The Complainant is NVIDIA Corporation, United States of America (“United States”), represented by SafeNames Ltd., United Kingdom.
The Respondent is Registration Private, Domains By Proxy, LLC, United States / Carolina Rodrigues, Fundacion Comercio Electronico, Panama. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 4, 2020. On November 4, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On November 4, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 10, 2020, 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 amended Complaint on November 12, 2020. 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”). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 24, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 14, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 11, 2021. The Center appointed Geert Glas as the sole panelist in this matter on January 19, 2021. 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 multinational electronics and technology corporation, based in the United States and founded in 1993. The Complainant is known for its graphics processing units (“GPUs”) and mobile processor chipsets which are used to power a broad range of digital products for various consumer markets. One of the Complainant’s popular GPUs is its “Nvidia Geforce” line. The Complainant has a widespread global presence with over 50 offices throughout the Americas, Asia, and Europe. It employs over 15,000 employees and made a revenue of USD 11.7 billion in financial year 2019. The Complainant has a large portfolio of trademark registrations for NVIDIA in the United States and worldwide including: - United States Trademark NVIDIA, registration number 1,895,559, registered on May 23, 1995 in International class 9; In addition, the Complainant holds a number of trademark registrations consisting of NVIDIA and GEFORCE, including: - United States Trademark NVIDIA GEFORCE, registration number 3,111,183, registered on July 4, 2006 in International class 9; Since April 20, 1993, the Complainant owns the domain name The Domain Names Before commencing the present procedure, on February 6, 2020 and May 21, 2020, the Complainant sent two cease and desist letters, one for each Domain Name, as well as a follow-up request to the Respondent asking for the voluntarily transfer of the Domain Names to the Complainant. According to the Complainant, these letters remained unanswered by the Respondent. The Respondent has been involved in numerous past and ongoing UDRP disputes, having been found by many other UDRP panels to have engaged in cybersquatting. The Complainant lists a number of such past disputes in an Annex to the Complaint, for example Virgin Enterprises Limited v. Domains By Proxy, LLC, DomainsByProxy.com / Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2020-1923; Société des Produits Nestlé S.A. v. Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2020-1725; Carvana LLC v. Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2020-2191; and Sbarro Franchise Co. LLC Domains By Proxy, LLC / DomainsByProxy.com / Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2020-1988. On the date of the Decision, this Panel finds that the Domain Name The following is a summary of the Complainant’s contentions. The Complainant requests that the Domain Names be transferred to it on the following grounds: (i) The Complainant contends that the Domain Names are confusingly similar to its trademarks NVIDIA and NVIDIA GEFORCE. The Complainant contends that the Domain Names are confusingly similar to its trademarks, given that they are identical to its trademarks with a slight misspelling in both cases. The Domain Name The Complainant also contends that the generic Top-Level Domain (“gTLD”) “.com” in the Domain Names should be disregarded, as this is a standard registration requirement. (ii) The Complainant contends that the Respondent does not have rights in respect of the Domain Names. The Complainant states that, to the best of its knowledge, the Respondent has not registered any trademarks for NVIDIA or NVIDIA GEFORCE, nor is the Respondent known or has ever been known by any related terms. The Complainant also cannot find any evidence to suggest that the Respondent retains unregistered trademark rights in such terms. The Complainant contends that the Respondent is not affiliated to the Complainant, nor authorized, licensed, or otherwise permitted to use Complainant’s trademarks. Additionally, the Respondent is not commonly known by the Domain Names, and cannot claim a legitimate, noncommercial fair use since consumers are redirected to Complainant’s main website. Lastly, the Complainant holds that the Respondent has not used the Domain Names in connection with a bona fide offering of goods and services but that the Respondent is simply trying to profit from the Complainant’s famous brands, given that the use of the Domain Names has varied between serving as a parking page for PPC links and redirecting Internet users to the Complainant’s main website. The Complainant asserts in this regard that it has established significant goodwill and reputation in the NVIDIA and NVIDIA