DECISION

 

Infineon Technologies AG v. Saurabh Dam / infineon technologies / ravi / N/A

Claim Number: FA1808001802685

 

PARTIES

Complainant is Infineon Technologies AG (“Complainant”), represented by Gary J. Nelson of Lewis Roca Rothgerber Christie LLP, California, USA.  Respondent is Saurabh Dam / infineon technologies / ravi / N/A (“Respondent”), India.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <infineontechpro.com>, <infineontechnologiespro.com>, and <infineontechone.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on August 22, 2018; the Forum received payment on August 22, 2018.

 

On August 23, 2018, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by

e-mail to the Forum that the <infineontechpro.com>, <infineontechnologiespro.com>, and <infineontechone.com> domain names are registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the names.  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 August 24, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 13, 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@infineontechpro.com, postmaster@infineontechnologiespro.com, postmaster@infineontechone.com.  Also on August 24, 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 September 17, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.   Complainant:

1.    Complainant owns the globally known brand name INFINEON, which it has used for nearly 20 years in connection with its highly successful business of manufacturing of semiconductors and systems for automotive, industrial, multimarket sectors, as well as chipcard and security products and offering services related to these same products. Complainant has rights in the INFINEON mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,516,259, registered Dec. 11, 2001). See Compl. Ex. C. Respondent’s <infineontechpro.com>, <infineontechnologiespro.com>, and <infineontechone.com> domain names are confusingly similar to Complainant’s mark as they each merely add generic/descriptive terms to the mark and the “.com” generic top-level domain (“gTLD”).

2.    Respondent has no rights or legitimate interests in the <infineontechpro.com>, <infineontechnologiespro.com>, and <infineontechone.com> domain names. Respondent is not commonly known by the domain names, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses two of the domain names, <infineontechpro.com> and <infineontechnologiespro.com>, to send fraudulent business emails to individuals seeking employment with Complainant in efforts to receive personal information. See Compl. Exs. E & F. Further, Respondent fails to display any content on the <infineontechone.com> domain name. See Compl. Ex. B.

3.    Respondent registered and uses the <infineontechpro.com>, <infineontechnologiespro.com>, and <infineontechone.com> domain names in bad faith. Respondent attempts to attract, for commercial gain, Internet users to its website by creating consumer confusion as to the source of the domain name and Complainant’s INFINEON mark. Respondent creates this confusion to engage in a pattern of fraudulent business activities with the <infineontechpro.com> and <infineontechnologiespro.com> domain names. See Compl. Exs. E & F. Finally, Respondent had constructive knowledge of Complainant’s rights in the INFINEON mark when it registered and subsequently used each of the at-issue domain names.

 

B.   Respondent:

1.    Respondent failed to submit a response in this proceeding.

 

FINDINGS

1.    Respondent’s <infineontechpro.com>, <infineontechnologiespro.com>, and <infineontechone.com> domain names are confusingly similar to Complainant’s INFINEON mark.

2.    Respondent does not have any rights or legitimate interests in the <infineontechpro.com>, <infineontechnologiespro.com>, and <infineontechone.com> domain names.

3.    Respondent registered or used the <infineontechpro.com>, <infineontechnologiespro.com>, and <infineontechone.com> domain names in bad faith.

 

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.

 

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.”).

 

Preliminary Issue: Multiple Respondents

In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases.  Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”  Complainant contends that the “Contact Us” section of the <infineontechnologiespro.com> domain name list the location as “Adajan, Surat, India, postal code 395009,” which is the same location as the listed registrant for the <infineontechpro.com> domain name, along with an email contact of “help@infineontechpro.com.” See Compl. Exs. A & B. Further, the cached website for the <infineontechone.com> domain name contains the same “help@infineontechpro.com” listed in the “Contact Us” section. See Compl. Ex. G.

 

The Panel finds the domain names are commonly owned/controlled by a single Respondent who is using multiple aliases.

 

Identical and/or Confusingly Similar

Complainant claims rights in the INFINEON mark through its registration of the mark with the USPTO (e.g. Reg. No. 2,516,259, registered Dec. 11, 2001). See Compl. Ex. C. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See 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).”). Accordingly, the Panel finds that Complainant has established rights in the INFINEON mark for the purposes of Policy ¶ 4(a)(i).

 

Complainant next argues that Respondent’s <infineontechpro.com>, <infineontechnologiespro.com>, and <infineontechone.com> domain names are confusingly similar to Complainant’s mark as they each merely add generic/descriptive terms to the mark and the “.com” gTLD. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See YETI Coolers, LLC v. Randall Bearden, FA 16060016880755 (Forum Aug. 10, 2016) (finding that the words “powder coating” in the <yetipowdercoating.com> domain name are “merely explicative and directly refer to some of the services rendered by the Complainant” and, therefore, create an “irrefutable confusing similarity” to complainant’s YETI mark); see also 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). In this instance, the domain names add some combination of the terms “tech,” “technologies,” “pro,” and/or “one,” while adding the “.com” gTLD. The Panel therefore finds that the disputed domain names are confusingly similar to the INFINEON mark under Policy ¶4(a)(i).

