii) of the Policy Paragraph 4(c) of the Policy reads: “Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii): (i) before any notice to you of the dispute, your 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; or (ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” The Panel finds that the Complainant has made a prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Names The Respondent did not refute the Complainant’s contentions The consensus of UDRP panels is that while the overall burden of proof in UDRP proceedings is on the complainant, once a prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating its rights or legitimate interests in the Disputed Domain Names (See e.g., Document Technologies, Inc v International Electronic Communications Inc., WIPO Case No D2000-0270; Julian Barnes v Old Barn Studios, WIPO Case No D2001-0121; section 2.1 of the WIPO Overview 3.0) In this instant case, the Panel finds that the Respondent has failed to meet that burden since no Response was submitted, while the Complainant has presented evidence to the Panel that the Respondent has no rights or legitimate interests in the Disputed Domain Names Regarding paragraph 4(c)(i) of the Policy, the Panel finds, in light of the Complainant’s asserted facts, that no license, permission or authorization of any kind to use the Complainant’s Trademarks has been granted to the Respondent There is no evidence available that the Respondent holds any registered or unregistered trademark rights to the Disputed Domain Names Further, the Complainant has submitted relevant evidence showing that the Disputed Domain Names resolve to parked pages with Pay-Per-Click (“PPC”) links that redirect Internet users to other online locations In this regard, section 2.9 of the WIPO Overview 3.0 holds that “the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users” In this present case, the Panel finds that the PPC links in question are referring to services of the Complainant’s competitors and others So, in light of foregoing viewpoint and similarly to a number of well-established prior UDRP decisions, the Panel upholds that operating PPC parking pages using a distinctive trademark or its intentionally-misspelled version in a domain name, and providing connection to goods and/or services competitive with the trademark owner, does not establish bona fide offering of goods or services (see, e.g, Virgin Enterprises Limited v LINYANXIAO aka lin yanxiao, WIPO Case No D2016-2302; Merck Sharp & Dohme Corp v Domain Administrator, PrivacyGuardian.org / George Ring, DN Capital Inc., WIPO Case No D2017-0302; Archer-Daniels-Midland Company v Wang De Bing, WIPO Case No D20170363) Regarding paragraph 4(c)(ii) of the Policy, the Panel finds that there is no evidence showing that the Respondent has been commonly known by the Disputed Domain Names Based on the evidence before the Panel the Respondent has made use of a privacy service until that shield was lifted by the Registrar, the Respondent does not have a name and/or organization reflecting the Disputed Domain Names Further, there is also no evidence showing that the Respondent operates any bona fide business or organization under the Disputed Domain Names or under the name “T Rowe Price” Therefore, it is not evidenced that the Respondent is identified by “T Rowe Price” or that it has any rights in it Regarding paragraph 4(c)(iii) of the Policy, the Panel finds that there is no evidence that the Respondent is making any noncommercial or fair use of the Disputed Domain Names Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names, and the second element under paragraph 4(a) of the Policy is established D Registered and Used in Bad Faith Paragraph 4(b) of the Policy lists four circumstances that, without limitation, shall be evidence of the registration and use of a domain name in bad faith: “(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration 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-ofpocket costs directly related to the domain name; or (ii) you have 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, provided that you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.” The above four circumstances are not exhaustive and bad faith may be found by the Panel alternatively The Panel finds that the Complainant has put forth evidence that the Respondent has registered and used the Disputed Domain Names in bad faith The Respondent did not reply to the Complainant’s contentions and, therefore, has not refuted the Complainant’s contentions Registration in bad faith The Panel has considered the Complainant’s assertions and evidence with regard to the Respondent’s registrations of the Disputed Domain Names In this regard, the Panel finds that the Complainant’s T ROWE PRICE Trademarks have been registered in a variety of jurisdictions around the world In addition, the Complainant’s T ROWE PRICE Trademarks have been put in use over a lengthy period of time and gained certain reputation in the industry of asset management The Complainant’s T ROWE PRICE Trademarks and its domain name all well predate the registration of the Disputed Domain Names The Disputed Domain Names in fact incorporate typographical errors of the T ROWE PRICE Trademarks Further, “T Rowe Price” as a whole is not descriptive and devoid of meaning other than the services of the Complainant Hence, it is very unlikely that the Respondent would have registered the Disputed Domain Names incorporating the typographical errors of the Complainant’s trademarks without knowledge of the T ROWE PRICE Trademarks and it defies common sense to believe that the Respondent coincidentally selected the Disputed Domain Names without any knowledge of the Complainant and its trademarks It is further to be noted that the Respondent used a privacy service provider to hide its identity behind a privacy shield in registrations of the Disputed Domain Names In this regards, the Panel is of the opinion that the above-mentioned Respondent’s use which is known to intentionally delay disclosure of the identity of the actual underlying registrant constitutes a factor indicating bad faith See section 3.6 of the WIPO Overview 3.0 These facts show that the Respondent did not register the Disputed Domain Names in a fortuity The Respondent obviously