Complainant is Intel Corporation, Santa Clara, California, United States of America, represented by Harvey Siskind LLP, United States of America.
Respondent is Pentium Fund, Newport Beach, California, United States of America, represented by Cabinet Bitoun Avocat, France.
The disputed domain names <pentiumfund.com>, <pentiumfund.net> and <pentiumfund.org> (the “Domain Names”) are registered with Network Solutions, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 4, 2009. On February 5, 2009, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the Domain Names. On February 5, 2009, Network Solutions, LLC transmitted by email to the Center its verification response confirming that 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced February 12, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 4, 2009. The Response was filed with the Center March 4, 2009.
The Center appointed Lawrence K. Nodine, Richard W. Page and Alain Bensoussan as panelists in this matter on March 27, 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.
Complainant introduced the world's first microprocessor in 1971, the 4004. In 1992, Complainant announced the introduction of its first PENTIUM processor. Complainant received its first U.S. trademark registration for its PENTIUM mark in 1994.
In 1998, Complainant's worldwide revenues exceeded US$26 billion, of which at least US$19 billion was attributable to PENTIUM processor sales. In 1999, Complainant's worldwide revenues exceeded US$29 billion of which at least US$18.8 billion was attributable to PENTIUM processor sales.
By 2005, Complainant's worldwide revenues had increased to approximately US$ 39 billion, of which at least US$22.4 billion was attributable to PENTIUM processor sales. Since that time Complainant's annual worldwide revenues have remained in the US$35-40 billion range, with revenues attributable to PENTIUM processor sales totaling about US$1.5 billion annually.
Complainant owns over 500 foreign trademark registrations for its PENTIUM mark in approximately 175 jurisdictions throughout the world. Some of these registrations are: United States Reg. No. 1834434 for PENTIUM for computer hardware, namely, microprocessors, registered on May 3, 1994; and U.S. Reg. Nos. 2173650 and 2201867, issued July 14, 1998, and November 3, 1998, respectively for PENTIUM for a vast array of computer and computer-related goods. In 1998, Complainant spent in excess of US$140 million dollars to advertise its PENTIUM processors, and in 2005 it spent in excess of US$150,000.
Complainant's PENTIUM mark has been declared famous by numerous courts and trademark administrative bodies around the world, including the following jurisdictions: 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.
Complainant has registered 84 PENTIUM-based domain names worldwide, including <pentium.com>, <pentium.org>, and <pentium.net>. Complainant registered <pentium.com> in 1996, and subsequently registered <pentium.org>. Complainant acquired <pentium.net> as a result of another UDRP decision, as discussed infra, in 2002.
When an Internet user enters one of Respondent's Domain Names, he or she is directed to a “parking” webpage showing primarily sponsored links. While the links change with each view, they invariably include prominent references to Complainant and its products. Moreover, several of these links take users to third party websites where users can purchase Complainant's products. Complainant has not authorized such uses of its marks.
There is an Opposition pending in front of the OHIM regarding the trademark PENTIUM FUND.
The Domain Name <pentiumfund.com> was registered on May 1, 1999.
The Domain Names <pentiumfund.org> and <pentiumfund.net> were registered on October 17, 2006.
With respect to paragraph 4(a)(i) of the Policy, Complainant alleges that: Complainant has registered the PENTIUM mark worldwide, and at least five years prior to Respondent's registration of the Domain Names. Complainant now has several registrations that are incontestable under U.S. law. Therefore, Complainant has established prima facie evidence of validity and inherent distinctiveness of its PENTIUM mark.
In a prior UDRP decision, Intel Corporation v. Ox90, WIPO Case No. D2002-0010, in which the panel ordered transfer of <pentium.net> to Complainant, the panel found that Complainant's PENTIUM mark was “arbitrary and distinctive” and “well known in the fields of microprocessors and computers.”
Use of a famous mark in a domain is likely to cause confusion, mistake, or to deceive since users are likely to believe that the trademark holder authorized or is controlling the disputed website. Yahoo! Inc. v. Yahoo-Asian Company Limited, WIPO Case No. D2001-0051. In light of Complainant's widespread use and promotion of its PENTIUM mark over the past 17 years, this mark, which has already been found by a prior panel to be “arbitrary and distinctive,” is one of the most famous marks in the U.S. and throughout the world.
