ADMINISTRATIVE PANEL DECISION
HDMl Licensing Administrator, Inc. v. S Kumar, Knoxed Limited
Case No. D2018-2514
1. The Parties
The Complainant is HDMl Licensing Administrator, Inc. of San Jose, California, United States of America (“United States”), represented by C.V. SNB-REACT u.a., Netherlands.
The Respondent is S Kumar, Knoxed Limited of Kidlington, United Kingdom, represented by UDRP Legal, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <ukhdmi.com> (the “Disputed 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 November 2, 2018. On November 2, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 5, 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 6, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 26, 2018. Upon request of the Respondent, the due date for Response was automatically extended to November 30, 2018, in accordance with the Rules, paragraph 5(b). The due date for Response was further extended to December 17, 2018, upon request by the Respondent which was not opposed by the Complainant. The proceeding was suspended December 7, 2018 to January 31, 2019, by joint Party request in accordance with the Rules, paragraph 17. Upon request of the Complainant, the proceeding was reinstituted on January 29, 2019 and the due date for Response was duly extended to February 8, 2019. The Response was filed with the Center on February 8, 2019.
The Center appointed John Swinson as the sole panelist in this matter on February 18, 2019. 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 HDMI Licensing Administrator, Inc, a company incorporated in the United States. The Complainant owns a number of registered trade marks for HDMI, including European Union Trade Mark registration number 002790970, registered on October 22, 2004 (the “Trade Mark”).
The Complainant licenses the Trade Mark to “Adopters”, who are manufacturers and distributors of the Complainant’s HDMI products. The Complainant has been using the Trade Mark internationally for many years in respect of its connectors and cables. The Complainant also owns several domains which incorporate the Trade Mark including <hdmi.org> and <hdmi.com>.
The Respondent is S Kumar, Knoxed Limited. The Respondent operates a website at the Disputed Domain Name selling HDMI cords as well as other similar goods. The Disputed Domain Name was registered on August 3, 2007.
5. Parties’ Contentions
The Complainant makes the following submissions.
Identical or confusingly similar
The Disputed Domain Name incorporates the entirety of the Trade Mark, with only the addition of “UK”. The Trade Mark is clearly recognizable in the Disputed Domain Name. The Disputed Domain Name is either identical or very confusingly similar to the Complainant’s Trade Mark.
Rights and legitimate interests
The Respondent has no connection or affiliation with the Complainant and the Respondent has never been authorized licensee of the Complainant.
The Trade Mark may only be used by authorized licensees who have entered into an Adopter Agreement with the Complainant. The source of the HDMI products on the website at the Disputed Domain Name is unknown by the Complainant. The Respondent may be sourcing the products from unauthorized licensees or selling its own products unlawfully bearing the Trade Mark.
The Respondent is also using the website at the Disputed Domain Name to sell products that are not branded with HDMI marks. Further, the website does not mention that the Respondent is not an authorized manufacturer or distributor of the Complainant.
Registered and used in bad faith
The Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
This confusion is caused by virtue of the Disputed Domain Name itself, as the website does not accurately and prominently disclose the Respondent’s relationship with the Complainant.
The Respondent makes the following submissions.
The Respondent is a reseller of the Complainant’s Adopters and uses the mark to identify the source of HDMI cables and accessories. The Respondent states that the Complainant does not manufacture or sell any products but instead licenses its products. The Complainant does not control the distribution or resale of its products.
The Respondent has rights and legitimate interests as it meets the requirements set out in the case of Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“Oki Data”) as an unauthorized reseller of the Complainant’s goods. The website at the Disputed Domain Name discloses the Respondent’s relationship with the Complainant, the Respondent sells the trade marked goods, the Respondent does not sell other goods, and the Respondent has not tried to corner the market.
HDMI has become the industry standard for HD devices and, in the mind of consumers, HDMI has become generic. The Complainant’s licensing fee allows for the production and sale of non-HDMI branded cables as long as they receive licensing payment.
The Disputed Domain Name was registered in good faith, to communicate to consumers that the website is the UK reseller of the HDMI cables and accessories. The Respondent disagrees that the Disputed Domain Name is being used in bad faith as the Complainant’s mark is not capable of distinguishing its own goods and services from those sold by the Respondent.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(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 in bad faith.
The onus of proving these elements is on the Complainant.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights.
The Disputed Domain Name incorporates the entirety of the Trade Mark, with the geographical term “UK” as the only additional term. A domain name which incorporates a registered trade mark only with the addition of a geographical term is often considered by panels to be confusingly similar to the relevant trade mark for the purposes of the first element (see WIPO Overview of UDRP Panel View on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) at section 1.8).
