Complainant is NXP B.V. of Eindhoven, the Netherlands, represented by Pointer Brand Protection and Research, the Netherlands.
Respondent is Private Registrant, A Happy Dreamhost Customer of Brea, California, United States of America (“United States”) / Anuraag Jain of Maharashtra, India. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with DreamHost, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 11, 2016. On February 11, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same date, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 22, 2016, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on February 25, 2016.
The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on February 26, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 17, 2016.
The proceeding was suspended on March 3, 2016. The proceeding was reinstituted on May 12, 2016, at which time the due date for Response was set to May 26, 2016. The Response was filed with the Center on May 26, 2016.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on June 1, 2016. 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
Complainant states that it “has more than 55 years of experience in semiconductors, and operations in over 25 countries with approximately 28,000 employees” and annual revenue in 2014 of USD 5.65 billion. Complainant further states that its MIFARE brand was “[]introduced in 1994” and is used in connection with “a wide range of contactless IC (Integrated Circuit) products with a typical read/write distance of 10 cm (4 inch) used in more than 40 different applications worldwide (such as smart cards/proximity cards, key-fobs, and readers for, among others, access management, event ticketing, identification, and micropayment).” Complainant adds: “With 150 million reader and 10 billion contactless and dual interface IC’s sold, MIFARE products are proven and reliable more than any other interface technologies in the market. This huge installed base of MIFARE products enables service providers to expand their offer while reducing the total costs and increasing users’ convenience.”
Complainant further states that it is the owner of a number of trademark registrations around the world for the mark MIFARE, which it has supported with appropriate documentation, including the following, among others: Community Trademark Reg. No. 10,920,007 (registered on October 25, 2012); International Reg. No. 615,458 (registered on March 14, 1994); and U.S. Reg. No. 1,955,652 for the word mark MIFARE in Class 9, registered on February 13, 1996. These marks are collectively referred to hereafter as the “MIFARE Trademark.”
The Disputed Domain Name was created on April 2, 2013, and is being used in connection with a website that (as described by Complainant, supported by appropriate documentation), “offers MIFARE-related products as well as smart card products from other manufacturers for sale. The homepage of the website furthermore features the trademarked NXP color logo.” 5. Parties’ Contentions A. Complainant
Complainant contends, in relevant part, as follows:
The Disputed Domain Name is confusingly similar to the MIFARE Trademark because the domain name “incorporates the MIFARE trademark in its entirety” and “[t]he addition of the descriptive terms ‘cards’ and ‘rfid’ (radio frequency identification) is insufficient to prevent confusing similarity.”
Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “Complainant has not authorized, licensed or otherwise permitted the Respondent to use the MIFARE trademark in the Domain Name or for any other purpose”; “Respondent is not an authorized reseller of the Complainant’s products”; the website associated with the Disputed Domain Name “does not accurately and prominently disclose the Respondent’s (lack of a) relationship with the Complainant” and “uses the trademarked NXP color logo without authorization on the homepage and product pages, which increases the likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website”; and “the Respondent has no registered trademarks or trade names corresponding to the Domain Name” and instead “appears to be known as ‘CS Cards’.”
The Disputed Domain Name was registered and is being used in bad faith because, inter alia, “Respondent was certainly aware and intended to take advantage of the MIFARE trademark, as the Respondent is a supplier of smart cards and RFID products and uses the Domain Name to resolve to the website ‘www.’ on which MIFARE-related products, as well as smart card products from other manufacturers are offered for sale”; “the website does not accurately and prominently disclose the Respondent’s (lack of a) relationship with the Complainant, and features the trademarked NXP color logo without authorization on the homepage and product pages”; and “Respondent, by registering and using the Domain Name, intentionally attempted to attract for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.” B. Respondent
Respondent contends, in relevant part, as follows:
“We do not have any website that is published on the net and as such are in no way damaging or infringing any brand.”
