WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Xiaomi, Inc. v. Oleksandr Shyrkov
Case No. D2018-2803
1. The Parties
The Complainant is Xiaomi, Inc. of Beijing, China, represented by Lane IP Limited, United Kingdom.
The Respondent is Oleksandr Shyrkov of Kiev, Ukraine, represented by Olena Shum, Ukraine.
2. The Domain Name and Registrar
The disputed domain name <xiaomi-mi.com> (the “Disputed Domain Name”) is registered with101domain GRS Limited (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 2018. On December 7, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 8, 2018, 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 8, 2018 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 on December 14, 2018.
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 December 21, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 10, 2019. On January 8, 2019, the Respondent requested an extension to the due date of the response in accordance with paragraph 5(b) of the Rules. The Center confirmed the extension of the Response due date from January 10, 2019 to January 14, 2019 in accordance with Paragraphs 5(b) of the Rules. The Response was filed with the Center on January 14, 2019.
The Center appointed Nick J. Gardner as the sole panelist in this matter on January 23, 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.
On January 25, 2019 the Complainant lodged a request to be allowed to introduce a supplemental filing, together with the supplemental filing itself (the “Complainant’s Supplemental Filing”). On January 31, 2019 the Panel issued a Procedural Order indicating it was minded to allow the Complainant’s Supplemental Filing to be admitted but permitting the Respondent to make submissions in this regard and to provide its own supplemental filing in response, to be considered by the Panel if it admitted the Complainant’s Supplemental Filing. On February 11, 2019 the Respondent provided submissions objecting to the Complainant’s Supplemental Filing together with a supplemental filing in response (the “Respondent’s Supplemental Filing”). For reasons discussed below the Panel will admit both supplemental filings.
4. Factual Background
The Complainant is a Chinese consumer electronics company that develops and produces smartphones, mobile applications and other electronic products. The Complainant distributes products through physical stores, and via its official website “www.mi.com” and via other online stores in many countries and regions around the world. There is no dispute that the Complainant is a leading provider of smartphones and it is accordingly not necessary to go into further detail in this regard.
The Complainant owns various trademark registrations for XIAOMI, including International Registration no. 1177611 (for the word in stylized form) registered on November 28, 2012 and designating various countries including the Ukraine, and European Union Trademark Registration no. 012672283 registered on August 4, 2014. These trademarks are referred to in this decision as the “XIAOMI Trademarks”.
The Complainant owns various trademark registrations for MI, including International Registration no. 1173649 registered on November 28, 2012, designating various countries including the Ukraine. These trademarks are referred to in this decision as the “MI Trademarks”.
The Complainant has owned the domain name <mi.com> since April 2014, prior to the Respondent’s registration of the Disputed Domain Name. It has resolved to the Complainant’s official website since at least April 22, 2014. The Complainant has also owned the domain name <xiaomi.com> since at least March 2013, and it too has resolved to the Complainant’s official website since about that date. The Complainant also owns numerous other domain names including the trademarks XIAOMI and MI, which were registered before the Disputed Domain Name.
The Respondent is an individual based in the Ukraine. The Respondent registered the Disputed Domain Name on May 5, 2014. At the time of writing this decision it does not resolve to an active website but it has previously resolved to a website (the “Respondent’s Website”) which contained material concerning the Complainant’s products. The evidence establishes that a visitor to the Respondent’s Website would have found what appeared to be a large professionally presented website, which contains extensive information about the Complainant’s product range. Each page has a banner strip across the top with links to “New”, “Videos”, “User Manuals”, “Mio T Ecosystem”, “Mi Community” and “Wholesale Request”. The Panel presumes these are links to other sections of the Respondent’s Website though it is not clear to the Panel in all cases exactly where they will go to and with what result – so for example the Panel does not know what “Wholesale Request” leads to. The evidence shows that the “Mi community” link leads to a page headed “Global Community” which contains text inviting visitors to subscribe to a forum where users can “hang out together”. It contains text such “What is Mi Community? Mi Community is our official community Forum….” and “At Xiaomi we put our fans first. It is an incredibly important part of our company’s culture to listen and chat with our fans so we built a home just for you!”.
The content of this website, including a disclaimer, which the Respondent relies upon, is discussed further below.
It is clear that the Complainant and the Respondent are known to each other and have had a range of dealings over several years. Each party has placed in evidence some of the correspondence that has passed between them but the Panel is uncertain as to whether a complete record has been provided. This correspondence (discussed in more detail below) shows, in broad terms, that the Respondent has been active commercially in promoting and developing a business in several countries, including in the Ukraine, based upon the selling of the Complainant’s smartphones and related services. He is not however an authorised dealer or distributor for the Complainant.
