Decision for dispute CAC-UDRP-107763

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

In these proceedings, the Complainants rely on the following trademarks, in chronological order:

- QCY (word), Chinese Trademark No. 7556908, filed on February 14, 2011, in the name of one of the Complainants, duly renewed;

- QCY (stylized), Chinese Trademark No. 12304723, filed on August 28, 2014, in the name of one of the Complainants, duly renewed;

- QCY (stylized), EUTM No. 015280159, filed on March 29, 2016, in the name of one of the Complainants;

- QCY (stylized), EUTM No. 015609001, filed on July 5, 2016, in the name of one of the Complainants;

- QCY (logo), EUTM No. 018328177, filed on February 18, 2021, in the name of one of the Complainants; and,

- QCY (logo), International Registration No. 1 823 361, filed on September 13, 2024 (i.e. after the Disputed domain name had been filed), in the name of one of the Complainants.

None of the above trademark registrations cover the territory of Bangladesh, where the Respondent is apparently located. However, according to the Complainants, not refuted by the Respondent, their marks have a longstanding use, reputation and awards in Bangladesh.

It is worth noting that, the Complainants own a few hundred other trademarks in various countries, which have not been cited in these proceedings.

According to information provided by the Complainants and not refuted by the Respondent, the Complainants are part of the same group of companies, a Chinese-based international group originally founded in 2009 that nowadays offers quality audio solutions worldwide. More precisely, Complainant 1 (Hong Kong Hele Electronics Limited) seems to be a subsidiary of Complainant 2 (Dongguan Hele Electronics Co., Ltd.). Further, on their official website, it is claimed that as of 2021 the Complainants have been among the three largest TWS headphone shippers in the world, employing thousands of people in many countries.

The Complainants own a large portfolio of trademarks, mainly including the wording "QCY", among which a Chinese national registration dating back to 2011. It also owns quite a few related domain names, notably its official <qcy.com>.

The Disputed domain name <QCYBD.COM> was registered on September 14, 2023 by the Respondent, as confirmed by the Registrar.

COMPLAINANT

The Complainants contend that the Disputed domain name is confusingly similar to their QCY trademark, as it fully incorporates this trademark. This last element is sufficient to support the finding that the Disputed domain name is confusingly similar to the Complainants’ trademark. Indeed, the mere addition of the geographical term “BD” (country code for Bangladesh, where the Respondent is apparently located) to the Complainants’ trademark does not change the overall impression of a most likely connection with the trademark QCY of the Complainants. As to the gTLD “.com”, the Complainants suggest that it should be disregarded, as per the usual practice. 

The Complainants maintain that the Respondent lacks rights or legitimate interests in the Disputed domain name because the Complainants are not affiliated with nor have they ever authorised the Respondent to register their trademark as a domain name, the Complainants have never licensed their trademark to the Respondent and the Respondent is not known by the Disputed domain name.

According to the Complainants, given the distinctiveness and reputation of their QCY trademark, the Respondent registered the Disputed domain name with full knowledge of the Complainants’ trademark in an intentionally designed way with the aim to create a likelihood of confusion with the Complainants’ trademarks and domain name, and this is evidence of the fact that the Disputed domain name was registered in bad faith.

With respect to use in bad faith, the Complainants point out that the Respondent has in fact reproduced its official website in a mirror website of its own, which is naturally an activity being considered by panels as a clear indication of bad faith. It is, indeed, impossible to conceive any actual or contemplated use that would not be illegitimate.

For all these reasons, the Complainants conclude that the Respondent registered and used the Disputed domain name in bad faith.

RESPONDENT

No administratively compliant Response has been filed.

Before launching itself into the classic threefold test of Paragraph 4(a) of the Policy, the Panel will briefly examine the implicit consolidation request of the two Complainants.

According to WIPO Jurisprudential Review 3.0 (Para. 1.4.1) a trademark owner’s affiliate such as a subsidiary of a parent or of a holding company, or an exclusive trademark licensee, is considered to have rights in a trademark under the UDRP for purposes of standing to file a complaint.

In the case at issue, both Complainants, Hong Kong Hele Electronics Limited and Dongguan Hele Electronics Co., Ltd., appear to belong to the same group of companies, under the latter. This is an allegation in the amended complaint, which has not been refuted by the Respondent. It is, thus, accepted by the Panel.

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The Panel will now proceed with the threefold test of paragraph 4(a) of the Policy.