GEFORCE marks, as it has spent a considerable amount of time, money, and effort promoting, marketing, and using the trademarks to identify and distinguish its services worldwide. (iii) The Complainant contends that the Domain Names were registered and are being used in bad faith. Citing previous UDRP panel decisions, the Complainant submits that the incorporation of a well-known trademark into a domain name may by itself create a presumption of bad faith and that this presumption applies in this case, given that both Domain Names are nearly identical to the Complainant’s trademarks and the considerable goodwill and recognition associated with them. The Complainant also contends that the Respondent’s bad faith is further evidenced by the fact that the Respondent did not reply to the cease and desist letters and follow-up requests sent prior to commencing the proceedings. Lastly, the Complainant argues that the Respondent is using the Domain Names to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s brand, which is caused by redirecting traffic from the Domain Names to the Complainant’s main website. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, the Complainant must prove that: a) the Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and b) the Respondent has no rights or legitimate interests in respect of the Domain Names; and c) the Domain Names have been registered and are being used in bad faith. A. Identical or Confusingly Similar The Complainant has demonstrated that it owns numerous NVIDIA and NVIDIA GEFORCE trademarks throughout the world, and that it has invested considerably in the widespread use, advertising and promoting of these trademarks, including through various social media channels. The Complainant’s rights in these trademarks predate the Respondent’s registration of the Domain Names by 10-20 years. Section 1.9 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states that “[a] domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element”. The registration of domain names incorporating misspellings of a trademark is known as “typosquatting”. Furthermore, section 1.11.1 of WIPO Overview 3.0 states that a gTLD in a domain name, such as “.com”, is viewed as a standard registration requirement and as such has to be disregarded in this assessment. In this case, this Panel finds that the Complainant’s trademarks NVIDIA and NVIDIA GEFORCE are readily recognizable within the Domain Names. This Panel is therefore of the opinion that the misspelling of the Complainant’s trademarks in the Domain Names does not prevent a finding of confusing similarity between the Domain Names and the Complainant’s trademarks. Consequently, the Complainant has proven under the circumstances that the Domain Names are confusingly similar to the trademarks in which it has demonstrable rights and in doing so has satisfied the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, the consensus view is that, once a complainant has made a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy (See e.g. Accor v. Eren Atesmen,WIPO Case No. D2009-0701; Belupo d.d. V. WACHEM d.o.o.,WIPO Case No. D2004-0110; OSRAM GmbH. v. Mohammed Rafi/Domain Admin v. Privacy Protection Service INC d/b/a PrivacyProtect.org,WIPO Case No. D2015-1149; and section 2.1 of WIPO Overview 3.0). In accordance with paragraph 4(a)(ii) of the Policy, the Complainant must demonstrate that the Respondent does not have any rights or legitimate interests in respect of the Domain Name. Paragraph 4(c) of the Policy provides that a respondent may have rights or legitimate interests in the following non-exhaustive circumstances: (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. The Complainant has confirmed that it does not have any connection or affiliation to the Respondent and that it has never licensed or otherwise authorised the use of its trademarks to the Respondent. This Panel also finds that the Domain Names are not used for a legitimate noncommercial or fair use. The Complainant has provided evidence that the Domain Names have been used as both a parking page with PPC links and to redirect to the Complainant’s main website. The fact that the Domain Names redirect Internet users to the “www.nvidia.com” website of the Complainant does not constitute fair use (see e.g. GameStop, Inc. v. Above.com Domain Privacy / Protection Domain,WIPO Case No. D2018-1243). Furthermore, section 2.9 of WIPO Overview 3.0, provides that “parked page[s] comprising PPC links [do] not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users”. This principle has been confirmed by several UDRP panel decisions, including the recent panel decision in Squarespace, Inc. v. April Sea Information Technology Company Ltd. / Nguyễn Văn Lư,WIPO Case No. D2019-3064, where the panel held that “operating PPC parking pages using a distinctive trademark or its intentionally misspelled version in a domain name, and providing connection to goods and/or services competitive with the trademark owner, does not establish bona fide offering of goods or services”. Noting also that the Respondent did not reply to the Complainant’s contentions