The Complainant is AVX Corporation of Fountain Inn, South Carolina, United States of America ("United States"), represented by Troutman Sanders, LLP, China.
The Respondent is YinSi BaoHu Yi KaiQi (Hidden by Whois Privacy Protection Service) of Beijing, China / Tang Ze Jing, Shen Zhen Shi Shi Fu Dian Zi Fa Zhan You Xian Gong Si of Shenzhen, Guangdong, 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 in English was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 20, 2016. On December 20, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 21, 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.
On December 23, 2016, the Center sent an email communication to the Parties in both Chinese and English regarding the language of the proceeding. On December 26, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on December 30, 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 the Respondent in both Chinese and English of the Complaint, and the proceedings commenced on January 4, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 24, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 25, 2017.
The Center appointed Jonathan Agmon as the sole panelist in this matter on January 31, 2017. 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, AVX Corporation, is a United States based company, founded in 1972. The Complainant is listed on the New York Stock Exchange.
The Complainant is a leading worldwide manufacturer, supplier and reseller of a broad line of passive electronic components and interconnect products.
The Complainant is the owner of several registered trademarks for mark AVX. For example: United States trademark registration no. 0936515, with the registration date of June 27, 1972; United States trademark registration no. 2504553, with the registration date of November 6, 2001; Chinese trademark registration no. 1981810, with the registration date of December 21, 2002, and more.
The Complainant also owns and communicates on the Internet through domain name and several other domain names containing the AVX trademark.
The disputed domain name was registered on August 30, 2016.
The disputed domain name previously resolved to a website selling the Complainant's products and products in competition with the Complainant. Currently, the disputed domain name is inactive. 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to its AVX trademark. The disputed domain name incorporates the AVX trademark with the additional of a hyphen and geographic term "China", and it is clear that the dominant component of the disputed domain name is the Complainant's AVX trademark.
The Complainant further contends that the Respondent has no rights or legitimate interest in the disputed domain name.
The Complainant further argues that the Respondent is not known by the name AVX, and the Complainant did not grant a license nor any authorization to the Respondent to make any use of the Complainant's trademark AVX.
The Complainant further argues that the Respondent's website under the disputed domain name was operated as a platform that advertises and sells electronic products from different brands including other brands than the Complainant's, and that the site does not disclose the Respondent's relationship with the Complainant.
The Complainant further argues that the Respondent's use of the disputed domain name cannot be bona fide as it is clear that the Respondent intends to infringe the Complainant's trademark and take advantage of the notoriety associated with the AVX mark.
The Complainant further argues that disputed domain name was registered in bad faith.
The Complainant further argues that the Respondent's false claim on the website it was authorized by the Complainant, and by offering the Complainant's electronic components on the website at the disputed domain name it is clear that the Respondent is well aware of the existence and reputation of the Complainant when applying and using the disputed domain name.
The Complainant further argues that the Respondent's use of the disputed domain name can only be intended to create a false association with the Complainant and to attract consumers to the Respondent's website to promote sales of the Respondent's products in bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Language of the Proceeding
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 language of the Registration Agreement for the disputed domain name is Chinese.
The Complainant requested that the language of the proceeding should be English.
The Panel cites the following with approval:
"Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel's discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not 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 Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of the proceeding:
a) The disputed domain name consists of Latin-script letters, rather than Chinese characters;
b) The disputed domain name includes the Complainant's mark, as well as the English name of the country China;
c) The Respondent did not object to the Complainant's request that English be the language of the proceeding.
d) The Center has sent all communications in both Chinese and English, yet the Respondent has not participated in the present proceedings in any way.
Upon considering the above, the Panel concludes, according to the Rules, paragraph 11(a), that there is no prejudice or unfairness to the Respondent for this proceeding to be conducted in English and for its decision to be rendered in English. Accordingly, the Panel determines that the language of this administrative proceeding should be English. B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner.
The Complainant is the owner of several registered trademarks for mark AVX. For example:
United States trademark registration no. 0936515, with the registration date of June 27, 1972; United States trademark registration no. 2504553, with the registration date of November 6, 2001; Chinese trademark registration no. 1981810, with the registration date of December 21, 2002, and more.
The disputed domain name is identical to the registered trademark AVX apart from the addition of a hyphen "-" and the geographical term "China". The disputed domain name integrates the Complainant's trademark AVX in its entirety, as a dominant element.
