Infinite Electronics International, Inc. v. Luo YiMin
Claim Number: FA1908001855980
Complainant is Infinite Electronics International, Inc. (“Complainant”), represented by Gregory S. Bernabeo of FisherBroyles, LLP, Pennsylvania, USA. Respondent is Luo YiMin (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <infinite-electronics.com> and <infinite-electronic.com> (“Domain Names”), 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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 6, 2019; the Forum received payment on August 6, 2019.
On August 7, 2019, Alibaba Cloud Computing (Beijing) Co., Ltd. confirmed by e-mail to the Forum that the <infinite-electronics.com> and <infinite-electronic.com> domain names are registered with Alibaba Cloud Computing (Beijing) Co., Ltd. and that Respondent is the current registrant of the names. 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 August 12, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 3, 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 postmaster@infinite-electronics.com, postmaster@infinite-electronic.com. Also on August 12, 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 September 5, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith 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 Names be transferred from Respondent to Complainant.
A. Complainant
Complainant trades in the field of wired and wireless connectivity products for the electronics and data communication industries. Complainant has acquired common law rights in the INFINITE ELECTRONICS mark as early as 2008. Respondent’s <infinite-electronics.com> and <infinite-electronic.com> domain names are confusingly similar to Complainant’s INFINITE ELECTRONICS mark as the <infinite-electronics.com> domain name contains the mark in its entirety, along with an intervening hyphen and a “.com” generic top-level domain (“gTLD”).
Respondent has no rights and legitimate interests in the <infinite-electronics.com> and <infinite-electronic.com> domain names. Respondent has not acquired rights in the INFINITE ELECTRONICS mark nor is commonly known by the Domain Names. Additionally, Respondent uses the Domain Names to feature competing goods such as antennas and other connectivity products which consumers order, make payment, and never receive. As such, Respondent has defrauded customers into believing they are buying from Complainant when in fact it is Respondent.
Respondent registered and uses the <infinite-electronics.com> and <infinite-electronic.com> domain names in bad faith. Respondent disrupts Complainant’s business by defrauding Complainant’s customers and perpetrates fraud. Respondent attempts to attract, for commercial gain, users to the Domain Names by creating a likelihood of confusion as to source, sponsorship, affiliation or endorsement by Complainant. Finally, Respondent knew or should have known of Complainant’s rights in the INFINITE ELECTRONICS mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the INFINITE ELECTRONICS mark. Each of the Domain Names is confusingly similar to Complainant’s INFINITE ELECTRONICS mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the Domain Names and that Respondent registered and uses each of the Domain Names in bad faith.
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 Language of the Registration Agreement in this case is Chinese. The Complainant, pursuant to UDRP Rule 11(a) has requested that the language of the Proceeding be English.
It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Factors which previous panels have seen as particularly compelling are: WHOIS information which establishes Respondent in a country which would demonstrate familiarity with the English language, filing of a trademark registration with an entity which shows an understanding of the English language, and any evidence (or lack thereof) exhibiting Respondent’s understanding of the language requested by Complainant. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). Further, the Panel may weigh the relative time and expense in enforcing the Chinese language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”) and Zappos.com, Inc. v. Zufu aka Huahaotrade, Case No. D2008-1191 (WIPO October 15, 2008) (holding that proceedings could be conducted in English even though the registration agreement was in Chinese where “the disputed domain resolves to a website [that] is exclusively in English, from which can be reasonably presumed that the Respondent has the ability to communicate in English in order to conduct his business over the website in English”).
In the present case, the Panel decides that the language of the proceeding should be English. Each of the websites to which the Domain Names resolve to (“Respondent’s Websites”) is in the English language and the Domain Names themselves clearly refer and reflect words in the English language. As such, pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence exists to suggest the likely possibility that the Respondent is conversant and proficient in the English language.
