Decision for dispute CAC-UDRP-107549

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.

The Complainant holds various trademark registrations for “MI” and “XIAOMI”, including the international trademark registrations:

• 1173649 “MI” (with design), registered on 28 November 2012 for numerous goods and services in classes 9, 35, 38, and 42; and
• 1516163 for “MI” (with design), registered on 17 October 2019 for numerous goods in classes 7, 8, 9, 11, 12, 14, 16, 18, 21, 24, and 28.

The Complainant has operated the domain <mi.com> as its primary online platform since 2014.

The disputed domain name <partners-mi.com> was registered on 4 December 2024, so that the Complainant’s trademarks mentioned above predate the registration of the disputed domain name.

The Complainant is a Chinese multinational electronics company which was founded in April 2010 and is listed on the Hong Kong Stock Exchange since July 2018. The Complainant claims to be well known for its smartphones (reflected in its #3 global market share ranking) and smart hardware products. The Complainant has made significant investments to advertise and promote its “MI” and “XIAOMI” trademarks worldwide in media and the internet over the years, and claims that these brands are therefore well recognized and respected worldwide.

According to the Complaint, the Respondent is not sponsored by or affiliated with the Complainant in any way. The Complainant has not licensed, authorized, or permitted the Respondent to use the Complainant’s trademarks in any manner, particularly not in the disputed domain name.

The Respondent is located in Hong Kong. He has used the disputed domain name to resolve to a website prominently displaying the Complainant’s official “MI” logo and purporting to offer “XIAOMI” branded products for sale. The Respondent’s website also featured the orange and white color scheme which, according to the Complaint, is widely associated with the Complainant. The website did not include any statement disclosing the Respondent´s relationship with the Complainant.

The Complainant contends that the requirements of the Policy have been met and that the disputed domain name should be transferred to it.
No administratively compliant Response has been filed.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

The disputed domain name is confusingly similar to the Complainant’s trademark “MI”. Adding the descriptive word “partners-” even increases the overall impression that the disputed domain name is connected to the Complainant’s trademark “MI”.

The Panel also finds that the Complainant successfully submitted prima facie evidence that the Respondent has made no use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services, nor is the Respondent making a legitimate non-commercial or fair use of the disputed domain name, nor is the Respondent commonly known under the disputed domain name. This prima facie evidence was not challenged by the Respondent.

It is not clear whether or not the products being offered for sale on the Respondent’s website are genuine “XIAOMI” products, i.e., whether the Respondent is a legitimate reseller or distributor of the Complainant’s own products. It is possible that resellers, distributors, or service providers use domain names like the disputed domain name for a bona fide offering of goods and services (within the meaning of paragraph 4(c)(i) of the Policy) and thus have a legitimate interest in such domain name. However, under the well-established “Oki Data test” (see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, <okidataparts.com>; see section 2.8 of the WIPO Jurisprudential Overview 3.0 for more details), the following cumulative requirements must be met in such cases:

(i) the Respondent must actually be offering the goods or services at issue;

(ii) the Respondent must use the site to sell only the trademarked goods or services;

(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and

(iv) the Respondent must not try to “corner the market” in domain names that reflect the trademark.

The Respondent does not meet requirement (iii) and therefore fails the Oki Data test.

Given the Respondent’s prominent use of the Complainant’s “MI“ name and logo on the website it is evident that the Respondent had the Complainant's trademark in mind when registering the disputed domain name. In the absence of a Response, the Panel infers that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, internet users to his website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of this website and the Respondent’s services offered on it (within the meaning of paragraph 4(b)(iv) of the Policy).