World First UK Limited v Lam Huu Lam, Đầu tư và phát triển kinh doanh

WIPO Case No. D2024-1514

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

World First UK Limited v. Lam Huu Lam, Đầu tư và phát triển kinh doanh
World First

Case No. D2024-1514

1. The Parties

The Complainant is World First UK Limited, United Kingdom (hereaf ter “UK”), represented by ELLALAN,

Hong Kong, China.

The Respondent is Lam Huu Lam, Đầu tư và phát triển kinh doanh World First, Viet Nam.

2. The Domain Name and Registrar

The disputed domain name <oneworldfirst.com> (the “Disputed Domain Name”) is registered with Hostinger

Operations, UAB (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 10, 2024.

On April 10, 2024, the Center transmitted by email to the Registrar a request for registrar verif ication in

connection with the Disputed Domain Name. On April 11, 2024, the Registrar transmitted by email to the

Center its verif ication response disclosing registrant and contact information for the Disputed Domain Name

which differed from the named Respondent (Domain Admin) and contact information in the WHOIS record

f iled as an annex to the Complaint. The Center sent an email communication to the Complainant on April 16,

2024, providing the registrant and contact information disclosed by the Registrar, and inviting the

Complainant to submit an amendment to the Complaint. The Complainant f iled an amended Complaint on

April 21, 2024.

The Center verif ied that the Complaint together with the amended Complaint satisf ied 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 2 and 4, the Center formally notif ied the Respondent of the

Complaint, and the proceedings commenced on April 24, 2024. In accordance with the Rules, paragraph 5,

the due date for Response was May 14, 2024. The Respondent did not submit any response. Accordingly,

the Center notif ied the Respondent’s default on May 25, 2024.

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The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on May 30, 2024. The

Panel f inds 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

The Complainant, World First UK Limited, is a global f intech company established in 2004 that provides

digital payments and financial services for cross-border businesses. The Complainant employs more than

500 people worldwide.

The Complainant is the owner of several trademarks including the following: 

- WORLDFIRST, international word mark registered under No. 1398207 on September 19, 2017, in

classes 9 and 36, covering, among other countries, Vietnam;

- UK f igurative mark registered under No. UK00002454370 on September 28, 2007, in class 36:

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-	when researching the Respondent’s organization name on Google, no results related to the
Respondent are found;
-	the Respondent is making use of the significant reputation, level of goodwill and the trademark of the
Complainant to attract traf f ic to the website linked to the Disputed Domain Name;
-	the website linked to the Disputed Domain Name is likely to be used for f ishing by trying to collect
personal information of Internet users;
-	even though the Disputed Domain Name is currently not in use, it is used to divert Internet traf f ic for
the Respondent’s own commercial gain.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

It is well accepted that the f irst element functions primarily as a standing requirement. The standing (or

threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between

the Complainant’s trademark and the Disputed Domain Name. WIPO Overview of WIPO Panel Views on

Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

Based on the available record, the Panel finds the Complainant has shown rights in respect of a trademark

or service mark for the purposes of the Policy.  WIPO Overview 3.0, section 1.2.1. 

The Panel observes that the entirety of the WORLDFIRST mark is reproduced within the Disputed Domain

Name.  In such cases, the domain name will normally be considered confusingly similar to the incorporated

mark for purposes of UDRP standing.  WIPO Overview 3.0, section 1.7. 

Additionally, the Panel finds that the addition of another term – here, “one” – does not prevent a f inding of

confusing similarity between the Disputed Domain Name and the mark for the purposes of the Policy.  WIPO

Overview 3.0, section 1.8.   

It is well established that generic Top-Level-Domains (“gTLDs”), here “.com”, may be disregarded when

considering whether the Disputed Domain Name is confusingly similar to a trademark in which the

Complainant has rights. 

Based on the available record, the Panel f inds the f irst element of the Policy has been established. 

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate

rights or legitimate interests in a disputed domain name. 

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized

that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task

of “proving a negative”, requiring information that is of ten primarily within the knowledge or control of the

respondent.  As such, where a complainant makes out a prima facie case that the respondent lacks rights or

legitimate interests, the burden of production on this element shifts to the respondent to come forward with

relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of

proof always remains on the complainant).  If the respondent fails to come forward with such relevant

evidence, the complainant is deemed to have satisf ied the second element.  WIPO Overview 3.0, section

2.1. 

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Having reviewed the available record, the Panel finds the Complainant has established a prima facie case

that the Respondent lacks rights or legitimate interests in the Disputed Domain Name.  The Respondent has

not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence

demonstrating rights or legitimate interests in the Disputed Domain Name such as those enumerated in the

Policy or otherwise. 

According to the information provided by the Registrar, the Respondent is “Lam Huu Lam” f rom the

organization “Đầu tư và phát triển kinh doanh World First”. The Panel f inds that despite the presence of the

terms “World First” in the name of the Respondent’s organization, the Respondent has not apparently been

commonly known by the Disputed Domain Name. The Panel notes that the Respondent does not seem to

have acquired trademark or service mark rights. The Respondent’s use and registration of the Disputed

Domain Name was not authorized by the Complainant.

