Infineon Technologies AG v. liu wei jie / xuzhongm / yinfineom
Claim Number: FA1910001868798
Complainant is Infineon Technologies AG (“Complainant”), represented by Gary J. Nelson of Lewis Roca Rothgerber Christie LLP, California, USA. Respondent is liu wei jie / xuzhongm / yinfineom (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <infineom.com> and <yinfineom.com>, registered with Xin Net Technology Corporation; Alibaba Cloud Computing (Beijing) Co., Ltd..
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 28, 2019; the Forum received payment on October 28, 2019. The Complainant was submitted in both English and Chinese.
On October 31, 2019; Nov 01, 2019, Xin Net Technology Corporation; Alibaba Cloud Computing (Beijing) Co., Ltd. confirmed by e-mail to the Forum that the <infineom.com> and <yinfineom.com> domain names are registered with Xin Net Technology Corporation; Alibaba Cloud Computing (Beijing) Co., Ltd. and that Respondent is the current registrant of the name. Xin Net Technology Corporation; Alibaba Cloud Computing (Beijing) Co., Ltd. has verified that Respondent is bound by the Xin Net Technology Corporation; Alibaba Cloud Computing (Beijing) Co., Ltd. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 11, 2019, the Forum served the the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of December 2, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@infineom.com, postmaster@yinfineom.com. Also on November 11, 2019, the Chinese language Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On December 9, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
PRELIMINARY ISSUE 1: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that the resolving webpages at both domain names list “Shenzhen Yingkeling Technology Co., Ltd. as the owner of the webpages. Additionally, Complainant argues that the domain names list the same telephone and fax numbers. Finally, Complainant argues that the disputed domain names utilize Complainant’s mark in the same manner.
The Panel finds the domain names are commonly owned/controlled by a single Respondent who is using multiple aliases.
The Panel notes that the Registration Agreement is written in Chinese, thereby making the language of the proceedings in Chinese. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings should be conducted in English.
A. Complainant
i) Complainant uses the INFINEON mark in connection with manufacturing of semiconductors and systems for automotive, industrial, multimarket sectors and offering of services related to the same products. Complainant has rights in the INFINEON mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,516,259, registered Dec. 11, 2001) and Chinese State Administration for Industry and Commerce (“SAIC”) (e.g. Reg. No. G718087, registered July 12, 2009). The disputed domain names are identical or confusingly similar to Complainant’s mark as they feature Complainant’s entire mark, changing the letter “n” to an “m” at the end of the mark and adding the “.com” generic top-level domain (“gTLD”). The <yinfineom.com> domain name also adds the letter “y” to Complainant’s mark.
ii) Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names and Complainant has not authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent fails to use the domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain names to purport to offer goods and services that are directly competitive with Complainant.
iii) Respondent registered and uses the disputed domain names in bad faith. Respondent uses the disputed domain names to attract Internet users to Respondent’s webpages and offer goods and services directly competitive with Complainant. Furthermore, Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in the INFINEON mark.
B. Respondent
Respondent did not submit a response in this proceeding.
1. Respondent registered the <infineom.com> domain name on November 29, 2010 and the <yinfineom.com> domain name on February 20, 2019.
2. Complainant has established rights in the INFINEON mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,516,259, registered Dec. 11, 2001) and Chinese State Administration for Industry and Commerce (“SAIC”) (e.g. Reg. No. G718087, registered July 12, 2009).
