DECISION

 

Infineon Technologies AG v. Abdullahi Magoro / Infineon-energy

Claim Number: FA1904001837502

 

PARTIES

Complainant is Infineon Technologies AG (“Complainant”), represented by Gary J. Nelson of Lewis Roca Rothgerber Christie LLP, California, USA.  Respondent is Abdullahi Magoro / Infineon-energy (“Respondent”), Nigeria.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <infineon-energy.com> (‘the Domain Name’), registered with PDR Ltd. d/b/a PublicDomainRegistry.com.

 

PANEL

The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Dawn Osborne as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on April 4, 2019; the Forum received payment on April 4, 2019.

 

On April 6, 2019, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <infineon-energy.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name.  PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 April 8, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 29, 2019 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@infineon-energy.com.  Also on April 8, 2019, 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.

 

A timely Response was received and determined to be complete on April 29, 2019.

 

On April 30, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

The Complainant’s contentions can be summarized as follows:

 

The Complainant is the owner of the mark INFINEON registered, inter alia, in the USA for electronics related goods and services since 2001.

 

The Domain Name registered March 16, 2019 is confusingly similar to the Complainant’s mark adding only a hyphen, the generic word ‘energy’ and the gTLD “.com” which do not prevent relevant confusing similarity.

 

The Domain Name has been pointed to a parking page. Respondent has no rights or legitimate interests in the Domain Name, is not commonly known by the Domain Name, is not authorized by the Complainant and has not used the Domain Name for a bona fide offering of goods and services or a noncommercial legitimate or fair use.

 

Non use of a Domain Name that is confusingly similar to a Complainant’s mark is registration and use in bad faith.

 

B. Respondent

The Respondent did not put in a formal response but sent an e mail saying it had registered the Domain Name to reflect its legally registered company in Nigeria called Infineon Energy Limited. The Respondent presented a company registration certificate dated March 26, 2019.

 

C. Additional Submissions

The Complainant validly entered an additional submission dated April 30, 2019. Further submissions of the Complainant can be summarized as follows:

 

Respondent appears to concede that the Domain Name is confusingly similar to the Complainant’s mark and that it is being passively held. The Respondent has not presented any evidence that it is commonly known by the Domain Name. The Respondent did not provide the necessary certification statement or a formal Response and the company documentation presented may not be genuine. The Domain Name is registered in a personal name/Infineon-energy and there is no proof linking the certificate Infineon Energy Limited with the Registrant of the Domain Name. In any event the company registration certificate is dated March 26, 2019 after the Domain Name was registered.

 

FINDINGS

The Complainant is the owner of the mark INFINEON registered, inter alia, in the USA for electronics related goods and services since 2001.

 

The Domain Name registered March 16, 2019 has not been used.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

The Domain Name in this Complaint combines the Complainant’s INFINEON mark (registered in the USA for electronic goods and services since 2001) a hyphen, the generic term ‘energy’ reflecting a field in which the Complainant operates and the gTLD “.com”.

 

The addition of the generic word ‘energy’ does not serve to distinguish the Domain Name from the Complainant’s INFINEON mark. See Abbott Laboratories v. Miles White, FA 1646590 (Forum Dec. 10, 2015) (holding that the addition of generic terms do not adequately distinguish a disputed domain name from complainant’s mark under Policy 4(a)(i)). Nor does the addition of a hyphen. See Health Devices Corp. v. Aspen STC, FA 158254 (Forum July 1, 2003) (The addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy 4(a)(i)).

 

The gTLD “.com” does not serve to distinguish the Domain Name from the INFINEON mark, which is the distinctive component of the Domain Name. See Red Hat Inc. v. Haecke, FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).

 

Accordingly, the Panel finds that the Domain Name is confusingly similar to a mark in which the Complainant has rights for the purpose of the Policy.

 

Rights or Legitimate Interests

The Complainant has not authorized the use of its mark. The Respondent has presented a corporate certificate for a company called Infineon Energy Limited, even ignoring that the Domain Name is not registered in the actual name of this company the certificate is dated after the registration of the Domain Name and there is no evidence the company or the Respondent have ever traded. The Domain Name is inactive. As such, there is no evidence that the Respondent is, in fact, commonly known by the Domain Name.

 

There is no evidence of use of the Domain Name. See Hewlett-Packard Co. v. Shemesh, FA 434145 (Forum April 20, 2005) (Where the panel found inactive use is not a bona fide offering of goods or services pursuant to Policy 4(c)(i)).

 

As such, the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.

 

Registration and Use in Bad Faith

The Respondent has not provided a formal Response with a certification or explained why it should be allowed to register a domain name containing the Complainant’s mark eighteen years after the Complainant began use of that mark. The use of the term ‘energy’ in the Domain Name reflects a field of activity in which the Complainant operates and there is no evidence the Respondent has traded using the INFINEON mark for any field. INFINEON is distinctive and not a descriptive term.

 

The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from or exploit the trademark of another. Passive holding of a domain name containing a mark with a reputation can be bad faith registration and use. See Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000).

 

As such, the Panel holds that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <infineon-energy.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Dawn Osborne, Panelist

Dated:  May 2, 2019

 

 

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