WIPO Domain Name Decision DEU2021-0024 for geforce-nvidia.eu, store-geforce.eu

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION NVIDIA Corporation, NVIDIA GmbH v. Anthony Beltran, 101domain DAS Limited Case No. DEU2021-0024 1. The Parties

The Complainants are NVIDIA Corporation, United States of America (“US”), and NVIDIA GmbH, Germany, represented by SafeNames Ltd., United Kingdom.

The Respondent is Anthony Beltran, 101domain DAS Limited, Ireland.

2. The Domain Names, Registry and Registrar

The Registry of the disputed domain names and is the European Registry for Internet Domains (“EURid” or the “Registry”). The Registrar of the disputed domain names is 101domain GRS Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 4, 2021. On August 4, 2021, the Center transmitted by email to the Registry a request for registrar verification in connection with the disputed domain names. On the same day, the Registry transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 3, 2021, providing the registrant and contact information disclosed by the Registry, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 7, 2021.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the .eu Alternative Dispute Resolution Rules (the “ADR Rules”) and the World Intellectual Property Organization Supplemental Rules for .eu Alternative Dispute Resolution Rules (the “Supplemental Rules”).

In accordance with the ADR Rules, Paragraph B(2), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 8, 2021. In accordance with the ADR Rules, Paragraph B(3)(a), the due date for Response was October 21, 2021. The Center received an email communication from the Registrar on September 8, 2021. The Respondent did not submit a compliant Response. Accordingly, the Center notified the Respondent’s default on October 24, 2021.

The Center appointed Marilena Comanescu as the sole panelist in this matter on November 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 ADR Rules, Paragraph B(5).

The language of the proceeding is English.

4. Factual Background

The Complainant NVIDIA Corporation is a US based multinational electronics and technology company founded in 1993; the Complainant NVIDIA GmbH is a fully-owned subsidiary of the Complainant NVIDIA Corporation (together they will be referred to as the “Complainant”).

The Complainant is known for its graphics processing units (“GPUs”) and mobile processor chipsets which are used to power a broad range of digital products for various consumer markets. One of the Complainant’s popular GPUs, introduced in 1999, is “Nvidia Geforce” line. The Complainant has a widespread global presence with over 50 offices throughout the Americas, Asia and Europe. Currently, the Complainant has over 18,000 employees and it has made a revenue of USD 10.9 billion in financial year 2020.

The Complainant has a large portfolio of trademark registrations for NVIDIA, NVIDIA GEFORCE and GEFORCE worldwide, such as the following:

- the European Union Trademark NVIDIA, registration number 0749382, filed on February 17, 1998, and registered on October 14, 1999, in international classes 9, 35, and 42;

- the US Trademark NVIDIA, registration number 1,895,559, registered on May 23, 1995, in international class 9;

- the European Union Trademark NVIDIA GEFORCE, registration number 04094975, filed on November 1, 2004, and registered on January 18, 2006, in international classes 9, 16, and 42;

- the European Union Trademark GEFORCE, registration number 02778140, filed on July 17, 2002, and registered on March 29, 2006, in international class 9; and

- the US Trademark NVIDIA GEFORCE, registration number 3,111,183, registered on July 4, 2006, in international class 9.

Since April 20, 1993, the Complainant owns the domain name which it uses for its main website for the promotion of its goods and services. In addition, the Complainant holds hundreds of active domain name registrations, also incorporating the NVIDIA mark, such as , , and .

The disputed domain name was registered on March 27, 2021, and, according to evidence provided as Annex 10 to Complaint, before commencing the present proceedings, it resolved to a website which incorporated the Complainant’s trademarks and other visual features, such colors and text, from the Complainant’s official main website. When the Panel visited the website under the disputed domain name , it was directed to an error page.

The disputed domain name was registered on April 6, 2021, and, according to the Complainant’s assertions, the disputed domain name was kept inactive from its registration being directed to an error page stating “this site can’t be reached”.

On April 8, 2021, the Complainant sent a cease and desist letter to the Respondent, followed by a reminder on April 16, 2021, asserting its trademark rights and requesting the transfer of the disputed domain names to it. No reaction was received.

