World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Intel Corporation v. Intelsitio Mexico, Jesús Guerrero Jiménez

Case No. D2012-0718

1. The Parties

The Complainant is Intel Corporation of Santa Clara, California, United States of America, represented by Arochi, Marroquin & Lindner, S.C., Mexico.

The Respondent is Intelsitio Mexico, Jesús Guerrero Jiménez of Hermosillo, Sonora, Mexico, represented by Lex Informática Abogados, S.C, Mexico.

2. The Domain Name and Registrar

The disputed domain name <intelsitio.com> is registered with FastDomain, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 5, 2012. On April 5, 2012, the Center transmitted by email to FastDomain, Inc. a request for registrar verification in connection with the disputed domain name. On the same date, FastDomain, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Complainant filed an amendment to the Complaint on April 18, 2012, in order to clarify that the remedy sought in the proceedings is the transfer of the disputed domain name.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 19, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 9, 2012. The Response was filed with the Center on May 9, 2012.

The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on May 25, 2012. 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.

On May 25, 2012, the Center received a communication from the Respondent’s representative indicating concern that the Panel speaks English yet many of the Parties’ Annexes were filed in Spanish. On June 1, 2012, the Panel issued Administrative Panel Procedural Order No. 1 requesting that pursuant to paragraph 11(b) of the Rules, the Parties issue translations of their respective Annexes by no later than June 8, 2012. On June 7, 2012 the Respondent filed a translation into English of Annexes 3, 4, 5, and 6 of its Response. The Respondent also requested that the Panel be notified that the Respondent had added a “translate into English” option on its website. On June 8, 2012 the Complainant filed a translation into English of Annexes 7, 8, 9, 9bis, 11, 12, 13 and 14 of the Complaint. Pursuant to Administrative Panel Procedural Order No. 1, the date by which the Panel required to provide the Center with its decision in the case was extended to June 22, 2012.

4. Factual Background

The Complainant is Intel Corporation, a company incorporated under the laws of the United States of America (“USA”) domiciled in Santa Clara, California, USA. The Complainant is a global company founded in 1968 which specializes in computers, microprocessors, integrated circuits and other devices for the processing of data and is particularly recognized for the creation, development and manufacture of semiconductor chips, and processors. The Complainant is also the creator of the first microprocessor worldwide.

The Complainant is the owner of several trademarks including the following USA registered trademarks: (1) 938772 for the word mark INTEL, granted on July 25, 1972, covering equipment for the testing and programming of integrated circuits, registers and semiconductor memories; (2) 0939641 for the word mark INTEL, granted on August 1, 1972, covering integrated circuits, registers and semiconductor memories; and (3) 1022563 for the word mark INTEL, granted on October 14, 1975, covering microcomputers, microcontrollers and microprocessors.

The Complainant is also the owner of the following Mexican registered trademarks: (1) 277115 for the word mark INTEL, granted on July 20, 1982, covering inter alia integrated circuits, registers and semiconductor memories, records for testing equipment and programming of integrated circuits; (2) 566233 for the mixed mark (word and figurative) INTEL, granted on November 28, 1997, covering inter alia integrated circuits, central processing units (CPU), microcomputers, minicomputers, memory data, registers and semiconductor memories, records for testing equipment and programming of integrated circuits; and (3) 582460 for the word mark INTEL, in class 38, granted on July 29, 1998 covering inter alia telecommunications services, communications by computer terminals, radio, telephone and telegraph communications, together with communications by Internet, e-mail, transmission of messages and images supported by computer.

On May 28, 2004, the Mexican Institute of Industrial Property (“IMPI”) issued a ruling supporting the contention that the Complainant’s INTEL trademark is a notorious trademark in Mexico with effect from at least October 23, 1998. On August 23, 2010, IMPI issued a declaration of fame in Mexico for the Complainant’s INTEL trademark based upon and dating from the date of registration of the above-noted Mexican trademark 277115, namely July 20, 1982.

The Respondent is the owner of a small business located in Hermosillo, Mexico. The Respondent holds a Masters Degree in Electronic Commerce from the Monterrey Institute of Technology and Higher Studies, awarded December 10, 2003. The Respondent conceived the idea of a small and local hosting and website development business at the conclusion of its studies. The Respondent registered the disputed domain name on March 24, 2004 for use with the said business. The Respondent's said business has used the disputed domain name and has traded as “IntelSitio” since 2004.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark in which it owns rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.

