The Complainant is Intel Corporation of Santa Clara, California, United States of America (“Complainant”), represented by Harvey Siskind LLP, United States of America.
The Respondent is Marcel Engenheiro / Pentium Capital of Zurich, Switzerland (“Respondent”). 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 10, 2013. On October 11, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 12, 2013, 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 and contact information in the Complaint. The Center sent an email communication to Complainant on October 14, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on October 18, 2013. 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”).
Pursuant to the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 21, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was November 10, 2013. Following Respondent’s request for extension, the Center granted Respondent an extension until November 22, 2013 to file a Response. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 25.
The Center appointed Reynaldo Urtiaga Escobar, Lynda J. Zadra-Symes and Michael A.R. Bernasconi as panelists in this matter on January 6, 2014. 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.
The proceedings are conducted in English as this is the language of the disputed domain name’s registration agreement. 4. Factual Background
Complainant is a leading manufacturer of microprocessors for computers. For many years, its products were known by numerical designations such as 286 and 386.
The term "Pentium" was coined by Complainant1 on or about 1992 to identify its fifth generation of microprocessors, and has since identified Complainant’s mid-range processor series, including Pentium Pro, Pentium II, Pentium III, Pentium 4, Pentium M, Pentium Dual-Core, and so forth.
Complainant owns numerous trademark registrations around the world for its PENTIUM mark, including:
- United States Trademark Registration No. 1834434 for PENTIUM in relation to computer hardware, namely, microprocessors, in international class 9, registered on May 3, 1994; and
- Swiss Trademark Registration No. 402307 for PENTIUM in respect of microprocessors included in international class 9, registered on June 16, 1993.
Respondent registered the disputed domain name on February 14, 2007. The website at the disputed domain name claimed as recently as August 23, 2013 that it was operated by a private investment group by the name of “The Pentium Group”- whose managing director is Marcel De Lencastre Engenheiro- purportedly offering private investment advisory services. The website at the disputed domain name is shown to be disabled on the date of this decision.
The parties to this proceeding were previously involved in Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273, and Intel Corporation v. Pentium Capital, WIPOCase No. D2011-0638. Both UDRP disputes dealt with very similar facts (but different domain names) as compared to those asserted in the Complaint. The two cases were decided in Complainant’s favor and with Respondent defaulting. 5. Parties’ Contentions A. Complainant
Complainant’s contentions can be summarized as follows:
i. The disputed domain name consists only of the PENTIUM mark followed by a non-distinctive word and a generic Top Level Domain (“gTLD”), the elements of which are insufficient to avoid confusion with Complainant’s famous PENTIUM mark;
ii. Even if Respondent has used a name corresponding to the disputed domain name, it has done so with complete knowledge of Complainant’s rights in the PENTIUM mark, thus precluding any claim of legitimate usage of the disputed domain name in the context of the Policy;
iii. Given Complainant’s many years of use of its PENTIUM mark throughout the world, it is very unlikely that Respondent would be commonly known by a name including that mark;
iv. Respondent purports on its website to make a commercial use of the disputed domain name as a private investment group, though evidence in the public domain does not validate that claim. As such, Respondent is not making a noncommercial or fair use of the disputed domain name either;
v. Insofar as Respondent is claiming on its website to operate a business, the business is founded on consumer confusion, not only because Respondent is using Complainant’s PENTIUM mark, but also because Respondent is purporting to offer private investment services similar to those Complainant offers under the brand “Intel Capital”;
vi. To the extent that Respondent is using the disputed domain name in connection with a private investment group, it is doing so for commercial gain and benefitting from the likelihood of confusion and association with Complainant’s PENTIUM mark;
vii. On information and belief, Respondent has not incorporated or formed as a legal entity anywhere. For example no entity named “Pentium Group” or “Pentium Capital” is registered as a legal entity with the state of New York or the state of Delaware;
viii. Respondent does not appear on the Federal Commercial Registry of Switzerland, which lists all entities in Switzerland with annual revenues exceeding 100,000 CHF. Similarly, Respondent’s address of record in Zürich, Switzerland is simply a residential address where efforts to serve a complaint have failed;
ix. Respondent has engaged in a pattern of acquiring domain names that reflect Complainant’s PENTIUM mark;
The fact that Complainant has already prevailed in two UDRP proceedings against Respondent involving very similar facts (but different domain names) supports a finding of bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed in this administrative proceeding, Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name is registered and is being used in bad faith.