“The brand registered in India is Mifare IC chips and NOT Custom-Printed mifare cards which are a completely different product.”
“Our products are printed Mifare cards that use genuine Mifare chips. The company Nxp sells Mifare chips and there is absolutely no clash in our product line.”
“Complainant is a company that is attempting to bully small plastic card manufacturers and is indulging in reverse domain hijacking.”
“Printed plastic cards contain the NXP chip when advertised are the same as personal computers PCs being advertised with Intel chip inside. As such the chip inside is only a tiny component of the main product which is a custom printed ID card as per the customers [sic] design.”
“Mifare is the trademark for a brand of integrated chips ICs. As such printed plastic cards are based on applications that may use these ICs and as such these printed cards are used in applications like loyalty, ticketing, access control etc. the IC is a mere component of the final product that is a custom printed plastic card.”
“Use of NXP logo on the website is only a[n] affirmation of the input raw materials used in the final product in exactly the same manner in which a PC manufacturer uses the Intel Logo for personal computers, or a car manufacturer advertising Bose music system inside the car or any brand final product giving the customer comfort of the inputs used. This in no way creates brand confusion as there is an open acknowledgement and in fact it enhances the image of the brand by admission.” 6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith. Policy, paragraph 4(a). A. Identical or Confusingly Similar
Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the MIFARE Trademark.
As to whether the Disputed Domain Name is identical or confusingly similar to the MIFARE Trademark, the relevant comparison to be made is with the second-level portion of this domain name only (i.e., “mifarecards-rfid”), as it is well established that the Top-Level Domain (i.e., “.com”) may be disregarded for this purpose. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 1.2 (“The applicable top-level suffix in the domain name (e.g., ‘.com’) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark.”)
The Panel finds that “the dominant portion” of the Disputed Domain Name contains the MIFARE Trademark and that the addition of the words “cards” and “rfid” (an abbreviation for “radio frequency identification”) is insufficient “to create a distinct domain name capable of overcoming a proper claim of confusingly similar.” F.M. Tarbell Co. dba Tarbell, Realtors v. Name Catcher/Mark Lichtenberger,WIPO Case No. D2007-0189. This is especially true because these words are associated with Complainant’s use of the MIFARE Trademark. Indeed, because these words “relate to the Complainant’s business,” it actually “increases the likelihood of confusion between the Domain Name[] and the Complainant’s trademark.” Inter-Continental Hotels Corporation v. Hui Lian Yang/Yang Hui Lian; a/k/a Jian Ren Zhou/Zhou Jian Ren; a/k/a Jian Guo Liu/Liu Jian Guo,WIPO Case No. D2014-0272.
Finally, inclusion of a hyphen in the Disputed Domain Name is irrelevant because hyphens do not “serve to dispel Internet user confusion.” Six Continents Hotels, Inc. v. Georgetown Inc.,WIPO Case No. D2003-0214.
Accordingly, the Panel finds that Complainant has proven the first element of the Policy. B. Rights or Legitimate Interests
Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “Complainant has not authorized, licensed or otherwise permitted the Respondent to use the MIFARE trademark in the Domain Name or for any other purpose”; “Respondent is not an authorized reseller of the Complainant’s products”; the website associated with the Disputed Domain Name “does not accurately and prominently disclose the Respondent’s (lack of a) relationship with the Complainant” and “uses the trademarked NXP color logo without authorization on the homepage and product pages, which increases the likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website”; and “the Respondent has no registered trademarks or trade names corresponding to the Domain Name” and instead “appears to be known as ‘CS Cards’.”
Under the Policy, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” WIPO Overview 2.0, paragraph 2.1.
The Panel finds that Complainant has established its prima facie case and that Respondent has not responded specifically to any of the arguments regarding rights or legitimate interests. Nevertheless, it appears as if Respondent is claiming rights or legitimate interests pursuant to paragraph 4(c)(iii) of the Policy (“you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”). That is, while Respondent seems to acknowledge Complainant’s trademark, Respondent also seems to argue that Respondent has the right to use that trademark.
