WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

u-blox Holding AG v. Peter.feng (冯澎涛)

Case No. D2019-2990

1. The Parties

The Complainant is u-blox Holding AG, Switzerland, represented by Pointer Brand Protection and Research, Netherlands.

The Respondent is Peter.feng (冯澎涛), China.

2. The Domain Name and Registrar

The disputed domain name <ubloxgps.com> is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on December 4, 2019. On December 4, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 5, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

On December 13, 2019, the Center transmitted an email, in English and Chinese, to the Parties regarding the language of the proceeding. The Complainant confirmed the request that English be the language of the proceeding on December 16, 2019. The Respondent did not comment on the language of the proceeding.

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, in English and Chinese, of the Complaint, and the proceedings commenced on December 23, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 12, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 13, 2020.

The Center appointed Sok Ling Moi as the sole panelist in this matter on January 20, 2020. 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, founded in 1997, is a Swiss company producing satellite receiver and wireless semiconductors and modules, and one of the leading providers of positioning and wireless communication technologies for the automotive, industrial and consumer markets. The Complainant is listed on the Swiss stock exchange since 2007 and had a revenue of CHF 393.3 million in 2018. The Complainant has offices in Asia, Europe and the United States of America, and has been active in China since 2001 with offices in Beijing, Shanghai, Wuhan, Shenzhen and Chongqing. The Complainant has more than 1,000 employees worldwide.

The Complainant owns trade mark registrations for U-BLOX in several jurisdictions worldwide, including the following trade mark registrations:

The Complainant also owns the domain names <u-blox.com>, <ublox.com>, <u-blox.ch> and <u-blox.de>, and its official website is available at “www.u-blox.com”.

The disputed domain name <ubloxgps.com> was registered by the Respondent on December 29, 2014, and currently resolves to a website which reproduced the Complainant’s U-BLOX mark and logo and copyrighted images of the Complainant’s U-BLOX products, and offer for sale global positioning system (“GPS”) products under its HTGNSS mark as well as the Complainant’s U-BLOX mark.

5. Parties’ Contentions

A. Complainant

The Complainant claims that the disputed domain name is confusingly similar to its trade mark.

The Complainant contends that as the Complainant has not licensed or otherwise authorized the Respondent to use its trade mark, the Respondent’s use of the disputed domain name to publish websites offering for sale identical goods to those offered by the Complainant was for the purpose of trading on the Complainant’s goodwill for financial gain. The Complainant claims that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Complainant contends that the disputed domain name is used to create confusion and mislead Internet users into believing that the Respondent’s website is authorised by the Complainant. The Complainant claims that the Respondent has registered and is using the disputed domain name in bad faith.

For all of the above reasons, the Complainant requests the transfer of the disputed domain name to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1 Language of the Proceeding

Pursuant to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

Paragraph 10(b) and (c) of the Rules requires the Panel to ensure that the proceeding takes place with due expedition and that the Parties are treated equitably and given a fair opportunity to present their respective cases.

The language of the Registration Agreement for the disputed domain name is Chinese. From the evidence on record, no agreement appears to have been entered into between the Complainant and the Respondent regarding the language issue. The Complainant filed its Complaint in English and has requested that English be the language of the proceeding.

The Panel finds persuasive evidence in the present proceeding to suggest that the Respondent has sufficient knowledge of English. In particular, the Panel notes that:

(a) the disputed domain name is registered in Latin script, rather than Chinese characters;

(b) according to the evidence submitted by the Complainant, the Respondent replied in English to the Complainant’s English cease and desist letters prior to the dispute; and

(c) according to the evidence submitted by the Complainant, the Respondent’s website at “www.htgnss.com” has an English version.

Additionally, the Panel notes that:

(a) the Center has notified the Respondent of the proceeding in both Chinese and English;

(b) the Respondent has been given the opportunity to present its case in this proceeding and to respond to the issue of the language of the proceeding but chose not to do so; and

(c) the Center has informed the Respondent that it would accept a Response in either English or Chinese.

Considering the above circumstances, the Panel finds that the choice of English as the language of the present proceeding is fair to all Parties and is not prejudicial to any of the Parties in their ability to articulate the arguments for this case. The Panel has taken into consideration the fact that to require the Complaint and all supporting documents to be re-filed in Chinese would, in the circumstances of this case, cause an unnecessary cost burden to the Complainant and would unnecessarily delay the proceeding. The Panel would have accepted a Response in Chinese but none was filed.

In view of all the above, the Panel determines under paragraph 11(a) of the Rules that it shall accept the Complaint and all supporting materials as filed in English, that English shall be the language of the proceeding, and that the decision will be rendered in English.

