The Complainant is Arm Limited, United Kingdom, represented by Quinn IP Law, United States of America.
The Respondent is Daniel Hoo, EIo&?Ro-DAIc?A ODIP1 E, China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 31, 2021. On March 31, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 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 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 April 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 12, 2021. The Center received the Complainant’s supplemental filing by email on May 2, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 30, 2021. The Center appointed Sok Ling MOI as the sole panelist in this matter on June 2, 2021. 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 The Complainant is a limited company incorporated in the United Kingdom which has been providing technology related goods and services since 1990. The Complainant designs sophisticated electronic products including computer processes, graphics processors, digital memories, and peripheral hardware, and supplies software, development tools for computer hardware, and provides software and consultancy services. The Complainant has sold over 180 billion products under its ARM brand, which includes processors used as the central processing unit for mobile telephones manufactured by Apple, HTC, Nokia, Sony Ericsson, and Samsung. The Complainant owns numerous trade mark registrations for the ARM mark in various jurisdictions, including the following: Jurisdiction Mark Registration No. Registration Date United States of America ARM 2332930 March 21, 2000 United Kingdom ARM UK00002000006 January 29, 1999 European Union ARM 001112986 June 8, 2000 Singapore ARM 40201505681S November 18, 2014 The Complainant’s primary website is located at “www.arm.com”. The Complainant also owns over 190 domain names with the ARM prefix, including the following: - The disputed domain name The Complainant claims that as a result of its long history of use and marketing of its ARM mark and the explicit judicial recognition of the ARM mark as a “well-known mark” in various open court judgment and administrative decisions, the ARM mark enjoys stronger protection than normal trade marks against third parties. The Complainants contend that the disputed domain name is identical or confusingly similar to its ARM mark, the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name has been registered and is being used in bad faith. The Complainant requests for the transfer of the disputed domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy directs that a complainant must prove each of the following three elements to obtain an order for the disputed domain name to be cancelled or transferred: (i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; On the basis of the arguments and evidence introduced by the Complainant and the Respondent, the Panel concludes as follows: A. Identical or Confusingly Similar The Panel accepts that the Complainant has rights in ARM by virtue of its use and registration of the same as a trade mark. The disputed domain name incorporates the Complainant’s trade mark ARM in its entirety. The addition of the country code Top-Level Domain (“ccTLD”) “.ai” is a technical requirement of registration and does not impact the confusing similarity analysis. Consequently, the Panel finds that the disputed domain name is identical to the Complainant’s trade mark. Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, a complainant bears the burden of proof to establish that the respondent lacks rights or legitimate interests in the disputed domain name. However, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the respondent to come forward with evidence in support of its rights or legitimate interests in the disputed domain name. The respondent may establish its rights in the disputed domain name by demonstrating any of the following, without limitation, under paragraph 4(c) of the Policy: (i) before any notice to it of the dispute, the respondent’s use 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) the respondent has been commonly known by the disputed domain name, even if it has acquired no trade mark or service mark rights; or (iii) the 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 the trade mark or service mark at issue. See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited v. honghao Internet foshan co, ltd,WIPO Case No. D2013-0974. The Complainant has confirmed that the Respondent is not in any way affiliated with the Complainant or otherwise authorized or licensed to use the ARM trade mark or to seek registration of any domain name incorporating the trade mark. The Respondent appears to be an individual by the name of “Daniel Hoo” located in Shanghai city of China. There is no evidence suggesting that the Respondent is commonly known by the disputed domain name or has acquired any trade mark rights in the term “ARM”. According to the evidence submitted by the Complainant, the disputed domain name was passively held and did not resolve to any active website. A question to be considered in the context of the present case is whether the fact that “arm” is a known word with a dictionary meaning means that the Respondent has, by virtue thereof, rights or legitimate interests in the disputed domain name. On this point, see section 2.10.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), which states: “Panels have recognized that merely registering a domain name comprised of a dictionary word or phrase does not by itself automatically confer rights or legitimate interests on the respondent; panels have held that mere arguments that a domain name corresponds to a dictionary term/phrase will not necessarily suffice. In order to find rights or legitimate interests in a domain name based on its dictionary meaning, the domain name should be genuinely used, or at least demonstrably intended for such use, in connection with the relied-upon dictionary meaning and not to trade off third-party trademark rights.” In the present case, the Panel notes that the disputed domain name was being passively held and had not been used in connection with its dictionary meaning. As such, the Panel is satisfied that the Complainant has made out a prima facie case showing that the Respondent lacks rights or legitimate interests in the disputed domain name. The burden of production thus shifts to the Respondent to come forward with evidence of his rights or legitimate interests in the disputed domain name. Since no response has been filed by the Respondent to support a right or legitimate interest in the disputed domain name by the Respondent, the prima facie case has not been rebutted. Consequently, the Panel finds that Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith Paragraph 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 the respondent has registered or acquired the disputed 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 trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or (ii) the respondent has registered the disputed domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or (iii) the 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, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’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 respondent’s website or location or of a product or service on the respondent’s website or location. The Panel notes that, as of the date of this decision, the disputed domain name did not resolve to any active website. Nevertheless, the consensus view of previous UDRP panels is that passive holding in itself does not preclude a finding of bad faith. UDRP panels must examine all the circumstances of the case to determine whether a respondent is acting in bad faith. See WIPO Overview 3.0, section 3.3. Among the factors panellists will look at is the degree of distinctiveness or reputation of the complainant’s mark. In this regard, the Panel notes that the disputed domain name comprises entirely of the dictionary term “arm”, which is quite different from the classic case where a well-known distinctive third party mark has been incorporated in the disputed domain name. Given that the Complainant’s trade mark “ARM” is not particularly distinctive and that an Internet search for the term “arm” may disclose results unrelated to the Complainant, there is a reasonable possibility that the Respondent may not have targeted the Complainant when he registered the disputed domain name. In the present case, there is no objective evidence before the Panel showing that the Respondent was aware of the Complainant or its trade mark at the time of registration of the disputed domain name, or that the Respondent had any intention to create confusion and/or capitalize on the value of the Complainant’s trade mark to attract Internet users to its website for financial gain, or that the Respondent is otherwise taking an unfair advantage of the Complainant’s trade mark. The circumstances referred to in paragraph 4(b)(i), (ii), (iii), and (iv) of the Policy are not applicable to the present case. Notwithstanding the Complainant’s claims regarding its reputation it is noteworthy that the Complaint does not list trademarks registered in or designating China; moreover, given that the disputed domain name is a dictionary word and is not in the Panel’s view a highly distinctive mark, the Panel ultimately is not prepared to draw an inference regarding the Respondent’s potential targeting of the Complainant. The ultimate burden of proof rests with the Complainant. For these reasons, the Panel finds that the Complainant has failed to discharge its burden of demonstrating that the Respondent has registered and is using the disputed domain name in bad faith. Accordingly, the requirements of the third element under paragraph 4(a) of the Policy have not been satisfied. 7. Decision For the foregoing reasons, the Complaint is denied. Sok Ling Moi
-
-
-
-
-
(ii) the 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.
Sole Panelist
Date: July 25, 2021
Full & Egal Universal Law Academy