WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Intel Corporation v. Ox90
Case No. D2002-0010
1. The Parties
The Complainant is Intel Corporation, a corporation organized in the State of Delaware, United States of America (USA), with place of business in Santa Clara, California, United States of America.
The Respondent is Ox90, with address in Arlington, Virginia, United States of America.
2. The Domain Name and Registrar
The disputed domain name is <pentium.net>.
The registrar of the disputed domain name is Tucows, Inc., with business address in Toronto, Ontario, Canada.
3. Procedural History
The essential procedural history of the administrative proceeding is as follows:
(a) The Complainant initiated the proceeding by the filing of a Complaint via e-mail received by the WIPO Arbitration and Mediation Center ("WIPO") on January 4, 2002, and via courier mail received by WIPO on January 9, 2002. Complainant elected to have this dispute decided by a three-member panel, and paid the requisite filing fees due in connection with that election. On January 9, 2002, WIPO transmitted a Request for Registrar Verification to the registrar, Tucows, Inc., with the Registrarís Response received by WIPO on January 9, 2002.
(b) On January 18, 2002, WIPO transmitted notification of the Complaint and commencement of the proceeding to Respondent via e-mail and courier mail.
(c) On February 8, 2002, WIPO transmitted notification to Respondent of its default in responding to the Complaint via e-mail.
(d) On or about February 8, 2002, Respondent transmitted to WIPO an e-mail message setting forth a brief statement of its "case" in this matter. By e-mail of February 11, 2002, WIPO advised Respondent that this submission did not comply with the formal requirements of a response.
(e) On May 14, 2002, following receipt of executed Statements of Acceptance and Declarations of Impartiality and Independence, WIPO appointed Frederick M. Abbott (presiding), Dennis A. Foster and Richard W. Page to serve as the Administrative Panel (the "Panel") in this matter. WIPO so notified Complainant and Respondent. WIPO notified the Panel that, absent exceptional circumstances, it would be required to forward its decision to WIPO by May 28, 2002. The Panel received electronic and hard copy files from WIPO.
(f) Following notification from the Panel of circumstances requiring an extension of the date for decision in this matter, WIPO notified the parties that the projected date for a decision would be extended until June 5, 2002.
The Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties. The proceedings have been conducted in English.
4. Factual Background
Complainant is the holder of various trademark registrations for the term "PENTIUM" on the Principal Register of the United States Patent and Trademark Office (USPTO). The first such registration is dated May 3, 1994, Reg. No. 1834434, in International Class (IC) 9, covering "computer hardware; namely microprocessors", and claiming a date of first use and first use in commerce of May 1993. Complainantís additional registrations of the term "PENTIUM" include the term standing alone, and the term accompanied by other terms and/or designs. Complainant also holds trademark registrations for the term "PENTIUM" in countries throughout the world. (Complaint, paras. 14-16 & Exhibits E & F)
The term "PENTIUM" was created by Complainant (id., para. 12).
Complainant is a leading developer and manufacturer of microprocessors, and uses the "PENTIUM" mark throughout the world. It expends substantial resources in the marketing and sale of microprocessor products under the "PENTIUM" mark. The "PENTIUM" mark is well known in the field of microprocessors and computers. (Id., paras. 17-21)
Complainant registered the domain name <pentium.com> in 1996, and has registered additional "PENTIUM" based domain names.
According to the registrarís (Tucows, Inc.ís) verification response to WIPO, dated January 9, 2002, Respondent "Ox90" is the listed registrant of the domain name <pentium.net>. The registrarís response indicates that the record of registration was created on February 3, 2000, and was last updated on December 10, 2001.
Respondent maintains an active commercial website at Internet address (URL) <www.pentium.net>. This "pentium.net" website includes a listing of Internet links to various commercial providers of goods and services, and a search function for such links. A search for "hardware" returns a list of links to various providers of computer products. (Complaint, Exhibit H & I)
By letter of August 13, 2001, Complainant sent a cease and desist demand to Respondent at the address listed in its domain name registration. This letter was returned as undeliverable. Complainant indicates that an investigation shows the address provided to the registrar is for a residential apartment building.
