STMicroelectronics, Inc. v. zhangming
Claim Number: FA1302001485842
Complainant is STMicroelectronics, Inc. (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is zhangming (“Respondent”), Shanghai, China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <stmicroelectronicss.com>, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 19, 2013; the National Arbitration Forum received payment on February 19, 2013.
On February 20, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <stmicroelectronicss.com> 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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 20, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 12, 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@stmicroelectronicss.com. Also on February 20, 2013, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 28, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant made the following contentions.
i. Complainant owns federal trademark and service mark registrations with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,652,109 registered Nov. 19, 2002, and Reg. No. 2,605,445 registered Aug. 6, 2002), and with China’s State Administration for Industry and Commerce (“SAIC”) (Reg. No. 1,343,873 registered Dec. 14, 1999) in the STMICROELECTRONICS mark.
ii. Respondent registered the <stmicroelectronicss.com> domain name on August 1, 2012.
iii. The disputed domain name contains Complainant’s mark in its entirety, with only the addition of a letter “s” and the generic top-level domain (“gTLD”) “.com,” which are insufficient to distinguish the domain name from the mark.
i. Responded has not been commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its mark.
ii. The disputed domain name resolves to a web page titled “High Tech Online Store” that purports to sell Complainant’s products as well as products of Complainant’s competitors, including Intel and Motorola. This is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or 4(c)(iii).
i. Based on Complainant’s prominence in the semiconductor industry, and Respondent’s use of Complainant’s products on the disputed domain name’s resolving web page, Respondent had actual or constructive knowledge of Complainant’s rights in the mark.
ii. By promoting competing companies like Intel and Motorola, Respondent is disrupting Complainant’s business, showing bad faith under Policy ¶ 4(b)(iii).
iii. Respondent is attempting to commercially profit from the goodwill associated with Complainant’s mark by confusing consumers and diverting them to Respondent’s web page. This is bad faith under Policy ¶ 4(b)(iv).
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is a leading and well known company in the semiconductor industry.
2. Complainant owns the STMICROELECTRONICS mark based on its trademark and service mark registrations with the USPTO (Reg. No. 2,652,109 registered Nov. 19, 2002, and Reg. No. 2,605,445 registered Aug. 6, 2002) and in China with the SAIC (Reg. No. 1,343,873 registered Dec. 14, 1999), for use in the design and sale of electronic components such as semiconductors.
3. Respondent registered the <stmicroelectronicss.com> domain name on August 1, 2012. It resolves to a website entitled “High Tech Online Store” that purports to sell Complainant’s products as well as products of Complainant’s competitors, including Intel and Motorola, which has not been approved by Complainant.
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.”).
The first question is whether Complainant has rights in a trademark or a service mark. Complainant claims rights in the STMICROELECTRONICS mark based on its trademark and service mark registrations with the USPTO (Reg. No. 2,652,109 registered Nov. 19, 2002, and Reg. No. 2,605,445 registered Aug. 6, 2002) and with the SAIC (Reg. No. 1,343,873 registered Dec. 14, 1999), for use in the design and sale of electronic components such as semiconductors. See Complainant Exhibit C. The Panel notes that previous panels have found that a complainant’s registration of a mark with multiple trademark agencies is sufficient to confer rights in a mark. See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Complainant has established rights in the STMICROELECTRONICS mark for the purposes of Policy ¶ 4(a)(i).
The second question is whether the disputed domain name is identical or confusingly similar to the STMICROELECTRONICS mark. Complainant claims that the <stmicroelectronicss.com> domain name is confusingly similar to its STMICROELECTRONICS mark under Policy ¶ 4(a)(i). Complainant notes that the disputed domain name contains Complainant’s entire mark, adding only an additional “s” and the gTLD “.com.” The Panel notes that neither an additional single letter nor a gTLD have been found by past panels to be sufficient to distinguish a domain name in a confusing similarity comparison. See T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Therefore, the Panel finds that the <stmicroelectronicss.com> domain name is confusingly similar to Complainant’s STMICROELECTRONICS mark.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s STMICROELECTRONICS trademark and to use it in its domain name, adding only a single letter ”s” to the trademark to create the domain name;
(b) Respondent has then used the domain name to resolve to a web page entitled “High Tech Online Store” that purports to sell Complainant’s products as well as products of Complainant’s competitors, including Intel and Motorola;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant claims that Respondent is not commonly known by the disputed domain name, and thus fails to establish rights or legitimate interests under Policy ¶ 4(c)(ii). Complainant notes that the WHOIS information for the disputed domain name identifies “zhangming” as the registrant. Complainant also asserts that it has not licensed or in any way authorized Respondent to use its STMICROELECTRONICS mark. The Panel notes that past panels have found nominally unsupportive WHOIS information and a lack of authorization to be strong evidence that a respondent is not commonly known by a disputed domain name. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name and has not established rights or legitimate interests pursuant to Policy ¶ 4(c)(ii);
(e) Complainant also notes that the disputed domain name resolves to a web page titled “High Tech Online Store” that purports to sell Complainant’s products as well as products of Complainant’s competitors, including Intel and Motorola. See Complainant Exhibit E. Complainant claims that this is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or 4(c)(iii). The Panel notes that past panels have found that the sale of either complainant’s goods or a competitor's goods did not demonstrate a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or 4(c)(iii). See Caterpillar Inc. v. Huth, FA 169056 (Nat. Arb. Forum Sept. 2, 2003) (“Respondent lacks rights in the disputed domain names because Respondent competes with Complainant by selling Complainant's used parts without a license from Complainant to do so.”); see also Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Accordingly, the Panel holds that Respondent has not established rights or legitimate interests in the disputed domain name under Policy ¶¶ 4(c)(i) or 4(c)(iii).
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 name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that, by promoting products of Complainant’s competitors, Respondent is disrupting Complainant’s business, which is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). Because past panels have found that the promotion of services and goods that compete with a complainant is evidence of a Policy ¶ 4(b)(iii) disruptive purpose, the Panel here finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iii). See Am. Online, Inc. v. Tapia, FA 328159 (Nat. Arb. Forum Dec. 1, 2004) (“Respondent is referring Internet traffic that seeks out the <aol.tv> domain name to a competitor’s news site. The Panel strongly finds that appropriating Complainant’s mark to refer customers seeking Complainant to Complainant’s competitors is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Secondly, Complainant also contends that Respondent has demonstrated bad faith under Policy ¶ 4(b)(iv), by creating the false impression that Respondent’s website originates with or is sponsored by Complainant. The Panel notes that previous panels have found the use of a confusingly similar domain name to sell a complainant’s products for commercial gain to be evidence of Policy ¶ 4(b)(iv) bad faith. See Hewlett-Packard Co. v. Ali, FA 353151 (Nat. Arb. Forum Dec. 13, 2004) (“Respondent [used “HP” in its domain name] to benefit from the goodwill associated with Complainant’s HP marks and us[ed] the <hpdubai.com> domain name, in part, to provide products similar to those of Complainant. Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”). Therefore the Panel holds that Respondent registered and is using the <stmicroelectronicss.com> domain name in bad faith under Policy ¶ 4(b)(iv).
Thirdly, Complainant notes that because its STMICROELECTRONICS mark is well-known world-wide in its industry, Respondent had actual knowledge of Complainant’s rights in the mark. Complainant argues that the claim of actual knowledge is bolstered by the content of Respondent’s website, which contains listings of what purport to be Complainant’s products. The Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also 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").
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using Complainant’s STMICROELECTRONICS and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <stmicroelectronicss.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: April 1, 2013
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