WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AVX Corporation v. Huang Qi Song, Shen Zhen Shi Jing Ci Dian Zi Shang Mao You Xian Gong Si
Case No. D2016-2049
1. The Parties
The Complainant is AVX Corporation of Fountain Inn, South Carolina, United States of America ("United States"), represented by Troutman Sanders, LLP, China.
The Respondent is Huang Qi Song, Shen Zhen Shi Jing Ci Dian Zi Shang Mao You Xian Gong Si of Shenzhen, Guangdong, China, self-represented.
2. The Domain Name and Registrar
The disputed domain name <avx-kyocera.com> is registered with HiChina Zhicheng Technology Ltd. (the "Registrar").
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on October 7, 2016. On October 7, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 8, 2016, 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 October 9, 2016 and October 11, 2016, the Respondent submitted two emails inquiring how to proceed with the case. On October 13, 2016, the Center transmitted to the Parties an email in English and Chinese regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on October 14, 2016. The Respondent requested that Chinese be the language of the proceeding on October 14, 2016.
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 in English and Chinese, and the proceeding commenced on October 21, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 10, 2016.
On November 7, 2016, the Respondent submitted an informal Response and offered to settle with the Complainant. Accordingly, the Center informed the Parties if they wish to explore settlement options, the Complainant should submit a request for suspension by November 14, 2016. On November 8, 2016, the Complainant submitted a request for suspension. On the same day, the Center informed the Parties the proceeding was suspended until December 8, 2016. On November 30, 2016, the Complainant submitted a request for reinstitution. The Center informed the Parties the proceeding was reinstituted and the response due date was December 2, 2016. On December 5, 2016, the Center informed the Parties the commencement of panel appointment process.
The Center appointed Francine Tan as the sole panelist in this matter on December 12, 2016. 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 United States-based company. It was founded in 1972 and is listed on the New York Stock Exchange. Its major shareholder and parent company is Kyocera Electronics Corporation ("Kyocera"), a Japanese multinational electronics and ceramics manufacturer. The Complainant is also a distributor of Kyocera products.
The Complainant states it is a leading worldwide manufacturer, supplier, and reseller of a broad line of passive electronic components and interconnect products. Electronic components and connector products manufactured or resold by the Complainant are used in virtually all types of electronic products. Consolidated revenues for the fiscal year ended March 31, 2015 were USD 1,352.2 million.
The Complainant is the owner of numerous trade mark registrations incorporating AVX including in China. The Complainant's AVX trade mark was registered in the United States in 1972 (registration no. 0936515). The Complainant also holds registrations for AVX INTERCONNECT A KYOCERA GROUP COMPANY (a figurative mark) in the United States and Europe (including United States trade mark registration no. 4077339, registered on December 27, 2011). Kyocera owns numerous trade marks incorporating KYOCERA including in China.
The disputed domain name was registered on December 3, 2014 and resolves to a website that appears to be a platform that advertises and sells electronic products of different brands and not exclusively those of the Complainant.
5. Parties' Contentions
The Complainant contends, firstly, that the disputed domain name is confusingly similar to its AVX trade mark. The combination of the AVX and KYOCERA trade marks, the latter being the trade mark of the Complainant's parent company, Kyocera, suggests a relationship or association between the respective companies. For those that know the relationship between the Complainant and Kyocera, they may assume the Complainant has renamed its business.
The Complainant contends, secondly, that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not known by the name "avx" or "kyocera"; the Respondent is not related to Kyocera; the Respondent has not received a licence or authorization from the Complainant to make use of the Complainant's AVX trade mark. The Respondent has claimed to be a distributor of AVX products but on its website, it sells electronic products of other brands such as NICHICON, MURATA and TDK. The site does not accurately disclose the Respondent's relationship with the Complainant or Kyocera. The KYOCERA trade mark is prominently displayed at the top and bottom of the webpage, implying that it is an official website of Kyocera. The AVX trade mark also prominently appears on the website, suggesting it is an official site of the Complainant, which it is not.
The Respondent cannot claim any legitimate interests in the disputed domain name. The decision in Oki Data Americas, Inc. v ASD, Inc., WIPO Case No. D2001-0903 is not applicable in this case for the reasons that (i) the Respondent does not use its website to sell only the Complainant's and Kyocera's trade marked goods and (ii) the Respondent's website does not accurately disclose the Respondent's relationship with the relevant trade mark owners.
