WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Intel Corporation v. Pentium Capital
Case No. D2011-0638
1. The Parties
The Complainant is Intel Corporation of Santa Clara, California, United States of America, represented by Harvey Siskind LLP, United States of America.
The Respondent is Pentium Capital of Zurich, Switzerland.
2. The Domain Names and Registrar
The disputed domain names <pentiumadvisors.com>, <pentiumadvisors.net>, <pentiumcapital.net>, <pentiumfinancial.com>, <pentiumfinancial.net>, <pentiumfunds.com>, <pentiumfunds.net>, <pentiuminv.com>, <pentiuminvestments.com>, <pentiuminvestments.net>, <pentiuminv.net>, <pentiumpartners.com>, <pentiumpartners.net>, <thepentiumgroup.com> and <thepentiumgroup.net> are registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 12, 2011. On April 12, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On the same day, GoDaddy.com, Inc. transmitted by email to the Center its verification response:
(a) confirming that the disputed domain names were registered with it;
(b) disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint;
(c) disclosing that the disputed domain names had been transferred to current registrant on March 11, 2011;
(d) confirming that the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) applies to the disputed domain names; and
(e) confirming that English is the language of the registration agreements for each of the disputed domain names.
In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on April 20, 2011. The Center verified that the amended Complaint satisfied the formal requirements of 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 April 21, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 11, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 12, 2011.
The Center appointed Warwick A. Rothnie, Richard W. Page and Thomas M. Legler as panelists in this matter on June 14, 2011. 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.
4. Factual Background
The Complainant is a well-known manufacturer of microprocessors for computers. For many years, its products were known by numerical designations such as 286 and 386. In 1992, the Complainant introduced its PENTIUM processors.
The word PENTIUM was a coined term, created by the Complainant. According to the Complainant, the use of the coined name, rather than a numeric code, for its microprocessors, was a revolutionary development at the time.
The Complainant has been using the term PENTIUM to identify a range of its microprocessors continuously since the introduction of the term in 1992. In 2006, the Complainant’s worldwide revenues exceeded USD 35.3 billion of which at least USD 12 billion were attributable to the sale of PENTIUM products. In 2007, the Complainant’s worldwide revenues exceeded USD38.3 billion of at least USD 3.5 billion was attributable to the sale of PENTIUM products.
Also, according to the Complaint, the Complainant has generated more than USD 131 billion in sales of products bearing the PENTIUM mark around the world since 1992. According to the Complaint, the Complainant owns over 500 trademark registration for PENTIUM in approximately 175 jurisdictions across the world. These include:
- United States Trademark Registration No. 1834434 for PENTIUM for computer hardware, namely, microprocessors registered on May 3, 1994; and
- Swiss Trademark Registration No. 402307 for PENTIUM in respect of microprocessors registered on June 16, 1993; and
- Swiss Trademark Registration No. 460968 for PENTIUM in respect of services in International classes 38 and 42 which was registered on May 5, 1999.
Shortly before the Complaint was filed, each of the disputed domain names was registered by The Pentium Group, for which one M. Engenheiro was designated as both the administrative and technical contact.
As noted above, however, on March 11, 2011, each of the disputed domain names was transferred to Respondent. Mr. Engenheiro remains as the designated administrative and technical contact although his address details are different from those recorded when The Pentium Group was the registrant.
None of the disputed domain names resolve to an active website. Instead, each resolves to a “parking page”, each of which states at the top:
“this web page is parked free courtesy of Godaddy.com”
The remainder of each webpage promotes Godaddy’s offerings and does not make any reference to the Respondent or any business activities conducted by the Respondent.
5. Discussion and Findings
Under 4(a) of the Policy, the Complainant must establish that:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) The disputed domain names have been registered and are being used in bad faith.
As noted above, no Response has been filed by the Respondent. However, the Complainant has notified the Center that the Complainant’s attempts to serve the Amended Complaint on the Respondent by courier failed. Similarly, the Center’s attempts to serve the Compliant and the Amended Complaint on the Respondent failed. The email and physical addresses used for delivery, however, were the addresses confirmed as correct and current by the Registrar. Accordingly, the Panel finds that the Center has made all reasonable efforts to serve the Amended Complaint on the Respondent and the Respondent has been given a fair opportunity in the circumstances to present its case: paragraph 10(b) of the Rules.
As the Respondent has failed to submit a response, the Panel is directed to proceed to a decision on the Complaint (as amended): paragraph 14 (a) of the Rules.
Paragraph 15 (a) of the Rules directs the Panel in these circumstances to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any Rules or principles of law deemed applicable.
A. Identical or Confusingly Similar
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark, and, if so, each disputed domain name must be shown to be identical or confusingly similar to the proven trademark.