Respondent's Domain Names include Complainant's famous PENTIUM mark in its entirety. The only additional element to the Domain Names (other than the gTLD) is the common word “fund,” which is non-distinctive. It is well established that the addition of a non-distinctive element to a famous, distinctive trademark is not sufficient to avoid confusion.
The content of the webpages corresponding to Respondent's Domain Names adds to the likelihood of confusion. Each of the webpages includes prominent references to Complainant and its products, and allows users to link to third party websites where they can purchase Complainant's products. Internet users will likely come to the false conclusion that Complainant is affiliated with these webpages.
Based upon the foregoing, Respondent's Domain Names are confusingly similar to Complainant's PENTIUM mark.
With respect to paragraph 4(a)(ii) of the Policy, Complainant alleges that:
Where there is no plausible explanation for and use of a famous mark in a domain name other than to trade off of its goodwill, Respondent has no legitimate rights or interests in the Domain Names. Nike, Inc. v. Azumano Travel, WIPO Case No. D2000-1598. Six years ago, in Intel Corporation v. Ox90, supra, the panel stated with regard to Complainant's PENTIUM mark: “Respondent was without doubt aware of Complainant's mark when it registered the disputed domain name, and has no basis to claim a bona fide offering of goods and services without notice of a dispute.” This same reasoning applies in the present case. See also Madonna Ciccone, p/k/a Madonna v.Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847 (intentionally trading on the fame of a mark cannot constitute bona fide use). Complainant coined the PENTIUM mark and it has no meaning other than to refer to Complainant's processors and other products. There can be no plausible explanation for the use of the Domain Names, other than to intentionally trade off of the enormous goodwill in the PENTIUM mark in order to drive traffic to Respondent's site.
In light of the likelihood of confusion caused by Respondent's use, Respondent is infringing Complainant's famous PENTIUM mark. Such infringement precludes a bona fide offering of goods and/or services. PHE, Inc. v. Chris Calnek, WIPO Case No. D2006-1612; UNIVERSAL CITY STUDIOS, INC. v. G. A.B. ENTERPRISES, WIPO Case No. D2000-0416.
The use of a famous trademark in a domain name for a website that simply contains hyperlinks is not a legitimate commercial use.
Any use by Respondent of the name “pentium fund” came long after Complainant's PENTIUM mark became famous. Insofar as Respondent has used the name “pentium fund” (and there is no evidence of such legitimate use on any of the three Domain Names), it has done so with complete knowledge of Complainant and its rights, and with an intent to trade off Complainant's goodwill. Thus, assuming arguendo Respondent has been commonly known by this name, this would not establish legitimate rights or interests in the Domain Names. See Yahoo! Inc. v. Yahoo-Asian Company Limited, supra (“[I]t is beyond credulity that the respondent's corporate name was chosen in the absence of knowledge of the complainant's famous trademark. Under these circumstances, in the context of the Policy, the establishment of the respondent was a sham and paragraph 4(c)(ii) of the Policy cannot apply.”).
At any rate, where a complainant has established use and fame of its mark, it is unlikely that Respondent would be commonly known by the mark. See Nike, Inc. v. B.B. de Boer, WIPO Case No. D2000-1397 (“The Panel is unable to find how the Respondent, or any person for that matter beside the Complainant, could claim a right or a legitimate interest with respect to the Domain Name <nike-shoes.com>.”).
Respondent is not making a noncommercial or fair use of the Domain Names. The “parked” webpages that correspond to the Domain Names feature sponsored links, which include unauthorized references to Complainant and its products. A WIPO UDRP panel recently explained “parking” services as follows: “It is common knowledge that the way in which many of these services operate is that the domain parking service operators obtain ‘click through revenue' when Internet users click on the ‘sponsored links' on the displayed page. Many of these services will then provide the domain name registrant with part of that ‘click through' revenue.” Owens Corning v. NA, WIPO Case No. D2007-1143. Respondent thus likely stands to benefit directly from the sponsored links. At any rate, advertisers clearly pay for the links, which are used to facilitate sales. This is a purely commercial use. Nothing about these webpages suggests fair use. Respondent is simply using Complainant's trademark in its Domain Names to divert Internet users to its website. Therefore, Respondent is not making a legitimate noncommercial or fair use of the Domain Name, but instead is misleading and diverting consumers for commercial purposes.
Based on the foregoing, Complainant contends Respondent has no legitimate rights or interests in the Domain Names.
