The Complainant is NVIDIA Corporation of Santa Clara, California, United States of America (“US”), represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland (“UK”).
The Respondent is Linzongxing, Lin Zongxing of Putian, Fujian, China, self represented. 2. The Domain Name and Registrar
The disputed domain name is registered with eName Technology Co., Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 16, 2015. On January 16, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 19, 2015, 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. On January 16, 2015, the Complainant forwarded two email communications received from the Respondent to the Center.
On January 19, 2015, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On January 19, 2015, the Respondent submitted a request that Chinese be the language of the proceeding. On January 20, 2015, the Complainant submitted a request that English be the language of the proceeding.
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 in both Chinese and English, and the proceeding commenced on January 28, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 17, 2015. The Response was filed with the Center on February 9, 2015.
The Center appointed Francine Tan as the sole panelist in this matter on February 23, 2015. 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 was originally incorporated in the State of California, in April 1993 and reincorporated in the State of Delaware in April 1998. It is internationally well known for its graphics processing units (GPUs) and mobile processor chipsets which are used to power a broad range of products. The Complainant has a strong international presence, including six offices in China. It was listed on the NASDAQ stock exchange in 1999 and named company of the year in 2007 by Forbes magazine. Since the Complainant’s invention of the GPU in 1999, the Complainant has shipped more than one billion GPUs and the Complainant’s revenue achieved over USD 4 billion in fiscal year 2014.
The Complainant is a global leader in innovation in the semiconductors industry. Its current product portfolio includes graphics processors, wireless communications processors, personal computer platform chipsets, and digital media player software. It has more than 7,000 patents which have been issued, allowed, or filed worldwide. The Complainant has a strong reputation in the trade, with over 1.5 million Facebook fans and over 500,000 Twitter followers.
The Complainant asserts it has substantive rights and interests in the marks NVIDIA, NVIDIA SHIELD and SHIELD which stem from its trade mark registrations as well as its exclusive, extensive and consistent use since 1993, and upon the highly-anticipated launch of its visual computing device made public in January 2013. The marks SHIELD and NVIDIA SHIELD are registered marks of the Complainant (Community Trade Mark registration Nos. 011599438 (for SHIELD) and 011599421 (for NVIDIA SHIELD), registered on January 14, 2014 and July 23, 2013, respectively; New Zealand registration No. 990809 (for SHIELD) registered on May 1, 2014; Norway registration Nos. 272188 (for NVIDIA SHIELD) and 272191 (for SHIELD), registered on September 11, 2013; Republic of Korean registration No. 450048579 (for NVIDIA SHIELD), registered on March 13, 2014; and Mexican registration Nos. 1498325, 1433877, 1436400 and 1493727 (all for NVIDIA SHIELD), registered on January 12, 2014, February 13, 2014, February 24, 2014 and November 10, 2014, respectively). The marks form a clear and visible part of the Complainant’s online material on its e-commerce and social media sites.
On January 7, 2013, the Complainant announced the unveiling of its SHIELD portable gaming device. The NVIDIA SHIELD product was launched in June 2013 to critical acclaim. In anticipation of the launch, the Complainant had already taken steps to register the appropriate trade marks. By the end of February 2013, trade mark applications had been filed in the European Union, Japan, Singapore, Mexico, Switzerland, the U.S. and other countries. Over the next few months, the Complainant used the NVIDIA SHIELD and SHIELD marks extensively in product marketing and advertising. By May 2014, rumours started to emerge on the subject of a NVIDIA SHIELD tablet. These rumours were verified on June 9, 2014. A product listing was leaked on the Complainant’s website for a short-lived period but gave way to a flurry of online blog chatter, spanning global coverage on technology sites, android pages and gaming sites all reporting the event, in a variety of languages and jurisdictions.
The official launch of the NVIDIA SHIELD tablet took place on July 22, 2014. The NVIDIA SHIELD product family comprises high-performance mobile gaming devices designed for avid gamers, the SHIELD tablet, SHIELD portable, and SHIELD wireless controller.
