WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Xiaomi, Inc. v. Eddie Zheng, Rc Technology Ltd; David Riverol, Rc Technology Ltd
Case No. D2018-2403
1. The Parties
The Complainant is Xiaomi, Inc. of Beijing, China, represented by Fast Lane IP Limited, United Kingdom.
The Respondent is Eddie Zheng, Rc Technology Ltd of Hong Kong, China; David Riverol, Rc Technology Ltd of Hong Kong, China, represented by ECIJA, Spain.
2. The Domain Names and Registrar
The disputed domain names <micustomerservice.com> and <miespaña.com> (xn--miespaa-9za.com) (the “Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on October 22, 2018. On October 23, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On October 24, 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.
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 November 9, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 29, 2018. The Response was filed with the Center on November 29, 2018.
The Complainant submitted a supplementary filing on December 20, 2018, and the Respondent further responded on December 31, 2018. Both filings were not requested by the Panel pursuant to paragraph 12 of the Rules.
Paragraph 10 of the Rules vests the Panel with the authority to determine the admissibility, relevance, materiality and weight of the evidence, and also to conduct the proceedings with “due expedition”. Generally panels will only accept supplementary filings in “exceptional” circumstances (per paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
In the current case, the Panel does not find the “exceptional circumstances” to justify a delay of the proceeding. Each party has been essentially given one equal opportunity to submit arguments and supporting evidence to establish its case. The Panel is of the view that it is capable of making a determination on the dispute based on the Complaint and Response. The unsolicited filings by the Complainant and Respondent are therefore precluded, and the Panel notes that if the supplemental filings were considered, these would not have changed the outcome of this decision.
The Center appointed Linda Chang as the sole panelist in this matter on December 13, 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 Chinese consumer electronics company that develops and produces smartphones, mobile applications and other electronic products principally under the brand MI. The Complainant distributes products through physical stores, its official website “www.mi.com” and other online stores in many countries and regions around the world. The Complainant has a nationwide presence in Spain by virtue of its own physical stores in six provinces and the chain stores such as Carrefour across the country.
The Complainant owns various trademark registrations for MI, including International Registration no. 1173649 registered on November 28, 2012, and European Union Trademark Registration no. 012672283 registered on August 4, 2014.
The Respondent is a seller and distributor of smartphones, phone accessories and other electronic products in the European market, in particular in Spain. The Respondent registered the Domain Name <miespaña.com> on September 16, 2017, and <micustomerservice.com> on January 15, 2018, respectively resolving to a website selling mobile phones including the Complainant’s MI trademarked smartphones and various brands of smartphones from the Complainant’s competitors, and a website providing support service for customers of “www.miespaña.com”.
On July 18, 2018, both websites displayed the Complainant’s trademark “” prominently at the head of their homepages. At the date of notification of the Complaint, the two websites no longer displayed the Complainant’s MI trademark at the head of their homepages, but the website at <miespaña.com> displayed a logo. When the panel is reviewing this case for a decision, the disputed domain name <miespaña.com> resolve to a website displaying , with “MOBILE INTERNATIONAL” added to the “MI” mark.
According to the Complainant, there used to be a disclaimer at the footer of “www.miespaña.com” reading “Miespaña.com is an online store that sells Mi products and has no relationship with Xiaomi España. Mi is a registered trade mark of Xiaomi Inc.”
5. Parties’ Contentions
The Complainant makes the following contentions.
The Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights because the Domain Name <miespaña.com> incorporates in its entirety the Complainant’s trademark MI with the mere addition of the descriptive word “españa” (meaning “Spain”), and <micustomerservice.com> incorporates also the MI trademark in its entirety with the addition of the descriptive words “customer service”.
The Respondent uses the Domain Names to resolve to websites linked between each other given that on clicking on the “Support Center” at “www.miespaña.com” the users are taken to the “www.micustomerservice.com” website.
The Respondent has no rights or legitimate interests in respect of the Domain Names because: 1) the Respondent does not own and has not used in good faith any trademarks for MI and the Respondent is not commonly known by or referred to as MI; 2) the Respondent did not register the Domain Names in good faith, and the Domain Names are not clearly descriptive in the Spanish language; and 3) the Respondent has not used the Domain Names in good faith in association with a noncommercial activity.
The Domain Names were registered and are being used in bad faith. The Respondent was well aware of the Complainant, its products and the MI trademark when registering the Domain Names, but intentionally attempted to attract Internet users to its websites to take advantage of the similarity between the Complainant’s trademark and the Domain Names for commercial gain. In addition, the Respondent is using the Domain Names to sell competing products of the Complainant’s competitors, which demonstrates bad faith in use.
The Respondent makes the following contentions.
The Domain Names are not identical or confusingly similar to the Complainant’s MI trademark because “mi” is the acronym of the Respondent’s brand “Mobile International”, and that the term “mi españa” is generic, meaning “my Spain” in Spanish. The Respondent registered the domain name <micustomerservice.com> to provide support services to the customers of its website “www.miespaña.com”. The MI trademark simply consists of two letters of the alphabet, which do not form an obvious and recognizable trademark when conjoined in this way. Moreover, it is a word with multitude meanings and linked with a big variety of business and organizations, all of them unrelated with the Complainant, so the Complainant cannot claim exclusive rights on MI. Therefore, the Domain Names will not cause confusion and/or lead consumers to believing that there is a direct connection between the Respondent and the Complainant’s MI trademark.
