WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Intel Corporation v. The Pentium Group Case No. D2009-0273 1. The Parties
The Complainant is Intel Corporation of Santa Clara, California, United States of America, represented by Harvey Siskind LLP, United States.
The Respondent is The Pentium Group of Erlenbach, Zurich, Switzerland. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 28, 2009. On March 2, 2009, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On March 3, 2009, GoD, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 9, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 29, 2009. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on March 30, 2009.
The Center appointed Clive N.A. Trotman, Frederick M. Abbott and Tobias Zuberbühler as panelists in this matter on April 22, 2009. The Panel finds that it was properly constituted. Each member of 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 factual background is extracted from material provided by the Complainant.
The Complainant, Intel Corporation, is the manufacturer of the central processor unit (CPU) that is the core of a high proportion of the world's computers. After some years of giving the CPU a numerical name such as 386, the Complainant coined the trademark word PENTIUM to designate its product.
The Complainant first trademarked the word PENTIUM in 1994, 13 years before the Respondent registered the disputed domain name .
The Complainant owns over 500 trademark registrations for its PENTIUM mark in approximately 175 jurisdictions throughout the world.
Specimen registrations for the trademark PENTIUM at the United States Patent and Trademark Office (USPTO) have included:
USPTO Reg. No. 1,834,434, May 3, 1994
USPTO Reg. No. 2,173,650, July 14, 1998
USPTO Reg. No. 2,201,867, November 3, 1998
Each of the foregoing registrations is now incontestable under United States law.
Complainant's current United States registrations include:
USPTO Reg. No. 2,337,151 (incontestable), April 4, 2000
USPTO Reg. No. 2,547,564, March 12, 2002
In Switzerland, being the address provided by the registrant of the disputed domain name, the Complainant holds the following trademark registrations for the trademark PENTIUM:
Registration No. 402307
Registration No. 450261
Registration No. 460968
No facts are available about the Respondent except those provided in the registration details for the disputed domain name. The disputed domain name was apparently registered on February 14, 2007. 5. Parties' Contentions A. Complainant
The Complainant contends, with citations, that the disputed domain name is identical or confusingly similar to the trademark PENTIUM in which the Complainant has rights. The trademark has been registered worldwide and is incontestable under United States law. It is a made-up and coined trademark that is arbitrary and distinctive without any other meaning, and is well-known in the fields of microprocessors and computers.
The Complainant contends that the disputed domain name is identical to its trademark except for the addition of the word “group” and the gTLD designation. It is contended that the addition of a non-distinctive element to a famous, distinctive trademark is not sufficient to avoid confusion. The content of the webpage corresponding to the disputed domain name adds to the likelihood of confusion.
The Complainant further contends, with citations, that the Respondent has no rights or legitimate interests in the disputed domain name. Where there is no plausible explanation for use of a famous mark in a domain name other than to trade off its goodwill, the Respondent has no rights or legitimate interests.
In the terms of paragraph 4(c) of the Policy the Complainant asserts that, as in Intel Corporation v. Ox90,WIPO Case No. D2002-0010, the Respondent was without doubt aware of Complainant's trademark when it registered the disputed domain name, and has no basis to claim a bona fide offering of goods and services. The use of a famous trademark in a domain name for a website that simply contains hyperlinks is not a legitimate commercial use.
The Complainant says that where a Complainant has established use and fame of its trademark, it is unlikely that the Respondent would be commonly known by the mark. There can be no plausible explanation for the use of the disputed domain name, other than intentionally to trade off the goodwill in the PENTIUM mark in order to drive traffic to Respondent's site.
The Complainant says that the Respondent is not making a noncommercial or fair use of the disputed domain name. The “parking” webpage that the disputed domain name resolves to features sponsored links, which include unauthorized references to Complainant and its products.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith. In particular the Complainant cites paragraph 4(b)(iv) of the Policy. It says that the Respondent's use of the PENTIUM trademark is likely to cause confusion that is increased by the sponsored links appearing on the corresponding webpages, which feature prominent references to the Complainant and its products.
The Complainant contends that the Respondent stands to benefit financially from the sponsored links, by means of click-through referral revenue. Alternatively, the financial benefit may not necessarily accrue to the Respondent (citing Villeroy & Boch AG v. Mario Pingerna,WIPO Case No. D2007-1912).
The Complainant contends that the Panel may find bad faith registration and use where a famous trademark is used by a Respondent without plausible legitimate reason (citing General Electric Company v. CPIC NET and Hussain Syed,WIPO Case No. D2001-0087, and Microsoft Corporation v. Montrose Corporation,WIPO Case No. D2000-1568). The Complainant says that the present case is similar because the Respondent registered the disputed domain name in bad faith since it wholly incorporates, and is confusingly similar to, Complainant's famous PENTIUM mark, which has been used without the Complainant's authorisation or without plausible legitimate reason.
The Complainant says that bad faith is exacerbated by the fact that its trademark is widely promoted, well-known and famous. Bad faith exists where there can be no question that Respondent knew or should have known about the Complainant's trademark rights before registering its domain name, citing Yahoo! Inc. v. Yahoo-Asian Company Limited,WIPO Case No. D2001-0051; and Nike, Inc. v. B.B. de Boer,WIPO Case No. D2000-1397.
The Complainant requests that the disputed domain name be transferred to it. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required:
“to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable Provider, in compliance with the Rules of Procedure, that:
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute. A. Identical or Confusingly Similar
The Complainant has produced satisfactory evidence of having registered the trademark PENTIUM at the USPTO and the Swiss Federal Institute of Intellectual Property, in the relevant international classes, on dates prior to the registration of the disputed domain name. The Panel accepts that the trademark PENTIUM is well-known internationally.
