The Complainant is Arm Limited, United Kingdom, represented by Quinn IP Law, United States of America (“United States”).
The Respondent is Private Registration, Sav.com, LLC, United States / Anthony Ettinger, profullstack.com, United States.
The disputed domain name <armbasedmacs.com> is registered with Sav.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 16, 2021. On December 17, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 17, 2021, the Registrar 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 January 5, 2022, 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 January 10, 2022.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 12, 2022. In accordance with the Rules, paragraph 5, the due date for Response was February 1, 2022. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on February 3, 2022.
The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on February 10, 2022. 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 Complainant is a British company that, since 1990, designs and produces sophisticated electronic products, including computer processors, graphics processors, digital memories, and peripheral hardware, and supplies software, development tools for computer hardware, in addition to providing software and consultancy services.
The Complainant owns, among others, the following trademark registrations:
|
Trademark |
No. Registration |
Jurisdiction |
Date of Registration |
International Classes |
|
ARM |
2332930 |
US |
March 21, 2000 |
9 |
|
ARM |
2397339 |
US |
October 24, 2000 |
42 |
|
ARM |
2397340 |
US |
October 24, 2000 |
35 |
|
ARM |
UK00002000006 |
UK |
January 29, 1999 |
9, 16, 42 |
|
ARM |
UK00003247296 |
UK |
October 27, 2017 |
9, 42, 45 |
|
ARM |
001112986 |
EUIPO |
June 8, 2000 |
9, 42 |
|
ARM |
013005541 |
EUIPO |
November 7, 2014 |
9, 16, 35, 37, 38, 41, 42, 45 |
The Complainant is the owner of several domain names, among others, <arm.com>, <arm.news>, <arm.ru>, <arm.wiki>, <arm.store>, and <arm.support>.
The disputed domain name was registered on November 12, 2020, and resolves to a parked web page.
The Complainant argued the following:
That it has sold over 200 billion products under its ARM trademark. That these products have reached over 70% of the world’s population.
That its processors are used as the main Central Processing Unit (“CPU”) for most mobile telephones, including those manufactured by Apple, HTC, Nokia, Sony Ericsson, and Samsung.
That it provides CPUs for many other devices, including laptops, tablets, and televisions.
That the disputed domain name is identical and confusingly similar to the Complainant’s trademarks, since it includes said marks entirely.
That the disputed domain name includes the terms “based”, and “macs”, the latter being a well-known and widely used term for Apple Inc.’s computers, which incorporate the Complainant’s products and solutions.
That, on November 10, 2020, Apple Inc., announced the “Next Generation of Mac” computers, powered by a CPU or chip called the “M1” by Apple. That the Apple “M1” CPU utilizes the Complainant’s system on a chip (“SoC”) architecture.
That, two days after the mentioned announcement, the Respondent registered the disputed domain name.
That the disputed domain name does not include additional terms that distinguish it from the Complainant’s marks.
That the Complainant’s trademark ARM is well-known and has been declared so by several judicial and administrative authorities.
II. Rights or Legitimate Interests
That the Respondent does not have any rights to or legitimate interests in the disputed domain name.
That panels previously appointed under the Policy have found that the Complainant only needs to establish a prima facie case in relation with the second element of the Policy.
That the Respondent was well aware of the Complainant and the fame of its ARM trademark when registering the disputed domain name.
That the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services.
That the Respondent has not been commonly known by the disputed domain name.
That the Respondent does not own any trademark registrations for ARM.
That the Respondent is not affiliated with the Complainant, who has not granted any license to the Respondent.
That the Respondent does not have any priority rights in regards to the term “arm”. That the Complainant has been using the ARM trademark since at least 1999.
That the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain.
III. Registered and Used in Bad Faith
That the Respondent has registered and is using the disputed domain name in bad faith.
That the Respondent’s contact information is not available through the WhoIs database since the Respondent is using a privacy service.
That the Complainant sent a demand letter to the Registrar, and that no response was received.
That the web page to which the disputed domain resolves does not display any content other than an offer to sell the disputed domain name for sale, which constitutes passive holding.
That the Respondent registered the disputed domain name to create a likelihood of confusion with the Complainant’s well-known trademark ARM.
That the Respondent attempts to capitalize on the goodwill and recognition associated with the Complainant’s trademark ARM, and to prevent the disputed domain name from being registered by the Complainant.
That the Respondent registered the disputed domain name to intentionally attract Internet users to the said Respondent.
That the fact that the Respondent registered the disputed domain name immediately after Apple Inc. announced a new line of Mac computers that contain M1 chips based on the Complainant’s ARM architecture, constitutes bad faith.
That, at the time of registration of the disputed domain name, the Respondent knew or should have known the Complainant and its well-known trademark ARM.
That Internet users are likely to be confused, misled, and deceived as to the source of the disputed domain name, and are likely to be misdirected away from the Complainant when, in fact, said users may be searching for the Complainant, which may ultimately harm the Complainant’s goodwill and reputation.
The Respondent did not reply to the Complainant’s contentions.
