The Complainant is Xiaomi, Inc., China, represented by Fast Lane IP Limited, United Kingdom.
The Respondent is Xiaomi Products, the Netherlands, represented by Wolleswinkel Hofman Advocaten, the Netherlands.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 2, 2021. On November 3, 2021, the Center transmitted by email to SIDN a request for registrar verification in connection with the disputed domain name. On November 4, 2021, SIDN 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 Dispute Resolution Regulations for .nl Domain Names (the “Regulations”).
In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 4, 2021. In accordance with the Regulations, article 7.1, the due date for Response was November 24, 2021. The Center received email communications from the Respondent on November 9, 15, and 18, 2021, and from the Complainant on November 12 and 18, 2021, all concerning the language of the filings and proceedings. The Response was filed with the Center on November 23, 2021.
On November 24, 2021, SIDN commenced the mediation process. On December 22, 2021, and January 26, 2022, SIDN extended the mediation process, until February 25, 2022. On March 14, 2022, SIDN informed parties that the dispute had not been solved in the mediation process.
The Center appointed Alfred Meijboom as the panelist in this matter on March 23, 2022. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2.
4. Factual BackgroundThe Complainant is a consumer electronics manufacturer established in 2010 and based in China, which develops and produces electronic consumer products such as smartphones, apps and other products such as wristbands, scales, headphones, external batteries, cameras and televisions under its trademarks. According to the Complainant, it is currently one of the world’s largest smartphone brands by market-share which sold 146.4 million smartphones in 2020 and has established a leading consumer Artificial Intelligence of Things platform, with 374.5 million smart devices connected to its platform. The Complainant’s products are present in more than 100 countries and regions around the world including the Netherlands, with the official flagship store in Rotterdam.
The Complainant is owner of a portfolio of industrial and intellectual property rights throughout the world, including the following trademarks which are also valid in the Netherlands:
- European Union (“EU”) designation of International Trademark Registration No. 1177611 for XIAOMI, registered on November 28, 2012, for goods and services in classes 9, 35, 38, and 42, including, inter alia, portable telephones, printers, cameras and battery chargers;
- Benelux designation of International Trademark Registration No. 1313041 for XIAOMI, registered on April 14, 2016, for goods and services in classes 7, 11, and 18, including electric cleaning machines, lighting apparatus, electric fans, apparatus for water filtering and umbrellas, backpacks and luggage; and
- International trademark MI with number 1173649, registered on November 28, 2012, for goods and services in classes 9, 35, 38, and 42, including, inter alia, telephone apparatus; video telephones; portable telephones; mobile phone straps; GPS apparatus; hands free kits for phones; loudspeakers; cabinets for loudspeakers and microphones and communications by fiber optic networks; telephone services; communications by telephone; cellular telephone communication, communications by computer terminals;
(hereinafter together referred to as the “Trademark”).
The disputed domain name was registered by the Respondent on February 20, 2016, and resolves to the Respondent’s website which primarily offers the Complainant’s products for sale.
5. Parties’ Contentions A. ComplainantThe Complainant alleges that the disputed domain name is identical and/or confusingly similar to the Trademark because it begins with and incorporates in its entirety the Trademark, followed by the ordinary word “products” and the “.nl” country code, which can be disregarded for purposes of comparing the disputed domain name to the Trademark.
The Complainant further alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name as the Respondent does not own and has not used in good faith any trade marks for XIAOMI or MI, the Respondent did not register the disputed domain name in good faith in association with any goods or services, the disputed domain name was not and is not understood to be the name thereof in Dutch, and the Respondent has not used the disputed domain name in good faith in association with a non‑commercial activity. Further, the Respondent contends that it is inconceivable that the Respondent had not heard of the Complainant or the Trademark and products at the time it registered the disputed domain name, given the global fame of the brand and its existence some years prior to the Respondent’s registration of the disputed domain name; also given the fact that the Respondent’s website sells the Complainant’s smartphones and products, and offers services in connection with these and uses the Complainant’s devices. The Complainant is not affiliated with, nor does it endorse or sponsor the Respondent’s use of the disputed domain name, while the Complainant and the Respondent also have no relationship that would give rise to any license, permission or other right by which the Respondent could own or use any domain name incorporating the Trademark.