The Complainant submits that the disputed domain name contains two irrelevant elements, namely the suffix “.com” which the Complainant notes is not a distinctive element of a domain name, and the word “sitio”. The Complainant states that “sitio” means “site” in English and that this can be considered as a descriptive word that does not render the disputed domain name distinctive. The Complainant asserts that the distinctive element of the disputed domain name is the Complainant’s INTEL trademark.

The Complainant asserts that the Respondent has no rights over the INTEL trademark and that the Respondent has no trademark registration or other right granting a legitimate interest justifying use of the Complainant’s trademark in the disputed domain name. The Complainant submits that it would be impossible for the Respondent to have rights or legitimate interests in the disputed domain name in light of the fact that the Complainant’s trademark is famous as noted in the Factual Background section above. The Complainant asserts that if the Respondent had wished to have rights or legitimate interests in the disputed domain name it should have applied for a trademark in the term INTEL. However the Complainant also notes that even if the Respondent had done so, such trademark would not have matured into a registration due to the Complainant’s famous trademark. The Complainant also states that the Respondent is not known under the name of INTEL in connection with the manufacture or distribution of computers, microcomputers or microprocessors or in any other media.

The Complainant submits that the Respondent is not known as INTEL as this is not the Respondent’s name. The Complainant asserts that the Respondent has no relationship with the Complainant. The Complainant notes that a search on the website <google.com> on March 14, 2012, using the words “INTEL” and “sitio” produced the Complainant’s official website <intel.com> as the first result and did not produce the website associated with the disputed domain name in the ten first results of the search. The Complainant asserts that this search confirms that no one knows the Respondent as INTEL.

The Complainant asserts that the Respondent is using the disputed domain name for the purpose of link farm parking and pay per click advertising. The Complainant states that the Respondent publishes different links that have no connection to the Complainant by use of the disputed domain name at the URL “http://intelsitio.com/bluehost.php”, which could refer to competitors of the Complainant as consumers associate INTEL directly with the computer or micropocessor market. The Complainant asserts that some of the links appearing at the said URL include inter alia: “AMD vs Intel processors”, “CPU AMD”, “AMD vs Intel Processors”.

The Complainant states that it should be deemed that the Respondent registered and is using the disputed domain name in bad faith because the Respondent took advantage of the goodwill and fame of the Complainant’s INTEL trademark at the time of registration of the disputed domain name, creating confusion in order to divert Internet users to the Respondent’s website. The Complainant asserts that the Respondent’s activities may lead Internet users into error as they may wrongly believe that the Respondent is a licensee of the Complainant and/or an authorized dealer or distributor of the Complainant regarding the sale of computers, hosting or development of websites.

The Complainant states that the Respondent is preventing the Complainant from reflecting its mark in a corresponding domain name. The Complainant asserts that this may be demonstrated by the correspondence between the Complainant and Respondent in which the Complainant proposed that the Respondent voluntarily cancel the disputed domain name which the Respondent did not do.

The Complainant submits that the Respondent is taking advantage of the Complainant’s famous INTEL trademark to divert consumers searching for INTEL services or products to the Respondent’s site, in order to obtain revenue via the Respondent’s recommendations for Internet users to visit a company named “Bluehost”. The Complainant notes that when users click on the associated link, they are taken to a page at “intelsitio.com/bluehost.php” which the Complainant states is a link farm parking site. The Complainant notes that some of the links contained therein refer to the Complainant’s competitor AMD. The Complainant submits that the Respondent has thereby registered and used the disputed domain name in bad faith, because the Respondent is intentionally diverting the traffic to other online locations for commercial gain through confusion as to the source, affiliation or endorsement of the website, specifically the Respondent’s use of the Complainant’s INTEL trademark in different links on its website such as “Intel 13”, “Intel Chips”, and “Intel video driver”.

The Complainant submits that the disputed domain name was registered and is being used in bad faith, because the Respondent, knowing about the fame of Complainant’s trademark, registered a domain name that would attract Internet users, and in a manner so as to obtain an undue profit.

B. Respondent

The Respondent states that the disputed domain name is not identical or confusingly similar to the Complainant’s trademarks, citing the Merriam Webster Dictionary, in which the word “intel” means “intelligence”. The Respondent argues that Intel Corporation cannot and should not be allowed to acquire “universal rights” over a generic term.

