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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Arm Limited v. Privacy Protection/ Anthony Ettinger, profullstack.com

Case No. D2021-4234

1. The Parties

The Complainant is Arm Limited, United Kingdom, represented by Quinn IP Law, United States of America.

The Respondent is Privacy Protection/ Anthony Ettinger, profullstack.com, United States of America.

2. The Domain Name and Registrar

The disputed domain name <armbasedlaptops.com> is registered with Sav.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 16, 2021. On December 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 16, 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 registrar verification also revealed that the disputed domain name had “expired in auction”. On December 17, 2021 the Center’s sent an email to the Registrar requesting clarification as to the status of the disputed domain name. On December 22, 2021, the Registrar replied, stating that the disputed domain name was “available for bidding”. On December 28, 2022, the Center transmitted its Expiry email in relation to paragraph 3.7.5.7 of the ICANN Registrar Accreditation Agreement. Noting that the disputed domain name had expired November 12, 2021 and noting the Registrar’s statement indicating that: “This domain is expired in auction.” On January 5, 2022, the Registrar sent an email to the Center in relation to the expiry email, stating that no further action was required by the Parties to renew or restore the disputed domain name in order for the present UDRP procedure to continue, and further confirmed that the domain name would be placed in Registrar LOCK status, and that the disputed domain name would remain in such status for the pendency of this UDRP procedure.

The Center sent an email communication to the Complainant on January 13, 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 21, 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 21, 2022. In accordance with the Rules, paragraph 5, the due date for Response was February 10, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 21, 2022.

The Center appointed Alistair Payne as the sole panelist in this matter on February 28, 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.

4. Factual Background

The Complainant designs sophisticated electronic products, including computer processors, graphics processors, digital memories and peripheral hardware and supplies software, development tools for computer hardware, and provides software and consultancy services. It has sold over 200 billion products under its ARM brand, and its products and services reach over 70 percent of the world’s population.

The Complainant owns trade mark registrations in many countries for its ARM mark including United States trade mark registration No. 5692669 for ARM registered on March 5, 2019, and United Kingdom trade mark registration No. UK00002000006 registered on January 29, 1999.

The disputed domain name was registered on November 12, 2020, and resolves to a domain name re-sellers parking page that offers the disputed domain name for sale.

5. Parties’ Contentions

A. Complainant

The Complainant submits that it owns registered trade mark rights in its ARM mark as noted above and that its mark is wholly incorporated into the disputed domain name which is sufficient to establish confusing similarity. It says that the addition of the commonly used term “laptops” and of the word “based” after the ARM trade mark is not only insufficient to distinguish the disputed domain name from Complainant’s ARM trade mark but because of the Complainant’s business activities in selling its products for incorporation into laptop computers, enhances the likelihood of confusion with the Complainant as to the source of the website rather than acting as a distinguisher.

The Complainant submits that the disputed domain name was registered on November 12, 2020 and has not been used in connection with a bona fide offering of goods and services in that time and has only been used for a listing offering the disputed domain name for sale. Further, the Complainant asserts that the Respondent does not have any trade mark registrations for “ARM” or for the disputed domain name, that it is not affiliated with or licensed by Complainant and that the Respondent is not commonly known as “ARM”. It also submits that the Respondent is not making a legitimate, noncommercial, or fair use of the disputed domain name.

The Complainant notes that its ARM mark is distinctive and well known considering the extent of its worldwide sales since 1990 and that its products are used by more than 70 percent of the world’s population and that the Complainant has a significant Internet presence for its ARM products, which would have shown up in any Google search. It says that while the disputed domain name was only registered in November 2020, that it has been using its trade mark in the United States for 30 years and that its trade mark registrations pre-date the disputed domain name by many years and therefore the disputed domain name was registered knowingly by the Respondent. It asserts that the Respondent’s registration of the disputed domain name was opportunistic having been made two days after an Apple announcement of its “Next Generation of Mac” laptops, including the Apple M1 that uses the Complainant’s chip architecture.

With this background in mind, the Complainant asserts that the Respondent chose to register the disputed domain name, incorporating the Complainant’s ARM trade mark in its entirety along with the words “based” and “laptop”, not for legitimate purposes, but most likely for the purposes of potential “phishing” or “pharming” attacks.

It notes also that the Respondent has made no bona fide use of the disputed domain name itself and that the disputed domain name resolves to a re-seller’s parking page that features a prominent notice advertising that the disputed domain name is for sale. This says the Complainant is indicative that the Respondent registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the Complainant who is the owner of the ARM trade mark and that there is a very strong inference in that regard. The Complainant refers to the prior decision Arm Limited v. Super Privacy Service LTD c/o Dynadot / Ya Lin, WIPO Case No. D2021-0969, in which the panel found that where the disputed domain name was registered then listed for sale less than six months later for a substantial price, the disputed domain name was registered primarily for the purpose of selling the disputed domain name. It says that in that case the panel found that bad faith is established where, “[i]n light of the reputation of the Complainant’s trademark, it is reasonable to conclude that the respondent registered the disputed domain name to sell to the Complainant or a competitor of the Complainant”.

