The Complainant is Arm Limited, United Kingdom, represented by Quinn IP Law, United States of America.
The Respondent is James H. Park, Republic of Korea.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2021. On December 17, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 20, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Complainant filed an amended Complaint on December 31, 2021, and a second amended Complaint on January 10, 2022.
The Center verified that 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 January 13, 2022. In accordance with the Rules, paragraph 5, the due date for Response was February 2, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 3, 2022.
The Center appointed Nayiri Boghossian as the sole panelist in this matter on February 17, 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 BackgroundThe Complainant provides technology related goods or services since 1990. The Complainant has registered more than 120 trademark registrations for ARM and more than 190 domain names containing its trademark ARM. The Complainant owns many trademark registrations such as:
- Republic of Korea trademark registration No. 91621, registered on October 8, 2003;
- United Kingdom trademark registration No. UK00002000006, registered on January 29, 1999; and
- European Union trademark registration No. 001112986, registered on June 8, 2000.
The disputed domain name was registered on March 13, 2019, and resolves to a website which contains sponsored pay-per-click (“PPC”) links and states that the disputed domain name is offered for sale.
5. Parties’ Contentions A. ComplainantThe Complainant contends that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The disputed domain name contains the term “tech”. The term “tech” is short for technology and is commonly used by the Complainant. This demonstrates that the Respondent knew of the Complainant. Panels have found a domain name to be identical or confusingly similar when it includes the trademark of a complainant regardless of other terms used. The disputed domain name incorporates the Complainant’s trademark ARM in its entirety. The addition of the term “tech” increases the likelihood of confusion. The Complainant’s trademark ARM has been recognized as well known by various courts around the world.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not commonly known by the disputed domain name. The use of the disputed domain name cannot be considered a bona fide offering of goods or services. The Respondent is not affiliated with the Complainant nor licensed by the Complainant. The Respondent is not making a noncommercial/fair use of the disputed domain name.
The Complainant contends that the disputed domain name was registered and is being used in bad faith.
The Respondent did not respond to the Complainant’s demand letter sent on June 24, 2021, and the contact details of the Respondent are not available in the WhoIs. The Respondent is attempting to attract Internet users by creating a likelihood of confusion with the Complainant and is trading off the goodwill of the Complainant’s trademark. The trademark ARM is a famous trademark. The disputed domain name resolves to a website which is a placeholder page incorporating PPC links. The Respondent knew of the Complainant and its trademark. The Respondent registered the disputed domain name to intentionally attract Internet users. The registration of the disputed domain name was in 2019, while the Complainant has used trademark since the 1990s. The Respondent is likely to use the disputed domain name for phishing and pharming purposes. The disputed domain name is offered for sale for USD 3,300.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings A. Identical or Confusingly SimilarThe Complainant owns trademark registrations for the trademark ARM. The Panel is satisfied that the Complainant has established its ownership of the trademark ARM.
The disputed domain name incorporates the Complainant’s trademarks ARM in its entirety. It is established by prior UDRP panels that when a domain name incorporates a complainant’s registered trademark, such incorporation is sufficient to establish identity or confusing similarity for the purposes of the Policy even if other terms are added as part of the disputed domain name. E.g., Oki Data Americas, Inc v. ASD, Inc.,WIPO Case No. D2001-0903 (“Oki Data”). Consequently, the addition of the term “tech” does not alter the fact that the disputed domain name is confusingly similar to the Complainant’s trademark.
The generic Top-Level Domain (“gTLD”) “.net” should typically be ignored when assessing confusing similarity as established by prior UDRP decisions.
Consequently, the Panel finds that the disputed domain name is confusingly similar to the trademark of the Complainant and that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsUnder paragraph 4(a)(ii) of the Policy, a complainant must make at least a prima facie case that a respondent does not have any rights or legitimate interests in the disputed domain name. Once such showing is made, the burden of production shifts to the respondent.
In the instant case, the Complainant asserts, inter alia, that the Respondent is not affiliated with the Complainant. It is then for the Respondent to prove that it has rights or legitimate interests. The Respondent has not proven any rights or legitimate interests in the disputed domain name.
Moreover, the Panel finds that the nature of the disputed domain name carries a risk of implied affiliation with the Complainant. See section 2.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithThe Respondent must have been aware of the Complainant’s trademark as it is a well-known trademark in the Complainant’s sector of business and has been used and registered since the 1990s. The nature of the disputed domain name suggests affiliation with the Complainant as it incorporates the Complainant’s trademark in full with the additional term “tech”, which relates to the Complainant’s sector of business. Also, the disputed domain name is offered for sale. The disputed domain name was previously offered for sale for USD 3,300 and when the Panel visited the website to which the disputed domain name resolves, it was offered for sale for USD 4,500. These figures likely exceed the out-of-pocket expenses, which is an indication of bad faith. Additionally, the website contains PPC links. Given the above, the Panel believes that the Respondent has registered and used the disputed domain name in order to trade off the reputation of the Complainant’s trademark. Accordingly, the Panel finds that the Complainant has satisfied 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,
Nayiri Boghossian
Sole Panelist
Date: February 23, 2022