The Complainant is Arm Limited, United Kingdom, represented by Quinn IP Law, United States of America.
The Respondent is Yupeng Tang, China.
The disputed domain name <arm.app> is registered with Dynadot, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 31, 2021. On March 31, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 1, 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 April 9, 2021 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 April 14, 2021.
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 April 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 11, 2021. The Respondent sent an email on April 21, 2021 to the Center. On May 2, 2021, the Complainant submitted the supplemental filing to the Center. On May 10, 2021, the Respondent submitted a response to the Center.
The Center appointed Sok Ling MOI as the sole panelist in this matter on May 28, 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 Rules, paragraph 7.
The Complainant is a limited company incorporated in the United Kingdom which has been providing technology related goods and services since 1990. The Complainant designs sophisticated electronic products including computer processes, graphics processors, digital memories, and peripheral hardware, and supplies software, development tools for computer hardware, and provides software and consultancy services. The Complainant has sold over 180 billion products under its ARM brand, which includes processors used as the central processing unit for mobile telephones manufactured by Apple, HTC, Nokia, Sony Ericsson and Samsung.
The Complainant owns numerous trade mark registrations for the ARM mark in various jurisdictions, including the following:
|
Jurisdiction |
Mark |
Registration No. |
Registration Date |
|
United States of America |
ARM |
2332930 |
March 21, 2000 |
|
United Kingdom |
ARM |
UK00002000006 |
January 29, 1999 |
|
European Union |
ARM |
001112986 |
June 8, 2000 |
|
Singapore |
ARM |
40201505681S |
November 18, 2014 |
The Complainant’s primary website is located at “www.arm.com”. The Complainant also owns over 190 domain names with the ARM prefix, including the following: <arm.com>, <arm.company>, <arm.services;>, <arm.support>, <arm.solutions>, <arm.store>.
The disputed domain name <arm.app> was registered on December 7, 2020. As of March 26, 2021, the disputed domain name redirected to a landing page offering the same for lease (starting from USD 1,897 per month) or sale (USD 56,888).
The Complainant claims that as a result of its long history of use and marketing of its ARM mark and the explicit judicial recognition of the ARM mark as a “well-known mark” in various open court judgment and administrative decisions, the ARM mark enjoys stronger protection than normal trade marks against third parties.
The Complainants contend that the disputed domain name is identical and confusingly similar to its ARM mark, the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name has been registered and is being used in bad faith.
The Complainant requests for the transfer of the disputed domain name.
The Respondent filed a formal Response on May 10, 2021, claiming that the term “arm” is an ordinary English word describing a part of the human limb which may also possess a linguistic or acronym significance in the areas of technology, weaponry, geography etc. The Respondent contends that ARM as a trade mark is not well known or familiar to him or the 1.4 billion residents of China. As such, the Respondent denies any bad faith in his registration of the disputed domain name.
Additionally, the Respondent contends that the disputed domain name has been passively held for only 5 months since registration in December 2020, and has not been used to refer to the Complainant’s business, goods or services that may mislead the public into thinking a connection exists with the Complainant. As such, the Respondent denies any bad faith in his use of the disputed domain name.
Furthermore, the Respondent contends that the Complainant failed to register the disputed domain name during the sunrise period of March 29, 2018 to May 1, 2018, and so has forfeited its right of ownership. The disputed domain name was then made publicly available for registration on a first-come-first-served basis, and this is when the Respondent legitimately registered the same.
On the above basis, the Respondent contends that the Complainant is engaging in reverse domain name hijacking and requests for the Complaint to be dismissed.
On May 2, 2021, the Complainant filed a first Supplemental Filing to include a prior UDRP decision for the domain name <armcortex.com> to support its arguments raised in the Complaint filed on March 31, 2021. The Respondent filed a formal Response on May 10, 2021, rebutting the Complainant’s contentions and objecting to the admission of the first Supplemental Filing.
On June 2, 2021, the Complainant made a second Supplemental Filing to rebut the Respondent’s various claims set out in his Response of May 10, 2021. On June 2, 2021, the Center acknowledged receipt of the Complainant’s second Supplemental Filing. On June 2, 2021, the Respondent sent an email to the Center to object to the admission of the second Supplemental Filing on the basis that the procedure is unnecessarily delayed and places an unreasonable onus on the Respondent to file yet another response to new evidence and arguments submitted by the Complainant.
Paragraph 10 of the UDRP Rules vests the panel with the authority to determine the admissibility, relevance, materiality and weight of the evidence, and also to conduct the proceedings with due expedition. A supplemental filing has the potential to delay and complicate proceedings. Consequently, whether it is appropriate to admit an unsolicited supplemental filing will depend inter alia on its relevance to the issues in the case, whether the panel considers the content of the submission essential to reaching a fair decision on the facts, and whether the submission could have been made earlier and, if so, why it was not.
