The Complainant is Xiaomi Technology Company Limited of Beijing, China; Xiaomi Technology India Private Limited of Karnataka, India, represented by Masilamani Law Partners, India.
The Respondent is Domain Administrator, See PrivacyG of Phoenix, Arizona, United States of America / seasaw commerce, seasawcommerce of Changsha, Hunan, China. 2. The Domain Name and Registrar
The disputed domain name (the "Disputed Domain Name") is registered with NameSilo, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 17, 2017. On August 17, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 17, 2017, 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 August 24, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 29, 2017.
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 August 29, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 18, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 19, 2017.
The Center appointed Linda Chang as the sole panelist in this matter on September 27, 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
Xiaomi Technology Company Limited ("Xiaomi Technology") and Xiaomi Technology India Private Limited ("Xiaomi India") are both part of the Xiaomi group of companies. Xiaomi Technology is a corporation organized under the laws of China and Xiaomi India is a company incorporated under the laws of India.
Xiaomi Technology owns various trade mark registrations for XIAOMI, MI and the MI logo across various classes, including International Registration no. 1173390 for XIAOMI registered on May 31, 2012. Xiaomi India is an associate of Xiaomi Technology and is an authorized licensee of the XIAOMI marks.
Xiaomi Technology is a multinational consumer technology company that designs, develops, and manufactures smartphones, mobile applications and consumer electronics. Their list of products includes headphones, earphones, power banks, fitness trackers, air purifiers, robotic vacuum cleaners, virtual reality headsets and WiFi routers. Xiaomi Technology is an internationally recognized producer of these goods.
Both Xiaomi Technology and Xiaomi India sell their Xiaomi products on their official websites, "/en/" and "/in/" respectively.
The Respondent's registration of the Disputed Domain Name on October 27, 2014 post-dates the Complainant's use of its known XIAOMI marks in India, China, the United States of America, and elsewhere. The Disputed Domain Name resolved to a website impersonating the Complainant's official website. 5. Parties' Contentions A. Complainant
The Complainant makes the following contentions.
The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Disputed Domain Name is confusingly similar to the XIAOMI marks owned by the Complainant because it comprises an exact reproduction of the Complainant's XIAOMI marks along with descriptive term "device" and the non-distinguishing generic Top-Level Domain ("gTLD") ".com".
The addition of the descriptive term "device" to the Complainant's XIAOMI marks as shown in the Disputed Domain Name actually heightens the confusing similarity, as both Respondent and the Complainant are engaged in the same line of business.
Numerous UDRP decisions have consistently held that a domain name which is the subject of dispute and which comprises of the complainant's mark and a generic or descriptive term, is confusingly similar to the mark of the complainant, and that gTLDs are inconsequential when conducting an analysis of confusing-similarity (see, for example: eBay Inc. v. SGR Enterprises and Joyce Ayers,WIPO Case No. D2001-0259; SWATCH AG v. Stefano Manfroi,WIPO Case No. D2003-0802; LEGO Juris A/S v. F.H.U. Betternet Rafal Biegun,WIPO Case No. D2011-0939; Inter IKEA Systems B.V. v. PrivacyP / LAKSH INTERNET SOLUTIONS PRIVATE LIMITED,WIPO Case No. D2012-0309).
The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
The Respondent's registration and use of the Disputed Domain Name to impersonate the official websites of the Complainant cannot constitute a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy. Numerous UDRP decisions have held that a domain name registrant's attempt to impersonate a brand owner for fraudulent activities does not constitute a bona fide offering of goods or services (see, for example: Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "M",WIPO Case No. D2000-0847; eBay Inc. v. ebayMoving / Izik Apo,WIPO Case No. D2006-1307).
The Respondent attempts to pass itself off as the Complainant through the use of Complainant's XIAOMI marks in the Disputed Domain Name.
The Respondent is not – and has not been – commonly known by the Disputed Domain Name. In fact, given the fame of the Complainant's XIAOMI Marks, the Respondent could not be known by the Disputed Domain Name (See e.g. Nike, Inc. v. B. B. de Boer,WIPO Case No. D2000-1397).
