The Complainant is Intel Corporation of Santa Clara, California, United States of America, represented by Nabarro LLP, United Kingdom of Great Britain and Northern Ireland (“United Kingdom” or “UK”).
The Respondent is InTelVOIP Ltd., Robin Kandasamy of Barnet, Middlesbrough, United Kingdom of Great Britain and Northern Ireland, appearing pro se.
The disputed domain name <intelvoip.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 25, 2009. On March 25, 2009, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name. On March 31, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 1, 2009. In accordance with paragraph 5(a) of the Rules, the due date for Response was April 21, 2009. The Response was filed with the Center on April 18, 2009.
The Center appointed Brigitte Joppich, Alan L. Limbury, and André R. Bertrand as panelists in this matter on May 14, 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 paragraph 7 of the Rules.
The Complainant is the world's largest semiconductor chip maker, based on revenue. It develops advanced integrated digital technology products, primarily integrated circuits, for industries such as computing and communications. The Complainant was first incorporated in California in 1968.
The Complainant owns a multitude of registrations worldwide for its INTEL trademark, in particular the following United Kingdom and Community trademark registrations for INTEL in class 38 (the “INTEL Marks”):
- CTM Registration No. 1574516 in classes 9, 38, 42, filed on March 24, 2000 and registered as of July 24, 2001;
- CTM Registration No. 513 in classes 9, 16, 38, 42, filed on April 1, 1996 and registered as of March 5, 1999;
- CTM Registration No. 2130938 in classes 1, 2, 3, 4, 5, 6, 7, 8, 10, 11, 12, 13, 15, 17, 19, 20, 22, 23, 24, 26, 27, 29, 30, 31, 32, 33, 34, 35, 37, 39, 40, 41, filed on March 13, 2001 and registered as of April 10, 2003;
- UK Registration No. 2260298 in class 38 filed on February 6, 2001 and registered as of July 20, 2001;
- UK Registration No. 2108574 in classes 9, 16, 38, filed on August 28, 1996 and registered as of March 17, 2000; and
- UK Registration No. 2227092 in classes 38 and 42, filed on March 24, 2000 and registered as of June 29, 2001.
The Respondent was incorporated as Intelvoip Limited in the United Kingdom on March 17, 2008 and is engaged in the business of digital phone services, especially Voice over Internet Protocol services. The disputed domain name was registered by the Respondent on February 18, 2007.
On April 25, 2008, the Complainant first contacted the Respondent requesting the Respondent inter alia to cease and desist from offering or supplying services under or by reference to the name Intelvoip Limited.
VOIP is an acronym representing “Voice over Internet Protocol”, which is the technology used to transmit voice conversations over IP networks.
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:
(1) The disputed domain name is confusingly similar to the Complainant's famous INTEL Marks, INTEL being considered the seventh biggest brand in the world. According to the Complainant, the top-level domain name “.com” is to be ignored when assessing the identity or confusing similarity of the disputed domain name and the INTEL Marks. Comparing only the letter strings INTEL and INTELVOIP, the leading word INTEL is supposed to clearly be the core identifying element of the disputed domain name, as VOIP stands for “Voice over Internet Protocol”.
(2) The Complainant further contends that the Respondent has not used the disputed domain name or a name corresponding to such name in connection with a bona fide offering of goods or services and that the Respondent is not making a legitimate noncommercial or fair use of such name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Respondent is not a licensee of the Complainant. Allegedly, an earlier website <intelvoip.com> contained substantial pieces of text copied from other websites, including the Complainant's own website at <intel.com>. Moreover, the Respondent is supposed to be using the disputed domain name in connection with products and services in a field of endeavor closely related to that of the Complainant. This cannot and does not, in the opinion of the Complainant, constitute a bona fide commercial or fair use sufficient to legitimize an interest in the disputed domain name. By incorporating the INTEL Marks in such name, the Respondent is signaling to Internet users a connection with the Complainant. Even if Internet users discern that the Respondent is not the Complainant, this use of the INTEL Marks may still confuse customers into thinking that the Respondent's products and services are in some way sanctioned and authorized by the Complainant. The Complainant further states that the Respondent has not been commonly known by the disputed domain name and that it is questionable whether the Respondent can ever become commonly known under such name in good faith as the Respondent adopted the Complainant's well-known INTEL Marks. Moreover, the Respondent's registered company name is Intelvoip Limited, incorporated on March 17, 2008, while the disputed domain name was registered on February 18, 2007, and the Respondent has not shown that it was commonly known by such name prior to its registration.
