The Complainant is Intel Corporation of Santa Clara, California, United States of America, represented by Harvey Siskind LLP, United States of America (“United States” or “U.S.”).
The Respondent is Z, V, PENTIUM FUND, Vincente ZARAGOZA of Newport Beach, California, United States of America, represented by Cabinet Bitoun Avocat, France.
The disputed domain name <pentiumgroup.com> is registered with Network Solutions, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 28, 2009. On March 2, 2009, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain name. On March 2, 2009, Network Solutions, LLC 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 10, 2009 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 12, 2009. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced March 16, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response April 5, 2009. The Response was filed with the Center April 3, 2009.
The Center appointed William R. Towns, Frederick M. Abbott and Alain Bensoussan as panelists in this matter on April 24, 2009. The Panel finds that it was properly constituted. Each member of 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 Complainant introduced the world's first microprocessor in 1971. The Complainant began using the PENTIUM mark in connection with its microprocessors in 1992, obtained its first U.S. trademark registration for its PENTIUM mark in 1994, and owns over 500 trademark registrations for PENTIUM in roughly 175 jurisdictions around the world. The Complainant also owns more than 80 PENTIUM-formative domain names, including <pentium.com>, <pentium.org>, and <pentium.net>, the first of which was registered by the Complainant 1996.
The fame of the Complainant's PENTIUM mark has been recognized by courts and trademark administrative bodies in numerous jurisdictions around the world, including the Republic of China, Costa Rica, Czech Republic, France, Greece, Republic of Korea, Russia Federation, Slovak Republic, Spain, Switzerland, Taiwan, Province of China, Turkey, and the United States. The reputation of the Complainant's PENTIUM mark also has been acknowledged in several panel decisions under the UDRP. See Intel Corporation v. Pentium Fund, WIPO Case No. D2009-0156 (PENTIUM mark extremely well known worldwide as far back as 1999); Intel Corporation v. Ox90, WIPO Case No. D2002-0010 (PENTIUM mark “arbitrary and distinctive” and “well known in the fields of microprocessors and computers”).
The Respondent registered the disputed domain name <pentiumgroup.com> on February 5, 2003. The disputed domain name resolves to a portal website containing advertising links that are contextually relevant to the Complainant and its products. Several of these links take Internet users to third-party websites selling the Complainant's products as well as those of the Complainant's competition.
The Complainant asserts that it has continuously used PENTIUM as a trademark for its processors since introducing the mark in 1992, more than a decade before the Respondent registered the disputed domain name. According to the Complainant, PENTIUM is a coined name, which did not exist prior to its creation by the Complainant.
The Complainant reports that it has generated more than USD131 billion in worldwide sales of products bearing the PENTIUM mark, including USD15.6 billion in 2002, the year prior to the Respondent's registration of the disputed domain name, and USD17.3 billion in 2003. The Complainant further asserts that it has devoted substantial resources to promote its PENTIUM branded products over the past decade, including more than USD 39 million in 2003 alone, and that the PENTIUM processor has been the subject of numerous articles in the media.
As a result of the foregoing, the Complainant maintains that the PENTIUM mark has become one of the most widely recognized brands among consumers, and has been declared famous by numerous courts and trademark administrative bodies around the world. The Complainant further observes that several of its U.S. registrations for PENTIUM have become incontestable as a matter of law.
The Complainant maintains that the disputed domain name <pentiumgroup.com> is confusingly similar to the Complainant's PENTIUM mark which is wholly incorporated into the domain name and identical to the Complainant's mark except for the addition of the common or generic word “group”. The Complainant argues that the content of the Respondent's website adds to the likelihood of confusion. The Complainant notes that the disputed domain name resolves to a “parking” webpage showing primarily sponsored links, many of which include prominent references to the Complainant and its products, and lead Internet users to third-party websites where they can purchase Complainant's products.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. According to the Complainant, the Respondent has not been authorized to use the Complainant's famous PENTIUM mark, but instead is infringing the mark, which precludes a bona fide offering of goods or services. The Complainant maintains that the use of another's famous mark in a domain name for a website that simply contains hyperlinks is not a legitimate commercial use.