5. Parties’ Contentions A. Complainant

The Complainant requests the transfer of the disputed domain names to it and contends the following:

- the disputed domain names and are confusingly similar to its distinctive and well-known trademarks, product name Nvidia Geforce, and websites – the first one comprising both marks, NVIDIA and GEFORCE and being a reversal of the mark NVIDIA GEFORCE, and the later including the mark NVIDIA with the term “store”;

- the Respondent has no rights or legitimate interests in the disputed domain names as the Respondent does not hold trademark rights in the terms “nvidia” and “geforce”; the disputed domain name was initially used to impersonate the Complainant’s official sites and services; the passive holding of the disputed domain names does not confer rights or legitimate interests to the Respondent; the Complainant’s trademarks are distinctive and not used in the commerce other than by the Complainant;

- there is no plausible reason for the Respondent’s registration and use of the disputed domain names other than to capitalize on the reputation attached to the Complainant’s well established trademark rights in NVIDIA, GEFORCE and NVIDIA GEFORCE;

- the Respondent both registered and is using the disputed domain names in bad faith as the Complainant holds numerous trademark rights for NVIDIA, GEFORCE and NVIDIA GEFORCE, the earliest being registered more than 20 years before the creation of the disputed domain names; the Complainant’s marks cover many jurisdictions and has accrued substantial goodwill and international recognition; the Respondent has registered the disputed domain names for the purpose of preventing the Complainant from reflecting its trademarks in the domain name system and that it has engaged in a pattern of such conduct, because, except for the two disputed domain names the Respondent holds another domain name, , with identical second level and which hosts a website with content nearly identical to the content available on the website associated with the disputed domain name ; the use of the Complainant’s distinctive identifiers to direct Internet users to a site which falsely impersonate the Complainant’s offerings amounts to bad faith use of the disputed domain name ; and passive holding amounts to bad faith use when, inter alia, the Complainant’s trademark is distinctive or acquired reputation, or the respondent failed to provide evidence of actual or contemplated good faith use.

B. Respondent

The Respondent 101domain DAS Limited (which is also the Registrar) has replied to the Center in an email communication of September 8, 2021, that “the Respondent information and contact details named in the complaint is only the trustee provider’s information associated with the registrar and is therefore not the domain holder. However, we have forwarded all documents and communications regarding the UDRP to the appropriate registrant contact”.

The Respondent did not submit a formal Response.

6. Discussion and Findings

According to Article 22(1)(a) of the Commission Regulation (EC) No. 874/2004 (hereinafter, the “Regulation”), an ADR procedure may be initiated by any party where the registration is speculative or abusive within the meaning of Article 21. Article 21(1) of the Regulation, provides that a registered domain name shall be subject to revocation or transfer where it is identical or confusingly similar to a name in respect of which a right is recognized or established by national and/or European Union law and where it either:

(a) has been registered by its holder without rights or legitimate interests in the name; or

(b) has been registered or is being used in bad faith.

In the present ADR proceeding, the Complainant has pleaded the cumulative existence of the circumstances provided by the Regulation and ADR Rules (as indicated above). The Panel notes that the Regulation and ADR Rules list the issues under points (a) and (b) in the alternative, but nevertheless the Panel will examine both of these issues in order to reach its decision in the present ADR proceeding.

A. Procedural aspect Identity of the Respondent

The Complainant directed the Amended Complaint against the registrant of the disputed domain names as provided by the Registry following its formal verification.

As noted above, 101domain DAS Limited (which is the same entity with the Registrar 101domain GRS Ltd) has been confirmed by EURid as the listed registrant of record for the disputed domain names, together with Anthony Beltran. 101domain DAS Limited is listed as the registrant organization, whereas 101domain GRS Ltd is listed as billing and technical contact for the disputed domain names.

The Registrant claims in its email communication of September 8, 2021, that it cannot be formally considered the Respondent in this proceeding, for the reasons detailed in section 5.B above. It further states that it will forward the relevant documents and communications regarding the present procedure to the appropriate registrant contact, however it fails to indicate the latter. No further information about the ultimate or beneficial holder has been provided.

According to paragraph B(1)(b)(5) of the ADR Rules, the complaint filed shall provide "the name of the Respondent and, in case of an ADR Proceeding against a Domain Name Holder provide all information (including any postal and e-mail addresses and telephone and fax numbers) known to the Complainant on how to contact the Respondent or any representative of the Respondent, including contact information based on pre-Complaint dealings, in sufficient detail to allow the Provider to send the Complaint to the Respondent as described in Paragraph A2(a)".

