Complainant is Micronel AG of Tagelswangen, Switzerland represented by Schneider Feldmann AG, Switzerland.
Formal respondents are Leafty, A. of California, United States of America, yangbaozhu of Tianjin, China (the “Formal Respondents”) and factual respondent is Micronel U.S. LLC of Carlsbad, United States (the “Factual Respondent”). . 2. The Domain Names and Registrars
The disputed domain name is registered with HiChina Zhicheng Technology Ltd (the “First Registrar”).
The disputed domain name is registered with Network Solutions, LLC (the “Second Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 25, 2012. On May 31, 2012, the Center transmitted by email to HiChina Zhicheng Technology Ltd. a request for registrar verification in connection with the disputed domain names. On June 1, 2012, HiChina Zhicheng Technology Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On May 29, 2012, the Center transmitted by email to Network Solutions, LLC. a request for registrar verification in connection with the disputed domain names. On May 29, 2012 Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center sent an email communication to Complainant on June 4, 2012 providing the registrant’s contact information disclosed by the Second Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on June 7, 2012.
On June 4, 2012, the Center transmitted an email to the Parties in both the Chinese and English language regarding the language of the proceeding. On June 7, 2012, Complainant confirmed its request that English be the language of the proceeding. On June 9, 2012, Formal Respondent yangbaozhu requested for Chinese to be the language of proceeding.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Formal Respondents of the Complaint, and the proceedings commenced on June 11, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 1, 2012. An informal Response was filed with the Center on June 9, 2012.
On August 22, 2012, the Panel issued Administrative Procedural Order No. 1 requesting Complainant to clarify whether it was requesting these proceedings to be brought against two formally named respondents (A. Leafty and yangbaozhu, being the registrar-confirmed registrants of record for the two disputed domain names and respectively) and one alleged factual respondent (Micronel U.S. LLC) be consolidated pursuant to the relevant principles articulated in paragraph 4.16 of the WIPO Overview, and to briefly outline the basis of any such request. Complainant submitted its response to the Administrative Procedural Order No. 1 on August 27, 2012.
The Center notified the Complaint to Micronel U.S. LLC by email on August 29, 2012. No Response was received by the due date of September 18, 2012. As such, the Center informed the Parties of the default on September 20, 2012.
The Center appointed Yijun Tian as the sole panelist in this matter on July 12, 2012. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background A. Complainant
Complainant, Micronel AG, is a company incorporated in Tagelswangen, Switzerland. Complainant has registered 73 national, Community and International trademarks reflecting the term MICRONEL (since 1979; see Annex 5a-5l to the Complaint). Complainant is also the holder of the domain names identical to or comprising the mark MICRONEL, such as (since 1997; see Annex 7 to the Complaint) and (Annex 8 to the Complaint). B. Formal Respondents and Factual Respondent
Formal Respondent Leafty, A. of California, United States registered the disputed domain name since November 28, 2008, and Formal Respondent yangbaozhu of Tianjin, China registered the disputed domain name since July 29, 2010.
As further discussed below in 6.2. Multiple Respondents and Consolidation, the Panel accepts the consolidation argument put forth by Complainant and also considers Micronel U.S. LLC a Factual Respondent in these proceedings. 5. Parties’ Contentions A. Complainant
(a) The disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights.
- The disputed domain names are virtually identical to the trademarks belonging to Complainant.
- The goods registered in class 07, 09-11, e.g. the goods of the MICRONEL trademark in the US, serial number 73230992, are same products offered by Micronel U.S. LLC on its website ().
- All trademarks cited are registered for those or similar goods.
- The disputed domain name is used for exactly the goods that are covered by Complainant’s trademarks (Annexes 5a-5l to the Complaint).
(b) Respondents (neither the factual nor the formal respondents) has/have rights or legitimate interests in respect of the disputed domain names.
- Factual Respondent (S. William Linko of Micronel U.S. LLC) has been for more than 30 years Complainant’s distribution partner in the US. Without Complainant’s authorization, he created Micronel U.S. LLC in 2007 (Annex 15 to the Complaint) and registered the disputed domain names in 2008 (Annexes 3-4 to the Complaint), using as core element of these domain names Complainant’s protected trademark.
- Such illoyal conduct and sales figures below expectations over a long period resulted in Complainant giving notice to the Distribution Agreement (Annex 9 to the Complaint).
- Complainant claimed back both domain names in dispute (Annex 9 to the Complaint), however without success. Factual Respondent refused to surrender the disputed domain names (Annex 10 to the Complaint).
- It is not clear why Factual Respondent does not accept to transfer the disputed domain names.
