WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AVX Corporation v. Zhongshan Qiye Industrial Material Co., Limited (中山市岐晔工业材料有限公司); Shenzhen AVL Technology Co., LTD
Case No. D2019-0128
1. The Parties
The Complainant is AVX Corporation, United States of America (“US”), represented by Douglas Clark, Barrister at Law, Hong Kong, China.
The Respondents are Zhongshan Qiye Industrial Material Co., Limited (中山市岐晔工业材料有限公司) (the “1st Respondent”), China; and Shenzhen AVL Technology Co., LTD (the “2nd Respondent”), China, both self-represented.
2. The Domain Names and Registrar
The disputed domain names <cn-avl.com> and <cn-avx.com> are registered with Xiamen 35.Com Technology Co., Ltd. and Tianjin Zhuiri Science and Technology Development Co Ltd, respectively (the “Registrars”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on January 22, 2019. On January 22, 2019, the Center transmitted by email to the Registrars requests for registrar verification in connection with the disputed domain names. On January 28, 2019, February 11, 2019 and April 2, 2019, the Registrars transmitted by email to the Center their verification responses disclosing registrants and contact information for the disputed domain names which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to the Complainant on April 3, 2019 providing the registrant and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 9, 2019.
On April 3, 2019, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On April 8 and April 9, 2019, the Respondent requested that Chinese be the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding in its amended Complaint filed in English on April 9, 2019.
On April 17, 2019, the Center sent a communication to the Parties, in English and Chinese, regarding the consolidation of multiple Respondents.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent, in English and Chinese, of the Complaint, and the proceeding commenced on April 17, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 7, 2019. The Response was filed in Chinese with the Center on May 6, 2019.
On June 18, 2019, the Center sent a communication to the Parties regarding the case status. On June 19, 2019, the Complainant confirmed that it did not wish to request suspension of the proceeding.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on June 20, 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 June 30, 2019, the Complainant filed an unsolicited supplemental filing. On July 1, 2019, the Complainant sent the completed version of its unsolicited supplemental filing.
On July 4, 2019, the Center informed the Parties that the due date for this Decision was extended to July 8, 2019.
4. Factual Background
The Complainant is a company incorporated in the US in 1972 and listed on the New York Stock Exchange, and a manufacturer and distributor of electronic components worldwide under the word and device mark AVX (the “Trade Mark”).
The Complainant is the owner of registrations for the Trade Mark in jurisdictions worldwide, including US registration No. 0936515, with a registration date of June 27, 1972; US registration No. 2504553, with a registration date of November 6, 2001; Chinese registration Nos. 1981810, 1981918 and 1981919, each with the same registration date of December 21, 2002; Hong Kong, China registration No. 1986B1231, with a registration date of June 22, 1984; and Hong Kong, China registration No. 2004B00307, with a registration date of August 4, 2001.1
The Respondents are companies incorporated in China with registered addresses in Zhongshan City, Guangdong Province and in Shenzhen City, Guangdong Province, respectively.
C. The Disputed Domain Names
The disputed domain name <cn-avl.com> was registered on February 26, 2011.
The disputed domain name <cn-avx.com> was registered on June 15, 2018.
D. The Websites at the Disputed Domain Names
The disputed domain name <cn-avl.com> is resolved to a Chinese language website operated by the 2nd Respondent, Shenzhen AVL Technology Co., LTD, and promoting the 2nd Respondent’s various sealant and protective paint products (the “2nd Respondent’s Website”).
The disputed domain name <cn-avx.com> was previously resolved to a Chinese and English language website operated by the 1st Respondent, Zhongshan Qiye Industrial Material Co., Limited (中山市岐晔工业材料有限公司) and also bearing the name of a company incorporated in Hong Kong, China, AVX Technologies (Hong Kong) Group Co., Limited, and promoting the 1st Respondent’s auto parts, mobile phone parts, consumer electronic parts, and other industrial parts (the “1st Respondent’s Website”). The contact details on the 1st Respondent’s Website included telephone and facsimile numbers both with the “+86” prefix used for China; and a contact email address […]@cn-avl.com (containing the disputed domain name <cn-avl.com> owned by the 2nd Respondent).