As Complainant does not have any registered trade mark rights it is therefore necessary to consider whether Complainant holds common law rights in the INFINITE ELECTRONICS mark as Policy ¶ 4(a)(i) does not require a complainant to hold a registered trademark if it can demonstrate established common law rights in the mark. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017). To establish common law rights in a mark, a complainant generally must prove that the mark has generated a secondary meaning. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”). Complainant (and its predecessors in title) has operated a business under the INFINITE ELECTRONICS mark from the website www.infiniteelectronics.com since 2008 in connection with various goods and/or services in the field of wired and wireless connectivity products for the electronics and data communications industries. The Panel is satisfied from Complainant’s evidence (including evidence of number of customers, employees, third party awards and, use as a company name) that Complainant’s use of the INFINITE ELECTRONICS mark for its electronic component and technical support business is sufficient to establish secondary meaning in that mark and hence Complainant has common law rights in the INFINITE ELECTRONICS mark for the purposes of Policy ¶ 4(a)(i).
The Panel finds that each of the <infinite-electronics.com> and <infinite-electronic.com> Domain Names are confusingly similar to the INFINITE ELECTRONICS mark. The <infinite-electronics.com> domain name fully incorporates the INFINITE ELECTRONICS Mark adding only a hyphen and the gTLD “.com.” The <infinite-electronic.com> domain name is identical to the <infinite-electronics.com> domain name other than the absence of the letter “s”. Such changes are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See Lockheed Martin Corporation v. toyosei maruyama, FA 1620489 (Forum July 7, 2015) (“Simply removing the letter ‘s’ from a mark in the creation of a domain name still creates a confusingly similar domain name.”); see also ADP, LLC. v. Ella Magal, FA 1773958 (Forum Aug. 2, 2017) (“Respondent’s <workforce-now.com> domain name appropriates the dominant portion of Complainant’s ADP WORKFORCE NOW mark and adds a hyphen and the gTLD “.com.” These changes do not sufficiently distinguish the disputed domain name from the ADP WORKFORCE NOW mark.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Names. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names as Respondent is not commonly known by the Domain Names, nor has Complainant authorized Respondent to use the INFINITE ELECTRONICS mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also 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). The WHOIS lists “Luo YiMin” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Names in accordance with Policy ¶ 4(c)(ii).
Each of the Domain Names resolves to a website purporting to offer electronic products in direct competition with Complainant. However Complainant contends, and provides persuasive and uncontested evidence in support, that Respondent uses the Domain Names to conduct a fraudulent enterprise where consumers order products, provide payment details, including credit card details but do not receive such products. Use of a Domain Name to engage in fraudulent behavior is not indicative of any rights or legitimate interests under Policy ¶¶ 4(c)(i) or (iii). See Goodwin Procter LLP v. GAYLE FANDETTI, FA 1738231 (Forum Aug. 8, 2017) (“[T]he Domain Name has been used in an attempted fraud. As such it cannot have been registered for a legitimate purpose.”); see also Juno Online Servs., Inc. v. Nelson, FA 241972 (Forum Mar. 29, 2004) (finding that using a domain name in a fraudulent scheme to deceive Internet users into providing their credit card and personal information is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds on the balance of probabilities that at the time of registration of the Domain Names, April 22, 2019 and July 4, 2018, Respondent had actual knowledge of Complainant’s INFINITE ELECTRONICS since there is no obvious explanation, nor has one been provided, for an entity to register a series of domain names that are direct variants of the words “infinite electronics” and use them for a fraudulent enterprise other than to take advantage of Complainant’s reputation in the INFINITE ELECTRONICS mark, a reputation developed over 11 years of use. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the Domain Names in bad faith to create confusion with Complainant’s INFINITE ELECTRONICS mark for commercial gain by using the confusingly similar Domain Names to resolve to websites that defraud customers. Using a confusingly similar domain name to disrupt a complainant’s business and commercially benefit via a competing and fraudulent enterprise constitutes bad faith registration and use under Policy ¶¶ 4(b)(iii) and/or (iv). See Juno Online Servs., Inc. v. Nelson, FA 241972 (Forum Mar. 29, 2004) (“The domain name <billing-juno.com> was registered and used in bad faith by using the name for fraudulent purposes.”); see also Wells Fargo & Co. v. Maniac State, FA 608239 (Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers).
The Panel finds 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 <infinite-electronics.com> and <infinite-electronic.com> domain names be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: September 7, 2019
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