WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Intel Corporation v. Whois Privacy Services Pty Ltd / Kwan Lee
Case No. D2012-0766
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 Respondents are Whois Privacy Services Pty Ltd of Fortitude Valley, Queensland, Australia and Kwan Lee of Tokyo, Japan.
2. The Domain Name and Registrar
The disputed domain name <intelweb.com> (the “Domain Name”) is registered with Fabulous.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 13, 2012. On April 13, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 16, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 17, 2012, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on April 22, 2012. In response to a request by the Center, on April 26, 2012 the Complainant confirmed that it would like to add Kwan Lee as an additional Respondent to the proceeding.
The Center verified that the Complaint together with the amendments 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 Respondents of the Complaint, and the proceedings commenced on April 26, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 16, 2012. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on May 18, 2012.
The Center appointed Assen Alexiev as the sole panelist in this matter on May 30, 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.
4. Factual Background
The Complainant in this administrative proceeding is the company Intel Corporation, established on July 18, 1968, and specialized on the development and distribution of technology, mainly focused on computers, microprocessors, integrated circuits and other devices for processing of data. The Complainant has developed the first microprocessor in human history and is among the most important developers and manufacturers of semiconductor chips worldwide.
The Complainant is the owner of several trademark registrations around the world, including the following registrations for the territory of the United States of America:
- The word mark INTEL with registration number 0938772, registered on July 25, 1972 for goods in International Class 09;
- The word mark INTEL with registration number 0939641, registered on August 1, 1972 for goods in International Class 09; and
- The word mark INTEL with registration number 1022563, registered on October 14, 1975 for goods in International Class 09.
The Complainant is also the owner of the following Australian trademark registrations:
- The word trademark INTEL with registration number 245217, registered on December 31, 1970 for goods in International Class 09;
- The trademark INTEL with registration number 526838, registered on January 12, 1990 for goods in International Class 09; and
- The trademark INTEL with registration number 541003, registered on August 28, 1990 for goods in International Class 09.
The Complainant is the owner of the domain name <intel.com>, registered since March 1986.
The Domain Name was created on August 21, 1995.
5. Parties’ Contentions
According to the Complainant, the Domain Name is identical or at least confusingly similar to the INTEL trademarks of the Complainant. The suffix “.com” and the word element “web” are not distinctive elements of the Domain Name. The only distinctive element on the Domain Name is the element “intel”, which is identical to the Complainant’s trademarks, while the word “web” is an accidental and irrelevant part of the Domain Name.
The Complainant contends that the Respondents have no rights or legitimate interests in respect of the Domain Name because they have no rights over the INTEL trademark and have no trademark or any other registration that grants them a legitimate interest, or that justifies the use of the trademark INTEL in a domain name. The Complainant further submits that it would be impossible for the Respondents to have any right or legitimate interest in the Domain Name because the Complainant is the legitimate owner of the rights over several registrations of its INTEL trademark around the world, including in the United States of America and Australia. The Respondents are not known with the name of INTEL among the manufacturers or distributors of computers, microcomputers or microprocessors or in any other media. The Complainant has never granted them a license or authorization for the use of the INTEL trademark. The Respondents are illegitimately using the Domain Name in order to attract different Internet users who are searching for the products of the Complainant, by creating confusion with the Complainant’s famous trademark as to the source, sponsorship, affiliation or endorsement regarding its website, and in order to promote their offer for sale of the Domain Name for an inflated price.
In the Complainant’s submission, the Respondents have registered and are using the Domain Name in bad faith. The website at the Domain Name contains inactive links representing keywords related to the Complainant’s products and services, such as “computers” and “software”. This is an indication that the Respondents have taken advantage of the goodwill and fame of the INTEL trademark, and have registered the Domain Name in an attempt to create a false impression in Internet users that they have certain relationship with the Complainant and thus to divert them to the website associated to the Domain Name.
Lastly, the Complainant submits that the Respondents have attempted to sell the Domain Name for the amount of 7,500 US Dollars, which is in excess of their out-of-pocket costs directly related to the Domain Name. The bad faith of the Respondents is further evident from their use of privacy shield services, which was made in an attempt to avoid enforcement by the Complainant of its rights.
The Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the Domain Name:
(i) That the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) That the Respondents have no rights or legitimate interests in respect of the Domain Name; and
(iii) That the Respondents have registered and are using the Domain Name in bad faith.
By the Rules, paragraph 5(b)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…”
In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondents, in compliance with the Rules, paragraph 2(a), and the Respondents were given a fair opportunity to present their case.
In the event of a default, under the Rules, paragraph (14)(b): “the Panel shall draw such inferences therefrom as it considers appropriate.”
