WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Acer Incorporated v. 宣孙虎（Xuan Sun Hu）

Case No. D2019-3024

1. The Parties

The Complainant is Acer Incorporated, Taiwan Province of China, represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson, United States of America (“United States”).

The Respondent is 宣孙虎（Xuan Sun Hu）, China.

2. The Domain Name and Registrar

The disputed domain name <acer-us.com> is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on December 6, 2019. On December 9, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 10, 2019, 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. In response to a request for amendment by the Center, the Complainant filed an amended Complaint in English on December 16, 2019.

On December 13, 2019, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on December 16, 2019. The Respondent did not comment on the language of the proceeding.

The Center verified that the Complaint together with the amended 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 in English and Chinese of the Complaint, and the proceedings commenced on December 23, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 12, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 13, 2020.

The Center appointed Jacob (Changjie) Chen as the sole panelist in this matter on January 27, 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.

4. Factual Background

The Complainant Acer Incorporated, is a global manufacturer and seller of computers and electronic consumer products. The Complainant claims that it has extensively used its ACER trademark to promote its business and has sold billions of dollars of ACER branded products over the world.

The Complainant has rights upon numerous worldwide registrations of ACER, including No. 1475746 the United States trademark, registered on February 9, 1988; No. 3290412 the United States trademark, registered on September 11, 2007 and No. 9207178 Chinese trademark, registered on March 21, 2012.

The Complainant owns domain name incorporating its ACER trademark, <acer.com>, registered on September 7,1994. The Complainant has been using this domain name to advertise its business.

According to the information disclosed by the Registrar, the Respondent is 宣孙虎（Xuan Sun Hu）, located in China.

The disputed domain name was registered on September 7, 2016. According to the evidence provided by the Complainant, the disputed domain name resolves to a website purportedly offering links to download the drivers and manuals for the Complainant’s products and links to websites containing the information and products of the Complainant’s competitors.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to its ACER trademark. The additional term “us” is insufficient to differentiate the similarity between the disputed domain name and the Complainant’s ACER trademark.

The Complainant further contends that the Respondent is not affiliated with the Complainant. The Complainant has not licensed the Respondent to use its ACER trademark and register any domain name incorporating its ACER trademark. The Complainant claims that to its best knowledge, the Respondent does not own any trademark or service mark registration of the disputed domain name and is not commonly known by the disputed domain name. Thus, the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant finally contends that the disputed domain name was registered and is being used in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1 Procedural Issues

A. Language of the Proceeding

The Panel must first address the language of the proceeding. Paragraph 11 of the Rules provides that unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the panel to determine otherwise, having regarded to the circumstances of the administrative proceeding. The Panel may request translation of either party’s submissions in whole or in part into the language of the administrative proceeding.

In this case, the Registrar has confirmed to the Center that the language of the Registration Agreement is Chinese. However, the Complainant has requested that English be adopted as the language of the proceeding. The Respondent did not comment on the language of the proceeding. The Center proceeded to issue its case-related communication to the Parties in both English and Chinese. The Center decided to accept the Complaint as filed in English, accept a Response in either English or Chinese, and appoint a Panel familiar with both languages.

Having considered the circumstances, the Panel finds that English shall be the language of this proceeding. The reasons are set out below:

(a) Requiring the Complainant to submit, the Complaint in Chinese would lead to delay the proceeding and increase unreasonable burden of the Complainant;

(b) English is not the native language of either Party;

(c) The Respondent’s choice of Latin characters for the disputed domain name and the associated website content indicates some fluency with the English language.

(d) The Center notified the Parties in English and Chinese of the Complainant’s request for English to be the language of the proceeding, but the Respondent did not protest against this request;

(e) The Respondent has chosen not to reply to the Complainant’s contentions. The Complaint has been submitted in English. No foreseeable procedural benefit may be served by requiring Chinese to be used. On the other hand, the proceeding may proceed expeditiously in English.

6.2 Substantive Issues

A. Identical or Confusingly Similar

The Complainant has rights upon numerous worldwide registrations of ACER trademark, which predate the registration date of the disputed domain name (September 7, 2016). The Complainant has successfully established its rights upon the trademark.

It is well established that the generic Top-Level Domain (“gTLD”) suffix “.com” as a standard registration requirement is disregarded in the assessment of the confusing similarity between the disputed domain name and the Complainant’s trademark.

The disputed domain name <acer-us.com> incorporates the Complainant’s ACER trademark in its entirety. UDRP jurisprudence has established that incorporation of a complainant’s trademark in its entirety into a domain name is sufficient to establish that the domain name is identical or confusingly similar to the Complainant’s trademark. The addition of the hyphen “-” and the term “us” after the Complainant’s ACER trademark does not prevent a finding of confusing similarity between the Complainant’s ACER trademark and the disputed domain name. See BHP Billiton Innovation Pty Ltd v. Oloyi, WIPO Case No. D2017-0284.

Thus, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s ACER trademark.

B. Rights or Legitimate Interests

The Panel is satisfied that the Complainant has made out a prima facie case that the Respondent does not have rights or legitimate interests in respect of the disputed domain name. The burden of production is hence shifted to the Respondent to rebut the Complainant’s contentions. In this case, the Respondent’s failure to submit a response to rebut the Complainant’s prima facie case is deemed to have satisfied paragraph 4(a)(ii) of the Policy according to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1. See Construction Skills Certification Scheme Limited v. Mara Figueira, WIPO Case No. D2010-0947.

The Panel notes that the nature of the disputed domain name carries a risk of implied affiliation with the Complainant. See WIPO Overview 3.0, section 2.5.1. Further, according to the Complainant’s evidence, the disputed domain name resolves to a website displaying the Complainant’s ACER trademark and purportedly offering links to download the drivers and manuals for the Complainant’s products. Moreover, the website at the disputed domain name also offers links to websites displaying the information and products of the Complainant’s competitors. The Panel views that the Respondent’s use of the disputed domain name cannot be considered as legitimate noncommercial or fair use of the disputed domain name or using the disputed domain name in connection with a bona fide offering of goods or services.

Therefore, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The Panel notes that the disputed domain name was registered on September 7, 2016, far later than the registration date of the Complainant’s ACER trademark. According to the Complainant’s evidence, the Panel observes that the Complainant owns registered trademark rights upon ACER in China (No. 9207178 Chinese trademark, registered on March 21, 2012) where the Respondent residents in. Moreover, the disputed domain name resolves to a website displaying the Complainant’s ACER trademark. Thus, the Panel finds that the Respondent must have had actual knowledge of the Complainant and its ACER trademark and / or services at the time of registering the disputed domain name.

Furthermore, the website at the disputed domain name purportedly offers links to download the drivers and manuals for the Complainant’s products and links to display the information and products of the Complainant’s competitors. Thus, the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of its websites or location or of products and services and has intention to disrupt the business of the Complainant. See Swarovski Aktiengesellschaft v. WhoisGuard Protected / Peter D. Person, WIPO Case No. D2014-1447; Travellers Exchange Corporation Limited v. Travelex Forex Money Changer, WIPO Case No. D2011-1364.

For the reasons above, the Panel concludes that the disputed domain name was registered and is being used in bad faith.

7. Decision

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 <acer-us.com> be transferred to the Complainant.

Jacob (Changjie) Chen
Sole Panelist
Date: February 12, 2020