WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Intel Corporation v 35.com Technology Co. Ltd
Case No. D2007-1883
1. The Parties
The Complainant is Intel Corporation, of Santa Clara, California, United States of America, represented by Baker & McKenzie, Australia.
The Respondent is 35.com Technology Co. Ltd., of Canterbury New South Wales, Australia.
2. The Domain Name and Registrar
The disputed domain name <intelstore.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 18, 2007. On December 21, 2007, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the domain name at issue. On December 29, 2007 OnlineNic, Inc. d/b/a China-Channel.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January 8, 2008. 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”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 8, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was January 28, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 30, 2008.
The Center appointed Clive Duncan Thorne as the Sole Panelist in this matter on February 6, 2008. 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 Intel Corporation was founded in 1968 and expanded outside the United States of America by 1971. It began operation as a semi-conductor company involved in the design and manufacture of memory chips. By the 1980’s the Complainant had become a well respected, multi-billion dollar corporation, with sales throughout the world and manufacturing facilities in several countries around the world. The Complainant is currently the world’s largest semi-conductor manufacturer and employs over 80,000 people in offices and facilities worldwide.
Over the years the Complainant has expanded its business to offer numerous additional products and services related to the Internet, e-commerce technologies, communications and computers. For instance the Complainant’s business expanded to include software and operating systems in 1978, networking peripherals in 1982, work stations and servers in 1984, motherboards in 1985, flash memory in 1990, chip sets in 1990 and graphics and digital imaging products and services in 1991.
Throughout the 1990’s the Complainant’s products played a large part in the growth of the Internet. During this time the Complainant expanded its business to include branded consumer products such as personal computer accessories, software, books, clothing items and accessories, luggage and travelling gear, writing implements, watches etc. The Complainant also expanded the services it offers to include educational services, training services, web design and computer consultant services and financial services in addition to a broad range of computer Internet communication and e-commerce related services.
The Complainant’s products and services are sold throughout the United States and the world including Australia under the INTEL name and mark as well as under numerous device trademarks that incorporate Intel as a prominent component of the mark. The Complainant has continuously offered and sold products and services since at least as early as 1969 under the INTEL name and mark, long before the registration of the domain name intelstore.com in October 2001.
Annex 10 to the Complaint contains examples of US trademarks and extracts from US patent and trademark office registrations in relation to the mark INTEL. At Annex 11 are examples of Australian trademarks and extracts from the Australian trademark register in relation to the mark INTEL.
The Complainant has invested hundreds of millions of dollars in advertising and promotion of products sold under the INTEL name and mark and has engaged in an extensive licensing programme under which computer manufacturers have used the Complainant’s INTEL mark on their computers as part of the “Intel Life Inside & Swirl Logo” mark and in their advertising and promotional materials to indicate that their personal computer are equipped with Intel microprocessors. The impact of the Intel Inside licensing programme used is substantial. Intel estimates that the Intel Inside & Swirl Logo has created over 500 million commercial impressions on consumers.
In connection with the worldwide advertising and promotional of its products all of which bear the Intel trademark the Complainant expended approximately US$1.6 billion in 2001 and has spent over US$10 billion since 1999.
The Complainant asserts that its extensive investment and efforts in promoting the INTEL name and mark for the Complainant’s full range of products and services has made Intel a famous mark throughout the world. Indeed from 1992 to the present Intel has been regularly named one of the world’s most valuable brands by Financial World Magazine and Interbrand market research company. In Interbrand’s 2007 annual survey of the world’s most valuable brands it ranked the INTEL brand seventh in the world with an estimated value of US$30,954 billion. An excerpt from the Interbrand “Best Global Brands 2007” publication is annexed at Annex 12 to the Complaint.
The fame of the Complainant’s name and mark has also been recognized in decisions in courts and administrative panels internationally including Panel decisions of the Center under the Policy. Examples are set out in paragraph 40 of the Complaint.
The history of the present dispute shows that the Respondent initially known as DN4Ever registered the domain name in dispute <intelstore.com> on October 21, 2001 for an initial five year period. This is shown by the “Who is” search exhibited at Annex 2 to the Complaint. The searches indicate that on or about October 22, 2007, the Respondent renewed the domain name for an additional year until October 21, 2008, modifying the Registrant to appear as “35.com Technology Co. Ltd”, but retaining the DN4Ever denomination in the contact details as well as the same initial address.
It appears that a website is operating at that domain address. Printouts made on November 15, 2007 are exhibited at Annex 6 to the Complaint. The Complainant suggests that the reference to DN4ever in the registration information provided by the Registrar to the Center is in fact an abbreviation for “Domain Names Forever”.
On July 6, 2006, the Complainant’s Australian lawyers Baker & McKenzie sent a cease and desist letter to the Respondent at its registered address. This was returned in the dead letter service and is shown by Annex 7 to the Complaint.
On July 5, 2006, Baker & McKenzie also sent an electronic copy of the letter to the email address contained in the public “Who is”. The email “bounced back” almost immediately with a message stating that mail could not be delivered. A copy of this electronic correspondence is also exhibited at Annex 7.
A further cease and desist letter was sent by Baker & McKenzie to the Respondent on October 26 at the physical address contained in the public “Who is” by express post and email. This is exhibited at Annex 8. At the time of filing the Complaint neither Baker & McKenzie nor the Complainant have received any response to its post or email correspondence.