knew of the Complainant and its T ROWE PRICE Trademarks before the registration of the Disputed Domain Names, and the Panel considers the registration an attempt by the Respondent as to take advantage of the Complainant’s goodwill Use in bad faith In Section 6.C above, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Names In the Panel’s view, use of domain names, to which one has no rights or legitimate interests, is very often a clear indication of use in bad faith As discussed earlier, the Respondent is typosquatting the Complainant’s Trademarks in the Disputed Domain Names The Disputed Domain Names resolve to PPC parking sites, where the PPC links are also referring the services of the Complainant’s competitors and others Further, the Respondent is using a privacy service to conceal its “true” or “underlying” registrant identity These facts, in the Panel’s opinion, further evidence bad faith use In addition, the Panel finds that the Respondent, Pham Dinh Nhut, in three years between 2014 and 2017, was involved in more than 10 cases of domain name disputes, namely Kurt Geiger Limited v Vietnam Domain Privacy Services / Pham Dinh Nhut, WIPO Case No D20170364; Moelis & Company Group LP v Vietnam Domain Privacy Services / Pham Dinh Nhut, WIPO Case No D2016-2554; Herald & Weekly Times Pty Limited v Vietnam Domain Privacy Services / Pham Dinh Nhut, WIPO Case No D2016-1162; Dollar Bank, Federal Savings Bank v Pham Dinh Nhut, WIPO Case No D2016-0787; Arnold Clark Automobiles Limited v Vietnam Domain Privacy Services / Pham Dinh Nhut, WIPO Case No D20160562; Malwarebytes Inc v Vietnam Domain Privacy Services / Pham Dinh Nhut, WIPO Case No D2015-1361; Kimmel Center, Inc f/k/a Regional Performing Arts Center, Inc v Vietnam Domain Privacy Services / Pham Dinh Nhut, WIPO Case No D2015-0765; Pentair, Inc v Vietnam Domain Privacy Services / Pham Dinh Nhut, WIPO Case No D2014-2161; ESTEVA OOMMM, S.L v Pham Dinh Nhut / Vietnam Domain Privacy Services, WIPO Case No D20142095; Delta Dental Plans Association v ICS INC aka ORM Ltd./Balticsea LLC/Contact Privacy Inc.; Registrant [4459713]: Taranga Services Pty Ltd/Moniker Privacy Services; ICS INC./Private Registrations Aktien Gesellschaft/Privacy Protection Service INC d/b/a PrivacyProtect.org; ICS INC./GEORGE WASHERE/WHOIS PRIVACY PROTECTION SERVICE, INC.; Diamond Point Enterprises Limited/Whois Privacy Services Pty Ltd; Transure Enterprise Ltd/Above.com Domain Privacy; Online Management/Domains By Proxy, LLC; Ryan G Foo, PPA Media Services/Fundacion Private Whois; Pham Dinh Nhut/Vietnam Domain Privacy Services; Pavol Icik, Poste Restante/Dragan Platic, Poste restante/Privacy Protection Service, WIPO Case No D2014-0474; CeltonManx Limited v Pham Dinh Nhut, WIPO Case No D2014-0109; and Pierre & Vacances Center Parcs Group v Pham Dinh Nhut, WIPO Case No D2017-0605 All these cases are similar in terms of the Respondent’s pattern of conduct where it used a privacy service to register domain names that previous UDRP panels found be identical or confusingly similar to another entity’s trademarks All these domain names were decided to be transferred to the respective complainants The Panel finds this pattern of conduct to be indicative of bad faith With all these facts and finding, the Panel finds that by using the Disputed Domain Names in this manner, the Respondent has intentionally attempted to attract Internet users to its websites and earn income from such links on a PPC basis by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement of its website, for commercial gain, and earning Numerous UDRP panels have held that a respondent who intentionally diverts Internet users through a likelihood of confusion with a complainant’s mark to its website constitutes bad faith Taking into account all of the above, the Panel finds that the Disputed Domain Names were registered and are being used by the Respondent in bad faith under paragraph 4(b)(iv) of the Policy, and the third element under paragraph 4(a) of the Policy is established Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Names , , and be transferred to the Complainant Third, the Complainant asserts that “capella” is not a descriptive or generic term In addition, the Respondent is not commonly known by the Disputed Domain Name or the name “capella”; the name of the Respondent’s business was in fact changed to Ma Coeur Hotel (iii) The Disputed Domain Name was registered and is being used in bad faith Registration in bad faith: The Complainant asserts that the CAPELLA trademark is widely used and recognized, with trademark registrations across numerous countries, with the earliest registration dates back to the year 2005 in the United States The Complainant also registered the domain name in 2005 Therefore, the adoption of a confusingly similar domain name by the Respondent, especially the Respondent and his business have operated in the same industry, could not be a coincidence but his attempt to take advantage of the Complainant’s reputation Use in bad faith: Firstly, the Complainant contends that due to the confusing similarity between the Disputed Domain Name and the CAPELLA trademark, Internet users attempting to visit the Complainant’s website may end up on the website set up by the Respondent Secondly, the Respondent’s website contains no disclaimer of an affiliation or association between the Complainant and the Respondent It is evident that by using the Disputed Domain Name and creating the impression that the underlying website associates with the Complainant and its widely known CAPELLA trademark, the Respondent has intentionally attempted to attract Internet users to his website for commercial gain Lastly, the Complainant contends that in the absence of any license or permission from the Complainant to use the widely known CAPELLA trademark, no actual or contemplated bona fide or legitimate use of the Disputed Domain Name could reasonably be claimed In addition, the Respondent’s failure to respond to a cease-and-desist letter from the Complainant while offering for the transfer, which incurs fee, may properly be considered a factor in finding bad faith registration and use of the Disputed Domain Name Therefore, the Complainant considers that the Respondent registered and is using the Disputed Domain Name