Arm Limited of the UK won another UDRP at the WIPO, this time against the domain ARM.co.
The decision follows that of ARM.click and will definitely send chills down the spine of owners of other TLDs matching the “ARM” keyword.
In their response, the Respondent highlighted the obvious generic nature of “arm” thus:
Respondent contends that the word “arm” is a generic and common word in the English language. The Domain Name was not registered for any purpose having to do with Complainant. Furthermore, Respondent never attempted to contact or sell the domain name to Complainant. Respondent claims he may also choose to develop the Domain Name “for uses that don’t conflict with Complainant’s trademarks, or commercial interests without infringing the claimed rights presented in the complaint”.
As regards his legitimate interests Respondent claims that this stems from “the rights of any person or legal entity to register an available domain name taking notice of not infringing any third party rights among other considerations”.
Lastly, Respondent states that it holds registrations of several generic domain names and that this is one of his business activities.
The sole panelist, Marina Perraki, seemed to focus on the asking price for the domain ARM.co, first for $20,000 dollars and subsequently for $50,000 dollars.
Final decision: transfer the domain ARM.co to the Complainant.
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Arm Limited v. INTERNET PORTFOLIO SA
Case No. DCO2021-00231. The Parties
Complainant is Arm Limited, United Kingdom, represented by Quinn IP Law, United States of America (“United States”).
Respondent is INTERNET PORTFOLIO SA, Panama, represented internally.
2. The Domain Name and Registrar
The disputed domain name <arm.co> (“Domain Name”) is registered with Hello Internet Corp (the “Registrar”).
3. Procedural History
The Complaint was filed 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 Domain Name. On April 6, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in Complaint. The Center sent an email communication to the Complainant on April 7, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on April 9, 2021.
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 Respondent of the Complaint, and the proceedings commenced on April 13, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 3, 2021. The Response was filed with the Center on May 4, 2021.
The Center appointed Marina Perraki as the sole panelist in this matter on May 14, 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.
4. Procedural Matter: Late filing of the Response
The due date for the Response was May 3, 2021. The Response was filed with the Center on May 4, 2021.
Paragraph 14(a) of the Rules provides that, in the event of a late response, absent exceptional circumstances, panels shall proceed to a decision based solely on the Complaint.
Paragraph 14(a) of the Rules is counterbalanced by paragraph 10(b) of the Rules, which requires panels to ensure that parties are treated with equality and that each party is given a fair opportunity to present its case.
As noted in Türk Ticaret Bankası A.Ş. v. Seda Celik, WIPO Case No. D2019-3155, late responses were taken into account by the UDRP panels in cases where, inter alia:
– response was late only by one day (see Kate Spade, LLC v. Darmstadter Designs, WIPO Case No. D2001-1384, and Arthur Guinness Son & Co. (Dublin) Limited v. Feeney O’Donnell and John O’Donnell, WIPO Case No. D2000-1710);
In the case at hand, notwithstanding the absence of exceptional circumstances, as Respondent has claimed none, the lateness of the filing of the amended Response by one day has not prejudiced Complainant nor has it delayed the Panel’s decision. The Panel therefore deems it appropriate to admit Respondent’s late Response.
5. Procedural Matter: Supplemental filings
The Complaint was filed on March 31, 2021, and Complainant filed on May 2, 2021, a First Supplemental Filing, on May 14, 2021, a Second Supplemental Filing and on May 25, 2021, a Third Supplemental Filing.
With the first and third supplemental filings Complainant submitted decisions of UDRP panels for the domain names <armcortex.com> and <arm.click> and the second filing was rebutting Respondent’s response, while the second and third filings were also rebutting the responses of Respondent. On May 19, 2021, Respondent filed a “second response” rebutting Complainant’s supplemental filings.
Neither the Rules nor the Supplemental Rules make provision for supplemental filings, except at the request of the UDRP panel (see Rules, paragraph 12). Paragraph 10 of the Rules enjoins the UDRP panel to conduct the proceeding “with due expedition”. Therefore, UDRP panels are typically reluctant to countenance delay through additional rounds of pleading and normally accept supplemental filings only to consider material new evidence or provide a fair opportunity to respond to arguments that could not reasonably have been anticipated (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.6 ).
In this case, after consideration of Complainant’s supplemental submissions the Panel has decided to accept them, as they do not address topics that Complainant could have addressed in its Complaint (Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447, AutoNation Holding Corp. v. Rabea Alawneh, WIPO Case No. D2002-0058). As regards Respondent’s supplemental filing, this was rebutting Complainant’s supplemental filings and therefore the Panel accepts it, in order to provide a fair opportunity to Respondent to respond to arguments that could not reasonably have been anticipated.
