Infineon Technologies AG v. ANDRE TOULEMONDE
Claim Number: FA1812001819671
Complainant is Infineon Technologies AG (“Complainant”), represented by Gary J. Nelson of Lewis Roca Rothgerber Christie LLP, California, USA. Respondent is ANDRE TOULEMONDE (“Respondent”), France.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <infineontechnologie.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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 5, 2018; the Forum received payment on December 5, 2018.
On December 6, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <infineontechnologie.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 December 10, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 31, 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@infineontechnologie.com. Also on December 10, 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 January 4, 2019, 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.
A. Complainant
Complainant, Infineon Technologies AG, uses the INFINEON trademark in connection with its highly successful global business of manufacturing semiconductors and systems for automotive, industrial, multimarket sectors and offering services related to these same products. Complainant has rights in the INFINEON mark based on registration with the United States Patent and Trademark Office (“USPTO”) dating back to at least 2001. Respondent’s <infineontechnologie.com> domain name, registered on January 10, 2018, is confusingly similar to Complainant’s INFINEON mark, as the domain features Complainant’s entire INFINEON Mark as its dominant portion and merely adds the descriptive term “technologie” and the generic top-level domain (“gTLD”) “.com” to Complainant’s INFINEON mark.
Respondent has no rights or legitimate interests in the <infineontechnologie.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the INFINEON mark in any manner. The disputed domain name resolves to an inactive website that displays a “404 Not Found” message. As such, Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent registered and is using the <infineontechnologie.com> domain name in bad faith. Respondent’s passive holding of a confusingly similar domain name indicates bad faith. 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 claims rights in the INFINEON trademark based upon registration of the mark with the USPTO. The mark is also registered with the European Intellectual Property Office (“EUIPO”). Registration of a mark with a national trademark office is sufficient to establish rights in that mark. 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.”). The Panel therefore holds that Complainant’s registration of the INFINEON mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4a(a)(i).
Complainant next argues that Respondent’s <infineontechnologie.com> domain name is confusingly similar to the INFINEON mark, as the name features Complainant’s entire INFINEON Mark as its dominant portion and merely adds a descriptive term and a gTLD. Addition of a descriptive term and a gTLD to a complainant’s mark is insufficient to overcome a confusingly similar analysis per Policy ¶ 4(a)(i). See YETI Coolers, LLC v. Randall Bearden, FA 16060016880755 (Forum Aug. 10, 2016) (finding that the words “powder coating” in the <yetipowdercoating.com> domain name are “merely explicative and directly refer to some of the services rendered by the Complainant” and, therefore, create an “irrefutable confusing similarity” to complainant’s YETI mark); see also Colin LeMahieu v. NANO DARK, FA 1786065 (Forum June 9, 2018) (finding that the addition of a generic term and the generic top-level domain “.com” insufficient to differentiate the <nanodark.com> domain name from the NANO mark). Respondent added “.com” and the descriptive term “technologie” to Complainant’s mark when registering the disputed domain name. The Panel thus finds that the disputed domain name is confusingly similar to Complainant’s INFINEON mark per 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 has no rights or legitimate interests in the <infineontechnologie.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the INFINEON mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The WHOIS information of record identifies the owner of the <infineontechnologie.com> domain name as “ANDRE TOULEMONDE,” and no information in the record indicates that Respondent is known otherwise or that it was authorized to register a domain name containing Complainant’s mark. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <infineontechnologie.com> domain name.
Complainant further argues that Respondent’s lack of rights and legitimate interests in the <infineontechnologie.com> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods and services or for a legitimate or noncommercial or fair use. Complainant instead contends that the name resolves to an inactive website. Inactive (passive) holding is not a use indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Am. Home Prods. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where the respondent merely passively held the domain name). Complainant provides a screenshot showing that the domain name resolves to a website displaying a 404 Not Found message. The Panel therefore determines that Respondent does not have rights or legitimate interests in the <infineontechnologie.com> domain name as the name is not used 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 <infineontechnologie.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” 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 terms that make up the <infineontechnologie.com> domain name provide a more clear picture of whether the Respondent intended to target the INFINEON mark. The INFINEON mark is a coined term and Complainant’s full name is Infineon Technologies AG. The disputed domain is made up Complainant’s mark plus what may be viewed either as the French language translation of the word “technology” or as a typographical variation of the word “technologies” as it appears in Complainant’s company name. In either case, the likelihood of Respondent creating the disputed domain name without knowledge of Complainant’s mark and company name seems quite small 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 Complainant’s mark and company name when it created the disputed domain name. This supports a finding of bad faith under Policy ¶ 4(a)(iii).
Next, the Panel notes that Complainant is not required to make any Policy ¶ 4(b) assertions, as these arguments are merely illustrative rather than exclusive to show bad faith. See Bloomberg Finance L.P. v. Domain Admin - This Domain is For Sale on GoDaddy.com / Trnames Premium Name Services, FA 1714157 (Forum Mar. 8, 2017) (determining that Policy ¶ 4(b) provisions are mere illustrative of bad faith, and that the respondent’s bad faith may be demonstrated by other allegations of bad faith under the totality of the circumstances). Complainant argues that Respondent’s bad faith is indicated by its passive holding of the <infineontechnologie.com> domain name. As held in many prior UDRP decisions, passive holding of a domain name can indicate bad faith per Policy ¶ 4(a)(iii). See Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000) (“paragraph 4(b) recognizes that inaction (e.g., passive holding) in relation to a domain name registration can, in certain circumstances, constitute a domain name being used in bad faith…. [I]n considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the Administrative Panel must give close attention to all the circumstances of the Respondent’s behaviour.”); Teachers Insurance and Annuity Association of America v. Wreaks Communications Group, D2006-0483 (WIPO June 15, 2006) and Autoshop 2 Di Battaglia Ferruccio C. S.N.C. v. Willamette RF Inc., D2004-0250 (WIPO June 2, 2004) (collecting cases citing Telstra); VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”) The Panel notes that Complainant provides a screenshot of the “404 Not Found” web page to which the disputed domain name resolves. The Panel thus finds that Respondent’s inactive holding of the <infineontechnologie.com> domain name indicates bad faith per 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 <infineontechnologie.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: January 7, 2019
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page