The Respondent asserts that the trademarks, service marks and logos used by both Complainant and Respondent are quite different. The Respondent points out that Intel Corporation’s devices are blue with a square and oval form while the logos used by the Respondent are orange, rectangular in form, and always use their slogan “Tu Negocio en Internet” (“Your business on the Net”). The Respondent points to “The Way Back Machine” for evidence of the use of the Respondent’s logo since 2004.

The Respondent states that Jesús Guerrero, the owner of the Respondent, has never registered a trademark corresponding to the domain name due to the small and personal nature of the Respondent’s business. The Respondent asserts that “Intelsitio” is a portmanteau of “Sitio Inteligente” (Intelligent Site) and is not a casual construction. The Respondent notes that the idea of this business was originated after he finished his Masters Degree as referred to in the Factual Background section above. The Respondent argues that as the business at the disputed domain name is a web hosting and website development business, the use of the portmanteau “Intelligent Site” is relevant. The Respondent asserts that Intel Corporation is not in the hosting and website development business and that the Respondent is not in the business of manufacturing or selling computers, semiconductor chips, processors or microprocessors. The Respondent invites the Panel to browse the website hosted at the disputed domain name in order to appreciate the hosting and website development business carried on there and also presents letters of recommendation of the Respondent including one from an entity founded in January 1945.

The Respondent argues that the disputed domain name is completely different from the Complainant and its brands in light of searches which the Respondent has conducted through several specialized search engines that analyze and compare similar websites. The Respondent states that <intel.com> did not appear as a “similar site” to <intelsitio.com>. The Respondent also produces a Google Analytics keyword search report which it states demonstrates that no visitors have arrived at the disputed domain name by searching the word “Intel” in Google.

The Respondent submits that the disputed domain name is a unique term and that, bearing in mind the associated website’s trade dress and characteristic elements, the disputed domain name is distinctive and different from the Complainant’s brands.

The Respondent notes that it has been using the disputed domain name long before any notice to it of the dispute in connection with a bona fide offering of goods or services. The Respondent invites the Panel to verify that the Respondent is a web hosting and web developer provider and to validate its position that it has operated this business for eight years by using “The Way Back Machine”. By virtue of “The Way Back Machine” entries and the Respondent’s customers’ letters of recommendation, the Respondent asserts that it has been commonly known by the disputed domain name, even though it has not acquired trademark or service mark rights.

The Respondent produces screenshots of its software tool, which it says is also named “IntelSitio”, the functions of which are made available to the Respondent’s customers. The Respondent asserts that it named the tool “IntelSitio” due to the easy way in which the system provides control over a website to the site owner or webmaster.

The Respondent argues that it is making a legitimate and 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 Respondent asserts that the Complainant is wrong to state that the logical procedure would be for the Respondent to have applied for an INTEL trademark. The Respondent points out that paragraph 4(c)(ii) of the Policy establishes that it is not necessary to have acquired trademark or service mark rights in order to demonstrate rights or legitimate interests.

The Respondent submits that the Complainant has provided misleading information regarding its Google search. The Respondent argues that as the disputed domain name is a portmanteau of “Intelligent Site” it should be searched as a unique word: “intelsitio”, a search which the Respondent says results in no returns for the Complainant’s INTEL trademark. The Respondent states that for the Complainant’s approach to Internet searches to be correct, it would be necessary when searching for INTEL to use a combination of “Integrated” and “Electronics” instead of “Intel” as the name INTEL is a portmanteau of “Integrated Electronics”. The Respondent also notes that a search for “intelsitio” demonstrates that the website associated with the disputed domain name is a popular site listed in many directories.

The Respondent argues that the Complainant is distorting the true meaning of “link farm”, citing the definition provided by the Wikipedia online encyclopaedia. The Respondent asserts that a visit to the URL provided by Complainant “intelsitio.com/bluehost.php” demonstrates that there is neither “link farm” nor “pay per click” activity on the Respondent site. The Respondent submits that the printouts provided by the Complainant are from the domain name <dsnextgen.com> and not from the disputed domain name. The Respondent asserts that it has no connection to the domain name <dsnextgen.com>. The Respondent asks the Panel to disregard the evidence regarding <dsnextgen.com>.

