WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Institute of Electrical and Electronics Engineers, Incorporated v. he yaolong
Case No. D2015-0435
1. The Parties
Complainant is The Institute of Electrical and Electronics Engineers, Incorporated of Piscataway, New Jersey, United States of America (“US”), represented by Dorsey & Whitney, LLP, US.
Respondent is he yaolong of Pingdingshan, Henan, China.
2. The Domain Name and Registrar
The disputed domain name <xieee.org> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 11, 2015. On March 12, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 13, 2015, the Registrar transmitted by email to the Center its verification response confirming that 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 20, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 9, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 10, 2015.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on April 20, 2015. 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 is a not-for-profit technological professional association under the laws of the State of New York, US. Complainant has provided evidence that it is the registered owner of numerous trademarks worldwide relating to the designation “IEEE”, e.g.:
- Word mark IEEE, United States Patent and Trademark Office (USPTO), Registration No.: 1770511, Registration Date: May 11, 1993, Status: Active;
- Word-/device mark IEEE, United States Patent and Trademark Office (USPTO), Registration No.: 2862848, Registration Date: July 13, 2004, Status: Active;
- Word mark IEEE, Office for Harmonization in the Internal Market (OHIM), Registration No.: 000778662, Registration Date: July 19, 2000, Status: Active;
- Word mark IEEE, Trademark Office of the State Administration for Industry and Commerce of the People’s Republic of China (SAIC), Registration No.: 851884, Registration Date: May 16, 1999, Status: Active.
Moreover, Complainant has evidenced to be the owner of the domain names <ieee.com> as well as <ieee.org> which redirect to Complainant’s official websites promoting the IEEE brand and related products and services.
The disputed domain name <xieee.org> was registered on January 5, 2015 and redirects to a website at “www.xieee.org” displaying pornographic content.
Complainant requests that the disputed domain name be transferred to Complainant.
5. Parties’ Contentions
Complainant contends to be the world’s largest technical society with more than 400,000 members in 160 countries, recognized as a leading authority in technical areas ranging from computer engineering, biomedical technology and telecommunications to electric power, aerospace and consumer electronics. Complainant asserts that it has extensively used the IEEE brand as a name since at least as early as 1963 and as a distinctive trademark (inclusive numerous variations thereof) for many decades around the world. Complainant claims that as a result of its long and prominent use of the IEEE trademark, the latter is meanwhile well-known and enjoys a worldwide reputation and renown.
Complainant suggests that the disputed domain name is at least confusingly similar to Complainant’s well-known IEEE trademark since the disputed domain name only differs therefrom with respect to the added letter “X”, which as such is not capable to sufficiently differentiate the disputed domain name from Complainant’s IEEE trademark.
Complainant further claims that Respondent has no rights or legitimate interests in respect of the disputed domain name since (1) Complainant has not authorized Respondent to use the IEEE trademark, (2) Respondent apparently has not been commonly known neither by the name “IEEE” nor by “XIEEE” and (3) Respondent apparently is neither making use of the disputed domain name in connection with the bona fide offering of goods or services nor in connection with a legitimate noncommercial or fair use thereof since Respondent apparently diverts Internet consumers under the disputed domain name for financial benefit to a separate website where those consumers are invited to install software to view the offered pornographic content.
Finally, Complainant asserts that the disputed domain name was registered and is being used in bad faith by Respondent since (1) Respondent had at least constructive notice of Complainant’s rights in the IEEE trademark before registering the disputed domain name, given Complainant’s prior trademark registrations for the IEEE brand, including in China, the country listed as Respondent’s address in the WhoIs information for the disputed domain name, (2) Respondent apparently registered the disputed domain name in an attempt to capitalize unfairly on the goodwill of Complainant’s famous IEEE trademark and, finally (3) Respondent has failed to respond to Complainant’s cease and desist letter of February 11, 2015, demanding transfer of the disputed domain name.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Respondent’s default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(e) of the Rules provides that if Respondent does not submit a Response, in the absence of special circumstances, the Panel is to decide the dispute solely based upon the Complaint.