5. Parties’ Contentions
The Complainant contends that the disputed domain names are confusingly similar or identical to the Trade Mark, the Respondents have no rights or legitimate interests in respect of the disputed domain names, and the disputed domain names were registered and are being used in bad faith.
The Respondents contend that the disputed domain names are not confusingly similar or identical to the Trade Mark, the Respondents have rights or legitimate interests in respect of the disputed domain names, and the disputed domain names were not registered and are not being used in bad faith.
Notwithstanding the above contentions, the Respondents have in the Response consented to the cancellation of the disputed domain name <cn-avx.com>.
The Respondents maintain that there is no connection between the 2nd Respondent’s Website and the Complainant; and oppose the transfer of the disputed domain name <cn-avl.com> to the Complainant.
6. Discussion and Findings
6.1 Consolidation of Respondents
Previous UDRP decisions suggest that consolidation of multiple respondents may be appropriate, under paragraphs 3(c) and 10(e) of the Rules, where the particular circumstances of a given case indicate that common control is being exercised over the disputed domain names or the websites to which the disputed domain names resolve, where consolidation would be fair and equitable to all parties, and where procedural efficiency supports consolidation (see section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
In the present proceeding, the Complainant contends, amongst other things, that the use of the contact email address […]@cn-avl.com (comprising the disputed domain name <cn-avl.com> owned by the 2nd Respondent) on the 1st Respondent’s Website demonstrates that common control is being exercised over the disputed domain names.
The Respondents do not contest the evidence relied upon by the Complainant in support of its consolidation request; and do not object to consolidation. In addition, in their email of April 9, 2019, the Respondents agreed to consolidation of the disputed domain names, and confirmed that any case related communications would be sent from […]@cn-avl.com.
In all the circumstances, the Panel concludes that the uncontested evidence relied upon by the Complainant supports the conclusion that common control is being exercised over the disputed domain names.
In all the circumstances, the Panel determines, under paragraph 10(e) of the Rules, that consolidation of the Respondents is procedurally efficient and equitable to all the Parties, is consistent with the Policy and Rules, and comports with prior relevant UDRP decisions in respect of this issue.
6.2 Supplemental Filing
Panels have sole discretion, under paragraphs 10 and 12 of the Rules, whether to accept an unsolicited supplemental filing from either party, bearing in mind the need for procedural efficiency, and the obligation to treat each party with equality and ensure that each party has a fair opportunity to present its case. The party submitting its filing would normally need to show its relevance to the case and explain why it was unable to provide that information in the complaint or response (for example, owing to some exceptional circumstance).
Paragraph 12 of the Rules expressly provides that it is for the panel to request, in its sole discretion, any further statements or documents from the parties it may deem necessary to decide the case. Unsolicited supplemental filings are generally discouraged, unless specifically requested by the panel (see section 4.6 of WIPO Overview 3.0).
The Complainant seeks to place before the Panel:
(i) A sealed copy of the (uncontested) default judgment obtained by the Complainant against AVX Technologies (Hong Kong) Group Co., Limited in the High Court of the Hong Kong, China on June 21, 2019; and
(ii) A copy of the “Notice of Court Order Restraining Company from Use of Name” filed with the Companies Registry of the Hong Kong, China by the Complainant’s solicitors on June 25, 2019.2
The Complainant has failed to expressly address in its supplemental submissions or otherwise any exceptional circumstances that would warrant the Panel exercising its discretion to allow the supplemental filing. The Complainant did however refer to the court proceedings in the Amended Complaint as follows:
“[…] The use of the name AVX Technologies (Hong Kong) Group Co. Ltd. infringes the Complainant’s Hong Kong registered trade mark. The Complainant has brought action in the High Court of Hong Kong for trade mark infringement and passing off against AVX Technologies (Hong Kong) Group Co. Limited. A copy of the letter before action is appended as Annex 11 and a copy of the writ endorsed with the Statement of Claim is appended as Annex 12. The 1st Respondent has not defended the proceedings.”
The Panel considers that, in all the circumstances, it is necessary for the Panel to take into account the Complainant’s supplemental filing in order to fairly decide the present dispute, and in order to address the relevance of the court proceedings to the present UDRP proceeding.
In all the circumstances, the Panel therefore determines that it will admit the Complainant’s supplemental filing and that, exceptionally, it is not necessary to provide the Respondents with the opportunity to file any submissions in response to the Complainant’s supplemental filing.
