Infineon Technologies AG v. tang wei / All Genuine Parts (Shenzhen) Company Ltd
Claim Number: FA1811001816287
Complainant is Infineon Technologies AG (“Complainant”), represented by Gary J. Nelson of Lewis Roca Rothgerber Christie LLP, California, USA. Respondent is tang wei / All Genuine Parts (Shenzhen) Company Ltd (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <infineondemo.com> and <infineonpower.com>, registered with Shanghai Best Oray Information S&T 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 November 13, 2018; the Forum received payment on November 13, 2018.
On November 26, 2018, Shanghai Best Oray Information S&T Co., Ltd. confirmed by e-mail to the Forum that the <infineondemo.com> and <infineonpower.com> domain names are registered with Shanghai Best Oray Information S&T Co., Ltd. and that Respondent is the current registrant of the names. Shanghai Best Oray Information S&T Co., Ltd. has verified that Respondent is bound by the Shanghai Best Oray Information S&T 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 28, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 18, 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@infineondemo.com, postmaster@infineonpower.com. Also on November 28, 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 December 19, 2018, 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 names be transferred from Respondent to Complainant.
A. Complainant
i) Complainant owns the globally known brand INFINEON, which is used in connection with its highly successful business of manufacturing of semiconductors and systems for automotive, industrial, multimarket sectors, as well as with chip card and security products and services. Complainant has rights in the INFINEON mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,516,259, registered Dec. 11, 2001) and China’s State Administration for Industry and Commerce (“SAIC”) (e.g., Reg. No. G718087, registered Jul. 12, 2009). See Compl. Ex. B. Respondent’s <infineondemo.com> and <infineonpower.com> domain names are confusingly similar to Complainant’s INFINEON mark as Respondent incorporates the mark in its entirety, merely adding the descriptive term “demo” or “power,” and a “.com” generic top-level domain (“gTLD”).
ii) Respondent has no rights or legitimate interests in the <infineondemo.com> and <infineonpower.com> domain names. Respondent is not permitted or authorized to use Complainant’s INFINEON mark nor is commonly known by the disputed domain name. Additionally, Respondent fails to use the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the <infineonpower.com> domain name to host a website featuring infringing uses of Complainant's INFINEON trademark for competitive goods sold by third parties. See Compl. Ex. D. The <infineondemo.com> domain name resolves to a website which is being used to obtain click-through revenue by linking to third-party websites, some of which compete with Complainant’s business.
iii) Respondent registered and uses the <infineondemo.com> and <infineonpower.com> domain names in bad faith. Respondent attempts to attract, for commercial gain, users to the <infineonpower.com> domain name by creating a likelihood as to source, sponsorship, affiliation, or endorsement of Respondent’s website. Specifically, Respondent uses this disputed domain name to generate click-through revenue from competing hyperlinks. Further, Respondent’s <infineondemo.com> domain name currently resolves to an inactive website. Finally, Respondent had actual and/or constructive knowledge of Complainant’s rights in the INFINEON mark prior to registering and subsequent use of the disputed domain names.
B. Respondent
Respondent did not submit a response.
1. The <infineondemo.com> and <infineonpower.com> domain names were both registered on July 16, 2018.
2. Complainant has established rights in the INFINEON mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,516,259, registered Dec. 11, 2001) and China’s State Administration for Industry and Commerce (“SAIC”) (e.g., Reg. No. G718087, registered Jul. 12, 2009).
3. Respondent uses the <infineonpower.com> domain name to host a website featuring uses of Complainant's INFINEON trademark for competitive goods sold by third parties.
4. Respondent uses the <infineondemo.com> domain name to link to third party websites, some of which compete with Complainant’s business.
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."
Preliminary Issue: Language of Proceedings
The Panel notes that the Registration Agreement is written in Chinese, thereby making the language of the proceedings in Chinese. Complainant has alleged that because Respondent is conversant and proficient in English, the proceeding should be conducted in English. The Panel has the discretion under UDRP Rule 11(a) to determine the appropriate language of the proceedings taking into consideration the particular circumstances of the administrative proceeding. See 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). Complainant contends that Respondent’s domain name was registered incorporating the English name corresponding to the INFINEON trademark, and the English words “power” or "demo" suggesting that Respondent is conversant and proficient in the English language; and Complainant, on the other hand, is not conversant or proficient in the Chinese language and would require translation of all documents into Chinese, resulting in delay and unnecessary costs.