The Complainant has proved ownership of the registered trademarks for PENTIUM referred to above. Given the large volume of sales and extensive promotion throughout the world of the trademark PENTIUM since 1992, the Panel accepts that the Complainant does also have unregistered rights in PENTIUM as a trademark, at least in the common law countries such as the United Kingdom and the United States of America.
The disputed domain names are not identical to the Complainant's trademark. Therefore, the question is whether the disputed domain names are confusingly similar to the Complainant's trademark, PENTIUM.
On this part of the inquiry, what is required is simply a comparison of each disputed domain name itself to the Complainant's proven trademarks: see for example Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin, WIPO Case No. D2002-0420. This is different to the question under trademark law, which can require comparisons of the goods or services for which the trademark is registered and those of any impugned use as well as considerations such as the geographical location of the registrations and the impugned use. Such matters, if relevant, may fall for consideration under other elements of the Policy.
Each of the disputed domain names consists of the Complainant’s trademark, PENTIUM, and additional non-distinctive or descriptive terms (such as the words “advisors”, “financial”, “funds”, “investments”, “partners”, “inv”, “group”) and the generic top level domain, .com or .net and, in two cases, the definite article “the”.
The addition of the gTLD to the disputed domain names can be disregarded as simply a functional requirement of the domain name system. See for example Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046; Ticketmaster Corporation v. DiscoverNet Inc., WIPO Case No. D2001-0252.
Given the descriptive nature of the additional elements, particularly bearing in mind that the term PENTIUM is incorporated in whole in each disputed domain name and that term is arbitrary and distinctive, having been coined by the Complainant, the Panel finds that each of the disputed domain names is confusingly similar to the Complainant’s trademark: e.g., PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No. D2003-0696 (<pepsiadventure.com>, <pepsigames.com>, and <pepsigolf.com>); Nike, Inc. v. Azumano, WIPO Case No. D2000-1598 (<niketravel.com> and <nikesportstravel.com>); Intel Corporation v. Pentium Fund, WIPO Case No. D2009-0156 (<Pentiumfund.com>) and Intel Corporation v. Z, V, PENTIUM FUND, Vincente ZARAGOZA, WIPO Case No. D2009-0272 (<pentiumgroup.com>).
Accordingly, the Complainant has established the first requirement under the Policy for each of the disputed domain names.
B. Rights or Legitimate Interests
The second requirement that the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain names.
A Respondent may have rights or legitimate interests in a disputed domain name in the circumstances set out in paragraph 4(c) of the Policy:
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.
The circumstances set out in paragraph 4(c) of the Policy are examples only and are not an exhaustive enumeration of the ways in which rights or legitimate interests can be shown.
Moreover, while paragraph 4(c) of the Policy states that these are circumstances where a Respondent may show rights or legitimate interests, the overall burden of establishing this requirement falls on the Complainant. In view of the difficulty inherent in proving a negative, and because the relevant information is often in the possession of the Respondent only, however, it will be sufficient for the Complainant to establish a prima facie case which, if not rebutted, will lead to this ground being established: see WIPO, Overview of WIPO Panel Views on Selected UDRP Questions, second edition (WIPO Overview 2.0), paragraph 2.1.
In this case, the Complainant states that it has not licensed or otherwise authorized the Respondent to register the disputed domain names or to use the trademark PENTIUM. Nor is the Respondent otherwise connected in any way with the Complainant. In addition, the Complainant contends that the Respondent has not used any of the disputed domain names in connection with a bona fide offering of goods or services. Further, the Complainant contends that the Respondent has not made any meaningful use at all for any of the disputed domain names, each of which resolves to a parking webpage.
It could possibly be argued that the disputed domain names are derived from the Respondent’s own name.
The Panel notes first that the Respondent has not sought to make such an argument in this case.
The term PENTIUM is an arbitrary and distinctive term coined by the Complainant for which it had obtained registered trademarks in Switzerland from as early as 1993, i.e. almost 20 years before the disputed domain names were transferred to the Respondent. As a result, the Complainant contends that the Respondent could not legitimately use the term PENTIUM in Switzerland without infringing the Complainant’s rights.
In addition, each of the disputed domain names was transferred to the Respondent shortly before the Complaint was filed by an entity purporting to call itself The Pentium Group. The Pentium Group has previously been found by a Panel not to have had rights or a legitimate interest in domain names which incorporated the whole of the Complainant’s trademark, PENTIUM: Intel Corporation v. The Pentium Group, supra.
Further, the inability to deliver the Complaint (or the Amended Complaint) to the email and physical address coordinates certified by the Registrar as correct (based on details submitted by the Respondent less than one month before the commencement of the dispute) raises further questions about the existence of any entity under the Respondent’s purported name. The Panel’s own searches of the Company’s Register were unable to locate a registration for the Respondent’s name.