The Complainant argues that the Respondent cannot make a legitimate noncommercial or fair use of the disputed domain name with a “parking” website featuring sponsored links including unauthorized references to the Complainant and its products. The Complainant also maintains that the Respondent cannot establish rights or legitimate interests by claiming to have been commonly known by the disputed domain name, as any alleged use by Respondent of the name “Pentium Group” came long after the Complainant's PENTIUM mark had become famous.
The Complainant concludes that the Respondent registered and is using the disputed domain name in bad faith. According to the Complainant, bad faith exists because the Respondent is using the domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's famous PENTIUM mark as to the source, sponsorship, affiliation or endorsement of its website. The Complainant further asserts that bad faith should be inferred from the Respondent's use of the Complainant's famous PENTIUM mark in circumstances admitting of no plausible legitimate use of the domain name. Based on the Complainant's widespread use and promotion of its famous PENTIUM mark and the Complainant's numerous trademark registrations in the U.S. and elsewhere, the Complainant asserts there can be no question that the Respondent knew or should have known about the Complainant's trademark rights before registering the disputed domain name.
Although the registrant of the disputed domain name according to the concerned registrar's WhoIs database is “Z, V”, the Response states that the Respondent in this proceeding is Pentium Fund, a British Virgin Islands hedge fund linked to Societe Generale's hedge fund platform. According to the Response, the disputed domain name was registered by Vincente Zaragosa, who is identified as the Chairman and Chief Financial Officer of Pentium Fund.
The Respondent contends that the disputed domain name is not identical to the Complainant's mark, since the mark consists of a single word while the domain name is comprised of two words. The Respondent further asserts that the disputed domain name would not be considered identical or confusingly similar to the Complainant's mark from the perspective of consumers.
The Respondent argues that the PENTIUM mark is used for a line of microprocessors, which the Complainant no longer sells, that the PENTIUM mark is always displayed with the Complainant's INTEL mark or with the “INTEL inside” symbol, and that consumer associate the PENTIUM mark only with the Complainant's microprocessors. Conversely, according to the Respondent, it is in the business of providing financial services and products, the disputed domain name therefore has a different meaning for consumers; the Respondent's clients do not invest in hedge funds because of a brand of microchips, but make their decision only after a careful analysis of the Respondent's services and products.
The Respondent asserts that is has rights or legitimate interests in the disputed domain name <pentiumgroup.com> because Pentium is the Respondent's name (i.e., Pentium Fund). According to the Respondent, consumers do not make a connection between the Complainant's mark, used exclusively for microprocessors, and the disputed domain name, used by a firm providing complex investment services. The Respondent therefore concludes that it is making a legitimate fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the Complainant's mark.
The Respondent denies that it registered or has used the disputed domain name in bad faith. The Respondent maintains that the disputed domain name was not registered for the purpose of selling or otherwise transferring the domain name to the Complainant or a competitor of the Complainant at an exorbitant price, or to disrupt the Complainant's business The Respondent further asserts that the disputed domain is linked to the Respondent's main website at “www.pentium-fund.com”, and that if the disputed domain name is currently used as a “parking” site, it was to avoid exploitation by a third party. The Respondent also maintains that other companies have used the term “Pentium” to develop financing services, noting a website at “www.pentiumcapital.com”.
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “Cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain names are the sole remedies provided to the Complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
The Panel finds that the disputed domain name <pentiumgroup.com> is confusingly similar to the Complainant's PENTIUM mark for purposes of paragraph 4(a)(i) of the Policy. The critical inquiry under the first element of the Policy is whether the mark and domain name, when directly compared, are identical or confusingly similar. Thus, the Panel compares the mark and the domain name alone, independent of the use factors usually considered in a traditional trademark infringement action. See Banconsumer Service, Inc. v. Mary Langthorne, Financial Advisor, WIPO Case No. D2001-1367; InfoSpace.com, Inc. v. Delighters, Inc. d/b/a Cyber Joe's Internet Café, WIPO Case No. D2000-0068. See also Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698.
In this case, the disputed domain name incorporates the Complainant's PENTIUM mark in its entirety, which in itself is sufficient to support a finding that the domain name is confusingly similar to the Complainant's mark for purposes of the Policy. Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662. The Panel does not consider that the addition of the common or generic word “group” is sufficient to dispel the confusing similarity arising from the incorporation of the Complainant's highly distinctive and well known PENTIUM mark.
