Infineon Technologies AG v. songguangxiu
Claim Number: FA1812001819481
Complainant is Infineon Technologies AG (“Complainant”), represented by Gary J. Nelson of Lewis Roca Rothgerber Christie LLP, California, USA. Respondent is songguangxiu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <xn--w8qy11je0n.com>, registered with 22Net, Inc.; 22net, Inc.
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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 4, 2018; the Forum received payment on December 4, 2018.
On December 4, 2018, 22Net, Inc.; 22net, Inc. confirmed by e-mail to the Forum that the <xn--w8qy11je0n.com> domain name is registered with 22Net, Inc.; 22net, Inc. and that Respondent is the current registrant of the name. 22Net, Inc.; 22net, Inc. has verified that Respondent is bound by the 22Net, Inc.; 22net, Inc. 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 December 5, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 26, 2018 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@xn--w8qy11je0n.com. Also on December 5, 2018, 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 31, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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.
The domain name in dispute, <>, is an internationalized domain name (“IDN”) with the PUNYCODE translation of <xn--w8qy11je0n.com>. An IDN is a domain name that contains characters in a variety of languages such as letters with diacritics, Arabic letters, Chinese characters, and other non-ASCII characters or symbols. In order to display such characters or symbols in a domain name, the characters of the domain name are encoded into a scheme such as PUNYCODE. For Complainant to display the <> domain name properly in the ASCII characters used by the current domain name system, it first had to encode it into the PUNYCODE domain name <xn--w8qy11je0n.com>.
In the past, Panels have found IDNs and their PUNYCODE translations to be equivalent. See Damien Persohn v. Lim, FA 874447 (Forum Feb. 19, 2007) (finding an internationalized domain name, <têtu.com>, and its PUNYCODE translation, <xn--ttu-fma.com>, to be one and the same under the Policy); see also Württembergische Versicherung AG v. Emir Ulu, D2006-0278 (WIPO May 4, 2006) (finding that the <xn--wrttembergische-versicherung-16c.com> should be considered as equivalent to the <württembergische-versicherung.com> domain name, based on previous panel decisions recognizing the relevance of I-nav software for translating German letters such as “ä” or “ü” into codes such as <xn--[name]-16c> and similar); see also Fujitsu Ltd. v. tete and Lianqiu Li, D2006-0885 (WIPO Oct. 12, 2006) (finding the <xn--zqsv0e014e.com> domain name to be an exact reproduction of the complainant’s Chinese trademark in a domain name). This Panel finds that the PUNYCODE translation <xn--w8qy11je0n.com> is functionally the same as the <> domain name for purposes of this proceeding and it will refer to the disputed domain name in both forms in this decision.
A. Complainant
Complainant, Infineon Technologies AG, uses the INFINEON trademark in connection with its business of manufacturing semiconductors, chipcards, and security products. Complainant has rights in the INFINEON mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) and the China Patent & Trademark Office (“CTPO”) dating back to at least 2001 (in the US) and 2008 (in China). Respondent’s <xn--w8qy11je0n.com> ( or <> in Chinese) domain name, registered on March 16, 2015, is confusingly similar to Complainant’s mark as it incorporates the INFINEON mark (in Chinese characters) in its entirety, and adds the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the disputed domain name because Respondent is not commonly known by the domain name and is not authorized or permitted to use Complainant’s mark in any manner. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to host a parking page populated by pay-per-click advertisements, some which link to pages of the Complainant’s competitors.
Respondent registered and uses the disputed domain name in bad faith. Respondent has engaged in a pattern of registering domain names that incorporate the famous trademarks of others. Further, Respondent attempts to attract, for commercial gain, users to the disputed domain name’s website where it hosts pay-per-click advertisements and links to Complainant’s competitors. Finally, Respondent had at least constructive knowledge of Complainant’s rights in the INFINEON mark prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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 the domain name; and
(3) the domain name has been registered or is being used 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 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 (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.”).