- Complainant believed that Factual Respondent is not anymore in business or simply hiding such agreement and in fact obstructing the surrender of the disputed domain names. (Annexes 12-13 to the Complaint).
- Factual Respondent no longer operates the website of Micronel U.S. LLC . This domain name is registered to Leafty, A. of California, United States.
- The cooperation between the Complainant and the Factual Respondent ended per December 31, 2011 (Annex 9 to the Complaint).
- Complainant never approved Factual Respondent’s creation of a company using as core element the protected name MICRONEL nor did it approve the registrations of the disputed domain names.
(c) The disputed domain names were registered and are being used in bad faith.
- As a consequence of his registration of the US firm Micronel U.S. LLC, Factual Respondent has registered the disputed domain name in bad faith.
- Complainant is the manufacturer of the products and as such is deemed to be the owner of a trademark vis-à-vis of an agent/licensee/distributor (legal situation in many countries), such as Switzerland, the EU as well as in the US.
- The cooperation between Complainant and Factual Respondent began in 1976. In 2007, a cooperation agreement between both parties was signed, replacing earlier agreements (Annex 14 to the Complaint). In the meantime Factual Respondent created a new company named “Micronel U.S. LLC” which is still active (Annex 15 to the Complaint), arguing that he needed to form a separate company for the Micronel business.
- Complainant has not approved such use of its protected name MICRONEL.
- By using MICRONEL in the name of his new company in 2007 and his domain names in 2008, Factual Respondent was attempting to build up good will in the Micronel US name.
- The cooperation between Complainant and Factual Respondent ended on December 31, 2011 (Annexes 9 and 17 to the Complaint).
- Factual Respondent’s use of the disputed domain names is likely to cause confusion as to source of the goods being sold on the website.
- The trademark search report shows that all MICRONEL trademarks are owned by Complainant from as early as 1976. Further, Complainant is the manufacturer of MICRONEL products and as such is deemed to be the owner of a trademark vis-à-vis of any agent or licensee or distributor, thus also for Factual Respondent. (Annexes 5-6 to the Complaint). B. Respondent
Factual Respondents did not formally reply to Complainant’s contentions. Formal Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the Proceeding
Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. According to information from the concerned registrar, the language of the Registration Agreement for the disputed domain name is Chinese. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Formal Respondents and Complainant and Factual Respondent to the effect that the language of the proceeding should be English. However, Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following reasons:
(a) Factual Respondent is an US-firm, customers of it had the intention to have their products assembled in China. Registrant of is yangbaozhu, Registrant’s email: domain@ . There is also an administrative, technical and billing email address: syfwei@ (see Complaint page 12).
(b) Complainant is aware that Factual Respondent was or is in close relationship with J.R. Schenk who was or is working very closely in connexion with Micronel U.S. LLC of which Factual Respondent is or was the managing director (see Annex A(1) to the Complaint).
(c) Complainant was aware that Factual Respondent has or had business (?) to do with M.U.S. - standing for Micronel U.S. – International Co. Ltd, and therefore with J.R. Schenk.
(d) It seems that was realized upon request of US customers who had their products assembled in China and wanted a Chinese translation of the Micronel US website (see Annexe A(2) and (3) to the Complaint).
(e) On a trip to China in order to negotiate joint venture and research for suppliers, a picture (see Annexe B to the Complaint) was produced on which appear five persons of which four are named on a welcome poster: these names are Bill Linko, J.R. Schenk, Simon F Wei and Xin Song.
(f) Looking at the specification of the registrant for (see page 7 of Complaint), one can easily discover that behind of the email address syfwei@ stands the name of Simon F Wei, who must be registrant’s technical and administrative support person and also know Factual Respondent as apparently they met previously with the aim to do business together.
(g) Thus, even if the Registration Agreement for the disputed domain name was written in Chinese, it is evident, that registrant or at least the person for technical and administrative support named Simon F Wei and is supposed to be “syfwei” understands English.
(h) The whole correspondence before the conclusion of the Registration Agreement for the registration of the disputed domain name in question is supposed to have been conducted in English.
(i) These circumstances considering, the choice of English as the language of the present proceeding may be fair to both parties and may not be prejudicial to either one of the parties in his or her ability to articulate the arguments for this case.
Formal Respondent, Leafty, A. of California, US, (who registered the disputed domain name ) did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.
