Infineon Technologies AG v. weiru jing
Claim Number: FA2103001935990
Complainant is Infineon Technologies AG (“Complainant”), represented by Gary J. Nelson of Lewis Roca Rothgerber Christie LLP, California, United States. Respondent is weiru jing (“Respondent”), China
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <infneon.com>, registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED.
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 March 9, 2021; the Forum received payment on March 9, 2021.
On March 10, 2021, ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED confirmed by e-mail to the Forum that the <infneon.com> domain name is registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED and that Respondent is the current registrant of the name. ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED has verified that Respondent is bound by the ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED 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 March 11, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 31, 2021 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@infneon.com. Also on March 11, 2021, 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 5, 2021, 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 is engaged in the business of manufacturing semiconductors and systems for automotive, industrial, and multimarket sectors, including insulated-gate bipolar transistor modules, and offering services related to these same and related products. Complainant owns trademark registrations in the INFINEON mark in both the United States and China (e.g. Reg. No. 2,516,259. Registered with the United States Patent and Trademark Office (USPTO) on Dec. 11, 2001). The disputed domain name is identical or confusingly similar because it incorporates Complainant’s INFINEON mark, alters it by removing the second “I”, and adds a generic top-level domain (“gTLD”), “.com”.
ii) Respondent does not have any rights or legitimate interests in the disputed domain name because Respondent is not commonly known by the disputed domain name. Respondent is not making a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name because Respondent uses the disputed domain name to promote adult-oriented content.
iii) Respondent registered or is using the disputed domain name in bad faith because Respondent uses the disputed domain name to misdirect Internet users as an attraction for commercial gain. Also, the use by Respondent to promote adult-oriented content is further bad faith use of the disputed domain name.
B. Respondent
Respondent did not submit a response.
1. The disputed domain name was registered on January 12, 2021.
2. Complainant has established trademark registrations in the INFINEON mark in both the United States and China (e.g. Reg. No. 2,516,259 registered with the United States Patent and Trademark Office (USPTO) on Dec. 11, 2001; Reg. No. G718087 registered with the Trademark Office of China on July 12, 2009).
3. Respondent is using the disputed domain name to promote adult-oriented content.
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”).
Complainant claims rights in the INFINEON mark through its registration with the USPTO. Registration of a mark with the USPTO is sufficient to show that Complainant has rights in that mark under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Complainant provides evidence that it has registered its INFINEON mark with the USPTO (e.g. Reg. No. 2,516,259. Registered on Dec. 11, 2001). With this showing of registration with the USPTO, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that the disputed domain name is identical or confusingly similar to Complainant’s mark because it incorporates Complainant’s mark, deletes a letter in the mark, and adds it to a gTLD to form a domain name. A domain name may be found to be confusingly similar to a complainant’s mark, under Policy ¶ 4(a)(i), where the disputed domain name merely omits a letter from a mark when added to a gTLD. See Wells Fargo & Company v. VALERIE CARRINGTON, FA 1621718 (Forum July 2, 2015) (finding that the <wllsfago.com> domain name is confusingly similar to the WELLS FARGO mark as the domain name merely omits the “e” and “r” from the mark while adding the “.com” gTLD suffix.). The Panel notes that only one letter is removed from Complainant’s INFINEON mark when used in the disputed domain name – the second “i”. Therefore, the Panel finds that the disputed domain name is identical or confusingly similar to Complainant’s mark under 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 is not commonly known by the disputed domain name. Under Policy ¶ 4(c)(ii), a respondent has no rights or legitimate interests in a disputed domain name where the identifying information obtained in the WHOIS data is unrelated to the domain name. See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel notes that the WHOIS information merely lists a privacy service as registrant. In light of Respondent’s failure to provide any evidence to the contrary, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).”). In the WHOIS information provided by Complainant, Respondent is identified as “Weiru Jing”. Further evidence in the record also does not indicate that Respondent is known by the disputed domain name.
Complainant argues Respondent is not using the disputed domain name for a bona fide offering of goods or services nor for a legitimate noncommercial or fair use because Respondent is using the disputed domain name to promote adult-oriented content. Under Policy ¶¶ 4(c)(i) and (iii), a domain name that hosts adult-oriented material is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use. See Twitter, Inc. v. Kiribati Media / Kiribati 200 Media Limited-, FA 1603444 (Forum Mar. 19, 2015) (holding that, generally, a disputed domain which hosts adult-oriented material is not a bona fide offering of goods or services or a legitimate noncommercial or fair use). Complainant provides screenshots of the resulting website which hosts videos related to such adult-oriented content. With the disputed domain name hosting such content, the Panel finds that Respondent is not making a bona fide offering nor a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) and (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 name.
Complainant contends that Respondent is using the disputed domain name for an attraction for commercial gain because it was used to misdirect users to respondent’s website causing respondent to likely profit from it. Bad faith registration may be found, under Policy ¶ 4(b)(iv), where a respondent uses a complainant’s mark in a confusingly similar domain name for commercial gain. See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”). Complainant argues that the disputed domain name is confusingly similar with the removal of a single letter from Complainant’s INFINEON mark. The commercial gain associated with Respondent’s use is in its promotion and distribution of the adult-oriented content featured on the resulting website. Thus, the Panel finds bad faith use under Policy ¶ 4(b)(iv).
Complainant also argues that Respondent’s use of the disputed domain name tarnishes Complainant’s reputation because the confusingly similar disputed domain name is being used to host adult-oriented content. Use of a domain name to host adult-oriented material in a way that tarnishes the reputation of a complainant is bad faith use. See H-D U.S.A., LLC v. Nobuyoshi Tanaka / Personal, FA1312001534740 (Forum Jan. 31, 2014) (“Therefore, the Panel concludes that Respondent is acting in bad faith because Respondent is using the <harley-davidsonsales.com> domain name to tarnish Complainant’s HARLEY-DAVIDSON mark, as the Panel also finds that the content displayed on the resolving website constitutes adult-oriented content.”). Internet users who use the disputed domain name are directed to a site that hosts adult-oriented material. With the disputed domain name being confusingly similar to Complainant’s mark, Internet users might be confused as to the affiliation between the disputed domain name and Complainant and possibly tarnish Complainant’s reputation in the process. Therefore, the Panel finds that Respondent is using the disputed domain name in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <infneon.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: April 9, 2021
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