The Complainant is Arm Limited, United Kingdom, represented by Quinn IP Law, United States of America (“United States”).
The Respondent is Anonymize, Inc., United States.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 31, 2021. On January 4, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 4, 2022, 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 January 5, 2022 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 January 11, 2022 and a further amendment to the Complaint on January 16, 2022.
The Center verified that the Complaint together with the amended Complaint and an 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 January 17, 2022. In accordance with the Rules, paragraph 5, the due date for Response was February 6, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 16, 2022.
The Center appointed Alistair Payne as the sole panelist in this matter on February 24, 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 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.
The Complainant owns trade mark registrations in many countries for its ARM mark including United States Trade Mark Registration No. 2332930 for ARM registered on March 21, 2000.
The disputed domain name was registered on July 27, 2021 and resolves to a pay-per-click (“PPC”) parking page that also indicates that the disputed domain name is available for sale through the disputed domain name Registrar.
5. Parties’ Contentions A. ComplainantThe Complainant submits that it owns registered trade mark rights in its ARM mark as noted above and that its mark is wholly incorporated into the disputed domain name which is sufficient to establish confusing similarity. It says that the addition of the technical term “software” and the word “free” to the ARM trade mark are not only insufficient to distinguish the disputed domain name from Complainant’s ARM trade mark but enhance the likelihood of confusion as to the source of the website with Complainant rather than acting as a distinguisher.
The Complainant submits that the disputed domain name was registered on July 27, 2021 and has not been used in connection with a bona fide offering of goods and services in that time, except for a listing offering the disputed domain name for sale. Further, the Complainant asserts that the Respondent does not have any trade mark registrations for “ARM” or for the disputed domain name, that it is not affiliated with or licensed by Complainant and that the Respondent is not commonly known as “ARM”. It also submits that the Respondent is not making a legitimate, noncommercial, or fair use of the disputed domain name.
As far as bad faith is concerned the Complainant notes that its ARM mark is distinctive and well known considering the extent of its worldwide sales since 1990 and that its products are used by more than 70% of the world’s population and that the Complainant has a significant Internet presence for its ARM products which would have shown up in any Google search.. It says that while the disputed domain name was only registered in July 2021, that it has been using its trade mark in the United States for 30 years and that its trade mark registrations pre-date the disputed domain name by many years and therefore the disputed domain name was registered knowingly by the Respondent.
With this background in mind, the Complainant asserts that the Respondent chose to register the disputed domain name, incorporating the Complainant’s ARM trade mark in its entirety along with the word “software”, a well-known word associated with Complainant’s business and the word “free”, not for legitimate purposes but most likely for the purposes of potential “phishing” or “pharming” attacks.
It notes that the Complainant has made no bona fide use of the disputed domain name and that it resolves to a pay-per- click parking page, which features links to potential customers, competitors and industry participants and also features a prominent notice advertising that the disputed domain name is for sale. As the website to which the disputed domain name resolves is clearly commercial and the disputed domain name is calculated to cause a likelihood of confusion with the ARM mark, the Complainant asserts that the Respondent is attempting to capitalize on the reputation and goodwill attaching to the Complainant’s mark in the disputed domain name by intentionally attracting Internet users to the website at the disputed domain name. In addition, says the Complainant, the Respondent has no legitimate reason to register the disputed domain name incorporating the ARM mark and did so to prevent the Complainant from being able to register the disputed domain name itself.
The Complainant notes that the Respondent failed to respond to its cease and desist letter sent on September 22, 2021, that it used a privacy service to try and mask its identity and that the Respondent has been involved in over 60 prior UDRP disputes including a prior disputed with the Complainant in Arm Limited v. Privacy Administrator, Anonymize, Inc. / Sarbel Bandak, WIPO Case No. D2021-0594in relation to the domain name
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings A. Identical or Confusingly SimilarThe Complainant has demonstrated that it owns various registered trade mark rights for its ARM trade mark including United States trade mark registration 2332930 for ARM registered on March 21, 2000. This mark is wholly incorporated into the disputed domain name, which is therefore confusingly similar to the Complainant’s mark. The addition to the disputed domain name of the common English words “software” and the word “free” do not prevent a finding of confusing similarity. As a result, the Panel finds that the Complaint succeeds under this element of the Policy.
