DECISION

Huawei Technologies Co., Ltd. v. Kleber Alcatrao

Claim Number: FA1908001859395

PARTIES

Complainant is Huawei Technologies Co., Ltd. (“Complainant”), represented by Zak Muscovitch of The Muscovitch Law Firm, Canada.  Respondent is Kleber Alcatrao (“Respondent”), Delaware, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <huawei.global> (“Domain Name”), registered with NameCheap, Inc..

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

Nicholas J.T. Smith as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on August 27, 2019; the Forum received payment on August 27, 2019.

On August 30, 2019, NameCheap, Inc. confirmed by e-mail to the Forum that the <huawei.global> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name.  NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On September 3, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 23, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@huawei.global.  Also on September 3, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.

On September 25, 2019, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

RELIEF SOUGHT

Complainant requests that the Domain Name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

  1. Complainant

Complainant is a Chinese-based corporation that has become the largest telecommunications equipment manufacturer in the world.  Complainant has rights in the HUAWEI mark through its trademark registrations around the world, including with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,750,650, registered Aug. 12, 2003).  Respondent’s <huawei.global> domain name is identical or confusingly similar to Complainant’s HUAWEI mark as it fully incorporates the mark along with a “.global” generic top-level domain (“gTLD”).

Respondent has no rights or legitimate interests in the <huawei.global> domain name.  Respondent is not authorized or licensed to use Complainant’s HUAWEI mark and is not commonly known by the Domain Name.  Additionally, Respondent fails to use the Domain Name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.  Rather, Respondent uses the Domain Name to redirect users to its own website that tricks users into believing it is Complainant or affiliated with Complainant.

Respondent registered and uses the <huawei.global> domain name in bad faith.  Respondent attempts to pass off as Complainant through the Domain Name.  Finally, Respondent had actual knowledge of Complainant’s rights in the HUAWEI mark prior to registering the Domain Name.

  1. Respondent

Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant holds trademark rights for the HUAWEI mark.  The Domain Name is confusingly similar to Complainant’s HUAWEI mark.  Complainant has established that Respondent lacks rights or legitimate interests in the use of the Domain Name and that Respondent registered and has used the Domain Name in bad faith.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

  • the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
  • Respondent has no rights or legitimate interests in respect of the domain name; and
  • the domain name has been registered and is being used in bad faith.

In view of Respondent’s failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at   4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).

Identical and/or Confusingly Similar

Complainant has rights in the HUAWEI mark under Policy   4(a)(i) through its registration of the mark with the USPTO (e.g., Reg. No. 2,750,650, registered Aug. 12, 2003).  Registration of a mark with the USPTO is sufficient to establish rights in that mark.  See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).

The Panel finds that the <huawei.global> Domain Name is identical to the HUAWEI mark as it fully incorporates the HUAWEI mark and adds the “.global” gTLD.  The addition of a gTLD to a wholly incorporated trademark does not distinguish a disputed domain name from a mark.  See Roche Therapeutics Inc. v. Williams Shorell, FA 1684961 (Forum Aug. 30, 2016) (“Complainant asserts Respondent’s <boniva.top> domain name is identical to the BONIVA mark.  The addition of a generic top level domain to a mark does not differentiate the domain from said mark under Policy   4(a)(i).”), see also Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy   4(a)(i) analysis because domain name syntax requires TLDs.”).

The Panel finds Complainant has satisfied Policy   4(a)(i).

Rights or Legitimate Interests

Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name.  In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy   4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).  The Panel holds that Complainant has made out a prima facie case.

Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the HUAWEI mark.  Respondent has no relationship, affiliation, connection, endorsement or association with Complainant.  WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged.  See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy   4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy   4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name).  The WHOIS lists “Kleber Alcatrao” as registrant of record.  Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy   4(c)(ii).

The Domain Name resolves to a page titled “Huawei Global” that is designed to give the impression that the “Huawei Global” entity is connected to or an affiliate of the Complainant.  However upon clicking on any links on the Respondent’s Website, the visitor is redirected to a website of a third party called “ZionTechGroup”, entirely unconnected to Complainant, offering goods and services of Complainant’s competitors.  Use of a disputed domain name to pass off as a complainant in order to compete with a complainant is generally not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy    4(c)(i) or (iii).  See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy   4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy   4(c)(iii).”).  See also Dream Horse Classifieds v. Mosley, FA 381256 (Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy   4(a)(ii)).

The Panel finds Complainant has satisfied Policy   4(a)(ii).

Registration and Use in Bad Faith

The Panel finds that, at the time Respondent registered the Domain Name, February 14, 2017, Respondent had actual knowledge of Complainant’s HUAWEI mark.  The Respondent uses the Domain Name to pass itself off as Complainant for financial gain (by offering products in direct competition with Complainant and making direct reference to Complainant on its website) or to disrupt Complainant’s business.  In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy   4(a)(iii).

The Panel finds that Respondent registered and uses the Domain Name in bad faith.  Respondent uses the Domain Name as part of a broad scheme to pass itself off as being connected or affiliated with Complainant in order to compete with and disrupt Complainant’s business.  Such behavior is indicative of bad faith registration and use per Policy    4(b) (iii) and (iv).  See DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”);

The Panel finds Complainant has satisfied Policy   4(a)(iii).

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <huawei.global> domain name be TRANSFERRED from Respondent to Complainant.

Nicholas J.T. Smith, Panelist

Dated:  September 27, 2019