Marvell Asia Pte, Ltd. v. wang xiao kang / Wansan Technology (Shenzhen) Co., Limited
Claim Number: FA2211002018751
Complainant is Marvell Asia Pte, Ltd. (“Complainant”), represented by Lisa Greenwald-Swire of Fish & Richardson P.C., Minnesota, USA. Respondent is wang xiao kang / Wansan Technology (Shenzhen) Co., Limited (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wansan-marvell.com>, registered with Alibaba Cloud Computing (Beijing) 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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to Forum electronically on November 2, 2022; Forum received payment on November 2, 2022. The Complaint was submitted in English.
On November 3, 2022, Alibaba Cloud Computing (Beijing) Co., Ltd. confirmed by e-mail to Forum that the <wansan-marvell.com> domain name is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. and that Respondent is the current registrant of the name. Alibaba Cloud Computing (Beijing) Co., Ltd. has verified that Respondent is bound by the Alibaba Cloud Computing (Beijing) 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 November 4, 2022, Forum served the Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of November 25, 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@wansan-marvell.com. Also on November 4, 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 official response from Respondent, Forum transmitted to the parties a Notification of Respondent Default. Respondent submitted informal correspondence.
On December 1, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 asserts trademark rights in the MARVELL mark. Complainant submits that the disputed domain name is confusingly similar to the trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
A. Respondent
Respondent failed to submit a formal Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant manufactures and sells semiconductors, integrated circuits, and related technology by reference to the trademark, MARVELL, registered, inter alia, with the United States Patent & Trademark Office (“USPTO”) as Reg. No. 2,735,413, registered July 8, 2003;
2. There is no relationship between the parties and Complainant has not authorized Respondent to use the trademark or to register any domain name incorporating the trademark;
3. The disputed domain name was registered on January 13, 2022 by Respondent whose name is shielded from public view by a privacy service; and
4. The disputed domain name resolves to a webpage that features Complainant’s trademark and offers its products for sale under the promotion, “from the original factory”.
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."
PRELIMINARY ISSUE: CONSENT TO TRANSFER
Respondent states “The domain name and website were set up by a third party, so we didn't know it would cause trouble! We can give up the domain name and give it to each other, and that's the end of the story, right? At present, the domain name and website have been given up and are being cancelled. Is there anything else I need to cooperate with?”.
Insofar as this can be treated as consent to transfer of the disputed domain name, the Panel notes that it has elicited no reaction from Complainant. The Panel deduces that Complainant prefers application of the Policy rather than voluntary transfer. So, too, on the facts as described below, the Panel finds that transfer of the disputed domain name should follow the findings in accordance with the Policy (see, for example, Graebel Van Lines, Inc. v. Tex. Int’l Prop. Assocs., FA 1195954 (Forum July 17, 2008)).
The Registration Agreement is in Chinese thereby making the language of the proceedings Chinese under Rule 11(a). Nevertheless, Complainant submits for various reasons that the proceeding should be conducted in English.
The Panel has the discretion under UDRP Rule 11 to determine the appropriate language taking into consideration the particular circumstances of the administrative proceedings. Facility of the parties in another language is one of those circumstances. Here, the website resolving from the disputed domain name is largely written in English. Moreover, as seen already, Respondent made its consent to transfer offer in English.
Having taken the Rules into account and paying regard to the ability of Respondent in English, the Panel finds that these administrative proceedings should continue in English.
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003)). The Panel finds that Complainant has rights in the trademark since it is registered with the USPTO, a national trademark authority.
Countless UDRP decisions have held that in most cases the gTLD can be ignored for the purposes of comparison of a domain name with a trademark (see, for example, Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) holding that: “A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs.”). Once the gTLD in this case, “.com”, is subtracted, what remains is the word “wansan” prefixed and hyphenated to the trademark.
Complainant’s submission is that the compared terms are confusingly similar because:
“… the Domain Name incorporates the entirety of Complainant’s MARVELL mark and adds the term “Wansan”—short for Wansan Technology (Shenzhen) Co., Ltd.—and the generic TLD “.com.” It is well established that the addition of an unrelated trademark or trade name does not alleviate the confusion caused by the use of a well- known trademark in a domain name.”
The Panel is not moved by those submissions. Internet users are unlikely to have any understanding that “Wansan” is some shorthand for Wansan Technology (Shenzhen) Co., Ltd., nor is there any indication of what significance that company name would hold for them were they to make that connection.
The critical question is whether the compared terms are confusingly similar and the Panel finds that to most Internet users the word “Wanson” would not carry any connotation and would be treated by English language speakers at least as a foreign word of unknown meaning or, contextually, a family name given its hyphenation to the trademark.
Further, there is no conclusive authority for the proposition that the repute of the trademark is a factor influencing the determination of confusing similarity under this aspect of the Policy; indeed, there is compelling contrary authority (see, for example, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition at #1.7; see also, Cboe Exchange, Inc. v. main main / main, FA 2206002001707 (Forum Aug. 1, 2022)).
In the result, what is required is a side-by-side comparison of the terms and an assessment of whether or not they bear an objective similarity or are likely to confuse given the nature of the matter added to the trademark (see, for example, Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1804001782013 (Forum June 4, 2018) holding: “Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”).
The Panel finds by a fine margin that the disputed domain name is confusingly similar to the trademark and so it follows that Complainant has satisfied the first element of the Policy.
Rights or Legitimate Interests
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see, for example, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000‑0624).
There is no suggestion that Respondent might be commonly known by the disputed domain name, or that Respondent has any trademark rights. The evidence in support of the Complaint shows that the domain name resolves to a developed website in respect of which the Complaint states:
“Respondent’s Infringing Domain addresses a website that inappropriately trades on Complainant’s MARVELL trademark to sell counterfeit and/or unlicensed related products. When accessing the Domain Name, which prominently displays Complainant’s logo and trademark, users are informed that Respondent is “mainly engaged in the sales of Marvell products” and has “large and small batch shipments” of Marvell products ready for sale from “the original factory.” The website advertises numerous products purportedly produced by Complainant, all without Complainant’s authorization.”
Complainant does not state whether Respondent is in fact its, or one of its, contracted manufacturers of semiconductors and ICs in China, instead simply claiming that the goods are counterfeit and/or unlicensed products. On the facts, that is enough to establish that the use does not constitute a bona fide offering of goods or services, nor a legitimate non-commercial or fair use of the domain name (see, for example, Oboz Footwear LLC v. Bichuanlin, FA 2209002011363 (Forum Oct. 12, 2022) (“Clearly the sale of counterfeit products does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name under the Policy. If it happens that the goods are genuine … the trademark has been used without permission and Respondent has not shown itself to be an authorized re-seller of Complainant’s branded goods.”)).
The Panel finds that Complainant has made a prima facie case that Respondent lacks a right or interest in the disputed domain name. The onus shifts to Respondent. Absent a Response that onus is not met and so the Panel finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
“(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.”
The Panel finds that Respondent’s conduct falls under paragraph 4(b)(iv) above. The Panel has already found the domain name to be confusingly similar to the trademark. The use of the domain name is for commercial gain. In terms of the Policy, the Panel finds that Respondent’s use of the domain name was intended to attract internet users, for commercial gain, by creating a likelihood of confusion with Complainant’s trademark (see, for example, Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum October 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”)).
The Panel finds that the third and final element of the Policy is satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <wansan-marvell.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: December 15, 2022
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