WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
NXP B.V. v. Shen Zhen Shi Nan Huang Dian Zi You Xian Gong Si / Shenzhen nanhuang electronics co.ltd / Nexperian Holding Limited
Case No. D2017-0296
1. The Parties
The Complainant is NXP B.V. of Eindhoven, the Netherlands, represented by Pointer Brand Protection and Research, the Netherlands.
The Respondent is Shen Zhen Shi Nan Huang Dian Zi You Xian Gong Si of Shenzhen, Guangdong, China / Shenzhen nanhuang electronics co.ltd of Shenzhen, Guangdong, China / Nexperian Holding Limited of Hangzhou, Zhejiang, China.
2. The Domain Names and Registrar
The disputed domain names <nxpchip.com> and <nxp-ic.com> (the "Domain Names") are registered with HiChina Zhicheng Technology Ltd. (the "Registrar").
3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 14, 2017. On February 14, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On February 15, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 1, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an Amended Complaint on March 3, 2017.
On March 1, 2017, the Center sent an email communication to the Parties in both Chinese and English regarding the language of the proceeding. On March 3, 2017, the Complainant requested for English to be the language of the proceeding in the amended Complaint. The Respondent did not comment on the language of the proceeding.
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 March 13, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 2, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 3, 2017.
The Center received two unsolicited supplemental filings from the Complainant on March 24, 2017 and April 4, 2017 respectively.
The Center appointed Karen Fong as the sole panelist in this matter on April 12, 2017. 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 one of the largest semiconductor manufacturers in the world with revenue of USD 6.1 billion in 2015. It has research and development as well as manufacturing facilities all over the world with 25 locations in China including Hong Kong, Beijing and Shenzhen. The Complainant produces OEM products for some of the leading brand owners including Apple, Bosch, Huawei, Hyundai, Panasonic and Samsung. The NXP trade mark is used in connection with its High Performance Mixed Signal and Standard products for applications in cars, security and the Internet of Things. NXP technology is used in car access products, smart cards/proximity cards, mobile devices, TVs, tablet PCs, notebooks and the like.
The NXP trade marks are registered all over the world including in China (the "Trade Mark"). The earliest Chinese trade mark registration for the NXP word mark submitted in evidence was registered in 2006 (Chinese registration no. G917998 with registration date of December 29, 2006). The Complainant's website is found at "www.nxp.com".
The Respondent registered <nxp-ic.com> on August 24, 2012, and <nxpchip.com> on December 26, 2012. The websites connected to the Domain Names which are in Chinese ("the Websites") displayed the Nanhuang Electronics' logo and company name and the title "NXP, NXP Company, NXP semi – conductors, NXP authorized agent". The website also contained several references to "NXP agent" and "NXP authorised agent". The Complainant's NXP colour logo trade mark also appears prominently on the home pages and throughout the Websites.
The Complainant's legal representatives contacted the Respondent requesting that the Domain Names be transferred on May 25, 2016. A response was received on May 26, 2016, suggesting that the Respondent would co-operate. Instead they moved the Websites to the domain names <nhchip.com> and <en-ic.com>. Despite several reminders the Respondent failed to respond further.
5. Parties' Contentions
The Complainant contends that the Domain Names are identical or confusingly similar to the Trade Mark, the Respondent has no rights or legitimate interests with respect to the Domain Names, and that the Domain Names were registered and used in bad faith. The Complainant requests transfer of the Domain Names, all of which it believes are related and under management and control of a single, unknown owner/registrant.
The basis of its belief that the registrants are related and under management and control of a single unknown owner/registrant are as follows:
1. Both Domain Names are registered with the same Registrar.
2. Both Domain Names were registered to the same privacy service – Nexperian Holding Limited.
3. The registrant organization of <nxp-ic.com> is Shenzhen nanhuang electronics co ltd ("Nanhuang") whilst the registrant organization of <nxpchip.com>is Shen Zhen Shi Nan Huang Dian Zi You Xian Gong Xi which is the transliteration of the Chinese name of Nanhuang. The addresses as disclosed by the Registrar are almost identical.
4. The Domain Names incorporate the Trade Mark which resolve to websites which are almost identical.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that:
(i) The Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) The Domain Names were registered and being used in bad faith.
6.1. Preliminary Procedural Issue — Consolidation of Respondents
Paragraph 5(f) of the Policy allows a panel to consolidate multiple disputes between parties at its sole discretion and paragraph 10(e) of the Rules empowers a panel to consolidate multiple domain name disputes in accordance with the Policy and Rules. Neither the Policy nor the Rules expressly provide for the consolidation of multiple respondents in a single administrative proceeding. In fact, paragraph 3(c) of the Rules provides that a complaint may relate to more than one domain name provided that the domain names are registered by the same domain name holder. The panel in Speedo Holdings BV v Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281 reviewed the relevant UDRP decisions in relation to consolidation in multiple-respondent cases and extracted the following general principles:
1. Consolidation of multiples registrants as respondents in a single administrative proceeding may in certain circumstances be appropriate under paragraphs 3(c) or 10(e) of the Rules provided the complainant can demonstrate that the disputed domain names or the websites to which they resolve are subject to common control, and the panel having regard to all of the relevant circumstances, determines that consolidation would be procedurally efficient and fair and equitable to all parties.
2. The administrative provider should act as a preliminary gatekeeper in such cases by determining whether or not such complaints fulfill the requisite criteria. Once a case is admitted on a prima facie basis, the respondent has the opportunity to make its submissions on the validity of the consolidation together with its substantive arguments. In the event that the panel makes a finding that the complaint has not satisfied the requisite criteria, the complainant is not precluded from filing the complaint against the individual named respondents.