With regard to the Complainant’s printouts taken of the URL <intelsitio.com/bluehost.php> the Respondent submits that the pages are “Error Pages” or “404 Not Found". The Respondent asserts that such pages are not visible while browsing a website, nor are indexable by search engines but are shown only to a user that types a wrong URL or clicks on a broken link. The Respondent notes that the website associated with the disputed domain name is hosted with a company named “Hostmonster.com” which displays by default a customized “Error Page” for broken links, including pay per click advertising links for the hosting company’s own benefit. The Respondent asserts that the printouts provided by the Complainant seem to pertain to old broken links which may have contained pay per click links inserted by “Hostmonster.com” without the Respondent’s prior consent or knowledge. The Respondent notes that inserted links or sponsored advertisements are dynamic by nature and will display an advertisement when a keyword query matches an advertiser's keyword list, or when a content site displays relevant content.

The Respondent asserts that the Complainant has provided blatantly false and misleading information as evidence, and submits that the Complaint was brought in bad faith which constitutes an abuse of the proceeding.

The Respondent asserts that the disputed domain name was not registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name. The Respondent states that on February 9, 2011 a representative of the Complainant sent an email to the Respondent offering $1,000 for the disputed domain name, however the Respondent refused to sell it to the Complainant. The Respondent notes that it has been the registrant of the disputed domain name since 2004, and states that over the intervening eight years it has never contacted the Complainant in order to sell, rent, or otherwise transfer the domain name for any kind of consideration.

The Respondent asserts that the disputed domain name was not registered in order to prevent the Complainant from reflecting its mark in a corresponding domain name and that the Respondent has not engaged in a pattern of such conduct. The Respondent notes that the Complainant asserts that it is the owner of multiple INTEL domain names and the Respondent argues that, if this is so, the Respondent cannot be held to be preventing the Complainant from reflecting the said mark in a domain name.

The Respondent notes that the Complainant requested the cancellation of the disputed domain name rather than transfer and notes that if such a cancellation request was granted, no one would be able to use the disputed domain name.

The Respondent states that the Complainant fails to mention an essential element of the Policy in that it twice omits to note that paragraph 4(b)(ii) of the Policy contains a requirement that a respondent has engaged in a pattern of conduct. The Respondent asserts with reference to past cases under the Policy and to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") paragraph 3.3 that any such pattern of conduct must involve the registration of multiple domain names. The Respondent asserts that because none of the appropriate circumstances are present in this case, the Complainant misleadingly omitted the key element of paragraph 4(b)(ii) on two occasions.

The Respondent asserts that the Complainant and the Respondent are not competitors and that the domain name was not registered by the Respondent primarily to disrupt the Complainant’s business nor was it registered by the Respondent in an intentional attempt to attract for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location or of a product or service on the Respondent’s website or location.

The Respondent submits that it is subscribed to the “Bluehost Affiliate Program” by virtue of which the Respondent has an obligation to promote “Bluehost” services on its web page. The Respondent cites Federal Trade Commission regulations which the Respondent says require that material connections between advertisers and endorsers be disclosed. The Respondent asserts that such mandatory notes or statements cannot be deemed as bad faith in the use or registration of the disputed domain name.

The Respondent asserts that the Complainant is wrong when it states that the disputed domain name may give rise to consumer error or may deceive consumers on the basis that the Complainant has failed to submit evidence that would substantiate this claim and is merely speculating as to consumers’ beliefs. The Respondent notes the conjunctive requirement of paragraph 4(a)(iii) of the Policy that a complainant must prove both registration and use in bad faith and submits that the Complainant in the present case has not separated these elements in its contentions and has provided no evidence whatsoever that the Respondent has registered and used the domain name in bad faith.

The Respondent notes that the Final Report of the WIPO Internet Domain Name Process concluded that the behaviour of innocent or good faith domain name registrants is not to be considered abusive. The Respondent also notes that the said Report provides that a small business could show, through business plans, correspondence, reports, or other forms of evidence, that it had a bona fide intention to use a domain name in good faith and that good faith disputes between competing right holders or other competing legitimate interests over whether two names were misleadingly similar would not fall within the scope of the Policy. The Respondent argues that it has successfully proved that it is an innocent or good faith domain name registrant whose behaviour should not be considered abusive.

