Infineon Technologies AG v. haonan.tang
Claim Number: FA1904001837569
Complainant is Infineon Technologies AG (“Complainant”), represented by Gary J. Nelson of Lewis Roca Rothgerber Christie LLP, California, USA. Respondent is haonan.tang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <infineon-igbt.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 the Forum electronically on April 5, 2019; the Forum received payment on April 5, 2019.
On April 8, 2019, Alibaba Cloud Computing (Beijing) Co., Ltd. confirmed by e-mail to the Forum that the <infineon-igbt.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 April 9, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 29, 2019 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 email@example.com. Also on April 9, 2019, 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 30, 2019, 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 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.
Complainant asserts trademark rights in the INFINEON mark and alleges that the disputed domain name is confusingly similar to its 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.
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant is a manufacturer of semiconductor products and security smartcard solutions;
2. Complainant has sold its goods by reference to the trademark, INFINEON for almost 20 years.
3. Complainant owns, inter alia, United States Patent and Trademark Office (“USPTO”) Trademark Reg. No. 2,516,259, registered December 11, 2001 for the trademark[i];
4. the disputed domain name was registered on January 29, 2018 but has not been used; and
5. there is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.
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."
As a preliminary matter, the Panel notes the Chinese language Registration Agreement. Under Rule 11(a), the language of these proceedings is therefore Chinese. Nevertheless, Complainant requests that the proceedings be in the English language. The Panel has discretion under the Rules to allow that request and in the past UDRP panels have taken account of factors which demonstrate a respondent’s proficiency with the English language.[ii] Here, Complainant’s submission is that the disputed domain name includes an English language word, being Complainant’s trademark, together with a descriptive term, “igbt”. It follows, reasons Complainant, that Respondent has proficiency in English.
This minimalist reasoning exposes Complainant to a Panel finding that it is necessary for the Complaint to be refiled in Chinese. The Panel would not ordinarily characterize the trademark as an English language word. It has no dictionary meaning and it would seem to refer to Complainant’s business and nothing else. All that might be said is that it is an invented Roman character word and not obviously a Chinese language (or pinyin) word of any recognizable kind. Further, it is not obvious to the Panel how the letters, “igbt”, are descriptive and it is only on further reading of the Complaint under paragraph 4(a)(i) that there is an (unsupported) assertion that the term is commonly used in relation to semiconductors. The Panel has been left to make its own enquiries and has uncovered a reference to “IGBT”: an “insulated-gate bipolar transistor (IGBT) is a three-terminal power semiconductor device primarily used as an electronic switch.” Further, Complainant’s later paragraph 4(a)(i) submissions reference the hyphenation of the trademark and “igbt” in the context of an argument that this accentuates the likelihood of confusion. Complainant might have argued in the present context that such hyphenation was indicative of an understanding of English language construction.
Whilst Complainant has not helped itself, the Panel finds that the circumstances are just sufficient to warrant a finding under Rule 11(a) that the proceedings should be in English.
Moving on, 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 based on 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.[iii]
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.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights.[iv] Since Complainant provides evidence of its USPTO trademark registration the Panel is satisfied that it has rights in the word INFINEON.
The domain name takes the trademark and adds non-distinctive matter in the form of the (as it seems, industry) term “igbt” which is descriptive in the context of the goods sold under the trademark, together with the “.com” gTLD. The Panel agrees with Complainant that the hyphenation only increases the chance of confusion.
The Panel finds the disputed domain name to be confusingly similar to Complainant’s trademark[v] and so finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
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
(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.[vi]
The publicly available WHOIS information for the domain name does not provide any prima facie evidence that Respondent might be commonly known by the disputed domain name. There is no evidence that Respondent has any trademark rights and Complainant states that it has not given Respondent permission to use the trademark for any purpose. The evidence is that the disputed domain name is not in use and so the Panel finds that there has been no bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name.[vii]
The Panel finds that Complainant has made a prima facie case. The onus shifts to Respondent to establish a legitimate interest in the domain name. In the absence of a Response, that prima facie case is not met and so Panel finds that Respondent has no rights or interests and so 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 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.
On the evidence, there is no scope for the application of any of those four scenarios. Nevertheless, the Panel finds, as separate matters, registration in bad faith and use in bad faith. The Panel has already found the disputed domain name to be confusingly similar to the trademark. There has been no use of the domain name. There is no apparent reason for Respondent to register the name in good faith since the trademark appears to only refer to Complainant’s business and has no other shown meaning. In the absence of another explanation, the Panel finds that it is more likely than not that Respondent targeted Complainant trademark and business at the time of registration. The Panel finds registration in bad faith. Further, notwithstanding the lack of evidence of evidence of use of the domain name, the Panel finds bad faith use in terms of the Policy by reason of the principle of “passive holding” as first enunciated in the case of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The Panel finds that the reasoning set out in that case applies with equal force here.
The Panel finds registration and use of the domain name in bad faith and so finds that Complainant has satisfied the third and final element of the Policy.
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-igbt.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: May 1, 2019
[i] The registered trademark includes a graphical element but its addition does not alter the reasoning in this decision. It is noteworthy, too, that Complainant holds later registered word versions of the trademark. The Panel has simply chosen to cite one of the earliest registrations. The Panel also observes, so far as it matters, that Complainant owns PRC State Administration of Industry and Commerce (“SAIC”) Reg. No. G718087, registered July 12, 2009 for the trademark.
[ii] See, for example, The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009); see also (Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006).
[iii] See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum Jul. 31, 2000) holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true; Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”)
[iv] See, for example, State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Forum Jun. 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”)
[v] See, for example, Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Forum Nov. 18, 2005) holding that the addition of both the word “advisors” and the gTLD “.com” did not negate a finding of confusing similarity under Policy ¶ 4(a)(i).
[vi] See, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
[vii] See, for example, George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007).
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