WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Atmel Corporation v. Shenzhen Nanhuang Electronics Co. Ltd., Shenzhen Nanhuang Electronics Co. Ltd. and Zhou Qunhui, Shenzhenelectronicsco.ltd
Case No. D2013-2055
1. The Parties
The Complainant is Atmel Corporation of San Jose, California, United States of America (“US”), represented internally.
The Respondents are Shenzhen Nanhuang Electronics Co. Ltd., Shenzhen Nanhuang Electronics Co. Ltd. and Zhou Qunhui, Shenzhenelectronicsco.ltd of Shenzhen, Guangdong, China.
2. The Domain Names and Registrars
The disputed domain names <atme-ic.com>, <atmeil.com> and <atmelic.com> (“together the Domain Names”) are registered with ChinaNet Technology (SuZhou) CO., LTD, Jiangsu Bangning Science & technology Co. Ltd. and Shanghai Yovole Networks, Inc. respectively (together “the Registrars”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 27, 2013. On November 28, 2013, the Center transmitted by email to the Registrars a request for registrar verification in connection with the Domain Names. On November 29, 2013, the Registrars transmitted by email to the Center their verification response confirming that the Respondents are listed as the registrant and providing the contact details.
On December 11, 2013, the Center transmitted to the parties in both English and Chinese regarding the language of proceedings. On the same day, the Complainant confirmed its request that English be the language of proceedings by email. The Respondents did not submit any comments on the language of proceedings within the specified due date.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint in Chinese and English, and the proceedings commenced on December 17, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 6, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 7, 2013.
The Center appointed Karen Fong as the sole panelist in this matter on January 21, 2014. 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, a US company, was founded in 1984. Since then it has grown to become a worldwide leader in the design and manufacture of integrated circuits including microcontrollers, advanced logic, mixed-signal, nonvolatile memory, radio frequency components, and capacitive touch solutions. The Complainant has over 5,000 employees worldwide. In China, the Respondent’s principal place of business, the Complainant has 10 sales offices, and at least 12 distributors with offices all throughout China.
The Complainant is the owner of the mark ATMEL, and has been using the ATMEL mark for the past 28 years in connection with the operation of its business and the sale of its products and services. Specifically, the Complainant has used the word mark ATMEL since August 1985, and the stylized version of the ATMEL mark since December 1991 (collectively “the ATMEL Marks”). The Complainant owns a number of trademark registrations, which incorporate its ATMEL Marks in many countries world wide, including the USA and China. The earliest trade mark filed in evidence was registered in 1989.
The official website for the Complainant is located at “www.atmel.com”. The Complainant also owns and operates URLs for its Chinese customers, including the following URLs: “www.atmel.com/zh/cn”, “www.atmel.cn”, and “www.atmel.xn--fiqs8s”. The Complainant’s sales under the ATMEL Marks have been extensive, with net revenues in 2012 exceeding USD 1.4 Billion . Of that total, over USD 800 Million of revenue was generated from customers in Asia. Products sold under the ATMEL Marks have received many awards worldwide, including in the United States and China.
The Domain Names were registered between December 25, 2012 and May 20, 2013. All three websites connected to the Domain Names (“the Websites”) displayed the ATMEL Marks including the stylized version of the ATMEL Marks. Further the Websites reproduce a number of aspects of the Complainant’s website at “www.atmel.com”, translated into Chinese. One of the Websites “www.atme-ic.com” appears to be in the English language. As at the date of the writing of this decision, only the website at “www.atmeil.com” is active.
5. Parties’ Contentions
The Complainant contends that the Domain Names are identical or confusingly similar to the ATMEL Marks, the Respondents have no rights or legitimate interests with respect to the Domain Names, and that the Domain Names were registered and used in bad faith. The Complainant requests transfer of the Domain Names, all of which it believes are related and under management and control of a single entity.
The basis of its belief that the Respondents are related and under management and control of a single registrant are as follows:
1. Shenzhen Nanhuang Electronics Co. Ltd. is the owner of the Domain Names <atmelic.com> and <atme-ic.com> whilst the owner of <atmeil.com> is “Shenzhenelectronicsco.ltd.” If the words in the name are separated, it would read Shenzhen Electronics Co. Ltd, which is almost identical to the name of the owners of the other two Domain Names.
2. The individual Qunhui Zhou or Zhou Qunhui appears on each of the WhoIs results as either the Registrant or Administrative contact for each of the Domain Names.
3. The postal address for each of the Domain Names list an address in Guangdong, China, with identical postal code.
4. The phone and fax number for <atmelic.com> and <atme-ic.com> are exactly the same. The third Domain Name <atmeil.com> contains the same country code ( for China) and fixed area code ( for Shenzhen). The remainder of the phone number is false as the remaining digits are all “0”.