3. Respondent offers goods which directly compete with Complainant like IGBT modules and other electronic components.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant asserts rights in the INFINEON mark based on registration with the USPTO and SAIC. Registration of a mark with the USPTO and SAIC sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Fossil Group, Inc. v. wuruima wu, FA 1544486 (Forum Mar. 21, 2014) (holding, “Complainant’s registration of the FOSSIL mark with trademark agencies worldwide, including the USPTO and SAIC, establishes Complainant’s rights in the FOSSIL mark pursuant to Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant has established rights in the INFINEON mark for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <infineom.com> and <yinfineom.com> domain names are identical or confusingly similar to Complainant’s mark as they feature Complainant’s entire mark, changing the letter “n” to an “m” at the end of the mark and adding the “.com” gTLD and the <yinfineom.com> domain name adds the letter “y” to Complainant’s mark. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See Bank of America Corporation v. Above.com Domain Privacy, FA 1629452 (Forum Aug. 18, 2015) (finding that the <blankofamerica.com> domain name contains the entire BANK OF AMERICA mark and merely adds the gTLD ‘.com’ and the letter ‘l’ to create a common misspelling of the word ‘bank’); see also Staples, Inc. v. Whois Privacy Shield Services, FA 1617690 (Forum June 5, 2015) (“Changing a single letter (especially when it is the final letter) is a minor enough change to support a finding of confusing similarity under Policy ¶ 4(a)(i).”). The Panel therefore finds that the disputed domain names are confusingly similar to the INFINEON mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues Respondent has no rights or legitimate interests in the <infineom.com> and <yinfineom.com> domain names. Respondent is not commonly known by the disputed domain names and Complainant has not authorized, licensed, or otherwise permitted Respondent to use the mark. WHOIS information may be used to determine whether a respondent is commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). The WHOIS information for the <infineom.com> domain name lists the registrant as “liu wei jie” and the <yinfineom.com> domain name lists the registrant as “xuzhongm/yinfineon.” There is no affirmative evidence in the record to show Respondent is commonly known by the disputed domain names and there is no other evidence to suggest that Respondent was authorized to use the INFINEON mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii).
Complainant argues Respondent fails to use the domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the disputed domain names to purport to offer goods and services that are directly competitive with Complainant. Use of a disputed domain name to offer goods or services which directly complete with a complainant may not be a bona fide offering of goods or services per Policy ¶ 4(c)(i) or legitimate noncommercial or fair use per Policy ¶ 4(c)(iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (“use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Complainant argues Respondent offers goods which directly compete with Complainant like IGBT modules and other electronic components and provides screenshots of the resolving webpages of the disputed domain names. See Compl Exs. C and D. The Panel therefore finds Respondent does not use the disputed domain names to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant argues Respondent registered and uses the disputed domain names in bad faith as Respondent uses the disputed domain names to attract Internet users to Respondent’s webpages and offer goods and services directly competitive with Complainant. Use of a disputed domain name to divert Internet users to a respondent’s webpage and offer goods or services which directly compete with a complainant can show bad faith registration and use per Policy ¶¶ 4(b)(iii) and (iv). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum January 9, 2018) (finding that the respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)); see also Ontel Products Corporation v. waweru njoroge, FA 1762229 (Forum Dec. 22, 2017) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iii) and (iv) through the respondent’s registration and use of the infringing domain name to reference the complainant’s products and offer competitive and/or counterfeit products). Complainant argues Respondent offers goods which directly compete with Complainant like IGBT modules and other electronic components and provides screenshots of the resolving webpages of the disputed domain names. See Compl Exs. C and D. The Panel therefore finds Respondent registered and uses the disputed domain names in bad faith per Policy ¶¶ 4(b)(iii) or (iv).
Furthermore, Complainant argues Respondent registered the disputed domain names in bad faith as Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in the INFINEON mark. Use of a complainant’s mark on a resolving webpage to attract Internet traffic can show actual knowledge of a Complainant’s trademark rights prior to registration. See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”); see also Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (“Complainant contends Respondent’s appropriation of Complainant’s trademark was a clear intent to trade upon Complainant’s reputation and goodwill in order to confuse Internet users. Therefore, the Panel finds Respondent did have actual knowledge of Complainant’s mark prior to registration and this constitutes bad faith per Policy ¶ 4(a)(iii).”). Complainant argues that Respondent’s knowledge of Complainant’s trademark rights prior to registration is evidenced by Respondent’s explicit use of the INFINEON mark on the resolving webpages of the disputed domain names. See Compl. Exs. C and D. As the Panel agrees, the Panel infers that Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in the INFINEON mark and finds that it registered the disputed domain names in bad faith per Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <infineom.com> and <yinfineom.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: December 16, 2019
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