WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Intel Corporation v. Biswajit Das, Mediaware Infotech Private Limited
Case No. D2015-2104
1. The Parties
The Complainant is Intel Corporation of Santa Clara, California, United States of America ("USA"), represented by RNA IP Attorneys, India.
The Respondent is Mediaware Infotech Private Limited, of Mumbai, Maharashtra, India, self-represented.
2. The Domain Name and Registrar
The disputed domain name, <brandintell.com> (the "Domain Name"), is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 19, 2015. On November 19, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 20, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 25, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 15, 2015. The Response was filed with the Center on December 15, 2015.
The Center appointed Tony Willoughby as the sole panelist in this matter on December 28, 2015. 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 January 4, 2016, at the request of the Panel, the Center issued Procedural Order No. 1 to the parties, reproduced below:
"The Complainant has exhibited screenshots from the Respondent's website connected to the disputed domain name <brandintell.com>.
The Panel visited the website and clicked on the "Home" button in the hope of finding more about the Respondent's business and was taken to the Respondent's website connected to the domain name, <mediaware-infotech.com>. There the Panel found a page entitled 3 Pillars, which is included at the end of this Procedural Order.
The Complainant is invited to make submissions in relation to the content of that page and, in particular, to indicate whether it has any reason to doubt the accuracy of that account of the development of the Respondent's business and the timeline.
Any submission from the Complainant in response to this Procedural Order must be filed with the Center by 4pm Geneva time on Wednesday, January 6, 2016.
Any submission from the Respondent in response to the Complainant's submission must be filed with the Center by 4pm Geneva time on Friday, January 8, 2016.
All communications from the Parties are to be exclusively with the Center."
The Complainant filed its response with the Center on January 6, 2016. The Respondent filed its response with the Center on January 7, 2016.
On January 7, 2016 the Panel issued Procedural Order No. 2 directed to the Respondent, reproduced below:
"Following receipt of the parties' responses to Procedural Order No. 1, and in light of the doubt raised by the Complainant as to the Respondent's claimed use of the disputed domain name, the Panel conducted searches using the WhoIs History facility supplied by DomainTools.com. This appeared to show that until December 9, 2014 the disputed domain name was held in the name of Design Resource Center of Chicago and not transferred to the Respondent until a date thereafter.
This came as something of a surprise to the Panel who had gained the impression from the Complaint (paragraph 12(n)) and not corrected in the Response that the Respondent had owned the Domain Name since its creation in December 2012.
The Panel then visited the website of Design Research Center of Chicago at its website at <drcchicago.com>. There the Panel found the Brandntel page, a screenshot of which is included at the end of this Procedural Order, a page which, when taken together with the history of the ownership of the disputed domain name, obviously raises questions over the origins of the Respondent's Brandintell trade mark.
In proceedings such as these, the Panel relies very heavily on the accuracy of what he is being told by the parties.
The Panel cautions the Respondent that if it wishes to pursue the argument that it has been using the disputed domain name for a bona fide offering of services, the Respondent must by 4pm Geneva time on Saturday January 9, 2016 provide to the Center a response:
(a) explaining the history of the disputed domain name;
(b) explaining the Respondent's connection with the Design Resource Center of Chicago; and if not already explained under (a) and (b) above;
(c) explaining the connection between the Respondent's Brandintell product and the Brandntel product of the Design Resource Center of Chicago; and
(d) exhibiting contemporaneous documents demonstrating genuine use of the Respondent's Brandintell or Brandintell Services mark at an early date, preferably in or around 2010 the date of first use claimed in the Respondent's trade mark application.
The Complainant has gone to considerable lengths to demonstrate the fame of its INTEL brand and the extent of its trade mark rights in respect of that brand. If the Respondent wishes to answer the Complainant's case, it must do so clearly, credibly and without relying solely on bare assertions.
If the Panel requires any further submission from the Complainant he will so inform the Center.
All communications from the Parties are to be exclusively with the Center."
The Respondent responded on January 8, 2016. The Panel has not sought a further submission from the Complainant.
4. Factual Background
The Complainant is a California-based company organized and existing under the laws of the State of Delaware, USA. It was incorporated in 1968 and is engaged in the development of digital technology for the computing and communications industries. It is one of the world's largest manufacturers of semiconductor chips.
Continuously since its incorporation in 1968 the Complainant has used the name "Intel" as part of its corporate name and as its primary trade mark for its products.