The Complainant alleges that the disputed domain name has been registered and is being used in bad faith by the Respondent. In particular because by using the disputed domain name, the Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Trademark 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. According to the Complainant, the Respondent’s use of the Complainant’s MI trademark as favicon and use of the Trademark at the top of the Respondent’s website give the impression that it is run by or affiliated with and/or authorized by the Complainant. According to the Complainant, the note at the footer of the Respondent’s website under the words “Xiaomi Products” that reads “Retailer of Xiaomi products” does not prevent Internet users from having been diverted to the Respondent’s website, nor can it be assumed a user will see and take note of such a statement at the foot of a page. The use of a disclaimer cannot by itself cure bad faith, when bad faith has been established by other factors. In addition, the Complainant claims that the Respondent uses its website to publicize its other websites which offers products competing with those of the Complainant at the “About us” page.
B. RespondentThe Respondent alleges that it was the first party in the Netherlands which focused on sale of the Complainant’s products on the Internet when it started its website under the disputed domain name, which contributed to the Complainant’s reputation in the Netherlands, and it has purchased considerably from the Complainant’s official distributors. According to the Respondent, it has had several discussions with different Dutch directors of the Complainant, and was invited at the Complainant’s Dutch offices. According to the Respondent, the Complainant indicated that the Respondent’s use of its trade name, which includes the Trademark, was not considered problematic.
In response to the Complainant’s allegation that the disputed domain name is identical and/or confusingly similar to the Trademark, the Respondent alleges that, generally speaking, a reseller such as the Respondent, is allowed to use the trade name and trademark to indicate the brands of products the reseller is selling, provided that this is not unlawful and does not create a likelihood of confusion for consumers. In this respect the Respondent claims that its website clearly discloses that the Respondent is an independent retailer of the Complainant’s products. The Respondent also claims that it had registered and used the disputed domain name several years before the Complainant opened an office in the Netherlands or was even active in Europe, at which time the Trademark was only known to real connoisseurs. The Respondent further argues that the Complainant did not yet have a trademark which was protected under Dutch law when the Respondent registered and started using the disputed domain name as the Complainant’s international trademark with no. 1177611 does not designate the Benelux as such, and was subject to opposition proceedings before EUIPO, which resulted in registration of said trademark in 2017, according to the Respondent. Consequently, the Respondent argues the Complainant’s earliest trademark which is protected under Dutch law is international trademark with no. 1313041 which was registered on April 14, 2016, which is predated by the registration of the disputed domain name. The Respondent also claims that its trade name predates that trademark, and that the Complainant, according to Article 2.23 subsection 2 Benelux Convention on Intellectual Property, cannot prohibit the Respondent’s use in the course of trade of a similar sign which draws its protection from a prior right of local scope.
In response to the Complainant’s allegation that the Respondent has no rights or legitimate interests in respect of the disputed domain name, the Respondent alleges that the Respondent and the Complainant had trade contacts during the last five years, so that the Complainant in effect tacitly consented to the Respondent’s use of the disputed domain name. The Respondent also claims it intensively cooperated with the Complainant, and that a representative of the Complainant invited the Respondent to discuss the possibility of further cooperation in 2019.
In response to the Complainant’s allegation that the disputed domain name has been registered and is being used in bad faith by the Respondent, the Respondent alleges that it has not registered the disputed domain name in bad faith because the Complainant did not own a trademark which was protected under Dutch law at that time. The Respondent further alleges that it has not used the disputed domain name in bad faith because the Respondent purchased its products in part from the Complainant’s official distributors who in turn purchase the products from the Complainant, and the Respondent uses the after sales and warranty procedure of the Complainant, which, according to the Respondent, contradicts bad faith. The Respondent contends that both the Complainant and the Respondent have benefited from the Respondent’s business which also illustrates the Respondent’s cooperation with the Complainant’s official distributors.
Finally, the Response contains a settlement proposal.
6. Language of the ProceedingsArticle 17 of the Regulations provides that “[w]henever the complainant or the respondent neither resides nor is registered in the Netherlands, proceedings shall be conducted in the English language. In exceptional circumstances however (such as when both parties appear to have full command of the Dutch language), the Center (subject to the panel’s determination) or panel may decide that proceedings are to be conducted in Dutch, or that the complainant or the respondent may make submissions in Dutch”.
The Complainant is a Chinese company which is neither residing nor registered in the Netherlands. The language of the proceedings is therefore English and the Complainant correctly filed the Complaint in the English language. The Respondent requested the Center in its email of November 9, 2021, to change the language of the proceedings to Dutch as it alleged that both the Complainant and the Respondent are located in the Netherlands. In its email of November 12, 2021, the Center notified the Parties of its preliminary decision, which it stated remained subject to the panel’s determination, that the Parties could file Dutch submissions.
