The Complainant is Arm Limited, United Kingdom, represented by Quinn IP Law, United States of America (“United States”).
The Respondent is George Pachter, Technology Data Exchange, Inc., United States. 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 April 1, 2021, 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 which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 12, 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 12, 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 13, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 3, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 6, 2021. On May 2, 2021, the Center received a Supplemental Filing from the Complainant. The Center appointed Luca Barbero as the sole panelist in this matter on May 17, 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 world-renowned producer of multimedia, physical IP, System IP, Security and subsystems solutions as well as CPU and NPU processors. Its CPU processors in particular, are used for many mobile telephones, including those manufactured by Apple, HTC, Nokia, Sony Ericsson, and Samsung, as well as for many other, widely used, devices including laptops, tablets, televisions, and other electronic products. The Complainant has sold over 180 billion products under its ARM brand, and its products and services reach over 70 percent of the world’s population. The Complainant is the owner of trademark registrations for ARM in several countries, including the following: - United Kingdom trademark No. UK00002000006 for ARM (word mark), filed on October 31, 1994 and registered on January 29, 1999, in classes 9, 16, and 42; - European Union Trade Mark No. 001112986 for ARM (word mark), filed on March 22, 1999 and registered on June 8, 2000, in classes 9 and 42; - United States trademark registration No. 2397339 for ARM (word mark), filed on May 24, 1999 and registered on October 24, 2000 in International class 42; - United States trademark registration No. 2332930 for ARM (word mark), filed on May 24, 1999 and registered on March 21, 2000, in International class 9. The Complainant is also the owner, amongst others, of the domain name The disputed domain name The Complainant contends that disputed domain name is confusingly similar to the trademark ARM in which the Complainant has rights as it reproduces the trademark in its entirety with the mere addition of the descriptive term “chips” and the generic Top-Level Domain (“gTLD”) “.com”. The Complainant highlights that its processors, also referred to as microprocessors, microchips, or “chips”, are used in the main Central Processing Unit (CPU) for computers, mobile telephones, tablets, televisions and other electronic products and states that, since the Respondent makes no attempt to distinguish itself in any way from the Complainant or from the Complainant’s United States registered trademarks, the addition of the word “chips” only serves to create more of an association with the Complainant, confusing the public and leading users to believe the disputed domain name belongs to the Complainant and not the Respondent. With reference to rights or legitimate interests in respect of the disputed domain name, the Complainant states that the Respondent is not commonly known by the disputed domain name, is in no way affiliated with, or licensed by, the Complainant, and appears to have never registered any trademark using the terms “arm” or “arm chips”. Moreover, the Complainant asserts that the Respondent is not making a legitimate use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark ARM, nor has it been using the disputed domain name in connection with a bona fide offering of goods or services. With reference to the circumstances evidencing bad faith, the Complainant indicates that, given the distinctiveness of the Complainant’s trademark, the Respondent could not have registered the disputed domain name without the Complainant in mind, especially considering the numerous registrations for the Complainant’s trademarks. In addition, the Complainant highlights that the Respondent chose to register the disputed domain name incorporating the Complainant’s ARM mark in its entirety, along with the term “chips”, which is a word associated with the Complainant’s goods, services, and technical industry. According to the Complainant, further bad faith can be inferred by the Respondent’s failure to respond to the Complainant’s demand letter and the passive holding of the disputed domain name after receipt of the Complainant’s demand letter. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following: (i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Panel finds that the Complainant has established rights over the trademark ARM based on the trademark registrations cited under section 4 above and the related trademark certificates submitted as annex V to the Complaint. It is well accepted that the first element functions primarily as a standing requirement, and that the threshold test for confusing similarity involves a reasoned but relatively straightforward comparison between a complainant’s trademark and the disputed domain name to assess whether the trademark is recognizable within the disputed domain name (section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Moreover, where the relevant trademark is recognizable within the disputed domain names, the addition of generic or descriptive terms, or even letters or numbers, does not prevent a finding of confusing similarity under the first element (sections 1.8 and 1.9 of the WIPO Overview 3.0). The disputed domain name reproduces the trademark ARM in combination with the descriptive term “chips” and the gTLD “.com”, which can be disregarded being a mere technical requirement for registration. Therefore, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to a trademark in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following: “(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.” In the case at hand, by not submitting a Response, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name. Moreover, it has been repeatedly stated that when a respondent does not avail itself of its right to respond to a complaint, it can be assumed in appropriate circumstances that the respondent has no rights or legitimate interests in the disputed domain name. The Panel notes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademarks. Moreover, there is no element from which the Panel could infer a Respondent’s right over the disputed domain name, or that the Respondent, whose name disclosed in the Registrar’s WhoIs records for the disputed domain name is George Pachter, Technology Data Exchange, Inc., might be commonly known by the disputed domain name. The Panel notes that the disputed domain name is currently pointed to an inactive website and is thus passively held. In light of the Respondent’s default, the Panel shares the view held in Teachers Insurance and Annuity Association of America v. Wreaks Communications Group,WIPO Case No. D2006-0483, where the Panel found that “[a]bsent some contrary evidence from Respondent, passive holding of a Domain Name does not constitute ‘legitimate non-commercial or fair use’”. Moreover, the Panel finds that the prior use of the disputed domain name made by the Respondent in connection with a webpage displaying sponsored links advertising third parties in the electronic industry – as shown in the screenshot dated March 31, 2021 submitted by the Complainant as Annex VIII to the Complaint – does not amount to a bona fide offering of goods or services or to a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark. Therefore, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in the disputed domain name according to paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy requires that the Complainant prove that the disputed domain name was registered and is being used by the Respondent in bad faith. As to bad faith at the time of the registration, in light of the prior registration and use of the trademark ARM in connection with the Complainant’s electronic products and services in several countries, including in the United States, where the Respondent is based, and considering that the disputed domain name combines such trademark with the descriptive term “chips”, which clearly refers to products manufactured and traded by the Complainant under the trademark ARM, the Panel finds that the Respondent was very likely aware of the Complainant’s trademark. The Panel, in accordance with previous decisions issued under the Policy, is of the opinion that knowledge of the Complainant’s trademark at the time of the registration of the disputed domain name is to be considered in drawing an inference of bad faith. The disputed domain name, at the time of this Decision, does not resolve to an active website. However, it is well-established that passive holding of a domain name could amount to bad faith under certain circumstances as decided, i.a., in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. According to section 3.3 of the WIPO Overview 3.0, “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put”. In the case at hand, in view of i) the distinctiveness and reputation of the Complainant’s trademark ARM in its sector; ii) the Respondent’s registration of a domain name confusingly similar to the Complainant’s prior trademark and clearly referring to it, given the combination of the trademark with the descriptive word “chips”; iii) the absence of any documented rights or legitimate interests of the Respondent in the disputed domain name; iv) the Respondent’s failure to respond to the Complainant’s cease and desist letter and to the Complaint; v) the prior use of the disputed domain name made by the Respondent in connection with sponsored links related to third-party websites dedicated to electronic products; and vi) the implausibility of any good faith use to which the disputed domain name may be put, the Panel finds that the current passive holding of the disputed domain name by the Respondent does not prevent a finding of bad faith registration and use. Therefore, the Panel finds that the Complainant has also proven that the Respondent registered and has been using the disputed domain name in bad faith according to paragraph 4(a)(iii) 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 Luca Barbero
Sole Panelist
Date: May 31, 2021
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