The Complainant is the registered proprietor of numerous trade mark registrations comprising or including the mark INTEL including by way of example, India being the Respondent's home jurisdiction,
(i) Indian Trade Mark Registration No. 678000 INTEL (word) dated August 25, 1995 in class 9 for "apparatus and instruments, all for processing, storage retrieval, transmission, display, input, output and printout of data; computers, computer terminals and printers for use therewith; video display units; floppy disk driving apparatus; modems; apparatus and instruments, all for monitoring, detecting, testing, and measuring, electronic security apparatus; surveillance apparatus."
(ii) Indian Trade Mark Registration No. 1240068 INTEL (word) dated September 26, 1995 in class 42 for a wide range of computer programming and related services.
The Respondent operates a website connected to its <mediaware-infotech.com> domain name. There it describes itself in the following terms:
"Mediaware has been providing IT enabled services for the advertising, marketing & media industry for the past 2 decades. We started by developing a Media Operations software for Enterprise Advertising, Bombay (subsequently merged with a GroupM entity.) During the past 2 decades, we have build partnerships with our clients: by offering solutions at an optimum cost-to-benefit ratio. We did this by building customized solutions & services for entire verticals with the advertising & marketing domain. We started as IT solution providers to ad agencies, focused on advertising & media agencies. Later, we included OOH & online agencies with broadcasters along with digital signage & PR. It was only in the past few years that we have built an IT-enabled eco system for bringing extreme efficiency in marketing functions, following up with a similar eco system for advertising & media agencies."
That website features a timeline purporting to describe the development of the Respondent's business from 1995 and showing, inter alia, that in 2011 it introduced a product which it describes as an "Intellmedia Workflow System"; that in 2012 it introduced "BrandIntell – Corporate Marketing Workflow System"; and that in 2013 it introduced "AdIntell – Agencies Workflow System".
The Domain Name was registered on December 7, 2012 by Design Resource Center, a company based in Chicago. A visit by the Panel to that company's website disclosed a webpage devoted to a service dubbed "Brandntel" (with a dot over the left hand vertical of the second "n"). The page features a description of the service, which includes the following sentence:
"Brand'ntel is our proprietory research approach that connects us with consumers in real time, enabling us to start the design process on a foundation of relevant insights"
On July 31, 2013 the Respondent acquired the domain name, <brandintell.in>.
On September 24, 2014 the Respondent applied for registration in India of the word mark BRANDINTELL SERVICES in class 42 for "software, database and IT infrastructure" claiming first use from May 3, 2010. That application is currently subject to an objection/opposition.1
The Respondent acquired the Domain Name on January 5, 2015. It is connected to the Respondent's website covering its Brandintell services, which it describes in the following terms: "Brandintell Services is your tool for managing your marketing investments. From document control / management, budget tracking, performance monitoring, competition tracking – leading to your private marketing portal with clean data for analytics & reporting."
On January 7, 2015 the Complainant's Indian attorneys wrote to the Respondent drawing to its attention the Complainant's trade mark rights and demanding inter alia that the Respondent ceases all use of its marks BRANDINTELL and BRANDINTELL SERVICES.
The Respondent responded by email on January 22, 2015 indicating that it had applied for registration of its trade mark BRANDINTELL SERVICES, which it had been using since 2010 for services for managing marketing investments. It indicates that its BRANDINTELL trade mark stems not from the Complainant's trade mark which "is used for totally different goods and services", but from the Respondent's so-called "service baseline", which reads "Manage your BRAND Marketing Investments INTELLigently" [Emphasis added]. The Respondent asserts that there is no conflict with the Complainant's trade mark.
On February 12, 2015 the Complainant's attorneys replied disputing the Respondent's assertion that there was no conflict with the Complainant's trade mark, but suggested that, given the Respondent's stated basis for its trade mark, a possible route to an amicable solution would be for the Respondent to amend its trade mark to BRANDINTELLI.
On February 20, 2015 the Respondent came back with an email maintaining its position, but welcoming the Complainant's willingness to explore an amicable route to settlement and seeking a 15-day period in which to consider the matter. Not having heard further from the Respondent the Complainant's attorneys sent a chaser on March 13, 2015.
There then followed some further emails and telephone calls, but the Respondent made no further substantive response.
5. Parties' Contentions
The Complainant contends that the Domain Name is confusingly similar to the Complainant's INTEL registered trade mark, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered and is being used in bad faith, the Respondent intentionally having selected a domain name confusingly similar to the Complainant's famous trade mark and with a view to attracting traffic to its website for commercial gain riding on the back of the goodwill associated with the Complainant's trade mark.
