Infineon Technologies AG v. infineon malaysia
Claim Number: FA2104001941034
Complainant is Infineon Technologies AG (“Complainant”), represented by Gary J. Nelson of Lewis Roca Rothgerber Christie LLP, California, USA. Respondent is infineon malaysia (“Respondent”), Singapore.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <infineonmalaysia.com>, registered with GoDaddy.com, LLC.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 9, 2021; the Forum received payment on April 9, 2021.
On April 12, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <infineonmalaysia.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 15, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 5, 2021 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@infineonmalaysia.com. Also on April 15, 2021, 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 May 10, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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.
A. Complainant
Complainant contends as follows:
Formed in 1999, Complainant is engaged in the business of the manufacturing of semiconductors and systems for automotive, industrial, and multimarket sectors, including insulated-gate bipolar transistor modules, and offering services related to these same and related products.
Complainant has rights in the INFINEON mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <infineonmalaysia.com> domain name is confusingly similar to Complainant’s INFINEON mark as it incorporates the Complainant’s INFINEON mark in its entirety, simply adding the geographic term “malaysia” and the generic top-level domain (gTLD) “.com”.
Respondent lacks rights or legitimate interests in the at-issue domain name. Respondent is not commonly known by the at-issue domain name, nor has Respondent been authorized by Complainant to use the INFINEON mark. Respondent has not used the <infineonmalaysia.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent is using the <infineonmalaysia.com> domain name to pass off as Complainant and pursue a competing use.
Respondent registered and uses the <infineonmalaysia.com> domain name in bad faith. Respondent has used the <infineonmalaysia.com> domain name to generate initial interest confusion. Additionally, Complainant is using the <infineonmalaysia.com> domain name to pass off as the Complainant and divert internet traffic for commercial gain. Respondent’s use of the domain name without having any connection to Complainant suggests opportunistic bad faith. Finally, Respondent also registered the domain name with actual knowledge of Complainant’s rights in the INFINEON mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the INFINEON mark.
Respondent is not affiliated with Complainant and has not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the INFINEON trademark.
Respondent’s <infineonmalaysia.com> domain name addresses a website that features Complainant’s name and address on its homepage and that sells products that compete with products offered by 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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of a USPTO trademark registration for the INFINEON mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i). See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark).
The at-issue domain name contains Complainant’s entire INFINEON trademark followed by the geographic term “Malaysia” and concludes with the top level domain name “.com”. The differences between Respondent’s <infineonmalaysia.com> domain name and Complainant’s trademark are insufficient to distinguish one from the other for the purposes of the Policy. Therefore, the Panel finds that pursuant to Policy ¶ 4(a)(i) Respondent’s <infineonmalaysia.com> domain name is confusingly similar to Complainant’s INFINEON trademark. See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); see also, Doosan Corporation v. philippe champain, FA 1636675 (Forum Oct. 13, 2015) (finding that geographic designations or terms descriptive of a complainant’s business operations do not remove a domain name from the realm of confusing similarity.); see also, Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of either of the at‑issue domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration).
WHOIS information for the at-issue domain name identifies its registrant as “infineon malaysia” however the record before the Panel contains no other evidence that tends to prove that Respondent is commonly known by the <infineonmalaysia.com> domain name. Indeed, information on the <infineonmalaysia.com> website suggests Respondent is actually known as “Papa Yaya.” The Panel therefore concludes that Respondent is not commonly known by the at-issue domain name for the purposes of Policy ¶ 4(c)(ii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding that, although the respondent listed itself as “Jessie McKoy / Ripple Reserve Fund” in the WHOIS contact information, it did not provide any affirmative evidence to support this identity; combined with the fact that the complainant claimed it did not authorize the respondent to use the mark, the respondent is not commonly known by the domain name).
Respondent’s <infineonmalaysia.com> domain name addresses a website that displays Complainant’s name and address and offers products that compete with products offered by Complainant. Using the confusingly similar domain name to pass itself off as Complainant so that it may inappropriately benefit from the unauthorized use of Complainant trademark shows neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Crow v. LOVEARTH.net, FA 203208 (Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”); see also, General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
The at-issue domain name was registered and used in bad faith. As discussed below without limitation, circumstances are present from which the Panel may conclude that Respondent acted in bad faith regarding the <infineonmalaysia.com> domain name pursuant to Policy ¶ 4(a)(iii).
As mentioned above concerning rights and legitimate interests, Respondent uses the <infineonmalaysia.com> domain name to pass itself off as Complainant and to address a website designed to exploit the <infineonmalaysia.com> domain name’s trademark value in furtherance of selling products that compete with those offered by Complainant. Doing so is disruptive to Complainant’s business and also shows that Respondent is attempting to use Complainant’s trademark to attract internet users to its commercial website. Respondent’s use of the domain name in this manner evidences that Respondent has acted in bad faith under Policy ¶¶ 4(b)(iii) and (iv); see also, Yahoo! Inc. v. Web Master, FA 127717 (Forum Nov. 27, 2002) (“By use of <yahgo.com> to operate its search engine, a name that infringes upon Complainant’s mark, Respondent is found to have created circumstances indicating that Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website as proscribed in Policy ¶ 4(b)(iv).”). As argued by Complainant, Respondent’s use of the confusingly similar domain name also indicates opportunist bad faith. See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the ICQ mark is so obviously connected with the complainant and its products that the use of the domain names by the respondent, who has no connection with the complainant, suggests opportunistic bad faith).
Moreover, Respondent had actual knowledge of Complainant’s rights in the INFINEON mark when it registered <infineonmalaysia.com>. Respondent’s actual knowledge is evident from the notoriety of Complainant’s INFINEON trademark, from the fact that Respondent displays Complainant’s name and address on the <infineonmalaysia.com> website, and from Respondent’s use of the domain name to offer products that compete with products offered by Complainant. Registering and using the confusingly similar <infineonmalaysia.com> domain with knowledge of Complainant’s rights in such domain name demonstrates Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <infineonmalaysia.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: May 11, 2021
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