Infineon Technologies AG v. yang xi wen
Claim Number: FA1908001856343
Complainant is Infineon Technologies AG (“Complainant”), represented by Gary J. Nelson of Lewis Roca Rothgerber Christie LLP, California, USA. Respondent is yang xi wen (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <infineon-distributor.com>, registered with Alibaba Cloud Computing (Beijing) 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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 8, 2019; the Forum received payment on August 8, 2019.
On August 9, 2019, Alibaba Cloud Computing (Beijing) Co., Ltd. confirmed by e-mail to the Forum that the <infineon-distributor.com> domain name is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. and that Respondent is the current registrant of the name. Alibaba Cloud Computing (Beijing) Co., Ltd. has verified that Respondent is bound by the Alibaba Cloud Computing (Beijing) 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 August 14, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 3, 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-distributor.com. Also on August 14, 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 September 5, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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
Complainant owns a globally known brand that is in the 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 trademark through its trademark registrations around the world, including with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,516,259, registered Dec. 11, 2001). Respondent’s <infineon-distributor.com> domain name is confusingly similar to Complainant’s INFINEON trademark as it wholly incorporates the trademark, along with a hyphen, the generic term “distributor,” and the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <infineon-distributor.com> domain name. Respondent is not permitted or otherwise authorized to use Complainant’s INFINEON trademark, nor commonly known by the disputed domain name. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent fails to actively use the disputed domain name.
Respondent registered and uses the <infineon-distributor.com> domain name in bad faith. Respondent fails to actively use the disputed domain name for any purpose. Finally, Respondent had at least constructive knowledge of Complainant’s rights in the INFINEON trademark prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following trademark registrations:
United States trademark No. 2,516,259 INFINEON (word), registered December 11, 2001 for goods and services in classes 9, 35 and 42;
United States trademark No. 3,267,884 INFINEON (device), registered July 24, 2007 for goods and services in classes 9, 35 and 42;
Chinese trademark No. G718087 INFINEON (word), registered July 12, 2009 for goods in class 9;
Chinese trademark No. G718087 INFINEON (word), registered July 12, 2009 for services in class 35;
Chinese trademark No. G718087 INFINEON (word), registered July 12, 2009 for services in class 42;
Chinese trademark No. 4893421 INFINEON (device), registered April 7, 2009 for services in class 35;
Chinese trademark No. 4893422 INFINEON (device), registered May 7, 2009 for services in class 42;
Chinese trademark No. 4931703 INFINEON (device), registered September 28, 2008 for goods in class 9; and
Chinese trademark No. 4893423 INFINEON (device), registered January 14, 2009 for goods in class 9.
The disputed domain name <infineon-distributor.com> was registered on May 7, 2019.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential 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”).
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDING
The Panel notes that Complainant requests that the language of this administrative proceeding shall 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. UDRP Rule 10 (b) states that in all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case. The UDRP Rule 10 (c) states that the Panel shall ensure that the administrative proceeding takes place with due expedition.
The Panel has taken into consideration that the Respondent did not file a response, and thereby also failed to argue that the language of proceeding should be in Chinese language. Although this is not enough alone to treat English as the language of proceeding, it is one indicator that Respondent accepts English.
Here, it shall also be duly noted that the Forum has, on September 5, 2019, communicated in Chinese with the Respondent, informing of the appointment of the Panelist, due date for the Administrative Hearing, and how the parities shall communicate with the Forum – still resulting in no actions or communications from the Respondent. This is a further indication that Respondent has chosen to not make any Response at all, independent of the language of the proceeding.
The Panel further notes that the disputed domain name clearly includes the English word “distributor”, indicating that the disputed domain name was registered with a more international (English spoken) audience in mind.
The Panel has weigh the relative time and expense in enforcing the Chinese language agreement, which would result in prejudice toward either party, together with the other referred facts and indications in the case. 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.”).
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
Complainant claims rights in the INFINEON trademark based upon registration of the trademark with the USPTO, as well as in China – the home country of the Respondent. Registration of a trademark with the USPTO is sufficient to establish rights in a trademark per Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Here, Complainant has provided the Panel with copies of its US registrations for the INFINEON trademark (e.g., Reg. No. 2,516,259, registered Dec. 11, 2001). Therefore, the Panel finds that Complainant has adequately shown rights in the INFINEON trademark per Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <infineon-distributor.com> domain name is confusingly similar to the INFINEON trademark, as the name incorporates the trademark in its entirety along with a hyphen, the generic term “distributor,” and the “.com” gTLD. Such changes are not sufficient to distinguish a domain name from an incorporated trademark 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 Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). The Panel agrees that the disputed domain name is confusingly similar to Complainant’s INFINEON trademark per Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). 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 <infineon-distributor.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the INFINEON trademark 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 at-issue domain name as “yang xi wen”, and no information on the record indicates that Respondent was authorized to register a domain name incorporating Complainant’s trademark. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <infineon-distributor.com> domain name.
Complainant also asserts that Respondent’s inactive holding of the <infineon-distributor.com> domain name indicates it does not have rights or legitimate interests in the name. Inactive holding of a domain name does not demonstrate rights or legitimate interests in the name per Policy ¶¶ 4(c)(i) or (iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 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). Complainant contends Respondent’s domain name does not resolve to an active webpage. The Panel therefore finds that Respondent does not have rights or legitimate interests in the domain name per Policy ¶¶ 4(c)(i) or (iii).
The Panel notes that Complainant does not make any arguments that would fall under Policy ¶ 4(b). However, these arguments are merely illustrative rather than exclusive to support a finding of bad faith. See Bloomberg Finance L.P. v. Domain Admin - This Domain is For Sale on GoDaddy.com / Trnames Premium Name Services, FA 1714157 (Forum Mar. 8, 2017) (determining that Policy ¶ 4(b) provisions are mere illustrative of bad faith, and that the respondent’s bad faith may be demonstrated by other allegations of bad faith under the totality of the circumstances). As such, the Panel finds that Complainant’s Policy ¶ 4(a)(iii) arguments are sufficient to support a finding of bad faith.
Complainant asserts that Respondent’s failure to use the <infineon-distributor.com> domain name is evidence of its bad faith. Inactive holding of a domain name can be evidence of bad faith under Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). As noted above, the domain name does not resolve to an active website. The Panel thereby finds Respondent’s inactive holding of the domain name to be evidence of its bad faith per Policy ¶ 4(a)(iii).
Complainant also contends that in light of the fame and notoriety of Complainant's INFINEON trademark, it is inconceivable that Respondent could have registered the <infineon-distributor.com> domain name without at least constructive knowledge of Complainant's rights in the trademark. The Panel here 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 agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the trademark prior to registering the disputed domain name and thereby 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.”).
The Panel also recalls that Complainant has provided the Panel with copies of its Chinese registrations for the INFINEON trademark. Noting that China is the home country of the Respondent, and in the absence of any reply/comments from the Respondent, the Panel finds that Respondent had actual knowledge of Complainant’s rights in the INFINEON trademark prior to registration of its disputed domain name which constitutes bad faith per Policy ¶ 4(a)(iii).
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-distributor.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: September 9, 2019
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