The Complaint asserts that the Respondent's stated basis for selecting the Domain Name (i.e., "Manage your BRAND Marketing Investments INTELLigently") is a sham designed to cover up the Respondent's bad faith.
In response to the Panel's Procedural Order No. 1 the Complainant reiterated its case as set out in the Complaint, drew the Panel's attention to discrepancies in the Respondent's accounts as to when it started using the Domain Name and did not admit the accuracy of either the Respondent's account of the development of its business or the timeline as described in section 4 above. The Complainant also observed that the Respondent's case depended wholly upon bare assertions and without any supporting evidence.
The Response is short and reads (verbatim) as follows:
"We would like to bring to your notice that our trademark "BRANDINTELL SERVICES" is used to represent for the specific services for "Software, Database and IT Infrastructure" continuously since 2010.
We had applied for the registration of the trademark "BRANDINTELL SERVICES" for providing a set of specific services for managing marketing investments. (Refer our application for trademark under no. 2815893 under class 42)
We declare that our trademark "BRANDINTELL SERVICES" is read as one whole mark, which does not conflict with your trademark INTEL.
We state that our mark BRANDINTELL is mainly used for the services for managing marketing investments.
We refute all your allegations of the violation of your rights by our adoption and legal use of the mark BRANDINTELL SERVICES for our services.
We once again re-iterate that our brand name in a composite word "Brandintell" which represents a set of IT enabled services for managing marketing investments.
We deny having any intention of using your client's promotional efforts for its mark. And support our statement with the fact that we have not used your client's mark (Intel) separately.
We further state that we have no intention to establish our trademark to pass-off as your client's trademark and as such, there is no cause for any confusion or deception in the course of trade."
In response to the Panel's Procedural Order No. 1 the Respondent admits the fame of the Complainant's INTEL trade mark and states that it has been a frequent customer for the Complainant's products. However, the Respondent re-asserts that its trade mark and that of the Complainant are very different both in appearance and for the goods/services for which they are used. The Respondent lists a number of substantial organisations for which it provides its services. However, it provides no supporting documentary evidence.
In response to the Panel's Procedural Order No. 2 the Respondent seeks to answer the queries raised in that Procedural Order and produces two emails, dated August 22, 2013 and August 23, 2013 respectively, addressed to potential clients concerning pitches for its Brandintell services.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
B. Identical or Confusingly Similar
The Domain Name comprises the made up word "Brandintell" and the generic ".com" Top Level Domain identifier. The word "Brandintell" consists of two halves, namely the dictionary word "brand" and a suffix, which is not a dictionary word, but comprises the Complainant's registered trade mark INTEL with an additional "L" or is, as the Respondent claims to have intended, an abbreviation of the word "intelligent(ly)".
Clearly, the Domain Name and the Complainant's INTEL trade mark are not identical, but are they confusingly similar?
The test for this purpose is now widely recognized to be a low threshold test designed to establish that the Complainant has a bona fide basis for filing the Complaint. Visually, there are differences between the Domain Name and the Complainant's trade mark, but since INTEL is a very well-known brand2 and the Domain Name features the word "brand" followed by a close variant of the trade mark, there can be little doubt that the Complainant has a bona fide basis for filing the Complaint.
In the view of the Panel it is likely that for many Internet users the Domain Name (absent the Top Level Domain identifier, which may be ignored for this purpose) will bring to mind the Complainant's trade mark and the Panel finds that for the purposes of paragraph 4(a)(i) of the Policy the Domain Name is confusingly similar to a trade mark in which the Complainant has rights.
In making this finding, the Panel stresses that this is not and cannot be a finding of likelihood of confusion for the purposes of trade mark law. First, the Panel has insufficient evidence to make such a finding; secondly, the Panel is not qualified to make such a finding under Indian trade mark law, which would be the likely applicable law in a trade mark case; thirdly, and more fundamentally, the test of confusing similarity under paragraph 4(a)(i) of the Policy is not a trade mark infringement test ("The Policy is not based on proof of trade mark infringement" Mile, Inc. v. Michael Burg, WIPO Case No. D2010-2011). Indeed, some panelists take the view that a domain name incorporating another's trade mark may be confusingly similar for the purpose of paragraph 4(a)(i) of the Policy even where there is no serious risk of Internet user confusion (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).
