Westmore · UDRP DecisionRfid-mifare.com
The Panel ordered transfer of <rfid-mifare.com> to NXP B.V. It found the domain confusingly similar to the registered MIFARE mark because it incorporated MIFARE in full and added the descriptive abbreviation “rfid.” The Respondent did not rebut the Complainant’s prima facie case concerning rights or legitimate interests. Bad faith was established through redirection to a commercial website selling the Complainant’s and competing products, together with an offer to sell the domain for USD 99,999.
The timeline behind rfid-mifare.com
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
Westmore reconstructs the full history behind rfid-mifare.com — from public RDAP and the Internet Archive — as part of UDRP Intelligence:
The decision illustrates a combined bad-faith pattern: use of a trademark-plus-descriptive-term domain to direct users to a commercial site offering competing products, reinforced by an exceptionally high sale demand following an inquiry about registration costs. The descriptive addition strengthened rather than reduced the apparent connection to the trademark owner’s products.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION NXP B.V. v. C. Wong, Jetsolife Limited Case No. D2016-0269 1. The Parties Complainant is NXP B.V. of Eindhoven, Netherlands, represented by Pointer Brand Protection and Research, Netherlands. Respondent is C. Wong, Jetsolife Limited of Hong Kong, China. 2. The Domain Name and Registrar The disputed domain name <rfid-mifare.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 February 11, 2016. On February 11, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 12, 2016, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceeding commenced on February 22, 2016. On March 12, 2016, the Respondent requested an extension of the Response due date. The Center extended the due date for Response to March 17, 2016 in accordance with paragraph 5(b) of the Rules. The Respondent did not however submit any formal response. Accordingly, the Center notified the parties that it will proceed to Panel Appointment on March 18, 2016. The Center appointed Lorelei Ritchie as the sole panelist in this matter on March 31, 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 Complainant is a limited liability company incorporated in the Netherlands. Complainant has operations in over 25 countries, with 28,000 employees, and a posted revenue of USD 5.65 billion in 2014. In 1994, Complainant introduced MIFARE, its contactless Integrated Circuit (IC) products, which include, among other things, smart cards, and key fobs. Complainant owns various registrations for the MIFARE mark globally, including International Registration No. 615458 (registered 1994) and United States Registration No. 1955652 (registered 1996). Complainant also owns registrations for the term MIFARE together with other terms, including International Registration No. 1003840 for MIFARE PLUS (registered 2009); International Registration No. 1010430 for MIFARE ULTRALIGHT (registered 2009); and International Registration No. 1172354 for MIFARE CLASSIC (registered 2013). The disputed domain name <rfid-mifare.com> was registered on February 22, 2013. Respondent apparently has used the disputed domain name to link to the website “www.lj-rfid.card.com” from which it offers for sale smart cards and Radio Frequency Identification (RFID) of the Complainant and its competitors. Respondent has no affiliation with Complainant, nor any license to use its marks. When contacted by Complainant regarding transfer of the disputed domain name, and asked about “costs of registration,” Respondent offered to sell the disputed domain name at a cost of USD 99,999. 5. Parties’ Contentions A. Complainant Complainant contends that (i) <rfid-mifare.com> is identical or confusingly similar to Complainant’s trademarks, (ii) Respondent has no rights or legitimate interests in the disputed domain name, and (iii) Respondent registered and is using the disputed domain name in bad faith. Specifically, Complainant contends that it is the owner of the well known MIFARE trademark, and that Respondent has incorporated this mark in the disputed domain name and merely added the term “rfid,” which is descriptive of goods being offered under the MIFARE mark. Complainant contends that Respondent lacks rights or legitimate interest in the disputed domain name, and rather has registered and is using it in bad faith, linking the disputed domain name to a website that offers for sale competing products, and also offering for sale the disputed domain name at significantly greater than out of pocket costs. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar This Panel must first determine whether <rfid-mifare.com> is identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that it is. The disputed domain name incorporates in full Complainant’s registered mark, MIFARE, and combines it with the term “rfid,” which is an abbreviation for “Radio Frequency Identification.” This is descriptive of a feature of Complainant’s MIFARE goods and services, and therefore is a term which web users would expect to associate with the Complainant. Numerous UDRP panels have agreed that supplementing or modifying a trademark with generic or descriptive words may not make a domain name any less “identical or confusingly similar” for purposes of satisfying this first prong of paragraph 4(a)(i) of the Policy. See, for example, Microsoft Corporation v. StepWeb , WIPO Case No. D2000-1500 ; Wal-Mart Stores, Inc. v. Horoshiy, Inc. , WIPO Case No. D2004-0620 ; General Electric Company v. Recruiters , WIPO Case No. D2007-0584 . Complainant also owns other marks combining MIFARE with other terms. The Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Panel next considers whether Complainant has shown that Respondent has no “rights or legitimate interest” as must be proven to succeed in a UDRP dispute. Paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that respondent has been “commonly known by the domain name”; or (iii) “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”. The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, as described at Section 5.A above. No evidence has been presented to this Panel that might support a claim of Respondent’s rights or legitimate interests in the disputed domain name, and Respondent has no license from, or other affiliation with, Complainant. Therefore, this Panel finds that Complainant has provided sufficient evidence of Respondent’s lack of “rights or legitimate interests” in accordance with paragraph 4(a)(ii) of the Policy which Respondent has not rebutted. C. Registered and Used in Bad Faith There are several ways that a complainant can demonstrate that domain names were registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or of a product or service on [the] web site or location”. As noted in Section 4 of this Panel’s decision, Respondent has redirected the disputed domain name to a website that sells goods that are unaffiliated with Complainant. These include competing products. Complainant has not authorized these links, nor the use of its trademarks therewith. In so doing, Respondent is trading on the goodwill of Complainant’s trademarks to attract Internet users, presumably for Respondent’s own commercial gain. This evidences bad faith by Respondent. Furthermore, Complainant has evidenced that Respondent has “registered or acquired the domain name primarily for the purpose of selling for valuable consideration in excess of documented out-of-pocket costs,” in a showing of bad faith as contemplated by paragraph 4(b)(i) of the Policy. In particular, in response to an inquiry from Complainant into its registration costs, Respondent offered the disputed domain name for sale for USD 99,999. Therefore, this Panel finds that Respondent registered and used the disputed domain name in bad faith in accordance with paragraph 4(a)(iii) 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, <rfid-mifare.com>, be transferred to the Complainant. Lorelei Ritchie Sole Panelist Date: April 3, 2016
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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