(3) Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith: Firstly, circumstances are supposed to indicate that the Respondent registered such name primarily for the purpose of selling, renting, or otherwise transferring it to the Complainant for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the domain name; even more, the disputed domain name is supposed to have been registered as part of an overall strategy by the Respondent to attempt to extract large sums of money from the Complainant. In fact, the Complainant contends that representatives of the Respondent claimed up to £170,000 for the “transfer/dissolve [of] the company name, trademark or trademark filing and domain”. Secondly, by using the disputed domain name, the Respondent is supposed to have intentionally attempted to attract for commercial gain Internet users to the Respondent's website, by creating a likelihood of confusion with the Complainant's marks as to 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 Complainant submits that the Respondent knew of the Complainant's INTEL Marks when registering the disputed domain name, which was registered well after the INTEL Marks became famous, and the Respondent infringed the Complainant's copyright on its website and is offering products and services in a field closely related to that of the Complainant. Thirdly, the disputed domain name was allegedly registered primarily for the purpose of disrupting the business of a competitor, and, finally, it was registered and used in bad faith by providing incorrect details of contact information.
The Respondent denies that any of the three elements specified in paragraph 4(a) of the Policy is given in the present case:
(1) The disputed domain name is supposed to be neither identical nor confusingly similar to the Complainant's INTEL Marks. The Respondent claims that InTelVOIP is an acronym of International Telephony by Voice Over Internet Protocol, the first letter “t” having been eliminated for ease of spelling and pronunciation. The Respondent states and reiterates that it is necessary to compare the words “INTEL” and “InTelVOIP” as a whole (including also the logo) and not by parts. InTelVOIP Limited is supposed to be highly recognized as a web based service provider and deemed to be increasingly popular. The Respondent claims that the services it offers have no similarity with and are completely different from the “computer electronic products” offered by the Complainant.
(2) The Respondent contends that it has a legitimate interest in the disputed domain name. It claims to have a trademark application for InTelVOIP in India. Though it is not possible for the Respondent from a legal point of view to provide VOIP services in India, the Respondent entertains its operational hub there. Furthermore, the Respondent contends that it put considerable efforts (in terms of time and money) into the development of its business and web services, spending resources on its incorporation, promotion of its name, acquisition of digital certificates, software development, VOIP server hosting, marketing, advertising campaigns (including the distribution of computer accessories as giveaways), etc., having contracted with customers and having provided services in good faith for the past 12 months. The Respondent suggests that it is commonly known by the name InTelVOIP, that the Complainant has initiated the current UDRP proceeding only one year after it first learnt of the Respondent's activities and that the Complainant is pursuing an overall strategy to squash the Respondent's evolving business.
(3) Finally, the Respondent contends that the disputed domain name was neither registered nor that it is being used in bad faith. The Respondent denies ever having asked the Complainant for money; the person who did so allegedly was only a marketing consultant acting on its own accord. The Respondent suggests that the Complainant threatened to close down the Respondent's business. Moreover, there never was supposed to be any problem to contact the Respondent. Finally, the Respondent never intended to make money with the Complainant's name.
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the disputed domain name is identical or confusingly similar to the Complainant's trademark; and
(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.
The disputed domain name fully incorporates the Complainant's highly distinctive and well-known INTEL Marks.
The mere addition of the generic acronym “VOIP” following the trademark does not eliminate the confusing similarity between the Complainant's marks and the disputed domain name (cf. Qwest Communications International Inc. v. Eric Dwyer, NAF Claim No. FA302104; BellSouth Intellectual Property Corporation v. Serena, Axel, WIPO Case No. D2006-0007; TELUS Corporation v. Telus VoiP Inc, WIPO Case No. D2007-0398 - all decisions dealing with the element “VOIP” within the domain name disputed in each case). It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of common or generic words (cf. Dr. Grandel GmbH v. Drg Randel Inc., WIPO Case No. D2005-0829; Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493; Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253; RRI Financial, Inc., v. Ray Chen, WIPO Case No. D2001-1242).
Furthermore, it is well established that the specific top level domain name generally is not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant's trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374).
Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to the respondent of the dispute, the use by the respondent 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 (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent 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 customers or to tarnish the trademark or service mark at issue.
Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the disputed domain name, it is consensus view among panelists that a complainant has to make only a prima facie case to fulfil the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of proving that the respondent has rights or legitimate interests in the disputed domain name will then shift to the respondent.
The Complainant has asserted, and submitted supporting documents, that the Respondent neither uses the disputed domain name or any name corresponding to such name in connection with a bona fide offering of goods or services nor is known by the disputed domain name, that the Respondent is not making any legitimate noncommercial or fair use of the disputed domain name, and that the Respondent therefore cannot have any legitimate interests in the domain name. The Complainant has therefore fulfilled its obligations under paragraph 4(a)(ii) of the Policy.
The Respondent denies the Complainant's assertions. It claims to have a trademark application for InTelVOIP in India and to be incorporated as InTelVOIP Ltd in the United Kingdom under the pertinent legislative act. Furthermore, it contends that it put considerable efforts (in terms of time and money) into the development of its business and finally suggests that it is commonly known by the name InTelVOIP.