6.2 Substantive Issues

Paragraph 4(a) of the Policy directs that a complainant must prove each of the following three elements to obtain an order for the disputed domain name to be cancelled or transferred:

(i) the disputed domain name is identical or confusingly similar to a trade mark 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; and

(iii) the disputed domain name has been registered and is being used in bad faith.

On the basis of the arguments and evidence introduced by the Complainant, the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel accepts that the Complainant has rights in U-BLOX by virtue of its use and registration of the same as a trade mark.

The disputed domain name incorporates the Complainant’s trade mark U-BLOX in its entirety. The omission of the hyphen “-” and the addition of the acronym “gps” (which may mean “global positioning system”) does not avoid the confusing similarity between the disputed domain name and the Complainant’s trade mark. The addition of the generic Top-Level Domain (“gTLD”) “.com” does not impact the analysis of whether the disputed domain name is identical or confusingly similar to the Complainant’s trade mark in this case.

Consequently, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trade mark.

Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, a complainant bears the burden of proof to establish that the respondent lacks rights or legitimate interests in the disputed domain name. However, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the respondent to come forward with evidence in support of its rights or legitimate interests in the disputed domain name. The respondent may establish its rights in the disputed domain name by demonstrating any of the following, without limitation, under paragraph 4(c) of the Policy:

(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the disputed domain name, even if it has acquired no trade mark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited v. honghao internet foshan co, ltd, WIPO Case No. D2013-0974.

The Complainant has confirmed that the Respondent is not in any way affiliated with the Complainant or otherwise authorized or licensed to use the U-BLOX trade mark or to seek registration of any domain name incorporating the trade mark. There is also no evidence suggesting that the Respondent is commonly known by the disputed domain name or has acquired any trade mark rights in the term “ublox”.

According to the evidence submitted by the Complainant, the Respondent was using the disputed domain name to publish a website which reproduced the Complainant’s U-BLOX mark and logo and copyrighted images of the Complainant’s U-BLOX products, and offering for sale GPS products under its HTGNSS mark as well as the Complainant’s U-BLOX mark. Although the Respondent claimed to be selling legitimate U-BLOX products sourced from a China-based authorized distributor of the Complainant, the concurrent sale of identical products under its own brand on its website cannot be considered a bona fide offering of goods or a fair use of the disputed domain name.

The Panel is satisfied that the Complainant has made out a prima facie case showing that the Respondent lacks rights or legitimate interests in the disputed domain name. The burden of production thus shifts to the Respondent to come forward with evidence of its rights or legitimate interests in the disputed domain name. Since the Respondent has failed to respond, the Panel determines that the prima facie case has not been rebutted.

Consequently, the Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain name.

Accordingly, the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:

(i) circumstances indicating that the respondent has registered or acquired the disputed 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 trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or

(ii) the respondent has registered the disputed domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.

The Complainant has used U-BLOX as its trade mark since 2007, and enjoys a strong reputation in the relevant industry and amongst its target customers. There is no doubt that the Respondent was aware of the Complainant’s trade mark when it registered the disputed domain name given that it has reproduced copyrighted images of the Complainant’s U-BLOX products, and was offering for sale the Complainant’s U-BLOX GPS products on its website.

As such, the Panel is satisfied that the Respondent’s purpose of registering the disputed domain name was to trade on the reputation of the Complainant and its trade mark by diverting Internet users seeking the Complainant’s branded products to its website for financial gain. Such use of the disputed domain name not only misleads the public but also causes disruption to the Complainant’s business. Irrespective of whether the goods offered on the Respondent’s website are in fact counterfeit, the reproduction of the Complainant’s trade mark and logo on the Respondent’s website without also displaying a clear disclaimer of a lack of relationship between the Respondent and the Complainant, is indicative of bad faith.

The Panel therefore determines that 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 source, sponsorship, affiliation, or endorsement of the Respondent’s website. As such, the Panel is satisfied that the Respondent is using the disputed domain name for mala fide purpose and illegitimate financial gain, and the Panel finds that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case.

Furthermore, the Center was not able to reach the Respondent at the physical addresses and facsimile number recorded with the Registrar, which suggests that the Respondent had provided false contact details at the time of registering the disputed domain name. This further suggests a lack of bona fides.

The Respondent has not denied the Complainant’s allegations of bad faith. In view of the Panel’s above finding that the Respondent lacks rights or legitimate interests in the disputed domain name, and taking into account all the circumstances, the Panel concludes that the Respondent has registered and used the disputed domain name in bad faith.

Accordingly, the Complainant has satisfied the requirements of the third element under paragraph 4(a) of the Policy.

7. Decision

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 <ubloxgps.com> be transferred to the Complainant.

Sok Ling Moi
Sole Panelist
Date: February 12, 2020