RealSense.com: Intel lost UDRP despite existing trademark

Intel Corporation filed a UDRP to get the domain RealSense.com after its attempt to acquire it via a GoDaddy broker failed. Intel’s mark, INTEL REALSENSE, was registered in 2014.

The disputed domain was acquired by the Respondent in a Snapnames drop auction where it closed at $3,600 dollars. Source: NameBio.

Intel offered $30,000 in negotiations via GoDaddy while the Respondent sought to get $48,500. Intel filed the UDRP which was a “Plan B” approach according to the Respondent.

The three member WIPO panel noted:

On the contrary, it is undisputed that the disputed domain name consists of two dictionary terms of the English language. It further results from the evidence provided by the Respondents, that the expression “real sense” is not exclusively associated with the Complainant but has been used as a common phrase which is used in daily English language, e.g., also in UDRP decisions. Furthermore, domain name registrations for “realsense” under 33 different TLDs are active and several companies are operating under “RealSense” […]

Thus, the panelists found no bad faith in the domain’s registration and use and ordered the domain RealSense.com to remain with the Respondent. The Respondent’s request for a finding of Reverse Domain Name Hijacking was denied.

ARBITRATION AND MEDIATION CENTER – ADMINISTRATIVE PANEL DECISION
Intel Corporation v. Mira Holdings, Inc. and Domain Admin
Case No. D2024-4776

1. The Parties

The Complainant is Intel Corporation, United States of America (“United States”), represented by Sideman & Bancroft LLP, United States.

The Respondents are Mira Holdings, Inc. (“First Respondent”), United States and Domain Admin (“Second Respondent”), Bahamas represented internally.

2. The Domain Name and Registrar

The disputed domain name realsense.com is registered with Traffic Names, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 20, 2024. On November 20, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 20, 2024, 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 Registrant Unknown and contact information in the Complaint. The Center sent an email communication to the Complainant on November 21, 2024, 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 on November 22, 2024.

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 Respondents of the Complaint, and the proceedings commenced on November 22, 2024. The Respondents requested the automatic 4-day extension allowed for in the Rules. While the Complainant opposed the request, the due date for Response was amended to December 16, 2024. The Response was sent on behalf of “Mira Holdings, Inc./Domain Admin” on December 16, 2024.

Complainant filed an unsolicited supplemental filing on December 23, 2024.

The Center appointed Tobias Malte Muller, Christopher S. Gibson, and Andrew D. S. Lothian as panelists in this matter on January 24, 2025. 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.

Finally, on January 29, 2025, the Complainant informed the Center by an informal email sent by its authorized Representative that the Complainant had emailed a settlement proposal to Respondents, and added that if the Parties reached a resolution, they would promptly comply with the Settlement Procedure detailed in the Rules. The Panel did not receive any further information on an eventual settlement.

4. Factual Background

The Complainant is a well-known company that, since its founding in 1968, develops, manufactures, and sells in particular computer hardware and computer software.

It results from the Complainant’s documented allegations, which remained undisputed, that it is the registered owner of several trademarks for “INTEL REALSENSE”, e.g., United States Trademark registration no. 5,091,519, “INTEL REALSENSE”, with claimed first use in commerce of November 30, 2014, registered on November 29, 2016, for goods in class 9. In addition, the Complaint is based on the Chinese Trademark registration no. 14301129, “RealSense”, registered with validity from February 28, 2016, until February 27, 2026, for services in class 42.

The WHOIS indicates the disputed domain name’s creation date as of August 18, 2024, by an anonymous Registrant.

