Cavium, Inc. v. yunfu qiu
Claim Number: FA1301001480098
Complainant is Cavium, Inc. (“Complainant”), represented by Farah P. Bhatti of Buchalter Nemer, California, USA. Respondent is yunfu qiu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <purevu.com>, registered with XIN NET TECHNOLOGY CORPORATION.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 14, 2013; the National Arbitration Forum received payment on January 15, 2013. The Complainant was submitted in both Chinese and English.
On January 14, 2013, XIN NET TECHNOLOGY CORPORATION confirmed by e-mail to the National Arbitration Forum that the <purevu.com> domain name is registered with XIN NET TECHNOLOGY CORPORATION and that Respondent is the current registrant of the name. XIN NET TECHNOLOGY CORPORATION has verified that Respondent is bound by the XIN NET TECHNOLOGY CORPORATION 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 January 18, 2013, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of February 7, 2013 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@purevu.com. Also on January 18, 2013, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 12, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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
i. Respondent is not commonly known by the domain name, either as a business, individual, or other organization.
ii. Complainant contends that the disputed domain name is currently inactive. Complainant asserts that Respondent intends for the disputed domain name to divert Internet traffic away from Complainant’s website.
iii. Respondent was a former employee of W&W Communications, Inc., a company which Complainant acquired in 2008, and has continued to offer and provide development services to third parties based on Complainant’s PUREVU technology.
i. Respondent asked for $100,000 US dollars in exchange for the disputed domain name.
ii. Respondent was a former employee of W&W Communications, Inc., a company which Complainant acquired in 2008, and has continued to offer and provide development services to third parties based on Complainant’s PUREVU technology.
iii. Respondent was aware of Complainant’s PUREVU mark when Respondent registered the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Cavium, Inc., is in the business of selling a variety of goods, including semiconductors, video processors, application specific integrated circuits, application specific standard products (ASSP), video processing modules, and networking processors since 2008. Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO") for the PUREVU mark (Reg. No. 3,936,332, filed October 15, 2009, registered March 29, 2011).
Respondent, yunfu qiu, registered the <purevu.com> domain name on June 6, 2009. The disputed domain name is currently inactive. Respondent was a former employee of W&W Communications, Inc., a company which Complainant acquired in 2008. Respondent asked for $100,000 US dollars in exchange for the disputed domain name.
LANGUAGE OF THE PROCEEDINGS
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 may be conducted in English.
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant owns trademark registrations with the USPTO for the PUREVU mark (Reg. No. 3,936,332). The PUREVU trademark registration shows first use of 12/24/08, and in commerce 4/28/09. The trademark application was filed on October 15, 2009 and the PUREVU mark was registered on March 29, 2011. Although Respondent appears to reside in China, Policy ¶ 4(a)(i), UDRP precedent only requires that Complainant establish its rights in some jurisdiction. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). The Panel finds that Complainant’s registration with the USPTO is sufficient to establish its rights in the PUREVU mark under Policy ¶ 4(a)(i), as of October 15, 2009, the date of the filing of the trademark application. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date).
Complainant contends that Respondent’s <purevu.com> domain name is identical to Complainant’s mark as it merely adds a gTLD to Complainant’s mark. The addition of a gTLD is inconsequential to a confusingly similar analysis under Policy ¶ 4(a)(i). See Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Therefore, the Panel finds that Respondent’s <purevu.com> domain name is identical to Complainant’s PUREVU 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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
Complainant asserts that Respondent is not commonly known by the domain name. Complainant contends that Respondent’s name is “Yunfu Qiu” and nothing in Respondent’s WHOIS information implies that Respondent is commonly known by the domain name. Complainant argues that it has not consented to Respondent’s use of the domain name. Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
The disputed domain name is inactive. Nonuse of a disputed domain name is evidence of a lack of rights and legitimate interests. See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). Therefore, the Panel finds that Respondent’s nonuse of the disputed domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods and services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant contends that Respondent registered its domain name after Complainant began its initial use of the trademark. However, Complainant has not claimed nor shown common law rights prior to the filing of the trademark application on October 15, 2009. Respondent’s registration of the disputed domain name occurred over four months earlier on June 6, 2009.
Generally, in the absence of common law rights pre-dating the domain name registration, registration of the domain name prior to the application date of the registered mark cannot be shown to be in bad faith. However, where the registrant, such as a former employee contemplated the then non-existent rights, bad faith registration can be shown. See WIPO Overview 2.0, ¶ 3.1. Here, Respondent was an employee of W&W Communications, Inc., a company which Complainant acquired in 2008. Complainant’s first use of the mark was on December 24, 2008, with its first use in commerce on April 28, 2009. Respondent’s June 6, 2009, registration of the disputed domain name coincided with Complainant’s developing use of the mark. As such, Respondent registered the <purevu.com> domain name in bad faith.
The Panel also finds that Respondent’s exorbitant $100,000 US dollars sale offer of the domain name to Complainant evidences bad faith and registration under Policy ¶ 4(b)(i). See Cream Pie Club v. Halford, FA 95235 (Nat. Arb. Forum Aug. 17, 2000) (finding that bad faith existed where the respondent offered the domain name for sale to the complainant for $125,000).
Respondent’s nonuse of the disputed domain name is further evidence that Respondent registered and is holding the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000), (respondent’s failure to make an active use of the domain name satisfied the requirement of ¶ 4(a)(iii) of the Policy).
The Panel finds that Respondent had actual knowledge of Complainant’s developing rights in the PUREVU mark and rights. Therefore Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <purevu.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: February 26, 2013
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