WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
NXP B.V. v. Ershov Dmitrii
Case No. D2018-1870
1. The Parties
The Complainant is NXP B.V. of Eindhoven, Netherlands, represented by Pointer Brand Protection and Research, Netherlands.
The Respondent is Ershov Dmitrii of St. Petersburg, Russian Federation.
2. The Domain Names and Registrars
The disputed domain names <mifare.shop> and <mifare.store> are registered with Webnames Limited Regtime Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 16, 2018. On August 16, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 17, 2018, 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 the same date, the Center sent an email communication to the Parties in regard to the language of the proceedings. On the same date, the Complainant requested English to be the language of the proceedings. The Respondent has not replied on the language of the proceedings.
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 August 27, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 16, 2018. The Respondent did not submit a formal response. The Center received several informal email communications from the Respondent on August 17 and 27, 2018. On August 29, 2018 the Complainant filed supplemental filing to address the Respondent’s email communications. Accordingly, the Center notified the Parties about the Commencement of Panel Appointment Process on September 17, 2018.
The Center appointed Taras Kyslyy as the sole panelist in this matter on September 25, 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 Dutch company active in the field of contactless IC (integrated circuit) products. Since 1994, these products have been sold under the brand MIFARE, which is protected as a wordmark in a large number of jurisdictions, including in the Russian Federation: trademark registration No. 394678, registered on November 26, 2009.
The Complainant further holds and operates a website at the domain name <mifare.net>.
The disputed domain names were registered on April 8, 2018 and redirected to another domain name resolving to a website selling contactless chips of various producers, including under the MIFARE brand. At the time of the decision the disputed domain names resolve to inactive webpages.
5. Parties’ Contentions
The disputed domain names are identical to the Complainant’s trademark. The disputed domain names incorporate the Complainant’s trademark in its entirety. Addition of the generic Top-Level Domains (“gTLD”) “.shop” and “.store” does not add any distinctiveness to the disputed domain names.
The Respondent has no rights or legitimate interests in the disputed domain name. No license or any other authorization was issued by the Complainant to the Respondent to use MIFARE brand. The disputed names are not used in connection with a bona fide offering of goods or services, or for legitimate noncommercial or fair use. The disputed domain names resolve to a website offering products similar to the Complainant’s including under MIFARE brand not licensed by the Complainant. The website does not disclose any relationship between the Parties. The Respondent has not been commonly known by the disputed domain names.
The disputed domain names were registered and are being used in bad faith. The Respondent was aware and intended to take advantage of the Complainant’s trademark when registering the disputed domain names. The Respondent is using the disputed domain names to sell infringing goods. The Respondent intentionally attempted to attract for commercial gain Internet users by creating likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
The Respondent in its informal communications to the Center explained as follows. The disputed domain names were available to buy and register, and thus were registered to promote goods produced by various manufacturers under MIFARE brand. The Respondent does not manufacture such MIFARE products, thus he cannot be liable for its manufacture by other companies. The Respondent has no expertise to check quality and possible intellectual property rights infringements while selling third parties products. The Respondent agrees to transfer the disputed domain names to the Complainant. The disputed domain names were not used for commercial purpose, since they were unavailable via Internet search engines, and were used for technical purposes only.
6. Discussion and Findings
A. Language of Proceedings
The language of the Registration Agreement for the disputed domain names is Russian. 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 Panel may also order that any documents submitted in a language other than that of the proceeding be translated.
However, as noted by previous UDRP panels, paragraph 11 of the Rules must be applied in accordance with the overriding requirements of paragraphs 10(b) and 10(c) of the Rules that the parties are treated equally, that each party is given a fair opportunity to present its case and that the proceeding takes place with due expedition (see, e.g., General Electric Company v. Edison Electric Corp. a/k/a Edison Electric Corp. General Energy, Edison GE, Edison-GE and EEEGE.COM, WIPO Case No. D2006-0334). Accordingly, account should be taken of the risk that a strict and unbending application of paragraph 11 of the Rules may result in delay, and considerable and unnecessary expenses of translating documents.
