Julius Blum GmbH v Dang Van Giap

WIPO Case No. D2025-0075

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Julius Blum GmbH v. Dang Van Giap

Case No. D2025-0075

1. The Parties

Complainant is Julius Blum GmbH, Austria, represented by Torggler & Hofmann Patentanwälte GmbH & Co

KG, Austria.

Respondent is Dang Van Giap, Viet Nam.

2. The Domain Name and Registrar

The disputed domain name <phukienblumviet.com> (the “Domain Name”) is registered with iNET

Corporation (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on verification in connection with the Domain Name. On January 11, 2025, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent (Name not available) and contact information in the Complaint. The Center sent an email communication to Complainant on January 14, 2025, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint in English on January 17, 2025.

On January 14, 2025, the Center informed the Parties in Vietnamese and English, that the language of the
Registration Agreement for the Domain Name is Vietnamese. On January 17, 2025, Complainant confirmed
its request that English be the language of the proceeding. Respondent did not submit any comment on

Complainant’s submission.

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”).

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In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint in Vietnamese and English, and the proceedings commenced on January 17, 2025. In accordance with the Rules, paragraph 5, the due date for Response was February 6, 2025. Respondent did not submit any

response. Accordingly, the Center notified Respondent’s default on February 9, 2025.

The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on February 12, 2025. 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 7.

4. Factual Background

Founded in 1952, Complainant manufactures furniture fittings and employs over 9,200 employees worldwide.

Complainant owns numerous registered trademarks in Viet Nam and other jurisdictions, such as:

- International Registered Trademark Number 598611 for the BLUM word mark registered on

February 16, 1993;

- International Registered Trademark Number 996626 for the BLUM word mark registered on

November 18, 2008; and

- International Registered Trademark Number 1171363 for the BLUM figurative mark registered on April

29, 2013.

Complainant also owns and operates the domain names <blum.com> and <blum.vn>.

The Domain Name was registered on April 10, 2024, and at the time of filing of the Complaint, resolved to a webpage which offered hardware, such as furniture fittings.

5. Parties’ Contentions

A. Complainant

Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the

Domain Name.

Complainant contends that (i) the Domain Name is confusingly similar to Complainant’s trademarks; (ii) using the Domain Name in bad faith.

In particular, Complainant contends that it has trademark registrations for BLUM, and that Respondent registered and is using the Domain Name with the intention to confuse Internet users looking for bona fide and well-known BLUM products and services.

Complainant notes that it has no affiliation with Respondent, and that Respondent offers furniture fittings and furniture accessories including products from Complainant’s competitors on the website to which the Domain Name resolves. Complainant further contends that Respondent is using the Domain Name as a tool to

exploit Complainant’s reputation for its own commercial gain, and that Respondent has no rights or legitimate
interests in the registration and use of the Domain Name. Further, Complainant contends that Respondent
has acted in bad faith in acquiring and setting up the Domain Name, when Respondent clearly knew of
Complainant’s rights, as Respondent is the same person as the respondent in the Julius Blum GmbH v.
Dang Van Giap, WIPO Case No. D2023-4088 against the domain name <blumviet.com>.

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B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

6.1. Preliminary Issue: Language of the Proceedings

The Rules, in paragraph 11(a), provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceedings 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 proceedings.

Complainant submitted its original Complaint in English. In its amended Complaint dated January 17, 2025, Complainant confirmed its request that the language of the proceedings should be English. According to the information received from the Registrar, the language of the Registration Agreement for the Domain Name is Vietnamese. Respondent did not submit any comment on Complainant’s submission.

Complainant submits that the Domain Name resolved to a webpage which contains some content in English, such as “All rights reserved”, “design by”, “Shopping Cart”, “Checkout details”, “Order Complete” “website”, “email”, “hotline”, etc., which Complainant indicates that Respondent is familiar with English. Complainant also noted that it is an international company and is familiar with English.

In exercising its discretion to use a language other than that of the Registration Agreement for the Domain Name, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time, and costs.

The Panel accepts Complainant’s submissions regarding the language of the proceedings. The Panel also notes that the Domain Name contains Complainant’s BLUM trademark in its entirety, the Domain Name directed to a website that featured Complainant’s BLUM trademark and provided content that was partially in English; Respondent is using the Domain Name to host a website where competing products are sold, has actively targeted Complainant’s business and trademark; and it would be cumbersome, costly, and result in delay, if Complainant is required to translate the Complaint into Vietnamese.

The Panel further notes that the Center notified the Parties in Vietnamese and English of the language of the proceedings as well as notified Respondent in Vietnamese and English of the Complaint. Respondent chose not to comment on the language of the proceedings, nor did Respondent choose to file a Response in

Vietnamese or English.

Having considered all the circumstances of this case, the Panel determines that English be the language of the proceedings.

6.2. Substantive Issues

Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:

(i)        the Domain Name is identical or confusingly similar to a trademark or service mark in which

Complainant has rights;

(ii)       Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii)      the Domain Name was registered and is being used in bad faith.

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Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition
(“WIPO Overview 3.0”) states that failure to respond to the complainant’s contentions would not by itself
mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an

admission that the complainant’s claims are true.

Thus, although in this case, Respondent has failed to respond to the Complaint, the burden remains with evidence.