5. Parties’ Contentions
The Panel will deal first with the Complaint and Response before considering the Complainant’s Supplemental Statement and the Respondent’s Supplemental Statement.
The Parties have each referred to numerous previous UDRP decisions in support of their arguments. To the extent the Panel considers them relevant it will address them in its discussion below, but not repeat what the Parties have each said about them.
A. Complainant - Complaint
The main submissions advanced by the Complainant are as follows.
The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. It incorporates, in its entirety, the Complainant’s XIAOMI and MI trademarks (which are also the terms used by the Complainant in its domain names <xiaomi.com> and <mi.com> and its additional domain names using “xiaomi” and “mi”). The non-distinguishing generic Top-Level Domain (“gTLD”) “.com” is to be ignored in this regard.
The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Respondent does not own and has not used in good faith any trade marks for XIAOMI or MI and there is no evidence that the Respondent is commonly known by or referred to as XIAOMI or MI. The Respondent is not an authorised agent or distributor of the Complainant’s products.
The Disputed Domain Name has been registered and is being used in bad faith by the Respondent, in particular, because by using the domain name, the Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent’s Website, by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Website or location or of a product or service on the Respondent’s website or location. The Respondent uses or has used the Disputed Domain Name to resolve to the Respondent’s Website. This website is or was concerned with selling mobile phones including smart phones and their accessories. The website homepage featured a revolving banner showing images of the Complainant’s products and on each image the Complainant’s “MI” logo is or was prominently displayed.
Further detail about the Respondent’s Website was provided by the Complainant and this is discussed below. In particular the Complainant drew attention to a link entitled “User Manuals” which when clicked provided a list of manuals for the Complainant’s products under the wording “THIS SECTION IS SPONSORED BY NIS-STORE.COM”, which it says was in turn a link to an active website at “nis-store.com” (the “NIS store Website”) selling the Complainant’s smartphones and other products from related companies of the Complainant. The Complaint alleges that website is also under the control of the Respondent.
The Complainant noted that a disclaimer appears at the footer of the Respondent’s Website that reads “This website is set up and operated by NIS LLC. for the benefit of the Mi Fan Community. NIS LLC. hereby states that this website is dedicated, but not related to Xiaomi Inc. or any of its affiliated entity to sell products of Xiaomi Inc.” It says that disclaimer is not sufficient to avoid a finding of bad faith.
The Complainant says that use by the Respondent of the Complainant’s XIAOMI and MI trademarks in the Disputed Domain Name in combination with its use of the Disputed Domain Name to resolve to the Respondent’s Website which is concerned with providing the Complainant’s smartphones, devices and related accessories and resources related to these goods, is bound to cause confusion and lead consumers to believe that the Respondent is affiliated with, sponsored or licensed by the Complainant. Furthermore, the use of terms which appear in various places on the Respondent’s Website such as “Xiaomi Global Community” and “Mi Community” can only confuse customers further into thinking that the site is controlled or authorized by the Complainant.
The Complainant also says the Respondent has registered a number of domain names, which contain the Complainant’s XIAOMI and/or MI marks. These are <xiaomi-mi.at>; <xiaomi-mi.co.uk>; <xiaomi-mi.com>; <xiaomi-mi.de>; <xiaomi-mi.fr>; <xiaomi-mi.in>; <xiaomi-mi.mx>; <xiaomi.am>; and <xiaomi.ps>. These are discussed further below. The Complainant says this demonstrates a pattern of abusive, bad faith behavior.
B. Respondent - Response
The Respondent’s main submissions are as follows.
The Respondent says the Respondent’s Website is a genuine fan site, which he explains as follows: “Respondent 05/05/2014 created fan website «xiaomi-mi» under the domain name xiaomi-mi.com in order to unite fans of products «Xiaomi» and «Mi» from all around the world” and “The Fun-website xiaomi-mi.com is a kind of social network enabling Internet users to get acquainted with the range of «Xiaomi» and «Mi» products, learn about the technical characteristics of such products, compare different models, learn about new items and their features, discuss them with other fans on the website”.
The Respondent says he also operates a similar YouTube channel the “XIAOMI GLOBAL COMMUNITY channel”.
The Respondent relies upon a disclaimer in the footer of pages on the Respondent’s Website that reads, “This website is set up and operated by NIS LLC. for the benefit of the Mi Fan Community. NIS LLC. hereby states that this website is dedicated, but not related to Xiaomi Inc. or any of its affiliated entity to sell products of Xiaomi Inc”. He says this disclaimer has been agreed with the Complainant. The Respondent has placed in evidence email correspondence between himself and the Complainant’s legal department about this issue. This is discussed below.