Firstly, the Complainants have, to the satisfaction of the Panel, shown that the Disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights (within the meaning of paragraph 4(a)(i)of the Policy).

The Disputed domain name consists of the Complainants’ whole registered trademark (“QCY”), accompanied by the letters “BD”. Indeed, the mere addition of the said geographical term (country code for Bangladesh) to the Disputed domain name not only is it not sufficient to escape the finding that the Disputed domain name is confusingly similar to the trademark of the Complainants, but it actually reinforces the confusion, as these letters indicate the place where the Respondent’s business is conducted, giving the wrong impression that this is the official representation of the Complainant in the relevant country.

As far as the gTLD ".com" is concerned, it is generally recognized that top level domains do not have any bearing in the assessment of identity or confusing similarity, according to paragraph 4(a)(i) of the Policy.

Hence, the Panel is satisfied that the first requirement under the Policy is met.

The Complainants have, 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).

Since proving a negative fact is almost impossible, panelists in UDRP proceedings have generally agreed that it is sufficient for the complainant to establish a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name to shift the burden of proof to the respondent.

In the case at issue, the Complainants argued that they had never authorised the Respondent to register the QCY trademark in a domain name, and that they had never licensed their trademark to the Respondent.

Furthermore, the Disputed domain name resolves to a mirror website of the Complainant’s official website that the Respondent has created, without the Complainant’s approval. Therefore, the Respondent cannot demonstrate any use of the Disputed domain name in connection with a bona fide offering of goods and services or a legitimate non-commercial or fair use of the Disputed domain name.

Finally, there is no other evidence in the case file that could demonstrate that the Respondent has been commonly known by the Disputed domain name.

In view of the foregoing, the Panel is satisfied that the Complainants have established a prima facie case that the Respondent lacks rights and legitimate interests in the Disputed domain name. In order to rebut the Complainants’ arguments, the Respondent had the possibility to make his own defense. However, the Respondent has chosen not to file a Response.

Therefore the Panel is satisfied that also the second requirement under the Policy is met.

The Complainants have, 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).

As far as registration in bad faith is concerned, given the reputation of the Complainants’ trademark, also in the country where the Respondent is located, and the fact that the Disputed domain name fully incorporates this trademark (accompanied by the country code name of the Respondent’s country of business), it is quite evident that, at the time of the registration of the Disputed domain name, the Respondent was well aware of the Complainant’s trademark. The registration as a domain name of a third party's well-known trademark with full knowledge of the fact that the rights over this trademark belong to a third party amounts to registration in bad faith.

 With respect to use in bad faith, the Disputed domain name resolves to a mirror website of the Complainant’s official website that the Respondent has created and through which he has been conducting business of Complainant’s products, without the Complainant’s approval. Such misleading and fraudulent use of a domain name shows bad faith under some circumstances, such as when the complainant’s trademark has such a strong reputation that it is widely known, and when it is impossible to conceive any plausible actual or contemplated active use of the domain name by the respondent that would not be illegitimate. This fact is to be combined with the full incorporation of the complainant’s reputable trademark in the disputed domain name. These are the circumstances that apply in the case at issue, to a fair extent. The trademark QCY enjoys a wide and extensive reputation in the TWS headphones industry and for relevant goods. Therefore, it is impossible to conceive any plausible active use of the Disputed domain name that would be legitimate. This conclusion is further reinforced by the clearly intentional use of the geographical term “BD” by the Respondent, as this term suggests to local consumers that the Respondent is the Complainant’s national commercial representative.

Therefore the Panel finds it clear that the Disputed domain name was used in bad faith.

For all circumstances mentioned above, the Panel is satisfied that also the third requirement under the Policy is satisfied.

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 incorporates the Complainants’ trademark, accompanied by a geographical abbreviation/term that reflects the Respondent’s country of business. The Disputed domain name is therefore confusingly similar to the Complainants’ trademark.

The Respondent was not authorised to include the Complainants’ trademark in the Disputed domain name, and the Complainants never licensed their trademark to the Respondent. The Respondent is not using the Disputed domain name in connection with a bona fide offering of goods or services, or a legitimate non-commercial or fair use.

The Respondent registered the Disputed domain name with full knowledge of the Complainants’ well-known trademark. His fraudulent use of the Disputed domain name for a mirror website is in bad faith, as there is no conceivable use of the Disputed domain name that could amount to a legitimate use.