The Complainants are Xiaomi Technology Company Limited of Beijing, China and Xiaomi Technology India Private Limited of Karnataka, India (hereafter “Complainant”), represented by Masilamani Law Partners, India.
The Respondent is Mi Dealer of Patna, India. 2. The Domain Name and Registrar
The disputed domain name (“Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 25, 2019. On January 25, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same date, 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 January 31, 2019.
The Center verified that the Complaint together with the amended Complaint (hereafter “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 February 1, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 21, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 22, 2019.
The Center appointed Nicholas Smith as the sole panelist in this matter on March 5, 2019. 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 involved in the design, development, manufacture, and distribution of smart phones, mobile applications and other electronic consumer products.
The Complainant holds, amongst other marks, a registered trade mark for a device consisting of the letters “mi” in stylized form (the “MI Mark”) (registration number 1173649), registered from November 28, 2012 for goods and services in classes 9, 35, 38 and 42. The MI Mark is registered, through the Madrid Protocol, in various countries including the United States of America.
The Domain Name was registered on December 6, 2018. The Domain Name is presently inactive, however prior to the commencement of the proceeding the Domain Name resolved to a website (“Respondent’s Website”) that reproduced the MI Mark, purported to advertise the Complainant’s products for sale and solicited individuals to sign up with the Respondent in order to be authorised dealers in the Complainant’s products. The “contact details” available on the Respondent’s Website expressly referred to the Respondent as “Xiaomi Technology India Private Limited”. 5. Parties’ Contentions A. Complainant
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant’s MI Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the MI Mark having registered the MI Mark in the various jurisdictions around the world including China and India. The Domain Name incorporates the MI Mark, adding the term “dealership”, which the Respondent uses as part of its website where it offers counterfeit MI dealerships.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Complainant has not granted any license or authorization for the Respondent to use the MI Mark. The Respondent does not use the Domain Name for a bona fide purpose or legitimate noncommercial purpose. Rather the Domain Name has been used to resolve to a website where the Respondent impersonates the Complainant and offers to appoint members of the public as authorized dealers/distributors of the Complainant’s products in return for a registration fee. This amounts to a forgery and impersonation of the Complainant in the commission of a fraud.
The Domain Name was registered and is being used in bad faith. The Domain Name has been used to create a website that impersonates the Complainant for the purpose of deceiving visitors and obtaining commercial gain. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the MI Mark, having registrations for the MI Mark as a trade mark in, amongst other places, the United States of America, China and India.
The Domain Name is confusingly similar to the MI Mark as it reproduces the letters (without stylisation) of the MI Mark in their entirety, with the addition of the descriptive term, “dealership” and the generic Top-Level Domain (“gTLD”) “.com”, which can be discounted for the purposes of comparison. The addition of a descriptive term to a complainant’s mark does not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Panel finds that the Domain Name is confusingly similar to the Complainant’s MI Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or
(iii) you are making legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.”
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the MI Mark or a mark similar to the MI Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name, the name of the Respondent being a pseudonym chosen for the purpose of registration and not an actual trading name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial use. Rather it appears from the evidence submitted by the Complainant that the Respondent has used the Domain Name to operate a website through which the Respondent passes itself off as the Complainant. From that website the Respondent offers to appoint people as authorized dealers of the Complainant’s products in exchange for a fee. After such a fee is paid, the Respondent ceases all communication with the duped member of the public. Such conduct is fraudulent and is not a bona fide offering of goods or services.
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had an opportunity to rebut the prima facie case that it lacks rights or legitimate interests but has chosen not to do so.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name to the Complainant who is the owners of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its 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 trade mark 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 its website 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 the Respondent’s website or location or of a product or service on the Respondent’s website or location. (Policy, paragraph 4(b)).
The Panel finds that the Respondent was aware of the Complainant at the time the Domain Name was registered. The Domain Name has been used to create a website from which the Respondent explicitly impersonates the Complainant in furtherance of a fraud. The registration of the Domain Name in awareness of the Complainant and its rights in the MI Mark and in the absence of rights or legitimate interests amounts to registration in bad faith.
The Respondent has used the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to the Respondent’s Website, by creating a likelihood of confusion with the Complainant’s MI Mark as to the source, sponsorship, affiliation or endorsement of its website. The Respondent’s Website impersonates the Complainant in order to commit a fraud on individuals who wish to be appointed as official dealers of the Complainant. As such, the Respondent receives a financial reward from Internet users who visit the Respondent’s Website under the impression (created by the Domain Name and the content of the Respondent’s Website) that the Respondent is somehow connected to the Complainant. The Panel finds that such use amounts to use in bad faith.
Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith 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 Domain Name be transferred to the Complainant.
Nicholas Smith
Sole Panelist
Date: March 18, 2019
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