WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
NXP B.V. v. Elly Cheung
Case No. D2017-0297
1. The Parties
The Complainant is NXP B.V. of Eindhoven, the Netherlands, represented by Pointer Brand Protection and Research, the Netherlands.
The Respondent is Elly Cheung of Hong Kong, China.
2. The Domain Name and Registrar
The disputed domain name <nxpstock.com> (the "Domain Name") is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 14, 2017. On February 14, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 15, 2017, 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 March 14, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 3, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 4, 2017.
The Center received an unsolicited supplemental filing from the Complainant on April 4, 2017.
The Center appointed Karen Fong as the sole panelist in this matter on April 12, 2017. 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 is one of the largest semiconductor manufacturers in the world with revenue of USD 6.1 billion in 2015. It has research and development as well as manufacturing facilities all over the world with 25 locations in China including Hong Kong, Beijing and Shenzhen. The Complainant produces OEM products for some of the leading brand owners including Apple, Bosch, Huawei, Hyundai, Panasonic and Samsung. The NXP trade mark is used in connection with its High Performance Mixed Signal and Standard products for applications in cars, security and the Internet of Things. NXP technology is used in car access products, smart cards/proximity cards, mobile devices, TVs, tablet PCs, notebooks and the like.
The NXP trade marks are registered all over the world including in China (the "Trade Mark"). The earliest Chinese trade mark registration for the NXP word mark submitted in evidence was registered in 2006 (Chinese registration no. G917998 with registration date of December 29, 2006). The Complainant's website is found at "www.nxp.com".
The Respondent registered the Domain Name on November 20, 2012. The Domain Name resolves to a website which appears to offer NXP products ("the Website"). The title on the home page reads (in Chinese), "NXP Semiconductors, NXP Chinese agents and distributors official website." The page features prominently the NXP colour logo and the name "SmartLink". The contact page shows the contact details of the company "Smart Link Asia Ltd". The website of the company is found at "www.cetexelec.com". The title on the home page reads "Independent Distributor of Electronic Components". The company has the same address as the address listed on the Whois database for the Domain Name.
The Complainant's legal representatives sent the Respondent a cease-and-desist letter on June 2, 2016. No response was received.
5. Parties' Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to the Trade Mark, the Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain Name was registered and used in bad faith. The Complainant requests transfer of the Domain Name.
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 Name, the Complainant must prove each of the following, namely that:
(i) The 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 Domain Name; and
(iii) The Domain Name was registered and being used in bad faith.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has rights to the Trade Mark.
The threshold test for confusing similarity involves the comparison between the trade mark and the disputed domain name itself. The trade mark would generally need to be recognizable within the disputed domain name. In this case the Domain Name comprises the Complainant's trade mark NXP in its entirety and the descriptive term "stock". The addition of this term which is apt to describe the Complainant's products does nothing to 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 ("gTLD").
The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers, or to tarnish the trademark or service mark at issue.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of proof shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some allegations of evidence of relevant right or legitimate interest, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.
The Complainant contends that it has not authorised, licensed or otherwise permitted the Respondent to use the NXP trade mark in the Domain Name or for any other purpose. The Respondent is not an authorized seller of the Complainant's products. Yet the Website suggests that the Respondent is an authorized agent. The prominent display of the NXP colour logos increases the likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Website. The disclosure of the relationship between them is wholly inaccurate. The Respondent is not commonly known by the Domain Name. Nor does it have any registered trade marks or trade names corresponding with the Domain Name.
"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, there has been no disclosure of the real nature of the relationship between the Complainant and the Respondent. It seems to this Panel that the content of the Website is intended to mislead Internet users that there is a connection between the Complainant and the Respondent. Therefore, the Panel finds the principles elaborated in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 regarding rights or legitimate interests are not satisfied in this case.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has 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 Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
To succeed under the Policy, the 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 Respondent was aware of the Complainant's trade mark marks when it registered the Domain Name. The Complainant has provided sufficient evidence that the Domain Name registration post dates the NXP trade mark registrations.
The very incorporation of the Trade Mark in the Domain Name and the display of the Trade Mark and the offer for sale of the Complainant's products on the Website confirm the Respondent's awareness of the Trade Mark.
Thus, the Panel concludes that the Respondent deliberately registered the Domain Name in bad faith.
The Panel also finds that the actual use of the Domain Name is in bad faith. The Website depicts the Respondent as the authorized agent or distributor of the Complainant in China. The content of the Website also is calculated to give the impression that it has been authorized by the Complainant when this is not the case. The Website was set up to deliberately mislead Internet users that it is connected to, authorised by or affiliated to the Complainant. From the above, the Panel concludes that the Respondent intentionally attempted to attract for commercial gain, by misleading Internet users into believing that the Respondent's website is and the products sold on it are those of or authorised or endorsed by the Complainant, within the meaning of paragraph 4(b)(iv) of the Policy.
The Panel therefore concludes that the Domain Name was registered and is being used in bad faith under paragraph 4(a)(iii) 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 Name, <nxpstock.com>, be transferred to the Complainant.
Date: April 20, 2017