Marvell Asia Pte, Ltd. v. wangxingxing / shenzhenshinanhuangdianziyouxiangongsi
Claim Number: FA2305002044099
Complainant is Marvell Asia Pte, Ltd. (“Complainant”), represented by Lisa Greenwald-Swire of Fish & Richardson, P.C., Minnesota, USA. Respondent is wangxingxing / shenzhenshinanhuangdianziyouxiangongsi (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <marvell-ic.com>, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to Forum electronically on May 11, 2023; Forum received payment on May 11, 2023.
On May 12, 2023, Alibaba Cloud Computing (Beijing) Co., Ltd. confirmed by e-mail to Forum that the <marvell-ic.com> domain name is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. and that Respondent is the current registrant of the name. 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 May 15, 2023, Forum served the Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of June 5, 2023 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@marvell-ic.com. Also on May 15, 2023, the Chinese and English language 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, Forum transmitted to the parties a Notification of Respondent Default.
On June 11, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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.
Notwithstanding that the Registration Agreement is written in Chinese, pursuant to UDRP Rule 11(a) the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstances of the present case including Respondent’s failure to respond to Written Notice of the Complaint written in both Chinese and English, the Panel finds that the proceeding should be in English.
A. Complainant
Complainant contends as follows:
Complainant, Marvell Asia Pte, Ltd., manufactures a wide array of computer hardware and software including semiconductor, integrated circuit, and related technologies.
Complainant asserts rights to the MARVELL mark based upon registration with the United States Patent and Trademark Office (“USPTO”) and other trademark offices worldwide.
Respondent’s <marvell-ic.com> domain name is confusingly similar to Complainant’s mark as it contains the MARVELL mark in its entirety, merely adding the abbreviation “ic” and the generic top-level domain “.com” to form the at-issue domain name.
Respondent does not have rights or legitimate interests in the <marvell-ic.com> domain name. Respondent is not licensed or authorized to use Complainant’s MARVELL mark and is not commonly known by the at-issue domain name. Respondent does not use the at-issue domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain name to offer counterfeit MARVELL products for sale.
Respondent registered and uses the <marvell-ic.com> domain name in bad faith. Respondent has shown a pattern of bad faith registration and use through adverse prior UDRP decisions. Additionally, Respondent registered and uses the at-issue domain name to pass off as Complainant. Finally, Respondent registered and uses the domain name with constructive and/or actual knowledge of Complainant’s rights in the MARVELL mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the MARVELL mark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the MARVELL trademark.
Respondent uses the at-issue domain name to impersonate an authorized distributor of Complainant’s products and address a website offering counterfeit or unauthorized MARVELL products for sale.
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 mark in which Complainant has rights.
Complainant demonstrates rights in the MARVELL mark from its registration of such mark with the USPTO as well as with other trademark agencies worldwide. See Bloomberg Finance L.P. v. Jimmy Yau, FA 1764034 (Forum Jan. 25, 2018) (“The Panel finds that complainant has rights in BLOOMBERG mark under Policy ¶ 4(a)(i) based upon its registration with multiple trademark agencies, including the USPTO.”).
Respondent’s <marvell-ic.com> domain name is confusingly similar to Complainant’s MARVELL mark. The domain name consists of Complainant’s entire trademark followed by a hyphen and the term “ic” (a common abbreviation for “integrated circuits” that is also suggestive of Complainant’s business), with all followed by the “.com” top-level domain name. The differences between the <marvell-ic.com> domain name and Complainant’s MARVELL trademark are insufficient to distinguish the domain name from Complainant’s mark for the purposes of the Policy. Therefore, the Panel finds pursuant to Policy ¶ 4(a)(i) that Respondent’s <marvell-ic.com> domain name is confusingly similar to MARVELL. See Thomson Reuters Global Resources v. Richard Marsh / intach / Steven Szybillo / intach / Michael Wilczynski / intach / Gary Clarke / intach / James Saunders / intach / Paul Randolph/ intach / John Geisler / intach, FA 1516146 (Forum Oct. 2, 2013) (finding that the disputed domain names fully incorporate Complainant’s THOMSON REUTERS mark while merely adding the term “scie,” “ahci,” “sci,” or “ssci” and held that such abbreviations constituted confusing similarity under Policy ¶ 4(a)(i).).