With respect to paragraph 4(a)(iii) of the Policy, Complainant alleges that:
bad faith exists where Respondent uses a domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation or endorsement of its website. That is the case here. Respondent's use of the famous PENTIUM trademark in its Domain Names causes likelihood of confusion. This confusion is increased by the sponsored links appearing on the corresponding webpages, which feature prominent references to Complainant and its products. As noted above, Respondent stands to benefit financially from the sponsored links. It is worth noting, however, that in order to find commercial gain “the gain does not need to be derived by the Respondent himself.” Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912 (finding bad faith based on “parking” webpage).
Again, Intel Corporation v. Ox90, supra, ordering the transfer of <pentium.net> to Complainant, is instructive. There, the panel observed:
Respondent has used the disputed domain name to direct Internet users to a website that channels those users to commercial providers of goods and services. Such services are ordinarily provided for a fee, or otherwise for a commercial benefit. The Panel finds that Respondent has used the disputed domain name for commercial gain by creating confusion among Internet users as to Complainant's sponsorship of or affiliation with Respondent's website. Such use is in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
This observation is equally applicable here.
Panels find bad faith where respondent is using a famous trademark and there is no plausible legitimate use of the mark in the domain. Therefore, Respondent registered the Domain Names in bad faith since the Domain Names wholly incorporate, and are confusingly similar to, Complainant's famous PENTIUM mark, and there is no plausible legitimate use as discussed above. In addition, Complainant has not authorized Respondent to use its mark. This is further evidence that Respondent is acting in bad faith and cannot establish legitimate interests in the subject domain name.
Respondent's bad faith is all the more apparent given Complainant's widespread use and promotion of its famous PENTIUM mark, and Complainant's numerous trademark registrations in the U.S. and worldwide. Bad faith exists whether there can be no question that respondent knew or should have known about complainant's trademark rights before registering its domain name.
Based on the foregoing, Complainant contends Respondent registered the Domain Names in bad faith. Complainant has thus met all three criteria for requiring the transfer of the Domain Names in accordance with paragraph 4(a) of the Policy.
With respect to paragraph 4(a)(i) of the Policy, Respondent alleges that:
“pentium fund” is not identical to “pentium” since “pentium” is composed of one sole word and “pentium fund” of two words.
The term “fund” gives to the consumer all the meaning of the activity of Pentium Fund Limited. It is in that way as much important as the term “pentium” in an overall appreciation of the trademark “pentium fund”.
Furthermore, “pentium fund” has neither identity nor similarity to “pentium” when it comes to the perception of the consumer.
The trademark PENTIUM was used by Intel for a brand of microchips, which are no longer sold.
In all advertising campaigns of Intel Corp., and articles about the microchips of Intel, “pentium” is continuously shown and/or written along with the trademark INTEL or the symbol INTEL Inside. The marketing policy described in “Vente Informatique” December 1992 shows that the central element was the INTEL inside symbol. The average consumer knows the trademark PENTIUM only in association with Intel and as a microchip.
The consumer sees most of the time the trademark PENTIUM in association with a specific figurative design, as well as a series of terms like “Inside” or numbers like “3” or “4”.
On the other side, Pentium Fund is a firm's name specialised in financial services and will never be used for products. It has never been shown with figurative designs. Pentium Fund is very different for the consumer.
Finally, at this point, the activities of Intel and Pentium Fund Limited are technically complex. Especially, the client and partners of Pentium Fund do not invest in hedge funds because of the brand of microchips. They will take their decision after a careful analysis of the services and financial products proposed by Pentium Fund.
As regards PENTIUM, nobody will buy a microchip without comparing the technical features of it, because the microchip is the “heart” of the PC. If the microchip goes down, the computer can't run anymore.
With respect to paragraph 4(a)(ii) of the Policy, Respondent alleges that: Complainant has no rights or legitimate interests in respect of the Domain Names that are the subject of the Complaint.
Pentium is in a very different market than Pentium Fund and is not registered in the same classes.
There is no link between the activities of Intel and the investment funds. The sister company of Intel is called Intel Capital and never uses the PENTIUM mark owned by her mother company.
The consumer typing “www.pentium.com” on the Internet will go on the “www.intel.com” website. Actually, Intel has no interest in the domain names with “pentium”.
Consumers don't establish a link between the two brands since Pentium is used exclusively for microprocessors (and not used anymore) and Pentium Fund for a firm providing complex investment services.