The Respondent asserts that the Complainant is already publicly recognized as being famous for filing frivolous and abusive complaints. The Respondent cites a case from 2009 concerning the domain name <latinintel.com> in which the Respondent states that the Complainant pursued a frivolous and abusive lawsuit against a small newsletter about intelligence and forecasting services on economics, business and politics in Mexico. The Respondent also quotes the “Chilling Effects Clearinghouse” website which states that the word “intel” as used in the intelligence and information services sectors may not be trademarked as it is an abbreviation for intelligence in the English language, and can be found in dictionaries of record.

The Respondent submits that the Complainant has also filed frivolous and abusive UDRP complaints because after the Complainant won past disputes, it took no action or lost control the domain names that were transferred to it. The Respondent provides a list of 72 domain names which it states were recovered by the Complainant under the Policy and states that none are in use, that many have been registered by third parties and some are being offered for sale.

The Respondent asserts that because the Complainant has provided false evidence, has argued with misleading information and has concealed key elements of the Policy, the Complaint has been brought in bad faith and the Panelist should declare that the filing of the Complaint constitutes an abuse of the proceeding.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:

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

(ii) the Respondent has 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.

A. Identical or Confusingly Similar

The Panel summarises the Parties' respective positions on this issue as follows: The Complainant submits that the distinctive element of the disputed domain name is the Complainant’s INTEL trademark and that the accompanying word “sitio” means “site” in English, this second component being a descriptive word that does not render the disputed domain name distinctive. The Respondent argues that both words in the disputed domain name are generic, “intel” meaning “intelligence” or “intelligent” and “sitio” meaning “site”, the combination of which may be translated as “Intelligent Site”, and thus that there is no potential for confusing similarity.

As noted in ARN Industries, Inc. d/b/a Halco Lighting Technologies v. CFM Holdings Limited (on behalf of Just Raw Pte Ltd), WIPO Case No. D2011-1094, this Panel takes the generally accepted view that the test in paragraph 4(a)(i) of the Policy is “a relatively low threshold test for a complainant, the object of which is to establish that there is a bona fide basis for the complaint” (The Perfect Potion v. Domain Administrator, WIPO Case No. D2004-0743). The difficulty for the Respondent's case on this topic is that while there may be generic meanings for the abbreviation “intel”, it happens also to denote an extremely famous registered trademark. On an objective comparison between the disputed domain name and the Complainant's trademark, the Panel considers that the Complainant has passed the low threshold test. The Panel is in little doubt that the “intel” element of the disputed domain name can be identified as denoting the Complainant and its trademark, and that the word “sitio” can likewise be seen as simply a descriptive component. In other words, the Panel does not believe that most viewers would see the disputed domain name as composed of two generic elements even if the Respondent selected it for that reason.

In the Panel's opinion the Complainant is entirely capable of showing a bona fide basis for the Complaint and furthermore the Panel considers that the disputed domain name is confusingly similar to the Complainant's trademark for the reason outlined above. Accordingly, the Panel finds that the first element under the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(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 Complainant asserts that the Respondent can have no rights or legitimate interests in the disputed domain name as it contains the Complainant's famous INTEL trademark and that the Respondent has been given no permission by the Complainant to use such a domain name. The Complainant also points to alleged use of pay per click and referral links on the website associated with the disputed domain name which it states cannot confer rights or legitimate interests upon the Respondent.

The Respondent's case in answer focuses squarely upon paragraphs 4(c)(i) and (ii) of the Policy. In a detailed and comprehensive response, the Respondent explains that it selected the disputed domain name for its web development business as this represents a portmanteau of “Sitio Inteligente” (“Intelligent Site”). The Respondent provides evidence to show that its business has been trading under the name “IntelSitio” since 2004, including links to the “Wayback Machine” which provides various screenshots of the website associated with the disputed domain name from 2004 onwards. In addition, various customers of the Respondent's business, who have used the Respondent's services since 2004, 2006, 2007, 2008 and 2009 respectively, have provided testimonials. The Respondent also shows by various illustrations that its logo and trading style represent the combined expression “IntelSitio” and that this is very different in appearance from the Complainant’s logo and trading style.

In light of the evidence provided by the Respondent, the Panel is in no doubt that the Respondent has used the disputed domain name in connection with an offering of goods and services over the past eight years and thus well before the launch of the present Complaint, as anticipated by paragraph 4(c)(i) of the Policy. The remaining question for the Panel in terms of that paragraph is whether such an offering of goods and services can be said to be in bona fide, bearing in mind the existence of the Complainant's well-known and, in Mexico, famous trademark. The Panel considers that the answer depends upon the intentions and motives of the Respondent when the disputed domain name was registered. Did the Respondent intentionally select the Complainant's trademark as part of the disputed domain name or did the Respondent create an abbreviated version of “Sitio Inteligente” independently?

