1.1 The Complainant is Arm Limited, United Kingdom, represented by Quinn IP Law, United States of America.
1.2 The Respondent is Keith Wilkes, Get Steamed, United Kingdom.
2. The Domain Name and Registrar2.1 The disputed domain name
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 31, 2021 and identified “Get Steamed” as the Respondent. On March 31, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 1, 2021, the Registrar transmitted by email to the Center its verification response identifying “Keith Wilkes” of “Get Steamed” as the registrant of the Domain Name and providing more detailed contact information for the Respondent. The Center sent an email communication to the Complainant on April 26, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint.
3.2 Initially, in an email of April 30, 2021, the Complainant informed the Center that it did not wish to make substantive amendments to the Complaint but requested the “Keith Wilkes” be added as a Respondent.
3.3 By way of an email dated May 2, 2021, the Complainant then sent a supplemental filing to the Center. That filing referred to the decision in Arm Limited v. Privacy Administrator, Anonymize, Inc. / Sarbel Bandak,WIPO Case No. D2021-0594 dated April 19, 2021 in respect of the domain name
3.4 By way of a further email dated May 12, 2021, the Complainant submitted an amended Complaint that incorporated the arguments and material addressed in the May 2, 2021 supplemental filing.
3.5 The Center verified that the Complaint together with the amendment to 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”).
3.6 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 16, 2021.
3.7 On June 4, 2021, the Respondent sent an email to the Center requesting a copy of the Complaint. On June 7, 2021, the Center suspended the proceedings for one month at the Complainant’s request. After several further extensions of that suspension were requested and granted, the Center reinstituted the proceedings on September 14, 2021, setting a new due date for the Response of September 24, 2021.
3.8 No Response was filed by that date, but on September 28, 2021, the Center received an email from the Respondent, which contained the following statement:
“Please let me know the outcome and of course the appeals process.
I have no intention of allowing this to affect my business in an adverse way. I have been generating and supporting my international insurance clients for over six years. With this email address. It has no website.
If anyone were to deserve my domain name it would be an operation that deals in international insurance. ARM group ltd risk management consultants and not someone who is in a completely different industry. I have no intention of moving into the business of the people who want my domain.”
3.9 The Center appointed Matthew S. Harris as the sole panelist in this matter on October 21, 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 Background4.1 The Complainant was incorporated in the United Kingdom in 1990. It was originally a joint venture between Acorn Computers, Apple Computer, and VLSI Technology. Its name is an initialism derived from “advanced RISC machines”.
4.2 The Complainant designs sophisticated electronic products such as computer processors, graphics processors, and associated tools and software. Its processors are used as the central processing unit for most mobile phones including those manufactured by Apple, HTC, Nokia, Sony Ericsson, and Samsung as well as other devices. Over 180 billion products have been sold under the “ARM” brand.
4.3 The Complainant has a very large number of registered trade marks around the world that incorporate or comprise the term “ARM”. They include:
(a) United Kingdom registered trade mark No. UK00002000006, filed on October 31, 1994, and registered on January 29, 1999, for ARM as a word mark in respect of goods and services in classes 9, 16, and 42;
(b) European Union Trade Mark No. 001112986, filed on March 22, 1999, and registered on June 8, 2000, for ARM as a word mark in respect of goods and services in classes 9 and 42.
4.4 The Complainant is the owner of numerous domain names that begin with the term “arm”. However, its primary website operates from the domain name
4.5 The Domain Name was registered on February 5, 2015. It does not appear to have been used for any active website since registration.
4.6 The Respondent appears to be an individual name “Keith Wilkes” located in the United Kingdom. Although the “Organization” field for the Domain Name in its WhoIs record is “Get Steamed”, there is no evidence before the Panel that this is a separate legal entity from Mr. Wilkes. The Panel also notes that there is no company with the name “Get Steamed” is recorded at United Kingdom’s Companies House.
4.7 On March 12, 2021, the Complainant’s lawyers sent a letter to Mesh Digital Limited demanding that it provide details of the contact details for “Get Steamed” and that it forward to “Get Steamed” the Complainant’s demand that the Domain Name be transferred to the Complainant. A similar letter was sent to the Registrar on March 16, 2021.