In this case the Panel questions the extent to which in practice relevant Internet users (i.e,. those likely to need to have direct dealings with the Complainant) would believe a domain name in the form of the Domain Name to be a domain name of or authorized by the Complainant, but for the reasons given that question does not need to be answered under this element of the Policy. For the purposes of this element of the Policy the fact, as the Panel has found, that the Domain Name is likely to bring the Complainant's trade mark to mind is sufficient.
To underline the point, reference may be had to the so-called "-sucks" cases involving domain names featuring pejorative terms in association with the complainant's trade mark and connecting to genuine criticism websites. In such cases it is common for confusing similarity to be found for the purposes of paragraph 4(a)(i) of the Policy, yet no confusing similarity to be found for the purposes of paragraph 4(a)(ii) of the Policy. See, for example, Yellowstone Mountain Club LLC v. Offshore Limited D and PCI, WIPO Case No. D2013-0097 involving inter alia the domain name, <yellowstoneclubscandal.com>, which under the first element of the Policy was found to be confusingly similar to the Complainant's YELLOWSTONE CLUB trade mark, notwithstanding the addition of the word "scandal". However, as to the second element of the Policy the panel stated: "An Internet user who enters that domain name into her browser knows, or should know, that she is not headed to a website likely to be controlled by Complainant. There is no diversion and no misrepresentation. As to that domain name, Respondent has demonstrated a right or legitimate interest". Thus, in certain circumstances, a domain name confusingly similar for the purposes of paragraph 4(a)(i) of the Policy may well not be a domain name likely to cause Internet user confusion when considered under paragraph 4(a)(ii) of the Policy.
C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish to the satisfaction of the Panel that the Respondent has no rights or legitimate interests in respect of the Domain Name. It is now well-established that for this purpose it is sufficient for the Complainant to make out a prima facie case showing that the Respondent lacks rights or legitimate interests. A prima facie case having been established, it is for the Respondent to answer that case.
Paragraph 4(c) of the Policy, which is headed "How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint", features a non-exhaustive list of circumstances which, "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)." The only one of those circumstances potentially relevant here is use of the domain name in issue "in connection with a bona fide offering of goods or services" prior to any notice of the dispute (Paragraph 4(c(i) of the Policy).
The Complainant's case is that in the field of activity in which the Respondent is engaged, the Respondent must have been well aware of the Complainant's trade mark when it registered the Domain Name. It contends that the Respondent, with that knowledge, set out to register a domain name confusingly similar to the Complainant's trade mark and with a view to attracting traffic to its website, which it would not otherwise have attracted. The Complainant contends that the Respondent set out to impersonate the Complainant and that such a use cannot be said to give rise to rights or legitimate interests in the hands of the Respondent in respect of the Domain Name.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent admits that it was aware of the Complainant's INTEL brand serving the computer industry, when it acquired the Domain Name, a domain name which, as the Panel has found in Section 6.B. above, is likely to bring to mind, for many Internet users, the Complainant's INTEL trade mark.
The Respondent's answer evident in the email dated January 22, 2015 from the Respondent to the Complainant's attorneys (referred to in section 4 above) and the Response set out in full in section 5 above and reiterated in its response to the Panel's Procedural Orders Nos. 1 and 2 is that (i) the Respondent's selection of the Domain Name had nothing to do with the Complainant's trade mark, but originated in the Respondent's so-called "base line" reading "Manage your BRAND Marketing Investments INTELLigently" (Emphasis added); (ii) the Domain Name is very different from the Complainant's trade mark and unlikely to lead to confusion and (iii) the Respondent's use of its mark BRANDINTELL does not in any way cut across the Complainant's trade mark rights.
As can be seen from section 5 above, the Respondent's Response is very sparse and, in the view of the Panel, somewhat surprisingly makes no reference to the fact that the Respondent has made (or at any rate claims to have made) other uses of "Intell", namely as a prefix from 2011 in the form of "Intellmedia" and as a suffix from 2013 in the form of "AdIntell" (see section 4 above).
The Complainant has not suggested that the Respondent's business conducted under and by reference to the name "BrandIntell" is not a genuine commercial operation. While the Complainant has not admitted the accuracy of the Respondent's description of the development of the latter's business as set out in the Respondent's website, in substance the Complaint relates only to the name under which the business is conducted although there are doubts as to the timing and extent of the Respondent's use of its Brandintell services.
