The Complainant is Lenovo (Beijing) Ltd., China, represented by Pointer Brand Protection and Research / PBP Research B.V., Netherlands.
The Respondent is DotMedia Limited, China.
The disputed domain name <lenovoeducation.com> is registered with Domainshop LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 18, 2020. On November 18, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 18, 2020, 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 20, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 10, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 11, 2020.
The Center appointed C. K. Kwong as the sole panelist in this matter on December 28, 2020. 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.
The Complainant is one of the world’s leading personal technology companies, producing personal computers and mobile Internet devices. It is the owner of numerous trademarks embodying or comprising the word “Lenovo”. These registrations include:
(a) Chinese Trademark Registration No. 3368147 for the LENOVO logo in Class 9, registered on March 14, 2004;
(b) Chinese Trademark Registration No. 3589817 for the LENOVO mark combined with the LENOVO mark in Chinese characters in Class 42, registered on July 28, 2005;
(c) Chinese Trademark Registration No. 7700092 for the LENOVO mark in Chinese characters in Class 16, registered on January 7, 2011;
(d) International Trademark Registration No. 855149 for the LENOVO mark in Classes 37 and 42, registered on March 30, 2005; and
(e) International Trademark Registration No. 1299513 for the LENOVO word mark in Classes 9, 14, 18, 35, 36, 37, 38, 41, and 42 including designation in China, registered on September 29, 2015.
The uncontradicted evidence produced by the Complainant shows that the registrations of its aforesaid LENOVO mark occurred many years before the registration of the disputed domain name <lenovoeducation.com> by the Respondent on August 22, 2020.
Other than the particulars shown in the printout of the database searches conducted by the Complainant of the WhoIs database (as provided in Annex 1 of the Complaint), the website to which the disputed domain name resolves (as provided in Annexes 4 and 5 to the Complaint) and the WhoIs database search results updated on November 20, 2020, there is no evidence in the case file concerning the background of the Respondent and its business.
At the time of filing of the Complaint, the evidence provided by the Complainant shows that the disputed domain name resolved to an online gambling site in Chinese.
The Complainant has more than 57,000 employees (including joint ventures) in more than 60 countries serving customers in more than 160 countries. In January 2020, it has been named a World’s Most Admired Companies by FORTUNE Magazine. It currently holds more than 40% of the personal computer market share in China.
The trademark LENOVO and 聯想 (LENOVO word mark in Chinese characters) are protected globally and owned by the Complainant, a company incorporated in Hong Kong, China which is the holder of Lenovo’s portfolio of intellectual property rights (Annex 2 of the Complaint).
The Complainant operates its main website under the domain name <lenovo.com> (registered on September 5, 2002).
The Respondent, DotMedia Ltd, is a company with an address in Hong Kong, China (Annex 1 of the Complaint).
Prior to the Respondent’s registration of the disputed domain name, the Complainant owned the disputed domain name and used it in connection with a website for advertising education solutions offered by the Complainant (Annex 3 of the Complaint). The Complainant inadvertently failed to renew the registration of the disputed domain name, and shortly after it lapsed, the Respondent registered the disputed domain name and began using it for a website featuring pornographic content since at least November 5, 2020 (Annex 4 of the Complaint) and gambling services since November 16, 2020 (Annex 5 of the Complaint).
The Complainant tried to contact the Respondent and requested that the website to which the disputed domain name resolves be removed or transferred to the Complainant but in vain.
The disputed domain name <lenovoeducation.com> has incorporated the LENOVO trademark in its entirety and is confusingly similar to the LENOVO trademark. The addition of the descriptive term “education” is insufficient to prevent confusion.
The use of the words “Lenovo Education” in the disputed domain name can be easily misunderstood as related to the Complainant’s business especially when education is a service provided by the Complainant.
The Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant has not authorized, licensed or otherwise permitted the Respondent to use the LENOVO trademark in the disputed domain name or for any other purpose.
The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or in a legitimate noncommercial or fair manner. There is no apparent or legitimate reason for the Respondent to select and use a domain name comprised of the LENOVO trademark for a Chinese website advertising pornographic videos or online gambling services.
The Respondent’s opportunistic registration of the disputed domain name after the Complainant’s registration for it lapsed by omission is evidence of bad faith. The Respondent is not commonly known by the disputed domain name and has no registered trademarks or trade names corresponding to the disputed domain name.
The disputed domain name was registered by the Respondent, long after the use and registration of the LENOVO trademark by the Complainant.
The LENOVO trademark was recognized as a well-known trademark by the Trademark Office of the State Administration for Industry and Commerce (now merged into the State Intellectual Property Office) in China as early as 2008 (Annex 1 of the Complaint).
The Respondent must have known of the Complainant and its LENOVO trademark when it registered the disputed domain name.
The word “Lenovo” has no meaning. It is a fancy word created by the Complainant with a high level of inherent distinctiveness, which consumers associate exclusively with the Complainant.
By registering and using the disputed domain name, the Respondent intentionally attempted to attract, for commercial gain, Internet users to the disputed domain name, by creating likelihood of confusion with the Complainant’s mark to the source sponsorship, affiliation, or endorsement of the services of the website to which the disputed domain name resolves. The Respondent has evinced an intention to harm the Complainant’s business.