in bad faith under Policy 4(b)(iii) With the said arguments, the Complainant requests that the Disputed Domain Name be transferred to the Complainant B Respondent On December 27, 2021, the Respondent filed a Response to the Center In the Response as filed, the Respondent requests the Panel to deny the Complainant’s requests with the following contentions: First, the Respondent has obtained the Disputed Domain Name for using in hotel services for over six years The Respondent states that the Respondent has strictly complied with laws and regulations of Vietnam Second, the Respondent contends that no image of any Capella hotels in the world as well as neither logo or brand of the Complainant has been used Third, the Respondent has contacted with the representative of the Complainant on the transfer of the Disputed Domain Name However, the Complainant did not reply Lastly, since the Disputed Domain Name belongs to the Respondent based on the first come, first serve rule and the Respondent has no longer traded in accommodation and hotel services, the Respondent is currently the legitimate owner of the Disputed Domain Name The Respondent is also willing to discuss more with the Complainant in order to transfer the Disputed Domain Name Discussion and Findings A Procedural Issues (i) Language of the Proceeding The Complaint was filed in English However, the Registrar confirmed that the language of the Registration Agreement was Vietnamese As the Complaint was filed in English, the Center, in its communication dated November 26, 2021, invited the Complainant to submit either (i) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceeding should be in English, or (ii) the Complaint translated into Vietnamese, or (iii) a substantiated request for English to be the language of the proceeding On November 29, 2021, the Complainant responded the Center, requesting that English be the language of the proceeding as indicated in page of the Complaint According to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding Similar to previous UDRP decisions, the Panel finds that the spirit of paragraph 11(a) is to ensure fairness in the selection of language by giving full consideration to the Parties’ level of comfortability with each language, the expenses to be incurred and possibility of delay in the proceeding in the event translations are required and other relevant factors (see, e.g., Deutsche Messe AG v Kim Hyungho, WIPO Case No D2003-0679) In the present case, the Panel takes into account the circumstances of the proceeding, including, but not limited to: (i) the fact that the Complainant, a Singaporean business entity, does not appear to be able to communicate in Vietnamese, and therefore, if the Complainant was required to have the documents translated into Vietnamese, the proceeding would be unduly delayed, and the Complainant would have to incur substantial expenses for translation; (ii) the English language is quite popular in Viet Nam, where the Respondent is located, and it is also evidenced to the Panel that the website under the Disputed Domain Name used to contain English contents Further, the Respondent works in the hospitality industry in Viet Nam, in which English is commonly used; these suggest that the Respondent has ample knowledge of the English language and will be able to communicate in English; (iii) the Respondent did not object for English to be the language of the proceeding Therefore, in the interest of fairness to both Parties as well as the Panel’s obligation under paragraph 10(c) of the Rules, which provides that “the Panel shall ensure that the administrative proceeding takes place with due expedition”, the Panel hereby decides, under paragraph 11(a) of the Rules, that the language of the proceeding shall be English and shall render its decision in English (ii) Delay in bringing the Complaint The Panel finds that the Disputed Domain Name was registered on December 25, 2015, but the Complaint was filed with the Center November 24, 2021 The Panel is of the same view as those in the previous UDRP decisions mentioned in section 4.17 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), which held that “[p]anels have widely recognized that mere delay between the registration of a domain name and the filing of a complaint neither bars a complainant from filing such case, nor from potentially prevailing on the merits” However, similar to previous UDRP decisions, the Panel has taken this into account when considering the second and third elements requiring the Complainant to establish that the Respondent lacks rights or legitimate interests and that the Respondent registered and used the Disputed Domain Name in bad faith (see, e.g., CeltonManx Limited v Pham Dinh Nhut, WIPO Case No D2014-0109) B Identical or Confusingly Similar The Complainant is required to establish the following: (i) that it has trademark rights, and, if so, (ii) that the Disputed Domain Name is identical or confusingly similar to its trademark First, the Panel finds that the Complainant has clearly evidenced that it has registered trademark rights to CAPELLA (well before the Disputed Domain Name was registered) In addition, it is evidenced that the Complainant has earned worldwide recognition and reputation for its services bearing the CAPELLA trademark Of note, the Complainant owns a registration for CAPELLA trademark and is providing temporary accommodation services in Hanoi, Viet Nam, where the Respondent resides Second, the Disputed Domain Name comprises the Complainant’s CAPELLA mark, in which the Complainant has exclusive rights The difference between the Disputed Domain Name and the trademark is the addition of the prefix “hanoi” (which can be written with tone marks as “Hà Nội” in Vietnamese to indicate the capital of Viet Nam, where the Respondent resides), and the suffix “hotel” (which is a dictionary term) The Panel finds that “CAPELLA” remains the dominant element in the Disputed Domain Name It is well established that the addition of geographic term “hanoi” and the dictionary term “hotel” to a trademark does not prevent confusing similarity Thus, in the Panel’s view, the addition of the said addition does nothing to prevent the trademark from being recognizable in the Disputed Domain Name, nor to dispel confusing