Complainant has rights in the INFINEON mark based upon its registration of the mark with the USPTO and the CTPO. Registration with a national trademark office generally establishes a complainant’s rights in a mark for purposes of Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Here, Complainant provides copies of its USPTO and CTPO registrations for the INFINEON mark in both the Latin script and the equivalent phonetic Chinese characters 英飞凌. Therefore, the Panel concludes that Complainant has rights in the INFINEON mark under Policy ¶ 4(a)(i).
Next, Complainant contends that Respondent’s disputed domain name is confusingly similar to Complainant’s mark as it incorporates the INFINEON mark in its entirety, in Chinese characters, and adds the “.com” generic top-level domain (“gTLD”). The addition of a gTLD is typically insufficient to distinguish a disputed domain name from a trademark under Policy ¶ 4(a)(i). See Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”) Further, the translation of a complainant’s mark in an IDN form is insufficient to overcome any confusing similarity. See Fujitsu Ltd. v. tete and Lianqiu Li, D2006-0885 (WIPO Oct. 12, 2006) (finding the <xn--zqsv0e014e.com> domain name to be an exact reproduction of the complainant’s Chinese trademark in a domain name). Therefore, the Panel concludes that the <> domain name is confusingly similar to Complainant’s INFINEON mark under Policy ¶ 4(a)(i).
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). Should it succeed in this effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
Complainant argues that Respondent lacks rights and legitimate interests in the <xn--w8qy11je0n.com> domain name because Respondent is not authorized or permitted to use Complainant’s INFINEON mark and is also not commonly known by the disputed domain name. Where a response is lacking, relevant WHOIS information may be used to identify the respondent per Policy ¶ 4(c)(ii). 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)). Additionally, lack of authorization from a complainant to use its marks may be further evidence that a respondent is not commonly known by a disputed domain name. See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”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 the at-issue domain name.”). Here, the Panel notes that the WHOIS record for the <xn--w8qy11je0n.com> domain name, as submitted into evidence, identifies Respondent as “songguangxiu,” and no information in the record shows that Respondent is known otherwise or was authorized to use Complainant’s INFINEON mark. Accordingly, the Panel concludes that Respondent has not demonstrated any rights or legitimate interests in the <xn--w8qy11je0n.com> domain name under Policy ¶ 4(c)(ii).
Further, Complainant argues that Respondent fails to use the <xn--w8qy11je0n.com> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the disputed domain name to host a parking page populated by pay-per-click advertisements, some which link to pages of the Complainant’s competitors. Use of a disputed domain name to host pay-per-click advertisements, including some that offer links to competitors of complainant’s business, may not be considered a bona fide offering or a legitimate use under Policy ¶¶ 4(c)(i) or (iii). See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (”Respondent’s use of <edcorlando.xyz> also does not qualify as a bona fide offering… the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.”); 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).”). Complainant provides screenshots of the resolving webpages associated with the disputed domain name, which shows various advertisements that contain links to a variety of companies, some of which compete with the Complainant. As such pay-per-click advertisements are monetized and yield commercial gain for domain registrants and/or the companies to which such ads link, the Panel concludes that Respondent fails to use the <xn--w8qy11je0n.com> domain in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant argues that Respondent had at least constructive knowledge of Complainant’s rights in the INFINEON mark prior to registering the <xn--w8qy11je0n.com> domain name. While constructive knowledge has, in most instances, been deemed insufficient to establish bad faith under Policy ¶ 4(a)(iii), actual knowledge may be inferred from the fame of a mark and/or the Respondent’s use of a disputed domain name. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Here, Complainant submits into evidence an exhibit titled “Background Information on Complainant” and which appears to be a brochure or similar document prepared by the Complainant to promote its goods and services. While helpful to understanding Complainant’s business, this evidence does not speak to the question of whether the INFINEON mark is well-known or what reputation it has with Complainant’s customers or the broader public. However, the use to which Respondent puts the <xn--w8qy11je0n.com> domain name is more clear from the record of this case. As noted, the pay-per-click links at the domain’s website directly relate to the Complainant and its field of business thus indicating that Respondent intended to target the INFINEON mark. Further, the INFINEON mark is a coined term and so, in the absence of a response or other submission by the Respondent, it is reasonable for the Panel to conclude that Respondent had actual knowledge of, and copied this mark when it created the disputed domain name thereby supporting a finding of bad faith under Policy ¶ 4(a)(iii).
