ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Arm Limited v. Arthur Rivera, Renewable Techcom Case No. D2022-1009 1. The Parties The Complainant is Arm Limited, United Kingdom, represented by Quinn IP Law, United States of America. The Respondent is Arthur Rivera, Renewable Techcom, United States of America. 2. The Domain Name and Registrar The disputed domain name
is registered with GoDaddy.com, LLC (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 24, 2022. On March 24, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 24, 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 March 25, 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 March 31, 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 the Respondent of the Complaint, and the proceedings commenced on April 4, 2022. In accordance with the Rules, paragraph 5, the due date for Response was April 24, 2022. The Response was filed with the Center on April 24, 2022. On April 27, 2022, the Center received a third party's communication requesting a copy of the Complaint, to which the Center asked this third party to identify itself, and clarify its relationship (if any) to the Respondent. No further communications from this third party were received by the Center. The Center appointed Knud Wallberg as the sole panelist in this matter on May 2, 2022. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of page 2 Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background The Complainant, who 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 was incorporated in the United Kingdom in 1990. The Complainant 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 a large portfolio of trademark registrations for the trademark ARM in a number of different jurisdictions, including United Kingdom trademark registration No. UK00002000006, ARM, filed on October 31, 1994, and registered on January 29, 1999, for goods and services in International Classes 9, 16 and 42; European Union Trade Mark No. 001112986, ARM, field on March 22, 1999, and registered on June 8, 2000, for goods and services in International Classes 9 and 42; and United States of America trademark registration No. 2,332,930, ARM, filed on May 24, 1999, and registered on March 21, 2000. The Complainant also owns over 190 domain names that begin with the ARM trademark, the Complainant's primary website being located at "www.arm.com". The disputed domain name was registered on August 28, 2021. It resolves to a standard PPC-website which also contains a "Get This Domain" link. The Complainant sent a warning letter to the Registrar on March 16, 2022, asking it to forward it to the Respondent, to which the Registrar did not respond. The named Registrant of the disputed domain name has filed a response to the Complaint on behalf of and in the name of the company Renewable Techcom (RTC), of which he is the founder. In the Response the Respondent asserts that RTC has a legitimate business interest in making a constructive market contribution toward solving energy, infrastructure, and environmental challenges by implementing an all the above energy strategy that includes distributed sources of power, resource conservation and digital generation. RTC Climate, Policy and Technology related domain names including the disputed domain name are primarily designated for R&D deployment in neutrally beneficial academic institutions, public and private business incubators. 5. Parties' Contentions A. Complainant The Complainant asserts that the disputed domain name is confusingly similar to marks in which the Complainant has established legal rights. The disputed domain name thus incorporates the Complainant's ARM trademark in its entirety. The disputed domain name further includes the term "compute", the root word for the widely used term "computer" that is used for electronic devices, and which is a term that is widely associated with the Complainant's products and solutions. The Complainant further asserts that the Respondent has no rights or legitimate interests in the disputed domain name . The Respondent is not affiliated with or licensed by the Complainant nor is the Respondent commonly known as "ARM" or has any trademark registrations for the mark ARM or the disputed domain name. Furthermore, the disputed domain name has not been used in connection with a bona fide offering of goods and services nor has the Respondent made any 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. page 3 The Complainant finally asserts that the disputed domain name was registered and is being used in bad faith. Given the fame and distinctiveness of the Complainant's mark the Complainant thus claims that the Respondent had constructive notice of the Complainant's rights in the term "ARM" and of the Complainant's use of the technical term "compute" or "computer", when the Respondent chose to register the disputed domain name, which misappropriates the Complainant's ARM trademark to create a likelihood of confusion by suggesting to the public that the disputed domain name relates to the Complainant. B. Respondent The Respondent asserts that the words "arm" and "compute" are generic terms that are both extensively used. The term "arm compute" does not appear in any form of literature, and RTC is thus making a legitimate fair use of the disputed domain name without intent to misleadingly divert consumers or to tarnish the Complainant's trademark. The Respondent further asserts that RTC did not register the disputed domain name in bad faith. RTC did thus not register or acquire the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or to a competitor of the Complainant, for valuable consideration more than the Respondent's out-of-pocket costs directly related to the disputed domain name. RTC and the Complainant are not competitors, and the disputed domain name was not registered by the Respondent to disrupt the Complainant's business, nor did RTC did register or acquire the disputed domain name to prevent the Complainant from displaying their domain names or to cause harm in any way. RTC is thus not engaged in a pattern of such conduct and did not register or acquire the disputed domain name in an intentional attempt to attract for commercial gain, Internet users to the Respondent's web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark, sponsorship, affiliation, or endorsement of the Respondent's web site, product, or service. 