This is the consensus view of previous UDRP panels – see the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.6.
The Panel accepts the first Supplemental Filing as this was made prior to the due date of May 11, 2021 for the Respondent to file a Response. Hence, there was no prejudice to the Respondent or delay caused to the proceedings. That said, in any event, if the Panel had not accepted the first supplemental filing, this would not have altered the outcome of this case.
As for the second Supplemental Filing, the Complainant has included the following substantive information:
(a) Information on the results of a Google Keyword Search on the word “arm” (paragraph 9c and Annex C of the second Supplemental Filing)
The Complainant has submitted this additional information purportedly to establish that the Respondent is well-versed in English and thus must/could have known about the Complainant’s ARM mark by performing an Internet search. Whilst this information is relevant to the issues in this case insofar as it may point towards the lack of bona fides in the Respondent’s registration of the disputed domain name, the Panel finds that such information could have been submitted earlier in the amended Complaint.
(b) Information on the domain name investigation conducted using the Respondent’s email address […]@live.com, showing that the Respondent had registered over 170 domain names containing English words in the last 2 years (paragraph 9d and Annex D of the second Supplemental Filing).
The Complainant has submitted this additional information purportedly to establish that the Respondent is well-versed in English and thus has an intention to make a commercial gain from registering the disputed domain name. Whilst this information is relevant to the issues in this case insofar as it shows the cybersquatting tendencies of the Respondent, the Panel finds that such information could have been submitted earlier in the amended Complaint when the identity and email address of the Respondent was disclosed to the Complainant.
(c) Information on the Complainant’s trade mark registrations and business operations in China (paragraph 10a of the second Supplemental Filing)
The Complainant has submitted this additional information purportedly as a rebuttal to the Respondent’s claim that the Complainant’s ARM brand is unfamiliar to the 1.4 billion residents of China. Whilst this information is relevant to the issues in this case, the Panel finds that the Complainant was aware that the Respondent is an individual located in Chongqing, China (see page 3 of the amended Complaint filed on April 14, 2021). The Center had on April 9, 2021 provided the Complainant the opportunity to amend its Complainant in light of full details of the Respondent received from the domain name registrar. As such, the Complainant had the opportunity to include details of its trade mark registrations and business operations in China in its amended Complaint, but has failed to do so.
(d) Information on the requested sale price of the Respondent’s other domain names (paragraphs 13 and 14 and Annex D of the second Supplemental Filing)
The Complainant has submitted this additional information purportedly to show that the Respondent lacks a legitimate business interest in the disputed domain name and that the same has been registered and used in bad faith. Whilst this information is relevant to the issues in this case, the Panel finds that such information could have been submitted earlier in the amended Complaint.
The Panel finds that in sum, the Complainant is seeking to take a “second bite of the cherry” to introduce new information in a supplemental filing which could have been included in its original or amended Complaint.
The Panel agrees with the Respondent that this places an undue burden on the Respondent to respond, and in fact, also places an undue burden on the Panel to consider new evidence and make a determination on this procedural issue, hence resulting in an unnecessary delay of the proceedings. Accordingly, the Panel rejects the categories of information under (a), (b), (c), and (d) listed above, and will not consider the same in the substantive determination of this case.
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following three elements to obtain an order for the disputed domain name to be transferred:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights;
(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.
On the basis of the arguments and evidence introduced by the Complainant and Respondent, the Panel concludes as follows:
The Panel accepts that the Complainant has rights in ARM by virtue of its use and registration of the same as a trade mark.
The disputed domain name incorporates the Complainant’s trade mark ARM in its entirety. The addition of the generic Top-Level Domain (“gTLD”) “.app” is a technical requirement of registration and does not impact the confusing similarity analysis.
Consequently, the Panel finds that the disputed domain name is identical to the Complainant’s trade mark.
Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy.
Under paragraph 4(a)(ii) of the Policy, a complainant bears the burden of proof to establish that the respondent lacks rights or legitimate interests in the disputed domain name. However, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the respondent to come forward with evidence in support of its rights or legitimate interests in the disputed domain name. The respondent may establish its rights in the disputed domain name by demonstrating any of the following, without limitation, under paragraph 4(c) of the Policy:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the disputed domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited v. honghao internet foshan co, ltd, WIPO Case No. D2013-0974.