Therefore Respondent is making a legitimate fair use of the domain names, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademarks or Domain Names.
With respect to paragraph 4(a)(iii) of the Policy, Respondent alleges that:
The Domain Names were not registered for the purpose of selling, renting, or otherwise transferring the domain name registrations to Complainant, as the alleged owner of the trademark or service mark, or to a competitor of Complainant, for valuable consideration in excess of Respondent's out-of-pocket costs directly related to the Domain Names.
The three Domain Names are linked to Respondent's main domain name which is “www.pentium-fund.com” curiously not quoted by Complainant.
If they were registered and currently used as “parking” sites, it was to avoid exploitation by a third party. But Respondent is as of today linking all Domain Names to <pentium-fund.com>.
Finally, Respondent asserts that Complainant and Respondent are not competitors and the Domain Names were not registered by Respondent primarily to disrupt Complainant's business.
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Domain Names; and (iii) the Domain Names have been registered and are being used in bad faith. (Policy, paragraph 4(a).)
Complainant has used the PENTIUM trademark in connection with its microprocessors since 1992, received its first U.S. trademark registration for its PENTIUM mark in 1994 and is the owner of numerous trademark registrations in many different countries. Given the extensive advertising and numerous sales of its Pentium products and the existence of the United States and foreign trademark registrations for PENTIUM, the Panel finds that Complainant has trademark rights in the PENTIUM trademark.
Furthermore, the challenged Domain Names are confusingly similar to Complainant's PENTIUM trademark. The challenged Domain Names incorporate the totality of the coined term “pentium”. The addition of the term “fund” is not sufficient to dispel the confusion.
Respondent argues that Complainant has abandoned its rights in the PENTIUM mark. However, the trademark registrations of record are still valid and in force. Respondent has not offered sufficient evidence to carry its heavy burden to prove abandonment.
Respondent's primary argument is that its financial services are not likely to be confused with Complainant's computer chips. This argument is not relevant to Policy 4(a)(i), which only requires that the Domain Names be confusingly similar to a trademark in which Complainant has rights. Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698, (“The Respondent does not deny that the disputed domain name is confusingly similar to the GUINNESS trademark. Rather he says there is no trademark infringement because his site does not sell similar wares in the same geographical sphere as the Complainant. But there is an important distinction between the domain name on the one hand and the Website on the other. The use to which the site is put has no bearing upon the issue whether the domain name is confusingly similar to the trademark, because by the time Internet users arrive at the Website, they have already been confused by the similarity between the domain name and the Complainant's mark into thinking they are on their way to the Complainant's Website”).
In order for Respondent to demonstrate rights or legitimate interests in the Domain Names, it must show
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial 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.
Respondent's primary contention is that it operates a bona fide financial services business and therefore satisfies paragraph 4(c)(i) of the Policy. The Panel rejects this contention and finds that Respondent has not used the challenged Domain Names in connection with a bona fide offering of goods or services. Respondent says that it uses the challenged Domain Names in connection with financial services: “PENTIUM FUND is a British Virgin Islands renowned hedge fund linked to SOCIETE GENERALE's hedge fund platform.” However, Respondent offers no evidence to substantiate this claim. There is no evidence that Respondent itself offers any bona fide financial service products. There is no evidence relating to the referenced Societe Generale or its purported hedge fund. There is no evidence of any relationship to this organization.
The annexed evidence includes copies of the webpages associated with the challenged Domain Names. These pages show links to third party financial services companies, such as Oppenheimer Funds and Scottrade. However, there are also links to third parties selling computers built on Complainant's processors.
Panels have held on several occasions that merely offering links to third party pages does not constitute a bona fide use under paragraph 4(c)(i). RUSTICAE SELECCIÓN DE CALIDAD S.L. v. LAKSH INTERNET SOLUTIONS PRIVATE LIMITED, WIPO Case No. D2008-1119. J.Choo Limited v. Sinclare Vabalon, BHG, WIPO Case No. D2008-1091 (“The Panel considers that, in the absence of any alternative explanation, the Respondent in all likelihood selected the Domain Name because of its incorporation of the Complainant's trademark with a view to receiving revenue from web traffic which the Respondent directs to the various links on the associated website. This could not be described as a bona fide offering of goods or services, and it is clear to the Panel that the Respondent's use of the Domain Name in this manner does not confer any rights or legitimate interests upon it.”); Mypersonalcpa.com, Inc. v. Nilesh Sangoi, WIPO Case No. D2007-1296 (endorsing analysis in Media General Communications, Inc. v. Rarenames WebReg, WIPO Case No. D2006-0964 and holding that parking pages are not universally illegitimate, but that panel should consider, inter alia, whether respondent knew or should have known that page was confusingly similar to complainant's page; where respondent knew of complainant's rights, parking links on the page was not a legitimate business under Policy paragraph 4(c)); Confederation Nationale du Credit Mutuel v. George Kershner, WIPO Case No. D2006-0248 (unexplained parking page held illegitimate under paragraph 4(a)(ii)); Confederation Nationale du Credit Mutuel v. Josh Self, WIPO Case No. D2005-1057 (respondent did not defend parking page).