5. Parties’ Contentions A. Complainant5.1 The Complainant refers to its business and marks. Over 120 registered marks worldwide are listed. It also refers to the lack of use of the Domain Name for any website.
5.2 A large part of the Complaint is then directed to supporting the contention that ARM is a “well known mark” as that term is understood under the WTO and Paris Conventions. Reference in made in this respect to court decisions in Spain and Turkey and a decision in opposition proceedings before the EUIPO.
5.3 The Complainant asserts that the Domain Name is similar to the ARM mark, that the Respondent has no trade mark rights in, and is not known by, the term “Arm” and that the Domain Name has not been used in connection with a bona fide offering of goods and/or services
5.4 The Complainant contends that given the fame of the Complainant’s ARM mark, which predated the registration of the Domain Name, the Respondent has no legitimate reason to have registered a domain name incorporating that term. It maintains that the “[R]espondent could not have innocently registered a domain name incorporating [the] Complainant’s famous mark…” and that registration of the Domain Name comprised a “misappropriation” of that trade mark. It is also claims that the Respondent had constructive knowledge of the Complainant’s mark. It further claims that the Respondent has acted a way that falls within a number of the examples of circumstances evidencing bad faith set out in paragraph 4(b) of the Policy.
5.5 The Complainant also relies upon an alleged failure to respond to the Complainant’s demand letters directed to the Registrar and Mesh Digital Limited.
5.6 Reference is also made in the Complaint (as amended) to the decision of the panel in Arm Limited v. Privacy Administrator, Anonymize, Inc. / Sarbel Bandak,WIPO Case No. D2021-0594. This is said to be “precedential” to the current proceedings and it is claimed that “similar facts and circumstances” exist in both those proceedings and the current proceedings.
B. Respondent5.7 The Respondent submitted no formal Response, but as has already been recorded in the Procedural History section of this decision, sent an email to the Center on September 28, 2021. The content of this email is addressed in greater detail later on in this decision.
6. Discussion and Findings6.1 There are no exceptional circumstances within paragraph 5(f) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a formal Response.
6.2 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects set out in paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
6.3 However, under paragraph 14(b) of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”.
A. Identical or Confusingly Similar6.4 The Complainant has satisfied the Panel that it has a large number of registered trade rights for the term “ARM” as a word mark. In order to satisfy the first element of the Policy it is usually sufficient for a complainant to show that the relevant mark is “recognizable with the disputed domain name”; as to which see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
6.5 The Domain Name takes the form of the letters “arm” in combination with the “.global” new generic Top-Level Domain (“new gTLD”). The Complainant’s mark is, therefore, clearly recognisable in the Domain Name.
6.6 The Complainant has, therefore, satisfied the Panel that the Domain Name is confusing similar to its trade mark and has thereby made out the requirements of paragraph 4(a)(i) of the Policy
B. Rights or Legitimate Interests6.7 The Panel accepts the Complainant’s contention that the Respondent owns no registered rights in the term “arm” and that the Domain Name has not been used for any website since registration. Given this, the Complainant’s contentions that the Domain Name has not been used in connection with a bona fide offering of goods or services and that the Respondent is not commonly known by the domain name, are credible. The Complainant has, therefore, put forward a prima facie case of a lack of legitimate rights or interests.
6.8 The Respondent’s email of September 28, 2021, suggests that the Domain Name has been used in connection with some form of insurance related business. However, for reasons that are dealt with in greater detail in the bad faith section of this decision, the Panel is not prepared to give any evidential weight to the assertions in that email and the explanation offered by the Respondent is inadequate in any event.
6.9 In the circumstances, the Complainant has made out the requirement of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith6.10 The Complainant relies upon the recent decision in Arm Limited v. Privacy Administrator, Anonymize, Inc. / Sarbel Bandak,WIPO Case No. D2021-0594. However, the Panel is unconvinced this decision has the significance that the Complainant contends. The Panel does not doubt that the decision of the distinguished panelist in that case was correct, but the Complainant’s contention that the facts in that case were similar to those now before the Panel, appears to be simply wrong. In Arm Limited v. Privacy Administrator, Anonymize, Inc. / Sarbel Bandak,WIPO Case No. D2021-0594, the domain name in issue combined two different marks of the Complainant, and there was evidence of the respondent offering to sell the domain name to the Complainant. Neither of these facts are present in the case of the Domain Name.