The Respondent also says that he has rights and legitimate interest in the Disputed Domain Name by virtue of his ownership or interest (together with a company called Concord Trade Inc.) in various Ukrainian trademarks, as follows:
1) Trademark MI No. 199358, filed on August 12, 2014 and registered on May 12, 2015, for services in Classes 35, 45 including: demonstration of goods; providing business information via a web site; presentation of goods on communication media, for retail purposes; promotion of goods for sale through online stores; placing in the Internet and other computer networks on web pages and websites information on the range of goods which allows customers to conveniently view, order, buy these goods as well as to receive the necessary information about these goods; online social networking services.
2) Trademark MI No. 178060, filed on September 17, 2012 and registered on November 11, 2013, for services in Class 35 including: demonstration of goods; providing business information via a web site; presentation of goods on communication media, for retail purposes; promotion of goods for sale through online stores; placing in the Internet and other computer networks on web pages and websites information on the range of goods which allows customers to conveniently view, order, buy these goods as well as to receive the necessary information about these goods.
3) Trademark XIAOMI according to the Certificate of Ukraine No. 189086, filed on March 11, 2014 and registered on July 25, 2014, for services in Class 45 including: online social networking services.
The Respondent says that trademark MI No. 178060, predates the Complainant’s international and European Union Trademark registrations.
He says that other trademarks relied upon by the Complainant do not belong to the Complainant but to other legal entities.
The Respondent says the Disputed Domain Name was registered in good faith as it was for use in connection with a “non-profit website, but is a fan website that unites fans of Xiaomi and Mi products from all over the world”.
The Respondent confirms that NIS LLC is a United States of America company and says he uses the Respondent’s Ukrainian trademark nos 199358, 178060, 189086 on the basis of a License Agreement dated May 13, 2015 with that company.
C. Complainant’s Supplemental Statement
It is convenient to say at this stage that the Panel will exercise its discretion under the Rules to allow the Complainant’s Supplemental Statement. This is because it seems to the Panel that the Response raised issues the Complainant could not readily have anticipated, in particular the Respondent’s reliance on his own Ukrainian trademarks. In addition, the Complainant also shows that correspondence the Respondent introduced was only part of what had passed between the parties. Other matters in the statement address issues, which, could possibly have been anticipated but the Panel does not consider it practical to separate these out, and will admit the statement in its entirety. It follows that the Panel will in fairness also admit the Respondent’s Supplemental Statement.
The Complainant disputes that the Respondent’s Website is a fan site. It says that in addition to showing a wide range of the Complainant’s products there was a link on the site under the wording “THIS SECTION IS SPONSORED BY NIS-STORE.COM” to an active website at https://nis-store.com, selling the Complainant’s smartphones and other products. It also says that prior to that, the Respondent had placed a “button” on the home page of the Respondent’s Website labeled “Buy at NIS-Store” directing users to his own web-store where they could purchase the Complainant’s products (see further the discussion below as to this evidence).
The Complainant also says that the Respondent’s Website is not clearly distinctive from any official site as it featured the Complainant’s MI logo prominently on its homepage. In addition, on clicking the “Mi Community” heading at the Respondent’s website a screen appeared featuring the wording (under “What is Mi Community”) “Mi Community is our official (Complainant’s emphasis) community forum” and “At Xiaomi, Furthermore, the website is not “clearly distinctive from any official site” as, the Respondent’s site featured the Complainant’s MI logo prominently on its. In addition, on clicking the ‘Mi Community’ heading at the Respondent’s website a screen appeared featuring the wording (under ‘What is Mi Community’) “Mi Community is our official (Complainant’s emphasis) community forum” and “At Xiaomi, (Complainant’s emphasis) we put our fans first. It’s an incredibly important part of our company’s culture to listen and chat with our fans, so we built a home just for you! Make yourselves comfortable, meet new friends, join events, share your photos, reviews and most importantly — have fun!!!:)”
The Complainant says that these (and other similar) statements give the clear impression that the Respondent’s website is both official and under the control of the Complainant.
So far as the Respondent’s trademarks are concerned the Complainant says that the Respondent registered these marks for the purpose of securing trademark rights in the terms “xiaomi” and “mi” and to legitimize its ownership of the Disputed Domain Name and thus, to circumvent the application of the Policy. The trademarks therefore do not constitute either rights or a legitimate interest in the Disputed Domain Name.