However, panelists have been careful to avoid universally condemning parked pages. See, e.g., Luxair SA v. Puma Industrial Co., Ltd, WIPO Case No. D2009-0162 (Where respondent had registered in China trademark corresponding to the domain name and it was reasonable to conclude that respondent did not know of complainant's rights when it registered, evidence of sponsored links on parked page did not alone prove illegitimate use: “Absent evidence of a “sham” registration, it is sufficient that Respondent had (and has) rights in a trademark corresponding to the disputed [*13] domain name to establish that it has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. The fact that Respondent has used the disputed domain name in connection with a “link farm” parking page furnished by its registrar does not act to deprive Respondent of rights in its trademark or in the corresponding disputed domain name. Respondent's parking page may create Internet user confusion regarding whether Complainant sponsors or is affiliated with the website identified by that parking page. However, this is not a trademark infringement proceeding. The issues addressed by the Policy are significantly more limited than the issues potentially encompassed in trademark infringement proceedings. In a dispute settlement proceeding under the Policy, a respondent may succeed in establishing rights or legitimate interests in a domain name notwithstanding that it may be using that domain name in a way that infringes a third party trademark holder's rights outside the scope of the Policy. In the present circumstances, if Complainant considers that Respondent is using the disputed domain name in a way that inappropriately takes advantage of [*14] Complainant's rights in its service mark, it is open to Complainant to initiate other proceedings in an appropriate forum.”).
The Panel finds that Respondent has not demonstrated that the domain names are used in connection with a bona fide offering of goods or services. Following Mypersonalcpa.com and Media General but distinguishing Luxair, we find that Respondent must have known of Complainant's rights when it registered. Indeed, many of the links on Respondent's page are to third parties selling computers built on Complainant's processors. Intel Corporation v. Ox90, supra (“Respondent was without doubt aware of Complainant's mark when it registered the disputed domain name, and has no basis to claim a bona fide offering of goods and services without notice of a dispute.”).
Accordingly, the Panel finds that Respondent's “parked pages” do not constitute bona fide offering within the meaning of paragraph 4(c)(i) of the Policy, nor does Respondent have rights or legitimate interests to the Domain Names on other grounds of paragraph 4(c) of the Policy.
The evidence demonstrates bad faith use and registration. The Panel finds it more likely than not that Respondent was well aware of Complainant's trademark rights when it registered these Domain Names. This awareness is, of course, indisputable with respect to <pentiumfund.net> and <pentiumfund.org>, both of which Respondent registered in 2007, fully four years after Complainant filed an opposition proceeding to stop Respondent's attempt to register “Pentium Fund” as a Community Trademark. But even in 1999 when Respondent registered <pentiumfund.com>, it is more likely than not that Respondent was well aware of Complainant's trademark rights, which were widely registered by that time, but also extremely well known worldwide.
Given this, the Panel finds that it is more likely than not that Respondent registered the challenged Domain Names intending to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion as to source or sponsorship with Complainant and its trademarks. Policy, paragraph 4(b)(iv).
Respondent also uses the challenged Domain Names in bad faith. Respondent does not deny the allegation that it collects pay-per-click advertising revenue. The Panel finds that, for commercial purposes, Respondent is exploiting the good will and notoriety to attract Internet users and then route them on to other sites to collect a pay-per-click fee. This is bad faith use. The Dow Chemical Company v. Hwang Yiyi, WIPO Case No. D2008-1276.
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 names, <pentiumfund.com>, <pentiumfund.net> and <pentiumfund.org> be transferred to Complainant.
Lawrence K. Nodine | |
Richard W. Page | Alain Bensoussan |
Dated: April 19, 2009