The Complainant is AVX Corporation, United States of America (“United States”), represented by Edward J. Epstein, China.
The Respondent is Yang ShuHua (杨树桦), China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on June 25, 2020. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 29, 2020, 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. On the same day, the Center sent an email communication to the Complainant 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 in English on July 2, 2020. On June 29, 2020, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on July 2, 2020. The Respondent did not comment on the language of the proceeding. 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 in both English and Chinese, and the proceedings commenced on July 7, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 27, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 28, 2020. The Center appointed Matthew Kennedy as the sole panelist in this matter on August 10, 2020. 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 manufactures and distributes electronic components, including ceramic capacitors, worldwide. The Complainant holds multiple trademark registrations, including United States trademark registration number 0936515 for AVX in a stylized form (the “AVX logo”), registered on June 27, 1972, specifying electrical capacitors in class 9, and Chinese trademark registrations numbers 1981810, 1981818 and 1981819, all for AVX, all registered on December 21, 2002 and each specifying particular types of electronic products in class 9. Those trademark registrations remain current. The Respondent is an individual resident in China. The disputed domain name was created on October 17, 2018. At the time of the Complaint, it resolved to a website that prominently displayed the AVX logo, introduced the business of “AVX” under the heading “AVX Capacitors MLCC - AVX-Stock.com” accompanied by an image of one of the Complainant’s production facilities and displayed specifications for the Complainant’s products together with buttons to request quotes. A notice at the bottom of the website stated that “AVX-Stock.com is Distributor of Electronics Ceramic Capacitor MLCC”. At the time of this decision, the disputed domain name no longer resolves to any active website; rather, it is passively held. 5. Parties’ Contentions A. Complainant The disputed domain name is confusingly similar to the Complainant’s AVX trademark. The inclusion of the word “stock” does not distinguish AVX in the disputed domain name from the trademark. The hyphen is of no significance. The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has used the disputed domain name to establish a fake website in the name of AVX that falsely suggests it is the trademark owner. The Complainant has not granted a licence or any authorization to the Respondent to use any of the AVX trademarks or images not to offer for sale or carry on business in AVX products. The disputed domain name was registered and is being used in bad faith. The display of the Complainant’s name, trademark and images on the website associated with the disputed domain name clearly shows that the Respondent had full knowledge of the Complainant when registering and using the disputed domain name. The Respondent clearly intended to attract consumers to the website to promote unauthorized sales of the Respondent’s products. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. 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 Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese. The Complainant requests that the language of the proceeding be English. Its main arguments are that translation of the Complaint into Chinese would cause delay and incur extra cost and that the Respondent does business in English, as the website associated with the disputed domain name is in English and invites correspondence in English. Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293. The Panel observes that in this proceeding the Complaint and amended Complaint were filed in English. The website associated with the disputed domain name was in English, from which it is reasonable to infer that the Respondent is familiar with that language. The Center sent the email regarding the language of the proceeding and notice of the Complaint to the Respondent’s contact addresses in both Chinese and English. The Respondent has not expressed any interest in participating in this proceeding. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay. Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. The Panel would have accepted a Response in Chinese, but none was filed. 6.2 Substantive Issues Paragraph 4(a) of the Policy provides that a complainant must prove each of the following elements: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and A. Identical or Confusingly Similar Based on the evidence submitted, the Panel finds that the Complainant has rights in the AVX trademark. The disputed domain name incorporates the AVX trademark as its initial element. It also includes the element “stock” separated from AVX by a hyphen. However, as a mere dictionary word, the Panel does not consider that this element is capable of distinguishing the disputed domain name from the trademark for the purposes of the first element of the Policy. See Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110. The trademark remains clearly recognizable within the disputed domain name. The only other additional element in the disputed domain name is a generic Top-Level Domain (“gTLD”) suffix (“.com”), which is a technical requirement of domain name registration. A gTLD suffix is disregarded in the comparison between a disputed domain name and a trademark for the purposes of the first element of the Policy unless it has some impact beyond its technical function, which is not the case here. Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy: (i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or (ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or (iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. As regards the first circumstance above, the disputed domain name formerly resolved to a website that displayed the Complainant’s AVX logo and offered for sale the Complainant’s products. The Complainant submits that it has not granted a licence or any authorization to the Respondent to use any of the AVX trademarks or images nor to offer for sale or carry on business in AVX products. While there was a notice at the bottom of the website that “AVX-Stock.com is Distributor of Electronics Ceramic Capacitor MLCC”, the Panel understands this to be merely a statement of the type of product that the Respondent distributes, where “MLCC” is an acronym for “Multilayer Ceramic Capacitor”. There was no disclaimer on the website indicating that the Respondent had no relationship with the Complainant; on the contrary, the presentation of the Complainant’s business gave the false impression that it was an affiliate. Regardless of whether the products offered for sale were genuine or not, these facts show that the Respondent’s use of the disputed domain name was not in connection with a bona fide offering of goods or services as envisaged by the first circumstance of paragraph 4(c) of the Policy. See Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. Further, the disputed domain name is now passively held, which is not a bona fide offering of goods or services either. As regards the second circumstance above, the name of the Respondent is “Yang ShuHua (杨树桦)”, not the disputed domain name. Although the website associated with the disputed domain name makes reference to “AVX-Stock.com” in a title and a footer, there is no evidence indicating that the Respondent has been commonly known by the disputed domain name as envisaged by the second circumstance of paragraph 4(c) of the Policy. As regards the third circumstance above, the disputed domain name formerly resolved to a website that offered products for sale and invited requests for quotes, and it is now passively held. Neither is a legitimate noncommercial or fair use of the disputed domain name covered by the third circumstance of paragraph 4(c) of the Policy. In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent failed to rebut that case because he did not file any substantive response to the Complainant’s contentions. Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows: “(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location.” The disputed domain name was registered in 2018, many years after the Complainant obtained its trademark registrations for AVX, including in China, where the Respondent is resident. The disputed domain name incorporates the Complainant’s AVX trademark as its initial element, combining it only with the dictionary word “stock” separated by a hyphen, and a gTLD suffix. The website to which the disputed domain name formerly resolved prominently displayed the Complainant’s AVX logo, provided information on the Complainant, an image of the Complainant’s production facility and offered the Complainant’s products for sale. In view of these circumstances, the Panel considers it likely that the Respondent was aware of the Complainant and its AVX trademark at the time that he registered the disputed domain name and that he registered the disputed domain name in bad faith. The Respondent used the disputed domain name in connection with a website that was falsely presented as a website affiliated with the Complainant and that offered for sale the Complainant’s products. Given these facts and the findings at Section 6.2B, the Panel finds that the disputed domain name operated by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the website or the products offered for sale on it. This use of the disputed domain name was intentional and for commercial gain as contemplated by paragraph 4(b)(iv) of the Policy. The Panel notes that the use of the disputed domain name has changed and that it no longer resolves to an active website. This does not alter the Panel’s conclusions and may constitute a further indication of bad faith. Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) 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 Matthew Kennedy
Sole Panelist
Date: August 17, 2020
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