The disputed domain name is . The component “.net”, being an integral and technical part of the domain name, may be disregarded in the determination of confusing similarity under the conventions of the UDRP.
What remains is “pentiumgroup”, which, to the many people who will have heard of the Complainant's well known trademark, is likely to be read as “Pentium Group”. The Panel accepts that the trademark PENTIUM is a coined word that appears not to have been in use before it was adopted as a trademark by the Complainant. The disputed domain name features the word “pentium” and is found to be confusingly similar to the Complainant's trademark.
It is generally found in disputes under the UDRP that the presence of additional words or characters alongside a well-known trademark is not distinguishing and does not detract from confusing similarity. In the present instance the Panel finds that the additional word “group” in the disputed domain name is merely descriptive and does not detract from confusing similarity. Furthermore, in the circumstances, the word “group” may exacerbate confusing similarity by creating an illusion of a company or group structure that does not belong to the Respondent. The Panel finds for the Complainant in the terms of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant is required to prove that the Respondent does not have rights or legitimate interests in the disputed domain name. The Complainant states a prima facie case to this effect by asserting that the Respondent cannot fulfill any of the defences available to it in the terms of paragraph 4(c) of the Policy. In particular the Respondent has not made a bona fide offering of goods or services in the terms of paragraph 4(c)(i) of the Policy, because it has solely sought to take advantage of the Complainant's well- known trademark by diverting Internet users to Respondent's link farm. There is no evidence that the Respondent has been commonly known by the Complainant's trademark, and if it were, its knowledge of the Complainant's trademark would negate any claim to legitimate usage in the terms of paragraph 4(c)(ii) of the Policy. The Respondent is not making a noncommercial use of the disputed domain name in the terms of paragraph 4(c)(iii) of the Policy since its usage for referrals through links to advertisers may reasonably be assumed to be commercial in its intent and effect.
The Respondent has not made any attempt to refute the Complainant's prima facie case, or replied to it at all. The Panel can find no evidence that the Respondent could have rights or legitimate interests in the disputed domain name and finds for the Complainant in the terms of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Complainant is required to prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four circumstances that, without limitation, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
The Complainant in this case relies principally on paragraph 4(b)(iv) above. The disputed domain name is in use, since it resolves to what is effectively a parking website. Visitors to the website are presented with a list of links that, if clicked, redirect them to other websites generally of a commercial nature. It may reasonably be concluded on the basis of the evidence and in the light of conventional Internet commerce that the process just described, and adopted by the Respondent, is the “click-through” or “pay per click” business model, whereby either the owner of the website sending the referrals, or the host of the website, or both of these, are likely to be rewarded with financial commission from the advertisers who receive the referrals.
The “click-through” or “pay per click” business model, of itself, may be entirely legitimate. It is widely used by websites for the legitimate purpose of funding or subsidising news, information, directory services or other content that might otherwise be uneconomic to provide, or simply for deriving revenue. The model depends, however, on the attraction of visitors in the first place, often by their making a selection from the results presented by a search engine, or by their guessing the URL of the website. This may be done with a legitimate domain name. If, on the other hand, another's trademark is used without authorisation for the purpose of attracting visitors, then some visitors may be confused into thinking, at least initially, that the website they have reached is in some way endorsed by the Complainant, when it is not.
It is not reasonably tenable that the Respondent has gone to the trouble and expense of purchasing and registering the disputed domain name and having it hosted as a parking page website, with advertising links, without purpose. The ultimate purpose may be the sale of the disputed domain name, however it is not necessary for the Panel to know since it is a reasonable presumption that in the short term the disputed domain name generates revenue from click-through referrals. Whether this revenue accrues directly to the Respondent or to the host, or to both, is immaterial (Villeroy & Boch AG v. Mario Pingerna,WIPO Case No. D2007-1912). Upon the totality of the evidence, the Panel finds that the Respondent has attracted viewers for commercial gain by confusion within the meaning of paragraph 4(b)(iv) of the Policy, constituting registration and use in bad faith.
The four circumstances exemplified in paragraphs 4(b)(i) - (iv) of the Policy are not exclusive and bad faith may be found alternatively.
The Panel accepts the Complainant's contention that the trademark PENTIUM is extremely well known internationally. The incorporation of a well-known trademark into a domain name by a registrant having no plausible explanation for doing so may be, in and of itself, an indication of bad faith (Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; General Electric Company v. CPIC NET and Hussain Syed,WIPO Case No. D2001-0087; Microsoft Corporation v. Montrose Corporation,WIPO Case No. D2000-1568).
The Respondent has registered the disputed domain name but has not put it to any material use, merely having it parked or in storage, whilst, it may reasonably be concluded, generating incidental revenue from advertising referrals. In overview the Respondent is holding the disputed domain name passively. It has long been generally held in UDRP decisions that the passive holding of a domain name that incorporates a well known trademark, without obvious use for an Internet purpose, does not necessarily circumvent a finding that the domain name is in use within the requirements of paragraph 4(a)(iii) of the Policy (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
In all the foregoing circumstances the Panel finds that the disputed domain name has been registered and used in bad faith in the terms of paragraph 4(a)(iii) of the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Clive N.A. Trotman
Presiding Panelist
Frederick M. Abbott
Panelist
Tobias Zuberbühler
Panelist
Dated: May 6, 2009
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