Pursuant to UDRP Rule 11(a), after considering the circumstance of the present case, in the absence of Response and no objection to the Complainant's request for the language of proceeding, the Panel decides that the proceeding should be in English.
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 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.”).
Complainant claims rights in the INFINEON mark based upon registration of the mark with the USPTO (e.g., Reg. No. 2,516,259, registered Dec. 11, 2001) and the SAIC (e.g., Reg. No. G718087, registered Jul. 12, 2009). See Compl. Ex. B. Registration of a mark with multiple trademark agencies is sufficient to establish rights in that mark. 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).”). The Panel therefore holds that Complainant’s registration of the INFINEON mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next argues Respondent’s <infineondemo.com> and <infineonpower.com> domain names are confusingly similar to the INFINEON mark, as the name incorporates the mark in its entirety, merely adding the descriptive term “power” or “demo,” and a “.com” gTLD. Such changes are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See King Ranch IP, LLC v. E Miller, FA 1785596 (Forum June 6, 2018) (“Complainant’s trademark is used in-part with regard to barbecue related goods and services; the term “bbq” is thus suggestive of the KING RANCH trademark. Therefore, the Panel finds that the <kingranchbbq.com> domain name is confusingly similar to Complainant’s KING RANCH mark.”); see also Longo Brothers Fruit Markets Inc. v. John Obeye / DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM, FA 1734634 (Forum July 17, 2017) (“[O]f course it is well established in prior UDRP cases that the addition of a ‘.com’ suffix is irrelevant when determining if a disputed domain name is identical or confusingly similar to a trademark.”). The Panel therefore determines the <infineondemo.com> and <infineonpower.com> domain names are confusingly similar to the INFINEON mark per 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 that Respondent has no rights or legitimate interests in the <infineondemo.com> and <infineonpower.com> domain names, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the INFINEON mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). The WHOIS information of record identifies the registrant of the disputed domain name as “tang wei / All Genuine Parts (Shenzhen) Company, Ltd,” and no information on the record indicates Respondent was authorized to register a domain name incorporating Complainant’s mark. See Amend. Compl. Ex. A. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <infineondemo.com> and <infineonpower.com> domain names.
Complainant further argues Respondent’s lack of rights or legitimate interests in the <infineondemo.com> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant contends instead that the <infineonpower.com> domain name resolves to a website featuring infringing uses of Complainant's INFINEON trademark for competitive goods sold by third parties. See Compl. Ex. D. Complainant also contends that the <infineondemo.com> domain name resolves to a website which is being used to obtain click-through revenue by linking to third-party websites, some of which compete with Complainant’s business. The Panel finds that use of a domain name to host a website infringing uses of Complainant's INFINEON trademark or to link to a complainant’s competitors is not a use indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 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 where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business).
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 per Policy ¶¶ 4(c)(i) or (iii).
Complainant contends that Respondent’s bad faith is indicated by its use of the <infineonpower.com> domain name to host a website featuring infringing uses of Complainant's INFINEON trademark for competitive goods sold by third parties. See Compl. Ex. D. Complainant also contends that Respondent’s bad faith is indicated by its use of the <infineondemo.com> domain name to link to third party websites, some of which compete with Complainant’s business. The Panel finds that use of a domain name to host a website featuring infringing uses of Complainant's INFINEON trademark for competitive goods sold by third parties or to resolve to a page of third-party links, including competitive links, can demonstrate a respondent’s bad faith per Policy ¶ 4(b)(iv). See Staples, Inc. and Staples the Office Superstores, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”). The Panel therefore finds that Respondent has registered and used the disputed domain names <infineondemo.com> and <infineonpower.com> in bad faith per Policy ¶ 4(b)(iv).
Complainant further contends that in light of the fame and notoriety of Complainant's INFINEON mark, it is inconceivable that Respondent could have registered the <infineondemo.com> and <infineonpower.com> domain names without actual and constructive knowledge of Complainant's rights in the mark. The Panel here notes that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel infers due to the notoriety of the Complainant's mark that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain names and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). As such, the Panel finds that Respondent registered the disputed names in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <infineondemo.com> and <infineonpower.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: December 28, 2018
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