The Complainant is NXP B.V. of Eindhoven, the Netherlands, represented by Pointer Brand Protection and Research, Netherlands.
The Respondent is xu jie, guang zhou ye ma dian zi ke ji you xian gong si of Guangzhou, Guangdong, China, represented by Guangzhou Kaluen I.P. Agency Co., Ltd, China. 2. The Domain Name and Registrar
The disputed domain name is registered with HiChina Zhicheng Technology Ltd. (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 February 14, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Complainant filed an amended Complaint on February 24, 2016.
On February 17, 2016, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On February 18, 2016, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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 the Respondent of the Complaint, and the proceedings commenced on March 3, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 27, 2016. The Response was filed with the Center in bilingual format in English and Chinese on March 25, 2016. The Complainant submitted a supplemental filing on April 1, 2016.
The Center appointed Douglas Clark as the sole panelist in this matter on April 5, 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
The Complainant is a Dutch company that has been in existence for over 55 years. It manufactures contactless integrated circuit (“IC”) products that it sells under the brand name MIFARE. The Complainant is the owner of the trade mark MIFARE registered in various countries around the world including in China dating back to 1994.
The disputed domain name was registered on December 24, 2012.
The website under the disputed domain name resolves to a website pages under the Respondent’s name in Chinese and English that promote contactless IC products covered by the Complainant’s trade mark registrations. 5. Parties’ Contentions A. Complainant
The Complainant’s contends as follows:
Identical or confusingly similar
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s registered trade mark MIFARE. The only difference is addition of the numeral “1”.
No rights or legitimate interests
The Respondent has no connection with the Complainant or any of its affiliates and has never sought or obtained any trade mark registrations for MIFARE. It, therefore, has no rights or legitimate interests in the disputed domain name.
Registered and used in bad faith
Before acquiring the disputed domain name, it is highly likely the Respondent knew of the Complainant’s rights in the mark MIFARE and acquired the disputed domain name to attract business to its website and/or to disrupt the Complainant’s business.
In response to the Respondent’s allegation that the trade mark MIFARE had become generic in China, the Complainant stated that its registration was valid and that it had taken actions to enforce the trade mark in China. B. Respondent
The Respondent’s defence is that the trade mark MIFARE has become generic in China for contactless IC products. It has legally registered the disputed domain name. Accordingly, it is entitled to use the disputed domain name in relation to contactless IC products. In any event, they do not use MIFARE on their products, but only use it for the disputed domain name. 6. Discussion and Findings 6.1. Language of Proceeding
The language of the Registration Agreements is Chinese. Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The Complainant initially requested the language of the proceeding be English on the grounds that Registration Agreement of the Registrar of the disputed domain name required English to be used; and that the Respondent was doing business in English and promoting itself in English. The Respondent had not replied to the Center’s Language of Proceeding notification and the Complainant stated that requiring the Complainant to translate the Complaint would add additional costs. The Complainant proposed to proceed in English and Chinese with the Respondent being able to respond in Chinese.
The Center made a preliminary determination to:
1) accept the Complaint as filed in English;
2) accept a Response in either English or Chinese; and
3) appoint a Panel familiar with both languages mentioned above, if available.
The final determination of the language of the proceeding lies with this Panel.
The Respondent has through its attorneys filed a Response in Chinese and English. Given that the Complaint is in English and the Respondent has responded to it in both Chinese and English, the Panel will render its decision in English. 6.2. Supplemental Filing of Reply
The Reply was filed by the Complainant without permission of the Panel and was unsolicited. The Respondent objected to the Complainant’s submission on the basis that the Complainant should have dealt with all issues in its Complaint and initial evidence.
The Reply is directed solely to the Respondent’s allegation that MIFARE has become generic in China and exhibits a confirmation from the PRC Trade Mark Office that the international registration for MIFARE has been extended to China and evidence of use of MIFARE in China.
The general consensus of panelists is that supplemental filings should only be accepted if there are “exceptional circumstances” which explain why the party submitting the filing was not able to present the evidence in the first place. Further, where a panel decides to accept the filing, the panel should give the other party a chance to respond (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.2).