The Disputed Domain Name has been registered and used by the Respondent as a pretext for tarnishing the Complainant's XIAOMI marks as well as for commercial gain (see e.g. Levantur, S.A. v. Media Insight,WIPO Case No. D2008-0774).
The Disputed Domain Name was registered and is being used in bad faith.
The Respondent is unfairly disrupting the Complainant's business, tarnishing the Complainant's XIAOMI marks and duping the customers into transacting business on the Respondent's website when such customers believe that they are in fact purchasing smartphones and other related products and accessories through the Complainant's official websites (see Travellers Exchange Corporation Limited v. Travelex Forex Money Changer,WIPO Case No. D2011-1364).
The Respondent's website slavishly copies the Complainant's XIAOMI marks and logo, to deceive customers. The Respondent's website also states that "X is professional retail shop of xiaomi".
The Respondent uses the Disputed Domain Name to intentionally attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant as well as the Complainant's XIAOMI marks as to the source, sponsorship, affiliation, and endorsement of the Respondent's products (see Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. ICN-Toshiba,WIPO Case No. D2004-0941).
Given the well-known character of the Complainant's XIAOMI marks and products, it is highly unlikely that Respondent did not have knowledge of the Complainant and its XIAOMI marks while registering and subsequently using the Disputed Domain Name (See, for example: Nike, Inc. v. B. B. de Boer, supra; Levantur, S.A. v. Media Insight,WIPO Case No. D2008-0774; Swarovski Aktiengesellschaft v. Whois Privacy Protection Service by MuuMuuDomain / takeo nagase,WIPO Case No. D2013-0802; Lockheed Martin Corporation v. NBPro Hosting, WIPO Case. No. D2003-0859).
A respondent's use of a privacy or proxy service which is known to block or intentionally delay disclosure of the identity of the actual underlying registrant can be taken as an indication of bad faith.
The Respondent has failed to respond to the cease-and-desist notice, which has been found by UDRP panels to constitute bad faith (See, for example: HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager,WIPO Case No. D2007-0062) B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has demonstrated prior rights in the trade marks XIAOMI and MI.
The Disputed Domain Name entirely incorporates the trade marks XIAOMI while the word "device" and ".com" are just a dictionary word and a gTLD suffix. This word and suffix do not differentiate the domain name from the trade mark.
The Panel finds that the Disputed Domain Name is confusingly similar to the trade marks in which the Complainant has established rights pursuant to the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
Where the complainant has made a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to put forward relevant evidence to demonstrate otherwise. If the respondent fails to present evidence, the complainant is deemed to have satisfied the second element. See Universal City Studios, Inc. v. David and Adam-12 Dot Com,WIPO Case No. D2001-0784; see also International Hospitality Management-IHM S.p.A. v. Enrico Callegari Ecostudio,WIPO Case No. D2002-0683).
The Respondent did not submit a Response, nor provide any evidence to show it has rights in the name "xiaomi" or "xiaomidevice".
A domain registrant's attempt to impersonate a brand owner for fraudulent activities does not constitute a bona fide offering of goods or services (see Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "M", supra; eBay Inc. v. ebayMoving / Izik Apo, supra).
The Panel holds that the Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
To satisfy paragraph 4(a)(iii) of the Policy, the Complainant must prove the Disputed Domain Name is registered and used in bad faith.
The evidence that was presented before the Panel shows the Complainant's trade marks have reputation and are recognized in China and around the world. It is unlikely that at the time of registering the Disputed Domain Name the Respondent had no knowledge of the Complainant's prior rights.
In addition, the way how the Disputed Domain Name was used by the Respondent can potentially mislead customers into believing they are transacting on the Complainant's official website. This was evidenced by the Respondent's use of the Complainant's trade marks (including logo) on the website to which the Disputed Domain Name resolved. It not only copied the look and feel of the Complainant's official website but also untruthfully stated that "X is professional retail shop of xiaomi".
The Complainant has provided satisfactory evidence that the Respondent's conduct falls within paragraph 4(b) of the Policy and accordingly, the Panel concludes that the Respondent registered and used the Disputed Domain Name in bad faith. 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.
Linda Chang
Sole Panelist
Date: October 23, 2017
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