Complainant is Arm Limited, United Kingdom (hereinafter “UK”), represented by Quinn IP Law, United States of America (hereinafter “U.S.”).
Respondent is 李琛 (Lichen), China, self-represented.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint in English 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 Complainant on December 20, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint in English on December 23, 2021.
On December 20, 2021, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. Complainant confirmed the request that English be the language of the proceeding on December 23, 2021. Respondent requested that Chinese be the language of the proceeding on January 17, 2022, and January 18, 2022.
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 Respondent in English and Chinese of the Complaint, and the proceedings commenced on January 10, 2022. In accordance with the Rules, paragraph 5, the due date for Response was January 30, 2022. On January 18, 2022, Respondent requested to extend the response due date, the Center in accordance with paragraph 5(e) of the Rules exceptionally grants the extension of the response until February 9, 2022. The Response in Chinese was filed with the Center on January 23, 2022. On January 28, 2022, Complainant filed a supplemental filing in English to the Center.
The Center appointed Yijun Tian as the sole panelist in this matter on February 28, 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 Background A. ComplainantComplainant, Arm Limited, is a company incorporated in the UK. It is a leading company providing technology related goods and services since 1990. Complainant designs sophisticated electronic products, including computer processors, graphics processors, digital memories and peripheral hardware and supplies software, development tools for computer hardware, and provides software and consultancy services. It has sold over 200 billion products under its ARM brand, and its products and services reach over 70 percent of the world’s population. Complainant started operating offices in China in 2002, and has offices in three major cities: Shanghai, Beijing, and Shenzhen. As of 2018, approximately 20 percent of Complainant’s revenue from its semiconductor IP technology business came from China. China is (and remains) a key business territory for Complainant. Complainant launched a Chinese joint venture company called Arm China in June 2018.
Complainant is the exclusive owner of numerous ARM trademarks worldwide, including the U.S. Trademark registered on March 21, 2000 (the U.S. registration number 2332930), and the Chinese Trademark registered on October 28, 2004 (the Chinese Trademark registration number 2023574).
B. RespondentRespondent is 李琛 (Lichen), China.
C. The Disputed Domain NameThe disputed domain name
Complainant contends that the disputed domain name confusingly similar to Complainant’s ARM trademarks. The disputed domain name incorporates the ARM mark in its entirety with the addition of the a technical term or acronym “gpu” and the generic Top-Level Domain (“gTLD”) “.com”. The addition of the term “gpu” is not sufficient to eliminate the confusing similarity. The gTLD “.com” is irrelevant when assessing whether a domain name is identical or confusingly similar to a mark as it is a functional element.
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant contends that the disputed domain name was registered and is being used in bad faith.
Complainant requests that the disputed domain name be transferred to it.
B. RespondentRespondent contends the disputed domain name is not composed of the two words (i.e. “arm” and “gpu”) as understood by Complainant. Its original meaning is composed of “ar” and “mgpu”. The term “ar” is the abbreviation of the English words “augmented reality”, and “mgpu” is the abbreviation of the term “multi GPU”.
Respondent contends he does not intend to mislead consumers, and he does not use the disputed domain name for commercial applications.
Respondent contends he registered the disputed domain name for “ar”, not “arm”. The disputed domain name has been registered for four years, but it has not been sold or transferred for profits.
6. Discussion and Findings 6.1. Language of the ProceedingThe language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11(a), in the absence of an agreement between the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceeding should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for following reasons:
(a) The disputed domain name comprises Latin script and the English language words “arm” and “gpu” that form the entirety of Respondent’s domain name and, for “arm”, part Complainant’s company name.
(b) Complainant’s business is conducted primarily in English.
(c) Complainant’s international trademark rights in the well-known ARM trademark are in English, as well as a substantial number of ARM-formative domain names.
(d) Complainant would be put to great expense and inconvenience to have to translate this Complaint and its evidence which would cause undue delay.
Respondent sent email communications in Chinese, and has objected to English being the language of proceeding, and requested that Chinese be the language of the proceeding for following reasons:
(a) The disputed domain name is registered and used in China.