5. The Websites are all very similar. They all claim to be an authorized distributor of the Complainant. They all copy the same information from the Complainant’s “About Atmel - Fact Sheet” section on the Complainant’s legitimate website. Finally, they all contain the same red, white and blue logo on the top left corner.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that:
(i) The Domain Names are 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 Domain Names; and
(iii) The Domain Names were registered and being used in bad faith.
B. Preliminary Procedural Issue - Consolidation of Proceedings
Paragraph 4(f) of the Policy allows a panel to consolidate multiple disputes between parties at its sole discretion and paragraph 10(e) of the Rules empowers a panel to consolidate multiple domain name disputes in accordance with the Policy and the Rules. Neither the Policy nor the Rules expressly provide for the consolidation of multiple respondents in a single administrative proceeding. In fact, paragraph 3(c) of the Rules provides that a complaint may relate to more than one domain name provided that the domain names are registered by the same domain name holder. The panel in Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281 reviewed the relevant UDRP decisions in relation to consolidation in multiple respondents’ cases and extracted the following general principles:
1. Consolidation of multiple registrants as respondents in a single administrative proceeding may in certain circumstances be appropriate under paragraphs 3(c) or 10(e) of the Rules provided the complainant can demonstrate that the disputed domain names or the websites to which they resolve are subject to common control, and the panel having regard to all of the relevant circumstances, determines that consolidation would be procedurally efficient and fair and equitable to all parties.
2. The administrative provider should act as a preliminary gatekeeper in such cases by determining whether or not such complaints fulfill the requisite criteria. Once a case is admitted on a prima facie basis, the respondent has the opportunity to make its submissions on the validity of the consolidation together with its substantive arguments. In the event that the panel makes a finding that the complaint has not satisfied the requisite criteria, the complainant is not precluded from filing the complaint against the individual named respondents.
In the present case, one of the Domain Names incorporates the Complainant’s well-known ATMEL Marks in its entirety, and two of the Domain Names are misspellings of the ATMEL Marks. They each resolved to the Websites which are very similar to each other prominently displaying the Complainant’s stylised ATMEL Marks and house colours. The Websites also use content from the Complainant’s official website. Shenzhen Nanhuang Electronics Co. Ltd. is the owner of the Domain Names <atmelic.com> and <atme-ic.com> and the owner of <atmeil.com> is “Shenzhenelectronicsco.ltd.” If the words in the name of the latter are separated, it would read Shenzhen Electronics Co. Ltd, which is almost identical to the name of the owners of the other two Domain Names. The individual Qunhui Zhou or Zhou Qunhui appears on each WhoIs as either the Registrant or Administartive contact for each of the Domain Names. The postal address for each of the Domain Names list an address in Guangdong, China. The Panel also notes that the Complainant has a decision in its favour in connection with a previously filed UDRP complaint against one of the Respondents, Shenzhen Nanhuang Electronics Co. Ltd and the co-owner of the domain name <atmel-chip.com> Wang Xing Xing Ltd (Atmel Corporation v. Shenzhen Nanhuang Electronics Co. Ltd. / wang xingxing, WIPO Case No. D2012-2438 - “Prior Proceeding”).
All of this point to the Complainant being the target of common conduct based on the registration and use of the Domain Names and that such conduct interferes with the Complainant’s rights in the ATMEL Mark. Furthermore, the Complainant’s claims against the Domain Names involve common questions of law and fact.
The Respondents had the opportunity but did not respond substantively to the Complaint.
Accordingly, applying the principles to the facts in this case, the Panel finds that the Complainant has established more likely than not that the Domain Names are subject to common ownership or control. The Panel finds such common control to justify consolidation of the Complainant’s claims against the registrants of the Domain Names in this proceeding. The Panel further concludes in the circumstances of this case that consolidation would be fair and equitable to all parties and procedurally efficient, and therefore will allow the consolidation as requested by the Complainant pursuant to paragraph 10(e) of the Rules.
C. Preliminary Procedural Issue – Language of the Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the 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 proceedings. According to the information received from the Registrars, the language of the three registration agreements is Chinese.
The Complainant submits in paragraph 10 of the Complaint that the language of the proceeding should be English for the following reasons:
(1) The Complainant being a US corporation is not conversant in the Chinese language;
(2) The Domain Names are comprised of Latin characters;
(3) The Domain Names do not carry any specific meaning in the Chinese language;
(3) The Respondents did not participate in the Prior Proceeding and it is expected that the Respondents would not participate in this proceeding either, hence there is no prejudice to the Respondents, or delay in the proceeding, from the language of the proceeding being in English.