With regard to paragraph 4(c)(ii) of the Policy, it is also clear to the Panel from the evidence provided that the Respondent has used the name “IntelSitio” as a trading name since 2004 even though the Respondent has acquired no trademark rights therein. Again, the question of the Respondent's intent is raised as, while paragraph 4(c)(ii) of the Policy does not specifically mention good faith, the Panel considers that to rely on this paragraph a Respondent cannot have assumed and been commonly known by a domain name which it adopted in bad faith.

Clearly the Respondent, a graduate in electronic commerce, could reasonably be expected to have known of the Complainant's INTEL trademark before the Respondent selected the disputed domain name. Even if the Complainant's declaration of fame of its trademark in Mexico was not obtained until a later date, the Panel finds that it is inconceivable that the Respondent could not have been aware of the Complainant's INTEL mark given the extent to which the Complainant had penetrated the market for personal computers by the date when the Respondent registered the disputed domain name. In the Panel's view, however, that is not the end of the matter. There is still the possibility that the Respondent is telling the truth that its name was selected for wholly unconnected reasons based upon “intel” being a recognised abbreviation and that the Respondent had no malicious or exploitative design targeted at the Complainant. The Panel observes that Respondent's case is at least supported by the fact that at no time has the Respondent adopted a trading style which is in any way similar to the Complainant's trademark, based upon the logo comparisons provided in the Response. Furthermore, there is no dispute between the Parties as regards the fact that at no time over the Respondent’s eight year trading period has the Respondent ever approached the Complainant with regards to the disputed domain name.

Nevertheless, the issue as a whole is a very difficult one for the Panel to resolve on the submissions and evidence before it. The Panel considered that some assistance might perhaps be obtained from the Complainant's averments regarding the Respondent's use of the disputed domain name. At first glance, the Complainant’s submissions appear to indicate that that the Respondent may have adopted its trading name in bad faith. For example, the Complainant states that the Respondent is using the disputed domain name to forward customers to a hosting company named “Bluehost” from which the Respondent gains a commission on each referral. If this had been demonstrably the sole or even principal purpose of the Respondent's website, the Panel considers that it could have cast a cloud over the Respondent's assurances of its good faith. However, the evidence does not bear that out.

It is plain to the Panel from all of the evidence before it that the Respondent genuinely operates a web development business involving site building together with the provision of a content management system. The Panel notes both from the Respondent’s submissions and the testimonials by the Respondent's customers that the Respondent has named the said content system “IntelSitio” and the Panel can certainly see the Respondent’s logic in calling such a tool “Intelligent Site” or as an abbreviated version thereof. In connection with the Respondent's business, it appears to the Panel that the Respondent recommends the “Bluehost” company to its customers for the provision of web hosting, being a related service not directly provided by the Respondent's business. In the Panel's view, this activity is entirely consistent with the nature of the Respondent's business. Furthermore, the Respondent's averments that it is required by commercial law to disclose the commission it obtains for endorsing “Bluehost” and that it must also comply with the “Bluehost” affiliate scheme terms and conditions in this regard are entirely plausible to the Panel and again, serve to distinguish the Respondent's website from those whose sole or main purpose is per click advertising which takes advantage of a famous trademark.

The second of the Complainant's submissions which might indicate that the Respondent did not select its name in good faith is the averment that the Respondent is engaging in link farm parking. The Respondent's genuine surprise at being accused of such activity comes through clearly in the Response. More importantly, however, the Respondent is able to demonstrate to the Panel's satisfaction that it has not intentionally engaged in such practices. The Respondent analyses the Complainant's screenshot in some detail. This screenshot certainly does contain pay per click links in the familiar layout, and these do reference the Complainant's INTEL trademark, together with that of the Complainant's competitor AMD. The footer of the screenshot indicates that it is a destination from the Respondent's website (in fact, the link concerned is the Respondent's page on which it explains its relationship with “Bluehost”). The screenshot shows a page containing a hosting company's logo and the legend “404 Error File Not Found / The page you are looking for might have been removed, had its name changed, or is temporarily unavailable.” In other words, this is an automatically generated custom 404 error page published not by the Respondent but by the hosting company with which the Respondent's website is hosted. Such a page is displayed in the event that the server is unable to access the content requested by a user. For the Complainant to suggest that the Respondent is in some way setting out to benefit from such links and that this demonstrates per se a lack of rights and legitimate interests in the disputed domain name is fanciful to say the least.