As stated by the Panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004: “Here, the potential evidence of good faith registration and use was in respondent’s control. Respondent’s failure to present any such evidence or to deny complainant’s allegations allows an inference that the evidence would not have been favorable to respondent.” As stated by the Panel in Viacom International Inc. v. Ir Suryani, WIPO Case No. D2001-1443: “Since the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, this Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant. […] In the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended for factual and legal conclusions as proven by such evidence.”
In this administrative proceeding, the Respondents’ default entitles the Panel to conclude that the Respondents have no arguments or evidence to rebut the assertions of the Complainant. The Panel has to take his decision on the basis of the statements and documents submitted by the Complainant and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.
A. Identical or Confusingly Similar
The Complainant has provided evidence and has thus established its rights in the word trademarks INTEL, registered in the United States of America and in Australia.
It is a common practice under the Policy to disregard gTLDs such as the “.com” section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). Therefore, the relevant part of the Domain Name is its “intelweb” section. This section appears as composed of the elements “intel” and “web”. The “intel” element is identical to the Complainant’s distinctive INTEL trademark, and the “web” element is a generic word which in the Internet context is used as an abbreviation for the World Wide Web. Out of these elements, the “intel” element is clearly dominating and attracting the attention of the Internet users. Due to the wide popularity of the Complainant’s INTEL trademark, this element is easily associated with it, and the “web” element is likely to be regarded as an indication for a relation to the World Wide Web, and thus to Internet goods or services. For these reasons, the Panel is of the opinion that Internet users are likely to regard the Domain Name as related to the Complainant and its trademark.
On these grounds, the Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant claims that the Respondents have no rights or legitimate interests in the Domain Name, stating various arguments in this regard. Thus, the Complainant establishes a prima facie case that the Respondents lack rights or legitimate interests in the Domain Name.
It is well established that once a complainant makes out a prima facie case under the Policy, paragraph 4(a)(ii), the burden of production shifts to the respondent to rebut the showing by providing evidence of its rights or legitimate interests in the domain name.
The Respondents have chosen not to present to the Panel any allegations or documents in their defense despite their burden under the Rules, paragraph 5(b)(i) and 5(b)(ix) or the consequences that a Panel may extract from the fact of a default (Rules, paragraph 14). If the Respondents had any justification for the registering or using the Domain Name, they could have provided it. In particular, the Respondents have failed to contend that any of the circumstances described in the Policy, paragraph 4(c) - or any other circumstance - is present in their favor.
The only information available about the Respondents is the WhoIs information, provided by the Registrar, and the content of the website, associated to the Domain Name.
The WhoIs information contains no evidence of rights or legitimate interests of the Respondents in the Domain Name, apart from the rights as registrant of the latter.
As contended by the Complainant, the website associated to the Domain Name contains an offer for sale of the Domain Name and several keywords related to the Complainant’s business. This being so and the Respondents having provided no reasons for their choice of the Domain Name and not having denied the contentions of the Complainant, the Panel is of the opinion that it is more likely than not that the Respondents had information about the Complainant and its trademark at the time of the registration of the Domain Name, and had registered it with the Complainant in mind and with the intent to sell it. In the Panel’s view, these circumstances are not such as to give rise to rights and legitimate interests of the Respondents in the Domain Name.
Therefore, as the evidence does not contradict the contentions of the Complainant and they are not challenged by the Respondents, the Panel finds that the Respondents have no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii) of the Policy, 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 the holder has registered or has 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 the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has 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 the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’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 your website or location or of a product or service on the holder’s website or location.
In the present case, the Domain Name is confusingly similar to the Complainant’s distinctive trademark INTEL, and the Respondents have been found to have registered it without having any rights or legitimate interests in it, while very likely having been aware of the goodwill of the trademark and its commercial value. Then, the Respondents associated the Domain Name to a website containing an offer for the sale of the Domain Name and certain keywords associated to the Complainant’s products and services, and later offered to transfer the Domain Name to the Complainant in exchange of USD 7,500. The Respondents having not provided any arguments to the contrary, the Panel is satisfied that this amount is in excess of the reasonable out-of-pockets costs usually related to a domain name.
Therefore, the Panel is prepared to accept that the Respondents have registered the Domain Name primarily for the purpose of selling it to the Complainant for valuable consideration in excess of the Respondents’ documented out-of-pocket costs directly related to the Domain Name, which is regarded as a circumstance establishing bad faith registration and use of a domain name under the Policy, paragraph 4(b)(i).
For these reasons and in the absence of any contentions or evidence to the contrary, the Panel concludes that the Complainant has established the third element of the test under the Policy, paragraph 4(a).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <intelweb.com> be transferred to the Complainant.
Dated: June 18, 2012