In its email to the Center of November 12, 2021, the Complainant objected against the Center’s decision, as the Complainant is established in China and does not speak Dutch, while the Respondent is conversant in English, for which reasons the Complainant would be unfairly disadvantaged if it would have to translate the Complaint into Dutch. In its email of November 15, 2021, the Respondent argued that the language of the proceedings should be Dutch because the Complainant opened an office in Amsterdam in 2019, established its European headquarters in The Hague in 2020, the Complainant’s Sales Manager Benelux works from the Hague office, the Complainant’s inhouse lawyer is Dutch, and the use of legal English would be burdensome to the Respondent. On November 18, 2021, the Complainant reiterated its claim that the Complainant is established in China and pointed out that the Respondent’s email to the Center was in near-flawless English showing that the Respondent is comfortable communicating in English.
The Panel finds that the Complainant is not established in the Netherlands, and that the Hague headquarters the Respondent mentioned are in fact a Dutch company, Xiaomi Technology Netherlands B.V., which, according to the trade register, was established in October 2018, and is not directly owned or directly managed by the Complainant. According to the correspondence which the Respondent filed with its Response, communication between the Parties had always been in English. The Panel is of the opinion that the Respondent should have substantiated that it would be unreasonably onerous if the submission were to be in English (e.g. LEGO Juris A/S v. M. Moench,
WIPO Case No. DNL2009-0052). The Panel also did not find exceptional circumstances in the record which would justify a change of language to Dutch.
The Panel finds that in this matter the Complainant could have requested the Respondent to submit an English translation of its Response. However, as the subsequent mediation was concluded without the Complainant having asked for a translation, the Panel for practical reasons shall accept the Response in the Dutch language (e.g., Betty Blue S.P.A. v. Hugo Vis,
WIPO Case No. DNL2021-0025), whereby the formal language of proceedings remains English.
Based on article 2.1 of the Regulations, a request to transfer the disputed domain name must meet three cumulative conditions:
a. the disputed domain name is identical or confusingly similar to:
I. a trademark, or trade name, protected under Dutch law in which the Complainant has rights; or
II. a personal name registered in the General Municipal Register (“gemeentelijke basisadministratie”) of a municipality in the Netherlands, or the name of a Dutch public legal entity or the name of an association or foundation registered in the Netherlands under which the complainant undertakes public activities on a permanent basis; and
b. the respondent has no rights to or legitimate interests in the disputed domain name; and
c. the disputed domain name has been registered or is being used in bad faith.
A. Identical or Confusingly SimilarWith regard to the assessment of identity or confusing similarity, it is generally accepted that this test involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”))1 . It is also well established precedent that the Top-Level Domain “.nl” may be disregarded in assessing confusing similarity between the trademark on the one hand and the disputed domain name on the other hand (see, e.g., Roompot Recreatie Beheer B.V. v. Edoco LTD,
WIPO Case No. DNL2008-0008).
As owner of an international trademark which also designated the European Union, the Complainant has rights in a trademark protected under Dutch law. Contrary to the Respondent’s statement, the first element of article 2.1 of the Regulations does not require the trademark protected under Dutch law in which the Complainant has rights to predate the disputed domain name, which would typically be discussed under the third element of article 2.1 of the Regulations (see section 3.8.1 WIPO Overview 3.0).
The disputed domain name incorporates the Trademark in its entirety, with the mere addition of the word “products”, which addition does not prevent a finding of confusing similarity under the Regulations.
Consequently, the Panel finds that the Complainant has satisfied the requirement of article 2.1 sub a. of the Regulations.
B. Rights or Legitimate InterestsArticle 3.1 of the Regulations sets out examples of circumstances through which a respondent may demonstrate that it has rights to or legitimate interests in a domain name for purposes of article 2.1 sub b. of the Regulations.
While the Complainant alleges it has no relationship with the Respondent that would give rise to any license, permission or other right by which the Respondent could own or use the disputed domain name, the Respondent alleged that the Complainant tacitly consented to the Respondent’s use of the disputed domain name as a result of the Respondent having used the disputed domain name to sell the Complainant’s original products for over five years, whilst cooperating with the Complainant. Considering that the alleged cooperation between the Respondent and the Complainant was actually the Respondent buying products from the Complainant’s official distributors, the Panel finds that this does not necessarily imply the Complainant’s tacit consent when the Respondent registered and used the disputed domain name. In this connection, the Panel furthermore does not draw conclusions from the Respondent apparently having been engaged in discussions with Xiaomi Technology Netherlands B.V.; on the one hand the latter is not directly owned or directly managed by the Complainant, but on the other hand this company appears likely to be associated with the Complainant.
