Infineon Technologies AG v. Yang Ding Jie / Shang Hai Yi Guan Zhuang Huang She Ji You Xian Gong Si
Claim Number: FA1904001837608
Complainant is Infineon Technologies AG (“Complainant”), represented by Gary J. Nelson of Lewis Roca Rothgerber Christie LLP, California, USA. Respondent is Yang Ding Jie / Shang Hai Yi Guan Zhuang Huang She Ji You Xian Gong Si (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <infinion-design.com>, registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn).
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
Complainant submitted a Complaint to the Forum electronically on April 5, 2019; the Forum received payment on April 5, 2019.
On April 8, 2019, Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) confirmed by e-mail to the Forum that the <infinion-design.com> domain name (the Domain Name) is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) and that Respondent is the current registrant of the name. Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) has verified that Respondent is bound by the Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) 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 9, 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@infinion-design.com. Also on April 9, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On April 30, 2019, 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.
PRELIMINARY ISSUE
Language of the Proceedings
The registration agreement for the Domain Name is written in Chinese. Rule 11(a) provides that the language of the proceedings is the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the case. Complainant requests that these proceedings be conducted in English. UDRP panels dealing with this matter have held that it is appropriate to consider Rule 10(b), which requires all parties to be treated with equity and that each party be given a fair opportunity to present its case. Eli Lilly and Co. v. John Does 1-100, FA 1692617 (Forum October 13, 2016) (“It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding.”). This requires that a proceeding should be conducted in a language in which both parties can communicate and be understood. The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language), Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”).
Complainant advances a number of reasons why this proceeding should be conducted in English. It argues (i) that the Respondent has facility with the English language, and (ii) that conducting these proceedings in a language other than English would cause Complainant to incur significant additional burden and delay to translate the Complaint and other documents. The Domain Name is based upon the name of the Complainant, which is in English. The web site resolving from it has no substantive content but reads (in English) “This site can’t be reached.” The remainder of the text appearing is in English as well. From this it appears that Respondent is familiar with the English language. Further, while the Amended Complaint is written in English, one copy of the Written Notice of the Complaint sent to Respondent by the Forum is written in Chinese and Respondent has filed no protest or objection to the Complaint or to these proceedings being conducted in English. For these reasons, the Panel determines that this proceeding will be conducted in the English language.
A. Complainant
Complainant is in the business of manufacturing semiconductors and systems for automotive, industrial, multimarket sectors and offering services related to these same and related products. Complainant has rights in the INFINEON mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,516,259, registered Dec. 11, 2001) and China’s State Administration of Industry and Commerce (“SAIC”) (Reg. No. G718087, registered July 12, 2009). Respondent’s Domain Name is confusingly similar to Complainant’s INFINEON mark as it incorporates a misspelled version of Complainant’s mark (changing the letter “e” to an “i”), merely adding the generic term “design,” a hyphen, and a “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the Domain Name. Respondent is not authorized to use Complainant’s INFINEON mark and is not commonly known by the Domain Name. Additionally, Respondent fails to use the Domain Name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because it is passively holding the Domain Name, making no use of it whatever.
Respondent registered and uses the Domain Name in bad faith. Respondent intentionally attempts to attract, for commercial gain, users by creating a likelihood of confusion as to the source, sponsorship, endorsement, or affiliation of Respondent’s website. Further, Respondent fails to actively use the disputed Domain Name. Finally, Respondent had at least constructive notice of Complainant’s rights in the INFINEON mark prior to registering the Domain Name.
B. Respondent
Respondent did not submit a Response in this proceeding.
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 provides that in order to obtain an order cancelling or transferring a domain name, Complainant must prove each of the following three elements:
(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, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The Panel finds as follows with respect to the matters at issue in this proceeding:
The INFINEON mark was registered to Complainant with the USPTO (Reg. No. 2,516,259) on December 11, 2001 and with the SAIC (Reg. No. G718087) on July 12, 2009. Complaint Exhibit B. Registration of a mark with governmental trademark authorities such as the USPTO and SAIC is sufficient to establish rights in that mark for the purposes of Policy ¶ 4(a)(i). Fossil Group, Inc. v. wuruima wu, FA 1544486 (Forum March 21, 2014) (“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).”).
Respondent’s Domain Name is confusingly similar to the INFINEON mark, as it incorporates a misspelled version of the mark in its entirety, merely adding the generic term “design,” a hyphen, and the “.com” gTLD. These changes are not sufficient to distinguish the Domain Name from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). Western Alliance Bancorporation v. James Brandon, FA 1783001 (Forum June 5, 2018) (“Respondent’s <westernalliancebcorporation.info> domain name is confusingly similar to Complainant’s WESTERN ALLIANCE BANCORPORATION mark because it merely appends the gTLD ‘.info’ to a misspelled version of Complainant’s mark.”), Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum February 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy), Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) (“Respondent merely adds the term ‘supports’ and a ‘.org’ gTLD to the DELL mark. Thus, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s DELL mark per Policy ¶ 4(a)(i).”). The WIPO Overview 3.0 at ¶ 1.7, states that the test for confusing similarity “typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name.” Notwithstanding the changes described above, Complainant’s mark is clearly recognizable within the Domain Name, and this establishes its confusing similarity to Complainant’s mark.
For the reasons set forth above, the Panel finds that the Domain Name is identical or confusingly similar to the INFINEON mark, in which Complainant has substantial and demonstrated rights.
