Vertu Corporation Limited v. wenqiang xie
Claim Number: FA1511001648993
Complainant is Vertu Corporation Limited (“Complainant”), represented by Harpeet Dhaliwal of Stobbs, United Kingdom. Respondent is Wenqiang Xie (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <verturen.com>, registered with Hichina Zhicheng Technology Limited.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 20, 2015; the Forum received payment on November 20, 2015.
On November 23, 2015, Hichina Zhicheng Technology Limited confirmed by e-mail to the Forum that the <verturen.com> domain name is registered with Hichina Zhicheng Technology Limited and that Respondent is the current registrant of the name. Hichina Zhicheng Technology Limited has verified that Respondent is bound by the Hichina Zhicheng Technology Limited 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 30, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 21, 2015 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@verturen.com. Also on November 30, 2015, 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 December 28, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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 uses the VERTU mark in connection with the cellular phone industry. Complainant holds numerous valid and subsisting trademark registrations for the mark. Complainant holds trademark Registry Number 3,634,145 with the United States Patent and Trademark Office (“USPTO”) for the VERTU mark (registered June 9, 2009), which demonstrates rights in the mark. Respondent’s <verturen.com> domain name is confusingly similar to the VERTU mark as it merely appends the letters “ren” and the generic top-level domain “.com” to a fully incorporated VERTU mark.
Respondent has no rights or legitimate interests in the <verturen.com> domain name. Respondent is not commonly known by the <verturen.com> domain name. Further, Respondent has endeavored to sell counterfeit versions of Complainant’s goods on its website, which demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use.
Respondent has registered and used the disputed domain name in bad faith. Respondent’s offer of counterfeit goods through its <verturen.com> domain name evinces bad faith disruption, as well as attraction for commercial gain as per the language of both Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv). Last, Respondent registered and used the disputed domain name with actual knowledge of the VERTU mark and Complainant’s rights in the mark under Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Vertu Corporation Limited of Hampshire, United Kingdom. Complainant is the owner of numerous domestic and international registrations for the mark VERTU and related marks which it has continuously used since at least as early as 2002 in connection with its provision of goods and services in the luxury mobile phone business.
Respondent is Wenqiang Xie of China. Respondent’s registrar is noted as Hichina Zhicheng technology, Ltd., of Shenzhen, China. The Panel notes that the <verturen.com> domain name was registered on or about October 10, 2015.
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(e), 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. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 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); see also 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.”).
Panel Note: Supported Language Request
The Panel notes that Complainant requests that the language of this administrative matter proceed in the English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the Chinese language Registration Agreement. 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 evince a familiarity with the English language, filing of a trademark registration with an entity which evinces an understanding of the English language, and any evidence (or lack thereof) evincing Respondent’s understanding of the Chinese language included in the Registration Agreement. 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). Prior Panels have also weighed the relative time and expense in enforcing a Chinese language agreement, which might 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.”).
Here, Complainant cites to email correspondence purportedly demonstrating Respondent’s competency in understanding the English language. Complainant also argues that Respondent’s domain name resolves to a website which makes extensive use of the English language, and that Respondent maintains other domains which operate in English. The Panel here finds, pursuant to UDRP Rule 11(a), that persuasive evidence has been asserted by Complainant to support the conclusion that the Respondent is conversant and proficient in the English language. The Panel here holds that the proceeding will go forward in English.
Complainant uses the VERTU mark in connection with the cellular phone industry. Complainant alleges it holds numerous valid and subsisting trademark registrations for the mark. Complainant is the owner of trademark Registry Number 3,634,145 with the USPTO for the VERTU mark (registered June 9, 2009), and argues that such demonstrates rights in the mark under Policy ¶ 4(a)(i). Prior panels have found that where a valid USPTO registration exists, Policy ¶ 4(a)(i) rights in a corresponding mark flow therefrom. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”). The Panel here finds that Complainant has demonstrated rights in the VERTU mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent incorporates the VERTU mark fully in the disputed domain name. The Panel notes that the disputed domain merely appends the letters “ren” and the generic top-level domain “.com” to a fully incorporated VERTU mark. Past panels have found such additions to a fully incorporated mark fail to overcome a finding of confusing similarity. See Am. Online, Inc. v. Amigos On Line RJ, FA 115041 (Nat. Arb. Forum Aug. 28, 2002) (finding that the <aolrj.com> domain name was confusingly similar to the complainant’s AOL mark because “…the addition of a string of indiscriminate letters to a famous mark in a second level domain does not differentiate the domain name from the mark.”); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). The Panel here finds that the <verturen.com> domain name is confusingly similar to the VERTU mark under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that 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), 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 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). The Complainant has met this burden.
Complainant asserts that Respondent has no rights or legitimate interests in the <verturen.com> domain name. Complainant asserts that Respondent is not commonly known by the disputed domain name, nor is Respondent affiliated with Complainant in any way. WHOIS information associated with the domain identifies Respondent as “Wenqiang Xie,” which does not resemble the disputed domain name. Prior panels have found a respondent to not be commonly known by a disputed domain name based on WHOIS information and a lack of authorization from a complainant. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). The Panel here finds that Respondent has not been commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Complainant argues that Respondent has endeavored to sell counterfeit versions of Complainant’s goods on its website, which demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Previous panels have agreed that counterfeit sales support the conclusion that the use is a clear indication of a lack of rights and legitimate interests. See eLuxury.com Inc. v. WangJunJie, FA 1075554 (Nat. Arb. Forum Nov. 30, 2007) (concluding that the sale of counterfeit products is evidence that the respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name). The Panel here finds that Complainant has succeeded under Policy ¶¶ 4(c)(i) and (iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
As the Respondent has not provided a response to this action, the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant argues that Respondent has registered and used the disputed domain name in bad faith. Respondent’s offer of counterfeit goods through its <verturen.com> domain name is argued by Complainant to evince bad faith disruption, as well as attraction for commercial gain as per the language of both Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv). Past panels have found that attempted sales of counterfeit products is an indication of a respondent’s bad faith. See Louis Vuitton Malletier S.A., L.L.C. v. David, FA 1138296 (Nat. Arb. Forum Mar. 5, 2008) (concluding that the complainant’s business is disrupted by the respondent’s registration and use of the disputed domain name for the purpose of selling counterfeit products); see also Affliction, Inc. v. Chinasupply, FA 1223521 (Nat. Arb. Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain by creating confusion as to the complainant’s connection with the website by selling counterfeit products). The Panel here finds that Respondent’s attempted sale of counterfeit products disrupts Complainant’s legitimate business, seeks to profit from Internet user confusion under both Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv), respectively, and thus supports a finding of bad faith registration and use.
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <verturen.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: January 11, 2016
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