4. Factual Background
Complainant was incorporated in the United Kingdom in 1990. It designs sophisticated electronic products such as computer processors, graphics processors and associated tools and software. Its processors are used as the central processing unit (“CPU”) for most mobile phones including those manufactured per Complainant by Apple, HTC, Nokia, Sony Ericsson and Samsung as well as other devices. Per Complaint, Complainant has sold over 180 billion products under its Arm brand, and its products and services reach over 70 percent of the world’s population. Complainant’s primary website is located at “www.arm.com“. The copyright statement in this website reads “Copyright © 1995-2021 Arm Limited (or its affiliates)”.
Complainant owns a large portfolio of trademark registrations for the trademark ARM in a number of different jurisdictions, including Australia, Canada, New Zealand, Japan, Malaysia, Singapore, Israel, Moldova and Chile.
Complainant’s trademark registrations for ARM, include:
– United Kingdom trademark registration No. UK00002000006, ARM, filed on October 31, 1994, and registered on January 29, 1999, for goods and services in International Classes 9, 16 and 42;
– European Union Trade Mark No. 001112986, ARM, field on March 22, 1999, and registered on June 8, 2000, for goods and services in International Classes 9 and 42; and
– United States trademark registration No. 2,332,930, ARM, filed on May 24, 1999, and registered on March 21, 2000.
Complainant also owns over 190 domain names that begin with the ARM trademark.
As Complainant demonstrated, the ARM mark enjoys reputation in the field of microprocessors, processors digital memories and peripheral, as repeatedly recognised by judicial rulings.
The Domain Name was registered on July 7, 2010, and at least on March 31, 2021, used to lead to a website that contained a single webpage soliciting offers for purchase stating “arm.co – This website is for sale! – arm Resources and Information”. Underneath this phrase there were pay-per-click (“PPC”), commercial advertising links, related, among others, to the area of Complainant’s activities, namely “software” and underneath these, there was the phrase “Buy this domain” and “The owner of arm.co is offering it for sale and asking price of 50,000 EUR!”. At least on July 3, 2019, the Domain Name was being offered for sale at the price of EUR 20,000. The Domain Name currently, after the filing of the Complaint on April 1, 2021, leads to an inactive page.
Complainant sent a warning letter to the Registrar on March 12, 2021, asking it to forward it to Respondent, to which the Registrar did not respond.
5. Parties’ Contentions
A. Complainant
Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for the transfer of the Domain Name.
B. Respondent
Respondent contends that the word “arm” is a generic and common word in the English language. The Domain Name was not registered for any purpose having to do with Complainant. Furthermore, Respondent never attempted to contact or sell the domain name to Complainant. Respondent claims he may also choose to develop the Domain Name “for uses that don’t conflict with Complainant’s trademarks, or commercial interests without infringing the claimed rights presented in the complaint”. As regards his legitimate interests Respondent claims that this stems from “the rights of any person or legal entity to register an available domain name taking notice of not infringing any third party rights among other considerations”.
Lastly, Respondent states that it holds registrations of several generic domain names and that this is one of his business activities.6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements, which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant has demonstrated rights through registration and use on the ARM mark.
The Panel finds that the Domain Name is identical to the ARM trademark of Complainant.
The country code Top-Level Domain (“ccTLD”) “.co” is disregarded, as ccTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons only (Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275).
Complainant has established Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to Respondent of the dispute, Respondent’s 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) Respondent (as an individual, business, or other organization) has been commonly known by the Domain Name, even if Respondent has acquired no trademark or service mark rights; or
(iii) 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.
Respondent claims that any person has the right to register an available domain name, provided that it does not infringe third party rights. In this case, as Complainant has shown, the word ARM is its registered trademark, which it holds in various countries worldwide, with commercial presence under this mark for over 25 years, also through the Internet and with an excellence in its field of manufacturing CPUs.
The Panel finds that Respondent lacks rights or legitimate interests in respect of the Domain Name.
As per Complainant, Respondent is neither affiliated with Complainant nor was it authorized to register the Domain Name. Respondent does not carry out any activity for, nor has any business with Complainant.
Respondent has not demonstrated that he has used the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services.
On the contrary, as Complainant demonstrated and Respondent acknowledged, the Domain Name was being offered for sale for the amount of initially 20,000 USD and then coinciding also with the growth of Complainant, per Complaint, USD 50,000 which apparently exceeds Respondent’s out-of-pocket expenses.
Furthermore, the Domain Name was used to host PPC parking pages, with links to third-party websites, including a link, which directly competes with Complainants’ business. The Panel finds that is not unlikely that Respondent received PPC fees from the linked websites that were listed at the Domain Name’s websites and used the Domain Name for his own commercial gain. The use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with Complainants’ trademark (Archer-Daniels-Midland Company v. Wang De Bing, WIPO Case No. D2017-0363; Virgin Enterprises Limited v. LINYANXIAO aka lin yanxiao, WIPO Case No. D2016-2302; and Donald J. Trump v. Mediaking LLC d/b/a Mediaking Corporation and Aaftek Domain Corp., WIPO Case No. D2010-1404. See also WIPO Overview 3.0 , section 2.9 ).
