MIDEA GROUP CO., LTD v. DJ DENG / DHA America, Inc.
Claim Number: FA2110001967409
Complainant is MIDEA GROUP CO., LTD (“Complainant”), represented by Paddy Tam of CSC Digital Brand Services AB, Sweden. Respondent is DJ DENG / DHA America, Inc. (“Respondent”), Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <midea.us>, registered with GoDaddy.com, LLC.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 4, 2021; the Forum received payment on October 4, 2021.
On October 4, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <midea.us> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On October 5, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 25, 2021 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@midea.us. Also on October 5, 2021, the 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 October 30, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD 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.
A. Complainant
Complainant contends as follows:
Complainant, Midea Group Co., Ltd., is an electrical appliance manufacturer.
Complainant has rights in the MIDEA mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <midea.us> domain name is confusingly similar to Complainant’s mark since it incorporates Complainant’s entire mark and adds the country code top level domain (“ccTLD”) “.us.”
Respondent lacks rights and legitimate interests in the <midea.us> domain name as it is not commonly known by the at-issue domain name and Complainant has not permitted Respondent to use the MIDEA mark. Additionally, Respondent does not use the domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use. Instead, Respondent redirects internet users to a website featuring links to third-party websites, some of which directly compete with Complainant's business. Additionally, Respondent offers the domain name for sale in an amount that far exceeds the Respondent’s out-of-pocket expenses in registering the domain.
Respondent registered or uses the <midea.us> domain name in bad faith. Respondent is currently offering to sell the disputed domain name for valuable consideration in excess of his out-of-pocket expenses. Also, Respondent capitalizes on the fame and goodwill of the Complainant’s trademark in order to increase traffic to Respondent’s website for Respondent’s own pecuniary gain. This is evidenced by the presence of multiple pay-per-click links on the website, some of which directly reference Complainant and/or its competitors. Lastly, Respondent has constructive and/or actual knowledge of Complainant’s rights in the MIDEA mark based on the fame of the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the MIDEA trademark through its registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the MIDEA trademark.
Respondent uses the <midea.us> domain name to address a webpage with various pay-per-click links some of which link to Complainant’s competitors.
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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant shows that it has a USPTO registration for its MIDEA trademark. Such registration is sufficient to show Complainant’s rights in a mark pursuant to the Policy. See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Respondent’s <midea.us> domain name contains Complainant’s <midea.us> trademark followed by with a necessary top-level name, here “.us” The slight difference between Respondent’s domain name and Complainant’s trademark is insufficient to distinguish the <midea.us> domain name from Complainant’s MIDEA trademark under Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <midea.us> domain name is confusingly similar or identical to Complainant’s trademark. See MIGROS-GENOSSENSCHAFTS-BUND v. Tayfun yalcin, FA 1621184 (Forum July 8, 2015) (“In light of the fact that Respondent’s disputed domain name incorporates Complainant’s whole mark and merely adds the ccTLD “.us,” the Panel here finds that the disputed domain name is identical to Complainant’s MIGROS mark.”); see also Lifetouch, Inc. v. Fox Photographics, FA 414667 (Forum Mar. 21, 2005) (finding the respondent’s <lifetouch.us> domain name to be identical to the complainant’s LIFETOUCH mark because “[t]he addition of “.us” to a mark fails to distinguish the domain name from the mark pursuant to the [usTLD] Policy”).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”).
The WHOIS information for the at-issue domain name identifies the domain name’s registrant as “DJ DENG / DHA America, Inc.” and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by the <midea.us> domain name. The Panel therefore concludes that Respondent is not commonly known by the <midea.us> domain name for the purposes of Policy ¶ 4(c)(iii). See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the at-issue domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent uses the confusingly similar <midea.us> to address a website containing pay-per-click links to third-parties some of which directly compete with Complainant's business. Respondent’s use of the confusingly similar domain name in this manners indicates neither a bona fide offering of goods or services under Policy ¶ 4(c)(ii), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iv). See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”); see also Coachella Music Festival, LLC v. josh greenly / All Access Tickets, FA1507001629217 (Forum Aug. 10, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name as required under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), where the respondent was using the disputed domain name to host a web page that featured links to services that competed with those of the complainant).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name under Policy ¶ 4(a)(ii).
Respondent’s <midea.us> domain name was registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First, Respondent uses its confusingly similar domain name to misdirect internet users seeking Complainant to Respondent’s <midea.us> webpage. There, Respondent further exploits the goodwill found in Complainant’s trademark by displaying pay-per-click links to third-parties including links to Complainant’s competition. Respondent’s use of <midea.us> to feign an affiliation between Complainant and Respondent so that Respondent may commercially benefit is disruptive to Complainant’s business and demonstrates Respondent’s bad faith registration and use of the at-issue domain name under Policy ¶¶ 4(b)(iii) and (iv). See Transamerica Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1798316 (Forum Aug. 20, 2018) (“Respondent's use of the domain name to link to competitors of Complainant, presumably generating pay-per-click or referral fees for Respondent, is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv).”); see also For Your Ease Only, Inc v. Expired domain caught by auction winner.***Maybe for sale on Dynadot Marketplace*** c/o Dynadot, FA 1791755 (Forum July 16, 2018) (“[T]he evidence shows that Respondent previously used the domain names to resolve to websites which hosted links to Complainant’s competitors; this demonstrates bad faith under Policy ¶¶ 4(b)(iii) and (iv).”); see additionally Zynex Medical, Inc. v. New Ventures Services, Corp, FA 1788042 (Forum July 2, 2018) (“The resolving webpage [] appears to display [competing] links such as “Electrical Stimulation” and “Physical Therapy Software.” Accordingly, the Panel agrees that Respondent disrupts Complainant’s business and attempted to commercially benefit off Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iii) & (iv).”).
Additionally, Respondent registered <midea.us> knowing that Complainant had trademark rights in the MIDEA mark. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark. See Google LLC v. DIGITAL MARKETING AND SOLUTIONS PTY LTD, FA1808001799663 (Forum Sept. 20, 2018) (“Complainant’s ANDROID mark has created significant good will and consumer recognition around the world and was first used by Complainant in 2007. [. . .] Therefore, due to the fame of Complainant’s mark, the Panel finds that Respondent had actual knowledge of Complainant’s rights [. . .].”). Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used <midea.us> in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Complainant claims Respondent offered to transfer that at-issue domain name for an amount in excess of its reasonable cost thereby showing bad faith under Policy ¶ 4(b)(i). In support of such assertion Complainant submits an image of a page from a third party domain registrar’s website which suggests that the at-issue domain name is available for purchase. While a general offer of sale may support bad faith per Policy ¶ 4(b)(i) ‑here the third party registrar’s webpage states “midea.us is available Minimum Offer $20,888.00”‑ there is no showing of a nexus between the webpage statement and Respondent such that the Panel may conclude that Respondent itself is, or was ever, intent on transferring its at-issue domain name. Certainly a third party might on its own account solicit consumer interest in purchasing a particular registered domain name in hopes of brokering a deal or engaging in arbitrage and thereby profiting from such transfer. Indeed, a domain name owner might not even be aware that its domain name’s transfer is being promoted by a third party unless and until the third party or another directly informs the domain name owner of such. Without evidence that Respondent was at least aware of the third party’s listing, and/or evidence that Respondent sanctioned the domain name’s transfer, the Panel cannot find that Respondent was offering <midea.us> for sale as Complainant claims, pursuant to Policy ¶ 4(b)(i) or otherwise.
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <midea.us> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: November 1, 2021
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