6.3 Language of the Proceeding
The language of the Registration Agreement for the disputed domain names is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement.
Paragraph 11(a) of the Rules allows the UDRP panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding, in order to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding.
The Complainant has requested that the language of the proceeding be English, or alternatively that the Complainant be permitted to file its Complaint in English and the Respondents be permitted to file their Response in Chinese, for several reasons, including:
(i) The 1st Respondent’s Website was in English and Chinese; and
(ii) The 2nd Respondent has communicated with a customer of the Complainant in English.
The Respondents have requested that the language of the proceeding be Chinese, in accordance with paragraph 11 of the Rules.
In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs.
The Panel finds that the evidence relied upon by the Complainant demonstrates that the Respondents are conversant in English. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.
In all the circumstances, the Panel therefore finds it is not foreseeable that the Respondents would be unduly prejudiced, should the language of the proceeding be English.
Having considered all the matters above, the Panel therefore determines, under paragraph 11(a) of the Rules, that it will:
(i) Accept the filing of the Complaint in English;
(ii) Accept the filing of the Response in Chinese; and
(iii) Render this decision in English.
6.4 Court Proceedings
The Complainant issued court proceedings in the High Court of Hong Kong, China against AVX Technologies (Hong Kong) Group Co. Limited on February 4, 2019 (two weeks after the Complaint was filed with the Center).
The court proceedings have not been contested and, on June 21, 2019, the Complainant obtained default judgment against AVX Technologies (Hong Kong) Group Co. Limited. The default judgment includes an order that:
“The Defendant whether by itself, its directors, servants, employees, agents, representatives, associated companies or subsidiary companies or any of them or otherwise howsoever whether now or at any time in the future (including by means of the Internet or otherwise) be restrained from doing the following acts or any of them, that is to say […] registering as a company name, business name, trade mark, trade name, domain name, or as part thereof, or by otherwise howsoever using, the words ‘AVX’ and/or ‘AVL’ or any confusingly similar name or device (with or without words) […] or authorising, causing, enabling, assisting, counselling or procuring others to do any of the aforesaid acts. […]”
Paragraph 4(k) of the UDRP provides as follows:
“Availability of Court Proceeding. The mandatory administrative proceeding requirements set forth in paragraph 4 shall not prevent either you or the complainant from submitting the dispute to a court of competent jurisdiction for independent resolution before such mandatory administrative proceeding is commenced or after such proceeding is concluded. If an Administrative Panel decides that your domain name registration should be canceled or transferred, we will wait ten (10) business days (as observed in the location of our principal office) after we are informed by the applicable Provider of the Administrative Panel’s decision before implementing that decision. We will then implement the decision unless we have received from you during that ten (10) business day period official documentation (such as a copy of a complaint, file-stamped by the clerk of the court) that you have commenced a lawsuit against the complainant in a jurisdiction to which the complainant has submitted under Paragraph 3(b)(xiii) of the Rules of Procedure. (In general, that jurisdiction is either the location of our principal office or of your address as shown in our Whois database. See Paragraphs 1 and 3(b)(xiii) of the Rules of Procedure for details.) If we receive such documentation within the ten (10) business day period, we will not implement the Administrative Panel’s decision, and we will take no further action, until we receive (i) evidence satisfactory to us of a resolution between the parties; (ii) evidence satisfactory to us that your lawsuit has been dismissed or withdrawn; or (iii) a copy of an order from such court dismissing your lawsuit or ordering that you do not have the right to continue to use your domain name.”
Paragraph 4(k) of the Policy contemplates situations where court proceedings are commenced either before a UDRP proceeding is commenced, or after it has been concluded. It does not expressly contemplate a situation where a legal proceeding may have been commenced during the pendency of UDRP proceeding.
Paragraph 18 of the Rules provides as follows:
“Effect of Court Proceeding
(a) In the event of any legal proceeding initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.
(b) In the event that a Party initiates any legal proceeding during the Pendency of an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, it shall promptly notify the Panel and the Provider. See Paragraph 8 above.”
“By design, the UDRP system preserves parties’ court options before, during, and after a UDRP proceeding; as indicated by UDRP paragraph 4(k), the UDRP does not bar either party from seeking judicial recourse.
