The Complainant is Intel Corporation of Santa Clara, California, United States of America, represented by Nabarro LLP, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).
The Respondent is Intel Marketing of London, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name is registered with Ascio Technologies Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 3, 2013. On June 3, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 12, 2013, 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.
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 June 14, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 4, 2013. On July 4, 2013, the Center received a request for extension of the Response due date from a solicitor apparently representing the Respondent. The Center acknowledged receipt of the request and invited the Complainant to submit its comments on the request. The Complainant provided its comments on July 4, 2013, objecting to the extension. On the same date the Center informed the parties that the Response due date would remain July 4, 2013. The Center received several further email communications from the solicitor and the Complainant on July 4 and 5, 2013. In the solicitor’s penultimate email the solicitor requested that the proceedings against its client be discontinued, on the ground that the client has no connection with the Respondent.
The Center appointed Andrew F. Christie as the sole panelist in this matter on July 10, 2013. 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 the world’s largest maker of semiconductor chips, based on revenue. It was incorporated in California in 1968 and reincorporated in Delaware in 1989. For 2012, it posted revenue of USD 53.3 billion. It currently offers products and technologies, and related services, across a broad range of categories, including wired and wireless Internet connectivity products, microprocessors, chipsets, software development products, education and training, and consultancy services amongst others.
The Complainant owns numerous trademark registrations worldwide for INTEL, including Community and United Kingdom trademark registrations in various classes. The earliest of the Complainant’s United Kingdom trademark registrations for INTEL date from 1957.
The disputed domain name was registered on November 14, 2012. The Complainant has provided screenshots of the website to which the disputed domain name resolved as of May 30, 2013. The screenshot of the landing page of the website showed it contained the statement: “Intel PC Services Intel Marketing is a software troubleshooting and IT consulting company. We specialize in system protection.” Other pages of the website contained information on the company’s range of products and services, which relate to anti-virus services, pc support, smart phone support, and cloud backup. It appears that the disputed domain name currently does not resolve to any website. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to its INTEL trademark because: (i) the INTEL trademark is well known and the Complainant enjoys a high degree of consumer and media recognition, with the INTEL trademark being one of the Complainant’s most significant assets; (ii) “pc” is a very commonly used and understood abbreviation of “personal computer” and the word “services” is entirely non-distinctive; (iii) the leading word of the disputed domain name, “intel”, is clearly the core identifying element of the disputed domain name, and the Respondent has merely juxtaposed the descriptive terms “pc” and “services” with the Complainant’s trademark; and (iv) the generic Top-Level Domain (“gTLD”) “.com” is to be ignored when assessing the identity or similarity of the disputed domain name.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because: (i) the website to which the disputed domain name resolves clearly shows the Respondent is using it in connection with services in a closely related field of endeavor to that of the Complainant, and that this cannot and does not constitute bona fide commercial or fair use sufficient to legitimize any interest in the disputed domain name; (ii) the Respondent is seeking to capitalize on the Complainant’s INTEL trademark and take unfair advantage of its rights; (iii) the Respondent’s use of the INTEL trademark will confuse potential customers into thinking that the Complainant is the source of, is associated with, or has sponsored the “www.” website; and (iv) there is no evidence to suggest the Respondent was commonly known by the disputed domain name prior to its registration, or that it can have become known by the disputed domain name solely because of its use.
