The Complainant is Xiaomi, Inc., China, represented by King & Wood Mallesons, China.
The Respondent is Rohit Malik, J M Impex Inc., India, represented by Sharma Shyam Sunder, India.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 16, 2021. On December 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 17, 2021, 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 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 December 28, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 17, 2022. The Response was filed with the Center on January 17, 2022.
The Center appointed Antony Gold as the sole panelist in this matter on January 28, 2022. 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 BackgroundThe Complainant is a Chinese consumer electronics company that develops and produces smartphones, and other consumer electronics products. The Complainant distributes its products through physical stores as well as through via its website at “www.mi.com” and other online stores. Its global sales for 2020 were in the region of CNY 245.9 billion (approximately USD 38.7 billion). The Complainant spent approximately CNY 5.5 billion (approximately USD 0.87 billion) on advertising and promotion in the same period.
The Complainant’s principal brand is Xiaomi and it has secured trade mark registrations in many countries to protect this trading style. These include, by way of example only, Indian trade mark, registration number 2343902, for XIAOMI, in multiple classes, including class 9 (which includes portable computers and telephone apparatus), registered on June 6, 2012. The Complainant additionally owns many domain names which comprise or include its XIAOMI mark, including
The disputed domain name was registered on June 8, 2020. It does not resolve to an active website. A search for the disputed domain name on the website of the Registrar indicates that the disputed domain name is already registered but adds that “We still might be able to get it for you. See How” and a broker service fee is quoted. At some point after the registration of the disputed domain name, the Respondent sent a message to the Complainant stating “I’m Rohit Malik, we own domain name xiaomiev.com, if interested please tell your team to get in touch”.
5. Parties’ Contentions A. ComplainantThe Complainant says that the disputed domain name is identical or confusingly similar to a trade mark in which it has rights. It draws attention to its trade marks for XIAOMI, full details of one of these marks having been set out above, and says that its mark has a high degree of reputation worldwide, including in China and India. The most distinctive component of the disputed domain name is “xiaomi”, so the disputed domain name may mislead the public into confusing it with the Complainant and its marks.
The Complainant says also that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant owns trade mark registrations for XIAOMI in both India and China whereas the Respondent has not applied for a trade mark registration for XIAOMI in any classes of goods or services. The Complainant has never authorized or licensed the Respondent to use its trade mark or to register the disputed domain name, nor does it have any other form of relationship with the Respondent. The Respondent has no intention to use the disputed domain name, nor is it making a legitimate noncommercial or fair use of it, nor is it commonly known by the disputed domain name.
Lastly, the Complainant says that the disputed domain name was registered and is being used in bad faith. The fact that the Respondent is willing to sell the disputed domain name, and approached the Complainant to see if it wished to purchase it, indicates that it was registered by the Respondent primarily for the purpose of selling it to the Complainant, or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to it. In addition, the fact that the disputed domain name does not resolve to a specific website indicates that the Respondent registered it with the intention of preventing the Complainant from reflecting its mark in a corresponding domain name rather than for possible noncommercial or fair use.
B. RespondentThe Respondent asserts that Mr. Malik is one of the directors of M/s Remark Electric Vehicles Pvt. Ltd., a manufacturer of electric scooters. For this reason, the Respondent used the term “ev”, which is an abbreviation for “electric vehicle”, as a component of the disputed domain name. The Respondent registered the disputed domain name with the intention of using it for its future expansion of business into electric vehicles. The word “xiaomi” cannot be the proprietary right of a single entity in relation to electric business and there are other entities in other countries who have used this term prior to the Complainant on similar goods.
The Respondent asserts that Mr. Malik is one of the directors of M/s Remark Electric Vehicles Pvt. Ltd., a manufacturer of electric scooters. For this reason, the Respondent used the term “ev”, which is an abbreviation for “electric vehicle”, as a component of the disputed domain name. The Respondent registered the disputed domain name with the intention of using it for its future expansion of business into electric vehicles. The word “xiaomi” cannot be the proprietary right of a single entity in relation to electric business and there are other entities in other countries who have used this term prior to the Complainant on similar goods.
The word “xiaomi” literally means “millet and rice” and is based on the Buddhist concept of starting from the bottom before aiming for the top. This reflects the philosophy of the Respondent and its business and is why the Respondent chose to use this word, without any bad faith intent, as part of its domain name.