The Service Agreement in effect between Respondent and Tucows, Inc. subjects Respondent to Tucows, Inc.ís dispute settlement policy, the Uniform Domain Name Dispute Resolution Policy, as adopted by ICANN on August 26, 1999, and with implementing documents approved by ICANN on October 24, 1999. The Uniform Domain Name Dispute Resolution Policy (the "Policy") requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which WIPO is one, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Partiesí Contentions
Complainant asserts that it has rights in the "PENTIUM" mark (see Factual Background above), and that the disputed domain name <pentium.net> is identical and confusingly similar to its mark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Complainant indicates that there is no plausible explanation for Respondentís registration and use of its mark other than to "trade off its enormous goodwill to drive traffic to its site."
Complainant states that Respondent has registered and is using the disputed domain name in bad faith. Most specifically, Respondent is using Complainantís mark to direct Internet users to Respondentís commercial website for the purpose of commercial gain by creating confusion as to Complainantís sponsorship of or affiliation with Respondentís website.
Complainant requests the Panel to direct the registrar to transfer the disputed domain name to it.
Respondent has not submitted a formal response to the Complaint. In an e-mail message to WIPO, Respondent argued that it was using the disputed domain name to provide free e-mail service, and that it was entitled to do this because Complainant may in the future be unwilling for cost reasons to police all domain name registries to protect its mark, at least in so far as those uses are non-commercial.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this Administrative Proceeding.
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., para. 2(a), Rules).
In this case, the Panel is satisfied that WIPO took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of these proceedings.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:
(i) respondentís domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) respondentís domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
Complainant is the holder of numerous trademark registrations for the term "PENTIUM" on the Principal Register of the USPTO. It has registered the mark with other trademark authorities throughout the world. The term "PENTIUM" is arbitrary and distinctive. The "PENTIUM" mark is well known in the fields of microprocessors and computers. The Panel determines that Complainant has rights in the trademark "PENTIUM". Those rights arose before Respondentís registration of the disputed domain name.
The disputed domain name <pentium.net> is identical to Complainantís mark, except for addition of the generic top level domain (gTLD) ".net". In the circumstances of this proceeding, the gTLD ".net" does not serve to distinguish the disputed domain name from Complainantís mark.
The Panel determines that the disputed domain name is identical to Complainantís mark. Complainant has established the first element necessary for a finding of abusive domain name registration and use.
Respondent has made no plausible claim to rights or legitimate interests in the disputed domain name. It has asserted that it uses the domain name for providing free e-mail services, but that claim is contradicted by evidence of its use of the domain name for providing commercial directory services on a website. Respondent was without doubt aware of Complainantís mark when it registered the disputed domain name, and has no basis to claim a bona fide offering of goods and services without notice of a dispute.
Complainant has demonstrated that Respondent has no rights or legitimate interests in the disputed domain name, and has established the second element necessary for a finding of abusive domain name registration and use.
Respondent has used the disputed domain name to direct Internet users to a website that channels those users to commercial providers of goods and services. Such services are ordinarily provided for a fee, or otherwise for a commercial benefit. The Panel finds that Respondent has used the disputed domain name for commercial gain by creating confusion among Internet users as to Complainantís sponsorship of or affiliation with Respondentís website. Such use is in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
Complainant has satisfied the third element necessary for a finding of abusive domain name registration and use by Respondent.
The Panel will therefore direct the registrar to transfer the disputed domain name to Complainant.
Based on its finding that the Respondent, Ox90, has engaged in abusive registration and use of the domain name <pentium.net> within the meaning of paragraph 4(a) of the Policy, the Panel orders that the domain name <pentium.net> be transferred to the Complainant, Intel Corporation.
Frederick M. Abbott
Dennis A. Foster
Richard W. Page
Dated: June 5, 2002