The Complainant is Arm Limited, United Kingdom, represented by Quinn IP Law, United States of America.
The Respondent is 深圳市欧拉智造科技有限公司 (shen zhen shi ou la zhi zao ke ji you xian gong si), China.
The disputed domain name <arm-cortex.com> is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”).
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on April 1, 2021. On April 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 2, 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 14, 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 amendment to the Complaint in English on April 17, 2021.
On April 14, 2021, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on April 17, 2021. The Respondent did not comment on the language of the proceeding.
The Center verified that the Complaint together with the amendment to 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 and 4, the Center formally notified the Respondent of the Complaint in English and Chinese, and the proceedings commenced on April 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 16, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 28, 2021.
The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on June 7, 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 headquartered in the United Kingdom and is a company active in the electronics industry. The Complainant offers technology-related products and services since 1990, and particularly designs and commercializes computer processors, graphics processors, digital memories and peripheral hardware and supplies software, development tools for computer hardware and also offers software and consultancy services. The Complainant claims that its processors are used as the main Central Processing Unit (“CPU”) for most mobile telephones, including those manufactured by many of the world’s major brands, and that it has sold over 180 billion of such products, reaching over 70 percent of the world’s population. Among the Complainant’s primary products is the brand line of “Arm Cortex” processors. The Complainant states that its first line of “Arm Cortex” processors was announced in October 2004.
The Complainant owns a large portfolio of trademarks protecting the trademarks ARM and CORTEX in many jurisdictions throughout the world. The registrations for the trademark ARM, of which evidence was provided by the Complainant, include, amongst others, the following trademark registrations: United States trademark registration 5,692,669, registered on March 5, 2019 and European Union trademark registration 001112986, registered on June 8, 2000. The Complainant’s registrations for the trademark CORTEX, of which evidence was provided by the Complainant, include, amongst others United States trademark Registration No. 3,336,098, registered on November 13, 2007.
The disputed domain name was registered on January 18, 2021, and the Complainant provides evidence that it is linked to an active webpage, which advertises and offers for sale microprocessors and computer hardware, without the authorization of the Complainant.
The Complainant also provides evidence that it sent a cease-and-desist letter to the Registrar on March 12, 2021 via e-mail, to which it received no response.
The Complainant essentially contends that the disputed domain name consists of a combination of its trademarks for ARM and CORTEX and is therefore confusingly similar to such trademarks, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered, and is being used in bad faith.
The Complainant claims that its trademarks for ARM and CORTEX are well-known trademarks and provides evidence that its ARM trademark has been explicitly recognized as a well-known trademark in judicial and quasi-judicial proceedings, namely in several court cases before the Spanish and Turkish courts and in an administrative proceeding before the European Union Intellectual Property Office. The Complainant also provides evidence that the disputed domain name is linked to an active webpage offering competing microprocessors and computer hardware for sale. The Complainant essentially contends that such use does not confer any rights or legitimate interests in respect of the disputed domain name, and constitutes use in bad faith of its trademarks for ARM and CORTEX.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
Pursuant to paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceedings.
The Complainant stated in its Complaint that to the best of its knowledge, the language of the Registration Agreement was both English and Chinese. On April 14, 2021, the Center notified the Parties that the language of the Registration Agreement was Chinese. Nevertheless, on April 16, 2021, the Complainant confirmed its request that the language of proceedings be English.
The Panel has carefully considered all elements of this case in considering this request, and attaches particular relevance to the following elements: the Complainant's request that the language of proceedings be English; the lack of comment on the language of the proceedings and the lack of response of the Respondent (the Panel notes that the Respondent had the opportunity to respond in either English or Chinese); and the fact that Chinese as the language of proceedings could lead to unwarranted delays and costs for the Complainant. In view of all these elements, the Panel rules that the language of proceedings shall be English.
The Policy requires the Complainant to prove three elements:
(i) the disputed domain name is identical or confusingly similar to a trademark 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.
Based on the evidence and arguments submitted, the Panel’s findings are as follows:
The Panel finds that the Complainant has shown that it has valid rights in the marks ARM and CORTEX, based on its intensive use and registration of the same as a trademark in a large number of jurisdictions, incidentally commencing many years prior to the registration of the disputed domain name.