The Complainant also says two of the Respondent’s trademark registrations were filed subsequent to the designation of Ukraine in each of the Complainant’s own International Registrations of the XIAOMI word (no. 1177611, date of registration November 28, 2012, published in Ukraine October 17, 2013) and MI stylized mark (no. 1173649, date of registration November 28,2012, statement of grant in Ukraine issued August 18, 2014). Therefore, these marks are in no way earlier rights, or represent legitimate interests. The Complainant also says that at the time of filing the XIAOMI mark, the Respondent was clearly aware of the Complainant and its brand. This unusual, highly distinctive and unique brand of the Complainant cannot have been chosen and registered innocently by the Respondent. The Complainant says it appreciates that the forum for attacking the validity of such trademarks is not through the UDRP process but wishes to raise this point to clearly demonstrate the pattern of abusive behaviour of the Respondent vis-à-vis the rights and brands of the Complainant.
With regard to the Respondent’s third trademark, Ukraine registration no. 178060, the Complainant notes that this mark is partly in the name of a third party, Concord Trade Inc. It says the Respondent has not given any explanation as to his relationship, if any, with Concord Trade Inc. and they are unknown to the Complainant and not a party to these proceedings. The Complainant therefore submits that this mark cannot be relied upon to support the Respondent’s claim of legitimate rights in respect of the Disputed Domain Name and should not be taken into account. In any event, it says this registration is for a highly stylised mark covering a huge range of services in Class 35. Although it contains the letters “mi”, it would not necessarily be seen as or referred to as MI. It also says it appreciates that this Complaint is not the forum for assessing the validity or otherwise of a trademark, but the Complainant has found no use of this mark and believes it is vulnerable to cancellation for non-use. As with the Respondent’s other trademarks, the Complainant believes that he registered this trademark for the purpose of securing rights to a mark he claims to be a “MI” mark and therefore legitimizing his ownership of the Disputed Domain name in the event of disputes such as this current UDRP arising.
The Complaint also says (it says this is “crucial”) that the Disputed Domain Name is <xiaomi-mi.com>. Whilst the Respondent’s Ukrainian trade mark registration no. 178060 may provide him with an argument that he has a right to secure a “mi” domain name (although it is submitted that this is not the case given the trade mark is highly stylised and almost depicts a shape mark, and even if it is meant to be a MI mark, is designed to mimic the Applicant’s brand), it does not and cannot be deemed to support rights and legitimate interests in registering <xiaomi-mi.com>. The inclusion of the highly distinctive and unique company name and house mark XIAOMI in the Disputed Domain Name clearly demonstrates the bad faith intentions of the Respondent in its registration and use of it. The Respondent’s XIAOMI trademark has been shown to be later than the Complainant’s own rights in Ukraine in the XIAOMI trademark under International Registration No. 1177611 and therefore, the Respondent can lay no legitimate claim, right or interest to <xiaomi-mi.com>.
The Complainant notes that the Respondent has registered a Ukrainian trade mark registration for the Complainant’s MI logo in the identical stylized form as used by the Complainant under International Registration No. 1173649.
The Complainant relies upon a number of previous UDRP decisions, which it says show that a registered trade mark does not automatically give a respondent either rights or legitimate interests in a corresponding domain name. In particular, where it appears that a trademark was obtained primarily to support the Respondent’s claim of rights in support of a domain registration. It also points out the Respondent’s trademark registrations are in essence for a range of services, whilst it is using the Disputed Domain Name to promote the sale of mobile telephones.
So far as the ownership of other domain names was challenged by the Respondent the Complainant says these are owned by affiliates of the Complainant (or in one case by the Complainant itself). It produces evidence confirming the relevant details.
So far as the correspondence relied upon by the Respondent concerning the disclaimer (see above) the Complainant says this is not complete and there is further correspondence which the Respondent has not provided including a cease and desist letter sent by the Complainant and subsequent correspondence. This correspondence is discussed further below.
D. Respondent’s Supplemental Statement
This in large measure repeats points made in the Response. The Respondent reiterates that the Respondent’s website is a fan site and says the banner advertising the Complainant relies upon was part of a sponsorship arrangement to defray the costs of running the website. He appears to deny that this banner operates as any sort of click through link. He says to the extent he uses the logo of the Complainant it is merely to identify the Complainant’s products.
The Respondent disputes that the Respondent’s Website uses terminology such as “official” and it does not position itself as being operated by the Complainant.
The Respondent says that so far as the disclaimer is concerned the Complaint itself agreed to its wording and positioning, so cannot now complain about it.
The Respondent produces evidence of an agreement between himself and Concord Trade Inc, allowing him use of the trademark owned by that company.