The Complainant contends, thirdly, that the disputed domain name was registered and is being used in bad faith. The display of the KYOCERA and AVX trade marks on the Respondent's website and purported sale of the Complainant's products show that the Respondent had full knowledge of the Complainant and its parent company when it registered the disputed domain name. The circumstances of this case fall within paragraph 4(b)(iv) of the Policy.
In the informal Response of November 7, 2016 referenced above, the Respondent said that it had read carefully and reviewed the matter. It apologized for the misunderstanding caused to the Complainant but maintained it had gone through the proper channels for the registration of the disputed domain name. The Respondent said it considered there has been no harm to the Complainant, and is in fact beneficial to the Complainant as the Respondent is selling products manufactured by the Complainant, and is one of the distributors of the Complainant's electronic products.
The Respondent stated that its main customers are small enterprises with small order volumes, extending 60 days of credit terms. The Complainant and most other distributors would not be able to give smaller enterprises up to 60 days of credit terms but the Respondent is able to. Hence, the Respondent is able to complement the other distributors and reach out to different levels of market needs.
The Respondent stated that it understood the content and requirement under the Policy and the Complainant's position on the issue. It therefore decided to remove the registration of the disputed domain name and to change to another new domain name for the company. It said it would strive to continue to be in good business partnership with the Complainant, and bring benefit to the Complainant. It requested the Complainant's understanding and support.
6. Discussion and Findings
6.1 Preliminary Issue: Language of the Proceeding
The Registration Agreement applicable to the disputed domain name is Chinese. The Complainant requested that English be the language of the proceeding or alternatively, that it be allowed to file the Complaint in English and for the Respondent to be allowed to file a Response in Chinese. The Complainant submitted that in the interests of expedition and cost savings, it would be fair for English to be applied. The Complainant is a United States company and conducts business primarily in English. Translating the Complaint into Chinese would cause a delay in the proceeding and involve extra costs. The Respondent, moreover, conducts its business in both Chinese and English, as can be seen from its website, and further claims to be involved in international imports and exports. As such, the Respondent should be comfortable in handling matters in the language of international trade, i.e. English.
The Respondent requested that Chinese be applied as the language of the proceeding.
Paragraph 11(a) of the Rules stipulates that: "[u]nless 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(c) of the Rules stipulates that "The Panel shall ensure that the administrative proceeding takes place with due expedition. …".
The Panel rules in this case that it would be appropriate for English to be applied as the language of the proceeding. The Panel is persuaded that the Respondent has an adequate level of understanding of the English language, and this is reflected in its choice of the disputed domain name comprising non-Chinese words and the content of its website, as well as through the Respondent's statements indicating that it closely reviewed the Complainant's materials.
The Panel does not see that the Respondent would be prejudiced if English were adopted as the language of the proceeding. The Respondent was advised in both Chinese and English of the nature of the proceeding and was even given an opportunity to work out an amicable settlement with the Complainant. The Respondent has therefore been given a fair and ample opportunity to be heard in the proceeding. The Panel has to balance the Respondent's interests with those of the Complainant and the Policy aim of ensuring that the proceeding takes place with due expedition. Requiring the Complainant to translate the Complaint and supporting evidence into Chinese would significantly delay the proceeding whereas it does not seem at all necessary since the Respondent indicated in its informal response that it understood the Complaint and the nature of the UDRP proceeding. Moreover, the Respondent's website is also presented in English.
The Panel therefore determines it appropriate that English be applied as the language of the proceeding.
6.2 Substantive Matters
A. Identical or Confusingly Similar
The Complainant has established it has rights in the trade mark AVX. The disputed domain name in this case has incorporated the AVX trade mark and linked it by way of a hyphen to the Complainant's parent company's KYOCERA trade mark. The additions of the KYOCERA trade mark and the hyphen in the disputed domain name do not remove the confusing similarity to the Complainant's AVX trade mark. In fact, it adds to the confusion; since the Complainant and Kyocera are related companies, the combination affirms to Internet users that the "avx" in the disputed domain name is that of the Complainant, and suggests to Internet users that the website to which the disputed domain name resolves relates to the Complainant and/or its parent company, Kyocera.