The Panel notes that the Respondent objected to the filing of the Reply. However, it was the Respondent which raised the issue that the trademark was generic. The allegation that the Complainant’s registered trade mark has become generic is not a matter that a party should be expected to deal with in a Complaint. As discussed below, the burden of proving a trade mark is generic is strongly on a respondent and it is not a matter that a complainant should be expected to deal with in their Complaint unless they have prior notice of the allegation.
The Panel, therefore, determines to accept the Reply.
As the allegation that a trade mark is generic is matter where the respondent bears a clear burden of proof, a respondent should file all evidence in support of their allegation in their response. The Panel, Therefore, does not consider it appropriate to seek any further Response from the Respondent. 6.3. Substantive Decision A. Identical or Confusingly Similar
The disputed domain name is, other than the generic Top-Level Domain (“gTLD”) “.com”, confusingly similar to the Complainant’s trademark MIFARE. The distinctive part of the disputed domain name is “mifare”. The addition of the numeral “1” to the disputed domain name does not remove any confusion.
The first part of paragraph 4(a) of the Policy is therefore satisfied. B. Rights or Legitimate Interests
The Complainant alleges that it has no connection with the Respondent, and that the Respondent lacks rights or legitimate interests in the disputed domain name.
Paragraph 2.1 of the WIPO Overview 2.0 provides:
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore 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.”
The Respondent has not asserted rights or legitimate interests in the trade mark MIFARE. It has merely asserted that it has legally registered the disputed domain name. However, the question is: does it have rights or legitimate interests to allow them to register the domain name?
Despite the Respondent’s claim that MIFARE is generic it has been well established by prior UDRP panel decisions that the registration of a trade mark is prima facie evidence of validity, which creates a presumption that the mark is distinctive. See,for example EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047. While some panels have decided that registration of a trade mark was determinative of the question of distinctiveness, other panels take the view that a panel should consider if a trade mark is distinctive. See, e.g., 402 Shoes, Inc., dba Trashy Lingerie v. Jack Weinstock and Whispers Lingerie,WIPO Case No. D2000-1223. Panels are often asked to determine cases relying on trade marks registered in one jurisdiction when the domain name has been registered by a registrant located in another jurisdiction. A trade mark may be perfectly registrable in one country, but generic in another because, for example, in the local language it is descriptive. There are also occasions when trade marks that are generic are allowed onto the register or remain on the register after becoming generic. Panels should, therefore, consider if the trade mark in issue is distinctive in the circumstances of the case they are considering.
Where, as in this case, the Complainant does have a trade mark registration in the country where the trademark is alleged to be generic and the disputed domain name is being used that country, the burden the Respondent to show the trade mark is generic must be very high. By being registered on the register, prima facie, the trade mark is distinctive..
In this case, the Panel considers that the Respondent has not met its burden of proving the mark is generic so that it could be considered to have legitimate interests in using MIFARE as part of a domain name.. The mere assertion by the Respondent that MIFARE has become generic with limited evidence is not sufficient to overcome the Complainant’s allegation that the Respondent does not have rights or legitimate interests in the disputed domain name.,..
The Respondent has, therefore, failed to rebut Complainant’s allegation that the Respondent has no rights or legitimate interests in the disputed domain name.
The second part of paragraph 4(a) of the Policy is therefore satisfied. C. Registered and Used in Bad Faith:
The Panel finds that the disputed domain name was registered in bad faith and is being used in bad faith. The Respondent admits it knew of the Complainant’s rights in the trade mark MIFARE when it registered the disputed domain name. It uses the disputed domain name to promote its products that compete with the Complainant’s. Its only defence has been that the MIFARE mark is generic, which this Panel has rejected.
This case falls with paragraph 4(b)(iv) of the Policy which provides that a registrant has registered and is using a domain name in bad faith where:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The website under the disputed domain name is being used to attract users to the website. The Panel appreciates that unlike most respondents, the Respondent has made no attempt to hide its identity suggesting that it considered it was legitimately using the disputed domain name. Nevertheless, the use that has been made of the disputed domain name requires a finding of registration and use in bad faith as defined in the Policy.
The third part of paragraph 4(a) of the Policy is, therefore, satisfied. 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 the Complainant.
Douglas Clark
Sole Panelist
Date: April 25, 2016
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