WIPO Resolves honghagas.com Domain Name Dispute
30 October 2012
The World Intellectual Property Organization’s Arbitration and Media Centre has rules in a dispute between two Vietnamese companies regarding the rights to an internet domain name. The arbitration panel ordered that the disputed name – honghagas.com.vn – be transferred to Tran Hong Quan Trading Co (the complainant), a distributor of cooking gas in northern Vietnam.
The complainant had registered the domain name honghagas.com with the Vietnam Internet Network Information Centre in November 2003. The defendant, TM&DV Joint Stock Co, registered the same domain name with ICANN in October 2009, claiming that its business was related to the gas industry.
Tran Hong Quan argued that TM&DV was actually a cyber squatter and that it must have aware of the complainant, since both were registered and doing business in Hanoi. The complainant noted that it was one of only a few accredited cooking gas distributors in Vietnam, and that its mark was well-known by most consumers, especially in northern Vietnam.
The complainant also claimed that the respondent has used the disputed domain name for commercial gain, by advertising gas provision services and by writing articles on the gas market, whereby consumers might be confused between the respondent and complainant.
It also noted that is the owner of a word mark registered in Vietnam in April 2008 for Hong Ha and a design mark registered in November 2003 for Hongha Gas and design.
The respondent says that the disputed domain name is made up of two common words “hong ha” and “gas.” The centre found that the respondent failed to prove why hong ha was a common term.
The Respondent also denied that there has been any confusion or even any risk of confusion, and that it ever tried to mislead or divert internet users. It further argued that that it has rights or legitimate interests in the disputed domain name because it was entitled to register the disputed domain name on a “first come, first served” basis.
It also argued that while the domain name was an “international domain name,” the complainant had only registered its rights in Vietnam.
The panel ultimately rejected the respondent’s arguments and found that the complainant had met the necessary conditions under the Uniform Domain Name Dispute Resolution Policy for establishing its rights to the domain name.
It also found that the name honghagas.com, registered by the defendant, was identical to the complainant’s registered mark, and rejected the respondent’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.
The panel also 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.
It ordered the disputed domain name honghagas.com be transferred to the complainant.