The Complainant contends that the disputed domain name was registered and is being used in bad faith because: (i) the Respondent selected a domain name well suited to trade on the fame of the Complainant’s INTEL trademark and cause confusion among Internet users; (ii) the disputed domain name was registered well after the INTEL trademark became famous and the Respondent is offering services on the website to which it resolves which are in a closely related field of endeavor to that of the Complainant; (iii) the Respondent has deliberately set out to create a likelihood of confusion whereby Internet users will believe that the disputed domain name is owned by the Complainant and that the “www.” website is endorsed by or affiliated with the Complainant, causing the Complainant “initial interest confusion”; (iv) the disputed domain name was registered in 2012, several decades after the Complainant had established rights in the INTEL trademark, and is being used by the Respondent to take the most effective commercial advantage of the INTEL trademark on the Internet; (v) the Respondent’s ongoing use of the disputed domain name is likely to disrupt the Complainant’s businesses by damaging the reputation and distinctiveness of its INTEL trademark; (vi) the contact information provided by the Respondent to the Registrar is not accurate as the Complainant’s representative’s letters addressed to the address shown in the WhoIs database search were returned undelivered and marked either “addressee gone away” or “refused”, and the Google Street View image of the shop front of that address shows that it in fact relates to a hair and beauty salon business, and falsifying contact information constitutes bad faith registration and use. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Procedural Issue – Request for Discontinuance of Proceedings
After notification of the Complaint, a solicitor acting for Intel Marketing Ltd contacted the Center requesting (unsuccessfully, as it transpired) an extension of the due date for filing a Response. In a subsequent communication with the Center, the solicitor stated that its client did not register, and is not using, the disputed domain name, and has no connection with the Respondent. In a later communication the solicitor stated: “We again stress that our client has no connection with Intel Marketing and accordingly respectfully request the Panel to discontinue these proceedings as against our client, Intel Marketing Ltd.”
The Complaint has been filed against “Intel Marketing”, which the Registrar has confirmed is the registrant of the disputed domain name. The Complaint has not been filed against “Intel Marketing Ltd”. It follows that this Complaint is not a proceeding against Intel Marketing Ltd. There is, therefore, no proceeding against Intel Marketing Ltd to which a request for discontinuance can relate. Accordingly, the Panel declines to consider the request for discontinuance, on the ground that it is irrelevant. 7. Discussion and Findings A. Identical or Confusingly Similar
The disputed domain name incorporates the whole of the Complainant’s registered trademark INTEL and adds the characters “pc” and “services”, and the gTLD “.com”. This Panel finds these additions do not lessen the inevitable confusion of the disputed domain name with the Complainant’s trademark. This is because “pc” is a common abbreviation of “personal computer” and “services” is non-distinctive, and together these characters are descriptive of services related to those that the Complainant provides under its INTEL trademark. The distinctive component of the disputed domain name is “intel”, which is the Complainant’s trademark. In the Panel’s opinion, it is highly likely that many Internet users would consider that a domain name containing the string “intelpcservices” was associated with the Complainant’s business. Accordingly, this Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
The Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not been authorized by the Complainant to use its INTEL trademark. The evidence provided by the Complainant shows that the disputed domain name has been used to resolve to a website offering services in fields related to the Complainant’s business endeavors. The Respondent has provided no evidence establishing that it has trademark or other rights to the string “intel”, which is the dominant and distinctive component of the disputed domain name. According to the present record, therefore, the disputed domain name is not being used in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Furthermore, the Respondent has not provided any evidence that it has been commonly known by the disputed domain name, or that it has, for any other reason, rights or legitimate interests in the disputed domain name. Accordingly, this Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The disputed domain name was first registered many decades after the Complainant first registered its INTEL trademark. The evidence on the record provided by the Complainant with respect to the use of its INTEL trademark, combined with the absence of any evidence provided by the Respondent to the contrary, is sufficient to satisfy this Panel that, at the time the disputed domain name was registered, the Respondent most likely knew of the Complainant’s INTEL trademark, and knew that it had no rights or legitimate interests in the disputed domain name. The evidence on the record provided by the Complainant with respect to the Respondent’s use of the disputed domain name indicates that the Respondent has used the disputed domain name to attract, or to attempt to attract, for commercial gain, Internet users to a website by creating confusion with the Complainant’s trademark as to the affiliation of that website. For all these reasons, this Panel is satisfied that the disputed domain name has been registered and is being used in bad faith. 8. 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 be transferred to the Complainant.
Andrew F. Christie
Sole Panelist
Date: July 23, 2013
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