The disputed domain name was registered on June 9, 2014. Other than being used for email, the disputed domain name has been passively held. 5. Parties’ Contentions A. Complainant
The Complainant asserts that the disputed domain name is confusingly similar to the trade marks SHIELD and NVIDIA SHIELD in which it has rights. The Complainant’s SHIELD mark is recognizable within the disputed domain name. The addition of the descriptive term “tablet” does not remove any associative value from the NVIDIA SHIELD and SHIELD marks. The use and application of the descriptive term in fact draws a direct association with the Complainant’s trade marks NVIDIA SHIELD and SHIELD. The term “tablet” has become widely used to describe a portable computing device. Previous UDRP panel decisions have clearly documented the principle that the inclusion of the generic Top-Level Domain (“gTLD”) “.com” has no bearing on the mark whatsoever as it is a generic and technical requirement.
The Complainant further asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent appears, from a reverse WhoIs search, to be associated with in excess of 300 other domain names. Although the mere ownership of a large domain name portfolio does not infer a lack of legitimate interests in a domain name, it does suggest that the Respondent is in the business of domain names and it is unlikely that he is going to establish a bona fide offering of goods or services. It is more likely that the disputed domain name will be used in order to gain financially through the association formed between the Complainant’s trade marks and new SHIELD tablet product offering, and the Respondent’s use of these associative terms in a corresponding domain name.
Moreover, the Respondent has never been known, and is not commonly known by the disputed domain name, nor has he registered the disputed domain name as a trade mark or acquired common law trade mark rights through continuous use. The Respondent has not been authorized or licensed by the Complainant to use the Complainant’s trade marks nor has there been any relationship which would give rise to such permission, whether expressly or by implication.
Online searches for the terms “NVIDIA SHIELD”, “SHIELD” and “SHIELD tablet” deliver results only attributed to the Complainant and not the Respondent. Trade mark searches carried out across numerous jurisdictions including the UK Intellectual Property Office, US Patent and Trademark Office, World Intellectual Property Organization (WIPO), Office for Harmonization in the Internal Market (OHIM), Canadian Intellectual Property Office, China Patent and Trade mark Office and IP Australia have not surfaced any registered marks associated with the disputed domain name, other than that of the Complainant’s registered trade marks.
Lastly, the Complainant asserts that the disputed domain name was registered and is being used in bad faith. The circumstances of the case make it clear that it is unlikely that the Respondent registered the disputed domain name by chance. The timing of the registration and the choice of the domain string infers a clear connection with the Complainant’s SHIELD tablet, and is an abusive registration. The Respondent is a sophisticated domainer who regularly registers domain names. His failure to conduct adequate searches prior to the registration of the disputed domain name supports a finding of bad faith.
Further, a number of the Respondent’s registrations indicate that the Respondent actively registers domain names which are either highly anticipated or prospective products or newly-announced up and coming company mergers, partnerships, products, etc. Examples include , , , , , , , , and . The act of speculatively registering domain names in order to exploit the fact that a new product may emerge cannot be an act of good faith.
There is no evidence that the Respondent had demonstrable plans to use the disputed domain name for a bona fide purpose at the time of registration and no such use has been made since then. The tactical registration of the disputed domain name could only have been made with knowledge and deliberately, due to the proximity of the news announcements, and the subsequent registrations following the public broadcasts. The aforesaid and the Respondent’s registration of other infringing domain names shows a pattern of speculative domain name registrations and these registrations prevent the trade mark holders from having a domain name which corresponds to their trade marks. The Respondent has sought to take unfair advantage of the Complainant’s goodwill and established rights, to divert custom and to cause confusion. The Respondent also provided false or unreliable information in its WhoIs contact details for his domain names. B. Respondent
The Respondent submitted a response with supporting annexes by email to the Center on February 9, 2015, in Chinese. He stated that when he registered the disputed domain name, the Complainant did not have ownership of the trade marks NVIDIA SHIELD and SHIELD in China. The Complainant’s SHIELD products were also not available in the Chinese market. The Complainant has only shown it has rights in the trade marks outside of China. Further, before June 9, 2014, the Chinese government still had a ban in place on foreign video game consoles. Therefore there could not be any sales of SHIELD gaming products. The Complainant’s SHIELD tablets were only launched later, on July 21, 2014. SHIELD tablets were therefore not a known brand when the disputed domain name was registered.
The Respondent submits that the disputed domain name was lawfully registered by him and during the relevant period, no harm was done to the Complainant. He set up an email account with the disputed domain name and on the webmail, he indicated “Private email system, not affiliated with any company”. Other than the use of the disputed domain name in this manner, for personal use, the disputed domain name has not been used for commercial purposes. The Complainant is therefore unable to prove he has used the disputed domain name in bad faith.