The businesses of the Complainant and Respondent are entirely dissimilar and there is no scope for confusion between them. The Respondent’s adoption of the disputed domain name is honest, concurrent, and done without understanding the ramification of such adoption since it is a small time trader engaged in business on a very small basis and cannot pose any threat to a company of the Complainant’s size. Furthermore, the Complainant’s goods are provided to consumers under the mark “MI” and the Complainant’s domain name
The Respondent does not deny contacting the Complainant but he does deny registering the disputed domain name for the purpose of selling it to the Complainant or a competitor of the Complainant. As at the time the disputed domain name was registered, there was no mention of the Complainant entering the business of electric vehicles. The Complainant is trying to prevent the Respondent from continuing its honest and legitimate commercial practice. The disputed domain name has not so far been used for any business and therefore cannot be considered to be used in bad faith.
6. Discussion and FindingsParagraph 4(a) of the Policy provides that the Complainant proves each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain name is identical or confusingly similar to a trade mark 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
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly SimilarThe Complainant has provided evidence of its trade mark registrations for XIAOMI, including the mark in respect of which full details are provided above. It has thereby established its rights in this mark.
When comparing the Complainant’s mark and the disputed domain name, the Top Level Domain “.com” is not taken into account as it is a technical requirement of registration. The disputed domain name comprises the Complainant’s mark, in full and without alteration, and adds to it the suffix “ev”. These additional letters do not prevent the disputed domain name from being found to be confusingly similar to the Complainant’s mark. As explained at section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”): “Where the relevant trade mark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”
The Complainant’s XIAOMI mark is recognizable within the disputed domain name. The Panel accordingly finds that it is confusingly similar to a trade mark in which the Complainant has rights.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy provides, without limitation, examples of circumstances whereby a respondent might demonstrate that it has rights or legitimate interests in a domain name. In summary, these are: if a respondent has used, or made demonstrable preparations to use, the domain name in connection with a bona fide offering of goods and services; if a respondent has been commonly known by the domain name or a name corresponding to the domain name; or if a respondent has made a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark in issue.
The Respondent’s case is that it intends to make good faith use of the disputed domain name for the purpose of a website to be used in connection with the sale of electric vehicles. As the Respondent has not made actual use of the disputed domain name, it is necessary to consider whether it has made demonstrable preparations to do so. Section 2.2 of the WIPO Overview 3.0 provides examples of what might constitute satisfactory evidence from a respondent in this respect. These include, by way of example, (i) evidence relating to the formation of a respondent’s business such as due diligence, legal advice or correspondence, (ii) evidence of credible investment in website development or promotional materials such as advertising, letterhead, or business cards, and (iii) proof of a genuine business plan utilizing the domain name, and credible signs of its pursuit. Section 2.2 of WIPO Overview 3.0 adds that: “while such indicia are assessed pragmatically in light of the case circumstances, clear contemporaneous evidence of bona fide pre-complaint preparations is required.”
No evidence, whether of this specific type or otherwise, has been provided by the Respondent in support of its vague claim that it registered the disputed domain name “with the intention to use the same for its business of electric vehicles”. In particular, no explanation has been offered as to why, over 18 months after registration, the disputed domain name still does not resolve to an active website and no details have been provided as to the nature of any preparations made by the Respondent in connection with the planned launch of its business. Nor has the Respondent explained the actual business of the Respondent, J M Impex Inc., when it appears that it is a separate company with which Mr. Malik is involved, M/s Remark Electric Vehicles Pvt. Ltd., which develops electric scooters. Moreover, the Respondent’s claims as to the scale and scope of its business are inconsistent; the Response asserts both that the Respondent is “an electric scooter manufacturer at the forefront of the e-revolution” and “a quality trader of the country with a global vision”, but elsewhere that it comprises “small time traders who are engaged in the business on a very miniscule basis”. Finally, the Respondent has not produced any evidence to support its assertion that the Complainant has no goodwill or reputation in the word “Xiaomi” or that XIAOMI is not distinctive of the Complainant’s products. In any event, these claims are demonstrably incorrect in the light of the Complainant’s evidence as to the widespread use of its XIAOMI mark for mobile telephones.
