The Complainant is NVIDIA Corporation of Santa Clara, California, United States of America (“US”), represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland.
The Respondent is Li Hongbo of Beijing, China. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 7, 2017. On September 8, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 12, 2017, 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 September 19, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 9, 2017. On October 11, 2017, the Center notified the Parties that the due date for Response was extended to October 16, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 17, 2017.
The Center appointed Zoltán Takács as the sole panelist in this matter on October 30, 2017. 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.
The language of this administrative proceeding is English, that being the language of the Registration Agreement. 4. Factual Background
The Complainant, NVIDIA Corporation is a well-known US based multinational corporation.
The Complainant is known to millions around the world for its graphics processing units (GPUs) and mobile processor chipsets which are used to power a broad range of products ranging from smart phones to high-end personal computers.
The Complainant employs over 10,000 people in more than 40 offices located in 14 countries.
The Complainant owns a number of trademark registrations for the mark NVIDIA, among others the US Trademark Registration No. 1895559 registered on May 23, 1995 for various goods and services of Classes 9, 21, 23, 26, 36 and 38 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks (the “Nice Classification”).
Since April 20, 1993 the Complainant owns the domain name which it uses for promotion of its goods and services.
The disputed domain name was registered on September 22, 2011.
At the time of filing of the Complaint, as well as rendering of this administrative decision the disputed domain name was used to randomly redirect Internet users to malicious or spam websites. 5. Parties’ Contentions A. Complainant
The Complainant contends that apart from the Top-Level Domain (“TLD”) “.co” the disputed domain name is identical to the Complainant’s NVIDIA trademark.
The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name and is unable to rely of any of the circumstances set out in paragraphs 4(c)(i), (ii) or (iii) of the Policy.
The Complainant claims that the Respondent has registered and is using the disputed domain name in bad faith. Taking into account the distinctiveness and fame of the Complainant’s NVIDIA trademark, the Respondent was most likely aware of it at the time of registering the disputed domain name.
The Complainant states that redirection of the disputed domain name to malicious or spam websites is clear evidence of bad faith use. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules requires that the Panel’s decision be made “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
It has been a consensus view in UDRP decisions that a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
A complainant must evidence each of the three elements required by paragraph 4(a) of the Policy in order to succeed on the complaint, namely that;
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(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. A. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, there are two requirements which the Complainant must establish, first that it has rights in a trademark or service mark, and second that the disputed domain name is identical or confusingly similar to the trademark or service mark.
It has been a consensus view among UDRP panels that if the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights.
The Complainant produced adequate evidence that it holds registered rights in the trademark NVIDIA, and for the purpose of this proceeding, the Panel establishes that the Complainant’s US Trademark registration No. 1895559 for the mark NVIDIA satisies the requirement of having trademark rights for the purpose of the Policy.
Having determined that the Complainant has trademark rights in the NVIDIA mark, the Panel next assessed whether the disputed domain name is identical or confusingly similar to the NVIDIA trademark of the Complainant.
According to section 1.7 of the WIPO Overview 3.0, the standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.
According to section 1.11.1 of the WIPO Overview 3.0, the applicable TLD in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusingly similar test.
The disputed domain name comprises of the Complainant’s NVIDIA trademark and the applicable TLD suffix in the disputed domain name, “.co”, which in relation to this administrative proceeding should be disregarded.
On the basis of facts and circumstance discussed above the Panel finds that the disputed domain name is identical to the NVIDIA trademark of the Complainant and that the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, a respondent may demonstrate its rights or legitimate interests in a domain name by showing any of the following circumstances, in particular but without limitation:
(i) its use of, or demonstrable preparation to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services;
(ii) it has been commonly known by the domain name;
(iii) it is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
In the present case, the Complainant has submitted sufficient and uncontested evidence that it holds well-established rights in the trademark NVIDIA.
The Complainant has never authorized the Respondent to use its NVIDIA trademark in any way, and the Complainant’s prior rights in the NVIDIA trademark long preceded the date of registration of the disputed domain name.
According to section 2.1 of the WIPO Overview 3.0, while the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent.
As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with the relevant evidence demonstrating rights of legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
The Respondent defaulted and failed to respond, and by doing so failed to offer the Panel any type of evidence set forth in paragraph 4(c) of the Policy, or otherwise counter the Complainant’s prima facie case.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of factors which, if found by the panel to be present, shall be evidence of registration and use of a domain name in bad faith. This non-exclusive list includes:
“(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
The Complainant presented undisputed evidence which convinces the Panel that the Respondent has registered and is using the disputed domain name in bad faith.
According to section 3.1.4 of the WIPO Overview 3.0, UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can itself create a presumption of bad faith.
The Complainant’s NVIDIA trademark is highly distinctive and widely known, and the disputed domain name is reproducing it in its entirety. This leads this Panel to conclude that it is almost impossible that the Respondent chose to register the disputed domain name without knowing of the Complainant’s NVIDIA trademark.
The only plausible explanation for the Respondent’s registration and use of the disputed domain name is to unlawfully exploit and capitalize on the reputation behind the NVIDIA trademark of the Complainant without any authorization or rights to do so.
The Respondent has been using the disputed domain name for random redirection of Internet users to malicious or spam websites, which is a technique adopted by domain hackers in order to intercept login credentials. This is a conduct harmful to the Complainant, to Internet users and is clear and obvious evidence of bad faith use. See section 3.4 of the WIPO Overview 3.0.
In view of this, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied. 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.
Zoltán Takács
Sole Panelist
Date: November 7, 2017
Full & Egal Universal Law Academy