At the time of filing the Complaint, the disputed domain name resolved to a GoDaddy page offering the disputed domain name for sale, encouraging visitors to contact the GoDaddy domain name broker for a purchase price. It results from the documented evidence before the Panel that upon the Complainant’s inquiry the GoDaddy domain name broker informed the Complainant on November 6, 2024, of the Respondent’s asking price of USD 48,500. On the same date, the Complainant made a counter-offer of USD 30,000 as purchase price, but the negotiations were halted and the present UDRP complaint was filed. During the negotiations through the broker it seems that neither of the parties apparently knew the identity of the other party.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainant contends that:

(1) The disputed domain name is identical to Complainant’s registered REALSENSE mark and includes the distinctive feature of Complainant’s INTEL REALSENSE mark. In addition, the Complainant ascertains that as a result of its extensive marketing and promotion, the Complainant’s REALSENSE and INTEL REALSENSE marks are well known and are strong and highly distinctive indicators of source of the Complainant’s goods. In this context, the Complainant provides evidence of an Internet search for “realsense” which on the first page only returns hits pertaining exclusively to the Complainant. Furthermore, the Complainant refers to a third-party reference REALSENSE to refer to the INTEL REALSENSE product;

(2) The Respondents have no rights or legitimate interests in respect of the disputed domain name. In particular, there is no evidence that the Respondents are commonly known by the disputed domain name. Moreover, there is no relationship between the parties and the Complainant has not licensed the REALSENSE or INTEL REALSENSE marks to the Respondents to register the disputed domain name. Nor is the Respondents using the disputed domain name for the bona fide offering of goods and services or legitimate noncommercial or fair use. The Respondents rather used the disputed domain name to redirect to a GoDaddy parked page that advertises the Registrar’s services and solicits offers for the disputed domain name at an exorbitant price. Such use of the disputed domain name for a landing page advertising the disputed domain name for sale does not constitute rights or legitimate interests in a domain name;

(3) The Respondents registered the disputed domain name nearly a decade after the Complainant first used its INTEL REALSENSE mark and roughly eight years after its REALSENSE mark was registered in China. The later date of the registration of the disputed domain name demonstrates that its registration by the Respondents was intended to take advantage of the Complainant’s trademark rights. The Respondents are passively holding the disputed domain name rather than linking it to an active website for bona fide use. In addition, the Respondents have offered to sell the disputed domain name to Complainant for a grossly excessive amount of USD48,500, that far exceeds the intrinsic value of the disputed domain name to the Respondents. This asking price that the Respondents communicated to the Complainant (via the GoDaddy domain broker) also evinces bad faith registration.

In its unsolicited supplemental filing, the Complainant comments, among other things, on the identity of the Respondent Mira Holdings, Inc. It remarks that the Respondents have failed to establish what relationship it has with the disclosed holder of the disputed domain name, Ocean Centre, Montagu Foreshore, and if it even has standing or authorization to appear on behalf of Ocean Centre, Montagu Foreshore. In the Complainant’s view, the Respondent, being a resident of the United States, had actual or constructive notice of the Complainant’s claim of ownership of the INTEL REALSENSE trademark since at least November 20, 2016, the date Complainant registered this mark in the United States.

B. Respondents

The Respondents contend that the Complainant has not satisfied the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Respondent Mira Holdings, Inc., USA contends that:

(1) Mira Holdings, Inc., USA, is the Respondent in these proceedings and claims to be a professional domain name investor with more than 1,000 so-called “generic” domain names under ownership and offered for sale;

(2) the disputed domain name became available in a public auction at snapnames.com in September 2024, where the Respondents purchased it for USD 3,600. It results from the evidence filed by the Respondents that other domain names, composed of two dictionary word terms, have been sold for important sums, e.g., agentforce.com at USD 220,000 and alphainfinity.com at USD 200,000;

(3) the phrase “real sense” is by no means limited to the Complainant, and is by no means a reference to the Complainant’s product in the manner which it is used in ordinary conversation in everyday English. In fact, the disputed domain name is comprised of descriptive terms which, together, form a common phrase, meaning, to have a definite working understanding – i.e., a “real sense” – of a situation or set of circumstances. In this context, the Respondents quote several UDRP decisions where the terms “real sense” have been used as a common phrase. Furthermore, the Respondents refer to another trademark registration in the USA for “Real Sense” (US Registration Number: 6036377) as well as many active domain name registrations for “realsense” under 33 different TLDs. Finally, the Respondents provide evidence from which it results that several companies are operating under “Real Sense”, e.g., a digital learning platform in the UK (realsense.co.uk forwarding to realsense-learning.co.uk), a construction consultancy services company in France (realsense.fr), RealSense Consulting in the InfoSec business (realsenseconsulting.com), and Real Sense real estate (operating under realsenserealestate.com);