similarity, as it was found in previous UDRP decisions (see, e.g., International Business Machines Corporation v Le Van Hai, WIPO Case No D20193000; Philip Morris Products S.A v Nguyen Van Thanh, WIPO Case No D2019-1867; Royal Canid SAS v Ong Pham Duc Thang, WIPO Case No D2017-2567) Third, the Panel finds, similarly to other UDRP panels, that the addition of the gTLD “.com” to the Disputed Domain Name does not constitute an element that may help avoid confusing similarity for the Policy purposes (see, e.g., Volkswagen AG v Privacy Protection Services, WIPO Case No D2012-2066; The Coca-Cola Company v David Jurkiewicz, WIPO Case No DME2010-0008; Telecom Personal, S.A., v NAMEZERO.COM, Inc., WIPO Case No D2001-0015; F Hoffmann La Roche AG v Macalve e-dominios S.A., WIPO Case No D20060451; Telstra Corporation Limited v Nuclear Marshmallows, WIPO Case No D2000-0003) On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s CAPELLA trademark, and the first element of the Policy is established C Rights or Legitimate Interests Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the Disputed Domain Names for the purposes of paragraph 4(a)(ii) of the Policy, including: “(i) before any notice to you of the dispute, your 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; or (ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” The Panel finds that the Complainant has made a prima facie evidence on that the Respondent has no rights or legitimate interests in the Disputed Domain Names The consensus of previous UDRP decisions is that while the overall burden of proof in UDRP proceedings is on the Complainant, once a prima facie case is made, the burden of production shifts to the Respondent to come forward with relevant evidence demonstrating its rights or legitimate interests in the Disputed Domain Names (see e.g., Document Technologies, Inc v International Electronic Communications Inc., WIPO Case No D2000-0270; Julian Barnes v Old Barn Studios Limited, WIPO Case No D2001-0121) Regarding paragraph 4(c)(i) of the Policy, the Panel finds, in light of the Complainant’s asserted facts, that no license, permission, or authorization of any kind to use the Complainant’s trademark has been granted to the Respondent There is no evidence available that the Respondent holds any registered or unregistered trademark rights in any jurisdiction related to “capella” Thus, the Panel finds that the Respondent has no rights in the CAPELLA trademark or therefore in the Disputed Domain Name In addition, as of the date of this Decision, the Panel finds that the Disputed Domain Name is resolving to an inactive website Nevertheless, the Respondent already confirmed that the Disputed Domain Name was used for trade in hotel services for more than six years The Panel also conducted an independent search on “www.web.archive.org” and found that the Disputed Domain Name from 2016 to 2021, resolved to the website in English, featuring the Complainant’s mark, and offering temporary accommodation services, hotel services, which directly competes with the Complainant’s services The Panel, therefore, rejects the Respondent’s assertion that no trademark of the Complainant was used On such website, the Panel also finds that the Respondent did not place any statement or disclaimer accurately and prominently disclosing its relationship with the Complainant These indications may mislead consumers into believing in a connection or association between the Respondent and the Complainant, where such connection or association does not exist in reality See section 2.5.1 of the WIPO Overview 3.0 As such, the Panel finds the Respondent’s use of the Disputed Domain Name, cannot be considered a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy The fact that the Respondent allegedly earned some revenues on hotel services and paid taxes for those revenues is not sufficient for making the use of the Disputed Domain Name bona fide, especially where, as said, such use involves an unauthorized use of the Complainant’s trademark Regarding paragraphs 4(c)(ii) and 4(c)(iii) of the Policy, the Panel finds that there is no evidence that would suggest that the Respondent, as an individual, business, or other organization, has been commonly known by the Disputed Domain Names, or that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Names In fact, as it appears following the Complainant’s assertions and evidence with regard to the Respondent’s registration of the Disputed Domain Name, the Respondent had full knowledge of the CAPELLA trademark and had an intention to gain profit by riding on the goodwill and reputation of the Complainant Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names, and the second element, paragraph 4(a)(ii) of the Policy is established D Registered and Used in Bad Faith Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, including: “(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration 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-ofpocket costs directly related to the domain name; or (ii) you have 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, provided that you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.” The above four circumstances are not exhaustive and bad faith may be found by the Panel alternatively First, the Panel opines that registration and use of the Disputed Domain Name, while having no legitimate rights and interests in it, as analyzed in Section 6.C., is an indication of bad faith in registration and use thereof Further, the Panel has considered the Complainant’s assertions and evidence relating to the Respondent’s registration and use of the Disputed Domain Names In this regard, the Panel finds that the Complainant’s CAPELLA trademark has been registered in a variety of jurisdictions around the world In addition, the Complainant’s CAPELLA trademark has been registered and put in use in, among other countries, Viet Nam where the Respondent resides The CAPELLA registration well predates the registration of the Disputed Domain Name As analyzed in the Section 6.C above, given the CAPELLA trademark has been registered and widely used by the Complainant for temporary accommodation services before the registration of the Disputed Domain Name, the Panel is of the opinion that the choice is not made in