The Respondent says he has participated in events organised by the Complainant and has even been given various awards by the Complainant. He says this confirms he has acted in good faith. He says the Complainant is only trying after five years to obtain the Disputed Domain Name because he has spent time and effort building the Respondent’s Website up to be a very popular fan web site.
6. Discussion and Findings
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) the Disputed Domain Name is identical with or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has clearly shown it has rights in the XIAOMI trademarks and the MI trademarks.
The Disputed Domain Name combines these two trademarks. As stated in section 1.12 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, it is a well-established principle that a domain name that wholly incorporates a trademark is found to be confusingly similar for purposes of the Policy, despite the fact that the disputed domain name may also contain another third-party’s distinctive mark. See for example Hoffmann-La Roche Inc. v. Charlie Kalopungi, WIPO Case No. D2010-1826, where the panel found that “the inclusion of the trademarks of other parties in the disputed domain name does not detract from the confusing similarity”. The same principle applies even more clearly when the disputed domain name combines two different trademarks each owned by the Complainant.
Accordingly the Panel finds that the Disputed Domain Name is confusingly similar to the trademarks in which the Complainant has established rights pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
In view of the Panel’s findings in relation to bad faith (below) it is not necessary to determine this issue.
C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy a non-exhaustive list of factors evidencing registration and use in bad faith comprises:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
The Complainant’s case is in substance that (iv) applies. It says the Respondent’s Website would be taken to be an official site of the Complainant and that the Respondent derives commercial advantage by providing a link or links to his NIS-Store Website where he sells the Complainant’s products. The Respondent in essence denies this, says the Respondent’s Website is an enthusiast’s not for profit website, and in any event the Complainant has agreed to what he is doing and itself approved the wording of the disclaimer he uses.
The Panel will preface its discussion of this issue by saying it has not found resolving this complaint to be easy or straightforward. The relevant facts are far removed from a typical “cybersquatting” case which is the primary focus of the Policy. This is in particular because of the evidence before the Panel as to the meetings, correspondence and other events that have taken place as between the Complainant and the Respondent.
The evidence as a whole indicates that the Respondent has set about developing a business promoting the Complainant’s products. He appears to have done so entirely speculatively and without any relationship with, or agreement from, the Complainant. It would appear that he has been at least to some extent successful in this endeavor. In doing so it appears he has provided some facilities that have been of benefit to the Complainant, or users of the Complainant’s products – for example the translation of manuals and other documents into English or Ukrainian. It appears that useful material of this nature has been made available to users of the Complainant’s products via the Respondent’s Website. It would also appear that the Respondents’ Website attracts significant numbers of visitors. If the Panel has understood correctly the relevant analytics evidence the Respondent has made available it would seem to typically be in the region of 500,000 visitors a month. It also seems clear to the Panel that the Respondent is correct when he says he does not directly sell the Complainant’s products from the Respondent’s Website. It is however also clear that he does sell (or promote the sales of) the Complainant’s products by other means – including via the NIS-Store Website.
It would appear that the Complainant has been at least in some respects appreciative of the Respondent’s activities – so for example the Respondent exhibits a photograph of himself holding a certificate presented to him dated December 6, 2018 by the “Xiaomi MIUI Global Forum” (which he says is the Complainant), and which reads “MIUI Ukraine Website [note – the Panel is unclear whether this refers to the Respondent’s Website or some other web site he operates]. This certificate is presented to honor [Respondent] in recognition and sincere appreciation for your outstanding work at Xiaomi MIUI Global Forum”.
Given this unusual and complicated background the Panel has reviewed carefully the material that has been placed in evidence as to the dealings between the parties. It has not found it at all easy to understand. Communications have been effected in English which is clearly a second language to each party, and the relevant language and meaning is not always clear. Each party has put in evidence of some of the relevant correspondence but it has been provided in a disorganized order and is very hard to follow, particularly as long email chains are involved, and various e mails have been annotated subsequently with in-line comments. The Panel does not think it is likely that it has seen all of the relevant correspondence. As best the Panel can tell the sequence of events can be summarised as follows:
A meeting took pace between the Complainant and the Respondent on September 13, 2017. The Panel does not know what preceded this meeting.
On September 27, 2017, the Complainant emailed the Respondent following up the meeting and saying as follows:
“This Email is a follow up on our meeting at Xiaomi on the 13th September 2017 regarding the websites xiaomi-mi.com, xiaomi-mi.de, xiaomi.uz, mi.ua, miui-global corn, and all other websites owned, operated, or otherwise controlled by you or NIS and having the domain names related to the brands Xiaomi or Mi, or related to any Xiaomi product or operating system.