The Panel notes that the Complainant satisfied the above requirements by mentioning the registrant's contact information in the section of the amended Complaint dedicated to the Respondent.

Further, the Panel is satisfied that the Center, by sending communications to the registrant revealed by the Registry to its listed WhoIs postal address, email addresses and to another postal address indicated in the Complaint and in Registry’s verification, has exercised extreme care and discharged its responsibility under paragraph 2 of the ADR Rules to employ all reasonably available means to serve actual notice of the Complaint upon the Respondent.

The Panel also notes that, as stated in Paragraph A(1) of the ADR Rules, the Respondent means the holder of a “.eu” domain name registration in respect of which a Complaint is initiated.

Furthermore, according to Section 15(2) of the .eu Domain Name Registration terms and conditions ("Terms and Conditions") established for the registration of domain names under the “.eu” country-code Top-Level Domain ("ccTLD"), "The Registrant must participate in ADR Procedures if a third party (a “Complainant”), in compliance with the Dispute Resolution Rules, asserts to an ADR Provider and initiates a complaint against the Registrant on the basis of speculative or abusive registration, as referred to in Articles 21 and 22(1)(a) of the Public Policy Rules".

In view of the above, the Panel finds that Anthony Beltran, 101domain DAS Limited is the proper respondent in this case.

B. Identical or Confusingly Similar to a name in respect of which a right or rights are recognized or established by national law of a Member State and/or European Union law

Article 10(1) of the Regulation contains a list of rights which may fulfill the definition of “name in respect of which a right is recognized or established” provided in Article 21(1) of the Regulation. Said list includes, inter alia: “registered national and community trademarks, geographical indications or designations of origin, and, in as far as they are protected under national law in the Member-State where they are held: unregistered trademarks, trade names, business identifiers, company names, family names, and distinctive titles of protected literary and artistic works.”

Paragraph B(11)(d)(1)(i) of the ADR Rules requires that the disputed domain name be “identical or confusingly similar to a name in respect of which a right is recognized or established by national law of a member State and/or European Union law”.

The Panel finds that the Complainant is the proprietor of the European Union Trademark Registrations for the word marks NVIDIA, GEFORCE and NVIDIA GEFORCE.

The Panel notes that the disputed domain name includes the two trademarks NVIDIA and GEFORCE and the mark NVIDIA GEFORCE, with the order of words composing it written in reverse.

Further the disputed domain name incorporates the Complainant’s distinctive mark GEFORCE with an additional term “store”.

In accordance with section 1.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)1 , it is well accepted that the first element functions primarily as a standing requirement. 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. Panels view the first element as a threshold test concerning a trademark owner’s standing to file a complaint, i.e., to ascertain whether there is a sufficient nexus to assess the principles captured in the second and third elements. Further, numerous UDRP panels have considered that the addition of other terms (whether geographical wording, descriptive, pejorative, meaningless or otherwise) to trademarks in a domain name is not sufficient to escape a finding of confusing similarity. See section 1.8 of the WIPO Overview 3.0.

It is well established in decisions under the ADR Rules that the ccTLD “.eu”, is typically disregarded for the purposes of consideration of confusing similarity between a trademark and a domain name.

The Panel therefore finds that the disputed domain names and are confusingly similar to the Complainant’s trademarks for the purpose of the Paragraph B(11)(d)(1)(i) of the ADR Rules.

C. Rights or Legitimate Interests

Under the ADR Rules, the burden of proof for the lack of rights or legitimate interests of the Respondent lies with the Complainant. However, the existence of negative facts is difficult to prove, and the relevant information for the Respondent is mostly in its sole possession. Therefore, the Panel holds that it is sufficient that the Complainant makes a prima facie demonstration that the Respondent lacks rights or legitimate interests in the disputed domain names. The burden of production then shifts to the Respondent to submit appropriate evidence demonstrating rights or legitimate interests in the disputed domain names. If the Respondent fails to come forward with such relevant evidence, the Complainant is deemed to have satisfied the second element.

The Complainant has registered trademark rights for NVIDIA since 2000 and its Nvidia Geforce product line is promoted internationally on the website “www.nvidia.com”.

The disputed domain names and incorporate the Complainant’s trademarks as a sole, respectively as a dominant element together with the dictionary term “store”.

Although properly notified with regard to the present procedure, the Respondent failed to provide a substantive Response to invoke any circumstances which could demonstrate any rights or legitimate interests in the disputed domain names.

