WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
NVIDIA Corporation v. Brent Angie/Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtection.org
Case No. D2014-1171
1. The Parties
Complainant is NVIDIA Corporation of Santa Clara, California, United States of America (“US”), represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland.
Respondents are Brent Angie of Austin, Texas, US / Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtection.org of Queensland, Australia.
2. The Domain Name and Registrar
The disputed domain name <geforce.graphics> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 4, 2014. On July 4, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 5, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on July 7, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. On July 7, 2014, the Center sent an email communication to Complainant, requesting the Complainant amend the Complaint to reflect the correct registrar. Complainant filed an amended Complaint on July 14, 2014.
The Center verified that the Complaint together with the amended 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 Respondents of the Complaint, and the proceedings commenced on July 16, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was August 5, 2014. Respondents did not submit any response.1 Accordingly, the Center notified Respondents’ default on August 6, 2014.
The Center appointed Jeffrey D. Steinhardt as sole panelist in this matter on August 14, 2014. 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
Complainant owns registrations to the trademark GEFORCE, for example in the US, Registration No. 3609474 in International Class 9, registered April 21, 2009 with a first use in commerce date of October 31, 1999.
The disputed domain name was registered February 24, 2014 and redirects Internet users to “www.xfxforce.com”, the website of one of Complainant’s competitors. Complainant’s GEFORCE mark was registered with the Trademark Clearinghouse instituted by ICANN.
Respondent’s website is used to promote computer graphics cards and computer and gaming peripherals, none of which include Complainant’s GEFORCE-marked products.
5. Parties’ Contentions
Complainant avers that it has for many years produced and marketed computer graphics processing units under the GEFORCE mark. Complainant notes that the disputed domain name routes to the XFX website, which promotes products that directly compete with Complainant’s trademarked goods. Complainant further avers that XFX was terminated as a business partner in 2010, having refused to cease carrying products that competed with the trademarked goods, as allegedly required in its exclusive agreements with Complainant.
Summarizing its basic legal contentions, Complainant alleges that (1) the disputed domain name is confusingly similar to Complainant’s trademark, (2) Respondent has no rights or legitimate interests in the disputed domain name, and (3) the disputed domain name was registered and is being used in bad faith, all in violation of the Policy.
On this basis, Complainant seeks transfer.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
The Panel must render its Decision on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a). Complainant must establish that (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) 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. Policy paragraph 4(a).
Complainant must establish these elements even if Respondent submits no Response. See, e.g., The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064. In the absence of a response, the Panel may also accept as true the reasonable factual allegations in the Complaint. See, e.g., ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425.
A. Identical or Confusingly Similar
The Panel agrees with Complainant that the disputed domain name is identical to Complainant’s trademark.
UDRP panels have commonly disregarded the generic Top-Level Domain (“gTLD”) suffix in evaluating identity or confusing similarity. See, e.g., VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607. Some UDRP panels considering the new gTLDs (such as the “.graphics” suffix in this proceeding) have maintained this practice, looking only to the second-level domain. See, e.g., NVIDIA Corporation v. Giovanni Laporta, Yoyo.email Ltd., WIPO Case No. D2014-0770 (<nvidia.email>).
Other UDRP panels have examined the new gTLD suffix along with the second-level domain to make findings of identity or confusing similarity, particularly if the suffix in some way relates to the class of goods or services associated with a complainant’s trademark. Hultafors Group AB v. my domain limited, WIPO Case No. D2014-0597 (<snickers.clothing>) (citing Canyon Bicycles GmbH v. Domains By Proxy, LLC / Rob van Eck, WIPO Case No. D2014-0206 (<canyon.bike>)).
Omitting the new gTLD suffix, the Panel finds that the disputed domain name in this proceeding is identical to the GEFORCE mark. Alternatively, if the gTLD “.graphics” suffix is retained for purposes of this analysis, the Panel finds that the disputed domain name is confusingly similar since the suffix is suggestive of the field of products in which Complainant uses its GEFORCE mark (GPU’s and computer graphics cards): the addition of the “.graphics” suffix to the second-level “geforce” term is likely to increase confusion that Internet users would experience.
