WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Asustek Computer Incorporation v. Grupo ADSL
Case No. D2020-3401
1. The Parties
The Complainant is Asustek Computer Incorporation, Taiwan Province of China, represented by Brigard Castro, Colombia.
The Respondent is Grupo ADSL, Colombia.
2. The Domain Name and Registrar
The disputed domain name <asuscolombia.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 14, 2020. On December 15, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 16, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 16, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 9, 2021.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on March 22, 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, a company from Taiwan Province of China, founded in 1989, is a technology manufacturer of computers, desktops, laptops, smartphones and gaming devices.
It is the owner, amongst several others, of the following trademark registrations (Annex 3.1 to 9 to the Complaint):
- Colombian Trademark Registration No. 153010 for the word mark ASUS, filed on October 28, 1992 registered and renewed and in force until January 27, 2024, covering products in class 09.
The disputed domain name <asuscolombia.com> was registered on May 7, 2012 and was used in the past to redirect Internet users to the Respondent’s webpage available at <grupoadsl.com>. Presently no active webpage resolves from the disputed domain name.
The Respondent is a retailer of technology products and states in its website available at <grupoadsl.com> that it is an authorized partner of Asus, Adobe, XPG, Apple, ADATA, Republic of Gamers, reproducing the respective logos at its webpage.
5. Parties’ Contentions
The Complainant asserts to have been using the ASUS trademark since at least 1995 in connection with its technology business on a worldwide basis. In Colombia, where the Respondent is located, the ASUS trademark has been largely used and advertised (Annexes 14-18 to the Complaint).
According to the Complainant, the distinctive element of the disputed domain name is the ASUS trademark. The disputed domain name is confusingly similar to the ASUS trademark given that the addition of the geographical term “colombia” merely relates to the Respondent’s nationality and place of business and creates a potential impression in Internet users that the Respondent is the Complainant’s authorized reseller, or is affiliated with the Complainant.
As to the absence of rights or legitimate interests, the Complainant argues that:
(i) the Respondent has no right over the ASUS trademark, nor has it been licensed or otherwise permitted by the Complainant to use said mark or register the disputed domain name;
(ii) the Respondent is not known by the disputed domain name, nor does it hold any trademarks over such expression;
(iii) the disputed domain name was used to redirect Internet users to the Respondent’s website seeking to create an impression of association with the Complainant.
In what it relates to the bad faith registration and use of the disputed domain name, the Complainant asserts that the Respondent’s knowledge of the Complainant’s trademark is evident given the reproduction of its logotype on the Respondent’s website to which Internet users accessing the disputed domain name used to be redirected, making it only possible to conclude that the Respondent knew about the Complainant’s trademark and reputation, and used them to its advantage in bad faith.
Lastly, the Respondent, by using the disputed domain name, is not making a legitimate noncommercial or fair use without intent for commercial gain, but is misleadingly diverting consumers for its own commercial gain.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
(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.
The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain name transferred to it, according to paragraph 4(i) of the Policy.
A. Identical or Confusingly Similar
The Complainant has established its rights in the ASUS trademark as set out in Section 4 above.
The disputed domain name includes the entirety of the Complainant’s trademark. The addition of the “colombia” suffix does not avoid a finding of confusing similarity under the Policy which, as recognized by past UDRP panels, involves a “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” (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (WIPO Overview 3.0), sections 1.7 and 1.8).
The first element of the Policy has therefore been established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that may indicate the Respondent’s rights or legitimate interests in the disputed domain name. These circumstances are:
i. before any notice 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 individual, business, or other organization) has been commonly known by the disputed domain name, in spite of not having acquired 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 Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name. This entitles the Panel to draw any inferences from such default as it considers appropriate, pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainant to make at least a prima facie case against the Respondent under the second UDRP element.
In that sense, and according to the evidence submitted, there is no evidence that the Respondent has been commonly known by the disputed domain name.
Also according to the evidence submitted by the Complainant, the Respondent was evidently aware of the Complainant, having reproduced the Complainant’s logo at its website (along with trademarks of competitors), to which Internet users where redirected while accessing the disputed domain name. This clearly indicates a lack of any rights or legitimate interests on the part of the Respondent.
In addition, the Panel notes that the nature of the disputed domain name carries a risk of implied affiliation with the Complainant.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in respect of a disputed domain name, where, by using the disputed domain name, a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
In this case, both the registration and use of the disputed domain name in bad faith can be found in view of the composition of the disputed domain name, and its use, including the reproduction of the Complainant’s trademark logotype in connection with the Respondent’s website.
The Respondent’s use of the disputed domain name not only clearly indicates full knowledge of the Complainant’s trademark but also an attempt of misleadingly diverting consumers for its own commercial gain.
Another element to be taken into account is the Respondent’s absence of any response to the Complaint, failing thereby to invoke any circumstance which could demonstrate good faith in the registration or use of the disputed domain name.
For the reasons above, the Respondents’ conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain name pursuant to paragraph 4(b)(iv) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <asuscolombia.com>, be transferred to the Complainant.
Wilson Pinheiro Jabur
Date: April 5, 2021