In addition to the “404 Error” page, the Complainant produces screenshots showing pay per click links which, according to the footer, are generated from a website at <dsnextgen.com>. As the Respondent points out, this is not the website of the disputed domain name. It is unclear from the Complainant's submissions how it arrived at this site, although it may have been via the pay per click links on the “Error 404” page. In any event, the Panel is unable to make sense of the significance of this screenshot without a more comprehensive explanation.

The Parties’ submissions regarding Internet searches likewise add nothing of significance to their respective cases. The Complainant notes that a Google search for the words “INTEL” and “sitio” produces the Complainant’s official website <intel.com> as the first result and does not produce the website associated with the disputed domain name in the ten first results of that search. However, while the Complainant concludes that this result demonstrates that no one knows the Respondent as INTEL, the Respondent argues that a more appropriate search would be for the unique word: “intelsitio” and that this provides no returns for the Complainant’s mark. In the Panel's opinion, the Parties' submissions on this point merely reflect their diametrically opposed points of view; the Complainant sees the disputed domain name as containing its trademark and thus requiring a search of the disputed domain name split into two components, one of which is the INTEL mark, while the Respondent sees the disputed domain name as a unique term “intelsitio” which should be searched for as such. Neither of these approaches to Internet searches assists the Panel’s attempt to understand the Respondent’s motivations in registering the disputed domain name.

On a related topic, the Respondent attempts to use Google Analytics to examine whether Internet users are reaching the site associated with the disputed domain name by searching for the Complainant's INTEL trademark. The Google Analytics report produced by the Respondent for the website associated with the disputed domain name covers the period from Sep 27, 2009 to May 2, 2012. The report indicates that the most popular search terms used by those reaching the site associated with the disputed domain name are “negocio internet” and “intelsitio”, in other words either the unique word for which the Respondent contends, or words from its strapline. However, while the Respondent's analysis indicates that its recent Internet visitors may not have searched on the Google search engine for the INTEL trademark, this does not lead the Panel to any conclusion regarding the Respondent's motivation in selecting the disputed domain name.

Accordingly, the Panel finds no assistance in answering the primary question of the Respondent's intent from the Complainant's various criticisms of the Respondent's website associated with the disputed domain name or from the Parties' comments on Internet searches. In the Panel's opinion, if the Respondent had been unable to address adequately one or more of the Complainant's submissions this might have pointed towards an intent to target the Complainant's trademark and thus to a lack of rights or legitimate interests. However, the fact that the Respondent has been able to respond to such submissions does not on its own definitively answer the question of whether the Respondent selected the disputed domain name for wholly genuine reasons unconnected to the Complainant's trademark.

The Panel is thus faced with a very finely balanced case. Neither of the Parties have demonstrated the Respondent's good or bad faith intent in selecting the disputed domain name to the full satisfaction of the Panel. The Panel reminds itself that according to the Policy, it is the Complainant who must prove each of the three necessary elements of the Policy on the balance of probabilities to the Panel's satisfaction, including that the Respondent has no rights or legitimate interests in the disputed domain name. In such a finely balanced case, where neither side is able to tip the balance in its favour, the Panel considers that the Complaint must fail on the basis that the Complainant has failed to carry its burden. Accordingly, the Panel finds that the Complainant has not proved that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

In concluding its observations on this topic, the Panel wishes to make several comments for the assistance of the Parties. In the first instance, it should be remembered that the Policy is of narrow compass and is intended to deal with cases of abusive cybersquatting. The present case strikes the Panel as a trademark infringement or unfair competition dispute rather than a complaint of abusive cybersquatting. As such, the proper forum is a court of competent jurisdiction. An administrative proceeding under the Policy does not provide a determination as to whether the activities of a respondent do or do not constitute infringement of a complainant's registered trademark. Accordingly, the Parties should note that the Panel's finding in the present case does not mean that the Panel is expressing the view that the Respondent is not infringing the Complainant’s rights in its registered trademark but merely that the dispute between the Parties does not on balance appear to be a case of cybersquatting.