These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable. A. Identical or Confusingly Similar
The gateway question under paragraph 4(a)(i) of the Policy is whether the disputed domain name is identical or confusingly similar to Complainant’s trademark, not whether the website to which the disputed domain name resolves will confuse Internet users. See The Vanguard Group, Inc. v. John Zuccarini,WIPO Case No. D2002‑0834 (a complainant need not to establish actual confusion because the test is objective, not subjective).
Complainant has proven that it has held registered trademark rights in the United States since 1994 over the mark PENTIUM, as well as the international reputation on that mark. See Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273 (the trademark PENTIUM is well-known internationally).
As explained in paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), the test for confusing similarity under the UDRP involves a straightforward visual or aural comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion and that, in order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent Internet user confusion.
To the Panel’s eye, PENTIUM stands out in the disputed domain name as Complainant’s instantly recognizable mark used to brand its cutting-edge microchips powering computers from a variety of manufacturers.
In comparing the mark PENTIUM to “pentiumcapital” (which is the relevant string of the disputed domain name for the purposes of determining likelihood of confusion), the Panel finds that the disputed domain name is confusingly similar to the PENTIUM mark despite the addition of a commonplace term like “capital” which does not dispel the mental association with Complainant’s well-known mark. See Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001‑0110 (the incorporation of a complainant’s well-known trademark in the registered domain name is considered sufficient to find the domain name confusingly similar to the complainant's trademark); and Kairos Investment Management SPA v. Guimei Lin,WIPO Case No. D2010-0962 (the addition of the descriptive words “capital” and “partners” does not lessen the inevitable confusion of the domain name with the Complainant's KAIROS registered mark).
Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant’s PENTIUM mark.
Complainant has thus met the first threshold of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). Paragraph 4(c) of the Policy provides that “any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [the Respondent’s] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
As noted in paragraph 2.1 of the WIPO Overview 2.0, the burden is on the complainant to establish the absence of the respondent’s rights or legitimate interests in the disputed domain name. However, because of the inherent difficulties in proving a negative, the consensus view is that the complainant need only put forward a prima facie case that the respondent lacks rights or legitimate interests. The burden of production then shifts to the respondent to rebut that prima facie case (see also, e.g., World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles,WIPO Case No. D2000-1306).
Complainant essentially submits that, considering: i) the two prior UDRP rulings mentioned in Section 4 supra; ii) the fact that Respondent does not seem to conduct business under the “Pentium Group” trade name as it purports on the website at the disputed domain name; and iii) the fact that Respondent is not incorporated in either Switzerland or New York, where it claims to have offices, Respondent cannot avail itself of any of the defenses afforded by Policy paragraph 4(c).
The Panel has carefully reviewed the evidence proffered in relation to Complainant’s contentions under this element, namely the screenshots of Respondent’s website, the search reports of the companies registries in New York, Delaware, and Switzerland displaying “not found” results for an entity by the name of “Pentium Group” or “Pentium Capital”, and the pictures of Respondent’s address in Zurich, Switzerland, showing a name sign of “M. Engenheiro” on the building’s doorbell panel.
The Panel also took notice of the findings made in Intel Corporation v. Pentium Capital, WIPO Case No. D2011-0638 (the Panel’s own searches of the Company’s Register were unable to locate a registration for the respondent’s name), and Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273 (Respondent’s PPC link farm website was found not to give rise to legitimate rights or interests in within the meaning of the Policy).
Based on the foregoing, the Panel assumes that Respondent does not actually use a trade name corresponding to the disputed domain name, nor is it known by the name “Pentium Group” as claimed on its now inactive website, the prior contents of which seem to have been a sham in light of the type of websites with which Respondent’s prior domain names incorporating the PENTIUM mark were associated.