(4) the Complainant deliberately chose to register “INTEL REALSENSE” as a trademark in the Respondents’ jurisdiction and in every other English-speaking jurisdiction, because the phrase “real sense” was otherwise non-distinctive. The sole exception is China, in which English is not spoken and the Respondents do not keep abreast of trademark registrations in China. The “Intel Realsense” trademark is not confusingly similar to the disputed domain name. The strong “Intel” brand recognition makes it simple to differentiate the “Intel Realsense” products from the generic disputed domain name;

(5) the Complainant should be found guilty of Reverse Domain Name Hijacking, because rather than continuing to negotiate in good faith or at least let the broker know that the USD 30,000 offer was a best and final offer, the Complainant filed this UDRP complaint. It appears that the Complainant recognized the value of the disputed domain name to a certain extent with an offer of USD 30,000 but made the decision to not increase its offer to possibly reach a middle ground, but chose to file a UDRP complaint to try to get control of the disputed domain name through an administrative proceeding rather than purchase it for a price that the Complainant apparently deemed a bit too high which is often bad faith and Reverse Domain Name Hijacking is often found by UDRP panels.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy requires a complainant to prove each of the following three elements in order to obtain an order that each disputed domain name be transferred or cancelled:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondents have 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.

The Panel will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied.

A. Procedural aspects

First, it appears from the record before the Panel that the Response was sent by email in the evening of December 16, 2024 local time, and received by the Center in the morning of December 17, 2024 local time. The Panel considers the Response to be timely submitted. According to paragraph 2(f)(i) of the Rules, “except as otherwise provided in these Rules, or decided by a Panel, all communications provided for under these Rules shall be deemed to have been made: (i) if via the Internet, on the date that the communication was transmitted, provided that the date of transmission is verifiable”. The Panel considers that this rule refers to the time at which the document or communication was sent, not the date of receipt.

Second, the Complainant filed an unsolicited supplemental filing on December 23, 2024. In this filing, the Complainant commented, inter alia, on the identity of the Respondent Mira Holdings, Inc. and the fact that this Respondent concealed its identity behind another entity, Domain Admin, Bahamas. Mira Holdings, Inc. first self-identified as a Respondent in the Response of December 16, 2024. Therefore, it is clear to the Panel that the Complainant was not able to provide any comments or information regarding this entity in its Complaint and that these comments are relevant to the case because they relate to the identity of one of the possible respondents. Therefore, the Panel accepts this unsolicited supplemental filing insofar as it relates to Mira Holdings, Inc.

Third, the Panel notes that the Response was not filed by the Registrant identified by the Registrar Verification Response Domain Admin, but by a different legal entity, i.e., Mira Holdings, Inc. This company explicitly acknowledges in the Response that it is the correct Respondent. Moreover, some of the evidence submitted with the Response, in particular the correspondence with the GoDaddy broker, suggests that Mira Holdings, Inc. does in fact have access to the disputed domain name-related correspondence that would typically be reserved for the true domain name holder. In this context, the Complainant correctly points out that the relationship between both Respondents is unclear and that Mira Holdings, Inc. has not provided any authorization to appear on behalf of Ocean Centre, Montagu Foreshore. However, the Complainant names both entities as Respondents in its supplementary submission (and in its discussion of a previous case under the Policy in which Mira Holdings, Inc. was the Respondent) and thus has accepted to some extent that the underlying Respondent is or may in fact be the self-declared Respondent Mira Holdings, Inc. Given that Mira Holdings, Inc. evidently has access to materials which the Panel would expect to be in the hands of an underlying registrant, and has self-declared that it is such registrant, but likewise given that the Registrar-verified registrant is Ocean Centre, Montagu Foreshore, the Panel has determined in its discretion that both the Registrar-verified entity and the self-declared entity shall be treated as the Respondents in this case, and the Response on behalf of Mira Holdings, Inc. is accordingly admitted to the record.

B. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of at least one trademark consisting of the term “RealSense” for the purposes of the Policy, WIPO Overview 3.0, section 1.2.1. 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, WIPO Overview 3.0, section 1.7. This is the case here, where the registered trademark “RealSense” is identically included in the disputed domain name and represents the entire second level domain of said domain name. Since the applicable Top Level Domain (“TLD”) in a domain name is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test (WIPO Overview 3.0, section 1.11.1) the disputed domain name is identical or confusingly similar to the registered trademark in which the complainant has rights.

The Panel finds the first element of the Policy has been established.

C. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element, WIPO Overview 3.0, section 2.1.

After reviewing the available record, and for reasons that will be explained in more detail under the third element, the Panel finds that a decision on this second element is unnecessary and will proceed directly to analyze whether the third element of paragraph 4(a) of the Policy is satisfied.

D. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

Bad faith under the UDRP is broadly understood to occur where a respondent intentionally takes unfair advantage of or otherwise abuses a complainant’s mark, sometimes described as “targeting” such mark. To facilitate assessment of whether this has occurred and bearing in mind that the burden of proof rests with the complainant, UDRP paragraph 4(b) provides for four non-exclusive scenarios that constitute evidence of a respondent’s bad faith, WIPO Overview 3.0, section 3.1. One of these scenarios is that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name 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 respondent’s documented out-of-pocket costs directly related to the domain name.

In the present case, the evidence before the Panel indicates that the Respondent, who is a professional domain name investor, offered the disputed domain name for sale through GoDaddy’s brokerage service and requested a sale price of USD 48,500. On the one hand, it is clear to the Panel that this asking price exceeds any out-of-pocket costs associated with the disputed domain name. On the other hand, panels under the Policy have found that the practice of registering a domain name for subsequent resale (including for profit) does not in 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), WIPO Overview 3.0, Section 3.1.1. In any case, however, in the present case, the Respondents apparently did not negotiate directly with the Complainant but merely advertised the disputed domain name for sale on a third-party platform to the public at large. Subsequently, the parties negotiated through an intermediary service so that neither the Respondents nor the Complainant seemingly knew with whom they were negotiating. Therefore, the Complainant has not presented adequate evidence permitting an inference that the Respondents have registered or acquired the disputed domain name primarily for the purpose of transferring it specifically to the Complainant or one of its competitors pursuant to UDRP paragraph 4(b)(i).

Nor are there further circumstances resulting from the records that could lead the Panel to the conclusion that the Respondents’ aim in registering the disputed domain name was to profit from or exploit the Complainant’s trademark. In particular, the disputed domain name is not connected to a website capitalizing on the Complainant’s trademark or targeting it e.g., through links to Complainant’s competitors, WIPO Overview 3.0, section 3.1.1. Furthermore, the Panel does not take the initial asking price of USD48,500 as an indication that the Respondents are knowingly targeting the Complainant and its marks in bad faith. It rather results from the evidence filed by the Respondents (including a hyperlink to third party reported sales) that other domain names, composed of two dictionary terms, have been sold in 2023 and 2024 for substantial sums, e.g., in the Respondents’ case, agentforce.com at USD 220,000 and alphainfinity.com at USD 200,000, and in the case of third parties, for example, airplay.com (reported sale price of USD 202,000) and giveaway.com (reported sale price of USD 400,000).

In the case at hand, the Complainant stresses that both parties are located in the United States so that the Respondent Mira Holdings, Inc. could have been aware of the Complainant’s marks and business. However, the Panel notes that the “RealSense” trademark (without the element “INTEL”) is registered in China, not in the USA. Assuming this is true, the Complainant does not however provide a federal United States trademark registration pre-dating the relevant domain name registration for “RealSense”. Furthermore, the Complainant failed to provide adequate evidence that corroborates an awareness of its mark “RealSense”, such as strong reputation or distinctiveness of the mark. Therefore, in the circumstances of this case, the Panel determines that the concept of constructive notice does not apply (WIPO Overview 3.0, section 3.2.2.).

Accordingly, and without any further evidence, the Panel cannot assume that the Respondents knew or should have known of the Complainant’s United States “Intel RealSense” trademark or its Chinese “RealSense” mark.