C. Registered and Used in Bad Faith

The preceding section necessarily includes a consideration of whether the disputed domain name has been registered in bad faith as part of an examination of the Respondent's potential rights and legitimate interests therein. Given that the requirements of paragraph 4(a) of the Policy are conjunctive, failure on the part of the Complainant to demonstrate one element of the Policy, including that the Respondent has no rights or legitimate interests in the disputed domain name, will result in failure of the Complaint in its entirety. Accordingly, and in light of the Panel’s finding under the preceding head, the Panel will not add anything further in this section.

D. Reverse Domain Name Hijacking

Reverse Domain Name Hijacking 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”. Paragraph 4.17 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") provides inter alia:

“WIPO panels have found that the onus of proving complainant bad faith in such cases is generally on the respondent, whereby mere lack of success of the complaint is not itself sufficient for a finding of Reverse Domain Name Hijacking. To establish Reverse Domain Name Hijacking, a respondent would typically need to show knowledge on the part of the complainant of the complainant's lack of relevant trademark rights, or of the respondent's rights or legitimate interests in, or lack of bad faith concerning, the disputed domain name. Evidence of harassment or similar conduct by the complainant in the face of such knowledge (e.g. in previously brought proceedings found by competent authorities to be groundless, or through repeated cease and desist communications) may also constitute a basis for a finding of abuse of process against a complainant filing under the UDRP in such circumstances […]”

The essence of the Respondent's case on this topic is that the Complainant has provided false evidence, has submitted misleading information and has concealed key elements of the Policy in order to deceive the Panel and the Center. As to the alleged false evidence, the Respondent first focuses on the Complainant’s provision of the <dsnextgen.com> screenshot to the Panel. The Panel believes that this is not fabricated evidence and that it is more likely than not that the Complainant reached the URL via one of the links provided on the “Error 404” page and thus produced the screenshot as a genuine example of what it saw on its screen. If this were not the case, the Panel would have expected there to have been some attempt to conceal the URL in the footer of the screenshot. Accordingly, the Complainant's only failure in the Panel's opinion was to specify how it reached the said URL, which resulted in the Panel being unable to attach any weight to it.

With regard to misleading information, the Respondent focuses on the fact that the “Error 404” page was presented by the Complainant as if it was a page published by the Respondent. The Panel considers that, while it is very regrettable that the Complainant did not identify the nature of the page, it was nevertheless generated by a broken link on the Respondent's website and thus that it was perfectly proper for the Complainant to place this in evidence. The Respondent goes on to state that the Complainant submitted no factual evidence to support its assertion that the Respondent's activity might lead Internet users into error. The Panel notes that a failure to provide supporting evidence to accompany a submission does not necessarily constitute an abuse of the administrative proceeding. In any event, the Complainant provided extremely detailed evidence as to the fame of its INTEL trademark which in itself constitutes factual evidence which may be taken as supportive of such an assertion.

Finally, on the topic of alleged concealment of elements of the Policy, the Respondent focuses on the fact that the Complainant relies on paragraph 4(b)(ii) of the Policy yet fails to mention that an essential element of this paragraph is a pattern of conduct on the part of the Respondent. The Respondent argues that the Complainant did not mention this as the Complainant was aware that the Respondent had engaged in no such pattern. In the first place, the Panel notes that it is not reliant upon the Parties' assertions as to the meaning or effect of any aspects of the Policy. An incomplete submission as to the nature of the Policy in the Panel's view does not necessarily demonstrate reverse domain name hijacking. In any event, a complainant's submission on bad faith does not require to rely on any of paragraphs 4(b)(i) to (iv) of the Policy. Such examples of registration and use in bad faith are expressed to be non-exclusive.

In conclusion, the Panel finds that on this topic, the Respondent has merely listed a range of the Complainant's submissions which might be considered somewhat deficient in some respect or other. The Panel finds no deliberate or bad faith conduct in any such deficiencies. Some of the Respondent’s points are of more concern than others. For example, the Panel agrees with the Respondent that the Complainant should have noted the special nature of the “Error 404” notice and specifically addressed this. However, none of such matters indicate to the Panel that the Complainant is responsible for any abuse of the administrative proceeding. Accordingly, the Respondent's request for a finding of Reverse Domain Name Hijacking is denied.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Andrew D. S. Lothian
Sole Panelist
Dated: June 21, 2012

 

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