The Respondent submits that the disputed domain name comprises commonly-used words or letters. It is not related to the Complainant and not misleading. He claims that the Shield tablet is a product in his company which is still under research and the disputed domain name is being considered for possible future use.
A search of the Chinese trade marks register shows 52 trade mark registrations for SHIELD belonging to different companies and owners, and therefore SHIELD is not exclusive to the Complainant.
Given the aforesaid facts, the Respondent asserts his use of the disputed domain name is reasonable and without bad intention. 6. Discussion and Findings Language of the Proceeding
The language of the Registration Agreement is Chinese. The Complainant requested that English be the language of the proceeding on the basis that a review of the Respondent’s domain portfolio shows that he has a working knowledge of the English language. He has registered multiple domains which have English words such as , , and . The disputed domain name which incorporates the Complainant’s mark, SHIELD, along with the other domain name registrations, makes it evident that the Respondent is, at the very least, competent in English whereas the Complainant has no familiarity with the Chinese language. The commission of a translator would add unnecessary cost to the Complainant who already bears the cost of filing and cause delay in commencement of proceedings. Such action is contrary to the intention of the drafters of the Policy to provide a cost-effective and expedited resolution process.
The Respondent requested by email of January 19, 2015 that the language of the proceeding be Chinese, stating that he needs to converse in Mandarin and does not understand English nor the English version of the Complaint. He said it would otherwise be unfair to him and he would not be able to defend himself effectively.
Paragraph 11(a) of the Rules stipulates 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 regard to the circumstances of the administrative proceeding.
Paragraph 10(b) and (c) of the Rules stipulate, respectively, that:
“(b) In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.
(c) The Panel shall ensure that the administrative proceeding takes place with due expedition. It may, at the request of a Party or on its own motion, extend, in exceptional cases, a period of time fixed by these Rules or by the Panel.”
In the exercise of its discretion under paragraph 11 of the Rules, the Panel holds that English shall be the language of the administrative proceeding. The Respondent submitted a substantive response, albeit in Chinese, which showed he understood the nature of the proceeding and the contents of the Complaint. Further, the disputed domain name and many of the other domain names registered by the Respondent comprise English word trade marks in combination with generic terms. This shows that the Respondent has a level of familiarity with and knowledge of English. The Panel has to balance considerations of ensuring that the proceeding takes place with due expedition and that the parties are treated fairly and given a fair opportunity to present their case. The language requirement should not cause any undue burden on the parties. The significant costs that would be placed on the Complainant to have to translate the Complaint and evidence into Chinese would be an undue burden on it when considered against the fact that the Respondent has been able to submit his defense in response.
The Panel therefore finds it apt to rule that English should be the language of the proceeding. A. Identical or Confusingly Similar
The Complainant has established it has rights to the trade mark SHIELD. Paragraph 4(a)(i) of the Policy only requires that the Complainant show it has rights in the trade mark or service mark, not necessarily in the jurisdiction where the Respondent is based or located. The Respondent’s argument that the Complainant has no registered trade mark right in SHIELD therefore does not hold under the provisions of the Policy. See paragraph 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“the WIPO Overview 2.0”).
The trade mark SHIELD is clearly identifiable in the disputed domain name and incorporated in its entirety. The word “tablet” is indeed a generic word and does not serve to remove the confusing similarity with the Complainant’s trade mark. See paragraph 1.2 of the WIPO Overview 2.0 which states: “In order to satisfy this test, the relevant trade mark 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 threshold Internet user confusion.”
The Panel therefore finds paragraph 4(a)(i) of the Policy to have been satisfied by the Complainant. B. Rights or Legitimate Interests
The Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in relation to the disputed domain name. The Respondent was not authorized to register or use the trade mark SHIELD in a domain name and neither is there any relationship between the Complainant and the Respondent. The Respondent is also not known by the disputed domain name. There is also no evidence of demonstrable preparations by the Respondent to use the disputed domain name in connection with a bona fide offering of goods or services. The burden is accordingly shifted to the Respondent to show that he has rights or legitimate interests in respect of the disputed domain name.