During the meeting, you promised to perform follow actions:
Displaying conspicuously and continuously on those websites a disclaimer that clearly and unambiguously disclaim any official connection between those websites and Xiaomi H.K. Limited, Xiaomi Inc. or any entity related thereto.
We would like to verify whether you have taken appropriate actions to fulfill your promise. in addition, we would like to assist you in your actions by proposing the following statement as the disclaimer to be displayed on those websites:
This website is set up and operated by NIS for the benefit of the Mi Fan Community, and is related to Xiaomi Inc. or any of its affiliated entity and is not authorized to sell or offer to sell any product of Xiaomi Inc. or any of its affiliated entity.
Xiaomi is taking any infringement of its proper right and interest seriously and reserves the right of taking further administrative and legal actions to stop the infringement and seek remedies under the laws
We appreciate you as a Mi Fan and hope you to continue your interest in Xiaomi and Xiaomi products”
Later the same day (September 27, 2017) a subsequent email was also sent by the Complainant, saying that the wording of the disclaimer in the previous email was incorrect and it should read
“This website is set up and operated by NIS LLC for the benefit of the Mi Fan Community. NIS LLC hereby states that this website is neither related to Xiaomi Inc. or any of its affiliated entity nor authorized to sell or offer to sell any product of Xiaomi Inc. or any of its affiliated entity”.
On October 16, 2017, the Complainant e-mailed the Respondent stating:
“Dear Alexander, Thanks your positive actions to exhibit the statement notice on your website. Could you please exhibit the following revised statement notice on your website:-This website is set up and operated by NIS LLC. for the benefit of the Mi Fan Community. NIS LLC. hereby states that this website is dedicated, but not related to or authorized by Xiaomi Inc. or any of its affiliated entity to sell products of Xiaomi Inc."
We received your all your responding letters and learned your requests. We will forward your letters to our international sales team.
On January 9, 2018, the Complainant sent a cease and desist letter to the Respondent. The main thrust of that letter appears to be to complain about some third party products that were being inaccurately marketed under the Complainant’s trademarks on various websites operated by the Respondent, including the Respondent’s Website.
At some stage in February or March 2018 a face-to face meeting took place (according to an e-mail of March 30 2018 – see below).
On March 30, 2018 the Complainant sent the Respondent a lengthy letter making various complaints, as follows:
“On some of your websites (Attachment 2), you present as Xiaomi’s authorized suppliers and made false statements, including but not limited to the following:
a) you present as a Xiaomi authorized partner, and propose others to contact you if they’d like to be Xiaomi’s partner in Ukraine (https://mi.ua/nashi-proekti/cooperation),
b) you stated that you are suppliers of Xiaomi ecosystem products in Ukraine, and have authorized service centers https://service.mi.ua/ (https://mi.ua/company/about);
c) you claimed you can give authorization to others to become representative (https://service.mi.ua/about).
2. Without our authorization, you opened dozens of physical stores (Attachment 3), and:
a) these stores used our registered marks MI Logo and XIAOMI dominantly on the indoor decoration and the signboards;
b) MI Logo was put inside a house-shaped logo, and was depicted on T-shirts of the stores’ employees;
c) Our MIJIA Logo was used in some of the stores as well;
3. Without our authorization, you gave certificate in your name for MiJia Laptops, and stated that the declaration was issued under the full responsibility of the manufacturer / authorized person, supplier. Furthermore, and on the statement, you claimed that laptop is branded with “MIJIA”, while in fact our laptops are branded with MI trademark instead of MIJIA.
4. Additional infringing domain names
Furthermore, apart from the 30 domain names in our C&D Letter, we noted you registered following domain names where various of our products are being sold.
http://mijia.ua/ http://www.miui.ua/ xiaomi.com.ua
5. Disclaimer were not shown on some of your websites.
In our letter in Jan, we requested that you add a disclaimer on each of your website and highlighted it according our requirement. We noticed you added it on some website, while did not do it on other websites. (Required content of the disclaimer: This website is set up and operated by NIS LLC. for the benefit of the Mi Fan Community. NIS LLC. hereby states that this website is dedicated, but not related to Xiaomi Inc. or any of its affiliated entity to sell products of Xiaomi Inc.)
Apart from the above, we also noted that you displayed expired authorization letters (Attachment 4) from our ecosystem companies”.
