The Complainants are Guangdong OPPO Mobile Telecommunications Corp., Ltd. of Dongguan, China (“Complainant 1”), and Realme Chongqing Mobile Telecommunications Corp., Ltd. of Shenzhen, China (“Complainant 2”), together “the Complainants”, represented by Bettinger Rechtsanwälte, Germany.
The Respondent is Rahul Kumawat of Thanagajhee, India. 2. The Domain Name and Registrar
The disputed domain name (the “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 March 1, 2019. On March 1, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 1, 2019, 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 and contact information for the Domain Name.
The Center verified that the 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 8, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 28, 2019. On March 29, 2019, the Respondent sent an email communication to the Center stating that it was willing to close the website in exchange for money. As no formal Response was received by the Response due date, the Center notified the Parties on March 29, 2019, that it would proceed to appoint the Administrative Panel. On March 30, 2019, the Respondent sent an email communication to the Center stating it had permanently deleted the website at the Domain Name. In response to the Respondent’s email, the Center sent an email communication to the Parties on April 1, 2019, inquiring whether they would like to explore settlement negotiations. No suspension of the proceedings was requested from the Complainants.
The Center appointed Mathias Lilleengen as the sole panelist in this matter on April 15, 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
Complainant 1 is a Chinese consumer electronics and mobile communication company, known for its smartphones, Blu-ray players and other electronic devices. Complainant 1 was the top smartphone brand in China in 2016 and was ranked as the number 4 smartphone brand globally since 2016. Complainant 2 is an affiliate company of Complainant 1. Complainant 2 was officially established on May 4, 2018. Complainant 2’s company Name, “Realme”, was formerly a sub-brand of Complainant 1 until Complainant 2 became an independent company that launched its first phone in India, Realme 1, in May 2018. In September 2018, sales reached one million Realme 2 mobile phones. Today, Realme is the 3rd largest smartphone brand in India. Complainant 2 has promoted its mobile phones in India under the domain name and and on its social media platforms Facebook, Instagram and YouTube since April 2018. Complainant 2 owns also various other domain names consisting of the term “realme” and descriptive elements such as , , and .
Complainant 1 owns trademark registrations in the term REAL ME in China since 2018 and has filed trademark applications for REALME and REAL ME in other countries (see, for example, Chinese trademark registration no. 8959134 for REAL ME, registered December 28, 2018). Complainant 2 owns trademark registrations in the term REALME in New Zealand (see, for example, New Zealand trademark registration no. 1093251 for REALME, registered October 30, 2018), and filed a trademark application in India on April 22, 2018. It is yet to be analyzed by the Indian trademark office.
According to the Registrar, the Domain Name was registered on October 10, 2018. Before notification to the Respondent of the dispute, the Respondent was using the Domain Name for a website which promoted and offered for sale trademarked smartphones of Complainant 2. At the time of drafting the Decision, the Domain Name resolved to an error page. 5. Parties’ Contentions A. Complainant
The Complainants have registered trademark rights in the terms “Realme” and “Real me”, and argue, based on extensive use, common law trademark rights. Pursuant to the Complainants, the Domain Name is confusingly similar to the Complainants trademark rights. The addition of the descriptive term “phone” does not distinguish the trademark. The Domain Name is confusingly similar to the trademarks.
The Complainants submit that the Respondent has no rights or legitimate interests in the Domain Name. The Respondent has not been allowed by the Complainants to make any use of their trademarks. The Complainants further assert that the Respondent is unable to invoke any of the circumstances set out in paragraph 4(c) of the Policy, in order to demonstrate rights or legitimate interests in the Domain Name. The fact that the Respondent has used the Domain Name to resell products of Complainant 2, does not entitle the Respondent to register and use the Domain Name. The Respondent has never been authorized by the Complainants to resell their products in India or anywhere else. Moreover, the Respondent’s use of the Domain Name does not meet the Oki Data test as the Respondent has not only used the Domain Name to sell trademarked smartphones of the Complainants but also displayed Complainant 2’s advertising campaigns, promotional tweets from the Complainants’ twitter account, as well as promotional news from the Complainants’ Facebook account. This creates a false impression as to the source or affiliation of the Respondent’s website. The Respondent did also not employ a disclaimer or other text accurately and prominently disclosing the Respondent’s relationship with the Complainants. The Respondent’s use of the Domain Name can therefore not be considered as a bona fide offering of goods or services.
The Complainants’ trademark is distinctive and has been continuously and extensively used since May 2018 in India where the Respondent is located. The Complainants argue that, given the Complainants’ renown and the fact that the Respondent is reselling trademarked goods of Complainant 2, it is inconceivable that the Respondent did not have knowledge of the Complainants when the Respondent registered the Domain Name. As the Domain Name consists of the REALME trademark in its entirety with the mere addition of the descriptive term “phone” it is evident that the Respondent could not have chosen the Domain Name for any reason other than to deliberately cause confusion amongst Internet users in order to take unfair advantage of the Complainants’ goodwill. The Respondent’s use of the Domain Name to redirect Internet users to a website offering the Complainants’ smart phones constitutes strong evidence of bad faith use. B. Respondent
The Respondent did not submit a formal reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainants have established rights in the trademarks REALME and REAL ME. The test for confusing similarity involves the comparison between the trademark and the Domain Name. In this case, the Domain Name incorporates in its entirety the Complainants’ trademark. The addition of “phone” does not avoid a finding of confusing similarity. For the purpose of assessing confusing similarity, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) “.com”, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.
The Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainants have rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainants have made unrebutted assertions that they have not granted any authorization to the Respondent to register domain names containing the Complainants’ trademark or otherwise make use of the mark. Based on the evidence, the Respondent is not affiliated or related to the Complainant in any way. There is no evidence that the Respondent has registered the Domain Name as a trademark or acquired unregistered rights. There is no evidence of the Respondent’s use of, or 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. The Panel agrees with the Complainants. The fact that the Respondent has used the Domain Name to resell products of Complainant 2, does not entitle the Respondent to register and use the Domain Name. The Respondent has never been authorized by the Complainants to resell their products, and the Respondent’s use creates a false impression as to the source or affiliation of the Respondent’s website, and there is no disclaimer or other text accurately and prominently disclosing the Respondent’s relationship with the Complainants. Moreover, the Domain Name’s composition is such that is effectively impersonates or suggests sponsorship or endorsement by the Complainant (see WIPO Overview 3.0, section 2.5.1). The Respondent’s use is not bona fide.
The Panel finds the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Taking into account the Complainants’ fame and the Respondent’s use of the Domain Name, the Panel concludes that the Respondent knew of the Complainant and its business when it registered the Domain Name. In this respect, the Panel notes that the Complainants’ trademark has been used continuously and extensively since before the registration of the Domain Name.
The Respondent has attempted to attract Internet users to the Respondent’s website for commercial gain by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. Furthermore, as previously mentioned, the Domain Name’s composition is such that it effectively impersonates or suggests sponsorship or endorsement by the Complainant.
Moreover, the Respondent’s reply to the Complainants’ cease-and-desist letter, offering to delete the website upon receipt of USD 100,000, further underlines the Respondent’s bad faith.
The Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning of 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 Complainant 2.
Mathias Lilleengen
Sole Panelist
Date: April 23, 2019
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