The Complainant is Arm Limited, United Kingdom, represented by Quinn IP Law, United States of America (“United States”).
The Respondent is Ali Esmaelnejad, nicagent.com, Hungary, self-represented. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 1, 2021. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 2, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name that differed from the named Respondent and contact information in the Complaint. The Registrar confirmed that the language of the Registration Agreement is English. The Center sent an email communication to the Complainant on April 6, 2021, 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 amendment to the Complaint on April 9, 2021. 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”). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 9, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 29, 2021. The Respondent sent an informal email communication to the Center on April 6, 2021, and filed the Response on April 8, 2021. The Complainant made an unsolicited supplemental filing on May 2, 2021. The Center appointed Matthew Kennedy as the sole panelist in this matter on May 11, 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 designs processors, also known as microprocessors, microchips or “chips”, that are used as the main central processing unit for mobile telephones and other electronic and digital devices, including laptops, tablets and televisions. The Complainant was originally founded as “Advanced RISC Machines” but today is known simply as “Arm”. It has offices around the world, including one in Hungary. Over 180 billion Arm-based chips have been shipped. The Complainant is the owner of multiple trademark registrations for ARM in multiple jurisdictions, including the following, which all remain current: - United Kingdom trademark registration number UK00002000006, registered on January 29, 1999, and specifying semiconductor chips and other goods and services in classes 9, 16 and 42; - United States trademark registration number 2332930, registered on March 21, 2000, with a claim of first use in commerce on June 19, 1992, specifying microprocessors and other goods in class 9; and - European Union trademark registration number 001112986, registered on June 8, 2000, specifying microprocessors and other goods and services in classes 9 and 42. In 2016, the Trademark Court of the European Union found the Complainant’s ARM mark to be a well-known mark in the sector of new technologies given that the Complainant is a world leader in the area of microprocessors integrated into electronic and digital devices.1 The Respondent Ali Esmaelnejad is an individual and NicAgent.com is a company that provides web hosting services. The disputed domain name was acquired by the Respondent on October 15, 2019. It formerly redirected to another online location that displayed a message in English advising Internet users that a particular software program might be out of date and inviting them to install a software update. At the time of this Decision, the disputed domain name no longer resolves to any active website; rather, it is passively held. In March 2021, shortly prior to the initiation of this dispute, the Complainant sent a cease-and-desist letter to the Respondent. A person identified only as “SR” replied using the Respondent’s contact email address, asserting that “armak chips” was the name of a chips company and following up with further statements later contained in the Response, which is summarized in section 5B below. 5. Parties’ Contentions A. Complainant The disputed domain name is confusingly similar to the Complainant’s ARM trademark. The disputed domain name incorporates the ARM mark in its entirety. The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not commonly known as “Arm”. The Respondent is not affiliated with, or licensed by, the Complainant. The disputed domain name was registered, and is being used in bad faith. Given the distinctiveness, fame, and long history of use of the Complainant’s ARM marks, the public is likely to be confused, misled, and deceived as to the source of the disputed domain name and are likely to be misdirected away from the Complainant when, in fact, the public is actually searching for the Complainant. The Respondent chose to register the disputed domain name incorporating the Complainant’s ARM mark in its entirety along with the word “chips”, a well-known word associated with the Complainant’s goods, services, and technical industry. The Respondent’s bad faith is evident in its attempt to install malware on user devices. B. Respondent آرمک is the Persian name of a [potato] chips company and not related to the Complainant. The company’s name is “Armak” as a whole, not “Arm”. The Complainant cannot select letters from a sentence and complain about them unless it has rights to the whole word. If the Complainant has registered the trademark ARMAK it should provide evidence. Armak is a transliteration of آرمک which, in Persian, means gray. 6. Discussion and Findings 6.1 Supplemental Filing The Complainant made an unsolicited supplemental filing prior to the appointment of the Panel. This supplemental filing attached the decision of a panel in a concurrent proceeding under the Policy concerning the Complainant. See Arm Limited v. Privacy Administrator, Anonymize, Inc. / Sarbel Bandak,WIPO Case No. D2021-0594. The Complainant submits that the facts in that case were similar to those in the present case. Paragraph 10(d) of the Rules provides that “[t]he Panel shall determine the admissibility, relevance, materiality and weight of the evidence”. Although paragraph 12 of the Rules empowers the Panel, in its sole discretion, to request further statements or documents from either of the Parties, this does not preclude the Panel from accepting unsolicited filings. See Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner,WIPO Case No. D2001-1447. The Panel notes that the decision in the other proceeding was issued on April 19, 2021, and did not exist at the time of the filing of the Complaint in the present proceeding. However, the other proceeding did not concern the Respondent and, in the Panel’s view, the facts of the two cases bear little similarity to each other. Accordingly, the Panel declines to admit the Complainant’s supplemental filing. 