Moreover, as to confusing similarity, the disputed domain name consists of the Complainant’s registered trademarks for ARM and CORTEX, connected by a hyphen and followed by the generic Top-Level Domain (“gTLD”) suffix “.com”. The Panel refers to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7, which states: “where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”. The Panel concludes that the disputed domain name contains the entirety of the Complainant’s trademarks, which remain easily recognizable. The Panel considers that the addition of the hyphen is not sufficient to dispel the confusing similarity of the disputed domain name to the Complainant’s trademarks, as it is considered merely a punctuation mark (see also Accor and SoLuxury HMC v. YinSi BaoHu Yi KaiQi (Hidden by Whois Privacy Protection Service) / Lin Qing Feng, WIPO Case No. D2016-1262). Moreover, the addition of the applicable gTLD (“.com” in this case) is viewed as a standard registration requirement, and may as such be disregarded by the Panel, see WIPO Overview 3.0, section 1.11.1.
Accordingly, the Panel rules that the disputed domain name is confusingly similar to the Complainant’s registered trademark, and that the Complainant has satisfied the requirements of the first element under the Policy.
On the basis of the evidence and arguments submitted, the Panel finds that the Complainant makes out a prima facie case that that the Respondent is not, and has never been, an authorized reseller, service provider, licensee or distributor of the Complainant, is not a good faith provider of goods or services under the disputed domain name and is not making legitimate noncommercial use or fair use of the Complainant’s trademarks. The Panel also notes that the Respondent is not commonly known by the disputed domain name. As such, the Panel finds that the burden of production regarding this element shifts to the Respondent (see WIPO Overview 3.0, section 2.1). However, the Respondent did not provide any Response or evidence in this administrative proceeding.
Moreover, upon review of the facts, the Panel notes that the disputed domain name directs to an active webpage, advertising and offering for sale microprocessors and computer hardware by reference to the Complainant’s trademarks for ARM and CORTEX, without the authorization of the Complainant. This shows the Respondent’s intention to divert consumers for commercial gain to such websites, by taking unfair advantage of the goodwill and reputation of the Complainant’s trademarks for ARM and CORTEX.
Furthermore, the Panel notes that the nature of the disputed domain name, being confusingly similar to the Complainant’s trademarks, and consisting of a mere combination of two of the Complainant’s trademarks, carries a high risk of implied affiliation with the Complainant (see also WIPO Overview 3.0, section 2.5.1).
On the basis of the foregoing, the Panel considers that none of the circumstances of rights or legitimate interests envisaged by paragraph 4(c) of the Policy apply, and that the Complainant has satisfied the requirements of the second element under the Policy.
The Panel finds that the registration of the disputed domain name was clearly intended to take unfair advantage of the Complainant’s trademarks for ARM and CORTEX, by using such trademarks in the disputed domain name to mislead Internet users, and/or to create a false impression of a business connection between the Respondent and the Complainant. Given the distinctiveness and fame of the Complainant’s trademarks, which the Complainant’s trademarks had already obtained at the time of registration of the disputed domain name by the Respondent, the Panel finds that the registration of the disputed domain name, which clearly targets the Complainant’s well-known trademarks, was obtained in bad faith. Moreover, even a cursory Internet search at the time of registration of the disputed domain name would have made it clear to the Respondent that the Complainant owned registered trademarks in ARM and CORTEX and used these extensively. In the Panel’s view, the preceding elements clearly establish the bad faith of the Respondent in registering the disputed domain name.
As to use of the disputed domain name in bad faith by the Respondent, the website linked to the disputed domain name is currently used as a webpage that advertises and offers for sale the Respondent’s microprocessors and computer hardware by reference to the Complainant’s trademarks for ARM and CORTEX, without the authorization of the Complainant. The Panel holds that this means that the Respondent intentionally attempts to attract Internet users, for commercial gain, to the disputed domain name, by creating consumer confusion between the disputed domain name and the Complainant’s trademarks (see paragraph 4(b)(iv) of the Rules). The Panel accepts this as clear evidence that the Respondent is using the disputed domain name in bad faith.
Finally, the Panel notes that the Respondent has failed to provide any response or evidence to establish its good faith or absence of bad faith. The Panel therefore rules that the Complainant has satisfied the requirements of the third element under the Policy.
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 <arm-cortex.com> be transferred to the Complainant.
Deanna Wong Wai Man
Sole Panelist
Date: June 18, 2021