The letter went on to demand that the Respondent:
1. Rectify your false statement on your websites and in your stores, and provide evidence to prove that you have done so;
2. Deregister/deactivate the 33 infringing domain names, and other infringing domain names if there are any, which contain the Xiaomi trademarks and/or trade names, OR, transfer them to Xiaomi;
3. Deregister the 13 marks that are identical or similar to the Xiaomi trademarks, and other infringing marks if there are any, OR, transfer them to Xiaomi;
4. Add the disclaimer on each of your website and highlighted it according our requirement.
5. Stop using our MI Logo, Xiaomi, Mijia Logo on your signboard, cashier, clothing of employees and shop decoration;
6. Stop displaying the authorization letters from our ecosystem companies in your stores;
7. Refrain from using any trademarks or trade names that are identical or similar to the Xiaomi Trademarks and/or trade names, including the use in domain names, and refrain from making any statements that could cause consumers to mistakenly associate your trademarks and products with those of Xiaomi;
8. Refrain from filing any trademark and/or domain names which are identical, similar to and/or incorporating Xiaomi Trademarks in Ukraine or any other countries/districts in the world;
9. Ensure that henceforth you and your associated companies will not enable, cause or assist any third party to breach Item 7 & 8 above and guarantee that you will convey and notify all affiliated entities and associated parties such as future transferees, assignees and successors of rights and interests to comply with the undertaking.
10. Sign an undertaking and return the original copy to us”.
It also proposed a telephone call the following day to discuss these demands. It would appear such a call occurred – see below.
On April 4, 2017 the Complainant sent the Respondent an email which read
Thank you for attending the con-call. It is good for us to move forward. As discussed, we look forward to your reply to each of the action points listed in our email below, by COB 9 April, next Monday.
The list of action points referred to was set out in what seems to be another email of the same day which has had in line annotations made, as follows:
To recap, during our con-call today, we discussed the issues listed in our email on 30 May, and made notes highlighted blue re our requirements. We look forward to hearing from you on or before 9 April. Thank you.
11. Rectify your false statement on your websites and in your stores, and provide evidence to prove that you have done so; You indicated that you had changed the relevant statements
12. Deregister/deactivate the 33 infringing domain names, and other infringing domain names if there are any, which contain the Xiaomi trademarks and/or trade names, OR, transfer them to Xiaomi; You indicated that you will discuss this with senior partners in your firm and revert back on 9 April
13. Deregister the 13 marks that are identical or similar to the Xiaomi trademarks, and other infringing marks if there are any, OR, transfer them to Xiaomi; You indicated that you will discuss this with senior partners in your firm and revert back on 9 April
14. Add the disclaimer on each of your website and highlighted it according our requirement. You indicated that you had added such disclaimer on websites
15. Stop using our MI Logo, Xiaomi, Mijia Logo on your signboard, cashier, clothing of employees and shop decoration;
You indicated that you will discuss this with senior partners in your firm and revert back on 9 April
16. Stop displaying the authorization letters from our ecosystem companies in your stores; You indicated that you had stopped already
17. Refrain from using any trademarks or trade names that are identical or similar to the Xiaomi Trademarks and/or trade names, including the use in domain names, and refrain from making any statements that could cause consumers to mistakenly associate your trademarks and products with those of Xiaomi; You agreed
18. Refrain from filing any trademark and/or domain names which are identical, similar to and/or incorporating Xiaomi Trademarks in Ukraine or any other countries/districts in the world; You agreed
19. Ensure that henceforth you and your associated companies will not enable, cause or assist any third party to breach Item 7 & 8 above and guarantee that you will convey and notify all affiliated entities and associated parties such as future transferees, assignees and successors of rights and interests to comply with the undertaking. You agreed
20. Sign an undertaking and return the original copy to us. You would look into the undertaking in the Attachment 1.1 in our email on 30 May”
On April 9, 2018 the Respondent sent a lengthy email which included the following about the disclaimer
“Yes. At the meeting at HQ of Xiaomi in September with me and your Legal department we discussed this issue, Later in September we prepared information how we changed and in October we got confirmation from Xiaomi's legal department, that everything is good, thank you. (Copy of confirmation we may present).
In a few monthes I was contacted by Joseph with request to Increase Fonts and make text Brighter and make it more Visionable at every page of our international communities websites, as well as to cancel ''button" which leaded to NIS Store for ordering We have done that again. You write that not shown on some of websites — may we check with you which ones do you mean exactly?
We are kindly asking you to allow us to continue of supporting those communities websites, as we have spent many years to built them, to promote Xiaomi. to support fans and new corners with their questions and problems etc. We have translated thousands of user guides and other data from chines into English/Russian and Ukrainian, what leaded to popularization of Xiaomi globally, even 1%, but we were and continue to promote. As you may know, there are not so many Xiaomi dedicated/oriented websites as ours, e.g. Xiaomi.EU, Xiaomitiday.com and a few others. All of them are working now and bring more popularization to Xiaomi Globally. We have succeded to show more than 10 min times videos with XiaoMi products.