Formal Respondent, yangbaozhu of Tianjin, China, (who registered the disputed domain name ) did not make any submission either. However, the registrant’s technical and administrative support person replied and did object to the use of English as the language of proceeding for following reasons:
(a) The language of proceeding must be same with that of Registration Agreement. The disputed domain name was registered in China, and Formal Respondent yangbaozhu is in China. Thus, the language of proceeding should be Chinese;
(b) English is an international business language. Formal Respondent yangbaozhu understands some English, but this does not mean Formal Respondent yangbaozhu is able to completely understand and resolve the dispute without difficulty by using English;
(c) The disputed domain name has been abandoned for a long time, and Formal Respondent yangbaozhu does not have an interest in keeping the disputed domain name. The expiration date of the disputed domain name is July 27, 2012. After the expiration, Formal Respondent yangbaozhu will not pay the renewal fee, and will not be a registrant of the disputed domain name any more.
(d) If necessary, Formal Respondent yangbaozhu agrees to give the ownership of the disputed domain name to WIPO to deal with.
(e) Formal Respondent yangbaozhu does not have any relationship with any of the concerned individuals or entities relating to the disputed domain name .
Paragraph 11(a) allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593). The language finally decided by the panel for the proceeding should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case. (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004).
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (the “WIPO Overview 2.0.”) further states: “ in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and Complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement”. (WIPO Overview 2.0, paragraph 4.3; see also L’Oreal S.A. v. MUNHYUNJA,WIPO Case No. D2003-0585).
The Panel has taken into consideration the facts that Complainant is a company incorporated in Switzerland, and Complainant will be spared the burden of dealing with Chinese as the language of the proceeding. The Panel has also taken into consideration the fact that the disputed domain names include Latin words (such as “micronel”) and English word abbreviation (such as “cn” and “us”). (Expoconsult B.V. trading as CMP Information v. Roc Guan, WIPO Case No. D2008-1600; Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047).
On the record, Formal Respondent Leafty, A. (registrant of the disputed domain name appears to be a US based individual, and has sufficient knowledge of English. Formal Respondent yangbaozhu (registrant of the disputed domain name appears to be China based individual who may or may not be a Chinese speaker (Annex 1 to the Complaint). The Panel finds evidence in the present proceeding to suggest that both Formal Respondents have sufficient knowledge of English. In particular, the Panel notes that (a) the disputed domain names have been registered in English, rather than Chinese script; (b) the website at the disputed domain name is an English-based website and Respondent is apparently doing business in English through this website (Annex 2 to the Complaint); (c) the website at the disputed domain name appears to have been directed to users in English-speaking countries, particularly the US rather than Chinese speakers; (d) the website at the disputed domain name appears to have been abandoned (based on the information provided by the Center); and based on the email communication with Formal Respondent yangbaozhu’s technical and administrative support person , Formal Respondent yangbaozhu of the disputed domain name understands certain English and has indicated that they will give up the ownership of the disputed domain name ; (f) the Center has notified Formal Respondents of the proceedings in both Chinese and English, and Formal Respondents have indicated no objection to Complainant’s request that English be the language of the proceeding; (g) the Center informed Formal Respondents that they would accept a response in either English or Chinese.
Further, given that the Factual Respondent Micronel U.S. LLC appears to be a US based corporation and no objection was received by Micronel U.S. LLC with respect to the language of proceeding, the Panel accepts that the Factual Respondent also has a sufficient knowledge of English.
Considering these circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under paragraph 11(a) that English shall be the language of the proceeding, and the decision will be rendered in English. 6.2. Multiple Respondents and Consolidation
The Panel is further satisfied that, in the circumstances of the present dispute, the case is one that is suitable for consolidation and resolution in a single UDRP proceeding. See further the discussion of applicable principles and jurisprudence in paragraph 4.16 of the WIPO Overview 2.0.
Accordingly, the Panel accepts the Complainant’s assertion to include Micronel U.S. LLC as a Factual Respondent in these proceedings. Consequently, the Panel will address the two Formal Respondents and the one Factual Respondent as “Respondents” for purposes of the discussion below. 6.3. Discussion and Findings
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain names should be cancelled or transferred:
(i) the disputed domain names registered by Respondents are identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondents have no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows: A. Identical or Confusingly Similar
Complainant, Micronel AG, is a company incorporated in Tagelswangen, Switzerland. The Panel finds that Complainant has rights in the MICRONEL trademark (the “MICORNEL Mark”) acquired through registration. Complainant has registered 73 national, Community and International trademarks reflecting the term MICRONEL (since 1979; see Annex 5a-5l to the Complaint), including in the US and in China.
The disputed domain name comprises the MICRONEL Mark in its entirety. The disputed domain name only differs from Complainant’s trademark by the additions of “-” and the final word “us” to the mark MICRONEL. This does not eliminate the identity or at least the similarity between Complainant’s registered trademark and the disputed domain name .