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, absent evidence of Policy ¶ 4(c) circumstances 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 the at-issue domain name. See Charter Communications Holding Company, LLC v. Taha Shaikh / Tskdesigners, FA 1814475 (Forum Nov. 25, 2018) (finding no rights or legitimate interests in <spectrumfeature.com> because complainant never gave respondent permission to use the mark in any manner and “Panels may use these assertions as evidence that no rights or legitimate interests exist in a disputed domain name.”).
The WHOIS information for <marvell-ic.com> indicates that “wangxingxing/ shenzhenshinanhuangdianziyouxiangongsi” is the domain name’s registrant and there is nothing in the record that tends to prove that Respondent is otherwise known by the <marvell-ic.com> domain name. As such, the Panel finds that Respondent is not commonly known by the at-issue domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent uses the confusingly similar <marvell-ic.com> domain name to address a website adorned with Complainant’s MARVELL trademark that falsely states it is an authorized MARVELL distributer and there offers unauthorized or counterfeit versions of Complainant’s products for sale. Respondent’s use of <marvell-ic.com> in this manner is not indicative of a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor of a non-commercial or fair use under Policy ¶ 4(c)(iii). See Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum Aug. 19, 2015) (finding no bona fide offering of goods or legitimate noncommercial or fair use existed where Respondent used the resolving website to sell products branded with Complainant’s MERRELL mark, and were either counterfeit products or legitimate products of Complainant being resold without authorization).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶ 4(a)(ii) and demonstrates Respondent’s lack of rights and lack of legitimate interests in respect of the at-issue domain name.
Respondent’s <marvell-ic.com> domain name was registered and used in bad faith. As discussed below without being exhaustive, bad faith circumstances are present which lead the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First, Complainant shows that Respondent has suffered multiple adverse UDRP decisions that resulted in Respondent’s subject domain names being transferred away from Respondent. Respondent thus exhibits a pattern of cybersquatting that is indicative of Respondent’s bad faith in the instant case under Policy ¶ 4(b)(ii). See Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA1209001464477 (Forum Nov. 30, 2012) (finding where the record reflected that the respondent had been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)).
Next, Respondent’s at-issue domain name addresses Respondent’s <marvell-ic.com> website. The website pretends to be an authorized distributor for Complainant’s products and thereby deceives internet users into falsely believing that the domain name and its referenced website are sponsored by Complainant. Respondent’s <marvell-ic.com> website promotes and offers unauthorized or counterfeit MARVELL products for sale. Respondent’s use of the confusingly similar domain name is thus disruptive to Complainant’s business and designed to attract internet users so that Respondent may capitalize on the confusion Respondent created between its <marvell-ic.com> domain name and Complainant’s MARVELL trademark. Respondent’s use of the <marvell-ic.com> domain name demonstrates Respondent’s bad faith registration and use of <marvell-ic.com> under Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv). See ZIH Corp. v. ou yang lin q, FA1761403 (Forum Dec. 29, 2017) (Finding bad faith where Respondent used the infringing domain name to disrupt Complainant’s business by diverting Internet users from Complainant’s website to Respondent’s website where it offered competing printer products); see also, Russell & Bromley Limited v. Li Wei Wei, FA 1752021 (Forum Nov. 17, 2017) (finding the respondent registered and used the at-issue domain name in bad faith because it used the name to pass off as the complainant and offered for sale competitive, counterfeit goods); see also Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Moreover, Respondent had actual knowledge of Complainant’s rights in the MARVELL mark when Respondent registered <marvell-ic.com> as a domain name. Respondent’s prior knowledge is evident given the mark’s notoriety; given Respondent’s inclusion of the suggestive abbreviation “ic” in the domain name; and given Respondent’s use of the trademark laden domain name to pass off as an authorized distributor of Complainant and offer unauthorized or counterfeit merchandise for sale. See, AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”); see also, 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 <marvell-ic.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: June 12, 2023
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