Rights or Legitimate Interests
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. Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum April 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”). 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 interests. 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 3.0, at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) before any notice to respondent of the dispute, respondent has used or has made 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) respondent (as an individual, business or other organization) has been commonly known by the domain name, even if respondent has acquired no trademark or service mark rights; or
(iii) respondent is making a legitimate noncommercial or fair use of the domain name, without intent for 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) Complainant has not authorized or licensed Respondent to use its INFINEON mark, (ii) Respondent is not using the Domain Name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or other fair use because it resolves to an inactive web site, and (iii) Respondent is not commonly known by the Domain Name. These allegations are supported by competent evidence.
Complainant states that it has never licensed or authorized Respondent to use its mark in any way. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum December 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name), Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum August 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”).
Complaint Exhibit D is a screenshot of the web site resolving from the Domain Name. The only substantive or operative words on this page read “This site can’t be reached.” The web site is obviously inactive. Inactive holding of a domain name has often been held not to qualify as a bona fide offering of goods and services within the meaning of Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use within the meaning Policy ¶ 4(c)(iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum April 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name).
The WHOIS report submitted as Amended Complaint Exhibit A lists the registrant of the Domain Name as “Yang Ding Jie” and the registrant organization as “Shang Hai Yi Guan Zhuang Huang She Ji You Xian Gong Si.” Neither of these names bears any resemblance to the Domain Name. UDRP panels have consistently held that, in the absence of evidence to the contrary, a registrant name that is materially different from the domain name at issue is competent evidence that the respondent is not commonly known by the domain name. Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum August 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). The Panel is satisfied that Respondent has not been commonly known by the Domain Name within the meaning of Policy ¶ 4(c)(ii).
Complainant has made its prima facie case. On the evidence presented, and in the absence of any evidence from Respondent, 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.
Respondent’s registration and use of the Domain Name, described above in the rights or legitimate interests analysis, disrupts Complainant’s business by creating initial interest confusion. Diversion of users by creating initial interest confusion has been held to constitute disruption for the purposes of a Policy ¶ 4(b)(iii) analysis, even though, as here, Respondent’s web site being inactive, there is no evidence of actual competition. PopSockets LLC v. san mao, FA 1740903 (Forum August 27, 2017) (finding disruption of a complainant’s business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)), Love City Brewing Company v. Anker Fog / Love City Brewing Company, FA 1753144 (Forum November 27, 2017) (Finding that Respondent disrupts Complainant’s business by pointing Internet users to an expired webpage. This may create the perception that Complainant is closed, never existed, or is not a legitimate business. Therefore, the Panel finds that Respondent registered and uses the disputed domain names in bad faith per Policy ¶ 4(b)(iii).).
The cited decisions found that this conduct fell within the circumstances articulated in Policy ¶ 4(b)(iii), even though that paragraph seems to require that the respondent’s intent must be to disrupt “the business of a competitor.” Nevertheless, the Policy ¶ 4(b) list of examples of bad faith is nonexclusive. Paragraph 4(b) recognizes that mischief can assume many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and causing initial interest confusion by using a domain name so nearly identical to a complainant’s mark as this one is, is strongly indicative of bad faith in and of itself. Similar to the facts in the Love City Brewing decision cited above, Respondent’s web site here is inactive. An Internet user reaching it thinking it was Complainant’s site would naturally question whether Complainant is still a viable, ongoing concern or perhaps was experiencing problems with its Internet operations. As stated by the Panel in E. R. Marks, Inc. and QVC, Inc. v. Michelle Reid / SUNAQUA Properties, INC., F 1832303 (Forum March 29, 2019), this, in and of itself, would be a substantial disruption of Complainant’s business and qualifies as bad faith registration and use, even in the absence of evidence of competition.
Second, Complainant did not assert the argument in connection with its bad faith allegations, but by replacing the letter “e” in Complainant’s mark with and “I” in the Domain Name, Respondent is guilty of typosquatting, which is the intentional misspelling of a protected trademark to take advantage of similar appearance in an email address or typing errors made by Internet users seeking the web sites of the owners of the mark. Given the nonexclusive, open ended nature of Policy ¶ 4(b), typosquatting has, in and of itself, been held to be evidence of bad faith registration and use. Adorama, Inc. v. Moniker Privacy Services, FA1503001610020 (Forum May 1, 2015) (“Respondent has also engaged in typosquatting, which is additional evidence of bad faith registration and use under Policy ¶ 4(a)(iii)”), Vanguard Trademark Holdings USA LLC v. Shuai Wei Xu / Xu Shuai Wei, FA 1784238 (Forum June 1, 2018) (finding the respondent engaged in typosquatting—and thus registered and used the at-issue domain names in bad faith—where the names consisted of the complainant’s mark with small typographical errors introduced therein).
Third, typosquatting necessarily implicates another factor that has also, by itself, been held by UDRP panels to constitute bad faith. Complainant argues that constructive knowledge of a complainant’s rights is sufficient to establish bad faith registration. The Panel rejects that argument, however, as the great weight of UDRP case precedent declines to find bad faith as a result of constructive knowledge. 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."). Nevertheless, it is evident from the extent to which Complainant’s mark is known and recognized throughout the world, and from the close similarity between Complainant’s mark and Respondent’s Domain Name that Respondent had actual knowledge of Complainant’s mark on October 26, 2015, when it registered the Domain Name. See, WHOIS report submitted as Complaint Exhibit A for registration date. It is obvious that Respondent registered the Domain Name with the intent and expectation that it would cause Internet users to believe that it was Complainant’s domain. Given the nonexclusive, open-ended nature of Policy ¶ 4(b), actual knowledge of a complainant’s rights in a mark prior to registering an identical or confusingly similar domain name has often been held to be evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum August 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 <infinion-design.com> Domain Name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
May 1, 2019
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