Xilinx Inc. v. TAMS CAI / CAI JIANPING
Claim Number: FA1803001775914
Complainant is Xilinx Inc. (“Complainant”), represented by Britt L. Anderson of K&L Gates LLP, California, USA. Respondent is TAMS CAI / CAI JIANPING (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <buy-xilinx.com>, registered with HiChina Zhicheng Technology Limited.
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.
Charles A. Kuechenmeister as Panelist
Complainant submitted a Complaint to the Forum electronically on March 14, 2018; the Forum received payment on March 14, 2018.
On March 15, 2018, HiChina Zhicheng Technology Limited confirmed by e-mail to the Forum that the <buy-xilinx.com> domain name is registered with HiChina Zhicheng Technology Limited and that Respondent is the current registrant of the name. HiChina Zhicheng Technology Limited has verified that Respondent is bound by the HiChina Zhicheng Technology Limited 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 March 22, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of April 11, 2018 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@buy-xilinx.com. Also on March 22, 2018, 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 April 13, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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.
A. Complainant
Since at least as early as 1985, Complainant has used the distinctive XILINX mark on or in connection with its computer hardware and software products, most notably its integrated circuit devices and software for programming integrated circuits. Complainant has rights in the XILINX mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,713,232) on September 8, 1992, and other U.S. and foreign registrations. Respondent’s <buy-xilinx.com> domain name (the “Domain Name”) is identical or confusingly similar to Complainant’s mark as it merely prepends the term “buy” and a hyphen to Complainant’s fully incorporated mark.
Respondent has no rights or legitimate interests in the Domain Name. Respondent is not commonly known by the Domain Name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use its XILINX mark. Also, Respondent does not use the Domain Name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the Domain Name to offer goods for sale under the XILINX mark in an unauthorized and unlicensed manner.
Respondent registered and uses the Domain Name in bad faith. Respondent uses the Domain Name to intentionally attract Internet users to its web site by creating a likelihood of confusion with Complainant’s mark and to benefit commercially from the unauthorized distribution of Complainant’s products. Further, Respondent had knowledge of Complainant’s rights in the XILINX mark when he registered the Domain Name in 2017, as shown by his use of Complainant’s mark and company logo on the resolving webpage. Finally, Respondent failed to respond to Complainant’s cease and desist letter in efforts to resolve this matter outside of formal legal proceedings.
B. Respondent:
Respondent did not submit a response in this proceeding.
Preliminary Issue: Language of the Proceedings
The Registration Agreement is written in Chinese. Under Rule 11(a), the language of the proceedings is the language of that agreement, subject to the authority of the Panel to determine otherwise, having due regard for the circumstances of the case.
Complainant alleges that Respondent is conversant and proficient in English, and that the proceeding should be conducted in English. Pursuant to Rule 11(a), the Panel has discretion under UDRP Rule 11(a) to determine the appropriate language of the proceedings, taking into consideration the particular circumstances of the case. FilmNet Inc. v Onetz, FA 96196 (Forum Feb. 12, 2001 (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English). The circumstances present in this case are as follows: Respondent’s web site at the Domain Name contains the English word “buy,” and the content on the resolving web site is entirely in the English language. See, Complaint Exhibits K and L. Further, Respondent’s web site contains a chat option for customer services, and communicates in the English language. See, Complaint Exhibit K. Finally, Respondent appears to edit and distribute Complainant’s English-language data sheets for its products. See, Complaint Exhibit M.
On this evidence, the Panel finds that the Respondent is conversant and proficient in the English language. After considering the circumstances of the case, and pursuant to UDRP Rule 11(a), the Panel decides that the proceeding will proceed in the English language.
Merits of the Case
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 will 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 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 (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 Panel makes the findings and determinations set forth below with respect to the Domain Names.
Complainant has established its rights in the XILINX mark for the purposes of Policy ¶ 4(a)(i) through its registration of the mark with the USPTO (Reg. No. 1,713,232) on September 8, 1992, and through its other U.S. and foreign registrations of it. See, Complaint Exhibit I. Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”).
Further, Respondent’s Domain Name is identical or confusingly similar to Complainant’s mark as incorporates that mark verbatim, merely prepending the term “buy” and a hyphen to it. Such changes do not distinguish a domain name from a complainant’s registered mark for the purposes of Policy ¶4(a)(i). Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.), Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”). Also, while Complainant does not make this contention, the Domain Name also appends the generic top-level domain (“gTLD”), which is found to be irrelevant for the purposes of the Policy. Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
For the foregoing reasons, the Panel finds that the Domain Name is identical or confusingly similar to the XILINX mark, in which Complainant has rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interest. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent or commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because (i) he is not commonly known by the Domain Name, (ii) Complainant has not authorized him to use the XILINX mark, and (iii) without authorization or license from Complainant, the web site resolving from the Domain Name offers to sell Complainant’s products or products that purport to be but are not. The web site also impersonates Complainant. These allegations are supported by competent evidence. The WHOIS record associated with this case identifies Registrant as “Tams Cai” and the Registrant Organization as “Cai Jianping.” See, Complaint Exhibit A. Neither of these names bears any resemblance or similarity to the Domain Name or any variation of it. This is competent evidence that Respondent is not commonly known by the Domain Name. Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). Further, Complainant states that it has never authorized Respondent to use its XILINX mark in any domain name registration. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel.
Exhibits K through N attached to the Complaint contain screenshots of web pages resolving from the Domain Name, which bear Complainant’s mark in a format that is very similar if not substantially identical to Complainant’s own web site, a screenshot of which is submitted as Exhibit E to the Complaint. Further, these pages purport to provide information about Complainant and offer goods and products of Complainant. Using a confusingly similar domain name to offer goods or services branded with a complainant’s company name is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use within the meaning of Policy ¶¶ 4(c)(i) and (iii). Caterpillar Inc. v. Huth, FA 169056 (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.”). It is evident that Respondent is using the Domain Name to impersonate Complainant and distribute its products, or counterfeit Xilinx products, without prior authorization, and this does not qualify as using the name in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use within the meaning of Policy ¶¶ 4(c)(i).
Complainant has made its prima facie case. On the evidence presented, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of your web site or location or of a product of service on your web site or location.
The evidence of Respondent’s use of the Domain Name set forth above in the rights and legitimate interests analysis also supports a finding of bad faith use and registration. Respondent is clearly using the Domain Name to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its web site within the meaning to Policy ¶ 4(b)(iv). Panels have consistently held this to be evidence of bad faith under Policy ¶ 4(b)(iv). Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). Respondent is using the Domain Name to benefit commercially from Complainant’s mark, in bad faith under Policy ¶ 4(b)(iv).
Further, it is incontrovertible that Respondent had actual knowledge of Complainant’s rights in the XILINX mark when it registered the Domain Name. Complainant’s mark, XILINX, is neither descriptive nor generic. It is fanciful and inherently distinctive, and is not a term that would normally occur to a person to use unless that person desired to mimic or copy Complainant. Complainant’s long-standing use of that mark prior to February 2017 when Respondent registered the Domain Name (see, Complaint Exhibit A), and the extent to which Respondent’s web site mimics and impersonates Complainant’s web pages are compelling evidence that he knew of Complainant’s mark when he registered the Domain Name. Actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name is evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).
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 <buy-xilinx.com> Domain Name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
Dated: April 16, 2018
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