MIPS AB v. Privacy Protection
Claim Number: FA2101001929512
Complainant: MIPS AB, of Täby, Sweden.
Complainant Representative: Aaron B. Newell, of London, United Kingdom.
Respondent: Privacy Protection / Protection of Private Person of Moscow, International, RU.
Respondent Representative: Not applicable
REGISTRIES and REGISTRARS
Registries: DotSite Inc.
Registrars: Registrar of Domain Names REG.RU LLC
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Examiner in this proceeding.
Jeffrey M. Samuels, as Examiner.
Complainant submitted: January 25, 2021
Commencement: January 26, 2021
Default Date: February 11, 2021
Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure, Paragraphs 3 and 4, and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules").
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
Complainant MIPS AB (MIPS) which is based in Sweden, is a world leader in helmet-based safety and brain protection technology. Founded in 1996, Complainant has developed a unique proprietary technology that allows the head to move inside the helmet, reducing the rotational motion transmitted to the brain. MIPS technology is sold to the global helmet industry and MIPS has sold more than 14 million units worldwide, with over 100 brands, including GIRO, having adopted MIPS technology.
MIPS owns trademark registrations in over 45 countries, including EUTM No. 009088204 for the mark MIPS.
The disputed domain name, giromips.site, resolves to a website that sells UNITOX anti-parastic medication and mirrors a site whose operators have had numerous fraud-related complaints lodged against them by Russian consumers.
Complainant alleges that the MIPS trademark is clearly recognizable within the domain name and the addition of the terms “giro” and “site” only reinforces a connection with the trademark as it demonstrates an awareness that GIRO and MIPS are partner brands and that the disputed domain name is clearly designed to give the misleading impression that the domain may be a website for GIRO MIPS products.
Complainant asserts that Registrant’s bad faith use and registration and lack of legitimate interest are evident because, on information and belief, Respondent is not licensed or otherwise authorized to use MIPS or similar names and the evidence establishes that Respondent is clearly capitalizing on the reputation and goodwill of GIRO and MIPS branding as GIROMIPS is not a word and has no generic meaning, including in Russian. According to Complainant, the domain name in dispute is being used by Respondent to attract confuse, mislead, or deceive Internet users for commercial gain and to take unfair advantage of, abuse, or otherwise engage in behavior detrimental to Complainant.
Even though Respondent has defaulted, URS Procedure 1.2.6 requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.
1. Confusing Similarity/Rights/Current Use
The assessment of whether the disputed domain name is confusingly similar to a mark typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark. Where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark. Moreover, where a complainant’s trademark is recognizable within the disputed domain name, the addition of a third-party mark is insufficient in itself to avoid a finding of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, §§1.7 and1.12 and cases cited therein.
In this case, Complainant’s mark MIPS is clearly recognizable as part of the domain name and, as noted above, the addition of the third-party mark GIRO does not avoid a finding of confusing similarity.
In addition to finding that the domain name is confusingly similar to the MIPS mark, the Examiner further finds that Complainant has rights in such mark and that such mark is in current use.
2. Rights/Legitimate Interests
The Examiner finds that Complainant has met its burden of establishing that Respondent lacks rights or legitimate interests in the disputed domain name. As noted by Complainant, Respondent is not licensed or otherwise authorized to use MIPS or similar names and GIROMIPS is not a word and has no generic meaning.
3. Bad faith registration and use
The Examiner concludes that the disputed domain name was registered and is being used in bad faith. Respondent’s domain name clearly is designed to lead Internet users to Respondent’s site based on the mistaken impression that GIRO MIPS products may be purchased therein. As noted above, the disputed domain name, instead, resolves to a commercial site that sells certain medication and that mirrors a website that has resulted in numerous fraud-related complaints.
The Examiner finds that Respondent was clearly capitalizing on the reputation and goodwill of GIRO and MIPS branding when it registered the disputed domain name and is using the domain name to intentionally attract, for commercial gain, Internet users to its site by creating a likelihood of confusion with Complainant’s mark as to source of such site and as to the goods that may be purchased at such site.
After reviewing Complainant’s submission, the Examiner determines that
Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence. The Examiner hereby Orders the following domain name be SUSPENDED for the duration of the registration:
giromips.site
Jeffrey M. Samuels, Examiner
Dated: February 16, 2021
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