Paragraph 18(a) of the UDRP Rules gives the panel discretion to suspend, terminate, or continue a UDRP proceeding where the disputed domain name is also the subject of other pending legal proceedings.
Appointed panels are reluctant to suspend a UDRP case due to concurrent court proceedings, most notably because of the potential for indeterminate delay; the WIPO Center would similarly be reluctant to facilitate such suspension.
4.14.2 UDRP decision
Panels generally issue a UDRP decision on the merits even in an overlapping court-UDRP proceeding scenario where, notwithstanding the fact that a UDRP decision would not be binding on the court, the relative expediency of the UDRP versus courts is seen as a benefit to the parties. Panel reluctance to terminate a UDRP case on this basis often also takes account of, and respects, the potential for a court action to address causes of action separate from that being addressed in the UDRP proceeding.
Where there are prior or pending court or administrative (e.g., trademark office) proceedings, it is within the panel’s discretion to determine the relevance to ascribe to such proceeding in the UDRP context, in light of the case circumstances […]
4.14.3 Impact of termination due to court proceedings on future UDRP filings
In the somewhat exceptional event a panel would terminate a UDRP proceeding because of its overlap with a court proceeding, the panel may specifically terminate the UDRP proceeding without prejudice to the filing of a future UDRP complaint pending resolution or discontinuation of the court proceeding […]
4.14.4 National court competence
It is widely recognized that national courts are not bound by UDRP panel decisions. Where a domain name which has been the subject of a UDRP panel decision becomes subject to a national court proceeding (whether by a respondent pursuant to UDRP paragraph 4(k), or otherwise), such court case is generally acknowledged to represent a de novo hearing of the case under national law. […]”
The Panel considers that the limited information before it does not in itself provide any reason why this UDRP dispute cannot be evaluated separately from the court proceedings. The Panel notes also that, notwithstanding the wide ambit of the order in the default judgment:
(i) The court proceedings and the application for default judgment were not contested;
(ii) Neither of the Respondents herein is a party to the court proceedings; and
(iii) Notwithstanding the extra-territorial ambit of the order, both of the Respondents are entities based not in Hong Kong, China, but in Guangdong Province, China.
Accordingly, in all the circumstances, the Panel does not therefore consider that the present UDRP dispute should be suspended or terminated.
The Panel will therefore proceed to a Decision.
The Panel notes, however, that this Decision is without prejudice to any action the relevant court may deem appropriate or necessary in furtherance of the default judgment.
6.5 Respondent’s Consent to Cancellation of Disputed Domain Name <cn-avx.com>
The 1st Respondent has confirmed in the Response that it would consent to the cancellation of the disputed domain name <cn-avx.com> to the Complainant in order to put an end to this case. In all the circumstances, the Panel considers it appropriate to make an order for cancellation of the disputed domain name <cn-avx.com> without consideration of the paragraph 4(a) elements (see section 4.10 of WIPO Overview 3.0).
The Panel will therefore proceed to consider the substantive elements of the Policy with respect to the disputed domain name <cn-avl.com> only; and all references hereafter in this decision to “the disputed domain name” are references to the disputed domain name <cn-avl.com> only.
6.6 Substantive Elements of the Policy
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration.
“It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.
This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. (This may also include recognizability by technological means such as search engine algorithms.) In some cases, such assessment may also entail a more holistic aural or phonetic comparison of the complainant’s trademark and the disputed domain name to ascertain confusing similarity.
While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.
In specific limited instances, while not a replacement as such for the typical side-by-side comparison, where a panel would benefit from affirmation as to confusing similarity with the complainant’s mark, the broader case context such as website content trading off the complainant’s reputation, or a pattern of multiple respondent domain names targeting the complainant’s mark within the same proceeding, may support a finding of confusing similarity. On the other hand, if such website content does not obviously trade off the complainant’s reputation, panels may find this relevant to an overall assessment of the case merits, especially under the second and third elements (with such panels sometimes finding it unnecessary to make a finding under the first element). […]
In this context, panels have also found that the overall facts and circumstances of a case (including relevant website content) may support a finding of confusing similarity, particularly where it appears that the respondent registered the domain name precisely because it believed that the domain name was confusingly similar to a mark held by the complainant.”