6.2 Substantive Issues Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements: (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 has been registered and is being used in bad faith. A. Identical or Confusingly Similar Based on the evidence presented, the Panel finds that the Complainant has rights in the ARM mark. The disputed domain name wholly incorporates the ARM mark as its initial element. The disputed domain name also includes the letters “ak” and the word “chips”. The Panel does not consider that either of these elements avoids a finding of confusing similarity because the Complainant’s trademark remains clearly recognizable within the disputed domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The Respondent points out that the Complainant does not have rights to a trademark for ARMAK. The Panel considers this issue below in relation to the third element of paragraph 4(a) of the Policy. The only other additional element in the disputed domain name is a generic Top-Level Domain (“gTLD”) suffix (“.com”). As a mere technical requirement of registration, this element is generally disregarded in the comparison between a domain name and a trademark for the purposes of the first element of paragraph 4(a) of the Policy, unless it has some impact on the comparison, which is not the case here. See WIPO Overview 3.0, section 1.11. Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy: (i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or (ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or (iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The disputed domain name wholly incorporates the Complainant’s ARM trademark as its initial element. The Complainant submits that the Respondent is not affiliated with, or licensed by, the Complainant. With respect to the first and third circumstances, the disputed domain name formerly redirected to another online location that displayed a message inviting Internet users to install a so-called software update. The message was deceptive and the software was likely malicious. No products or services were offered for sale. At the time of this Decision, the disputed domain name no longer resolves to any active website; rather, it is passively held. The Panel does not consider either use to be a bona fide offering of products or services. Nor is either use a legitimate noncommercial or fair use of the disputed domain name. With respect to the second circumstance, the Respondent individual is identified in the Registrar’s WhoIs database as “Ali Esmaelnejad” and the Respondent’s organization as “nicagent.com”, not “armakchips” or even “Armak Chips”. There is no evidence that the Respondent has been commonly known by the disputed domain name. In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Turning to the Respondent’s arguments, he submits that “Armak” is a transliteration of a Persian potato chips company name. A simple Internet search discloses that Armak (including in Latin characters) is indeed a brand of potato chips produced in Iran. However, nothing indicates that the Respondent is the Armak chips company, that he holds any trademark rights to Armak, or that he has been using the disputed domain name in any way in connection with that brand. The Respondent merely submitted a photograph of potato chips that did not appear on any website associated with the disputed domain name and, moreover, did not identify the Armak brand. The Respondent also submits that Armak is a transliteration of a Persian word meaning “gray”. It suffices for the Panel to note that there is no evidence that the Respondent has been using the disputed domain name in connection with that alleged meaning. Accordingly, the Panel finds that the Respondent has failed to rebut the Complainant’s prima facie case. Therefore, based on the record of this proceeding, the Panel finds that the Complainant has satisfied the second element in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, but these circumstances are not exhaustive. The disputed domain name was acquired by the Respondent in 2019, many years after the Complainant registered its ARM trademark, including in the European Union, where the Respondent is based. The disputed domain name wholly incorporates the ARM mark as its initial element, combining it with the letters “ak” and the word “chips”, which describes the semiconductor chips designed by the Complainant. The Complainant offers no explanation for the inclusion of the letters “ak” after the ARM mark in the disputed domain name. The Respondent points out that the disputed domain name incorporates “Armak” in full and combines it with the word “chips”, which describes the potato chips marketed under the Armak brand in Iran and possibly elsewhere. However, the Respondent offers no explanation for his choice to reflect the word “chips” in English nor does he offer any evidence at all that would connect him or the disputed domain name to the Armak brand, which might confirm that his choice of the disputed domain name was based on the brand of potato chip and not the ARM trademark. Given the Complainant’s position as a world leader in the field of semiconductor chips, and the well-known character of its ARM mark in that field in the European Union, where the Respondent is based, since at least 2016, the Panel finds it more likely than not on the basis of the record in this proceeding that the Respondent had the Complainant’s ARM mark in mind when he registered the disputed domain name. The Respondent formerly used the disputed domain name to redirect to another online location, which invited Internet users to install software that was likely malicious. The Respondent did not address these circumstances in his Response. The Panel recalls that the use of a domain name to distribute deceptive information and malware constitutes bad faith. See WIPO Overview 3.0, section 3.4 and, for example, Fenix International Limited v. Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2020-3447. Given these circumstances, the Panel considers that the disputed domain name is being used in bad faith. The Panel notes that the use of the disputed domain name has recently changed, and that it no longer resolves to an active website. This change of use does not alter the Panel’s conclusion and may in fact constitute a further indication of bad faith. Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in 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 disputed domain name This transfer is ordered without prejudice to any rights of a third party in an ARMAK trademark for potato chips. Matthew Kennedy 1 See ARM Limited v Pelaez Catala and IMASD Tecnología Española S.L, Commercial Court No. 2 at Alicante, Trademark Court of the European Union, Decision No. 0000134/2016, upheld by the Court of Appeal of Alicante – Eighth District, Trademark Court of the European Union, Court judgement No. 15/17 (January 26, 2017).
Sole Panelist
Date: May 18, 2021
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