The Complainant is Arm Limited, United Kingdom, represented by Quinn IP Law, United States of America.
The Respondent is Hemei Ji, Jihemei, China.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed in English 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 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 20, 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 in English on December 26, 2021.
On December 20, 2021, the Center transmitted an email communication to the Parties in English and Japanese regarding the language of the proceeding. On December 23, 2021, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
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 in English and Japanese of the Complaint, and the proceedings commenced on December 28, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 17, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 22, 2022.
The Center appointed Teruo Kato as the sole panelist in this matter on January 27, 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 BackgroundAccording to the Complainant, the Complainant is a company incorporated in the United Kingdom and has been providing technology related goods and services since 1990. It 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.
The Complainant also contends that among its primary products is the “Arm Cortex” series of processors and that the first of the “Arm Cortex” family of processors was the Arm Cortex-M3 announced in October 2004 and that it has over 400 licensees of its “Arm Cortex” processors worldwide, including most of the biggest global semiconductor companies and original equipment manufacturers in the world.
The Complainant started operating offices in China in 2002, and launched a Chinese joint venture company called Arm China in June 2018. As of 2018, approximately 20% of the Complainant’s revenue from its semiconductor intellectual property technology business came from China.
The Complainant owns, inter alia:
- United States of America trademark CORTEX No. 3336098, registered on November 13, 2007, covering goods and services in classes 9, 16 and 42;
- Japanese trademark CORTEX No. 5605442, registered on August 9, 2013, covering goods and services in classes 16 and 42;
- Japanese trademark CORTEX No. 5719289, registered on November 21, 2014, covering goods in class 9;
- European Union trademark ARM No. 001112986, registered on June 8, 2000, covering goods and services in classes 9 and 42;
- Japanese trademark ARM No. 5174920, registered on October 24, 2008, covering goods in class 16;
- Japanese trademark ARM No. 5203781, registered on February 13, 2009, covering goods in class 9; and
- Japanese trademark ARM No. 5318225, registered on April 23, 2010, covering services in class 42.
Additionally, the Complainant owns the domain name
The disputed domain name
The Respondent is hemei ji, jihemei, whose address is given as in China.
According to the Complainant, the Respondent is using the disputed domain name hosting links for gambling and pornographic contents.
The Complainant requests that the disputed domain name be transferred to the Complainant.
5. Parties’ Contentions A. ComplainantThe Complainant contends that it is the owner of various trademarks including the terms “Cortex” and “Arm”.
The Complainant also contends that the disputed domain name is confusingly similar to the Complainant’s CORTEX and ARM trademarks.
The Complainant further contends that the Respondent is not a licensee, an authorized agent of the Complainant, or in any other way authorized to use the Complainant’s trademark CORTEX nor trademark ARM, and that the Respondent is not commonly known by the disputed domain name as an individual, business, or other organization, and that the Respondent does not make any bona fide use or trade under the disputed domain name.
The Complainant also contends that the Respondent registered and is using the disputed domain name in bad faith.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings 6.1 Preliminary Issue: Language of the ProceedingPursuant to paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to authority of the Panel to determine otherwise having regard to the circumstances of the administrative proceeding. The Panel notes that in the present case the Registrar has confirmed that the language of the Registration Agreement is Japanese.
The Complainant has filed the Complaint in English, and requests that the language of the proceeding be English on the ground, among others, that the disputed domain name is composed of Latin letters, and the Complainant would be put to great expense, inconvenience and significant burden if required to translate the documentation to Japan, which would cause undue burden and delay, and it would not be fair and equitable for the Complainant to bear the extra costs and delays.
The Panel notes that the disputed domain name contains terms “Cortex” and “Arm”, which are both English words and are not Japanese.
On December 20, 2021, the Respondent was invited by the Center, in both Japanese and English, to indicate any objection to the proceeding being conducted in English by December 25, 2021. The Respondent did not respond to this by the specified deadline nor later.
On December 28, 2021, the Center informed the Respondent, in both Japanese and English, that the Center has decided, under the circumstances of this case, to: 1) accept the Complaint as filed in English; 2) accept a Response in either English or Japanese; 3) appoint a Panel familiar with both languages mentioned above, if available. Accordingly, the Panel would have accepted a Response in Japanese, but none was submitted by the Respondent.
In the circumstances, in accordance with paragraph 11(a) of the Rules, the Panel decides that English be the language of the proceeding. The Panel further finds that such determination would not cause any prejudice to either Party and would ensure that the proceeding takes place with due expedition.
6.2 Substantive Issues A. Identical or Confusingly SimilarThe Panel must determine whether (a) the Complainant has a trademark or service mark; and (b) whether the disputed domain name is identical or confusingly similar to that trademark or service mark.