On December 13, 2007, Baker & McKenzie called the Respondent on mobile phone number contained in the public “Who is” and received an automated response indicating that the mobile number had been disconnected.
On about October 26, 2006 Baker & McKenzie located an offer to sell the <intelstore.com> domain name on a website located at “www.vibration.co.kr/domainfamily.list.htm. Further searches of this website on November 15, 2007 indicate that the <intelstore.com> domain name remains for sale. Copies of these advertisements are annexed at Annex 9 to the Complaint.
In the absence of a Response there is no evidence adduced by the Respondent.
5. Parties’ Contentions
The Complainant submits:
1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant relies upon the worldwide trademark registrations owned by the Complainant and which predate the date of registration of the domain name in dispute. The Complainant also relies on the Complainant’s trading reputation and goodwill.
2. The domain name <intelstore.com> is confusingly similar because it consists of the Intel name and mark and the highly descriptive word “store”.
3. The Respondent has no rights or legitimate interests in respect of the domain name:
a. The Respondent has not used the domain name in connection with a bona fide offering of goods or services.
b. The Respondent uses the domain name in connection with portal websites that feature links to various third party websites.
c. The Respondent’s offer to sell the domain name demonstrates the Respondent’s lack of rights and legitimate interest in the domain name.
d. The Respondent is not commonly known by the domain name in dispute.
e. The Respondent is not a licensee or otherwise authorised to use the mark Intel.
4. The domain name is registered and is being used in bad faith:
a. The Respondent is attempting to attract for commercial gain Internet users to its website by creating a likelihood of confusion.
b. The Respondent’s offer to sell the domain name constitutes bad faith registration and use.
c. Registration with knowledge of the domain name and knowledge of Intel’s mark is further evidence of bad faith.
d. The Respondent deliberately registered the domain name under a bogus name and address.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In the absence of any submissions or evidence from the Respondent the Panel accepts the truth of the facts as submitted by the Complainant and proceeds to determine the Complaint on the basis of the Complainant’s contentions and evidence only.
A. Identical or Confusingly Similar
Having considered the evidence of the Complainant’s trading reputation and its registered marks INTEL the Panel is satisfied that the Complainant has established a trading goodwill and unregistered rights in the mark INTEL. It is also satisfied on the basis of the registrations referred to above that it has registered rights in the mark INTEL.
The Panel has considered the Complainant’s contention that the domain name in dispute is confusingly similar because it consists of the mark INTEL together with the highly descriptive word “store” and “.com” which is the most common gTLD.
The Panel accepts this submission and finds that the descriptive word “store” merely qualifies the mark INTEL. It also finds that the domain name is confusingly similar to the domain name for the official Intel merchandising site “www.theintelstore.com” which is owned and operated by Intel’s merchandising partner and licensee, DBA.
In these circumstances the Panel finds that the domain name is confusingly similar to a trademark in which the Complainant has rights. It therefore finds for the Complainant in respect of this element.
B. Rights or Legitimate Interests
The Complainant relies upon the evidence that the Respondent has not used the domain name in connection with a bona fide offering of goods or services. It is not making a non-commercial fair use of the domain name and has never been known as or referred to as “Intelstore” or “Intel” and the Respondent is not licensed or authorised by the Complainant to use the Intel name and mark.
The Complainant relies upon the evidence of the portal websites featuring links to various third party websites which are exhibited at Annex 6 to the Complaint.
Having considered the Complainant’s submissions the Panel is satisfied that there is no evidence that the Respondent has any right or legitimate interest in respect of the domain name. It is also satisfied that there is no evidence that the Respondent is commonly known by the domain name <intelstore.com>. Accordingly the Panel accepts the Complainant’s submissions and finds that the Respondent has no rights or legitimate interests in the domain name in dispute. The Panel therefore finds for the Complainant in respect of this element.
C The Domain Name was Registered and is being Used in Bad Faith
The Complainant submits that the use of the domain name comprised of another’s mark for the purpose of providing links to third party websites and advertisements constitutes bad faith. This is demonstrated by the Respondent’s use of the <intelstore.com> domain name to display links to third party commercial websites. The evidence of this activity is clear (Annex 6 to the Complaint). The Panel therefore finds that the Respondent is attempting to attract for commercial gain Internet users to its website. The fact that a domain name is confusingly similar to the Complainant’s mark establishes that there would be an inevitable likelihood of confusion. Accordingly the Panel finds the Respondent is attempting to attract for commercial gain Internet users to its website by creating a likelihood of confusion.
The Panel has also considered the evidence that the Respondent has offered to sell the domain name to the highest bidder. In the Panel’s view this is further evidence of bad faith.
Having considered this evidence the Panel is satisfied that the Complainant has established that the domain name was registered and is being used in bad faith.
It follows that the Complainant has succeeded in proving this element and in proving the Complaint.
The Panel finds for the Complainant. For all the foregoing reasons and in accordance with paragraph 4(i) of the Policy and 15 of the Rules the Panel orders that the domain name <intelstore.com> be transferred from the Respondent to the Complainant.
Clive Duncan Thorne
Dated: February 20, 2008