The Panel therefore finds that the first element of paragraph 4(a) of the Policy has been satisfied.
B. Rights or Legitimate Interests
The Panel is of the view that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The consensus view established in previous panel decisions under the UDRP is that:
"While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP." (See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition.)
The Respondent has failed to establish it has rights or legitimate interests in the disputed domain name as there is no bona fide offering of goods or services. The fact that the Respondent may be distributing the Complainant's products does not automatically extend the right to it to use, without the Complainant's consent, the Complainant's trade mark in its domain name registration.
In the Oki Data case (supra), the Panel held:
"Paragraph 4(c)(i) of the Policy provides that a use is legitimate if, prior to commencement of the dispute, Respondent used the domain name or a name corresponding to the domain name in connection with the bona fide offering of goods or services. Here, there is no dispute concerning Respondent's status: It is an authorized Oki Data repair facility, and has been offering OKIDATA goods and services since prior to the commencement of this case. The only issue before the Panel, then, is whether Respondent's offerings may be characterized as 'bona fide'.
To be 'bona fide', the offering must meet several requirements. Those include, at the minimum, the following:
- Respondent must actually be offering the goods or services at issue. E.g., World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306 (January 24, 2001) (respondent failed to show demonstrable preparations to use the domain name in connection with a bona fide offering).
- Respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods. Nikon, Inc. v. Technilab, WIPO Case No. D2000-1774 (WIPO Feb. 26, 2001) (use of Nikon-related domain names to sell Nikon and competitive cameras not a legitimate use); Kanao v. J.W. Roberts Co., Case No. 0109 (CPR July 25, 2001) (bait and switch is not legitimate).
- The site must accurately disclose the registrant's relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents. E.g., Houghton Mifflin Co. v. Weatherman, Inc., WIPO Case No. D2001-0211 (April 25, 2001) (no bona fide offering where website's use of Complainant's logo, and lack of any disclaimer, suggested that website was the official Curious George website); R.T. Quaife Engineering v. Luton, WIPO Case No. D2000-1201 (November 14, 2000) (no bona fide offering because domain name <quaifeusa.com> improperly suggested that the reflected site was the official U.S. website for Quaife, an English company; moreover, respondent's deceptive communications with inquiring consumers supported a finding of no legitimate interest); Easy Heat, Inc. v. Shelter Prods., WIPO Case No. D2001-0344 (June 14, 2001) (no bona fide use when respondent suggested that it was the manufacturer of complainant's products).
- The Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name. Magnum Piering, Inc. v. Mudjackers, WIPO Case No. D2000-1525 (January 29, 2001) (a single distributor is extremely unlikely to have a legitimate interest in precluding others from using numerous variants on a mark')."
In this case, the Panel agrees with the Complainant that the Respondent has not met the factors which would make its offering of goods or services bona fide. The Respondent has not used its website to sell only goods bearing the AVX (or KYOCERA) trade marks. Further, the Respondent has not disclosed its relationship with the Complainant and Kyocera. The intention in registering the disputed domain name was for wrongful reasons and there is no legitimacy or rights from which the Respondent can assert for its domain name registration.
The Respondent's response also constitutes an admission by the Respondent that it had no rights or legitimate interests in the disputed domain name since it apologized to the Complainant and quite readily agreed it would adopt another domain name for its website.
The Panel therefore finds that the second element of paragraph 4(a) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the UDRP provides that the following circumstances, if found to be present, shall be evidence of the registration and the use of a domain name in bad faith:
(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 Panel finds that the Respondent's specific choice of the disputed domain name combining the AVX and KYOCERA trade marks of the two related companies reflects bad faith and an intention on its part to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark (and also that of the Complainant's parent company, Kyocera) as to the source, sponsorship, affiliation or endorsement of its website or of a product of services on the website (including the products of competitors). The Respondent clearly knew of the Complainant and Kyocera and of their respective trade marks, and registered the disputed domain name comprising a combination of their well-established AVX and KYOCERA trade marks for no other reason other than for the aforesaid purpose.
The Panel therefore finds that the third element of paragraph 4(a) of the Policy has been satisfied.
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 <avx-kyocera.com> be transferred to the Complainant.
Date: December 26, 2016