The Panel notes that while Respondent has stated that it does not have an active website using the Disputed Domain Name, the record indicates otherwise. That is, Complainant has included screenshots of the website as annexes to the Complaint. That Respondent may have later deactivated its website is irrelevant.
In any event, using someone else’s trademark in a domain name to offer for sale unrelated products is not a fair use of the domain name. Rights or legitimate interests cannot be established where a respondent’s website is used to offer for sale products that “may compete with Complainant’s own products.” Pfizer Inc. v. Private person, Aleksandr Syichev / PrivacyP,WIPO Case No. D2013-0696.
Further, even if the products sold by Respondent on its website using the Disputed Domain Name are, in fact, actually licensed to use the MIFARE Trademark, Respondent still lacks the right to use the MIFARE Trademark in the Disputed Domain Name as it has done here. “Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site’s accurately and prominently disclosing the registrant's relationship with the trademark holder.” WIPO Overview 2.0, paragraph 2.3. Here, not only is it unclear whether Respondent is actually offering Complainant’s (and only Complainant’s) products, but Complainant has stated (and Respondent has not denied) that Respondent’s website “does not accurately and prominently disclose the Respondent’s (lack of a) relationship with the Complainant.”
Accordingly, the Panel is satisfied that Complainant has satisfied the second element of the Policy. C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy:
(i) circumstances indicating that the respondent has registered or the respondent has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the registrant’s website or location.
Policy, paragraph 4(b).
In this case, Complainant appears to argue that bad faith exists pursuant to paragraph 4(b)(iv) of the Policy because the website associated with the Disputed Domain Name offers for sale “MIFARE-related products, as well as smart card products from other manufacturers.”
Using a domain name that contains a complainant’s trademark in connection with a website that sells competing products is an obvious way to create a likelihood of confusion and has frequently been cited by previous panels as establishing bad faith. See, e.g., Kabushiki Kaisha Toshiba v. Liu Xindong,WIPO Case No. D2003-0408 (using a disputed domain name “to sell directly competing products” constitutes bad faith); and Ho Hoi Ming Michael v. EHM All Things Healthy,WIPO Case No. D2014-1753 (finding bad faith where disputed domain name “wholly incorporates the Trade Mark, and…is almost identical to the Complainant’s own registered domain name and was used to sell similar goods”).
Further, even if, as discussed above, Respondent is actually offering for sale Complainant’s own products, bad faith still exists because, as stated above, Respondent does not accurately disclose its lack of a relationship with Complainant, nor is it clear that Respondent is selling only Complainant’s products. As a result, consumers are likely to be confused. As a previous panel wrote:
Respondent claims that its website exists only for the purpose of good-faith comparative advertising not intended to mislead users. Even if this dubious assertion were true, and even if the website hosted at the disputed domain name did not appear to be deliberately designed to obscure sponsorship, Respondent’s assertion would be insufficient to show good faith for the purposes of Policy paragraph 4(a)(iii). The confusing similarity between the disputed domain name and the [complainant’s] trademark creates the risk that users will accidentally visit Respondent’s site in the belief that the disputed domain name is associated with Complainant. While such initial interest confusion is not sufficient to show bad faith in every case, …the deliberate creation of initial interest confusion by a party directly “in competition with the Complainant for the provision of goods or services” is an archetypical example of bad faith registration and use.
Nelnet Business Solutions, Inc. d/b/a FACTS Management Co. v. Andrew Goldberger,WIPO Case No. D2013-0764.
To be clear, Respondent is not precluded by the Policy from selling Complainant’s products online, but it may not do so using Complainant’s trademark in its domain name and/or without making clear that it is not authorized by Complainant.
Accordingly, the Panel finds that Complainant has proven the third element of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name be transferred to Complainant.
Douglas M. Isenberg
Sole Panelist
Date: June 10, 2016
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