The Respondent has rights and legitimate interests in respect of the Domain Names. The Respondent has been using the Domain Names in connection with a bona fide offering of services and goods, which could be evidenced by its thousands of customers and orders. The Respondent is commonly known by the Domain Names as the Respondent is acting in the market under the brand “Mobile International”. The Respondent has applied to the Hong Kong Trade Mark Registry for the registration of “Mobile International” as a trade mark on September 7, 2018, which is before receiving any notice of the dispute. The Respondent is making a fair use of the Domain Names without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark. The Respondent used a disclaimer on its website, which shows that there is no intention to divert consumers for commercial gain, since any Internet user visiting the Respondent’s websites would clearly note that they are not being operated by the Complainant.
The Respondent’s registration and use of the Domain Names are not being made in bad faith. The registration of the disputed domain names has nothing to do with the Complainant’s trademark, and they were registered because they included the acronym of the Respondent’s brand. The Respondent has not registered the Domain Names for the purpose of selling, renting or transferring them to the Complainant or a competitor of the Complainant for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the Domain Names. The Domain Names have not been intentionally registered either to prevent the Complainant from reflecting the mark in a corresponding domain name nor to disrupt the Complainant’s business. The Domain Names have not been registered in an intentional attempt to attract for commercial gain, Internet users to the Respondent’s 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 the Respondent’s websites or location or of a product or service on the Respondent’s websites or location.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has provided sufficient proof to demonstrate its prior rights in the trademark MI.
Each of the Domain Names entirely incorporates the trademark MI while the words “españa”, “customer”, “service” and “.com” are just dictionary words and a generic Top-Level Domain (“gTLD”) suffix do not prevent a finding of confusing similarity.
The Panel finds that the Domain Names are confusingly similar to MI in which the Complainant has rights pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
Allegations of the Complainant are sufficient to sustain a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Names. The burden of production on this element shifts to the Respondent to put forward relevant evidence to demonstrate otherwise.
In the Response, the Respondent contends that “mi españa” is a generic term meaning “my Spain”. It is well recognized that merely registering a domain name comprised of a dictionary phrase does not by itself automatically confer rights or legitimate interests on the respondent. To establish rights or legitimate interests in a domain name based on its dictionary meaning, a respondent has to prove that the domain name is genuinely used or at least demonstrably intended for such use, in connection with the relied-upon dictionary meaning and not to trade off third-party trademark rights. Based on the evidence on record, the Respondent is using the Domain Names in connection with websites offering Complainant’s mobile phones as well as other mobile phones produced by the Complainant’s competitors. The Panel views that such use precludes a finding that the Respondent is using the term in the Domain Names based on its dictionary meaning and for its descriptive value only.
The Respondent further contends that it has rights or legitimate interests in the Domain Names because “mi” is the acronym of its own brand “Mobile International” and it has already applied to register it as trademark in Hong Kong on September 7, 2018. The Panel however does not consider this explanation to be credible in circumstances where the Respondent did not advertise its “Mobile International” mark in the websites before notice of the dispute but prominently displayed the Complainant’s MI logo at the head of the homepages. Even in the prior disclaimer, the Respondent did not try to market its own brand in some way, for example, “Mi is the acronym of ‘Mobile International’, an unregistered trademark of RC Technology”, but again reinforced the connection between “mi” and the Complainant’s trademark by emphasizing that “Mi is a registered trade mark of Xiaomi Inc”. These circumstances do not indicate that the Respondent is indeed using “mi” as the acronym of “Mobile International” and not capitalizing on the reputation and goodwill inherent in the Complainant’s MI trademark.
The Respondent finally contends that it has rights or legitimate interests in the Domain Names because: 1) the Respondent is commonly known by the Domain Names; 2) the Respondent is making a fair use of the Domain Names. The Panel noticed that the Respondent’s trade name is “RC Technology”. Furthermore, the websites are operated by TECNO Trading Online, S.L., and there was no mentioning of “Mobile International” being the Respondent’s own mark in the websites before notice of the dispute. The Respondent thus failed to produce sufficient evidence that it has been commonly known as “Mobile International” even through the Domain Names and the associated websites. The Panel notes that the Respondent has provided a list of customer orders, turnover or investments made by the Respondent on its websites. However, the Panel considers that while they generally show business activity, these evidence does not show that the Respondent is commonly known by the Domain Namesnor that the Respondent is making a fair use or a bone fide offering of goods or services. In addition, the Panel notes that the nature of the Domain Names consisting of the MI trademark and the terms “customer service” and “españa”. The Panel considers that in the circumstances of the case such composition (and considering also the use of the logo on the first version of the website) created a risk of affiliation or tends to suggest endorsement by the Complainant.
Nor can the Respondent claim that it is making bona fide offering of goods or services through the Domain Names or a fair use of the Domain Names. It is undisputed that it is not a bona fide offering of goods or services or a fair use if a respondent is hosting a website to provide products in direct competition with the complainant.
The Panel concludes that the Respondent has not rebutted the Complainant’s prima facie case that the Respondent does not have rights or legitimate interests in respect of the Domain Names.
C. Registered and Used in Bad Faith
For the reasons discussed above, the Panel considers that the Respondent’s conduct in this dispute constitutes bad faith within the meaning of paragraph 4(a)(iii) of the Policy. Clearly the Respondent has registered and has been using the Domain Names in the knowledge of the Complainant’s MI trademark, aiming at making reference to the Complainant and the MI trademark and diverting Internet users to its own websites.
By registering the Domain Names, the Respondent was attempting to impersonate the Complainant so as to benefit from initial interest confusion created by the Domain Names. The Domain Names have been registered and used in an intentional attempt to attract for commercial gain, Internet users to the Respondent’s own websites, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites and products or services on the Respondent’s websites. Besides, the Respondent’s promotion and sale of mobile phones competing to the Complainant’s products constitutes unfair exploitation of the Complainant’s trademark.
The Panel therefore concludes that the Domain Names have been registered and are being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <micustomerservice.com> and <miespaña.com> (xn--miespaa-9za.com) be transferred to the Complainant.
Date: January 11, 2019