In the present case, each of the Domain Names incorporates the Trade Mark in its entirety, and each of the Domain Names resolved to websites identical in content. The registrant organisations of both Domain Names refer to the same organisation with one written in English and the other a transliteration of the same name from Chinese. The addresses are almost identical. After the Respondent, Nexperian Holding Limited received the request to transfer the Domain Names on March 25, 2016, which was written in English, both the Websites were moved to the domain names <nhchip.com> and <en-ic.com> respectively. The Respondent in its email in response on May 26, 2016, did not indicate that the Domain Names belonged to different parties. All of this point to the Complainant being the target of common conduct based on the registration and use of the Domain Names and that such conduct interferes with the Complainant's rights in the Trade Mark. Furthermore, Complainant's claims against the Domain Names involve common questions of law and fact.
The Respondent had the opportunity but did not respond substantively to the Complaint.
Accordingly, applying the principles to the facts in this case, the Panel finds that the Complainant has established more likely than not that the Domain Names are subject to common ownership or control. The Panel finds such common control to justify consolidation of the Complainant's claims against the registrants of the Domain Names in this proceeding. The Panel further concludes in the circumstances of this case that consolidation would be fair and equitable to all Parties and procedurally efficient, and therefore will allow the consolidation as requested by the Complainant pursuant to paragraph 10(e) of the Rules.
6.2. Preliminary Procedural Issue – Language of the Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the 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 proceedings. According to the information received from the Registrar, the language of the Registration Agreements is Chinese.
The Complainant submits in paragraph 10 of the Complaint as well as in its response to the Center on March 10, 2017, that the language of the proceeding should be English. The Complainant contends that there is strong evidence that the Respondent has sufficient knowledge of the English language as its email responses to the Complainant's emails were in English and had made changes to the use of the Domain Names in response to the Complainant's written request in English. If the documents have to be submitted in Chinese, the proceeding will be unduly delayed and the Complainant would have to incur substantial expenses for translation. The Complainant further submits that it has no objection for the proceedings being conducted in English and Chinese.
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 accepts the Complainant's submissions regarding the language of the proceeding. The Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. The Panel notes that in any case all of the communications from the Center to the Parties were transmitted in both Chinese and English. The Respondent chose not to respond to the Complaint. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding.
6.3. Substantive Issue
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has rights to the Trade Mark.
The threshold test for confusing similarity involves the comparison between the trade mark and the domain name itself. The trade mark would generally need to be recognizable within the disputed domain name. In this case the Domain Names comprise the Complainant's trade mark NXP in its entirety and for one together with the descriptive term "chip" and the other together with a dash "- " and the letters "ic". The addition of these elements does nothing to minimise the risk of confusion. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain ("gTLD").
The Panel finds that the Domain Names are confusingly similar to a trade mark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers, or to tarnish the trademark or service mark at issue.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") that 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 proof shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some allegations of evidence of relevant right or legitimate interest, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.
The Complainant contends that it has not authorised, licensed or otherwise permitted the Respondent to use the NXP trade mark in the Domain Names or for any other purpose. The Respondent is not an authorized seller of the Complainant's products. Yet the Websites suggest that the Respondent is an authorized agent. The prominent display of the NXP colour logos increases the likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Websites. The disclosure of the relationship between them is wholly inaccurate. The Respondent is not commonly known by the Domain Names. Nor does it have any registered trade marks or trade names corresponding with the Domain Names.
"Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site's accurately and prominently disclosing the registrant's relationship with the trademark holder. The respondent must also not try to 'corner the market' in domain names that reflect the trademark. Many panels subscribing to this view have also found that not only authorized but also unauthorized resellers may fall within such Oki Data principles. Pay-per-click (PPC) websites would not normally fall within such principles where such websites seek to take unfair advantage of the value of the trademark."
In this case, there has been no disclosure of the real nature of the relationship between the Complainant and the Respondent. It seems to this Panel that the content of the Websites is intended to mislead Internet users that there is a connection between the Complainant and the Respondent. Therefore, the Panel finds the principles elaborated in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 regarding rights or legitimate interests are not satisfied in this case.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Names.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names.
C. Registered and Used in Bad Faith
To succeed under the Policy, a Complainant must show that the Domain Names have been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent was aware of the Complainant's trade mark marks when it registered the Domain Names. The Complainant has provided sufficient evidence that the registration of the Domain Names post date the NXP trade mark registrations.
The very incorporation of the Trade Mark in the Domain Names and the display of the Trade Mark and the offer for sale of the Complainant's products on the Websites confirm the Respondent's awareness of the Trade Mark.
Thus, the Panel concludes that the Respondent deliberately registered the Domain Names in bad faith.
The Panel also finds that the actual use of the Domain Names is in bad faith. The Websites depict the Respondent as the authorized agent or distributor of the Complainant in China. The content of the Websites also is calculated to give the impression that it has been authorized by the Complainant when this is not the case. The Websites were set up to deliberately mislead Internet users that it is connected to, authorised by or affiliated to the Complainant. From the above, the Panel concludes that the Respondent intentionally attempted to attract for commercial gain, by misleading Internet users into believing that the Respondent's Websites are and the products sold on them are those of or authorised or endorsed by the Complainant, within the meaning of paragraph 4(b)(iv) of the Policy.
The Panel therefore concludes that the Domain Names were registered and are being used in bad faith under paragraph 4(a)(iii) 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 Domain Names, <nxpchip.com> and <nxp-ic.com>, be transferred to the Complainant.
Date: April 26, 2017