Infineon Technologies AG v. xu bing zhang
Claim Number: FA1812001820735
Complainant is Infineon Technologies AG (“Complainant”), represented by Gary J. Nelson of Lewis Roca Rothgerber Christie LLP, California, USA. Respondent is xu bing zhang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue are <infineonsz.com>, <infineonhk.com>, and <hkinfineon.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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 12, 2018; the Forum received payment on December 12, 2018.
On December 13, 2018, Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) confirmed by e-mail to the Forum that the <infineonsz.com>, <infineonhk.com>, and <hkinfineon.com> domain names are registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) and that Respondent is the current registrant of the names. 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 December 17, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 7, 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@infineonsz.com, postmaster@infineonhk.com, postmaster@hkinfineon.com. Also on December 17, 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 January 8, 2019, 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 name be transferred from Respondent to Complainant.
A. Complainant
i) Complainant owns the globally known brand 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 and offering services related to these same products. Complainant has rights in the INFINEON mark through its trademark registration 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 July 12, 2009). See Compl. Ex. B. Respondent’s <infineonsz.com>, <infineonhk.com>, and <hkinfineon.com> domain names are confusingly similar to Complainant’s INFINEON mark as Respondent merely adds geographically or generic terms (“sz” (Shenzhen), “hk” (Hong Kong)) and a “.com” generic top-level domain (“gTLD”).
ii) Respondent has no rights or legitimate interests in the <infineonsz.com>, <infineonhk.com>, and <hkinfineon.com> domain names. Respondent is not permitted or otherwise authorized to use Complainant’s INFINEON mark and is not 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’s disputed domain names resolve to inactive websites.
iii) Respondent registered and uses the <infineonsz.com>, <infineonhk.com>, and <hkinfineon.com> domain names in bad faith. Respondent fails to actively use the disputed domain name. Finally, Respondent had actual and 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 <infineonsz.com>, <infineonhk.com>, and <hkinfineon.com> domain names were all registered on September 26, 2018.
2. Complainant has established 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 July 12, 2009).
3. The disputed domain names resolve to inactive websites.
4. Complainant's INFINEON mark has acquired a valuable goodwill and reputation, and is widely recognized by the consuming public as a designation of source of the goods and services of Complainant, throughout the world, including China.
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 the Proceedings
The Panel notes that Complainant requests that the language of this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the Chinese language Registration Agreement. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Factors which previous panels have seen as particularly compelling are: WHOIS information which establishes Respondent in a country which would demonstrate familiarity with the English language, filing of a trademark registration with an entity which shows an understanding of the English language, and any evidence (or lack thereof) exhibiting Respondent’s understanding of the Chinese language included in the Registration Agreement. See 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). Further, the Panel may weigh the relative time and expense in enforcing the Chinese language agreement, which would result in prejudice toward either party. See 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 contends that the WHOIS information indicates that the registrar and Respondent are located in China; however, the dominant portion of Respondent’s domain name is the English word “INFINEON,” suggesting that Respondent is conversant and proficient in the English language; 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; for at least these reasons, Complainant requests that this administrative proceeding proceed in the English language.
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.
(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 July 12, 2009). See Compl. Ex. B. Registration of a mark with the USPTO and SAIC is sufficient to establish rights in that mark. See Astute, Inc. v. Raviprasath C / Astute Solution Pvt Ltd, FA 1546283 (Forum Apr. 9, 2014) (finding that registrations with two major trademark agencies is evidence enough of Policy ¶ 4(a)(i) rights in the ASTUTE SOLUTIONS mark). 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 <infineonsz.com>, <infineonhk.com>, and <hkinfineon.com> domain names are confusingly similar to the INFINEON mark, as the name incorporates the mark in its entirety with geographic and/or generic terms “sz” or “hk,” 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 Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)); see also Dell Inc. v. Suchada Phrasaeng, FA 1745812 (Forum Sep. 28, 2017) (“Adding geographical terms does not sufficiently distinguish a domain name from a mark to prevent a finding of confusingly similarity under a Policy ¶4(a)(i) analysis.”). The Panel therefore determines the <infineonsz.com>, <infineonhk.com>, and <hkinfineon.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 <infineonsz.com>, <infineonhk.com>, and <hkinfineon.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 names as “xu bing zhang,” and no information on the record indicates Respondent was authorized to register a domain name incorporating Complainant’s mark. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <infineonsz.com>, <infineonhk.com>, and <hkinfineon.com> domain names.
Complainant further argues Respondent’s lack of rights or legitimate interests in the <infineonsz.com>, <infineonhk.com>, and <hkinfineon.com> domain names are 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 the disputed domain names resolve to inactive websites. Failure to actively use a disputed domain name may indicate that a respondent lacks rights or legitimate interests therein under Policy ¶¶ 4(c)(i) or (iii). See Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) (”Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <kohler-corporation.com> resolves to an inactive webpage displaying the message “website coming soon!”). Complainant provides various screenshots of the disputed domain names’ resolving websites in support of its contentions. See Compl. Ex. D. Therefore, the Panel finds Respondent failed to use the disputed domain names for a bona fide offering of goods or services or for a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
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.
Complainant asserts that Respondent’s failure to use the <infineonsz.com>, <infineonhk.com>, and <hkinfineon.com> domain names is evidence of its bad faith. The Panel agrees that the passive holding of a domain name does not necessarily circumvent a finding that the domain name is being used in bad faith within the requirements of paragraph 4(a)(iii) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (finding that in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the panel must give close attention to all the circumstances of the respondent’s behavior, and a remedy can be obtained under the Policy only if those circumstances show that the respondent’s passive holding amounts to acting in bad faith.)
The particular circumstances of this case that the Panel has considered are:
i) Complainant owns the globally known brand 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 and offering services related to these same products. Formed in 1999, Complainant has subsidiaries in the United States of America (US), Europe, Middle East, Africa, Japan and Asia Pacific including India. Complainant has Research and Development centers in France, Singapore, Romania, Taiwan, UK and India and fabrication sites in Singapore, Malaysia, Indonesia and China. Complainant and its subsidiaries has about eight billion dollars (US) in annual revenue and over 40,000 employees worldwide, making products in the areas of mobility, security, and energy efficiency. Complainant's INFINEON mark has acquired a valuable goodwill and reputation, and is widely recognized by the consuming public as a designation of source of the goods and services of Complainant, throughout the world, including China, and
ii) Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain names.
Taking into account all of the above, the Panel concludes that Respondent’s passive holding of the disputed domain names constitutes bad faith under Policy, paragraph 4(a)(iii) and that Respondent is using the disputed domain names in bad faith.
Finally, Complainant also contends that in light of the fame and notoriety of Complainant's INFINEON mark, it is inconceivable that Respondent could have registered the <infineonsz.com>, <infineonhk.com>, and <hkinfineon.com> domain names without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel finds 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, however due to the notoriety of 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.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <infineonsz.com>, <infineonhk.com>, and <hkinfineon.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: January 12, 2019
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