The Respondent has asserted that the words in the disputed domain name comprise commonly-used words or letters. The Panel refers on this issue to paragraph 2.2 of the WIPO Overview 2.0 which states as follows:
“If the complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show one of the three circumstances under paragraph 4(c) of the UDRP, or any other basis for rights or legitimate interests, then the respondent may lack a legitimate interest in the domain name, even if it is a domain name comprised of a dictionary word or phrase. Factors a panel tends to look for when assessing whether there may be rights or legitimate interests would include the status and fame of the trade mark, whether the respondent has registered other domain names containing dictionary words or phrases, and whether the domain name is used in connection with a purpose relating to its generic or descriptive meaning (e.g., a respondent may well have a right to a domain name ‘apple’ if it uses it for a genuine site for apples but not if the site is aimed at selling computers or MP3 players, for example, or an inappropriate other purpose). Panels have recognized that mere registration of a domain name, even one that is comprised of a confirmed dictionary word or phrase (which may be generic with respect to certain goods or services), may not of itself confer rights or legitimate interests in the domain name. Normally, in order to find rights or legitimate interests in a domain name based on the generic or dictionary meaning of a word or phrase contained therein, the domain name would need to be genuinely used or at least demonstrably intended for such use in connection with the relied-upon meaning (and not, for example, to trade off third-party rights in such word or phrase).”
The Panel takes guidance from the above consensus view and finds that the Respondent’s position on this issue is incorrect. Whilst “shield” and “tablet” are known English words, the word “shield” in the context of this case is different. Firstly, it is a registered mark of the Complainant. Secondly, even though the mark was a fairly recently-adopted mark, taking into account the worldwide reputation that the Complainant possesses and the fanfare surrounding, and the anticipation of, the launch of the SHIELD tablet, the word SHIELD takes on a further level of distinctive significance as a trade mark. The word “tablet” in the disputed domain name bears out the ultimate intention of the Respondent to refer to the SHIELD tablet of the Complainant. The Respondent claimed that the disputed domain name relates to a product it is considering and the disputed domain name is being considered for future use. However, this appears to be a statement that is unsupported by evidence. Moreover, there is no evidence that the Respondent, having registered this and many other domain names comprising well-known trade marks and generic terms, has used these domain names “in connection with a purpose relating to its generic or descriptive meaning”.
The Panel notes that the Respondent at no point denied knowledge of the Complainant or of its trade mark, nor asserted that the registration of the disputed domain name and timing thereof were pure coincidence. The argument that he put forward, that the disputed domain name comprises a combination of dictionary words, does not accord with what he is asserting. There is no evidence that the Respondent is using the disputed domain for use in connection with the “relied-upon meaning”. Rather, his intention appears to be to trade off third-party rights in the trade mark SHIELD. The Respondent’s intent is made clear by the suspicious timing of his registration of (i.e., on the very day the Complainant verified the rumours of an NVIDIA SHIELD tablet).
The Panel therefore finds that the Complainant has established paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
In the case of Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, the Panel held that the passive holding of a domain name by the respondent can amount to bad faith in certain circumstances. The circumstances in that case were:
“(i) the Complainant’s trade mark has a strong reputation and is widely known, as evidenced by its substantial use in Australia and in other countries,
(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name,
(iii) the Respondent has taken active steps to conceal its true identity, by operating under a name that is not a registered business name,
(iv) the Respondent has actively provided, and failed to correct, false contact details, in breach of its registration agreement, and
(v) taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trade mark law.”
The Telstra decision has been cited with approval in numerous UDRP panel decisions as the leading case which established the principle that the passive holding of a domain name can constitute bad faith for the purposes of paragraph 4(a)(iii) of the Policy. The Respondent has said that he has used the disputed domain name to set up an email account. This claim of the Respondent’s manner of passive holding of the disputed domain name has to be considered in the light of the other surrounding circumstances: the strong reputation of the Complainant and the fame of the Complainant’s SHIELD and highly-anticipated SHIELD Tablet; the absence of any evidence of actual or contemplated good faith use of the disputed domain name; the Respondent’s apparent failure to provide accurate contact details in breach of the registration agreement; the numerous other domain name registrations the Respondent has which are made up of a combination of a well-known mark and a generic term and which relate to either highly-anticipated or prospective products; the timing of the registration and choice of the string of words making up the disputed domain name; the apparent knowledge the Respondent had of the Complainant and of its trade marks and products.
In light of the above, the Panel cannot conceive of any plausible good faith use of the disputed domain name by the Respondent.
The Panel therefore concludes that paragraph 4(a)(iii) of the Policy has been established by the Complainant. 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 be transferred to the Complainant.
Francine Tan
Sole Panelist
Date: March 9, 2015
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