The Complainant has confirmed that the Respondent is not in any way affiliated with the Complainant or otherwise authorized or licensed to use the ARM trade mark or to seek registration of any domain name incorporating the trade mark. The Respondent appears to be an individual by the name of “Yupeng Tang” located in the Chongqing province of China. There is no evidence suggesting that the Respondent is commonly known by the disputed domain name or has acquired any trade mark rights in the term “arm”.
According to the evidence submitted by the Complainant, the disputed domain name redirected to a landing page offering the same for lease (starting from USD 1,897 per month) or sale (USD 56,888). Presumably, this far exceeds the Respondent’s out-of-pocket costs for acquiring the disputed domain name. It is therefore necessary to look at the broader case context to assess whether such use of the disputed domain name is legitimate or fair. A question to be considered in the context of the present case is whether the fact that “arm” is a known word with a dictionary meaning means that the Respondent has, by virtue thereof, rights or legitimate interests in the disputed domain name. On this point, see section 2.10.1 of the WIPO Overview 3.0, which states:
“Panels have recognized that merely registering a domain name comprised of a dictionary word or phrase does not by itself automatically confer rights or legitimate interests on the respondent; panels have held that mere arguments that a domain name corresponds to a dictionary term/phrase will not necessarily suffice. In order to find rights or legitimate interests in a domain name based on its dictionary meaning, the domain name should be genuinely used, or at least demonstrably intended for such use, in connection with the relied-upon dictionary meaning and not to trade off third-party trademark rights.”
In the present case, the Panel notes that the disputed domain name is being passively held and has not been used in connection with its dictionary meaning. As such, the Panel is satisfied that the Complainant has made out a prima facie case showing that the Respondent lacks rights or legitimate interests in the disputed domain name. The burden of production thus shifts to the Respondent to come forward with evidence of his rights or legitimate interests in the disputed domain name. In this regard, although the Respondent claims that the disputed domain name will be put to use for further ventures, he/she did not provide details of such likely ventures. Since no evidence has been provided to support a right or legitimate interest in the disputed domain name by the Respondent, the prima facie case has not been rebutted.
Consequently, the Panel finds that the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy. It follows therefore that the Respondent’s claim of reverse domain name hijacking by the Complainant is without basis.
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the
registration and use of the disputed domain name in bad faith, namely:
(i) circumstances indicating that the respondent has registered or acquired the disputed 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 trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the respondent has registered the disputed domain name in order to prevent the owner of the trade mark 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s 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 the respondent’s website or location.
The Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services. It has however offered to lease or sell the same (for arguably an exorbitant price). Notwithstanding this, the Panel notes that the disputed domain name is comprised entirely of the dictionary term “arm”, which is quite different from the classic case where a non-dictionary-term or coined third party mark has been incorporated in the disputed domain name. Again, a relevant question to be considered in the context of the present case is whether the fact that “arm” is a known word with a dictionary (or acronym) meaning means that the Respondent may not have targeted the Complainant when he/she registered the disputed domain name. On this point, see section 3.1.1 of WIPO Overview 3.0, which states that:
“Generally speaking, panels have found that the practice as such of registering a domain name for subsequent resale (including for a profit) would not by itself support a claim that the respondent registered the domain name in bad faith with the primary purpose of selling it to a trademark owner (or its competitor).”
In the present case, there is insufficient evidence before the Panel showing that the Respondent was aware of and specifically targeted the Complainant or its trade mark at the time of registration of the disputed domain name. (The Panel also notes that in respect of actual or potential knowledge by the Respondent, while the Complainant notes that its products are used as processors for a large majority of global mobile phones, it is not clear to what extent the Complainant’s goods could realistically be said to be consumer-facing.) The Complainant’s trade mark ARM is not particularly distinctive (it being an acronym for “Advanced RISC Machines”) and an Internet search for the term “arm” may disclose results unrelated to the Complainant, hence there is at least a reasonable possibility that the Respondent may not have targeted the Complainant when he/she registered the disputed domain name.
There is also no objective evidence that the Respondent had any intention to create confusion and/or capitalize on the value of the Complainant’s trade mark to attract Internet users to its website for financial gain. The Panel is therefore unable to conclude that the circumstances referred to in paragraph 4(b)(i), (ii), (iii), and (iv) of the Policy are applicable to the present case.
The ultimate burden of proof rests with the Complainant. Taking into account all the circumstances, the Panel finds that the Complainant has failed to discharge its burden of demonstrating that the Respondent has registered and used the disputed domain name in bad faith.
Accordingly, the requirements of the third element under paragraph 4(a) of the Policy have not been satisfied.
For the foregoing reasons, the Complaint is denied.
Sok Ling MOI
Sole Panelist
Date: July 25, 2021