The disputed domain name comprises the MICRONEL Mark in its entirety. The disputed domain name only differs from Complainant’s trademark by the additions of “-” and the final word “cn” to the mark MICRONEL. This does not eliminate the identity or at least the similarity between Complainant’s registered trademark and the disputed domain name .
Previous UDRP panels have consistently held that a domain name is identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662).
Generally a respondent “may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it”. (The Argento Wine Company Limited v. Argento Beijing Trading Company,WIPO Case No. D2009-0610; General Electric Company v. CPIC NET and Hussain Syed,WIPO Case No. D2001-0087; PCCW-HKT DataCom Services Limited v. Yingke, ADNDRC Case No. HK0500065).
With regards to the disputed domain name , mere additions of “-” and the descriptive term “us” as a suffix to Complainant’s mark fails to distinguish. By contrast, it may increase the likelihood of confusion. “us” is a common abbreviation of the United States. Consumers who visit are likely to be confused and may falsely believe that is operated by Complainant for selling MICRONEL-branded products in the US. It is same with the disputed domain name . Mere additions of “-” and the descriptive term “cn” as a suffix to Complainant’s mark fails to distinguish. By contrast, it may increase the likelihood of confusion. “cn” is a common abbreviation of the P.R. China. Consumers who visit are likely to be confused and may falsely believe that is operated by Complainant for selling MICRONEL-branded products in China. (see ABB Asea Brown Boveri Ltd. v. A.B.B Transmission Engineering Co., Ltd.,WIPO Case No. D2007-1466; Kabushiki Kaisha Toshiba dba Toshiba Corporation v. WUFACAI,WIPO Case No. D2006-0768; see also Jurlique International Pty Ltd v. Domains by Proxy, Inc. / troy ho,WIPO Case No. D2011-1237).
Thus, the Panel finds that the additions are not sufficient to negate the confusing similarity between the disputed domain names and the MICRONEL Marks.
The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondents have rights or legitimate interests in the disputed domain names:
(i) use of, or preparations to use, the disputed domain name in connection with a bona fide offering of goods or services;
(ii) the fact that Respondents have commonly been known by the disputed domain name; or
(iii) legitimate noncommercial or fair use of the disputed domain name.
The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai,WIPO Case No. D2008-0441; WIPO Overview 2.0, paragraph 2.1 and cases cited therein).
Complainant has registered 73 national, Community and International trademarks reflecting the term MICRONEL (since 1979; see Annex 5a-5l to the Complaint), including the USA and China, which long precedes Respondents’ registrations of the disputed domain name (November 28, 2008), and the disputed domain name (July 29, 2010).
Moreover, although Factual Respondent (S. William Linko) has been for more than 30 years Complainant’s distribution partner in the US, without Complainant’s authorization, he created Micronel U.S. LLC in 2007 (Annex 15 to the Complaint) and registered the disputed domain names in 2008 (Annexes 3-4 to the Complaint), using as the core element of these domain names Complainant’s protected trademark. The cooperation between Complainant and Respondent apparently ended on or around December 31, 2011 (Annexes 9 and 17 to the Complaint). In other words, Respondent is not an authorized dealer of MICRONEL branded products any more (since December 31, 2011). Based on the information provided by Complainant, Complainant has in any event never authorized Respondents to register domain names containing MICRONEL trademarks. This Panel subscribes to the view, as reflected under paragraph 2.3 of the WIPO Overview 2.0 and prior decisions cited therein (under the subheading “Furthermore” on this point), that without express authority of the relevant trademark holder, a right to resell or distribute that trademark holder’s products does not of itself create a right to use a domain name that is identical, confusingly similar or otherwise wholly incorporates the relevant trademark.
Accordingly, in this Panel’s assessment, Complainant has therefore established a prima facie case that Respondents have rights or legitimate interests in the disputed domain names and thereby shifted the burden to Respondents to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
Based on the following reasons the Panel finds that Respondents have no rights or legitimate interests in the disputed domain names:
(a) There has been no evidence adduced to show that Respondents are using the disputed domain names in connection with a bona fide offering of goods or services. Respondents have not provided evidence of a legitimate use of the disputed domain names or reasons to justify the choice of the word “Micronel” in their business operation. There has been no evidence to show that Complainant has licensed or otherwise permitted Respondents to use the MICRONEL Mark or to apply for or use any domain names incorporating the MICRONEL Mark;
(b) There has been no evidence adduced to show that Respondents have been commonly known by the disputed domain names. There has been no evidence adduced to show that Respondents have any registered trademark rights with respect to the disputed domain names. Factual Respondent registered the disputed domain name on November 28, 2008, and the disputed domain name on July 29, 2010 respectively, long after the MICRONEL Mark became internationally famous. The disputed domain names are identical or confusingly similar to Complainant’s MICRONEL Mark.