On the contrary, it is undisputed that the disputed domain name consists of two dictionary terms of the English language. It further results from the evidence provided by the Respondents, that the expression “real sense” is not exclusively associated with the Complainant but has been used as a common phrase which is used in daily English language, e.g., also in UDRP decisions. Furthermore, domain name registrations for “realsense” under 33 different TLDs are active and several companies are operating under “RealSense”, e.g. a digital learning platform in the UK (realsense.co.uk forwarding to realsense-learning.co.uk), a construction consultancy services company in France (realsense.fr), RealSense Consulting in the InfoSec business (realsenseconsulting.com), Real Sense real estate (operating under realsenserealestate.com). While none of these third party uses would vest the Respondent with a claim to the domain name per se (it must rather advance its own rationale for having acquired the disputed domain name which does not infringe third party rights as per the standard registration agreement applicable to all registrars), in the Panel’s view, the Complainant has therefore failed to demonstrate that the Respondents knew or should have known that the registration was targeting or referencing these marks in its acquisition and subsequent offer for sale of the disputed domain name.

Consequently, the Panel finds that the third element of the Policy has not been established, and the Complaint fails.

E. Reverse Domain Name Hijacking

Paragraph 15(e) of the Rules provides that, if after considering the submissions, the Panel finds that the Complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking (“RNDH”) or to harass the domain-name holder, the Panel shall declare in its decision that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

In the case at hand, the Respondents requested the Panel to find the Complainant guilty of RDNH, because rather than continuing to negotiate in good faith or at least let the broker know that the USD30,000 offer was a best and final offer, the Complainant filed this UDRP complaint. The Respondents are of the opinion that the Complainant recognized the value of the disputed domain name to a certain extent with an offer of USD30,000 but made the decision to not increase its offer to possibly reach a middle ground, and instead chose to file a UDRP complaint to try to get control of the disputed domain name through an administrative proceeding rather than purchase it for the Respondents’ asking price that the Complainant apparently deemed a bit too high. In the Respondents’ view, this is bad faith and RNDH is often found by UDRP panels in such circumstances.

Reasons articulated by panels 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, (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, (iii) unreasonably ignoring established Policy precedent notably as captured in this WIPO Overview – except in limited circumstances which prima facie justify advancing an alternative legal argument, (iv) the provision of false evidence, or otherwise attempting to mislead the panel, (v) the provision of intentionally incomplete material evidence – often clarified by the respondent, (vi) the complainant’s failure to disclose that a case is a UDRP refiling, (vii) filing the complaint after an unsuccessful attempt to acquire the disputed domain name from the respondent without a plausible legal basis, (viii) basing a complaint on only the barest of allegations without any supporting evidence (WIPO Overview 3.0, section 4.16 with further references).

It is acknowledged amongst prior WIPO panels that the mere lack of success of the complaint is not, on its own, sufficient to constitute RDNH, WIPO Overview 3.0, loc. cit. Furthermore, the Panel is of the opinion that none of the above circumstances apply in the case at hand: In particular, the Complainant did not file the Complaint after an unsuccessful attempt to acquire the disputed domain name from the Respondents without a plausible legal basis. It rather decided to interrupt the ongoing negotiations that it was obliged to conduct with an anonymous domain name holder after it had submitted a proposal of USD 30,000, which the Panel considers to be covered by its pre-contractual autonomy. Finally, the Panel observes that during negotiations, and, crucially following Registrar verification of the holder of the disputed domain name, the Complainant did not know who the underlying domain name holder was, since the Respondent Mira Holdings, Inc. was concealing its true identity behind a privacy provider that itself was disclosed as the underlying registrant by the Registrar. Therefore, the Complainant could not know if the Respondents were not targeting the Complainant and its mark “RealSense” and was entitled to put the Respondents to the proof on this issue.

The Panel therefore finds that the Complaint was not brought in bad faith and does therefore not constitute an abuse of the administrative proceeding.

7. Decision

For the foregoing reasons, the Complaint is denied.

/Tobias Malte Muller/
Tobias Malte Muller
Presiding Panelist

/Christopher S. Gibson/
Christopher S. Gibson
Panelist

/Andrew D. S. Lothian/
Andrew D. S. Lothian
Panelist
Date: February 7, 2025

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