WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

NXP B.V. v. Meimei Lu, RFID&CARD Technology (shen zhen) Co., Ltd.

Case No. D2016-0271

1. The Parties

Complainant is NXP B.V. of Eindhoven, Netherlands, represented by Pointer Brand Protection and Research, Netherlands.

Respondent is Meimei Lu, RFID&CARD Technology (shen zhen) Co., Ltd. of Shenzhen, Guangdong, China.

2. The Domain Name and Registrar

The disputed domain name <mifare-smart-card.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 23, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 14, 2016. Respondent did not submit any formal response. Accordingly, the Center notified the parties that it will proceed to Panel Appointment on March 15, 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 <mifare-smart-card.com> was registered on August 30, 2011. Respondent apparently uses the disputed domain name to offer for sale smart cards and Radio Frequency Identification (RFID) products of the Complainant and its competitors. Respondent has no affiliation with Complainant, nor any license to use its marks.

5. Parties’ Contentions

A. Complainant

Complainant contends that (i) <mifare-smart-card.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 “smart-card,” 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, offering for sale competing products.

B. Respondent

Respondent did not make any formal reply to Complainant’s contentions. On February 29, 2016, the Center received the following response from the Marketing Department of the company identified by the Registrar as the registrant and Respondent in this proceeding:

“Thanks for your email and we got what you mean; basically, the web: mifare-smart-card.com is a trade website which build by www.maoyt.com. We are not the owner, just a user; so I think you need to contact Mayot.com and godaddy.com.”

Upon the Center’s reply confirming Respondent’s identification by the Registrar, and noting that Respondent’s identification is “a matter for Panel’s determination,” as well as being reminded of the Response deadline of March 14, Respondent replied again on March 9:

Any news?

Once again, the Center informed Respondent of the response deadline of March 14. However, Respondent did not submit any formal Response. After the Center informed the Parties that it was proceeding to appoint a panel, Respondent replied:

“We have reply you on 29th Feb, pls check; I do not which is the positive response you need?”

Upon review of this correspondence, the Panel determines that the identification of Respondent is accurate, and Respondent had a full and fair opportunity to respond to the allegations of the Complaint, which it chose not to do.

6. Discussion and Findings

A. Identical or Confusingly Similar

This Panel must first determine whether <mifare-smart-card.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 “smart card,” which is descriptive of goods and services offered under Complainant’s MIFARE mark, and therefore of a place where web users would expect to find information about them.

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.

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 interests” 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 a domain name was 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 is apparently offering for sale goods that are unaffiliated with Complainant. These include competing products. Complainant has not authorized this use of its trademarks. 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.

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, <mifare-smart-card.com>, be transferred to the Complainant.

Lorelei Ritchie
Sole Panelist
Date: April 3, 2016