The Complainant is Arm Limited, United Kingdom, represented by Quinn IP Law, United States of America (“U.S.”).
The Respondent is Tucows Inc. / Thomas Hill, Amarium, South Africa.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 16, 2021. On December 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 17, 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 December 17, 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 amended Complaint on December 22 2021.
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 December 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 18, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 19, 2022.
The Center appointed Tobias Malte Müller as the sole panelist in this matter on January 26, 2022. 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 BackgroundIt results from the Complainant’s undisputed allegations that the Complainant has been providing technology related goods and services since 1990 and has operated as Arm Limited since May 1998. It designs sophisticated electronic products, supplies software, and provides software and consultancy services. Complainant contends that it has sold over 200 billion products under its ARM trademark.
The Complainant is the owner of a large international trademark portfolio for the term ARM and based its Complaint, amongst others, on the U.S. trademark ARM (Reg. No. 2332930, registered on March 21, 2000).
The disputed domain name was first registered on February 19, 2015; it is not clear if the Respondent is the initial registrant or acquired the disputed domain name at a later date. It results from the Complainant’s documented allegations that no content is displayed on the website to which the disputed domain name resolves (“coming soon”) and on the Complainant’s information and belief the disputed domain name has never hosted an active website.
Prior to filing the present UDRP Complaint, the Complainant attempted to contact the Respondent via the Registrar to notify them of the Complainant’s rights and request voluntary transfer of the disputed domain name. No reaction by the Respondent was received.
5. Parties’ Contentions A. ComplainantFirstly, the Complainant points out that the disputed domain name is confusingly similar to the registered mark ARM and legally identical to the Complainant’s corporate name.
Secondly, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. In particular, the Complainant submits that the disputed domain name is passively held and has not been used in connection with a bona fide offering of goods and services for at least two years. Moreover, the Respondent is not commonly known as “ARM”. Finally, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert the public or to tarnish the Complainant’s ARM trademark.
Thirdly, the Complainant contends that the Respondent registered and uses the disputed domain name in bad faith. This passive holding of the domain name constitutes bad faith, taking into consideration the overall context of the Respondent’s behavior as set forth in this Complaint. In addition, the Respondent has registered the disputed domain name to fully incorporate the Complainant’s ARM trademark. Such misappropriation of the Complainant’s ARM trademark creates a likelihood of confusion by suggesting to the public that the disputed domain name relates to the Complainant. Finally, the Respondent’s registration of the disputed domain name appears strongly preparatory for possible use as a “phishing” or “pharming” site. Further factors supporting the finding of good faith are in the Complainant’s view: the Respondent concealing its identity behind a privacy shield and the Respondent’s failure to respond to the Complainant’s demand letter before starting these UDRP proceedings.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsParagraph 15(a) of the Rules instructs this Panel to “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 requires the Complainant to prove each of the following three elements in order to obtain an order that the disputed domain name should be transferred or cancelled:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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.
The Panel is satisfied that the registrant of record for the disputed domain name is the Respondent and will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied.
A. Identical or Confusingly SimilarPursuant to paragraph 4(a)(i) of the Policy, the Complainant must first of all establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to said mark.
The Complainant is the registered owner of a large trademark portfolio, including U.S. trademark ARM (Reg. No. 2332930, registered on March 21, 2000).
The disputed domain name entirely incorporates the ARM trademark. As noted in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7, in cases where a domain name incorporates the entirety of a trademark, or at least where a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for the purposes of UDRP standing. The Panel finds that the trademark ARM is readily recognizable in the disputed domain name.
Furthermore, the addition of the term “limited” to the trademark in the disputed domain name is insufficient to avoid a finding of confusing similarity under the first element of the UDRP. In fact, it is acknowledged amongst UDRP-panels that where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element (see WIPO Overview 3.0, section 1.8). In addition, the term “limited” refers to the company name ARM LIMITED, so that the disputed domain name identically reflects the Complainant’s entire company name.
Hence, this Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s trademark ARM pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate InterestsPursuant to paragraph 4(a)(ii) of the Policy, the Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name. In the Panel’s view, based on the unrebutted allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain name.
No content is displayed on the website to which the disputed domain name resolves. Such use can neither be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name in the sense of paragraph 4(c)(i) and (iii) of the Policy (see, e.g. CCA and B, LLC v. Domain Administrator, Fundacion Privacy Services LTD,WIPO Case No. D2021-1531). In addition, the Respondent’s concealment of its identity behind a privacy service is also taken in consideration, and this Panel finds it most likely that the Respondent selected the disputed domain name with the intention to take advantage of the Complainant’s registered trademarks ARM by registering a domain name consisting of that trademark with the intent to attract Internet users for commercial gain.
Finally, the Panel does not dispose of any elements that could lead the Panel to the conclusion that the Respondent is commonly known by the disputed domain name or that it has acquired trademark rights pursuant to paragraph 4(c)(ii) of the Policy.
It is acknowledged that once the Panel finds such prima facie case is made, the burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. Since the Respondent in the case at hand failed to come forward with any allegations or evidence in this regard, this Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant is therefore deemed to have satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithPursuant to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith.
According to the Complainant’s undisputed allegations, the Respondent does not actively use the disputed domain name. With comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, prior UDRP panels have found that the apparent lack of active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith under the doctrine of passive holding (see , e.g. CCA and B, LLC v. Domain Administrator, Fundacion Privacy Services LTD,WIPO Case No. D2021-1531). The Panel must therefore examine all the circumstances of the case to determine whether the Respondent is acting in bad faith. 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 (see WIPO Overview 3.0, section 3.3).
In the case at hand, the Panel considers the following circumstances surrounding the registration as suggesting that the Respondent was aware that it has no rights or legitimate interests in the disputed domain name, and that the disputed domain name has been registered and is being used in bad faith:
(i) the distinctiveness of the trademark ARM which has existed since 2000;
(ii) the Respondent’s failure to reply to the Complainant’s letter sent to the Registrar;
(iii) the Respondent’s failure to respond to this Complaint; and
(iv) the fact that the Respondent hides its identity behind a privacy shield.
In addition, due to these circumstances this Panel concludes that the Respondent knew or should have known the trademark ARM when it registered the disputed domain name, and that there is no plausible legitimate active use that the Respondent could make of the disputed domain name.
In the light of the above, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant is therefore deemed to also have satisfied the third element, paragraph 4(a)(iii) of the Policy.
7. DecisionFor 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,
Tobias Malte Müller
Sole Panelist
Date: February 11, 2022