The Panel considers that the Disputed Domain Name is confusingly similar to the Trade Mark. The Complainant succeeds on the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Complainant states that the Respondent is not licensed to sell its products or use the Trade Mark. The Respondent states that the Complainant does not manufacture or sell its products but instead licenses the Trade Marks to “Adopters” who create and sell the HDMI related devices. The Respondent argues it is reseller of the Complainant’s Adopters, and as such is using the Disputed Domain Name in connection with a bona fide offering of goods and services.
Whether or not the Respondent’s unauthorised reselling of the Complainant’s goods provides rights or legitimate interests under the Policy requires consideration of the case of Oki Data and the principles described in that decision in relation to bona fide use of a disputed domain name by a reseller. The panel in Oki Data stated that a reseller or distributor (and particularly an authorized reseller or distributor) can be making a bona fide offering of goods and services and thus have a legitimate interest in a domain name if its use meets the following requirements:
- the respondent must actually be offering the goods or services at issue;
- the respondent must use the site to sell only the trade marked goods (otherwise, there is the possibility that the respondent is using the trade mark in a domain name to bait consumers and then switch them to other goods);
- the site itself must accurately disclose the respondent’s relationship with the trade mark owner; and
- the respondent must not try to “corner the market” in all relevant domain names, thus depriving the trade mark owner of the ability to reflect its own mark in a domain name.
Oki Data is a narrow exception to this rule for legitimate resellers, distributors and dealers. Based on the evidence provided by the parties, the Respondent’s use of the Disputed Domain Names does not meet the second element of the Oki Data test. The Respondent is offering for sale products manufactured by third parties, some of which compete with those offered by the Complainant. Further, at the time the Complaint was filed there was no disclaimer on the website to disclose the Respondent’s relationship with the Complainant. This was only added after the Complaint was filed.
The Respondent’s argument that the Complainant “does not manufacture or sell any products, but instead licenses its trade marks to Adopters” is not relevant to this assessment. The Complainant owns the Trade Mark and has not authorized, licensed or otherwise given permission to the Respondent to use the Trade Mark or the Disputed Domain Name.
The Respondent submits that between 2008 and 2009 the Complainant contacted it about becoming a HDMI Adopter. It is not clear whether an Adopter agreement was ever signed between the parties. However, to the extent the Respondent was ever an authorized distributor or had permission from the Complainant to use the Trade Mark (or the Complainant acquiesced to that use), that arrangement is clearly no longer in force and any permission the Respondent may have had previously has been withdrawn. Therefore, it is clear that the Respondent does not have rights or legitimate interests in the Disputed Domain Name (see ESET, spol. s.r.o. v. Antivirus Australia PTY Ltd., Rodney Fewster, ESET Pty Ltd., WIPO Case No. DAU2015-0014; Pangaea Laboratories Ltd, Pacific Direct Intertrading Pty Ltd v. Astrix Pty Ltd, WIPOCase No. DAU2015-0013).
The Respondent also submits that the Complainant’s licensing fee allows for the production and sale of non-HDMI branded cables as long as they receive licensing payment. Whilst this may be the case, there is no evidence before the Panel that the Respondent is paying any licensing fee whatsoever to the Complainant. Further, it is not the job of this Panel to determine whether the Trade Mark has become generic.
The Respondent has not provided sufficient evidence to rebut the prima facie case established by the Complainant. In light of the above, the Complainant succeeds on the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
If circumstances indicate that the Respondent’s intent in registering the Disputed Domain Name was to profit in some fashion from, or otherwise exploit, the Complainant’s Trade Mark, panels will find bad faith on the part of the Respondent (see section 3.1.1 of the WIPO Overview 3.0).
The Complainant’s registration of the Trade Mark predates the registration of the Disputed Domain Name by three years. In light of the reputation of the Trade Mark and based on the evidence provided by the Complainant, including that the Respondent is selling both the Complainant’s goods and competitor goods, it is highly probable that the Respondent had knowledge of the Trade Mark at the time of acquiring the Disputed Domain Name. Therefore, in these circumstances, where the Respondent is offering competing products which use the Complainant’s Trade Mark, it is open for the Panel to find that the Respondent is trading off the Complainant’s Trade Mark and registered and is using the Disputed Domain Name in bad faith.
Further, the Complainant sent to the Respondent a cease and desist letter drawing the Respondent’s attention to the Complainant’s rights in the Trade Mark and seeking transfer of the Disputed Domain Name to the Complainant. The Respondent’s failure to respond further demonstrates the use in bad faith.
In the circumstances, the Panel finds that the Respondent registered and is using the Disputed Domain Name in an intentional attempt to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Trade Mark as to the source, sponsorship, affiliation, or endorsement of its website, location, or of a product or service on its website or location. This is evidence of registration and use in bad faith under paragraph 4(b)(iv) of the Policy.
In light of the above, and in the absence of a response and any evidence rebutting bad faith registration and use, the Complainant succeeds on the third element 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 Name <ukhdmi.com> be transferred to the Complainant.
Date: March 1, 2019