Regardless of the foregoing, as the Respondent claims to only sell original products from the Complainant on the website under the disputed domain name, and this website contains a disclaimer which states that the Respondent is an independent retailer of the Complainant’s products, the Panel understands the Respondent to be relying on the case law developed in Oki Data Americas, Inc. v. ASD, Inc.,
WIPO Case No. D2001-0903 (the “Oki Data decision”). In that case the panel set out four criteria in which an authorized sales or service agent of trademarked goods may use the trademark at issue in its domain name. This decision has been confirmed to be of relevance for the Regulations, inter alia,in Seiko EPSON Corporation v. ANEM Computers / ANEM,
WIPO Case No. DNL2010-0024, Maison Louis Latour v. Jos Beeres Wijnkoperij,
WIPO Case No. DNL2011-0074, Bayerische Motoren Werke Aktiengesellschaft v. Quispel Motoren,
WIPO Case No. DNL2013-0026, Mercis B.V. v. Handelsonderneming Karel Donker,
WIPO Case No. DNL2020-0041 and Wahl Clipper Corporation v. Thijs de Kiewit, WAHL?,
WIPO Case No. DNL2021‑0034. The Panel notes that these considerations equally apply to a situation involving an unofficial reseller of genuine goods, which the Respondent appears to be. The essential issue addressed by the Oki Data decision is whether, in such circumstances, there is a bona fide offering of relevant goods or services, and an absence of any associated deception.
To resolve this issue, the Oki Data decision provides the following cumulative criteria:
1. the respondent must actually be offering the goods or services under the trademark; and
2. the respondent must only be offering those goods or services; and
3. the website must accurately and prominently disclose the relationship between the respondent and the trademark owner; and
4. the respondent must not try to take all of the relevant domain names so as to deprive the trademark owner of the ability to register its trademark as a domain name.
As the Respondent has not refuted the Complainant’s allegation, supported in the Complaint’s annexes, that the disputed domain name resolves to a website which also directs visitors to other websites of the Respondent which sell products competing with the Complainant’s products, the Panel notes that the website is being used to advertise other brands as well. Thus at least the second condition of the Oki Data decision has not been met. The Respondent has no rights to or legitimate interests in the disputed domain name when the criteria of the Oki Data case are applied.
With reference to section 2.5.1 WIPO Overview 3.0, the Panel further finds that the choice of the disputed domain name carries a risk of implied affiliation.
Based on the foregoing, the Panel finds that the Respondent has no rights to or legitimate interests in the disputed domain name. The requirement of paragraph 2.1 sub b. of the Regulations has therefore been met.
C. Registered or Used in Bad FaithArticle 2.1 sub c. of the Regulations requires the Complainant to show that the disputed domain name has been registered or is being used in bad faith.
It is undisputed that the Respondent was aware of the Trademark when it registered the disputed domain name. The Complainant’s international trademark with registration no. 1177611, which designates the European Union and therefore also the Netherlands, was filed on November 28, 2012, which is well before the Respondent’s registration of the disputed domain name. The Respondent alleges that the European Union filing of this Trademark had been subject to opposition proceedings which only ended on February 10, 2017, so that the Trademark was registered after the Respondent registered the disputed domain name and after the Respondent’s first use of its trade name. However, a trademark is protected as from the filing date (November 28, 2012) when it is registered. Further, the Respondent did not file evidence of the first use of its trade name, which is identical to the disputed domain name. Instead, the Panel checked the trade register and found that the Respondent was established on August 1, 2016, and infers therefrom that the Respondent’s trade name was first established on or after that date. Because the disputed domain name had already been registered at that time, and the Complainant’s international trademark with number 1313041, which was registered on April 14, 2016, predates the Respondent’s trade name, just like the Complainant’s international trademark with registration no. 1177611, the Respondent cannot rely on its trade name as a prior right of local scope.
As the Panel has already found the disputed domain name to be confusingly similar with the Trademark, and the Respondent not having rights to or legitimate interests in the disputed domain name, the Panel is satisfied that the disputed domain name is being used to gain commercial advantage by directing Internet users to a website, using the likelihood of confusion with the Trademark (see also Koninklijke Verkade N.V. v. Mr Brader,
WIPO Case No. DNL2021-0020).
Consequently, the requirement of article 2.1 sub c. of the Regulations has also been met.
7. DecisionFor all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the domain name
Alfred Meijboom
Panelist
Date: April 6, 2022
1 In view of the fact that the Regulations are to a large extent based on the Uniform Domain Name Dispute Resolution Policy (“UDRP”), it is well established that cases decided under both the Regulations and the UDRP are relevant to this proceeding (see, e.g., Aktiebolaget Electrolux v. Beuk Horeca B.V.,
WIPO Case No. DNL2008-0050).