Infineon Technologies AG v. Chen Hui
Claim Number: FA2201001979756
Complainant is Infineon Technologies AG (“Complainant”), represented by Gary J. Nelson of Lewis Roca Rothgerber Christie LLP, California, USA. Respondent is Chen Hui (“Respondent”), Singapore.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <infineon-power.com>, registered with Dynadot13 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 Panelist in this proceeding.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 10, 2022; the Forum received payment on January 10, 2022.
On January 11, 2022, Dynadot13 LLC confirmed by e-mail to the Forum that the <infineon-power.com> domain name is registered with Dynadot13 LLC and at Respondent is the current registrant of the name. Dynadot13 LLC has verified that Respondent is bound by the Dynadot13 LLC 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 January 14, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 3, 2022, 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-power.com. Also on January 14, 2022, 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 February 9, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson 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 engages in the business of manufacturing of semiconductors and systems for automotive, industrial, and multimarket sectors. Complainant has rights in the INFINEON mark through its registration of the mark with the United State Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,516,259, Registered Dec. 11, 2001). Respondent’s <infineon-power.com> domain name is confusingly similar to Complainant’s INFINEON mark. Respondent incorporates the mark in its entirety and adds the generic term “power” along with the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <infineon-power.com> domain name as Respondent is not commonly known by the disputed domain name nor did Complainant authorize Respondent to use the INFINEON mark in any way. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s domain name resolves to a webpage that offers adult-oriented material.
Respondent registered and used the <infineon-power.com> domain name in bad faith as Respondent attempts to confuse internet using into thinking Respondent is affiliated with Complainant, when in fact Respondent’s domain name resolves to a webpage that offers adult-oriented material. Respondent had actual knowledge of Complainant’s rights in the INFINEON mark due to the longstanding use and fame of the mark in commerce.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Infineon Technologies AG (“Complainant”), of Neubiberg, Germany. Complainant is the owner of domestic and international registrations for the mark INFINEON. Complainant has used its mark continuously since at least as early as 2001 in connection with its manufacturing and provision of semiconductors and systems for automotive, industrial, and multimarket sectors as well as related products and services.
Respondent is Chen Hui (“Respondent”), of Centro Bianco, Singapore. Respondent’s registrar’s address is indicated as San Mateo, CA, USA. The Panel notes that the <infineon-power.com> domain name was registered on or about March 1, 2021.
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 to have rights in the INFINEON mark through its registrations with the USPTO. Registration of a mark with the USPTO is sufficient to demonstrate rights in a mark per policy ¶ 4(a)(i). See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)). Here, Complainant has provided this Panel with copies of it USPTO registrations for the INFINEON mark (e.g., Reg. No. 2,516,259, Registered Dec. 11, 2001). The Panel here finds Complainant has rights in the mark per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <infineon-power.com> domain name is confusingly similar to Complainant’s INFINEON mark. Registration of a domain name that contains a mark in its entirety and adds a generic word and a gTLD does not distinguish the domain name from the mark per Policy ¶ 4(a)(i). 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)). Here, Complainant argues that Respondent incorporates the mark in its entirety and adds the generic term “power” along with the “.com” gTLD. The Panel here finds that Respondent’s domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
Rights or Legitimate Interests
The Panel notes that 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”). The Panel here finds that Complainant has set forth the requisite prima facie case.
Complainant argues Respondent lacks rights or legitimate interest in the <infineon-power.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been given license or consent to use the INFINEON mark or register domain names using Complainant’s mark. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “Chen Hui” and there is no evidence provided to indicate that Respondent was ever authorized to use the INFINEON mark or was commonly known by the disputed domain name. The Panel here finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s domain name resolves to a webpage that offers adult-oriented material. Use of a disputed domain name to resolve to an adult-oriented webpage is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii). See Altria Group, Inc. and Altria Group Distribution Company v. xiazihong, FA1732665 (Forum July 7, 2017) (holding that “[u]se of a domain name to display adult-oriented images is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy.”). Here, Complainant has provided the Panel with screenshots of Respondent’s <infineon-power.com> domain name’s resolving webpage that shows adult material. The Panel here finds that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Complainant argues that Respondent registered and used the <infineon-power.com> domain name in bad faith as Respondent attempts to confuse internet users into thinking Respondent is affiliated with Complainant, when Respondent’s domain name actually resolves to a webpage that offers adult-oriented material. Registration of a domain name that makes use of a complainant’s mark only to resolve to a webpage that offers adult material may be evidence of bad faith per Policy ¶¶ 4(b)(iv) and (a)(iii). See BBY Solutions, Inc. v. Grant Ritzwoller, FA 1703389 (Forum Dec. 21, 2016) (finding bad faith because the <bestbuyus.com> domain name was obviously connected with the complainant’s well-known BEST BUY mark, thus creating a likelihood of confusion strictly for commercial gain), see also Molson Canada 2005 v. JEAN LUCAS / DOMCHARME GROUP, FA1412001596702 (Forum Feb. 10, 2015) (“Further, Respondent’s diversion of the domain names to adult-oriented sites is registration and use of the disputed domain names in bad faith under Policy ¶ 4(a)(iii).”). Here, Complainant argues that Respondent makes use of its INFINEON mark while its <infineon-power.com> domain name resolves to a webpage that offers adult material. The Panel here finds that Respondent registered and used the disputed domain name in bad faith per Policy ¶¶ 4(b)(iv) and (a)(iii).
Complainant argues that Respondent had knowledge of Complainant’s rights in the INFINEON mark at the time of registering the <infineon-power.com> domain name. The Panel notes that Complainant has both a Research & Development Center and a fabrication site in Singapore thus supporting its contention that Respondent was aware of its mark. Complainant also has numerous similar sites around the world and asserts that it has a global reputation due to the billions of dollars in revenue it generates and its significant expenditures on marketing and promoting its INFINEON mark. See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Complainant points to its trademark registrations along with the fact that Respondent impersonates Complainant to further a fraudulent scam as further proof of Respondent’s actual knowledge. The Panel here finds that Respondent did have actual knowledge of Complainant’s rights in its mark, which further supports a finding that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
DECISION
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <infineon-power.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: February 24, 2022
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