The Complainant says that the Respondent failed to respond to its cease and desist letter sent on June 23, 2021 and that this in conjunction with its passive holding of the disputed domain name and the use of a privacy service to try and mask its identity are factors that are further indicative of bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has demonstrated that it owns various registered trade mark rights for its ARM trade mark including United States trade mark registration No. 2332930 for ARM registered on March 21, 2000, and in the United Kingdom trade mark registration No. UK00002000006 registered on January 29, 1999.

This mark is wholly incorporated into the disputed domain name, which is therefore confusingly similar to the Complainant’s mark. The addition to the disputed domain name of the common English words “based” and “laptop” do not prevent a finding of confusing similarity.

As a result, the Panel finds that the Complaint succeeds under this element of the Policy.

B. Rights or Legitimate Interests

The Complainant has used its ARM mark since the 1990’s and its products under that mark have been distributed worldwide, including in laptop computers and its mark is accordingly very well reputed. The Complainant has submitted that the disputed domain name was only registered on November 12, 2020 and resolves to a domain name re-seller’s page that offers the disputed domain name for sale and has not otherwise been used in connection with a bona fide offering of goods and services since that time. This is strongly suggestive that a substantial reason for the Respondent’s recent registration of the disputed domain name was to resell it at a profit.

The Complainant has also asserted that the Respondent does not have any trade mark registrations for “ARM” or for the disputed domain name, that it is not affiliated with or licensed by Complainant and that the Respondent is not commonly known as “ARM”. Finally, the Complainant has submitted that the Respondent’s use of the disputed domain name since its registration to resolve to a re-seller’s parking page which advertises the disputed domain name “for sale“ is neither a legitimate, noncommercial, nor a fair use of the disputed domain name.

The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. As the Respondent has failed to rebut this case and also for the reasons set out under Part C below, the Panel finds that the Complainant has successfully made out its case and that the Complaint also succeeds under this element of the Policy.

C. Registered and Used in Bad Faith

The disputed domain name was registered on November 12, 2020 which was two days after an Apple announcement of its “Next Generation of Mac” laptops, including the Apple M1 that uses the Complainant’s chip architecture and many years after the Complainant’s first use of its ARM mark in the United States and after the registration of the Complainant’s United Kingdom trade mark registration No. UK00002000006 for ARM in 1999. Considering the very substantial size of the Complainant’s international business under its ARM mark and the significant degree of repute attaching to that mark both in the United States and elsewhere and also considering the Internet presence in Google searches and elsewhere of the Complainant’s ARM mark and the disputed domain name’s registration just after Apple’s announcement, the Panel considers it more likely than not that the Respondent was well aware of the Complainant’s ARM mark at the date of registration of the disputed domain name.

Under paragraph 4(b)(i) of the Policy circumstances indicating that a respondent has registered or has acquired a 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 documented out-of-pocket costs directly related to the domain name is evidence of registration and use in bad faith.

This appears to be a case of opportunistic registration of the disputed domain name in bad faith in terms of this section of the Policy. The disputed domain name was registered, as noted earlier, just days after Apple’s announcement of the launch of its new laptops containing the Complainant’s ARM chips. Considering the degree of repute attaching to the Complainant’s ARM mark and based on the evidence it has never been used for any purpose other than to resolve to a re-sellers parking page advertising the disputed domain name for sale, this creates a very strong inference that the Respondent registered the disputed domain name primarily for the purpose of selling it at a substantial profit beyond its out-of-pocket registration costs.

The Complainant has been subject to various past attempts by various third parties to illegitimately use its ARM mark in domain names for the purposes of re-sale or to trade off its reputation and this finding is consistent with an earlier panel’s decision in Arm Limited v. Super Privacy Service LTD c/o Dynadot / Ya Lin, supra, even though there is no actual consideration listed as a sale price in the current case. The Panel finds that the circumstances of the current case create a sufficiently strong inference that the Respondent is looking to resell the disputed domain name at a substantial profit that the requirements of paragraph 4(b)(i) of the Policy are fulfilled.

The fact that the Respondent failed to respond to the Complainant’s cease and desist letter sent to it through the registrar on June 23, 2021 and that it originally used the registrar as a privacy service to try to mask its identity, only further reinforces the Panel’s view of the Respondent’s bad faith.

For these reasons the Panel finds that the disputed domain name was both registered and used in bad faith and that the Complaint succeeds under this element of the Policy.

7. Decision

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 <armbasedlaptops.com> be transferred to the Complainant.

Alistair Payne
Sole Panelist
Date: March 10, 2022

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