Our aim was to make by NIS Global Xiaomi Fan's Community, that is why we decided to register in different countries many domain names. We have treated them well. Each year we paid all fees to the registar and to hosting companies in different countries. We have supported every day/week updated news, users guides, news and other information as well as Xiaomi's users questions for Tech software and hardware support. We have got large community members, amount exceed 1 mln users. Most of those users or Mi Fars have not ordered or bought from us anything.
(!) We would like to ask for your permission not to close those domains, but to continue to support them.
These domains became very hot because NIS has spent big resource for News, Products, Users guides tanslations and Forum Support issues. We do not mention or say that we are Agent or Distributor of Xiaomi. It is important to underline”
On April 18, 2018, it appears a further meeting took place – see below.
On May 2, 2018, the Complainant wrote to the Respondent as follows:
Following our physical meeting on 18 April and a number of WeChat communications, we are happy to see that we are moving forward re solution of the current issues, and that you are willing to transfer the TMs and some of the domain names to Xiaomi Inc.
According to our communication today and a few days ago, you are willing to transfer the TMs and some of the domain names to Xiaomi Inc. and requested us to send you documents for the transfer. For that purpose, we will prepare an agreement for our both parties to sign. After signature of the agreement, we then prepare relevant documents for the transfer.
Please let us know if you have any question on the above. Thank you.
On May 7, 2018, the Respondent answered the Complainant and asked permission to become a repair/support service provider and/or reseller/distributor.
That appears to be the most recent material provided in evidence. The Panel does not know what happened thereafter save that, as mentioned above, in December 2018, the Complainant appears to have awarded the Respondent a certificate in appreciation of his efforts with regard to the “Ukraine Website”.
Dealing with this as best it can, the Panel has reached the conclusion that this complex and probably incomplete background makes the resolution of this Complaint under the Policy inappropriate. The Complainant clearly has agreed to the wording of the disclaimer that the Respondent uses, even though that wording in some respects makes no sense. The Complainant and the Respondent have clearly tried to reach agreement about relevant matters, including as to which domain names the Respondent can retain and use. However, the Panel cannot tell whether a concluded agreement was ever reached, or if so what its terms were. The Panel simply does not know whether the Disputed Domain Name was one which was to be retained by the Respondent or not. If it was, the Panel is unclear as to what the Complainant agreed could or could not be done with it. It appears clear that at one point the Complainant was content that the Respondent should retain the Disputed Domain Name providing he used an appropriate disclaimer (see email of September 27, 2017 – above). Whether that remained the case, the Panel cannot tell. The Respondent has used the disclaimer warning that the Complainant requested although the Panel is unclear as to whether other matters the Complainant raised as to size, placement etc., of the disclaimer have been met. Overall, the Panel is wary of making a finding of bad faith against the Respondent when the Complainant itself appears to have seen fit to award him a certificate of recognition for his services, at a point in time well after the relevant issues now complained of, were being debated in correspondence.
Overall, the Panel has spent a very considerable amount of time trying to understand the correspondence and has reached the conclusion that finding the underlying cause, of what has happened is not possible within the framework of a UDRP complaint, which is intended to deal with straightforward cases of “cybersquatting”. In sum, the Respondent registered and used an exact match of the Complainant’s trademarks for what appeared to be a fan site but with a link to another of the Respondent’s websites through which the Complainant’s products and the Complainant’s broader family of goods (i.e., those bearing other Complainant-related marks) were offered for sale. In addition, at some point, the Respondent was using the Respondent’s Website to display third-party products along with the Complainant’s products. In the normal course of things, these would likely result in a decision in the Complainant’s favor. Here however, the Panel cannot overlook that at some point in the history of this case, the Complainant seems to have acquiesced – even if with a caveat, and even given the Respondent’s perhaps questionable trademark registrations – to the Respondent’s behavior. In circumstances where the Respondent may have reasonably relied on this sequence of events, the Panel is unable to find in the Complainant’s favor under the Policy. In saying this, the Panel is conscious that proceedings under the UDRP are of a limited and restricted nature, do not involve oral hearings, discovery or cross examination, and hence are only applicable to clear-cut cases. The Panel does not consider this to be such a case. Accordingly, the Panel finds that the issues raised in this proceeding are outside the scope of proceedings under the Policy and are properly decided by traditional (e.g., appropriate judicial) means. Therefore, the Complaint should be dismissed. See, e.g., Clinomics Biosciences, Inc. v. Simplicity Software, Inc., WIPO Case No. D2001-0823.
For the foregoing reasons, the Panel orders that the Complaint be dismissed.
Nick J. Gardner
Date: February 21, 2019