a fortuity, but the Respondent already knew about the Complainant and the CAPELLA trademark when the Respondent chose and registered the Disputed Domain Name, then operated the Respondent’s business in the same industry With such a view, the Panel finds that the Respondent had full knowledge of the CAPELLA trademark and had an intention to gain profit by riding on the goodwill and reputation of the Complainant The Panel finds that it is evident that the Disputed Domain Name used to resolve to a website offering the hotel services branded with the Complainant’s CAPELLA trademark In addition to the adoption of the Complainant’s CAPELLA trademark as a uniquely distinctive part in the Disputed Domain Name, the Respondent has used the Complainant’s CAPELLA trademark on the website under the Disputed Domain Name, without any disclaimer of an affiliation or association between the Complainant and the Respondent With such a view, the Panel agrees with the Complainant’s argument that many Internet users attempting to visit the Complainant’s website through a search for “capella” may end up on the webpage set up by the Respondent The Panel finds that, by using the Disputed Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark The diversion of Internet traffic from the Complainant’s site to the Respondent’s site supports a finding of bad faith under paragraph 4(b)(iv) of the Policy Taking into account all of the above and the available record, the Panel finds that the Disputed Domain Name was registered and are being used by the Respondent in bad faith and the third element under paragraph 4(a)(iii) of the Policy is established Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name, be transferred to the Complainant Pham Nghiem Xuan Bac Sole Panelist Date: January 31, 2022 WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION The Manufacturers Life Insurance Company v Do Tung Lam Case No D2021-2342 The Parties The Complainant is The Manufacturers Life Insurance Company, Canada, represented by CSC Digital Brand Services Group AB, Sweden The Respondent is Do Tung Lam, Viet Nam The Domain Names and Registrar The disputed domain names and (collectively identified as the “Disputed Domain Names”) are registered with Mat Bao Corporation (the “Registrar”) Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 20, 2021 On July 20, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names On July 21, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names, which differed from the named Respondent and contact information in the Complaint The Center sent an email communication to the Complainant on July 23, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint On July 23, 2021, the Center sent an email communication to the Complainant informing that the language of the registration agreement is Vietnamese The Complainant filed an amended Complaint on July 27, 2021, and requested the proceeding to be in English The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 30, 2021 In accordance with the Rules, paragraph 5, the due date for Response was August 19, 2021 The Respondent did not submit any response Accordingly, the Center notified the Respondent’s default on August 24, 2021 The Center appointed Pham Nghiem Xuan Bac as the sole panelist in this matter on September 1, 2021 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 Factual Background The Complainant is a Canadian corporation that specializes in financial services, particularly providing financial advice, insurance, and wealth and asset management solutions for individuals, groups, and institutions According to the Complaint, the Complainant maintains an international network of more than 35,000 employees and 98,000 agents, along with thousands of other distribution partners around the world In 2019, the Complainant reported core earnings of CAD billion globally The Complainant is the owner of numerous trademark registrations for the trademark MANULIFE in various jurisdictions throughout the world, including, but not limited to, Canadian Trademark Registration No TMA385240 registered on May 31, 1991; European Union Trademark Registration No 000540989 registered on July 09, 1999; United States of America Trademark Registration No 1790892 registered on August 31, 1993; and, United Kingdom Trademark Registration No UK00001301399 registered on December 08, 1989 The MANULIFE trademark has also been protected in Viet Nam (e.g., Viet Nam Trademark Registration No 40355835000 registered on July 7, 2020), where the Respondent resides The Complainant was the first foreign life insurer to have presence in Viet Nam since 1999, offering a wide range of products from traditional insurance products to health insurance, education, investment association, and retirement to more than 800,000 customers The Complainant employs professional agents in 61 offices in 45 provinces in Viet Nam The Complainant also owns a number of domain names featuring the trademark MANULIFE, among which the notable ones are registered in 1994 and registered in 2002 The Disputed Domain Names and were registered on July 30, 2014, and June 27, 2020, respectively As of the date of this Decision, the Disputed Domain Names are resolving to a Google site at “www.sites.google.com/view/dotunglammanulife”, on which the Disputed Domain Names are offered for sale Further, the Disputed Domain Name used to resolve to a website offering insurance services under the brand Manulife, to which the Disputed Domain Name redirected Parties’ Contentions A Complainant 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 Names are identical or confusingly similar to a trademark or service mark, in which the Complainant has rights First, the Complainant contends that the Complainant is the registered owner of trademark registrations for MANULIFE in numerous jurisdictions around the world Further, the Complainant asserts that the MANULIFE trademark is well recognized by consumers, industry peers, and the broader global community Second, the Complainant contends that the Disputed Domain Names are confusingly similar to the trademark owned by the Complainant by arguing that: - The Disputed Domain Names reproduce entirely the registered trademark MANULIFE of the Complainant; and - The addition of the word “baohiem”, which means “insurance” in Vietnamese, could not dispel any confusing similarity On the contrary, this term misleads the Internet users into thinking that the Disputed Domain Names are related to, sponsored by, or affiliated with the Complainant and its services in Viet Nam, when this is not the case - Finally, the Complainant submits that the addition of the generic Top-Level Domain (“gTLD”) suffix “.com” or “.net” in the Disputed Domain Names does not add any distinctiveness to the Disputed Domain Names (ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names The Complainant submits that the elements set forth in the Policy, paragraph 4(c) are not fulfilled First, the Respondent is neither a licensee of the Complainant, nor otherwise authorized to use the Complainant’s MANULIFE trademark Second, the Complainant asserts that the Respondent is not commonly known by the Disputed Domain Names or the name “Manulife”, since the pertinent WhoIs information identifies the Registrant as “Do Tung Lam” Third, by claiming to be the Complainant or its authorized agent, while featuring a color scheme widely associated with the Complainant on the website, the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Names without intent for commercial gain to misleadingly divert consumers Finally, the Complainant contends that the Respondent has not made use of, or demonstrable preparations to use, the Disputed Domain Names in connection with a bona fide offering of goods or services Particularly, the uses of Disputed Domain Names not meet the requirements described in the decision Oki Data Americas, Inc v ASD, Inc., WIPO Case No D2001-0903: - The Respondent is not an authorized sale or service agent for the Complainant, contrary to what is stated in the label “MANULIFE INSURANCE - MANULIFE AUTHORIZED AGENT LEVEL 1” at the footer of the Disputed Domain Names’ website - The websites at the Disputed Domain Names include no visible disclaimer stating the Website is neither endorsed nor sponsor by the Complainant to explain the non-existing relationship with the Complainant Instead, the Respondent is misrepresenting itself as the Complainant or the Complainant’s authorized agent (iii) The Disputed Domain Names were registered and are being used in bad faith First, the Complainant asserts that the MANULIFE trademark is known internationally, with trademark registrations across numerous countries The Complainant has marketed and sold its goods and services using these trademarks well before the Respondent’s registrations of the Disputed Domain Names Second, the Complainant submits that it is evident from the Respondent’s use of the Disputed Domain Names that the Respondent knew of the Complainant’s MANULIFE trademark when registering the Disputed Domain Names Third, the Complainant submits that the Respondent registered and is using the Disputed Domain Names for commercial gain and to profit from the resulting consumer confusion that the Disputed Domain Names’ website is endorsed by or associated with the Complainant Particularly, the Respondent creates a likelihood of confusing with the Complainant and its trademarks by using the Disputed Domain Names to pass off as the Complainant or its authorized agent Further, the Respondent is claiming to be the Complainant or its authorized agent, and copying the Complainant’s color scheme at the associated website, with the intention to profit from such confusion by offering the Complainant’s insurance products without authorization As such, the Respondent is attempting to cause consumers to mislead that the Respondent is the Complainant or associated with the Complainant, when in fact, it is not Lastly, in addition to the Disputed Domain Names, the Respondent currently holds registrations for several other domain names that misappropriate the trademarks of well-known brands and businesses This fact demonstrates that the Respondent is engaging in a pattern of cybersquatting, which is evidence of bad faith registration and use of the Disputed Domain Names Therefore, the Complainant considers that the Respondent registered and is using the Disputed Domain Name in bad faith under the Policy paragraph 4(b)(iii) With the said arguments, the Complainant requests that the Disputed Domain Names be transferred to the Complainant B Respondent The Respondent did not reply to the Complainant’s contentions Discussion and Findings A Procedural Issues (i) Language of the Proceeding The Complaint was filed in English However, the Registrar confirmed that the language of the Registration Agreement is Vietnamese As the Complaint was filed in English, the Center, in its communication dated July 23, 2021, invited the Complainant to submit either (i) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceeding should be in English, or (ii) the Complaint translated into Vietnamese, or (iii) a substantiated request for English to be the language of the proceeding On July 27, 2021, the Complainant filed an amended Complaint, requesting that English be the language of the proceeding According to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding Similar to previous UDRP decisions, the Panel finds that the spirit of paragraph 11(a) of the Rules is to ensure fairness in the selection of language by giving full consideration to the Parties’ level of comfortability with each language, the expenses to be incurred and possibility of delay in the proceeding in the event translations are required and other relevant factors (see, e.g., Deutsche Messe AG v Kim Hyungho, WIPO Case No D2003-0679) In the present case, the Panel takes into account the circumstances of the proceeding, including, but not limited to: (i) the fact that the Complainant, a Canadian business entity, does not appear to be able to communicate in Vietnamese, and therefore, if the Complainant was required to have the documents translated into Vietnamese, the proceeding would be unduly delayed, and the Complainant would have to incur substantial expenses for translation; (ii) the English language is quite popular in Viet Nam, where the Respondent is located; (iii) the Respondent did not object for English to be the language of the proceeding and did not submit a response in either English or Vietnamese Therefore, in the interest of fairness to both Parties as