Example of justification for registering or using the disputed domain names, are listed in Paragraph B(11)(e) of the ADR Rules as follows:

(i) prior to commencing this proceeding the Respondent has used the disputed domain name in connection with the offering of goods or services or that it has made demonstrable preparations to do so;

(ii) the Respondent as an undertaking, organization or natural person has been commonly known by the disputed domain name; or that

(iii) the Respondent is making a legitimate and noncommercial or fair use of the disputed domain name, without intent to mislead consumers or harm the reputation of a name in which a right is recognized or established by national law and/or European Union law.

According to the records, at the time of filing the Complaint, the disputed domain name was used to impersonate the Complainant and its services. This is definitely not a legitimate use, and the Panel finds no reasonable explanation for the selection of the disputed domain name for such use.

At the time of the present procedure, both disputed domain names were kept inactive.

Accordingly, in the absence of any evidence to support a possible basis on which the Respondent may have rights or legitimate interests in respect of the disputed domain names, and having in view the other circumstances of this case, the Panel accepts the Complainant’s unrebutted prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names and that the Complainant has satisfied the condition set out at Paragraph B(11)(d)(1)(ii) of the ADR Rules.

D. Registered or Used in Bad Faith

Under Article 21(1) of the Regulation (EC) No. 874/2004 and Paragraph B(11)(d)(1) of the ADR Rules, lack of rights or legitimate interests and registration or use in bad faith are considered alternative requirements for a successful complaint. As the Panel has found that the Respondent lacks rights or legitimate interests in the disputed domain names no further discussion on bad faith registration or use is necessary.

Nevertheless, noting in particular the composition of the disputed domain names, the Panel finds it very likely that the Respondent was aware of the Complainant at the registration of the disputed domain names. The Complainant have submitted evidence showing that the Respondent registered the disputed domain names well after the Complainant registered its trademarks and corresponding websites.

Also, the Complainant’s NVIDIA and NVIDIA GEFORCE trademarks have acquired an extensive and worldwide reputation and have become well-known. See also NVIDIA Corporation v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2020-2919 and cases cited therein.

The Respondent refused to participate in the present proceeding and did not respond to the Complainant’s cease and desist letters in order to put forward any arguments in its favor.

According to the Complainant’s submissions, the disputed domain name was used to impersonate the Complainant. The Respondent has used without permission the Complainant’s distinctive trademarks in order to get traffic on its web portal and to obtain commercial gain from the false impression created for the Internet users with regard to a potential connection with the Complainant. This impression is created particularly by the incorporation of the Complainant’s well-known trademarks in the disputed domain name, the content on the website provided thereunder which includes the Complainant’s trademarks and other visual features from the Complainant’s official website. This conduct is evidence of registration and use in bad faith.

The disputed domain name was kept inactive from its registration. In relation to passive holding of domain names, the ADR panels have constantly evaluated factors such as: the degree of distinctiveness or reputation of the complainant’s mark; the failure of the respondent to provide evidence of actual or contemplated good faith use; the respondent’s concealing its identity or use of false contact details; and the implausibility of any good faith use to which the domain may be put. The Complainant submits that the disputed domain name incorporates its distinctive GEFORCE mark; the Respondent has not provided any evidence of intended use for such; and it is implausible that a domain name composing of the GEFORCE mark and the word “store” (which has a clear commercial pretext) could be used in good faith.

The Panel therefore finds that the Respondent has both registered and used the disputed domain names in bad faith and that the condition set out at Paragraph B(11)(d)(1)(iii) of the ADR Rules has also been satisfied.

7. Decision

For the foregoing reasons, in accordance with Paragraph B(11) of the ADR Rules, the Panel orders that the disputed domain names, and , be transferred to the Complainant NVIDIA GmbH.2

Marilena Comanescu
Sole Panelist
Date: November 20, 2021

1 Considering the substantive similarities between the ADR Rules and the Uniform Domain Name Dispute Resolution Policy (the “UDRP”), the Panel also refers to UDRP case law and analysis, where appropriate.

2 As the Complainant is established in Germany, a Member State of the European Union, it satisfies the general eligibility criteria for registration of the disputed domain name set out in Article 4(2)(b) of Regulation (EC) No. 733/2002 as amended by Regulation (EU) 2019/517.

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