Maxim Integrated Products, Inc. v. Chen Xiao Fei
Claim Number: FA2207002003538
Complainant is Maxim Integrated Products, Inc. (“Complainant”), represented by Tsan Abrahamson of Cobalt LLP, California, USA. Respondent is Chen Xiao Fei (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <maximintegrated.co>, registered with Xiamen Nawang Technology 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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 8, 2022; the Forum received payment on July 8, 2022.
On July 14, 2022, Xiamen Nawang Technology Co., Ltd confirmed by e-mail to the Forum that the <maximintegrated.co> domain name is registered with Xiamen Nawang Technology Co., Ltd and that Respondent is the current registrant of the name. Xiamen Nawang Technology Co., Ltd has verified that Respondent is bound by the Xiamen Nawang 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 July 15, 2022, the Forum served the Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of August 4, 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@maximintegrated.co. Also on July 15, 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 August 10, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, 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.
PRELIMINARY ISSUE: REQUIRED LANGUAGE OF COMPLAINT
A. Complainant
Complainant is a California-based global semiconductor manufacturing company. Complainant claims rights in the trademark MAXIM through registration with various trademark offices around the world including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,337,707 registered May 25, 1985). The disputed domain name <maximintegrated.co>, registered on December 26, 2021, is confusingly similar because it wholly incorporates Complainant’s mark, differing only through the addition of the term “integrated” and the “.co” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <maximintegrated.co> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the MAXIM mark in any way. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services and it does not make a legitimate noncommercial or fair use thereof. Instead, Respondent uses the disputed domain to promote gambling services.
Respondent registered and uses the disputed domain name in bad faith. Respondent uses the disputed domain name to financially benefit through creating confusion with Complainant’s registered mark. Furthermore, Complainant used a privacy service to register the disputed domain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
- Despite Chinese being the language of the registration agreement for the disputed domain name, this case will proceed in the English language;
- Complainant has rights in the MAXIM trademark and the disputed domain name is confusingly similar thereto;
- Respondent’s use of the disputed domain name to promote gambling services that have no relationship to complainant is not a bona fide offering of goods or services and there is no other evidence that Respondent has rights or legitimate interests in the disputed domain name; and
- Respondent’s above-mentioned use of the disputed domain name, combined with its use of WHOIS privacy service to hide its identity, indicates that it registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv) and ¶ 4(a)(iii).
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 ¶¶ 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 must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Should it succeed in this effort, the burden then shifts to Respondent to show that 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 first argues that Respondent lacks rights or legitimate interests in the <maximintegrated.co> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been given a license or consent to use the MAXIM mark for the registration of domain names or otherwise. In considering this issue, 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 that 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 bore no relationship to the terms making up the disputed domain name). The WHOIS information associated with the disputed domain indicates that Respondent is known by the name “Chen Xiao Fei.” Further, Complainant states that it has not granted, to Respondent, any rights to use the MAXIM mark and respondent has not filed a Response or made any other submission in this case to contest this. Therefore, the Panel finds no ground upon which to conclude that Respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent does not use the <maximintegrated.co> domain name for any bona fide offering of goods or services, and that it does not make any legitimate noncommercial or fair use thereof. Instead, Respondent uses the disputed domain to offer unrelated gambling services. Such use of a complainant’s trademark has not been held to be bona fide in past decisions. See, e.g., Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Forum Dec. 6, 2003) (Respondent's domain name “resolves to a Chinese-language website advertising games or gambling.
These circumstances, together with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the.”) Complainant has provided the Panel with screenshots of the website that resolves from the disputed domain name and this does promote gambling services using the brand “Galaxy”. Such name and services bear no textual or conceptual relationship to words “maxim” or “integrated”. As Complainant has made a prima facie case which has not been rebutted by Respondent, the Panel finds, by a preponderance of the evidence presented, that Respondent has failed to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(i) or (iii).
Complainant argues that Respondent registered and uses the <maximintegrated.co> domain name in bad faith because it attempts to attract Internet users to its website for commercial gain based on confusion with the MAXIM mark. Where the respondent uses a disputed domain name to financially benefit from the goodwill associated with a complainant’s mark, the Panel may find that it is acting in bad faith based on Policy ¶ 4(b)(iv). See Oki Electric Industry Co., Ltd. v. Elizabeth Dobson, FA 1989201 (Forum May. 2, 2022) (“the Panel determines that the disputed domain name's deceptive redirection of internet users to Respondent’s website, which offers links to online gambling websites, is deliberately designed for Respondent’s commercial gain. Therefore, the Panel finds that the disputed domain name was registered and is being used in bad faith under Policy ¶ 4(b)(iv).”) As previously noted, Complainant provides screenshots of the disputed domain name’s resolving pages promoting gambling-related services. While Complainant’s evidence on the scope of its mark’s reputation is admittedly thin, the mark is a rather unique combination of words, Complainant owns a trademark registration in China, and Respondent has not participated in these proceedings to contest Complainant’s assertion that it specifically targeted its MAXIM mark and Maxim Integrated Products, Inc. corporate name. On the basis of the evidence presented, the Panel finds it more likely than not that Respondent knew of and had Complainant in mind when it registered and used the disputed domain name and that it did so in bad faith under Policy ¶ 4(b)(iv).
Finally, Complainant argues that Respondent’s use of a privacy service when registering the disputed domain name further demonstrates bad faith. Past Panels have noted that although engaging a privacy service alone is not sufficient, it may demonstrate bad faith based on the overall context of the case under Policy ¶ 4(a)(iii). See Robert Half International Inc. v. robert arran, FA 1764367 (Forum Feb. 5. 2018) (“Respondent's use of a privacy registration service in an attempt to conceal his identity, though not itself dispositive, is a further indication of bad faith.”); see also Microsoft Corporation v. Arif Khan, FA2008001907105 (Forum Aug. 31, 2020) (“in the context of this case Respondent’s use of a WHOIS privacy service further supports a finding of bad faith under Policy ¶ 4(a)(iii).”). The publicly available WHOIS record demonstrates that Respondent utilized a privacy service when registering the disputed domain. Within the overall context of this case, the Panel holds that Respondent’s use of a privacy service further supports its finding bad faith registration under 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 <maximintegrated.co> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: August 12, 2022
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