The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Names.
Complainant has established Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has registered and used the Domain Name in bad faith. Because the ARM mark had been widely used and registered at the time of the Domain Name registration by Respondent, the Panel finds that Respondent could have conducted a trademark search and would have found Complainant’s prior registrations in respect of the ARM mark (Citrix Online LLC v. Ramalinga Reddy Sanikommu Venkata, WIPO Case No. D2012-1338). Furthermore, the Panel notes that the Complainant has been using the domain name <arm.com> since 1995 (or at least 1997, according to the archived screenshots in the Internet Archive Wayback Machine).
Respondent claims that its field of business is holding generic domain names. Panels have held that especially domainers undertaking bulk purchases or automated registrations have an affirmative obligation to avoid the registration of trademark abusive domain names (WIPO Overview 3.0, section 3.2.3). Respondent has not claimed to have undertaken any efforts to screen the Domain Name registration against readily‑available online databases to avoid the registration of trademark-abusive domain names.
Respondents who (deliberately) fail to search and/or screen registrations against available online databases would be responsible for any resulting abusive registrations under the concept of willful blindness (WIPO Overview, section 3.2.3).
Furthermore, as regards bad faith use, Complainant has demonstrated that the Domain Name was being offered for sale for the amount of EUR 50,000 and earlier of EUR 20,000. This, in view of the finding that Respondent has no rights to or legitimate interests in the Domain Name, constitutes further evidence of bad faith use (Arm Limited v. Privacy Administrator, Anonymize, Inc. / Sarbel Bandak, WIPO Case No. D2021‑0594; and Aygaz Anonim Sirketi v. Arthur Cain, WIPO Case No. D2014-1206. See also WIPO Overview 3.0, section 3.1).
Neither has Respondent provided evidence that it has undertaken additional measures to avoid abusive use of the Domain Name (WIPO Overview, section 3.2.3). As regards bad faith use, the Domain Name displayed links to third party sites, which suggests that, presumably, Respondent receives PPC fees from the linked websites that are listed thereon. It has been recognized that such use of another’s trademark to generate revenue from Internet advertising can constitute registration and use in bad faith (McDonald’s Corporation v. ZusCom, WIPO Case No. D2007-1353; Volkswagen Aktiengesellschaft v. Robert Brodi, WIPO Case No. D2015-0299; and SAP SE v. Domains by Proxy, LLC / Kamal Karmakar, WIPO Case No. D2016-2497. See also WIPO Overview 3.0, section 3.5).
The Panel also notes that at least one of those links was related to the business of Complainant (“software”), which clearly shows knowledge of Complainant and its field of business, especially given the high distinctiveness of the word ARM for this kind of goods. Furthermore, such link leads the Panel to consider that Respondent is likely attempting to take advantage of the value of the ARM trademark through an identical domain name (being also the Domain Name almost identical to Complainant’s main domain name, differing only in the TLD “.co” versus “.com”). The presence of other links related to the dictionary meaning of the word “arm” (like “chairs”), does not change the Panel’s finding.
The current non use of the Domain Name also does not change the Panel’s findings above.
Under these circumstances and on this record, the Panel finds that Respondent has registered and used the Domain Name in bad faith.
Complainant has established Policy, paragraph 4(a)(iii).
7. Reverse Domain Name Hijacking
The Panel also considered Reverse Domain Name Hijacking (“RDNH”) which is defined in paragraph 1 of the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” The basis for such a finding would have been that, on the evidence filed, Complainant should have known that the Complaint did not have any chance of success.
The Panel notes the following: under section 4.16 of the WIPO Overview 3.0 reasons for finding RDNH include: “(i) facts which demonstrate that the complainant knew it could not succeed as to any of the required three elements – such as the complainant’s lack of relevant trademark rights, clear knowledge of respondent rights or legitimate interests, or clear knowledge of a lack of respondent bad faith, such as registration of the disputed domain name well before the complainant acquired trademark rights, (ii) facts which demonstrate that the complainant clearly ought to have known it could not succeed under any fair interpretation of facts reasonably available prior to the filing of the complaint, including relevant facts on the website at the disputed domain name or readily available public sources such as the WhoIs database”.
The Panel does not find that such facts demonstrating that Complainant had knowledge of lack of success of the Complaint were presented.
The Panel is not persuaded that the Complaint was filed in bad faith.
8. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <arm.co> be transferred to Complainant.
Marina Perraki
Sole Panelist
Date: June 2, 2021