As the Complainant has correctly observed, the various responses of the Respondent are open to a number of objections. They include inconsistencies and, until receipt of the response to Procedural Order No. 2, they were not supported by any documentary evidence. Furthermore, in breach of paragraph 5(b)(viii) of the Rules the Response did not contain the requisite certificate as to the completeness and accuracy etc. of the content of the document.
At the outset the Panel considered ignoring the Response altogether in light of the breach of paragraph 4(b)(viii) of the Rules. However, having read the inter partes correspondence annexed to the Complaint and having visited the Respondent's website, screenshots of which were also annexed to the Complaint, it seemed to the Panel that certain matters could not be ignored, namely:
1. More likely than not the Respondent has been conducting for several years a genuine IT business directed primarily to the advertising and marketing communities in India under its Mediaware Infotech corporate name. In other words, the Respondent is not a typical cybersquatter, the normal target of proceedings under the Policy.
2. None of the verifiable activities of the Respondent in respect of the Brandintell name post-dated the Complainant's first approach to the Respondent. The Respondent acquired its <brandintell.in> domain name on July 31, 2013, applied to register its BRANDINTELL SERVICES trade mark on September 24, 2014 and acquired the Domain Name on January 5, 2015. Thus none of these activities was a typical cybersquatter's ex post facto response to a claim by the Complainant. Indeed, the acquisition of the Domain Name appears to the Panel to have been a natural follow-up to a decision by the Respondent to trade under the "Brandintell" name. That, of course, is not a complete answer to the point as it begs the question as to why the Respondent selected that name in the first place.
3. In the pre-Complaint email correspondence the Complainant indicated that it would be prepared to accept <brandintelli.com> as an alternative to the Domain Name, which suggests to the Panel that the Complainant accepts that the Respondent is a genuine trader and that the scope of the dispute between them is narrow.
With that background, ignoring the Respondent's responses in this administrative proceeding seemed to the Panel to be a futile exercise of form over substance.
The discrepancy over dates of first use of the name "Brandintell" by the Respondent stems from a claim of first use of 2010 in the Respondent's trade mark application and in the Response and a date of 2012 given in the timeline in its website (see section 4 above). The Respondent's answer appears to be that it had no customers for its service in 2010, so re-launched in 2012. There is no evidence before the Panel of any use in 2012, but the annexes to the Respondent's response to Procedural Order No. 2 show that in August 2013 it made approaches to two companies with a view to pitching its services to them. They could, of course, be forgeries, but the Panel has no reason to doubt their authenticity. Accordingly, insofar as this administrative proceeding is concerned the Panel regards this discrepancy as irrelevant. In the view of the Panel the Respondent is likely to have had at all material times a genuine intention to use the "Brandintell" name for a section of its services. In other words, it is unlikely to have been an empty scam. Whether that intent is likely to have been a bad faith intent is addressed below.
Another matter concerned the Panel. As is apparent from Procedural Order No. 2 (set out in section 3 above) the Panel discovered that the Respondent did not acquire the Domain Name in December 2012 when the Domain Name was created, but in January 2015 and from a Chicago-based company with a product branded "Brand'ntel". The Panel was concerned that the Respondent may had some connection with the previous owner and its product, thereby calling into question the Respondent's explanation for its choice of name. However, the Respondent has asserted (and the Panel accepts) that there was no such connection. The Registrar, having acquired for the Respondent its <brandintell.in> domain name in 2013, informed the Respondent of the availability of the Domain Name and acquired it for the Respondent. The Respondent states that it never had any contact with the previous owner of the Domain Name.
Once one accepts, as the Panel accepts, that it is more likely than not that the timeline featured on the Respondent's website is more or less accurate, one cannot ignore the fact that in or around 2011 the Respondent was planning to introduce or did in fact introduce (there is no other evidence on the topic) a service product under the name "Intellmedia" and subsequently in 2013 another service product under the name "Adintell" (again no other evidence save that one of the emails annexed to the Respondent's response to Procedural Order No. 2 features a footnote reading: "We also offer AdIntell Services – a low-end version for automating/monitoring advertising activities."
The fact that in arguing its case the Respondent made no mention of this sequence of events involving other uses of the "Intell" prefix/suffix is surprising to the Panel, but in the view of the Panel it is no reason why, in the particular context of this case, that sequence should be ignored.
Reverting back to the terms of paragraph 4(c)(i) of the Policy, can it be said that in using the name "Brandintell" in the course of its business and adopting the Domain Name for its business the Respondent has been making use of the name in connection with a bona fide offering of services giving rise to a right or legitimate interest in respect of the Domain Name?