6.11 Further, the Complainant’s claims of precedential value of this decision also appear to misunderstand the way that the UDRP operates. In this respect, the Panel refers to section 4.1 of the WIPO Overview 3.0 and the more detailed discussion of precedent in UDRP proceedings in Ritzio Purchase Limited v. Domain Admin, PrivacyProtect.org / Timur Ziganshin / Lianna Tall, Escave Ltd / Private Whois, Global Domain Privacy Services Inc / Moniker Privacy Services,WIPO Case No. D2015-0875.
6.12 That said, what the panel accepted in Arm Limited v. Privacy Administrator, Anonymize, Inc. / Sarbel Bandak,WIPO Case No. D2021-0594, is that the Complainant’s ARM mark is very well known. The Complainant has also independently persuaded the Panel, that this is so. The Panel further accepts that the ARM mark is one which the Respondent would be likely to have been aware of prior to registration of the Domain Name.
6.13 Demonstrating mere knowledge of another’s mark prior to registration of a domain name does not by itself demonstrate that this domain name was registration and used in and faith. In broad terms the Complainant also needs to show when it comes to bad faith that it is more likely than not that the Domain Name was registered and held to take unfair advantage of the Complainant’s mark (see for example Match.com, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230).
6.14 “Arm” is an ordinary English word. It is not impossible that this term that might legitimately be adopted by a person or business in a domain name because of that meaning, or even as a short acronym for a business unrelated to the Complainant. Nevertheless, the Panel ultimately accepts that the Complainant has just about demonstrated that the Domain Name was registered and held with the intention of taking unfair advantage of the Complainant’s mark. The reasons for this are as follows:
- The Domain Name comprises not just the term “arm” but the “.global” new gTLD. As such the Domain Name inherently sends the message that this is the domain name of a business or entity with the name “Arm”, which has, or least has aspirations, to be a global business. The only business of which the Panel is aware that obviously fits that description is the Complainant.
- With this in mind, the Respondent’s choice of a domain name that comprises the terms “arm” and “.global” cries out for an explanation. This is particularly so where there has never been an active website operating from the Domain Name promoting any business or activity of the Respondent that also uses the ARM name. In the absence of such an explanation and any evidence in support of the same, the Panel accepts it is more likely than not that the Domain Name was registered and held in order to take unfair advantage in some manner of the Complainant’s name and marks.
6.15 An explanation of sorts in relation to the Domain Name is to be found in the Respondent’s email of September 28, 2021. However, this email is problematic on a number of levels and the Panel is not prepared to give any evidential weight to the claims contained therein.
6.16 First, the email was not a formal response that complies with the requirements of paragraph 5(c) of the Rules. It does not for example include the certificate of truth required by paragraph 5(c)(viii) of the Rules. It was also sent after the time that a formal response was due. These failures, and in particular the lack of a certificate of truth, is not a technical or trivial point. The importance of the certificate in the context of an administrative procedure without formal rules of evidence was addressed in some detail by this Panel in Privatbrauerei Eichbaum GmbH & Co. KG v. Hamit Karaca,WIPO Case No. D2010-0258. The lack of such certificate means that the Panel would be justified in disregarding this email entirely.
6.17 Second, the assertion in the email that that the Domain Name has been used as an email address for some form of insurance business, is no more than an assertion. The Respondent has not supplied any evidence as to the existence of this business, the use of the term “Arm” in connection with that business or the use of the Domain Name for emails in respect of that business. See also the comments about unsupported assertions contained in an “informal response” in the final paragraph of section 4.3 of the WIPO Overview 3.0.
6.18 Third, and most fundamentally, no explanation is offered in the email as to why the letters “arm” were chosen either for the Domain Name or any business controlled by the Respondent. The Respondent appears to contend that there is a separate insurance business that exists that also uses the term “arm”. However, once again no evidence is provided to support this claim. Further, even if true it misses the point. The crucial question is not whether some third party might have legitimately used this term in a domain name. It is why the Respondent choose that term. The email does not address this.
6.19 In the circumstances, the Panel concludes that the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy.
7. Decision7.1 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,
Matthew S. Harris
Sole Panelist
Date: November 4, 2011