The Respondent did not reply to the Complainant’s contentions.
The contact details of the Respondent and the disputed domain name were fully set out in the publicly available WhoIs search results provided in Annex 1 to the Complaint and the WhoIs search result updated on November 20, 2020 (“the Data Base Records”).
Such contact details in the Data Base Records also match with the answers to the Request for Registrar Verification provided by the Registrar to the Center on November 18, 2020.
On November 20, 2020, the Center transmitted the Notification of Complaint and Commencement of Administrative Proceeding together with the Complaint including annexes to the Respondent in accordance with the contact details above by email with copies to the Registrar. The Center also forwarded Written Notice of the Proceedings in accordance with the relevant contact details to the Respondent by post/courier.
The Panel finds that as long as the Complainant and the Center have communicated with the Respondent using the exact contact information which the Respondent has chosen to provide to the Registrar, as reflected in the Data Base Records, their respective obligations of such communications will be discharged and the Respondent will be bound accordingly.
The Panel is satisfied that the Center has discharged its responsibility under paragraph 2(a) of the Rules to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint and that the failure of the Respondent to furnish a Response is not due to any apparent omission or inadequate communication by the Center.
In rendering its decision, the Panel must adjudicate the dispute in accordance with paragraph 15(a) of the Rules which provides that, “[t]he Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 14(b) of the Rules further provides that, “[i]f a Party, in the absence of exceptional circumstances, does not comply with any provisions of, or requirement under these Rules or any requests from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate”. Paragraph 5(e) of the Rules further provides that, “[i]f a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint”.
The failure of the Respondent to respond does not automatically result in a favourable decision to the Complainant, which is specifically required under paragraph 4(a) of the Policy to establish each of the three elements as provided therein. See, The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002‑1064, and Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465.
The said three elements are considered below.
On the evidence available, the Panel has no hesitation in finding that the Complainant has rights in the trademark LENOVO by reason of its trademark registrations as recited in Section 4 above.
Furthermore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark LENOVO despite the addition of the word “education”, which is indistinctive.
The distinctive feature of the disputed domain name is “Lenovo”, being the Complainant’s trademark in its entirety. The mere addition of the word “education” does not prevent a finding of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.
It is well established practice to disregard the top-level part of the domain name “.com”, when assessing whether a domain name is identical or confusingly similar to the mark in issue. Société Anonyme des Eaux Minerales d’Evian and Societe des Eaux de Volvic v. Beroca Holdings B.V.I. Limited, WIPO Case No. D2008‑0416.
After removing the said descriptive or non-distinctive word “education” and the generic Top-Level Domain, only the word “Lenovo” is left in its entirety.
Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy is established.
The Complainant needs to establish a prima facie case showing that the Respondent has no rights or legitimate interests in respect of the disputed domain name. See, Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. Once such prima facie case is made, the burden will shift to the Respondent to prove that it has rights or legitimate interests in the disputed domain name.
In the present case, the Complainant has asserted registration and use of the registered trademark LENOVO well before the Respondent’s registration of the disputed domain name <lenovoeducation.com> on August 22, 2020. The Complainant has confirmed that it has no business relationship with the Respondent.
There is no explanation on the record as to why it was necessary for the Respondent to adopt the word “Lenovo” in the disputed domain name.
There is also no evidence before the Panel to suggest that the Respondent is commonly known as <lenovoeducation.com>.
There is also no evidence available to demonstrate any legitimate noncommercial or fair use of the disputed domain name by the Respondent.
The Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant’s LENOVO mark is well-known worldwide and in Hong Kong, China, where the Respondent is located. Further, the Complainant was previously the registrant of the disputed domain name, which lapsed due to an oversight in renewal. The opportunistic registration of the disputed domain name by the Respondent, which took place many years after the extensive use and registration of the LENOVO mark by the Complainant who has offered educational services, points to the conclusion that the Respondent must be aware of the existence of the Complainant and its trademark LENOVO at the time of the registration and use of the disputed domain name.
Further, the word “Lenovo” is an invented word and is very distinctive. There is no reason for the Respondent to choose and include the word “Lenovo” in its entirety as part of the disputed domain name. This further demonstrates the Respondent’s knowledge of the Complainant and its mark “Lenovo” at the time of registration and use of the disputed domain name.
The Complainant has clearly stated that it has not authorized the Respondent to use the “Lenovo” mark or use it to register any domain name. The pornographic and gambling service materials on the website to which the disputed domain name resolves are clearly commercial materials, which shows that the Respondent is not using the disputed domain name for a purpose other than for commercial gain and to disrupt the business of the Complainant.
It is the Complainant’s contention that the use of the website to which the disputed domain name resolves will result in the public being misled into believing that the products and/or services offered there were associated or otherwise connected with the Complainant. The Respondent has intentionally attempted to attract, for commercial gain, Internet users to go to the said website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or products on the said website. The Panel finds that paragraph 4(b)(iv) of the Policy has been invoked.
The Panel finds that the disputed domain name has been registered and is 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 disputed domain name <lenovoeducation.com> be transferred to the Complainant.
C. K. Kwong
Date: January 11, 2021
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