In deciding whether to allow the proceedings to be conducted in a language other than the language of the Registration Agreement, and to require the Complainant in an appropriate case to translate the Complaint into the language of that agreement, the Panel must have regard to all “the relevant circumstances”. The factors that the Panel should take into consideration include whether the Respondent is able to understand and effectively communicate in the language in which the Complaint has been made and would suffer no real prejudice, and whether the expenses of requiring translation and the delay in the proceedings can be avoided without at the same time causing injustice to the parties.
The Complainant has submitted in its Complaint that the language of the proceedings be English, since a) the Respondent’s relevant website has an English version, and b) the disputed domain names are composed with Latin script English words.
The Panel further notes that no objection was made by the Respondent to the Complaint being in English nor any request made that the proceedings be conducted in Russian, the language of the Registration Agreement. This was despite the Center notifying the Respondent in Russian and English that the Respondent is invited to present its objection to the proceedings being held in English. The Respondent had the opportunity to raise objections or make known its preference but did not do so. Furthermore, while emailing to the Center the Respondent used both Russian and English language.
The Panel also finds that substantial additional expense and delay would likely be incurred if the Complaint had to be translated into Russian.
Taking all these circumstances into account, this Panel finds that it is appropriate to exercise its discretion and allow the proceedings to be conducted in English.
B. Identical or Confusingly Similar
The gTLDs “.shop” and “.store” in the disputed domain names are viewed as a standard registration requirement and may be disregarded for the purposes of the confusing similarity test (see, e.g., Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275).
According to section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”) in cases where a domain name incorporates the entirety of a trademark the domain name will normally be considered identical or confusingly similar to that mark for purposes of UDRP standing.
The disputed domain names include the Complainant’s trademark without alteration or addition, adding the gTLDs “.shop” and “.store” respectively. Disregarding the gTLDs the Panel finds that the disputed domain names are identical to the Complainant’s trademark, therefore, the Complainant has established its case under paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
The Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain names.
The Complainant did not license or otherwise agree for use of its prior registered trademarks by the Respondent.
The Respondent is not commonly known by the disputed domain names, which could demonstrate its right or legitimate interest (see, e.g., World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe, WIPO Case No. D2008-0642).
According to section 2.8.1 of the WIPO Overview 3.0 resellers, distributors using a domain name containing complainant’s trademark to undertake sales related to the complainant’s goods may be making a bona fide offering of goods and thus have a legitimate interest in such domain name. Outlined in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (the “Oki Data Test”), the following cumulative requirements will be applied in the specific conditions of a UDRP case:
(i) the respondent must actually be offering the goods at issue;
(ii) the respondent must use the site to sell only the trademarked goods;
(iii) the site must accurately and prominently disclose the registrant’s relationship with trademark holder; and
(iv) the respondent must not try to “corner the market” in domain names reflecting trademark.
The Panel finds that the Respondent failed to meet the conditions, and thus failed to pass the Oki Data Test. The Respondent’s use of the disputed domain names misleads consumers into thinking that the websites are operated by or affiliated with the Complainant. Furthermore, the websites offer competing goods for sale. As such, the Respondent’s use of the disputed domain names cannot be considered bona fide.
Considering the above the Panel finds the Respondent does not have rights or legitimate interests in the disputed domain names. Therefore, the Complainant has established its case under paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
The Respondent was aware and intended to take advantage of the Complainant’s trademark when registering the disputed domain names. The website does not disclose relationship between the Parties. The Respondent is using the disputed domain names to sell infringing goods. The Respondent intentionally attempted to attract for commercial gain Internet users by creating likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
According to paragraph 4(b)(iv) of the Policy the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location. In this case, the disputed domain names were resolving to a website, which falsely pretended to sell the Complainant’s and others’ products to intentionally attract Internet users by creating likelihood of confusion with the Complainant’s trademark as to the source of the website and its products. The Panel finds the above confirms the disputed domain names were registered and used in bad faith.
Considering the above the Panel finds the disputed domain names were registered and are being used in bad faith. Therefore, the Complainant has established its case 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 disputed domain names, <mifare.shop> and <mifare.store> be transferred to the Complainant.
Date: October 9, 2018