Complainant further argues that Respondent registered and uses the <xn--w8qy11je0n.com> domain name in bad faith because Respondent has engaged in a pattern of registering domain names incorporating the well-known trademarks of others. A pattern of such registrations can also be evidence of bad faith in a current case per Policy ¶ 4(b)(ii). See Sanlam Life Insurance Limited v. Syed Hussain / Domain Management MIC, FA 1787219 (Forum June 15, 2018) (finding bad faith per Policy ¶ 4(b)(ii) where the complainant provided evidence the respondent owned various domain names infringing on famous third-party marks; and also that the respondent had been ordered to transfer domain names in previous UDRP decisions). Complainant provides a copy of a Reverse Whois Lookup report for Respondent which lists over eighty-seven domain names, a significant number of which copy other trademarks (e.g., bakeгhughes.com.cп, bапагерubiс.сс, bагсlауsсогрогаtе.сп, masteгcaгdlabs.cп, liпdtliпdoг.cп,
mycaгmex.com.cп, optum.com.cп, гockstaгgames.cп, aгmaпiexchaпge.cc, bloomiпgdales.cc, budweiseг.cc, chгistiaпloubotiп.cc, апd gaгmin.cc). Furthermore, the Respondent has been the subject of at least four prior UDRP decisions which ordered the transfer of the at-issue domain names and the Panel in one of these cases concluded that “Respondent has engaged in a pattern of such conduct, as envisaged in paragraph 4(b)(ii) of the Policy.” Amundi S.A. v. Songguangxiu, DCC2018-0001 (WIPO May 7, 2018). Therefore, the Panel concludes that Respondent has engaged in a pattern of conduct which has prevented the Complainant from reflecting its mark in a Chinese language domain name and has thus registered and used the <xn--w8qy11je0n.com> domain name in bad faith under Policy ¶ 4(b)(ii).
Finally, Complainant argues that Respondent registered and uses the <xn--w8qy11je0n.com> domain name in bad faith because Respondent attempts to attract, for commercial gain, users to the disputed domain name’s website where it hosts pay-per-click advertisements and links to Complainant’s competitors. Use of a domain that is confusingly similar to a complainant’s trademark for the purposes of attracting, for commercial gain, users to a website that hosts pay-per-click links can be evidence of bad faith per Policy ¶ 4(b)(iv). See American Council on Education and GED Testing Service LLC v. Anthony Williams, FA 1760954 (Forum Jan. 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iv)”); see also 3M Company v. Nguyen Hoang Son / Bussiness and Marketing, FA 1575815 (Forum Sept. 18, 2014) (finding that the respondent’s use of the disputed domain name to host sponsored advertisements for Amazon, through which the respondent presumably profited, indicated that the respondent had used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv)). Here, the Complainant provides screenshots of the resolving webpage associated with the disputed domain name which show various advertisements that contain links to various companies, some of which compete with the Complainant. Prior Panels have held that, as the owner of a disputed domain, a respondent is entirely and solely responsible for the content of its resolving website. See Transamerica Corporation v. Domain Administrator / Sandesa, Inc., FA 1704763 (Forum Jan. 4, 2017) (Respondent is responsible for the use made of the domain name. Knowingly registering a domain containing another’s mark and parking it without limiting the ability of the parking service to improperly use it is sufficient evidence of bad faith registration and use.”); Disney Enterprises, Inc. v. ll, FA 1336979 (Forum Aug. 31, 2010) (Respondent acted in bad faith, despite its claimed lack of control over the content on its parked, pay-per-click website). Therefore, the Panel concludes that Respondent registered and uses the <xn--w8qy11je0n.com> domain name in bad faith under Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <xn--w8qy11je0n.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: January 3, 2019
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