A. Identical or Confusingly Similar

Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite
rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See WIPO Overview 3.0, section 1.2.1.
Complainant has provided evidence of its rights in the BLUM trademarks, as noted above under Section 4.

Complainant has therefore proven that it has the requisite rights in the BLUM trademarks.

With Complainant’s rights in the BLUM trademarks established, the remaining question under the first
element of the Policy is whether the Domain Name, typically disregarding the Top-Level Domain (“TLD”) in
which it is registered (in this case, “.com”), is identical or confusingly similar to Complainant’s trademark.
See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No.
D2010-0842.

Here, the Domain Name is confusingly similar to Complainant’s BLUM trademarks. The BLUM trademark is recognizable in the Domain Name.

In particular, the Domain Name’s inclusion of Complainant’s BLUM trademark in its entirety, with an addition of the term “phukien” preceding BLUM mark and the term “viet” following the BLUM mark, does not prevent a finding of confusing similarity between the Domain Name and the BLUM trademark. See section 1.8 of the

WIPO Overview 3.0.

Thus, the Panel finds that Complainant has satisfied the first element of the Policy.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, a complainant must make a prima facie showing that a respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once a complainant makes out such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with relevant evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.

From the record in this case, it is evident that Respondent was, and is, aware of Complainant and its BLUM trademarks, and does not have any rights or legitimate interests in the Domain Name. In addition, Complainant asserts that Respondent is not authorized to promote Complainant’s goods or services and is not related to Complainant. Respondent is also not known to be associated with the BLUM trademarks and there is no evidence showing that Respondent has been commonly known by the Domain Name.

In addition, Respondent has not used the Domain Name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, at the time of the filing of the Complaint, the Domain Name resolved to a website that offers products which are in direct competition with Complainant’s field of business and industry. The website which the Domain Name resolved to, featured the BLUM trademark, a copyright notice “All rights reserved - design by phukienblumviet.com” as well as products in Complainant’s field of business, potentially misleading Internet users into thinking that the website has been authorized or operated by or affiliated with Complainant.

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Thus, such use by Respondent does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use and cannot under the circumstances confer on Respondent any rights or legitimate interests in the Domain Name.

Moreover, the nature of the Domain Name, which includes Complainant’s trademark BLUM, with the term
“phụ kiện” meaning “accessory” in English along with “Viet” referring to Viet Nam is inherently misleading and
carries a risk of implied affiliation. See WIPO Overview 3.0, section 2.5.1.

Accordingly, Complainant has provided evidence supporting its prima facie claim that Respondent lacks any rights or legitimate interests in the Domain Name. Respondent has failed to produce countervailing evidence of any rights or legitimate interests in the Domain Name.

Thus, the Panel concludes that Respondent does not have any rights or legitimate interests in the Domain

Name, and Complainant has met its burden under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel finds that Respondent’s actions indicate that Respondent registered and is using the Domain
Name in bad faith.

Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:

“(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-of-pocket 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 Panel finds that Complainant has provided ample evidence to show that registration and use of the BLUM trademarks long predate the registration of the Domain Name. Complainant is also well established and known. Indeed, the record shows that Complainant’s BLUM trademarks and related products and services are widely known and recognized. Respondent was subject to another UDRP proceeding with the Complainant, in which the Panel decided for the transfer of the domain name <blumviet.com>. The Domain Name is registered after the said decision. Therefore, the Panel is of the view of that Respondent was aware of the BLUM trademarks when it registered the Domain Name. See WIPO Overview 3.0, section 3.2.2; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited, WIPO Case No. D2016-1973.

The Panel therefore finds that Respondent’s awareness of Complainant’s trademark rights at the time of registration suggests bad faith. See Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz, WIPO Case No. D2011-2209; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070; and BellSouth Intellectual Property

Corporation v. Serena, Axel, WIPO Case No. D2006-0007.
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Further, the registration of the Domain Name, which includes Complainant’s BLUM trademark suggests
Respondent’s actual knowledge of Complainant’s rights in the BLUM trademarks at the time of registration of
the Domain Name and its effort to opportunistically capitalize on the registration and use of the Domain

Name.

Moreover, Respondent registered and is using the Domain Name to confuse and mislead consumers looking
for bona fide and well-known BLUM products and services of Complainant or authorized partners of
Complainant.

In particular, at the time of filing of the Complaint, the Domain Name resolved to a website featuring Complainant’s BLUM mark, a copyright notice “All rights reserved - design by phukienblumviet.com” as well as products in Complainant’s field of business and industry, to promote Respondent’s activities. The use of the BLUM mark in the Domain Name is intended to capture Internet traffic from Internet users who are looking for Complainant’s products and services. Moreover, the term “phukien” preceding the BLUM mark in the Domain Name translates to “accessory” in English, which causes further confusion as Complainant’s business is in the field of hardware fittings or accessories.

Therefore, by using the Domain Name, and then further to promote products that are in direct competition with Complainant, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s BLUM mark as to the source,

sponsorship, affiliation, or endorsement of Respondent’s website. All these actions may result in tarnishing

Complainant’s reputation and goodwill in the industry.

Accordingly, the Panel finds that Respondent registered and is using the Domain Name in bad faith and

Complainant succeeds under the third element of paragraph 4(a) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <phukienblumviet.com> be transferred to Complainant.

/Kimberley Chen Nobles/
Kimberley Chen Nobles
Sole Panelist
Date: February 26, 2025