B. Rights or Legitimate InterestsThe Complainant has submitted that the disputed domain name was registered on July 27, 2021 and has not been used in connection with a bona fide offering of goods and services since that time. The Panel notes that it has only been used to resolve to a PPC parking page, which also features a listing offering the disputed domain name for sale. This at least suggests that a substantial reason for the Respondent’s recent registration of the disputed domain name was to resell it at a profit.
The Complainant has also asserted that the Respondent does not have any trade mark registrations for “ARM” or for the disputed domain name, that it is not affiliated with or licensed by Complainant and that the Respondent is not commonly known as “ARM”. Finally, the Complainant has submitted that the Respondent’s use of the disputed domain name for a PPC parking page with links to competitors and others that also advertises the disputed domain name “for sale“ notice is neither a legitimate, non-commercial, nor a fair use of the disputed domain name.
In these circumstances, the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. As the Respondent has failed to rebut this case and also for the reasons set out under Part C below, the Panel finds that the Complainant has successfully made out its case and that the Complaint also succeeds under this element of the Policy.
C. Registered and Used in Bad FaithThe disputed domain name was registered on July 27, 2021, which was many years after the Complainant’s first use of its ARM mark in the United States and after the registration of United States trade mark registration 2332930. Considering the very substantial size of the Complainant’s international business under its ARM mark and the significant degree of repute attaching to that mark both in the United States and elsewhere and also considering the Internet presence in Google searches of the Complainant’s ARM mark, the Panel considers it more likely than not that the Respondent was well aware of the Complainant’s ARM mark at the date of registration of the disputed domain name. The Panel notes that the Respondent was also one of two respondents in Arm Limited v. Privacy Administrator, Anonymize, Inc. / Sarbel Bandak, WIPO Case No. D2021-0594. The decision in that case was given before the registration of the disputed domain name in the current case which strongly suggests that the Respondent, even if initially only operating as a privacy service, was well aware of the Complainant’s ARM trade mark at the date of registration of the disputed domain name.
Under paragraph 4(b)(iv) of the Policy there is evidence of registration and use of the disputed domain name in bad faith where a respondent has used the disputed domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s trade marks as to the source, sponsorship, affiliation or endorsement of the website.
The disputed domain name resolves to a pay-per-click parking page which, according to the Complainant, features links to potential customers and competitors and to other industry participants. As it is most likely that the Respondent gains revenue from the links on the website to which the disputed domain name resolves and it is apparent that the disputed domain name is calculated to cause Internet users to be confused or deceived into thinking that there is some affiliation or connection with the Complainant’s trade mark in order to divert them to the website at the disputed domain name, the Panel finds that the circumstances here fulfill the requirements of paragraph 4(b)(iv) of the Policy.
The website at the disputed domain name also features a prominent notice advertising that the disputed domain name is for sale. Although there is no further evidence in that regard, this creates at the least a very strong inference that the Respondent is seeking to make a substantial profit from the re-sale of the disputed domain name. The inference in this case is only reinforced by the Respondent’s conduct in the case mentioned above (WIPO Case No. D2021-0594) which was decided just prior to its registration of the disputed domain name.
The fact that the Respondent failed to respond to the Complainant’s cease and desist letter sent to it through the Registrar on September 22, 2021 only further reinforces the Panel’s view of the Respondent’s bad faith.
For these reasons the Panel finds that the disputed domain name was both registered and used in bad faith and that the Complaint succeeds under this element 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
Alistair Payne
Sole Panelist
Date: March 10, 2022