The difficulty faced by the Complainant herein lies with the fact the disputed domain name does not incorporate the entirety of the Trade Mark.
The Complainant, fairly, does not contend that a dominant feature of the Trade Mark is recognizable in the disputed domain name. In the case of three letter trade marks without any obvious meaning, it is difficult for complainants in UDRP proceedings to establish that any two of the three letters comprised in the trade mark constitute a dominant feature of the relevant trade mark.
The Complainant attempts to overcome these difficulties by seeking to rely on the content of the 2nd Respondent’s Website; and also on unsolicited email correspondence between a customer of the Complainant and the 2nd Respondent.
The Complainant’s relevant submissions under the first limb in paragraph 4(a) of the Policy are accordingly as follows:
“[…] the Complainant contends that the second disputed domain name is confusingly similar to its trademark AVX. The substitution of ‘l’ for ‘x’ does not mitigate the confusion, but rather compounds it because (i) the second disputed domain resolves to a website that offers AVX products for sale and (ii) both the first and second Respondents use the second disputed domain name for email communication with third parties to carry on business in AVX products. Section 1.15 of the WIPO Overview 3.0 provides that usually the content of a website is disregarded when considering the first element under the policy. However, ‘[i]n some instances, panels have however taken note of the content of the website associated with a domain name to confirm confusing similarity whereby it appears prima facie that the respondent seeks to target a trademark through the disputed domain name.’ In this case it is clear from the content of the website where the AVX trade mark is shown at the top of the webpage under the second disputed domain name that the Respondent is targeting the AVX trade mark.”
The Panel is unable to agree with the Complainant’s assertion that the use of the letter “l” instead of “x” in the disputed domain name “does not mitigate the confusion, but rather compounds it”.
Does the 2nd Respondent’s Website offer the Complainant’s AVX Products for Sale?
Careful analysis of the 2nd Respondent’s Website demonstrates that:
(i) The 2nd Respondent’s Website features a prominent website banner displaying the full name of the 2nd Respondent in Chinese and English language together with a prominent and distinctive logo in red colour featuring the letters “avl” (in red lettering) inside a horizontal, red oval. This logo is very different to the distinctive device Trade Mark used (and registered) by the Complainant featuring the letters “avx” in white colouring with distinctive font and with blue and black embossed shading;
(ii) Consistent with the colouring of the Complainant’s device Trade Mark, the corporate livery used by the Complainant on its website is blue, whereas the corporate livery on the 2nd Respondent’s Website is red and white;
(iii) The 2nd Respondent’s Website does not promote or offer for sale electronic components but rather promotes various sealant and protective paint products;
(iv) The 2nd Respondent’s Website makes reference to a large number of third party “brands”, “clients” and “partners”;
(v) One of these “brands” featured on the front page of the 2nd Respondent’s Website is the letters “avx” in white colouring on a blue rectangular background. This is a different logo to the Complainant’s device Trade Mark. The Complainant’s device Trade Mark is not featured on the 2nd Respondent’s Website;
(vi) It appears from the screenshots for the 2nd Respondent’s Website placed before the Panel that the above “AVX” brand (and indeed the several other, unrelated third party brands/clients/partners) is not directly linked to any pages on the 2nd Respondent’s Website; and
(vii) The Complainant has not placed any evidence before the Panel to demonstrate that any of the Complainant’s electronic component products have been promoted or offered for sale on the 2nd Respondent’s Website.
The Complainant has placed before the Panel a two page screenshot from the Wayback Machine at “www.archive.org” showing that the 2nd Respondent’s Website was apparently first used in 2013 and that, in 2014, in addition to other “distribution brands” (“经销品牌”) Bayer, 3M, BYK and Henkel, the Complainant’s device Trade Mark was, at that time, apparently featured on the 2nd Respondent’s Website. There is however no evidence before the Panel to show that the 2nd Respondent was in fact offering for sale the Complainant’s products (or any other electronic component products) via the 2nd Respondent’s Website or otherwise either in 2014 or at the time of filing of the Complaint.
Does the 2nd Respondent use the Disputed Domain Name to Carry on Business in AVX Products?
