WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Xiaomi Inc. v. Vitor Ferreira

Case No. D2019-2516

1. The Parties

The Complainant is Xiaomi Inc., China, represented by Inventa International, SA, Portugal.

The Respondent is Vitor Ferreira, Portugal.

2. The Domain Name and Registrar

The disputed domain name <xiaomiportugal.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 15, 2019. On October 15, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 16, 2019, 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.

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 proceedings commenced on November 6, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 26, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 27, 2019.

The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on December 3, 2019. 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 Chinese manufacturer of smartphones, mobile phone applications, and mobile phone accessories.

The Complainant is the owner of the international registration No. 1177611 for the word and device mark XIAOMI, registered on November 28, 2012, in classes 9, 35, 38, and 42.

The disputed domain name was registered on January 9, 2015, and presently redirects Internet users to an online shop available at <mistore.pt>, written in Portuguese and targeting the Portuguese market, displaying the Complainant’s trademark and products and describing itself as “your Xiaomi store in Portugal” (“A sua loja Xiaomi em Portugal”).

5. Parties’ Contentions

A. Complainant

The Complainant claims to be a multinational electronics company based in China that develops and produces smartphones, mobile phone applications, and accessories, under the trademarks XIAOMI and MI.

According to the Complainant, the disputed domain name incorporates entirely its well-known XIAOMI trademark with the addition of the term Portugal, not being such addition sufficient to exclude a confusing similarity between them.

Regarding the absence of the Respondent’s rights or legitimate interests, the Complainant argues that:

i. the Respondent has not received any permission or authorization to use the Complainant’s trademark or to register a domain name that incorporates it;

ii. the Respondent does not have any trademarks relating to the disputed domain name nor is it commonly known by the disputed domain name;

iii. the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, rather using it to divert the Complainant’s consumers given that the website to which Internet users are redirected reproduces the Complainant`s XIAMOI and MI trademarks as well as the look and feel of the Complainant’s stores, selling the Complainant’s products and therefore suggesting an affiliation with the Complainant that does not exist, enhanced by the use of expressions such as “your XIAOMI store in Portugal” (“A sua loja Xiaomi em Portugal”).

Also according to the Complainant, the use of the disputed domain name in connection with an online shop selling various models of the Complainant’s products, seeking to impersonate the official websites of the Complainant (Annexes 14, 15, and 16 to the Complaint), clearly characterizes an attempt to pass off as an official online of the Complainant’s products in Portugal, enhanced by the use of phrases such as “your Xiaomi store in Portugal”, being it evident that the Respondent knew of the Complainant’s trademark when registering the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:

i. the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

ii. the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

iii. the disputed domain name has been registered and is being used in bad faith.

The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain name transferred to it, according to paragraph 4(i) of the Policy.

A. Identical or Confusingly Similar

The Complainant has established rights over the XIAOMI trademark.

The disputed domain name incorporates the Complainant’s trademark with the addition of the term “portugal”. This addition does not prevent the disputed domain name from being confusingly similar with the XIAOMI trademark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.

For the reasons above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that may indicate the Respondent’s rights or legitimate interests in the disputed domain name. These circumstances are:

i. before any notice 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 individuals, businesses, or other organizations) has been commonly known by the disputed domain name, in spite of not having acquired trademark 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 trademark or service mark at issue.

The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name. This entitles the Panel to draw any inferences from such default as it considers appropriate, pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainant to make at least a prima facie case against the Respondent under the second UDRP element.

In that sense, and according to the evidence submitted, the Complainant has made a prime facie case against the Respondent which has not been commonly known by the disputed domain name and is neither an authorized reseller of the Complainant nor has it been licensed or otherwise permitted to use any of the Complainant’s trademarks or to register a domain name incorporating its XIAOMI trademark.

Also according to the evidence submitted by the Complainant, the use made of the disputed domain name in connection with an online shop offering the Complainant’s products, offering the Complainant’s XIAOMI products, together with the indication that it would be the Complainant’s Portuguese web shop, clearly suggest at least an affiliation with the Complainant which in fact does not exist. In addition to that the absence of a disclaimer on the website disclosing the lack of a relationship between the parties cannot be considered a bona fide use of the disputed domain name.

Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.

C. Registered and Used in Bad Faith

The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in respect of a disputed domain name, where a respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.

In this case, both the registration and use of the disputed domain names in bad faith can be found pursuant to Policy paragraph 4(b)(iv) in view of the reproduction of the XIAOMI trademark, as well as the online shop to which Internet users are directed when accessing the disputed domain name, together with the statement that it would be the XIAOMI store in Portugal, imitating the Complainant’s official stores appearance creates a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement thereof.

In light of the above, the Panel is of the opinion that due to the Complainant’s reputation and the use the Complainant’s XIAOMI trademark both in the disputed domain name and at the website at the disputed domain name, the Respondent was aware of the Complainant’s trademark at the time of registration of the disputed domain name, indicating the Respondent’s bad faith registration of the disputed domain name.

For the reasons above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain name.

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 <xiaomiportugal.com> be transferred to the Complainant.

Wilson Pinheiro Jabur
Sole Panelist
Date: December 17, 2019