The Complainant must prove that the three elements of paragraph 4(a) of the Policy have been met:
(i) the disputed domain name 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 of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Given the Respondent’s failure to submit a Response, the Panel may decide this proceeding based on the Complainant’s undisputed factual allegations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, and shall draw such inferences it considers appropriate under paragraph 14(b) of the Rules (see Joseph Phelps Vineyards LLC v. NOLDC, Inc., Alternative Identity, Inc., and Kentech, WIPO Case No. D2006-0292, and Encyclopaedia Britannica, Inc. v. null John Zuccarini, Country Walk, WIPO Case No. D2002-0487).
The Complainant has filed evidence showing that it owns registrations for the trademark ARM in different jurisdictions, including the European Union, the United Kingdom, and the United States.
The disputed domain name is confusingly similar to the Complainant’s trademark ARM, as it incorporates said trademark entirely, with the addition of the terms “based”, and “macs”. However, the inclusion of these terms does not prevent a finding of confusing similarity under the first element (see section 1.7, and 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
The addition of the gTLD “.com” to the disputed domain name constitutes a technical requirement of the Domain Name System (“DNS”). Therefore, it has no legal significance in the present case (see CARACOLITO S SAS v. Nelson Brown, OXM.CO WIPO Case No. D2020-0268; International Business Machines Corporation v. chenaibin WIPO Case No. D2021-0339, and Société Air France v. Registration Private, Domains By Proxy, LLC, DomainsByProxy.com / Carolina Rodrigues WIPO Case No. D2019-0578).
Therefore, the first element of the Policy has been met.
Paragraph 4(c) of the Policy sets forth the following examples as circumstances where a respondent may have rights or legitimate interests in the disputed domain name:
(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the disputed 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 disputed domain name, even if it did not acquire 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.
This Panel considers that the Complainant has submitted enough evidence to prove that the ARM trademark is well-known. Also, the Panel agrees with the determination reached in Arm Limited v. Ali Esmaelnejad, nicagent.com, WIPO Case No. D2021-0989, in that the ARM trademark is well-known.
The Complainant has asserted that it is not affiliated in any way to the Respondent and that it has not authorized the Respondent to register or use the disputed domain name (see Beyoncé Knowles v. Sonny Ahuja, WIPO Case No. D2010-1431, and Six Continents Hotels, Inc. v. IQ Management Corporation, WIPO Case No. D2004-0272). The Respondent did not contest these allegations.
The case file contains no evidence that demonstrates that the Respondent has used or has made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. The disputed domain name resolves to a parked website where it is being offered for sale, along with other “popular domains from this seller”. Therefore, this cannot be deemed as a bona fide offering of goods or services..
The Complainant made a prima facie case asserting that the Respondent lacks rights to or legitimate interests in the disputed domain name. Therefore, the burden of production to demonstrate rights to or legitimate interests in the domain name falls on the Respondent, who in this case has failed to ascertain them (see sections 2.1 of the WIPO Overview 3.0, see also Harpo, Inc. and Oprah’s Farm, LLC v. Robert McDaniel, WIPO Case No. D2013-0585; Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
Taking the aforementioned into account, the second element of the Policy has been fulfilled.
According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration and use in bad faith:
(i) circumstances indicating that the respondent has registered or the respondent has 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 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 its website or location.
The fact that the Respondent included in the disputed domain name the well-known trademark ARM, plus the terms “based” and “macs”, shows that the Respondent knew the Complainant and its business when registering the disputed domain name. In addition, the fact that the Respondent registered the disputed domain name immediately after Apple Inc. announced a new line of Mac computers that contain M1 chips based on the Complainant’s ARM architecture, affirms the registration in bad faith.
Therefore, the Respondent targeted the Complainant and its ARM trademark for financial gain (with the aim in view of selling the disputed domain name). This conduct constitutes opportunistic bad faith (see section 3.2.1 of the WIPO Overview 3.0; see also L’Oréal v. Contact Privacy Inc. Customer 0149511181 / Jerry Peter, WIPO Case No. D2018-1937; Gilead Sciences Ireland UC / Gilead Sciences, Inc. v. Domain Maybe For Sale c/o Dynadot, WIPO Case No. D2019-0980 and Nutricia International BV v. Eric Starling, WIPO Case No. D2015-0773).
The addition of the terms “based”, and “macs” affirms the intention to confuse Internet users for commercial gain, since the disputed domain name suggests a connection with Apple, Inc.’s computers and its new “M1” chip, which is based on the Complainant’s ARM SoC architecture.
In the present case, the following facts are relevant to a finding of bad faith registration and use:
- That the Complainant’s trademark ARM is well-known.
- That said trademark refers directly and specifically to the Complainant’s ARM company name, which has sold more than 200 billion products under the ARM trademark and is a leader in the design and production of sophisticated electronic products, such as computer processors.
- That the disputed domain name incorporates the ARM trademark in its entirety.
- That the disputed domain name incorporates the term “macs”, which is a widely used term for computers manufactured by Apple, Inc., which are powered by a processor based on the Complainant’s ARM architecture.
-That the disputed domain name was registered two days after the date on which Apple Inc. announced the “Next Generation of Mac” computers, powered by a chip, which is based on the Complainant’s ARM SoC architecture.
- That the Respondent has not explained why he registered the disputed domain name, which clearly targets the Complainant.
Taking these facts into consideration, the third element of the Policy has been met.
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, <armbasedmacs.com>, be transferred to the Complainant.
Kiyoshi Tsuru
Sole Panelist
Date: February 24, 2022