A. Identical or Confusingly Similar
The Panel concludes that the disputed domain name <xieee.org> is confusingly similar to the IEEE trademark in which Complainant has shown to have rights.
The disputed domain name incorporates the IEEE trademark in its entirety, except the addition of the letter “X” in front thereof. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see e.g. PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696). Moreover, it should be noted that it has become a consensus view among panelists (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2) that the application of the confusing similarity test under the UDRP would typically involve a straight forward visual or oral comparison of the concerned trademark with the alphanumeric string in the disputed domain name and that the test is satisfied if the relevant trademark would generally be recognizable as such within the disputed domain name. While the IEEE brand originates from Complainant’s company name “The Institute of Electrical and Electronics Engineers, Incorporated”, the resulting letter string “IEEE” is still of a distinguishing character due to the triple “E” and may be easily recognized within the disputed domain name.
Therefore, the first element under the Policy as set forth in paragraph 4(a)(i) in the case at hand is fulfilled.
B. Rights or Legitimate Interests
The Panel is further convinced that on the basis of Complainant’s undisputed contentions, Respondent apparently has neither made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent makes a legitimate, noncommercial or fair use thereof without intent for commercial gain.
Complainant asserts, and it has been confirmed by previous UDRP panels (e.g. The Institute of Electrical and Electronics Engineers, Inc. v. Ganesan K., WIPO Case No. D2011-2061; The Institute of Electrical and Electronics Engineers, Inc. v. Marketing Express, Domain Administratior, WIPO Case No. D2011-1985) that the IEEE trademark is well-known to many members of the general public. It is, therefore, reasonable to argue that Respondent had or ought to have had knowledge of Complainant’s IEEE trademark at the time of the registration of the disputed domain name and that the latter obviously alludes to Complainant’s IEEE trademark and business.
By the same time, Respondent obviously has not been authorized to use Complainant’s IEEE trademark, neither in a domain name nor on Respondent’s website or in any other way. Also, there is no other reason apparent as to why Respondent needs to rely on the designation “IEEE” in order to create domain names and subsequently to set up an Internet presence with pornographic content, since the designation “IEEE” is neither a pure generic word nor it seems to be in relationship e.g. with Respondent’s name or business or the like.
Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.
Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 2.0, paragraph 2.1). In the case at hand, Respondent did not reply to Complainant’s allegations as they were included in the Complaint duly notified to Respondent by the Center on March 20, 2015, nor did he come forward with any other reasonable explanation that might have thrown a different light on Respondent’s possible rights or legitimate interests in the disputed domain name.
Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy.
C. Registered and Used in Bad Faith
The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith.
The Panel concludes that by the time of registering the disputed domain name, Respondent knew or ought to have known of Complainant’s IEEE trademark because (1) the IEEE trademark may be deemed well-known at least for the purpose of this proceeding, a finding which is also in line with many previous UDRP panels (see Section 6(b) above) and (2) the disputed domain name apparently has no other meaning except for referring to Complainant’s company name and trademark and Respondent has brought nothing forward nor are any indications given to the case at hand as to how the disputed domain name could be used by Respondent in a legitimate way.
In this context, the Panel also takes into account that (1) Respondent obviously provided false WhoIs information since the delivery of the Complaint to Respondent failed both via DHL and via fax due to incomplete or incorrect contact details and (2) Respondent kept silent on all of Complainant’s contentions, not only as they were included in the Complaint, but also in Complainant’s cease and desist letter dated February 11, 2015.
Therefore, the Panel finds that also the third element under the Policy as set forth by paragraph 4(a)(iii) is fulfilled and that, accordingly, Complainant has satisfied all of the three requirements of paragraph 4(a) 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 disputed domain name <xieee.org> be transferred to Complainant.
Stephanie G. Hartung
Date: April 28, 2015