Decisión del Panel Administrativo nº D2018-2803 of WIPO Arbitration and Mediation Center, March 21, 2019 (case Xiaomi, Inc. v. Oleksandr Shyrkov)
| Resolution Date | March 21, 2019 |
| Issuing Organization | WIPO Arbitration and Mediation Center |
| Decision | Complaint denied |
| Dominio | Generic Domains |
The Complainant is Xiaomi, Inc. of Beijing, China, represented by Lane IP Limited, United Kingdom.
The Respondent is Oleksandr Shyrkov of Kiev, Ukraine, represented by Olena Shum, Ukraine.
The disputed domain name [xiaomi-mi.com] (the “Disputed Domain Name”) is registered with101domain GRS Limited (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 2018. On December 7, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 8, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 8, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 14, 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 proceedings commenced on December 21, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 10, 2019. On January 8, 2019, the Respondent requested an extension to the due date of the response in accordance with paragraph 5(b) of the Rules. The Center confirmed the extension of the Response due date from January 10, 2019 to January 14, 2019 in accordance with Paragraphs 5(b) of the Rules. The Response was filed with the Center on January 14, 2019.
The Center appointed Nick J. Gardner as the sole panelist in this matter on January 23, 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.
On January 25, 2019 the Complainant lodged a request to be allowed to introduce a supplemental filing, together with the supplemental filing itself (the “Complainant’s Supplemental Filing”). On January 31, 2019 the Panel issued a Procedural Order indicating it was minded to allow the Complainant’s Supplemental Filing to be admitted but permitting the Respondent to make submissions in this regard and to provide its own supplemental filing in response, to be considered by the Panel if it admitted the Complainant’s Supplemental Filing. On February 11, 2019 the Respondent provided submissions objecting to the Complainant’s Supplemental Filing together with a supplemental filing in response (the “Respondent’s Supplemental Filing”). For reasons discussed below the Panel will admit both supplemental filings.
The Complainant is a Chinese consumer electronics company that develops and produces smartphones, mobile applications and other electronic products. The Complainant distributes products through physical stores, and via its official website “www.mi.com” and via other online stores in many countries and regions around the world. There is no dispute that the Complainant is a leading provider of smartphones and it is accordingly not necessary to go into further detail in this regard.
The Complainant owns various trademark registrations for XIAOMI, including International Registration no. 1177611 (for the word in stylized form) registered on November 28, 2012 and designating various countries including the Ukraine, and European Union Trademark Registration no. 012672283 registered on August 4, 2014. These trademarks are referred to in this decision as the “XIAOMI Trademarks”.
The Complainant owns various trademark registrations for MI, including International Registration no. 1173649 registered on November 28, 2012, designating various countries including the Ukraine. These trademarks are referred to in this decision as the “MI Trademarks”.
The Complainant has owned the domain name [mi.com] since April 2014, prior to the Respondent’s registration of the Disputed Domain Name. It has resolved to the Complainant’s official website since at least April 22, 2014. The Complainant has also owned the domain name [xiaomi.com] since at least March 2013, and it too has resolved to the Complainant’s official website since about that date. The Complainant also owns numerous other domain names including the trademarks XIAOMI and MI, which were registered before the Disputed Domain Name.
The Respondent is an individual based in the Ukraine. The Respondent registered the Disputed Domain Name on May 5, 2014. At the time of writing this decision it does not resolve to an active website but it has previously resolved to a website (the “Respondent’s Website”) which contained material concerning the Complainant’s products. The evidence establishes that a visitor to the Respondent’s Website would have found what appeared to be a large professionally presented website, which contains extensive information about the Complainant’s product range. Each page has a banner strip across the top with links to “New”, “Videos”, “User Manuals”, “Mio T Ecosystem”, “Mi Community” and “Wholesale Request”. The Panel presumes these are links to other sections of the Respondent’s Website though it is not clear to the Panel in all cases exactly where they will go to and with what result – so for example the Panel does not know what “Wholesale Request” leads to. The evidence shows that the “Mi community” link leads to a page headed “Global Community” which contains text inviting visitors to subscribe to a forum where users can “hang out together”. It contains text such “What is Mi Community? Mi Community is our official community Forum….” and “At Xiaomi we put our fans first. It is an incredibly important part of our company’s culture to listen and chat with our fans so we built a home just for you!”.
The content of this website, including a disclaimer, which the Respondent relies upon, is discussed further below.
It is clear that the Complainant and the Respondent are known to each other and have had a range of dealings over several years. Each party has placed in evidence some of the correspondence that has passed between them but the Panel is uncertain as to whether a complete record has been provided. This correspondence (discussed in more detail below) shows, in broad terms, that the Respondent has been active commercially in promoting and developing a business in several countries, including in the Ukraine, based upon the selling of the Complainant’s smartphones and related services. He is not however an authorised dealer or distributor for the Complainant.
The Panel will deal first with the Complaint and Response before considering the Complainant’s Supplemental Statement and the Respondent’s Supplemental Statement.
The Parties have each referred to numerous previous UDRP decisions in support of their arguments. To the extent the Panel considers them relevant it will address them in its discussion below, but not repeat what the Parties have each said about them.
The main submissions advanced by the Complainant are as follows.
The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. It incorporates, in its entirety, the Complainant’s XIAOMI and MI trademarks (which are also the terms used by the Complainant in its domain names [xiaomi.com] and [mi.com] and its additional domain names using “xiaomi” and “mi”). The non-distinguishing generic Top-Level Domain (“gTLD”) “.com” is to be ignored in this regard.
The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Respondent does not own and has not used in good faith any trade marks for XIAOMI or MI and there is no evidence that the Respondent is commonly known by or referred to as XIAOMI or MI. The Respondent is not an authorised agent or distributor of the Complainant’s products.
The Disputed Domain Name has been registered and is being used in bad faith by the Respondent, in particular, because by using the domain name, the Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent’s Website, by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Website or location or of a product or service on the Respondent’s website or location. The Respondent uses or has used the Disputed Domain Name to resolve to the Respondent’s Website. This website is or was concerned with selling mobile phones including smart phones and their accessories. The website homepage featured a revolving banner showing images of the Complainant’s products and on each image the Complainant’s “MI” logo is or was prominently displayed.
Further detail about the Respondent’s Website was provided by the Complainant and this is discussed below. In particular the Complainant drew attention to a link entitled “User Manuals” which when clicked provided a list of manuals for the Complainant’s products under the wording “THIS SECTION IS SPONSORED BY NIS-STORE.COM”, which it says was in turn a link to an active website at “nis-store.com” (the “NIS store Website”)...
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