(b) It is unfair and inconvenient for Respondent for understand since the Complaint was written in English, and a translation has not been provided.
Paragraph 11(a) of the Rules allows the panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd.,
WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin,
WIPO Case No. D2006-0593). The language finally decided by the panel for the proceeding should not be prejudicial to either one of the parties in its abilities to articulate the arguments for the case (Groupe Auchan v. xmxzl,
WIPO Case No. DCC2006-0004). Section 4.5.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) further states:
“Noting the aim of conducting the proceedings with due expedition, paragraph 10 of the UDRP Rules vests a panel with authority to conduct the proceedings in a manner it considers appropriate while also ensuring both that the parties are treated with equality, and that each party is given a fair opportunity to present its case.
Against this background, panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. Such scenarios include (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant’s mark, (iii) any content on the webpage under the disputed domain name, (iv) prior cases involving the respondent in a particular language, (v) prior correspondence between the parties, (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint, (vii) evidence of other respondent-controlled domain names registered, used, or corresponding to a particular language, (viii) in cases involving multiple domain names, the use of a particular language agreement for some (but not all) of the disputed domain names, (ix) currencies accepted on the webpage under the disputed domain name, or (x) other indicia tending to show that it would not be unfair to proceed in a language other than that of the registration agreement.” (See also L’Oreal S.A. v. MUNHYUNJA,
WIPO Case No. D2003-0585).
The Panel has taken into consideration the facts that Complainant is a company from the UK, and Complainant would be burdened by working in Chinese as the language of the proceeding. The Panel has also taken into consideration the fact that the disputed domain name includes Latin characters and particularly English words (“arm”, and “gpu”), and is registered in the gTLD space comprising of the Latin characters “.com” (Compagnie Gervais Danone v. Xiaole Zhang,
WIPO Case No. D2008-1047).
On the record, Respondent appears to be a Chinese resident and is thus presumably not a native English speaker. However, considering the following, the Panel has decided that English should be the language of the proceeding: (a) the disputed domain name includes Latin characters and English words, rather than mere Chinese scripts; (b) Respondent was able to reply to the Complaint, which was prepared in English; (c) the Center has notified Respondent of the proceeding in both Chinese and English; and (d) the Center informed the Parties, in English and Chinese, that it would accept a Response in either English or Chinese.
Accordingly, the Panel finds the choice of English as the language of the present proceeding is fair to both Parties and is not prejudicial to either one of the Parties in its ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English. Nevertheless, the Panel has accepted and considered the Respondent’s submissions in Chinese, as submitted to the Center.
6.2. Supplemental FillingIn general, unsolicited supplemental filings are generally discouraged, unless specifically requested by the panel (see WIPO Overview 3.0, section 4.6). In the Panel’s view, the information and arguments set forth in the Supplemental Filing appear to be more of a rebuttal to the Response, rather than an “exceptional” circumstance as set forth in section 4.6 of the WIPO Overview 3.0. Therefore, the Panel shall not consider it in this Decision. In any event, the Panel notes that had the Supplemental Filing been considered, it would not alter the outcome of the proceeding.
6.3. Substantive IssuesParagraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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.
On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a)-(c)), the Panel concludes as follows:
A. Identical or Confusingly SimilarThe Panel finds that Complainant has rights in the ARM marks acquired through registration. The ARM marks have been registered in the U.S. since 2000, and registered in China since 2004. The disputed domain name comprises the ARM mark in its entirety. The disputed domain name only differs from Complainant’s trademark by the term “gpu”, and the gTLD “.com”. This does not prevent a finding of confusing similarity between Complainant’s registered trademark and the disputed domain name.
Previous UDRP panels have consistently held that a domain name is identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,
WIPO Case No. D2000-0662).
Further, in relation to the gTLD, section 1.11.1 of the WIPO Overview 3.0 states: “The applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.”
The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to Respondent of the dispute, the use by Respondent 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) Respondent has been commonly known by the disputed domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) 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 Complainant’s trademarks.