Under either approach, the Panel concludes that the first element of Policy paragraph 4(a) is fulfilled.
B. Rights or Legitimate Interests
The Panel also concludes that the second element of paragraph 4(a) of the Policy is fulfilled.
Complainant must show a prima facie case that Respondent lacks rights or legitimate interests. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. The absence of rights or legitimate interests is shown if a respondent does not rebut the complainant’s prima facie case. Paragraph 4(c) of the Policy lists circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name, including (1) the use of the domain name in connection with a bona fide offering of goods and services; (2) being commonly known by the domain name; or (3) the making of a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.
The Panel accepts as true Complainant’s uncontroverted allegations that Respondent has no authorization, registration, or license to use Complainant’s trademark and that Respondent is not known by the disputed domain name. The website to which the disputed domain name routes competes directly with Complainant’s business associated with the mark. The Panel therefore also finds that Respondent’s use of the disputed domain name demonstrates Respondent’s lack of a legitimate noncommercial interest in, or fair use of, the disputed domain name.
Complainant further alleges–without opposition–that Respondent uses the disputed domain name to route Internet users to the website of a business partner that was terminated several years ago by Complainant for violating exclusivity provisions and dealing in goods of Complainant’s major competitor. There is no indication that the website offers or promotes goods under the GEFORCE mark. Therefore the Panel also finds there is no bona fide use by Respondent.
The Panel concludes that Complainant has established a prima facie case. Filing no response, Respondent has not invoked any of the circumstances of paragraph 4(c) of the Policy to support the existence of its “rights or legitimate interests” in the disputed domain name.
Accordingly, the Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
The Panel finds that the third element of paragraph 4(a) of the Policy, bad faith registration and bad faith use, is also established.
Using a domain name to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion, may be evidence of bad faith. Policy, paragraph 4(b)(iv). UDRP panels may draw inferences about bad faith in light of the circumstances, including failure to respond to a Complaint, concealment of identity, and other circumstances. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Both bad faith registration and bad faith use must be established under the third element of paragraph 4(a) of the Policy.
The record shows that Respondent knew of Complainant’s mark when registering the disputed domain name. First, Respondent registered the disputed domain name many years after Complainant’s widespread use in commerce of the trademark. Second, the content of the website to which the disputed domain name routes, promoting graphics hardware of Complainant’s competitors, demonstrates Respondent’s prior awareness of the mark and associated goods. Finally, Respondent had or can be expected to have had prior notice of Complainant’s trademark at the time the disputed domain name was registered, generated as a result of Complainant’s registration of the GEFORCE mark with the Trademark Clearinghouse. See, e.g., NVIDIA Corporation v. Giovanni Laporta, Yoyo.email Ltd., supra. The Panel therefore infers that Respondent deliberately attempted to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with Complainant’s mark.2 Registration in bad faith is established.
The website to which users are routed competes directly with Complainant’s trademarked goods. This is frequently seen as evidence of use in bad faith. See, e.g., Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784. Respondent’s failure to answer the Complaint and, under these circumstances, to use a privacy registration service in attempts to conceal his identity, is further evidence of bad faith.
The Panel consequently concludes that the disputed domain name was registered and is being used in bad faith under paragraph 4(b)(iv) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <geforce.graphics> be transferred to Complainant.
Jeffrey D. Steinhardt
Date: August 27, 2014
1 Respondent Domain Admin, Privacy Protection Service INC did, however, acknowledge receiving notification of these proceedings, on July 17, 2014. All further references in this decision to “Respondent” signify the individual Respondent Brent Angie.
22 The Complaint also contends that bad faith is shown because Respondent sought to capitalize on the earlier dispute between Complainant and XFX, Complainant’s former business partner. As described in this Decision, the Panel has found ample other evidence of bad faith. Consequently, and in the absence of evidence regarding the relationship between Respondent and XFX, the Panel declines to make further inferences of Respondent’s intentions.