While there is no obligation under the Policy to use a domain name and it is not necessarily illegitimate for a domain name to resolve to a parking page, the situation can be very different where the domain name in question consists of, or is confusingly similar, to a trademark owned by another person, especially a well-known trademark: see e.g., Pacific-10 Conference v. Kevin Lee, WIPO Case No. D2011-0200. In this case, the use of the disputed domain names (which incorporate the Complainant’s very well-known trademark) merely to resolve to the Registrar’s pro forma parking page (both before and after the transfer to the Respondent) does not suggest that the Respondent is engaged in any legitimate business.
In these circumstances, the Panel finds that the Complainant has clearly raised a prima facie case that the Respondent does not have any rights or legitimate interest in the disputed domain names.
The Respondent has not submitted any Response seeking to defend or justify its registration of any of the disputed domain names or the Complainant's contention that the Respondent has no rights or legitimate interests in the disputed Domain names.
In these circumstances, therefore, the Respondent has not rebutted the prime facie case raised against it by the Complainant.
Accordingly, the Complainant has made out the second requirement under the Policy.
C. Registered and Used in Bad Faith
The third requirement that the Complainant must demonstrate under the Policy is that the disputed domain names have been registered and are being used in bad faith.
Paragraph 4(b) of the Policy provides four examples of circumstances that evidence, bad faith registration and use of a domain name:
b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
The Complainant relies principally on paragraph 4(b)(iv) although it presses the other grounds as well. Each of the disputed domain names resolves to a parking page provided by the Registrar and advertising the services of the Registrar.
The Complainant charges that the Respondent has registered the disputed domain names solely to take advantage of the trademark significance derived from the use of the word embodied in each of the disputed domain names.
The Respondent has not sought to dispute this allegation. Nor has the Respondent sought to claim that the parking pages are a temporary arrangement while some other arrangements are made relating to the Respondent’s specific business.
There can scarcely be any doubt that the Respondent knew of the Complainant’s trademark, PENTIUM, when the Respondent took the transfer of the disputed domain names given how extensively the Complainant has been using its trademark throughout the world since 1992. That must also have been the case in February and June 2007 when the disputed domain names were originally registered by the Respondent’s predecessor, The Pentium Group (if that be a different entity).
Having regard to the renown of the Complainant’s trademark in many countries throughout the world, including Switzerland, therefore, the Panel considers that the Complainant’s un-rebutted allegation is well founded.
In such circumstances, Panels routinely find that domain names consisting of well-known trademarks (without authorization or other justification) are evidence of registration and use in bad faith. This is often the case where the domain name resolves to a website consisting of links to products competitive with those of the trademark owner: e.g., Intel Corporation v. The Pentium Group, supra, and Lego Juris A/S v. John Davies, WIPO Case No. D2010-0160. That is not necessarily a requirement, however. As the learned panelist in Ariens Company v. Domains by Proxy Inc., Jeff Mathis / C & M Golf, WIPO Case No. D2009-0622 said:
“Whether it is Respondent who profits from the revenues derived from the parking site, the Registrar, or, as is most likely, a combination of the two, it does not matter. This misuse of the domain name at issue constitutes a violation of paragraph 4(b)(iv) of the Policy and bad faith registration and use.”
There is all the more reason to apply that approach in this case where the disputed domain names were originally registered in the name of an entity, The Pentium Group, which has previously been found to have registered and used domain names containing the Complainant’s PENTIUM trademark in bad faith and the same person, Mr. Engenheiro, is the admihttp://www.wipo.int/amc/en/domains/search/overview2.0/index.html#21nistrative and technical contact for both purported entities.
The Panel is reinforced in this conclusion by the failure of the attempted delivery of the email messages and courier to the Respondent's contact details although the Registrar has confirmed that the addresses in question are accurate. The inability to effect delivery to these addresses, although the Registrar has confirmed their correctness, indicates that false address details have been provided which, as in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, is another indication of registration and use in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <pentiumadvisors.com>, <pentiumadvisors.net>, <pentiumcapital.net>, <pentiumfinancial.com>, <pentiumfinancial.net>, <pentiumfunds.com>, <pentiumfunds.net>, <pentiuminv.com>, <pentiuminvestments.com>, <pentiuminvestments.net>, <pentiuminv.net>, <pentiumpartners.com>, <pentiumpartners.net>, <thepentiumgroup.com> and <thepentiumgroup.net> be transferred to the Complainant.
Warwick A. Rothnie
Richard W. Page
Thomas M. Legler
Dated: June 29, 2011