The Complainant has placed before the Panel a chain of email correspondence from June 2018 initiated by one of Complainant’s customers in Mexico with the Respondents. In response to an email request from the Complainant’s Mexican customer, the Respondents sent a company presentation and product lines to the Mexican customer. The Mexican customer subsequently sent an email to the Respondents as follows:
“[…] because we have another company called ASX/KYOCERA, therefore we need to know if your company belongs to them, or if you are a holding or if you just do a distribution performance, please let us know.”
The Respondents responded as follows:
“Hi Team. By the way you are welcome to visit our website as well at www.cn-avx.com (for Hongkong) or www.qyind.com (for China Mainland).
Kindly let me know if any further questions. Thank you and have a good day […]”
The final email in the email chain was from the Complainant’s Mexican customer, as follows:
“Thank you Toby I do apologize for al [sic] the incontinence this might cause, but now it’s all clear.
We will update our system with this information.
Best regards […]”
There is no evidence before the Panel to show that the Complainant’s Mexican customer subsequently had any dealings or further communications with the Respondents.
The Panel finds that the above email chain demonstrates that the 2nd Respondent is not carrying on business in AVX products, as asserted by the Complainant (nor is it claiming to be the Complainant or a subsidiary of the Complainant or a distributor of the Complainant’s products).
Conclusion – First Limb
The Panel therefore finds that the evidence relied upon by the Complainant demonstrates that, contrary to the Complainant’s contentions:
(i) The 2nd Respondent’s Website does not offer the Complainant’s AVX electronic component products for sale;
(ii) The 2nd Respondent’s Website is offering for sale sealant and protective paint products that are very different to the electronic components manufactured and sold by the Complainant under the Trade Mark;
(iii) The logo featured prominently in the website banner on the top of 2nd Respondent’s Website is not the Complainant’s AVX Trade Mark but is a very different AVL device mark;
(iv) In all the circumstances, the 2nd Respondent’s Website is not targeting the Complainant’s AVX Trade Mark;
(v) The email correspondence relied upon by the Complainant shows that the 2nd Respondent is not carrying on business in the Complainant’s AVX products; and
The Panel therefore finds that the broader case context in the present proceeding likely supports the initial conclusion that, on a side-by-side analysis, the disputed domain name is not confusingly similar to the Trade Mark.
B. Rights or Legitimate Interests
In light of the Panel’s finding in respect of the first element under paragraph 4(a) of the Policy, it is not strictly necessary for the Panel to make any finding under the second element. The Panel however finds that, in all the circumstances and for the reasons specified above, the Complainant has not shown that the 2nd Respondent lacks rights or legitimate interests in the disputed domain name. The Panel notes that:
(i) The 2nd Respondent was incorporated in 2011;
(ii) The 2nd Respondent registered the disputed domain name in 2011;
(iii) The 2nd Respondent has been using its Chinese and English company name, its red AVL device mark, the disputed domain name and the 2nd Respondent’s Website for many years to promote its business; and
(iv) The 2nd Respondent is not a distributor of the Complainant’s AVX products and, accordingly, the Oki Data principles relied upon by the Complainant do not apply (see section 2.8 of WIPO Overview 3.0).
C. Registered and Used in Bad Faith
In light of the Panel’s finding in respect of the first and second elements under paragraph 4(a) of the Policy, it is not strictly necessary for the Panel to make any finding under the third element. The Panel however finds that, in all the circumstances and for the reasons specified above, the disputed domain name was not registered and is not being used in bad faith, for the purposes of the Policy. The Panel is unable to conclude, on the evidence (i) that the 2nd Respondent targeted the Complainant and its Trade Mark at the time of registration of the disputed domain name; and (ii) that the 2nd Respondent was at the time of the Complaint targeting the Complainant and its Trade Mark.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders (i) without making any findings adverse to the 1st Respondent, that the disputed domain name <cn-avx.com> be cancelled; and (ii) that the Complaint with respect to the disputed domain name <cn-avl.com> is denied.
Sebastian M.W. Hughes
Dated: July 22, 2019
1 The Complainant has also, apparently in error, sought to rely on US registration No. 4942915 for the word mark ASX, registered in the name of an apparently unrelated third party in respect of clothing and other goods apparently unrelated to the electronic components manufactured and distributed by the Complainant under the Trade Mark.