Fundamentally, a respondent’s use of a domain name will not be considered “fair” if it falsely suggests

af f iliation with the trademark owner. The correlation between a domain name and the complainant’s mark is

of ten central to this inquiry. Even where a domain name consists of a trademark plus an additional term,

such composition cannot constitute fair use if it ef fectively impersonates or suggests sponsorship or

endorsement by the trademark owner.  WIPO Overview 3.0, section 2.5.1.  

The Disputed Domain Name incorporates the Complainant’s WORLDFIRST trademark in its entirety and

merely adds the descriptive term “one”.  In the Panel’s view, this term may be considered to relate to the

Complainant and its WORLDFIRST mark, especially given the correlation between this term and the second

part of the Complainant’s trademark “f irst”.  Therefore, the Panel f inds that the Disputed Domain Name

carries a risk of implied af f iliation with the Complainant.  

Beyond looking at the domain name and the nature of any additional terms appended to it, UDRP panels

assess whether the overall facts and circumstances of the case, and the absence of a response, support a

fair use or not. WIPO Overview 3.0, (see sections 2.5.2 and 2.5.3 of the WIPO Overview 3.0). 

According to the Complainant’s evidence, the Disputed Domain Name appeared to resolve to a website

of fering sales services for cross-border e-commerce businesses and mentioning (slight variations of ) the

Complainant’s WORLDFIRST trademark and company name, the address of its registered of f ices and the

domain name <worldfirst.com> linked to the Complainant’s official website. The Panel f inds that this does

not amount to a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the

Disputed Domain Name.

The Panel observes that the Disputed Domain Name currently resolves to an inaccessible website.  In the

Panel’s view, this does not amount to any legitimate noncommercial or fair use or use in connection with a

bona f ide of fering of goods and services either. 

The Respondent had the opportunity to demonstrate his rights or legitimate interests but did not do so.  In the

absence of a Response from the Respondent, the prima facie case established by the Complainant has not

been rebutted. 

Based on the available record, the Panel f inds the second element of the Policy has been established. 

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy

establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall

be evidence of the registration and use of a domain name in bad faith.   

As established above, the Complainant’s has shown that the Disputed Domain Name resolved to a website

of fering sales services for cross-border e-commerce businesses and mentioning (slight variations of ) the

Complainant’s WORLDFIRST trademark and company name, the address of its registered of f ices and the

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domain name <worldf irst.com> linked to the Complainant’s of f icial website. In the Panel’s view, the

circumstances of this case indicate that the Respondent has intentionally attempted to attract Internet users

to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trademark.

WIPO Overview 3.0, section 3.2.4.

Other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain

name is in bad faith.  WIPO Overview 3.0, section 3.2.1. 

In the present case, the Panel finds that the Respondent must have been aware of the Complainant and its

trademark rights when it registered the Disputed Domain Name as: 

-	Some of the Complainant’s trademarks predate the registration of the Disputed Domain Name by
more than 15 years. The Complainant’s international mark covering Vietnam, where the Respondent
appears to be located, predates the registration of the Disputed Domain Name by more than 6 years;
-	The Disputed Domain Name incorporates the Complainant’s trademark in its entirety, and combines it
with a short term which could be seen as referring to the Complainant and/or its WORLDFIRST
trademark;
-	The Disputed Domain Name appeared to resolve to a website not only mentioning (slight variations of)
the Complainant’s WORLDFIRST trademark, but also company information such as the address of the
Complainant’s registered of f ices.

Given the totality of the circumstances discussed above, the current state of the Disputed Domain Name

redirecting to an inaccessible webpage does not prevent a finding of bad faith under the doctrine of passive

holding. WIPO Overview 3.0, section 3.3.

Based on the available record, the Panel finds that the Complainant has established the third element 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 Disputed Domain Name <oneworldf irst.com> be transferred to the Complainant.

/Flip Jan Claude Petillion/ Flip Jan Claude Petillion

Sole Panelist

Date: June 13, 2024

The Disputed Domain Name was registered on November 2, 2023. According to the Complainant’s

evidence, the Disputed Domain Name appeared to resolve to a website in Vietnamese mentioning the

Complainant’s WORLDFIRST trademark, company name, the address of its registered of f ices and the

domain name <worldfirst.com> linked to the Complainant’s of f icial website. The Panel observes that the

Disputed Domain Name currently resolves to an inaccessible website.

5. Parties’ Contentions

A. Complainant

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

of the Disputed Domain Name.  

The Complainant further claims that the Respondent has no legitimate interests in respect of the Disputed

Domain Name as:

-	the Complainant has never permitted the Respondent to use the WORLDFIRST trademarks to register
any domain name;
-	the Complainant has found no registered trademark corresponding to the Disputed Domain Name or
any registered trademark registered by the Respondent;
-	the Respondent has been using the Disputed Domain Name to mislead costumers into believing that
the Respondent’s website is associated with websites owned by the Complainant.

Finally, the Complainant claims that the Disputed Domain Name was registered and is being used in bad

faith.  According to the Complainant:

-	the Respondent should have had the knowledge of the Complainant and it’s WORLDFIRST
trademarks;
-	the Respondent used the Disputed Domain Name to direct to a website that was designed to look like
a website of the Vietnamese branch of the Complainant;