Infineon Technologies AG v. qingji lin / shenzhenshikeshitongdianzikejiyouxiangongsi
Claim Number: FA2205001996560
Complainant is Infineon Technologies AG (“Complainant”), represented by Gary J. Nelson of Lewis Roca Rothgerber Christie LLP, California, USA. Respondent is qingji lin / shenzhenshikeshitongdianzikejiyouxiangongsi (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <infineon-kst.com>, registered with Chengdu West Dimension Digital Technology Co., Ltd.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 16, 2022; the Forum received payment on May 16, 2022.
On May 17, 2022, Chengdu West Dimension Digital Technology Co., Ltd. confirmed by e-mail to the Forum that the <infineon-kst.com> domain name is registered with Chengdu West Dimension Digital Technology Co., Ltd. and that Respondent is the current registrant of the name. Chengdu West Dimension Digital Technology Co., Ltd. has verified that Respondent is bound by the Chengdu West Dimension Digital Technology 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 May 23, 2022, the Forum served the Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of June 13, 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-kst.com. Also on May 23, 2022, the Chinese and English language 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 June 22, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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.
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDING
The Panel finds that Respondent is conversant in the English language and determines, under UDRP Rule 11(a), that the proceeding will be conducted be in English.
A. Complainant
1. Respondent’s <infineon-kst.com> domain name is confusingly similar to Complainant’s INFINEON mark.
2. Respondent does not have any rights or legitimate interests in the <infineon-kst.com> domain name.
3. Respondent registered and uses the <infineon-kst.com> domain name in bad faith.
B. Respondent did not file a Response.
Complainant, Infineon Technologies AG, is a well-known semiconductor manufacturer. Complainant holds a registration for the INFINEON mark through its registration with multiple trademark agencies, including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,516,259, registered December 11, 2001) and China’s State Administration for Industry and Commerce (“SAIC”) (e.g., Reg. No. G718087, registered July 12, 1999).
Respondent registered the <infineon-kst.com> domain name on March 14, 2022, and uses it to compete with Complainant.
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”).
The Panel finds that Complainant has rights in the INFINEON mark through its registration with multiple trademark agencies, including the USPTO. See Bloomberg Finance L.P. v. Jimmy Yau, FA 1764034 (Forum Jan. 25, 2018) (“The Panel finds that complainant has rights in BLOOMBERG mark under Policy ¶ 4(a)(i) based upon its registration with multiple trademark agencies, including the USPTO.”)
Respondent’s <infineon-kst.com> domain name uses the INFINEON mark, and adds three letters and a gTLD. Under Policy ¶ 4(a)(i), incorporating a mark in its entirety and adding letters and a generic top-level domain name is not sufficient to distinguish a disputed domain name from a mark. See Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.”); see also Bittrex, Inc. v. Sergey Valerievich Kireev / Kireev, FA 1784651 (Forum June 5, 2018) (holding that the domain name consists of the BITTREX mark and adds “the letters ‘btc’ and the gTLD .com which do not distinguish the Domain Name from Complainant’s mark.”) Therefore, the Panel finds that Respondent’s <infineon-kst.com> domain name is confusingly similar to Complainant’s INFINEON mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 contends that Respondent lacks rights and legitimate interests in the <infineon-kst.com> domain name because Respondent is not commonly known by the disputed domain name. Complainant has not authorized or licensed Respondent any rights in the INFINEON mark. See Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name); see also Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response). Finally, 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 registrant of the disputed domain name is “qingji lin / shenzhenshikeshitongdianzikejiyouxiangongsi.” Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name, and thus has no rights under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent does not use the <infineon-kst.com> domain name for a bona fide offering of goods or services or a legitimate non-commercial or fair use, because Respondent uses it to compete with Complainant. Using a domain to sell products or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) (“Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use” where “Respondent is apparently using the disputed domain name to offer for sale competing services.”) Complainant provides evidence showing that Respondent uses the disputed domain name to divert them to a website that offers competing products. The Panel finds that this is not a bona fide offering of goods or services or a legitimate non-commercial or fair use, and thus Respondent has no rights under Policy ¶¶ 4(c)(i) or (iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent registered and uses the <infineon-kst.com> domain name to disrupt Complainant’s business in bad faith. Using a complainant’s mark in a disputed domain name to divert complainant’s customers to a website that offers competing goods is disruptive to a complainant’s business and demonstrates bad faith use and registration of the domain name under Policy ¶ 4(b)(iii). See ZIH Corp. v. ou yang lin q, FA1761403 (Forum Dec. 29, 2017) (Finding bad faith where Respondent used the infringing domain name to disrupt Complainant’s business by diverting Internet users from Complainant’s website to Respondent’s website where it offered competing printer products). Therefore, the Panel finds that Respondent registered and uses the disputed domain name to disrupt Complainant’s business in bad faith under Policy ¶ 4(b)(iii).
Complainant also argues that Respondent registered and used the confusingly similar <infineon-kst.com> domain name to attract users for commercial gain. A respondent that capitalizes on the confusingly similarity of a disputed domain name to benefit from the goodwill associated with a complainant’s mark shows bad faith under Policy ¶ 4(b)(iv). See Carey Int’l, Inc. v. Kogan, FA 486191 (Forum July 29, 2005) (“[T]he Panel finds that Respondent is capitalizing on the confusing similarity of its domain names to benefit from the valuable goodwill that Complainant has established in its marks. Consequently, it is found that Respondent registered and used the domain names in bad faith under Policy ¶ 4(b)(iv); see also OneWest Bank N.A. v. Matthew Foglia, FA1503001611449 (Forum Apr. 26, 2015) (holding that the respondent’s use of the disputed domain name to direct Internet users to a website which competed with the complainant was evidence of bad faith pursuant to Policy ¶ 4(b)(iv)). Accordingly, the Panel finds bad faith under Policy ¶ 4(b)(iv).
Complainant asserts that Respondent registered the <infineon-kst.com> domain name with actual knowledge of Complainant’s rights in the INFINEON mark. Using of confusingly similar domain name to feature competing products demonstrates a respondent’s actual knowledge of a complainant’s rights in a mark. See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the Complainant’s mark when it registered the subject domain name”). The Panel finds that Respondent incorporates the entirety of Complainant’s INFINEON mark in the disputed domain name and offers competing services in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Complainant has satisfied 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-kst.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
June 23, 2022
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