WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
CIE Automotive, S.A. v. David Liu
Case No. D2017-2544
1. The Parties
The Complainant is CIE Automotive, S.A. of Bilbao, Spain, represented by Herrero & Associados, S.L., Spain.
The Respondent is David Liu of Irvine, California, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <cieautomotives.com> (“Disputed Domain Name”) is registered with FastDomain Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 20, 2017 naming Domain Privacy Service FBO Registrant as the Respondent. On December 21, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 27, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 28, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint with the new Respondent on December 29, 2017.
The Center verified that the Complaint together with the amended 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 January 8, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 28, 2018. On January 13, 2018, David Liu of Elitech International USA, Inc. sent an email to the Center asking that case-related material be forwarded to a separate email address than was used in the notification of Complaint, apparently related to Elitech International USA, Inc. On January 18, 2018, the Center received email communications from Elitech International USA, Inc., from the email address specified by David Liu indicating that their account with the domain hosting service company, Bluehost.com, was hacked and the Disputed Domain Name was purchased and set up by the hacker. The Respondent did not submit a formal Response by the January 28, 2018 deadline. Accordingly, the Center sent a notification of commencement of panel appointment process to the Parties on January 29, 2018.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on February 21, 2018. 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 a multinational company based in Spain that designs and manufactures components and sub-assemblies for the automotive market and has been operating as the CIE Automotive Group since 2002. The Complainant owns the trade marks “CIE” (registered, among many jurisdictions, in the European Union on January 21, 2009, Registration No. 006646871; in Spain on August 12, 2012, Registration No. M3021235; and in Mexico on September 29, 2006, Registration No. 956814) and “CIE Automotive” (registered, among many jurisdictions, in the European Union on March 29, 2004, Registration No. 002910131; in Spain on March 3, 2003, Registration No. N0250138; in the United States on June 13, 2006, Regsitration No. 3102901; and in Canada on August 29, 2007, Registration No. TMA695072) (“CIE Marks”).
The Disputed Domain Name was registered on June 29, 2017 and is being passively held by the Respondent.
5. Parties’ Contentions
The Complainant’s contentions can be summarized as follows:
(a) The Complainant has been operating under the CIE Automotive Group name since 2002. The Complainant owns registered rights in the CIE Marks, which are registered in many jurisdictions worldwide relating to the automotive market and operates an official global website with the domain name “cieautomotive.com”.
(b) The Disputed Domain Name was registered on June 26, 2017 and is currently being passively held by the Respondent.
(c) The most distinguishing part of the Disputed Domain Name is “cieautomotive”, which is confusingly similar to the CIE Marks as well as to the domain name used by the Complainant for their official website. The use of the plural in the Disputed Domain Name does nothing to distinguish the Disputed Domain Name from the Complainant’s CIE Marks.
(d) The Respondent has no legitimate rights or interests in the Disputed Domain Name. The Complainant has been designing and manufacturing automotive market related components and sub-assemblies under the CIE Automotive name since 2002. The Respondent is not affiliated with the Complainant and appears to be using the Disputed Domain Name to generate advertising revenue through the use of the Complainant’s name and CIE Marks. Given the Complainant’s success in the automotive related market prior to the registration of the Disputed Domain Name, the Respondent must have been aware of the Complainant and its CIE Marks when the Respondent registered the Disputed Domain Name.
(e) The Respondent registered and is using the Disputed Domain Name in bad faith. The Disputed Domain Name was registered through a privacy protect service and did not respond to any of the Complainant’s communications to the Respondent. There is no evidence that the Respondent is commonly known by or associated with the name CIE Automotive.
The Respondent did not file a formal Response.
The fact that the Respondent has not submitted a Response does not automatically result in a decision in favor of the Complainant. However, the failure of the Respondent to file a Response may result in the Panel drawing appropriate inferences from such default. The Panel may also accept all reasonable and supported allegations and inferences flowing from the Complaint as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000‑0403).
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(i) the Disputed 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 Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used by the Respondent in bad faith.
A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in the CIE Marks, based on its registrations in various jurisdictions worldwide.
The Disputed Domain Name incorporates the mark “cieautomotive” which is confusingly similar to the Complainant’s CIE Marks. It is well established that adding the plural “s” to a name does not negate the confusing similarity between the Disputed Domain Name and the mark (see ESH Strategies Branding, LLC v. Kumpol Sawaengkarn, WIPO Case No. D2011-0843; i2 Technologies Inc v. Richard Alexander Smith, WIPO Case No. D2001-0164; and Playboy Enterprises International, Inc. v. Tom Baert, WIPO Case No. D2007-0968).
The Panel finds that “cieautomotive” is the distinctive component of the Disputed Domain Name, and the change to plural by adding the letter “s” does nothing to distinguish it from the Complainant’s trade mark.
The Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states that once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel accepts that the Complainant registered and began using the CIE Marks many years before the Disputed Domain Name was registered by the Respondent, and the Complainant has never authorised the Respondent to use its trade mark. Accordingly, the Panel is of the view that a prima facie case has been established and it is for the Respondent to prove that it has rights or legitimate interests in the Disputed Domain Name. As the Respondent has not submitted a Response to the Complainant’s contentions, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainant’s evidence.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following:
(i) before any notice to them of the dispute, the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or names corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the Disputed Domain Name, even if they have acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Respondent has not provided any evidence to demonstrate that it has become commonly known by the Disputed Domain Name, or names corresponding to them. The Disputed Domain Name is currently being passively held and there is no evidence of any connection to a bona fide offering of goods or services.
Based on the foregoing, and the fact that the Disputed Domain Name is confusingly similar to the Complainant’s CIE Marks, the Panel finds that the Respondent has no rights or legitimate interests to the Disputed Domain Name.
The Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel accepts that the Respondent is likely to have known of the Complainant’s CIE Marks at the time he registered the Disputed Domain Name, and registered and used it in bad faith, based on the following:
(a) the Respondent acquired the Disputed Domain Name on June 26, 2017, this was more than ten years after the Complainant first began using its CIE Marks in relation to its business;
(b) the Respondent has not been using, and cannot provide any showing of demonstrable preparations to use, the Disputed Domain Name to make any bona fide offering of goods or services; and
(c) the Disputed Domain Name is confusingly similar to the Complainant’s CIE Marks.
The Panel believes that the Respondent registered the Disputed Domain Name with the intent of trading on the reputation of the Complainant’s CIE Marks to attract Internet users to the Disputed Domain Name, by creating a likelihood of confusion with the Complainant’s CIE Marks as to the source, sponsorship, affiliation, or endorsement of the Disputed Domain Name.
Further, the Respondent initially registered the Disputed Domain Name through a privacy protect service and the registrant on record claims to be a victim of hacking and that the Disputed Domain Name was registered by the hacker without the registrant’s knowledge. This is textbook evidence of bad faith.
The Panel therefore finds that paragraph 4(a)(iii) of the Policy is satisfied.
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, <cieautomotives.com>, be transferred to the Complainant.
Date: March 7, 2017