The Panel therefore finds that Respondent has no rights or legitimate interests in the context of the Policy, paragraph 4(a)(ii).
This conclusion is only reinforced by Respondent’s default in the instant proceedings. See Pavillion Agency, Inc.,Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse,WIPO Case No. D2000-1221 (finding that the respondent's failure to respond can be construed as an admission that it has no rights or legitimate interests in the disputed domain name); Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., eResolution Case No. AF-0336 (finding no rights or legitimate interests where no such rights or interests were immediately apparent to the panel and the respondent did not come forward to suggest any right or interest it may have possessed).
Consequently, Complainant has satisfied the second element of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires a complainant to show that the disputed domain name has been registered and is being used in bad faith in order to be successful in its complaint. Paragraph 4(b) of the Policy sets forth a number of non-exclusive grounds of bad faith registration and use:
“(i) circumstances indicating that you [the respondent] have registered or…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 [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) you [the respondent] 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 [the respondent] have engaged in a pattern of such conduct; or
(iii) you [the respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you [the respondent] have intentionally attempted to attract, for commercial gain, Internet users to your [the respondent’s] 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 [the respondent’s] website or location or of a product or service on your [the respondent’s] website or location.”
Because the term “Pentium” was purposefully coined by Complainant (as noted in Section 4 supra) to function as a trademark2 , the same is deemed to be a fanciful mark possessing substantial inherent distinctiveness. As such, it does not seem to be a term that others would legitimately choose using unless seeking to create the impression of being associated with Complainant (Expedia Inc. v. Venta, Leonard Bogucki,WIPO Case No. D2001-1222).
This circumstance alone has been regarded as sufficient to find bad faith registration for the purposes of the Policy. See Singapore Airlines Limited v. European Travel Network,WIPO Case No. D2000-0641 (where the selection of the disputed domain name is so obviously connected to the complainant’s well known trademark, it’s very use by someone with no connection with the complainant suggests opportunistic bad faith).
Moreover, in view of i) the reputation of PENTIUM as a household name in numerous countries, including Switzerland; ii) Respondent’s lack of rights or legitimate interests in the disputed domain name, as already found; iii) the presumably deceptive content of the website while in operation, coupled with its current inactivity; and iv) the two prior UDRP decisions issued against Respondent for having registered and used in bad faith domain names incorporating Complainant’s PENTIUM mark, the Panel finds that Respondent has engaged in a pattern of abusive registration of domain names to the detriment of Complainant by misleadingly pairing the mark PENTIUM with services for which it is not known, while diluting the distinctive quality and goodwill with which said mark is associated in the computer hardware industry. See Adecco S.A. v. Sandip Kabra,WIPO Case No. D2005-0879 (the Panel infers that respondent registered in order to make consumers believe that “Adecco Capital” is an extension of the complainant’s core job placement services for which the ADECCO mark is famous).
Accordingly, the Panel holds that the disputed domain name was both registered and is being used in bad faith within the meaning of the Policy.
Complainant has therefore discharged its burden in connection with 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 unanimously orders that the domain name be transferred to Complainant.
Reynaldo Urtiaga Escobar
Presiding Panelist
Lynda J. Zadra-Symes
Panelist
Michael A.R. Bernasconi
Panelist
Date: January 21, 2014
1 According to Wikipedia, marketing firm Lexicon Branding was retained by Complainant to coin a term that could serve as a trademark for its fifth-generation x86-compatible microchip. The suffix ium was chosen as it could connote a fundamental ingredient of a computer, like a chemical element (namely titanium), while the prefix pent could refer to the fifth generation of microchips.
2 Complainant takes great care in ensuring that PENTIUM is used by third parties solely in conjunction with the following nouns: brand, desktop processor, logo, mark, mobile processor, name, processor, processor family, and trademark See Complainant’s Usage Guidelines for the PENTIUM trademark, available at “/content/www/us/en/trademarks/pentium.html”.
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