The Complainant without question has established rights in the PENTIUM mark. At a minimum, the Complainant's mark is entitled to a presumption of validity by virtue of its registration with the United States Patent and Trademark Office. See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047. The Panel finds the Respondent's argument that the Complainant has abandoned its rights in the PENTIUM mark unpersuasive, and unsupported by evidence sufficient to carry the heavy burden of proving abandonment. See Intel Corporation v. Pentium Fund, supra.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
As noted above, once the Complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden to the Respondent to come forward with evidence of rights or legitimate interests in the disputed domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) has been made. It is uncontested that the Respondent has not been authorized to use the Complainant's PENTIUM mark. Nevertheless, the record reflects the Respondent's registration and use of the disputed domain name, which incorporates the Complainant's mark in its entirety, to divert Internet users to a website containing sponsored links that are contextually relevant to the Complainant and its products, including links that direct Internet users to third-party websites selling the Complainant's products. Such links serve no apparent purpose other than as a vehicle for generating advertising revenue.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel after careful review of the record in this case finds nothing therein that would bring the Respondent's registration and use of the disputed domain name within any of the safe harbors of paragraph 4(c) of the Policy. The Respondent's claim of legitimacy rests primarily on the contention that the disputed domain name is being used in connection with a bona fide offering of goods or services, more specifically, the “complex investment services” that the Respondent purportedly provides. Yet the portal website to which the disputed domain name resolves is in no identifiable manner associated with the hedge fund services the Respondent claims to offer, but instead features advertising links that are contextually relevant to the Complainant and its products, including links to third-party websites where Internet users can purchase the Complainant's products. The Respondent does not deny generating pay-per-click revenues from the website associated with the disputed domain name.
The Panel considers it an inescapable conclusion from the circumstances in the record that the Respondent knew of and had in mind the Complainant and the Complainant's PENTIUM mark when registering the disputed domain name. In light of this, and given the presence on the Respondent's website of sponsored links that are contextually relevant to the Complainant and its products and lead to third-party websites where the Complainant's products may be purchased, the Panel finds that the Respondent's use of the disputed domain name as reflected in the record does not constitute use of the disputed domain name in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. See, e.g., Sanofi-Aventis and Merrell Pharmaceuticals Inc. v. Smart Med Pharmacy, WIPO Case No. D2006-1113. See also HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062.
In addition, there is no evidence in the record of any demonstrable preparations by the Respondent prior to notice of this dispute to use the disputed domain name in any manner that would support a claim of use in connection with a bona fide offering of goods or services. Nor in the circumstances presented here can the Respondent credibly assert that it is making a legitimate noncommercial or fair use of the domain name within the contemplation of paragraph 4(c)(iii) of the Policy. The Respondent is not making noncommercial use of the disputed domain name because it is directly and/or indirectly profiting from click-throughs to third parties. The establishment of a link farm does not constitute “fair use” of the Complainant's trademark in an accepted trademark law sense of that term.
The Panel further finds no persuasive evidence in the record that the Respondent has been commonly known by the disputed domain name.1 The record plainly reflects that the Respondent has not used the disputed domain name with its purported business, but instead to divert Internet users to a website featuring advertising links that keyed to the Complainant's PENTIUM mark.
Accordingly, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website or other on-line 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 its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is “to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another.” Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
The Respondent's bad faith registration and use of the disputed domain name is palpable from the record in this case. The Panel finds it an inescapable inference from the circumstances in the record that the Respondent knew of and had in mind the Complainant and the Complainant's PENTIUM mark when registering the disputed domain name. The Complainant's mark is highly distinctive and well known, and the record establishes the Respondent's use of the disputed domain name to drive Internet traffic to a website in order to generate advertising revenue, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the Respondent's website. This constitutes bad faith registration and use under the paragraph 4(a)(iii) of the Policy. See Intel Corporation v. Pentium Fund, supra. See also Sanofi-Aventis and Merrell Pharmaceuticals Inc. v. Smart Med Pharmacy, WIPO Case No. D2006-1113. See also Columbia Insurance Company, Benjamin Moore v. Whois Data Shield and St Kitts Registry, WIPO Case No. D2007-0741; Chicago Pneumatic Tool Company LLC v. Tool Gopher, WIPO Case No. D2007-0330.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <pentiumgroup.com> be transferred to the Complainant.
William R. Towns | |
Frederick M. Abbott | Alain Bensoussan |
Dated: May 6, 2009