WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Xiaomi Inc. v. Ricardo Jorge Varao Sa

Case No. D2020-3248

1. The Parties

The Complainant is Xiaomi Inc., China, represented by Inventa International, SA, Portugal.

The Respondent is Ricardo Jorge Varao Sa, Spain, self-represented.

2. The Domain Name and Registrar

The disputed domain name <mistoreportugal.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 2, 2020. On the following day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 4, 2020, 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 7, 2020, 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 the same day.

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 of the Complaint, and the proceedings commenced on December 11, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 31, 2020. On December 31, 2020, the Respondent requested for an extension to file a response. On January 4, 2021, in accordance with paragraph 5(e) of the Rules the Center exceptionally granted the extension of time until January 10, 2021. The Respondent did not submit any formal response. Accordingly, the Center notified to the Parties that it was proceeding to panel appointment on January 14, 2021. On the same day, the Respondent sent another informal email to the Center alleging that his request for an extension of December 31, 2020 had been ignored.

The Center appointed Matthew Kennedy as the sole panelist in this matter on January 28, 2021. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is a consumer electronics company that develops and produces smartphones, mobile phone applications, and mobile phone accessories. The Complainant owns multiple trademark registrations, including European Union Trade Mark registration number 009822751 for MI, registered on September 28, 2011, specifying goods and services in classes 9, 16, 35, 41, 42 and 43. That trademark registration remains current. The Complainant has registered domain names, including <mi.com> that it uses in connection with its global official website. Its website prominently displays a logo consisting of MI in stylized letters in an orange square.

The Respondent is an individual, resident in Spain, in a region that neighbors Portugal.

The disputed domain name was registered on March 6, 2020. It redirects to <mistore.pt> which is associated with a website in Portuguese that offers for sale the Complainant’s Xiaomi electronics products, including MI product models. The website prominently displays a logo consisting of MI STORE in an orange circle. The website page headers display a tagline including words that may be translated as “Your Xiaomi store in Portugal, Smartphones, Cases, Accessories, Assistance, Repairs”. The website footer includes a notice that may be translated as “We also offer a Technical Center for Xiaomi equipment”. Prices are displayed in EUR.

The Complainant provides a copy of a customer complaint dated November 13, 2020, which shows that the customer believed the Respondent’s website to be an official representative of the Complainant’s Xiaomi brand in Portugal.

The Registrar confirmed that the language of the Registration Agreement is English.

5. Parties’ Contentions

A. Complainant

The disputed domain name is confusingly similar to the Complainant’s MI trademarks. The disputed domain name is composed of three words: “mi”, “store” and “Portugal”. Taking to account that “store” is descriptive and Portugal is a country, these words do not bear any distinctive character. The only distinctive part of the disputed domain name is “MI”.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. There is no commercial or corporate relationship between the Parties. The Respondent has not received any permission or authorization to use the Complainant’s trademarks or to register a domain name that incorporates that trademark. The Respondent does not also have any rights to support its interests or, as an individual, is not commonly known by the disputed domain name. There is no bona fide use by the Respondent. It aims only to mislead consumers, making them believe that the online store served by the disputed domain name is the MI store in Portugal or any official store.

The disputed domain name was registered and is being used in bad faith. The Respondent is using the disputed domain name to sell various models of Xiaomi smartphones (“Mi” and “Redmi”), tablets and accessories (power banks, headphones, earphones, cellphone cases, etc.), to impersonate the official websites of the Complainant.

B. Respondent

The Respondent requested an extension of time to file a response, which was granted, but he did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that a complainant must prove each of the following elements:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and

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

A. Identical or Confusingly Similar

Based on the evidence presented, the Panel finds that the Complainant has rights in the MI mark.

The disputed domain name wholly incorporates the MI mark as its initial element. It also incorporates the dictionary word “store” and the country name “Portugal” but, as a mere dictionary word and a mere geographical term, these do not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark. If the first letters of the disputed domain name are read as “mist” or “misto”, the remainder makes no sense. The MI mark remains clearly recognizable within the disputed domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.

The only other additional element in the disputed domain name is a generic Top-Level Domain suffix (“.com”). As a mere technical requirement of registration, this element is generally disregarded in the comparison between a domain name and a trademark for the purposes of the first element of paragraph 4(a) of the Policy. See WIPO Overview 3.0, section 1.11.

Further, the Panel takes note that the website to which the disputed domain name resolves is an online store for the Complainant’s products that prominently displays a logo consisting of MI STORE in an orange circle. This evidence confirms that the Respondent is seeking to target the MI trademark through the disputed domain name and affirms the confusing similarity. See WIPO Overview 3.0, section 1.15.

Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to [the respondent] 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] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark 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 trademark or service mark at issue.

The disputed domain name wholly incorporates the Complainant’s MI trademark as its initial element and redirects to a website that prominently displays a logo consisting of MI STORE in an orange circle and offers for sale the Complainant’s Xiaomi products, including its MI product models. The website claims to be “Your Xiaomi store in Portugal”. However, the Complainant submits that there is no commercial or corporate relationship between the Parties and that the Respondent has not received any permission or authorization to use the Complainant’s trademarks or to register a domain name that incorporates that trademark. Whether or not products are actually sold on the Respondent’s website, and whether any such products are genuine or counterfeit, the website gives the false impression that it is owned, operated or endorsed by, or affiliated with, the Complainant. Accordingly, the Panel does not consider this use to be a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.

The Respondent is identified by the Registrar as “Ricardo Jorge Varao Sa” and in his informal communications with the Center as “Ricardo Sá”. There is no evidence that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy.

The Respondent’s website offers goods for sale. Accordingly, the Panel does not consider this to be a legitimate noncommercial or fair use of the disputed domain name within the meaning of paragraph 4(c)(iii) of the Policy.

In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent failed to rebut that prima facie case because he did not respond to the Complainant’s contentions.

Therefore, based on the record of this proceeding, the Panel finds that the Complainant has satisfied the second element in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows:

“(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] web site or location.”

The disputed domain name was registered in 2020, many years after the Complainant obtained its trademark registration for MI in the European Union, where the Respondent is resident and does business. The disputed domain name wholly incorporates the MI mark as its initial element and redirects to a website that prominently displays a logo consisting of MI STORE in an orange circle and offers for sale the Complainant’s Xiaomi products, including its MI product models. These circumstances give the Panel reason to find that the Respondent knew of the Complainant and its MI trademark at the time that he registered the disputed domain name.

The Respondent uses the disputed domain name, which combines the MI mark with the word “store” and the country name “Portugal”, to redirect to an online store that claims to be “Your Xiaomi store in Portugal”. The Respondent’s website prominently displays a logo consisting of MI STORE in an orange circle and offers for sale the Complainant’s products, giving the false impression that it is owned, operated or endorsed by, or affiliated with, the Complainant. The record includes an instance of actual consumer error as regards the affiliation of the Respondent’s website. Given these circumstances and the findings in section 6B above, the Panel considers that the disputed domain name is intended to attract Internet users by creating a likelihood of confusion with the Complainant’s MI trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of the products offered on that website within the terms of paragraph 4(b)(iv) of the Policy.

Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in 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 <mistoreportugal.com> be transferred to the Complainant.

Matthew Kennedy
Sole Panelist
Date: February 8, 2021