well as the Panel’s obligation under paragraph 10(c) of the Rules, which provides that “the Panel shall ensure that the administrative proceeding takes place with due expedition”, the Panel hereby decides, under paragraph 11(a) of the Rules, that the language of the proceeding shall be English and shall render its decision in English (ii) Delay in bringing the Complaint The Panel finds that the Disputed Domain Name was registered on July 30, 2014, but the Complaint was not filed with the Center until July 20, 2021 In considering this delay of seven years in challenging the Respondent’s registration of the Disputed Domain Name, the Panel is of the same view as those previous UDRP decisions mentioned in section 4.17 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) that “[p]anels have widely recognized that mere delay between the registration of a domain name and the filing of a complaint neither bars a complainant from filing such case, nor from potentially prevailing on the merits” However, similar to previous UDRP decisions, the Panel has taken into account this delay when considering the second and third elements requiring the Complainant to establish that the Respondent lacks rights or legitimate interests and that the Respondent registered and used the Disputed Domain Name in bad faith (see, e.g., CeltonManx Limited v Pham Dinh Nhut, WIPO Case No D2014-0109) (iii) The Respondent’s Failure to Respond The Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant (see, e.g., Tradewind Media, LLC d/b/a Intopic Media v Jayson Hahn, WIPO Case No D2010-1413, and M Corentin Benoit Thiercelin v CyberDeal, Inc., WIPO Case No D2010-0941) However, the Panel may draw appropriate inferences from the Respondent’s default B Identical or Confusingly Similar The Complainant is required to establish the following: (i) that it has trademark rights, and, if so, (ii) that the Disputed Domain Names are identical or confusingly similar to its trademark First, the Panel finds that the Complainant has clearly evidenced that it has registered trademark rights to MANULIFE, well before the Disputed Domain Names were registered Second, the Disputed Domain Names comprise the Complainant’s MANULIFE mark, in which the Complainant has exclusive rights The difference between the Disputed Domain Names and the trademark is the addition of the prefix “baohiem”, which can be written with tone marks in Vietnamese as “bảo hiểm”, and means “insurance” in English However, it is well established that the addition of a term to a trademark does not prevent confusing similarity Thus, in the Panel’s view, the addition of the said term does nothing to prevent the trademark from being recognizable in the Disputed Domain Names, nor to prevent confusing similarity, as it was found in previous UDRP decisions (see, e.g., Price Costco International, Inc v Huynh Van Duc, WIPO Case No D2020-0321; Philip Morris Products S.A v Ong Nguyen Ngoc Ha, WIPO Case No D2019-2509; Facebook, Inc v Domain Admin Privacy Protect, LLC (PrivacyProtect.org) / Do Viet Dung, WIPO Case No D2019-1121) Third, the Panel finds, similarly to other UDRP panels, that the addition of the gTLDs “.com” or “.net” to the Disputed Domain Names does not constitute an element as to avoid confusing similarity for the Policy purposes (see, e.g., Volkswagen AG v Privacy Protection Services, WIPO Case No D2012-2066; The Coca-Cola Company v David Jurkiewicz, WIPO Case No DME2010-0008; Telecom Personal, S.A., v NAMEZERO.COM, Inc., WIPO Case No D2001-0015; F Hoffmann La Roche AG v Macalve e-dominios S.A., WIPO Case No D20060451; Telstra Corporation Limited v Nuclear Marshmallows, WIPO Case No D2000-0003) On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, the Panel finds that the Disputed Domain Names are confusingly similar to the Complainant’s MANULIFE trademark, and the first element of the Policy is established C Rights or Legitimate Interests Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the Disputed Domain Names for the purposes of paragraph 4(a)(ii) of the Policy, including: “(i) before any notice to you of the dispute, your 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; or (ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” The Panel finds that the Complainant has made a prima facie evidence on that the Respondent has no rights or legitimate interests in the Disputed Domain Names The Respondent did not reply to the Complainant’s contentions and, therefore, did not refute them The consensus of previous UDRP decisions is that while the overall burden of proof in UDRP proceedings is on the Complainant, once a prima facie case is made, the burden of production shifts to the Respondent to come forward with relevant evidence demonstrating its rights or legitimate interests in the Disputed Domain Names (see e.g., Document Technologies, Inc v International Electronic Communications Inc., WIPO Case No D2000-0270; Julian Barnes v Old Barn Studios Limited, WIPO Case No D2001-0121) In this present case, the Panel finds that the Respondent has failed to meet that burden since no response was submitted for evidence to the contrary Regarding paragraph 4(c)(i) of the Policy, the Panel finds, in light of the Complainant’s asserted facts, that no license, permission or authorization of any kind to use the Complainant’s trademark has been granted to the Respondent There is no evidence available that the Respondent holds any registered or unregistered trademark rights in any jurisdiction related to Manulife or the Disputed Domain Names Thus, the Panel finds that the Respondent has no rights in the trademark MANULIFE A reseller or distributor may be making a bona fide offering of goods and services and thus have rights or legitimate interests in a domain name if its use meets certain requirements, which are described in the decision Oki Data Americas, Inc v ASD, Inc., supra (“Oki Data”), including: - the Respondent must actually be offering the goods or services at issue; - the Respondent must use the site to sell only the trademarked goods or services (otherwise, there is the possibility that the Respondent is using the trademark in a domain name to bait consumers and then switch them to other goods or services); - the site itself must accurately and prominently disclose the Respondent’s