The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to respondent to rebut complainant’s contentions. If respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai,
WIPO Case No. D2008-0441; WIPO Overview 3.0, section 2.1, and cases cited therein).
Complainant has rights in the ARM marks in the U.S. since 2000 and in China since 2004, which precede Respondent’s registration of the disputed domain name in 2017. According to the Complaint, Complainant is a leading company providing technology related goods and services since 1990. It has sold over 200 billion products under its ARM brand, and its products and services reach over 70 percent of the world’s population.
Moreover, Respondent is not an authorized dealer of ARM branded products or services, and Respondent has not used the disputed domain name in connection with an active website. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company,
WIPO Case No. D2009-0610; Do The Hustle, LLC v. Tropic Web,
WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,
WIPO Case No. D2003-0455).
Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:
(a) There has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate use of the disputed domain name. There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the ARM marks or to apply for or use any domain name incorporating the ARM marks. Respondent asserts the disputed domain name is a grouping of English language characters “ar” for “augmented reality” and “mgpu” for “multiple graphics processing unit” rather than a grouping of “arm” and “gpu”. However, Respondent fails to present any evidence that Respondent has ever used the technical terms “ar” and/or “mgpu” or any technology associated with these terms in connection with the disputed domain name or content presented on a website at the disputed domain name;
(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain name. Respondent registered the disputed domain name in 2017, long after the ARM marks became internationally known. The disputed domain name is identical or confusingly similar to Complainant’s ARM marks;
(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. The website resolved by the disputed domain name is currently inactive.
The Panel finds that Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) Respondent has registered the disputed 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 Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on the website or location.
The Panel concludes that upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and used the disputed domain name in bad faith.
(a) Registered in Bad Faith
The Panel finds that Complainant has a widespread reputation in the ARM marks with regard to its products or services. Complainant has registered its ARM marks in the U.S. since 2000, and in China since 2004. As introduced above, it has sold over 200 billion products under its Arm brand, and its products and services reach over 70 percent of the world’s population. Complainant started operating offices in China in 2002, and has offices in three major cities: Shanghai, Beijing, and Shenzhen. As of 2018, approximately 20% of Complainant’s revenue from its semiconductor IP technology business came from China. China is (and remains) a key business territory for Complainant. Complainant launched a Chinese joint venture company called Arm China in June 2018. Therefore, it is not conceivable that Respondent would not have had actual notice of Complainant’s trademark rights at the time of the registration of the disputed domain name. Moreover, Respondent indicates in the Response that he operates in the display technology field, which tends to suggest an awareness of Complainant and the ARM mark, and further does not deny having knowledge of Complainant or the ARM mark when registering the disputed domain name.
Respondent has put forward several claims indicating a lack of bad faith, however, taking into consideration all the circumstances and noting the lack of clear supporting evidence from Respondent, the Panel finds these claims to be unpersuasive.
The Panel therefore finds it more likely than not that Respondent was targeting the widely-known ARM mark when registering the confusingly similar disputed domain name, incorporating the ARM mark and a related descriptive term.
Thus, the Panel concludes that the disputed domain name was registered in bad faith.
(b) Used in Bad Faith
The disputed domain name is currently inactive. In terms of inactive domain names, section 3.3 of the WIPO Overview 3.0 provides: “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.”
Section 3.3 of the WIPO Overview 3.0 further states:
“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.”
As discussed above, Complainant’s ARM marks are widely known. Taking into account all the circumstances of this case, the Panel concludes that the current inactive use of the disputed domain name by Respondent is in bad faith also.
In summary, Respondent, by choosing to register and use the disputed domain name, which is confusingly similar to Complainant’s well-known trademarks, intended to disrupt Complainant’s business. In the absence of convincing evidence and rebuttal to the contrary from Respondent, the choice of the disputed domain name and the conduct of Respondent are indicative of registration and use of the disputed domain name in bad faith.
The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy.
7. DecisionFor all 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
Yijun Tian
Sole Panelist
Dated: March 24, 2022