(c) There has been no evidence adduced to show that Respondents are making a legitimate noncommercial or fair use of the disputed domain names.
The Panel finds that Respondents have failed to produce any evidence to establish its rights or legitimate interests in the disputed domain names. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain names in bad faith, namely:
(i) circumstances indicating that Respondents have registered or acquired the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondents’ documented out-of-pocket costs directly related to the disputed domain names; or
(ii) Respondents have registered the disputed domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondents have engaged in a pattern of such conduct; or
(iii) Respondents have registered the disputed domain names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain names, Respondent have intentionally attempted to attract, for commercial gain, Internet users to Respondents’ websites or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondents’ websites or location or of a product.
The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondents have registered and used the disputed domain names in bad faith.
a). Registered in Bad Faith
The Panel finds that Complainant has a widespread reputation in the MICRONEL Mark with regard to its products. Complainant has registered its MICRONEL Marks internationally (since 1976), including registration in China. Factual Respondent was a former partner of Complainant. Thus, it is not conceivable that Factual Respondent would not have had actual notice of Complainant’s trademark right at the time of the registration of the disputed domain name. The Panel therefore finds that the MICRONEL Mark is not one that could in the circumstances have been adopted in the disputed domain name other than for the purpose of creating an impression of an association with Complainant. (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).
Moreover, Respondents have chosen not to formally respond to Complainant’s allegations. According to the panel’s decision in The Argento Wine Company Limited v Argento Beijing Trading Company, supra, “the failure of the respondent to respond to the Complaint further supports an inference of bad faith”. (see also Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787). As the Panel has previously noted, based on the information provided by the Complainants, the Respondents were never authorized by the Complainant to register the disputed domain names containing the MICRONEL Mark. Thus, in the above-described circumstances, this Panel concludes that the disputed domain names were registered in bad faith with the intent to create an impression of an association with Complainant’s MICRONEL branded products.
b). Used in Bad Faith
With regards to , Complainant has adduced material to support a finding that by using a confusingly similar disputed domain name, Respondents have “intentionally attempted to attract, for commercial gain, Internet users to Respondents’ websites” offering Complainant’s MICRONEL branded products and services without authorization.
To establish an “intention for commercial gain” for the purpose of this Policy, evidence is required to indicate that it is “more likely than not” that intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Wal-Mart Stores, Inc. and Wal-Mart China Co. Ltd v. Liangchenyong, ADNDRC Case No. HKcc-0800008).
Given the widespread reputation of the MICRONEL Mark, the Panel finds that the public is likely to be confused into thinking that the disputed domain name has a connection with Complainant, which is contrary to the fact. The Panel finds a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the website to which the disputed domain name is resolved. In other words, Respondents have through the use of a confusingly similar domain name (namely, ) created a likelihood of confusion with the MICRONEL Mark. Noting also that apparently no disclaimer or clarification as to Respondents’ relationship (or lack thereof) to Complainant is made on the homepage of the disputed domain name , potential partners and end-users may well be led to believe that the website at disputed domain name either Complainant’s site or the site of official authorized partners of Complainant, which it is not. Moreover, Respondents have not responded formally to the Complaint. The Panel therefore concludes, in all of the circumstances, that the disputed domain name was used by Respondents in bad faith.
With regards to , based on the information provided by the Centre, the disputed domain name is currently inactive.
In terms of an inactive domain name, the Overview 2.0 noted: “With comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith”(Paragraph 3.2). The Overview 2.0 further stated: “The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity. Panels may draw inferences about whether the disputed domain name was used in bad faith given the circumstances surrounding registration, and vice versa.”
Based on information provided by Complainant, Complainant has owned MICRONEL internationally since 1976 (as stated above). The Panel has already noted the widespread reputation of Complainant’s MICRONEL trademarks. Further, no formal response to the Complaint has been filed by Respondents. There is discrepancy in this case between the formal registrants of record and factual respondent. In all of the circumstances, the Panel finds it difficult to conceive of any plausible and legitimate use by the Respondents of the disputed domain name, which would not contribute in some way to an impermissible likelihood of confusion with the MICRONEL Marks under the Policy. On balance, the Panels finds, the inactive disputed domain name is being held passively and used in bad faith.
The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names and be transferred to Complainant.
Yijun Tian
Sole Panelist
Dated: October 8, 2012
Full & Egal Universal Law Academy