The Panel accepts the Complainant’s submissions regarding the language of the proceeding and is satisfied that the Respondents will not be disadvantaged from the proceeding being in English. Additionally, one of the three websites formerly at the disputed domain name <atme-ic.com> was at one time in English. As anticipated by the Complainant, the Respondents have not filed a Response. The decision of the Prior Proceeding was in fact also in English. The Complainant on the other hand may be unduly disadvantaged by having to conduct the proceedings in Chinese. Furthermore, the Panel notes that all of the communications from the Center to the parties were transmitted in both Chinese and English. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding.
D. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has rights to the trade mark ATMEL.
The threshold test for confusingly similarity involves the comparison between the trade mark and the domain name itself to determine likelihood of Internet user confusion. The trade mark would generally be recognizable within the domain name. In this case the Complainant’s registered trade mark ATMEL is the dominant portion of the Domain Name <atmelic.com>. The addition of the letters “ic” (which is commonly understood by the relevant public to be an acronym for “integrated circuit”) does nothing to minimize the risk of confusion. With respect to the other two Domain Names <atme-ic.com> and <atmeil.com>, both are misspellings of the Complainant’s ATMEL Marks. The omission of one letter “l” from <atme-ic.com> and the addition of one letter “i” in <atmeil.com> is not sufficient to distinguish it from the ATMEL Marks (see Caterpillar Inc. v. Center for Ban on Drugs, NAF Claim No. 0661437. Again the addition of the acronym “ic” at the end of <atme-ic.com> does not minimize the risk of confusion. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain suffix “.com”.
For the reasons above, the Panel finds that the Domain Names are identical or confusingly similar to a trade mark in which the Complainant has rights.
E. Rights or Legitimate Interests
The Complainant contends that the content of the Websites replicates some of the content of the Complainant’s official website and also uses the Complainant’s ATMEL Marks. The Websites suggest that the Respondents are an authorised Chinese agent of the Complainant. However the Respondents have not in fact been authorised by the Complainant to use the ATMEL Marks as domain names or in any other way. They are not authorised Chinese agents, licensees or distributors of the Complainant. Further to the Complainant’s knowledge the Respondent is not known by the Domain Names nor do the WhoIs searches identify the Respondents by any of the Domain Names.
The consensus view under paragraph 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) says this:
“Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site’s accurately and prominently disclosing the registrant’s relationship with the trademark holder. The respondent must also not try to ‘corner the market’ in domain names that reflect the trademark. Many panels subscribing to this view have also found that not only authorized but also unauthorized resellers may fall within such Oki Data principles. Pay-per-click (PPC) websites would not normally fall within such principles where such websites seek to take unfair advantage of the value of the trademark.”
In this case, the Respondents are not authorised agents of the Complainant. It is clear to this Panel that the content of the Websites is intended to mislead Internet users that there is a connection between the Complainant and the Respondents. Therefore, the Panel finds the Oki Data principles for the rights or legitimate interests are not satisfied in this case. The Panel also takes the view as stated in the WIPO Overview 2.0 “… that it will generally be very difficult for a respondent to establish rights or legitimate interests where that respondent has no relevant trade mark rights and without the authority of the complainant has used a domain name identical to the complainant’s trademark.”
This is such a case.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondents. The Respondents have not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Names.
The Panel finds that the Respondents have no rights or legitimate interests in respect of the Domain Names.
Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.
F. Registered and Used in Bad Faith
To succeed under the Policy, a Complainant must show that the domain name has been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondents were aware of the ATMEL Marks when they registered the Domain Names. The Complainant has provided sufficient evidence that the registration of the Domain Names post dates the registration of the ATMEL Marks. The very incorporation of the ATMEL Marks in the Domain Names and the display of the ATMEL Marks, especially the stylized mark and content belonging to the Complainant on the Websites confirm the Respondents’ awareness of the ATMEL Marks.
Thus, the Panel concludes that the Respondents deliberately registered the Domain Names in bad faith.
The Panel also finds that the actual use of the Domain Names is in bad faith. The Websites were set up to deliberately mislead Internet users that they are connected to, authorised by or affiliated to the Complainant. The Complainant’s ATMEL Marks and content appeared on the Websites. The Websites suggested that the Respondents are Chinese agents of the Complainant.
From the above, the Panel concludes that the Respondents intentionally attempted to attract for commercial gain, by misleading Internet users into believing that the Websites and the products and services offered sold on them are those of or authorised or endorsed by the Complainant.
The Panel therefore concludes that the Domain Names were registered and are being used in bad faith under paragraph 4(b)(iv) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <atme-ic.com>, <atmeil.com> and <atmelic.com> be transferred to the Complainant.
Date: February 5, 2014