and did not offer any explanation for its registration and use of the Domain Names, this Panel considers the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Names, as described above, which has not been rebutted by the Respondent. Accordingly, this Panel is satisfied that the Complainant has proven the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith In accordance with paragraph 4(a)(iii) of the Policy, the Complainant must prove that the Domain Names have been registered and are being used in bad faith. Paragraph 4(b) of the Policy provides that the following non-exhaustive circumstances constitute evidence of a respondent’s 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 web site or other online 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. First, with respect to registration, section 3.1.4 of WIPO Overview 3.0 states that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos) to a famous or well-known trademark by an unaffiliated entity can by itself create a presumption of bad faith (See e.g. Caesars World, Inc. v. Forum LLC,WIPO Case No. D20025-0517; Volvo Trademark Holding AB v. Unasi, Inc.,WIPO Case No. D2005-0556; The Gap, Inc. v. Deng Youqian,WIPO Case No. D2009-0113). Here, this Panel is of the opinion that the Domain Names were indeed registered in bad faith. This Panel observes that the Respondent registered the Domain Names tens of years after the Complainant registered its trademarks. In line with previous UDRP decisions (see e.g. NVIDIA Corporation v. Li Hongbo,WIPO Case No. DCO2017-0029; NVIDIA Corporation v. Phil Young / eSupport.com, Inc.,WIPO Case No. D2015-0715; NVIDIA Corporation v. Fundacion Private Whois / PPA Media Services / Ryan G Foo,WIPO Case No. D2013-1361), this Panel finds that Complainant’s trademarks have acquired an extensive and worldwide reputation and have become well-known. The fact that the Respondent chose to register Domain Names with slight misspellings that are otherwise identical to the Complainant’s trademarks, leads this Panel to conclude that the Respondent cannot reasonably claim to have registered the Domain Names without being aware of the Complainant’s NVIDIA and NVIDIA GEFORCE trademarks. Second, as to the use the Respondent is making of the Domain Names, this use consists of redirecting Internet users to the Complainant’s website at “www.nvidia.com”. According to section 3.1.4 of WIPO Overview 3.0, “redirecting a domain name to the complainant’s website can establish bad faith insofar as the respondent retains control over the redirection thus creating a real or implied ongoing threat to the complainant”. This Panel is of the opinion that this is the case in this matter. The Complainant itself holds multiple domain names that redirect to its main website “www.nvidia.com”. Therefore, the conduct of the Respondent gives the impression to Internet users that the Domain Names are associated with the Complainant and, as such, create a risk of confusion (See MySpace, Inc. v. Mari Gomez,WIPO Case No. D2007-1231, and PayPal Inc. v. Jon Shanks,WIPO Case No. D2014-0888). In addition, this Panel notes that the Domain Name The Respondent has indeed opted not to offer any explanation in response to the cease and desist letters and follow-up requests sent by the Complainant nor to the Complaint, which affirms this Panel’s assessment that the decision to register and use the Domain Name was made in bad faith (See e.g. Sanofi v. Domain Administrator, See PrivacyGuardian.org / onlinestore, willam jhonson,WIPO Case No. D2019-2846, and section 3.2.1 of WIPO Overview 3.0). Lastly, this Panel points out that the Respondent has shown a clear pattern of cybersquatting, given its involvement in over 200 UDRP cases. This pattern of abusive registrations is also an indicator of bad faith, pursuant to paragraph 4(b)(ii) of the Policy and section 3.2.1 of WIPO Overview 3.0. In conclusion, this Panel determines that, for all of the above reasons, the Domain Names were registered and used in bad faith. Accordingly, Complainant has satisfied the third element under paragraph 4(a) 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 Domain Names, Geert Glas
- European Union Trade Mark NVIDIA, registration number 000749382, registered on October 14, 1999 in International classes 9, 35, and 42; and
- Canadian Trademark NVIDIA, registration number 0869480, registered on August 29, 2000 in International class 9.
- United States Trademark GEFORCE, registration number 3,145,809, registered on September 19, 2006 in International class 9; and
- European Union Trade Mark NVIDIA GEFORCE, registration number 004094975, registered on January 18, 2006 in International classes 9, 16, and 42.
According to the Complainant, the misspellings of its NVIDIA and NVIDIA GEFORCE marks constitute evidence of typosquatting and are so clearly connected to the Complainant’s brands that they were undoubtedly registered in bad faith. The Complainant cites previous UDRP panel decisions to argue that typosquatting may in itself indicate a registration and use in bad faith.
Sole Panelist
Date: February 2, 2021
Full & Egal Universal Law Academy