WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Newegg Inc. v. Ma Qian Li

Case No. D2015-0489

1. The Parties

The Complainant is Newegg Inc. of City of Industry, California, United States of America, represented internally.

The Respondent is Ma Qian Li of Qujing, Yunnan, China.

2. The Domain Name and Registrar

The disputed domain name <neweggcloud.com> is registered with eName Technology Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 20, 2015. On March 20, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 23, 2015, 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.

On March 23, 2015, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On March 25, 2015, the Complainant requested that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by 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, and the proceeding commenced on April 8, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 28, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 29, 2015.

The Center appointed Jonathan Agmon as the sole panelist in this matter on May 4, 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

The Complainant Newegg Inc. of City of Industry, California, United States of America is an Internet-based commercial retailer. The Complainant offers more than 10.5 million products on its website. The Complainant has advertised and promoted its family of NEWEGG marks extensively via online and print outlets since 2001 and has made substantial sales of goods and services under these source identifier - in 2010, the Complainant revenue exceeded USD 2.5 billion.

The Complainant is the owner of numerous trademark registrations for the mark NEWEGG around the world. For example: United Stated of America Trademark Registration No. 3383264 – NEWEGG, with the registration date of December 12, 2008; United Stated of America Trademark Registration No. 2892236 – NEWEGG, with the registration date of December 10, 2004; Chinese Trademark Registration No. 6364655 – NEWEGG, with the registration date of June 28, 2010; Chinese Trademark Registration No. 3909870 – NEWEGG, with the registration date of July 7, 2006; International Trademark Registration No. 849889 – NEWEGG (designating China), with the registration date of October 29, 2004; and many more.

Through extensive and prolonged use and advertising around the world, the NEWEGG trademark has generated vast good will.

The Complainant also developed an extensive presence on the Internet and is the owner of numerous domain names, which contain the name “newegg”. For example: <newegg.com>, <newegg.cn>, <neweggservice.com> and many more.

The disputed domain name <neweggcloud.com> was registered on September 12, 2012.

The disputed domain name currently resolves to an inactive website.

5. Parties’ Contentions

A. Complainant

The Complainant argues that it owns a well-known family of trademarks based on the term “newegg” used in connection with its goods and services, on which the Complaint is based. The Complainant further argues that it has established trademark rights to the term “newegg”.

The Complainant further argues that the disputed domain name fully incorporates its NEWEGG trademark. The Complainant further contends that in fact the term “cloud” has a direct and obvious relationship to the Complainant’s business as an Internet-based commercial retailer.

The Complainant further argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name because the Respondent is not known by the disputed domain name, is not using the disputed domain name in connection with a bona fide offering of goods or services, and is not making a legitimate noncommercial or fair use of the disputed domain name.

The Complainant further argues that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant further argues that the passive holding of a domain name, following a bad faith registration, satisfies the requirements of paragraph 4(a)(iii) of the Policy.

The Complainant further contends that on November 19, 2014 its representative contacted the Respondent via telephone and offered USD 817 (RMB 5,000) for the disputed domain name. The Respondent rejected that offer and gave a counter offer of USD 8,171 (RMB 50,000). On November 21, 2014, the Complainant offered USD 1,500 (RMB 9,179), but the Respondent rejected the offer and asked for USD 6,350 (RMB 39,999). The Complainant contends that at this time it has stopped the negotiations, and further argues that the Respondent’s attempts to sell the disputed domain name to the Complainant who is the owner of the trademark for valuable consideration in excess of the Respondent’s out-of-pocket costs demonstrates registration and use of the disputed domain name in bad faith.

The Complainant further argues that the Respondent’s registration and use of the disputed domain name with knowledge of the Complainant’s rights in the trademark demonstrates use in bad faith. The Complainant argues that the Respondent has actual knowledge of the Complainant’s rights and it is demonstrated by the Respondent’s active negotiation with the Complainant for the sale of the disputed domain name.

For all of the above reasons, the Complainant requests the transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Procedural Issue – 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 language of the Registration Agreement for the disputed domain name is Chinese.

The Complainant requested that the language of proceeding be English.

The Panel cites the following with approval:

“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004).

In deciding the language of the proceeding, the Panel takes the following into consideration:

a) The disputed domain name consists of English characters, rather than Chinese characters;

b) The disputed domain name includes the English word “cloud”;

c) According to the Complaint, the Respondent had negotiated via telephone with the Complainant’s representative, therefore, it is presumed that the Respondent understands English;

d) The Respondent did not object to the Complainant’s request that English be the language of the proceeding.

Upon considering the above, the Panel concludes, according to the Rules, paragraph 11(a), that there is no prejudice or unfairness to the Respondent for this proceeding to be conducted in English and for its decision to be rendered in English. Accordingly, the Panel determines that the language of this administrative proceeding be English.

B. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner.