Having carefully considered all facts and material presented by the parties in this case, on balance of evidence, the Panel is not convinced that the Respondent can rely on own rights or legitimate interests in the disputed domain name, mainly for the following reasons:
The Complainant provided screenshots from the Respondent's website as of March 9, 2009, proving that the website mainly consists of content from third parties' websites, including the Complainant's website – this is clearly insufficient to establish own interests. Furthermore, the Respondent refers to itself in its Response as InTelVOIP Ltd. but on its website only as IntelVOIP (without the capital “T”), not even mentioning that its name is supposed to be an acronym of International Telephony by Voice Over Internet Protocol or disclaiming any relation to the Complainant, thereby strengthening the risk of confusion and losing its credibility and legitimacy (if any).
Even if the Respondent is incorporated as InTelVOIP Ltd., it did not, in the Panel's view, use the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services before any notice of the dispute, which was given by the Complainant's letter as of April 25, 2008.
Finally, as the Complainant's trademark is one of the most valuable and well-known trademarks in the world, it is unlikely that the Respondent could use the disputed domain name in connection with a bona fide offering of goods and services. Even if the Respondent was trying to establish an own business by providing Voice over IP services, in this Panel's view, such business is not bona fide as it infringes the Complainant's rights in its well-known INTEL Marks.
Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the domain name under paragraphs 4(a)(ii) and 4(c) of the Policy.
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.
(i) circumstances indicating that the respondent has registered or 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 respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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 respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted 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 circumstances mentioned in paragraph 4(b) of the Policy are not exclusive, while the two elements of the third requirement of the Policy are cumulative conditions: the Complainant must show that the disputed domain name was registered in bad faith and is being used in bad faith. This point is clear from the wording of the Policy and has been confirmed ever since Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (cf. also Telstra Corporation Limited v. Adult Web Development and Telstraexposed, WIPO Case No. D2002-0952; Telstra Corporation Ltd v. David Whittle, WIPO Case No. D2001-0434; Prada S.A. v. Mr. Chuan Sheng Wang, WIPO Case No. D2003-0758).
Evidence of bad faith registration and use is shown when registration of a domain name occurs in order to utilize another's well-known trademark by attracting Internet users to a website for commercial gain (cf. America Online, Inc. v. Tencent Communications Corp., NAF Claim No. FA93668; Lilly ICOS LLC v. John Hopking / Neo net Ltd., WIPO Case No. D2005-0694; Lilly ICOS LLC v. East Coast Webs, Sean Lowery, WIPO Case No. D2004-1101).
The Complainant is well-known internationally and has been carrying on business activities under the name INTEL for many decades. Given the worldwide prominence of the INTEL Marks, it is inconceivable that the Respondent registered the disputed domain name (which consists of INTEL and the generic acronym VOIP) without knowledge of the Complainant's rights in the INTEL Marks. This finding is supported by the fact the Respondent copied parts of the Complainant's website on its own website. The Panel is therefore satisfied that the Respondent registered the disputed domain name with full knowledge of the Complainant's marks and therefore in bad faith under paragraph 4(a)(iii) of the Policy.
As to bad faith use, by fully incorporating the INTEL Marks into the disputed domain name, by using its website in connection with services close to goods offered and services provided by the Complainant, and by referring to itself as “IntelVOIP” on its website, the Respondent was, in the Panel's view, trying to attract Internet users to its website by creating a likelihood of confusion with the Complainant's marks, not even attempting to avoid confusion with the Complainant. As a result, the Panel is convinced that the Respondent intended to free-ride on the Complainant's INTEL Marks and is satisfied that the Respondent has also used the disputed domain name in bad faith under paragraph 4(b)(iv) of the Policy.
Furthermore, the Complainant provided evidence that the Respondent offered the disputed domain name (including company name and trademark or trademark filing) for sale to the Complainant. Although the Respondent denies ever having asked the Complainant for money and alleges that the person who did so was only a marketing consultant acting on its own accord, the offer of its consultant must be attributed to the Respondent, even if it was ultra vires. The consultant mentioned the Complainant's representatives' reference used in their correspondence with the Respondent and therefore was obviously instructed by the Respondent. As his offer in the amount of £170,000 is by far exceeding the Respondent's out-of-pocket costs directly related to the domain name (and the company name and the alleged trademark application), the Panel is satisfied that the disputed domain name was registered primarily for the purpose of selling it to the Complainant and therefore in bad faith under paragraph 4(b)(i) of the Policy.
Consequently, the Panel finds that the Respondent registered and used the disputed domain name in bad faith and 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 <intelvoip.com> be transferred to the Complainant.
Brigitte Joppich | |
Alan L. Limbury | André R. Bertrand |
Dated: May 28, 2009