The Respondent’s explanation that it chose to use the name “xiaomi” because: “The name ‘xiaomi’ literally means millet and rice, and is based on the Buddhist concept of starting from the bottom before aiming for the top” is undermined by the fact that these words appear to have been copied verbatim from the Complainant’s Wikipedia entry.1 In any event, as further discussed under the third element, the Panel finds it is more likely than not that the Respondent registered the disputed domain name because of its significance as a trademark owned by the Complainant rather than for its literal meaning. Finally, whilst it is unclear whether the notice on the website operated by the Registrar, suggesting that the disputed domain name might be for sale, was placed with the knowledge and approval of the Respondent, the Respondent’s communication to the Complainant, inviting its interest in purchasing the disputed domain name, provides unambiguous evidence of the Respondent’s desire to sell it. It is not possible to reconcile the Respondent’s conduct in this respect with its claim to require the disputed domain name for use in its business, nor does the Respondent attempt to explain this contradiction.
In summary, the Respondent’s case in respect of its planned use of the disputed domain name is both inherently implausible and unsupported by evidence. The Panel, accordingly concludes that there is no genuine intention by it to use it for any bona fide offering of goods and services; see, by way of example, Chocolaterie Guylian, Naamloze Vennootschap (N.V.) v. Zeugma,
WIPO Case No. D2010-2256.
There is no evidence to indicate that the Respondent has been commonly known by the disputed domain name and the second circumstance set out at paragraph 4(c) of the Policy is therefore inapplicable. Nor is the third circumstance applicable; non-use of the disputed domain name does not amount to a legitimate noncommercial or fair use of it. Finally, there is no information in the Response which would support a claim by the Respondent to rights or a legitimate interest in the disputed domain name on any other basis.
The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad FaithThe Complainant has provided evidence that as at the date of the registration of the disputed domain name the scale of its global operations was significant. This includes in India, where the Respondent is based and where, by 2020, the Complainant’s range of Xiamoi-branded mobile phones had apparently been ranked number one for thirteen successive quarters and had a market share of 27.4%. Against this background, it is not possible to conceive that the Respondent was unaware of the Complainant’s mark as at the date of its registration. The lack of any plausible good faith explanation by the Respondent for its registration of the disputed domain name points to the Respondent’s underlying intention to have been to take advantage in some way of the Complainant’s repute in its mark. This is the case irrespective of whether the Complainant had entered the market for electric vehicles as the distinctive character and repute of the Complainant’s mark and the confusing similarity to it of the disputed domain name is such that Internet users are inherently likely to associate it with the Complainant, particularly in view of the fact that the letters “ev” are apt to suggest that it is used in the field of consumer electronics. As explained at section 3.1.4 of the WIPO Overview 3.0: “[p]anels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trade mark by an unaffiliated entity can by itself create a presumption of bad faith.” See also, by way of example, Bytedance Ltd. v. WhoisGuard Protected, WhoisGuard, Inc. / Lawal Babatunde,
WIPO Case No. DCO2020-0096. The Panel therefore finds the registration of the disputed domain name to have been in bad faith.
In considering the question of bad faith use, the Panel takes account of the failure by the Respondent to make any use of the disputed domain name, its inability to provide a credible, evidence-backed, account of its future intentions with respect to it and its invitation to the Complainant to purchase it. With these factors in mind, the Panel concludes that the Respondent has registered and acquired the disputed domain name primarily for the purpose of selling it to the Complainant or a third party for valuable consideration likely in excess of its out-of-pocket costs directly related to the disputed domain name. Additionally, the fact that the Respondent is not using the disputed domain name does not prevent a finding of bad faith under the doctrine of passive holding; see, for example Ladbrokes Betting & Gaming Limited v. mehdi bouksila,
WIPO Case No. D2021-3381.
The Panel therefore finds that the disputed domain name was registered and is being used in bad faith.
7. DecisionFor 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
Antony Gold
Sole Panelist
Date: February 11, 2022
1 As explained at section 4.8 of the WIPO Overview 3.0: “Noting in particular the general powers of a panel articulated inter alia in paragraphs 10 and 12 of the UDRP Rules, it has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision.” In order to understand more about the parties’ businesses, the Panel has accordingly visited their respective websites and the Complainant’s Wikipedia entry.