relationship with the trademark owner; and - the Respondent must not try to “corner the market” in domain names that reflect the trademark, thus depriving the trademark owner of the ability to reflect its own mark in a domain name In this particular case, it is well proven and evidenced by the Complainant that the Disputed Domain Names used to resolve to a website in Vietnamese, featuring the Complainant’s mark, and offering insurance-related products On such website, the Panel finds that the Respondent did not place any statement or disclaimer accurately and prominently disclosing its relationship with the Complainant In addition, both Disputed Domain Names used to direct users to a website at “www.baohiemmanulife.com”, which comprised the label “Copyright ©2021 MANULIFE INSURANCE - MANULIFE AUTHORIZED AGENT LEVEL 1” at the footer and also featured a color scheme widely associated with the Complainant In the website’s “About Us” page, the Respondent further claimed to be Manulife Viet Nam, “a member of Manulife Financial” These indications may mislead consumers into believing in a connection or association between the Respondent and the Complainant, where such connection or association does not exist in reality With such a view, the Panel finds that the use of the Disputed Domain Names wholly incorporating the Complainant’s MANULIFE trademark does not meet the Oki Data criteria and thus, does not constitute a bona fide use within paragraph 4(c)(i) of the Policy Regarding paragraphs 4(c)(ii) and 4(c)(iii) of the Policy, the Panel finds that there is no evidence that would suggest that the Respondent, as an individual, business, or other organization, has been commonly known by the Disputed Domain Names, or that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Names In fact, as it appears following the Complainant’s assertions and evidence with regard to the Respondent’s registration of the Disputed Domain Names, the Respondent had full knowledge of the MANULIFE trademark and had an intention to gain profit by riding on the goodwill and reputation of the Complainant Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names, and the second element, paragraph 4(a)(ii) of the Policy is established D Registered and Used in Bad Faith Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, including: “(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration 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-ofpocket costs directly related to the domain name; or (ii) you have 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, provided that you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.” The above four circumstances are not exhaustive and bad faith may be found by the Panel alternatively The Panel finds that the Complainant has put forth evidence that the Respondent has registered and used the Disputed Domain Names in bad faith The Respondent did not reply to the Complainant’s contentions and, therefore, did not refute the Complainant’s contentions The Panel has considered the Complainant’s assertions and evidence relating to the Respondent’s registration and use of the Disputed Domain Names In this regard, the Panel finds that the Complainant’s MANULIFE trademark has been registered in a variety of jurisdictions around the world In addition, the Complainant’s MANULIFE trademark has been registered and put in use in, among other countries, Viet Nam where the Respondent resides These trademark registrations well predate the registration of the Disputed Domain Names The Disputed Domain Names comprise the MANULIFE trademark in its entirety, adding the descriptive term “baohiem” Given the extensive use of the MANULIFE trademark for insurance services by the Complainant, which occurs in numerous countries, including in Viet Nam, where the Respondent resides, it is very unlikely that the Respondent registered the Disputed Domain Names in a fortuity Also, in consideration of the use of the Disputed Domain Names and the contents of the website “www.baohiemmanulife.com”, the Panel is of the view that the Respondent obviously knew of the Complainant and its MANULIFE trademark when it registered the Disputed Domain Names, and the Panel considers the registration is an attempt by the Respondent as to take advantage of the reputation and goodwill of the Complainant’s trademark Furthermore, it is well proved and evidenced by the Complainant that the website under the Disputed Domain Names used to offer insurance services branded with the Complainant’s trademark MANULIFE In addition to the adoption of the Complainant’s MANULIFE trademark as a uniquely distinctive part in the Disputed Domain Names, the Respondent used the Complainant’s color scheme and falsely represented itself as the Complainant’s Vietnamese branch by the label “Copyright ©2021 MANULIFE INSURANCE - MANULIFE AUTHORIZED AGENT LEVEL 1” on the website The Panel takes the view that any Internet users seeking to purchase the Complainant’s MANULIFE services would very likely mistakenly believe that the Respondent is either the Complainant or associated with the Complainant, while no such connection exists in fact Such misleading behavior is indicative of bad faith within the meaning of paragraph 4(b)(iv) of the Policy, on the part of the Respondent Moreover, on the date of this Decision, the Panel accesses the Disputed Domain Names and finds that they are resolving to a Google website “www.sites.google.com/view/dotunglammanulife”, which offers to sell the Disputed Domain Names Such offer for sale of the Disputed Domain Names is an indicative fact of bad faith in the Panel’s view Furthermore, the Panel finds that there has been a “pattern of conduct” on the part of the Respondent as it has registered many other domain names which incorporate the brand names of third parties (such as FORD, TOYOTA, and VIN FAST) See section 3.1.2 of WIPO Overview 3.0 Taking into account all of the above and the available record, the Panel finds that the Disputed Domain Names were registered and are being used by the Respondent in bad faith and the third element under paragraph 4(a)(iii) of the Policy is established Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Names, and , be transferred to the Complainant Pham Nghiem Xuan Bac Sole Panelist Date: September 14, 2021