Xiaomi, Inc. v Natalia Lisnyuk, One-Plus-Dubai

WIPO Case No. D2025-0017

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Xiaomi, Inc. v. Natalia Lisnyuk, One-Plus-Dubai

Case No. D2025-0017

1. The Parties

The Complainant is Xiaomi, Inc., China, represented by King & Wood Mallesons, China.

The Respondent is Natalia Lisnyuk, One-Plus-Dubai, United Arab Emirates.

2. The Domain Name and Registrar

The disputed domain name <xiaomi-dubai.com> is registered with Hosting Concepts B.V. d/b/a Registrar.eu.

(the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 3, 2025. On January 3, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 3, 2025, 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 (Miae Trading CO. L.L.C) and contact information in the Complaint. The Center sent an email communication to the Complainant on January 7, 2025, 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 amendment to the Complaint on January 8, 2025.

The Center verified that the Complaint together with the amendment to 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 January 9, 2025. In accordance with the Rules,
paragraph 5, the due date for Response was January 29, 2025. An informal Response was filed with the
Center on January 9, 2025.

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The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on February 5, 2025.
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 is a global consumer electronics manufacturer based in China. It is the proprietor of numerous registrations for its XIAOMI mark in countries around the world, including the following:

- United Arab Emirates Trademark Registration No. 296939 for XIAOMI (device mark), registered on

February 25, 2019, for goods in class 12;

- United Arab Emirates Trademark Registration No. 296948 for XIAOMI (device mark), registered on

February 28, 2019, for services in class 35;

- United Arab Emirates Trademark Registration No. 364135 for XIAOMI (device mark), registered on

February 11, 2022, for goods in class 9.

The Complainant operates its primary business website at the domain name <mi.com>. It uses identifiers incorporating the term “xiaomi” in social media such as Twitter, Instagram, and YouTube.

The disputed domain name was registered on July 18, 2023. At the time of the Complaint and of this electronics products stated as being manufactured by the Complainant.

According to the evidence in the record, the Respondent operates this e-commerce website. No further information is available about the Respondent.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainant contends that it develops and produces a variety of goods such as smartphones, apps, and other electronic products such as watches, wristbands, scales, headphones, external batteries, chargers, cameras, and TVs under the trademarks XIAOMI, MI, and REDMI. It was established in 2010 and by 2021, the Complainant was the world’s largest smartphone brand by market share. The disputed domain name reflects the Complainant’s XIAOMI mark together with the descriptive term “dubai”. The Respondent has no rights in the XIAOMI mark and is not known by this mark. The disputed domain name resolves to an e-commerce website on which the Respondent is offering for sale the Complainant’s products and displays images copied from the Complainant’s website. The website states, “Only on our website you get original new Xiaomi products”, and also states that “All content on our website, including images, text, trademarks, and logos, is the property of Xiaomi Dubai or its affiliates”. A search for “xiaomi” on the Respondent’s website yields 186 hits.

The Complainant requests transfer of the disputed domain name.

B. Respondent

In its informal Response, the Respondent states that it is operating in compliance with local law. In respect of its status, the Respondent states the following:

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Additionally, one of the screenshots highlights a page where we state that we sell only original Xiaomi
products. This is indeed true. We sell genuine Xiaomi products that are supplied by local distributors in
Dubai.

Under Dubai law, we have the right to sell any brand’s products without restrictions, as long as the goods are sourced legally and comply with local regulations.

The claim appears to be a subjective interpretation without a proper understanding of how ecommerce stores

operate. Categories in online stores are designed to organize products based on relevant keywords and

may feature products from any brand, which does not constitute any form of copyright infringement or

violation.

6. Discussion and Findings

Paragraph 4(a) of the UDRP requires the Complainant to make out all three of the following:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii)       the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii)      the Respondent has registered and is using the disputed domain name in bad faith.

Under paragraph 15(a) of the Rules, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing
(or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison
between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel

Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.

WIPO Overview 3.0, section 1.2.1.

The entirety of the Complainant’s XIAOMI mark is reproduced within the disputed domain name.
Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.7.

Although the addition of other terms (here, “dubai”) may bear on assessment of the second and third elements, the Panel finds the addition of such a term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized

that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task
of “proving a negative”, requiring information that is often primarily within the knowledge or control of the

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respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or
legitimate interests, the burden of production on this element shifts to the respondent to come forward with
relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of
proof always remains on the complainant). If the respondent fails to come forward with such relevant
evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0,
section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. The Panel notes that there is no evidence that the Respondent is known by the disputed domain name or that it has any rights therein.

The Panel notes that the disputed domain name reflects the Complainant’s well-established XIAOMI mark together with “dubai”, a geographical term. Such a composition carries a risk of implied affiliation with the Complainant, which is inconsistent with a finding that the Respondent has rights or legitimate interests in the

disputed domain name given the Panel’s findings below. See WIPO Overview 3.0, section 2.5.1.

The issue before the Panel is whether the Respondent’s use of the Complainant’s mark in the disputed domain name may be bona fide or legitimate. The Respondent asserts that it is a legitimate reseller of the Complainant’s products. However, under the UDRP, the Panel must assess not whether the Respondent may sell these products, but whether the Respondent may incorporate the Complainant’s trademark into its domain name when doing so.

According to UDRP practice, resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Outlined in the “Oki Data test” (Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903), the

following cumulative requirements will be applied in the specific conditions of a UDRP case:

(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.

(WIPO Overview 3.0, section 2.8)

The record reflects that the disputed domain name resolves to an e-commerce site offering “Xiaomi” branded products and other products manufactured by the Complainant under its other marks. According to the information available, the products offered for sale on the Respondent’s website do appear to be related to the Complainant.

However, the Respondent’s website does not disclose the Respondent’s lack of relationship with the Complainant as the trademark holder. To the contrary, the website states that “All content on our website, including images, text, trademarks, and logos, is the property of Xiaomi Dubai or its affiliates”. UDRP Panels have been willing to base a finding of rights or legitimate interests in certain cases where resellers are not authorized by the trademark holder (see, for instance, General Motors LLC v. Flashcraft, Inc. DBA Cad

Company, WIPO Case No. D2011-2117). However, to avoid misleading Internet users, the Respondent remains under a duty to disclose its non-affiliation with the trademark holder “in prominent and unmistakable terms” (ibid.).

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Under these circumstances, the Panel is unable to find that the Respondent has a legitimate interest in the disputed domain name as a reseller. WIPO Overview 3.0, section 2.8.1.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In the present case, the Panel notes that the Respondent intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s

mark. The disputed domain name was registered several years after the Complainant first registered its

XIAOMI trademark. The disputed domain name reflects the Complainant’s marks together with “dubai”,

referring to a geographic location, therefore implying a connection to the Complainant and yet the website
connected to the disputed domain name fails to disclose its lack of relationship with the Complainant.
Under these circumstances, the Panel finds that the disputed domain name was registered in bad faith.
WIPO Overview 3.0, section 3.1.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

The Panel notes that the Respondent’s website prominently features the Complainant’s marks and displays product images copied from the Complainant’s website. As previously noted, the Respondent’s website lacks any disclaimer of the relationship between the Respondent and the Complainant. Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy.

The Panel finds that the Complainant has established the third element of the Policy.

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 <xiaomi-dubai.com> be transferred to the Complainant.

/Ingrīda Kariņa-Bērziņa/

Ingrīda Kariņa-Bērziņa

Sole Panelist
Date: February 19, 2025