6. Discussion and Findings According to paragraph 15(a) of the Rules the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Paragraph 4(a) of the Policy directs that a complainant must prove each of the following: (i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate. A. Identical or Confusingly Similar The Panel finds that the disputed domain name is confusingly similar (in the sense of the Policy) to the Complainant's registered trademark because it contains the Complainant's registered trademark ARM in its entirety as well as the component "compute", which is a short term for "computer". The generic Top-Level Domain ("gTLD") ".com" is a standard registration requirement and as such is disregarded under the first element confusing similarity test. See Section 1.11.1 of the WIPO Overview of WIPO Panel Views on page 4 Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"). The Panel finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled in relation to the disputed domain name. B. Rights or Legitimate Interests According to the Complaint, the Complainant has not licensed or otherwise permitted the Respondent to use its trademark. Further, given the circumstances of this case, the Panel is of the opinion that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. In its Response, the Respondent claims the disputed domain name is "designated for R&D deployment in neutrally beneficial academic institutions, public and private business incubators", but the Respondent has not explained how a domain name that contains the terms "arm" and "compute" can possibly serve that purpose. In addition, the way the Respondent has been and is using the disputed domain name (see below in the section 6.C) does not support a finding of rights or legitimate interests. The Panel finds it very likely that the Respondent receives PPC fees from the linked websites that are listed at the disputed domain name's websites and that the Respondent thus uses the disputed domain name for his own commercial gain. The use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links capitalize on the reputation and goodwill of the complainant's mark or otherwise mislead Internet users. See WIPO Overview 3.0 , section 2.9 Consequently, the Panel finds that the conditions in paragraph 4(a)(ii) of the Policy are also fulfilled. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy requires the Complainant to prove both registration and use of the disputed domain name in bad faith. Paragraph 4(b) of the Policy provides examples of circumstances which shall be evidence of registration and use in bad faith: (i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder's documented out-of-pocket costs directly related to the domain name; or (ii) the holder has registered the 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 the holder has engaged in a pattern of such conduct; or (iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the holder's website or location or of a product or service on the holder's website or location. Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain name has been registered and is being used in bad faith. page 5 The Panel notes that the Respondent claims to have registered the disputed domain name due to its composition consisting of two dictionary terms, but no explanation has been provided on why such combination would serve the Respondent's abovementioned purpose. The Panel finds that the significance of the Respondent's selection of the disputed domain name with such composition seems to arise when considered in connection or as a reference to the Complainant's ARM trademark and services. Given the circumstances of the case, in particular the extent of use and reputation of the Complainant's trademark ARM, its inclusion along the term "compute", and the lack of any reasoned and credible explanation by the Respondent as to why he chose to register the disputed domain name with such composition, the Panel finds that the Respondent registered the disputed domain name with prior knowledge of the Complainant and the Complainant's marks. Further, the Panel finds that the Respondent could not have been unaware of the fact that the disputed domain name he chose could attract Internet users in a manner that is likely to create confusion for such users with the Complainant. The Panel therefore finds that the disputed domain name was registered in bad faith. As mentioned above in Section 6 B, the Respondent has used and is still using the disputed domain name actively for a PPC page that contains links to other websites. The Panel finds it very likely that the Respondent receives PPC fees from the linked to websites at the disputed domain name's websites and that the Respondent thus uses the disputed domain name for his own commercial gain by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website. The Panel notes that even if the Respondent itself may not have directly profited, that would not by itself prevent a finding of bad faith. See WIPO Overview 3.0, section 3.5. Considering all the facts and evidence, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case. 7. Decision For 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 be transferred to the Complainant. /Knud Wallberg/ Knud Wallberg Sole Panelist Date: May 17, 2022
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