WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
HDMI Licensing Administrator Inc. v. Cheng Jing Bin
Case No. D2018-1020
1. The Parties
The Complainant is HDMI Licensing Administrator Inc. of San Jose, California, United States of America (“United States”), represented by C.V. React U.A., Netherlands.
The Respondent is Cheng Jing Bin of Dongguan, Guangdong, China.
2. The Domain Name and Registrar
The disputed domain name <china-hdmi.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 May 9, 2018. On May 9, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 10, 2018, 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 May 16, 2018, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant submitted a request that English be the language of the proceeding on May 17, 2018. The Respondent submitted a request that Chinese be the language of the proceeding on May 24, 2018.
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 proceeding commenced on May 23, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 12, 2018. The Respondent sent email communications to the Center on May 16 and 24, 2018 and did not submit any formal response. The Center notified the Parties of the Commencement of Panel Appointment Process on June 13, 2018.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on June 20, 2018. 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
A. Complainant
The Complainant is a company incorporated in the United States and is the owner of numerous registrations in jurisdictions around the world for the trade mark HDMI (the “Trade Mark”), including European Union registration number 002790970, with a registration date of October 22, 2004.
The Complainant has been using the Trade Mark internationally for many years in respect of its high quality connectors and cables.
B. Respondent
The Respondent is apparently an individual resident in China.
C. The Disputed Domain Name
The disputed domain name was registered on October 17, 2011.
D. The Website at the Disputed Domain Name
The disputed domain name has previously used in respect of the English and Chinese language website of Dongguan Suntes Electronics Technology Co. Ltd. - a company incorporated in China and formerly one of the Complainant’s non-exclusive licensed manufacturers of high quality connectors and cables under the Trade Mark (the “Website”) – and a company listed in the WhoIs results for the disputed domain name. At the time of the filing of the Complaint, and as at the date of this Decision, the disputed domain name is not being used.
5. Parties’ Contentions
A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to the Trade Mark, the Respondent has no rights or legitimate interests in respect of the disputed domain name and the disputed domain name has been registered and is being used in bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Language of the Proceeding
The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement.
Paragraph 11(a) of the Rules allows the panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding, in order to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding.
The Complainant has requested that the language of the proceeding be English, for the following reasons:
(i) the licence agreement entered into between the Complainant and Dongguan Suntes Electronics Technology Co. Ltd. (the “Licence Agreement”) is in English;
(ii) the Complainant and Dongguan Suntes Electronics Technology Co. Ltd. have previously corresponded in English; and
(iii) the Website was an English and Chinese language website.
The Respondent has requested that the language of the proceeding be English, for the following reasons:
(i) the disputed domain name was registered in China; and
(ii) the disputed domain name is in full compliance with the laws of China.
Having received notice of the proceeding in both Chinese and English, the Respondent chose not to file a substantive response.
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 finds there is sufficient evidence to suggest the likely possibility that the Respondent is conversant in English. The Panel notes that the Respondent has not indicated that the Respondent does not understand English.
The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.
In all the circumstances, including in particular the Respondent’s failure to submit any response, and the Respondent’s failure to make any cogent submissions on the language of the proceeding, the Panel therefore finds it is not foreseeable that the Respondent would be prejudiced, should English be adopted as the language of the proceeding. The Panel also notes that all of the communications from the Center in this proceeding have been sent to the Parties in both English and Chinese.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.
6.2. Substantive Elements of the Policy
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration.
The disputed domain name incorporates the entirety of the Trade Mark (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7) together with a hyphen and the word “china”.
Where a relevant trade mark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element (see WIPO Overview 3.0, section 1.8).
The Panel therefore finds that the disputed domain name is confusingly similar to the Trade Mark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to the respondent 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 an individual, business, or other organization) has been commonly known by the disputed domain name even if the respondent has acquired no trade mark 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 trade mark or service mark at issue.
The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption.
The Respondent has failed to show that the Respondent has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name has been used in connection with a bona fide offering of goods or services. To the contrary, the Complainant has placed before the Panel undisputed evidence of the Licence Agreement between the Complainant and the operator of the Website, Dongguan Suntes Electronics Technology Co. Ltd., the provisions of which make it clear that Dongguan Suntes Electronics Technology Co. Ltd. is not entitled to register and continue using the disputed domain name comprising the Trade Mark. The Complainant has also submitted evidence of the attempts by the Complainant and its representatives, over a period of several years, to recover the disputed domain name from Dongguan Suntes Electronics Technology Co. Ltd. Although the disputed domain name is not registered in the name of Dongguan Suntes Electronics Technology Co. Ltd., this company is referred to as the “Admin Contact” and “Technical Contact” in the WhoIs search results for the disputed domain name.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name; and there has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that the Respondent has failed to produce any evidence to rebut the Complainant’s prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The evidence on record indicates that the Respondent sought to take advantage of the Trade Mark when registering the disputed domain name.
As a former non-exclusive licensed manufacturer of high quality connectors and cables under the Trade Mark, the operator of the Website, Dongguan Suntes Electronics Technology Co. Ltd., does not have the right to continue to own and use the disputed domain name. The Licence Agreement entered into between the Complainant and Dongguan Suntes Electronics Technology Co. Ltd. expressly provided that Dongguan Suntes Electronics Technology Co. Ltd. must not incorporate the Trade Mark as part of any domain name owned or controlled by Dongguan Suntes Electronics Technology Co. Ltd. The Panel finds that the evidence on record clearly demonstrates that the disputed domain name is controlled (and was indeed previously used) by Dongguan Suntes Electronics Technology Co. Ltd.
In such circumstances, the continued registration and use of the disputed domain name, after the termination of the Licence Agreement, amounts to clear evidence of bad faith.
For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith.
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 <china-hdmi.com> be transferred to the Complainant.
Sebastian M.W. Hughes
Sole Panelist
Dated: July 2, 2018