The addition of a hyphen "-" is considered to be a mere non-significant element and the addition of the geographical term "China" does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant's AVX trademark. It is clear that the most prominent element in the disputed domain name is the term "avx". Consequently, this Panel finds that the disputed domain name is confusingly similar to the Complainant's AVX trademark.
The addition of the generic Top-Level Domain ("gTLD") suffix ".com" does not have the capacity to distinguish the disputed domain name from the Complainant's registered trademark and is disregarded when comparing the disputed domain name with the Complainant's trademark. See Volkswagen AG v. Todd Garber,WIPO Case No. D2015-2175; see also Dassault (Groupe Industriel Marcel Dassault) v. Ma Xiaojuan,WIPO Case No. D2015-1733; Lego Juris A/S v. Chen Yong,WIPO Case No. D2009-1611; Dr. Ing. h.c. F. Porsche AG v. zhanglei,WIPO Case No. D2014-0080.
Consequently, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the AVX trademark in which the Complainant has rights. C. Rights or Legitimate Interests
Once the complainant establishes a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the respondent to show that it has rights or legitimate interests in respect to the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1.
In the present case, the Complainant has demonstrated to the Panel that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent had failed to assert any such rights or legitimate interests.
The Panel finds that the Complainant has established a prima facie case in this regard, inter alia, due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the AVX trademark, or a variation thereof.
The Respondent has not submitted a response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name that is sufficient to rebut the Complainant's prima facie case.
In the circumstances of this case, and in light of the Respondent's use of the disputed domain name set out in more detail below, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. D. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.
The Complainant has submitted evidence, which shows that the Respondent registered the disputed domain name long after the Complainant registered its trademark. According to the evidence filed by the Complainant, the Complainant has owned a registration for the AVX trademark in China since at least the year 2002. It is suggestive of the Respondent's bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
The disputed domain name is confusingly similar to the Complainant's trademark. Previous UDRP panels have ruled that "[a] likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant's site to the Respondent's site" (see E, Inc v. Triple E Holdings Limited,WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the Policy.
The Respondent's use of the trademark of the Complainant on the website under the disputed domain name is also suggestive of the Respondent's bad faith. It was held in previous UDRP decisions that it is presumptive that using a highly distinctive trademark with a longstanding reputation is intended to make an impression of an association with the Complainant (see Swarovski Aktiengesellschaft v. fan wu,WIPO Case No. D2012-0065).
Indeed, "when a domain name is so obviously connected with a Complainant, it's very use by a registrant with no connection to the Complainant suggests 'opportunistic bad faith'" (Tata Sons Limited v. TATA Telecom Inc/T, Mr. Singh,WIPO Case No. D2009-0671).
Also, the disputed domain name is currently inactive which can, in appropriate circumstances, indicate the Respondent's bad faith (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
Based on the Complainant's evidence presented to the Panel, it appears that the Respondent operated a website under the disputed domain name to promote products associated with the Complainant alongside those of the Complainant's competitors, without the Complainant's authorization for commercial gain. Thus, the Panel finds clear evidence that the Respondent registered and is using the disputed domain name with knowledge of the Complainant and its trademark, and indicates that the Respondent's primary intent with respect to the disputed domain name has been to trade off the value of the good will associated with the Complainant's mark. The Respondent's actions therefore constitute bad faith. (See Herbalife International, Inc. v. Surinder S. Farmaha,WIPO Case No. D2005-0765, stating that "the registration of a domain name with the knowledge of the complainant's trademark registration amounts to bad faith".)
Further, the Complainant submitted evidence showing the Respondent's use of the disputed domain name is made in order to attract consumers for commercial gain by purporting to sell products of the Complainant and of other competing brands. The Panel also considers that the website does not accurately and prominently disclose the Respondent's relationship with the Complainant.
The Panel also finds that the Respondent's attempt to attract, for commercial gain, Internet users to its website with the intent to creating a likelihood of confusion with the Complainant's trademarks and its affiliation with the Respondent's website falls under paragraph 4(b)(iv) of the Policy.
Based on the evidence presented to the Panel, including the late registration of the disputed domain name, the evidence of reputation of the Complainant's trademark and the Respondent's use of the disputed domain name, and the failure of the Respondent to respond to the Complaint, the Panel finds that the disputed domain name was registered and is being used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) 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 the Complainant.
Jonathan Agmon
Sole Panelist
Date: February 13, 2016
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