 

Rights or Legitimate Interests

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 contends that Respondent has no rights or legitimate interests in the disputed domain names.  Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “Saurabh Dam / infineon technologies” as the registrant for the <infineontechpro.com> domain name, and “ravi / N/A” as the registrant for the <infineontechnologiespro.com> and <infineontechone.com> domain names. See Amend. Compl. Ex. A. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the INFINEON mark. Panels may use these assertions as evidence of lacking rights or legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the domain names prior to their registration, and Complainant has not given Respondent permission to use the mark in any manner. Accordingly, the Panel agrees that Respondent is not commonly known by the infringing domain names under Policy ¶ 4(c)(ii).

 

Complainant argues that Respondent uses the <infineontechpro.com> and <infineontechnologiespro.com> domain names in attempts to phish for information from prospective employees of Complainant via email. Complainants may use phishing attempts to evince a failure to make a bona fide offering of goods or services or legitimate noncommercial or fair use. See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Complainant provides copies of this email communication, which appears to demonstrate that Respondent hires employees under the “Infineon Technologies” name and then demands a ransom payment in exchange for not filing a lawsuit against the individual for using a faulty IP address. See Compl. Exs. E & F. Accordingly, the Panel agrees that Respondent attempts to use the domain names for fraudulent purposes, failing to use the domain names in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).

 

Further, Complainant contends that the <infineontechone.com> domain name resolves in a website that lacks any content. Failure to make active use of a confusingly similar domain name can evince a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website.  The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy  ¶ 4(c)(iii).”). Complainant provides a screenshot of the resolving webpage, which simply displays a message indicating the domain name is for sale without any other content. See Compl. Ex. B. Accordingly, the Panel finds that Respondent fails to actively use the disputed domain name and thus fails to make a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).

 

Registration and Use in Bad Faith

Complainant argues that Respondent registered and uses the <infineontechpro.com>, <infineontechnologiespro.com>, and <infineontechone.com> domain names in bad faith by creating a likelihood for confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name for its own commercial gain. Using a disputed domain name that trades upon the goodwill of a complainant for commercial gain can evince bad faith under Policy ¶ 4(b)(iv). See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("While an intent to confuse consumers is not required for a finding of trademark infringement, intent to deceive is strong evidence of a likelihood of confusion."); see also Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). Complainant claims that Respondent commercially benefits through fraudulent email communications, which I will reflect in the following paragraph. Accordingly, the Panel agrees that Respondent attempted to commercially benefit off Complainant’s mark in bad faith under Policy ¶ 4(b)(iv).

 

Next, Complainant argues that Respondent uses the <infineontechpro.com> and <infineontechnologiespro.com> domain names to fraudulently send emails to Complainant’s prospective employees in hopes of receiving personal information. Phishing schemes through fraudulent email communications can evince bad faith under Policy ¶ 4(a)(iii). See Zoetis Inc. and Zoetis Services LLC v. VistaPrint Technologies Ltd, FA1506001623601 (Forum July 14, 2015) (“Respondent’s attempt to use the <zoietis.com> domain name to phish for personal information in fraudulent emails also constitutes bad faith pursuant to Policy ¶ 4(a)(iii).”). As noted above, Complainant provides copies of this email communication, which appears to demonstrate that Respondent hires employees under the “Infineon Technologies” name and then demands a ransom payment in exchange for not filing a lawsuit against the individual for using a faulty IP address. See Compl. Exs. E & F. As such, the Panel agrees that Respondent’s apparent phishing scheme does not amount to any good faith use under Policy ¶ 4(a)(iii).

 

Complainant lastly claims that Respondent had constructive knowledge of Complainant’s INFINEON mark at the time of registering the infringing domain names. However, the Panel disregards arguments of bad faith based on constructive notice as 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 chooses to analyze whether Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name, as actual knowledge can adequately evince 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). Complainant contends that Respondent had knowledge of the Complainant’s rights in the INFINEON mark given Complainant’s prior trademark registration with the USPTO. Accordingly, the Panel chooses to agree with Complainant and finds that Respondent did have knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii).

 

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 <infineontechpro.com>, <infineontechnologiespro.com>, and <infineontechone.com> domain names be TRANSFERRED from Respondent to Complainant.

 

John J. Upchurch, Panelist

Dated:  September 28, 2018