The Complainant submitted evidence of various trademark registrations and the Panel is satisfied that the Complainant is the owner of CORTEX registered trademarks, including:
- United States of America trademark CORTEX No. 3336098, registered on November 13, 2007, covering goods and services in classes 9, 16 and 42;
- Japanese trademark CORTEX No. 5605442, registered on August 9, 2013, covering goods and services in classes 16 and 42; and
- Japanese trademark CORTEX No. 5719289, registered on November 21, 2014, covering goods in class 9.
The Complainant also submitted evidence of various trademark registrations and the Panel is satisfied that the Complainant is the owner of ARM registered trademarks, including:
- European Union trademark ARM No. 001112986, registered on June 8, 2000, covering goods and services in classes 9 and 42;
- Japanese trademark ARM No. 5174920, registered on October 24, 2008, covering goods in class 16;
- Japanese trademark ARM No. 5203781, registered on February 13, 2009, covering goods in class 9; and
- Japanese trademark ARM No. 5318225, registered on April 23, 2010, covering services in class 42.
As to the confusing similarity element for the purposes of the Policy, the Panel has proceeded to compare the disputed domain name to the trademark rights which have been proved.
Section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states that “[t]he applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘info’, ‘.com’, ‘.club’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”, and the Panel finds no reason why this established practice should not be applied to the present case.
Apart from the TLD “.com”, the Complainant contends that the disputed domain name contains its trademark CORTEX and trademark ARM in their entirety.
The Panel accepts the Complainant’s contention and holds that the disputed domain name includes the Complainant’s trademark CORTEX and trademark ARM in their entirety, such that the disputed domain name matches exactly the two trademarks CORTEX and ARM joined together.
In this connection, the Panel notes that section 1.7 of the WIPO Overview 3.0 states that “[w]hile each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least 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 purposes of UDRP standing.”
In the circumstances, the Panel sees no reason why these established practices should not be applied to the present case and holds that the disputed domain name is confusingly similar to the Complainant’s trademarks. Accordingly, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate InterestsUnder paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate a respondent’s rights or legitimate interests in a domain name:
(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is 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.
The consensus view of UDRP panels is that the burden of proof in establishing no rights or legitimate interests in respect of a domain name rests with the complainant in making out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (see section 2.1 of the WIPO Overview 3.0).
In the present case, the disputed domain name resolves to a website hosting links for gambling and pornographic contents. The Complainant contends with relevant evidence that: (i) the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services; (ii) the Respondent has not been commonly known by the disputed domain name; and (iii) the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
Having considered contentions and evidence submitted by the Complainant, the Panel is satisfied that the Complainant has established a prima facie case. By not submitting a Response, the Respondent has failed to overturn such prima facie case and has also failed to invoke any of the defenses as set out in paragraph 4(c) of the Policy.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad FaithTo fulfill the third requirement, the Complainant must prove that the disputed domain name was registered and is being used in bad faith.
In the present case the Panel notes that the trademarks CORTEX and ARM were registered and extensively used internationally, including China, long before the disputed domain name was registered on April 1, 2021. The Complainant is also widely known for its “Arm Cortex” series of processors around the world. The Panel holds that the Respondent was most likely to have known of the Complainant, its products, and trademarks prior to registering the disputed domain name and that the Respondent registered the disputed domain name in bad faith.
As to the use in bad faith, the Complainant has provided evidence to show that the disputed domain name resolves to a website hosting links for gambling and pornographic contents. On this point, prior UDRP panels have repeatedly found that “‘such conduct qualifies as ‘pornosquatting’, which arises when a cyber-squatter tries to take advantage of a well-known trade mark in order to attract Internet users to a pornographic website”. See, International Business Machines Corporation v. Domain Administrator, See PrivacyGuardian.org / Tan Fei Tan,WIPO Case No. D2021-0085, citing Prada S.A. v. Roberto Baggio,WIPO Case No. D2009-1187. Furthermore, the Respondent presumably receives click-through revenue each time Internet users click on the gambling links hosted on the website at the disputed domain name.
Combined with the facts that the disputed domain name is composed of two of the Complainant’s trademarks; no Response has been filed by the Respondent; and according to the courier tracking record, the Written Notice was not delivered to the Respondent due to refused delivery, the Panel is of the view that these facts may infer further bad faith on the part of the Respondent (see section 3.2.1 of the WIPO Overview 3.0).
Taking all matters into careful consideration, the Panel is satisfied that the overall circumstances of the case suggest that the Respondent’s bad faith in registration and use of the disputed domain name.
The Panel therefore concludes that the third requirement of the Policy has been met.
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
Teruo Kato
Sole Panelist
Date: February 8, 2022