The Complainant owns numerous worldwide trademark registrations for the mark NEWEGG. For example:

United Stated of America Trademark Registration No. 3383264 – NEWEGG, with the registration date of December 12, 2008; United Stated of America Trademark Registration No. 2892236 – NEWEGG, with the registration date of December 10, 2004; Chinese Trademark Registration No. 6364655 – NEWEGG, with the registration date of June 28, 2010; Chinese Trademark Registration No. 3909870 – NEWEGG, with the registration date of July 7. 2006; International Trademark Registration No. 849889 – NEWEGG (designating China), with the registration date of October 29, 2004; and many more.

The Complainant also owns domain names with the trademark NEWEGG, i.e., <newegg.com>, <newegg.cn>, <neweggservice.com> and many more.

The disputed domain name <neweggcloud.com> is identical to the registered trademark NEWEGG apart from the addition of the generic term “cloud”. The disputed domain name integrates the Complainant’s trademark NEWEGG in its entirety, as a dominant element.

The addition of the term “cloud” does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant’s NEWEGG trademark as “cloud” stands, among other, for an Internet service, where the Complainant’s business is mostly online. It is clear to the Panel that the most prominent element in the disputed domain name is the term “newegg”. Consequently, this panel finds that the disputed domain name is confusingly similar to the Complainant’s NEWEGG trademark.

Previous UDRP panels have ruled that the mere addition of a non-significant element does not sufficiently differentiate the domain name from the registered trademark: “The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark” (Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505).

Indeed, “[t]he mere addition of a descriptive term to an identical trademark has been repeatedly held by previous panels as not sufficient to avoid confusion between the domain name and the trademark” (Red Bull GmbH v. Chai Larbthanasub, WIPO Case No. D2003-0709).

Also, the addition of a generic Top-Level Domain (“gTLD”) “.com” to the disputed domain name does not typically avoid confusing similarity (See, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451). Thus, the gTLD “.com” is without legal significance since use of a gTLD is technically required to operate the domain name and it does not serve to identify the source of the goods or services provided by the registrant of the disputed domain name.

Consequently, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the trademarks in which the Complainant has rights.

C. Rights or Legitimate Interests

Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.

In the present case, the Complainant has demonstrated to the Panel that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests.

The Panel finds that the Complainant has established a prima facie case in this regard, inter alia, due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the NEWEGG trademark, or a variation thereof.

The Respondent has not submitted a Response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name that is sufficient to rebut the Complainant’s prima facie case.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

D. Registered and Used in Bad Faith

The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).

The Complainant submitted evidence, which shows that the Respondent registered the disputed domain name long after the Complainant started to use the name and trademark NEWEGG and long after the Complainant registered its trademark. According to the evidence filed by the Complainant in relation to the trademark, the Complainant has owned a registration for the NEWEGG trademark at least since the year 2004. It is suggestive of the Respondent’s bad faith registration in these particular circumstances where the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735).

The evidence shows that the Respondent has not been using the disputed domain name. Evidence of passive holding of a domain name has been held under some circumstances to constitute use in bad faith. Failure to meet paragraph 4(a)(iii) of the Policy while holding a domain name passively would be regarded as evidence of bad faith use (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

In the instant case, the Complainant has provided sufficient evidence to show that its NEWEGG trademark is well-known. The record also shows that the Respondent provided no evidence of use of the disputed domain name and did not respond to the Complaint. The Respondent’s passive holding of the disputed domain name also indicates in this case bad faith registration and use of the disputed domain name: “The concept of a domain name being used in bad faith is not limited to positive action: inaction is within the concept” (see Cho Yong Pil v. Kee Dooseok, WIPO Case No. D2000-0754; see also: “The significance of the distinction is that the concept of a domain name ‘being used in bad faith’ is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith” (Telstra Corporation Limited v. Nuclear Marshmallow, supra).

Another indication for the Respondent’s bad faith use is raised from the incorporation of the Complainant well-known trademark into the disputed domain name by the Respondent who has no plausible explanation for doing so (Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273). Previous UDRP panels have determined that incorporating a well-known trademark, such as the Complainant’s NEWEGG trademark, as a domain name may be considered as a clear indication of bad faith (see Caixa D’Estalvis I Pensions de Barcelona (“La Caixa”) v. Eric Adam, WIPO Case No. D2006-0464; Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441).

The circumstances of this case, and especially the use of the Complainant’s well-known trademark as the prominent part of the disputed domain name may also indicate that the Respondent has registered the disputed domain name to prevent the Complainant from reflecting its trademark in the disputed domain name. Such behavior is additional evidence of bad faith use of the disputed domain name.

Lastly, based on the Complainant’s claim, its representative had contacted and negotiated on the option to buy the disputed domain name with the Respondent via telephone. According to the Complainant, the Responded has rejected all of the Complainant’s offers to buy the disputed domain name and had offered counter-offers requesting high amounts which are not proportionate to the costs of registering and holding the disputed domain name. Since the Respondent did not submit a Response, this Panel is taking this claim into consideration and sees the Respondent’s actions of trying to sell the disputed domain name to the Complainant for valuable consideration in excess of his out-of-pocket costs directly related to the disputed domain name, as a further indication of bad faith.

In light of the above, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith.

Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) 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 <neweggcloud.com> be transferred to the Complainant.

Jonathan Agmon
Sole Panelist
Date: May 18, 2015