The Complainant's trade mark is without doubt a famous mark (the Complainant has produced evidence to show that it has been held to be so in proceedings in India) and the Respondent admits to having been aware of it when acquiring the Domain Name, but is the name "Brandintell" in the service industry in which the Respondent is engaged so obviously confusingly similar to the Complainant's INTEL trade mark that the Respondent must be taken to have adopted it with a view to trading unfairly on the back of that trade mark, thereby rendering its Brandintell service offering something other than bona fide and disqualifying it from the benefit of paragraph 4(c)(i) of the Policy?
Rather than make a finding under this element of the Policy, the Panel prefers to decide this case under the next element.
D. Registered and Used in Bad Faith
The Complainant contends that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy, namely that "by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 website or location or of a product or service on your website or location."
The background facts are set out in some detail in sections 4 and 6C above. It seems to the Panel that there are two possibilities. One is that the Respondent after several years of trading without any reference to the Complainant's trade mark decided from about 2010/2011 to trade on the back of the goodwill associated with the Complainant's trade mark by adopting a variant of the Complainant's trade mark for services named "Intellmedia", BrandIntell" and "Adintell". The other is that the choice of the prefix/suffix stemmed from the word "intelligent(ly)" and had absolutely nothing to do with the Complainant's trade mark.
One of the problems facing the Panel is that the Response was sparse in the extreme and the Respondent's responses to the Panel's Procedural Orders were confusing and not as helpful as they might have been. Moreover, in certain respects they contradicted statements in the Response. Was this a result of a deliberate attempt to be obstructive and to conceal bad faith or was it incompetence, a result of the fact that the Respondent decided to represent itself rather than employ representation?
If, as the Respondent admits, it was well aware of the Complainant's INTEL brand, how could it conceivably have thought that adopting the "Brandintell" name for an IT service was a satisfactory option? Surely, the point must have occurred to the Respondent. The Respondent contends that the name "Brandintell" looks very different from INTEL and argues that the services for which the Respondent mainly uses the name (i.e., "managing marketing investments") are services very different from those supplied by the Complainant. Certainly, anyone visiting the Complainant's website connected to the Domain Name would be most unlikely to think that they were at a website of or authorized by the Complainant.
The Respondent's position is easier to understand when one looks at how the Complainant describes its business in the Complaint, namely:
"The Complainant is known as one the world's largest semiconductor chip makers. The Complainant on its own and through its subsidiaries is engaged in the business of developing advanced integrated digital technology platforms for the computing and communication industries. The Complainant's products include, microprocessors (the Central Processing Unit which acts as the "brain" of the computer); chipsets; motherboards; flash memory; wired and wireless connectivity products; communicators infrastructure components, including network processors; application and cellular based processors; and products for networked storage."
Ignoring the legal significance of the extent of the Complainant's trade mark rights (a matter on which the Panel expresses no views), might a business in the position of the Respondent quite reasonably have concluded that its field of operation and its clientele were miles away from that of the Complainant?
After much thought the Panel concludes that more likely than not the Respondent is an honest trader and that if its choice of name constitutes an infringement of the Complainant's trade mark rights, it was the result of an honest mistake rather than a deliberate bad faith attempt to deceive. While the Panel has not found this an easy case to decide, the Panel notes that the Complainant was prepared to settle the dispute on the basis that the Respondent dropped the Domain Name and adopted instead the domain name, <brandintelli.com>. The Panel doubts that the Complainant would have been prepared to come to a settlement in those terms if it thought that the Respondent was a cybersquatter.
The fact that the Indian Trade Mark Office, which is currently faced with an objection/opposition to the Respondent's trade mark application, or a court seized of the matter may come to the conclusion that the Respondent's activities constitute trade mark infringement is another matter entirely. Generally speaking it is unnecessary to prove bad faith intent to establish trade mark infringement. Under this, the third element of the Policy, proving bad faith intent is a necessary pre-requisite, although in certain circumstances that intent may be inferred from the surrounding circumstances.
At all events, there are a number of factual matters, which need to be resolved and which cannot readily be dealt with by way of an administrative proceeding under the Policy; moreover, the potential dispute extends beyond the Domain Name and embraces (or may embrace) other uses of the "Intell" prefix/suffix. In the view of the Panel, this is a dispute ripe for the court rather than the narrow confines of the Policy.
The Panel is not satisfied that the Domain Name was registered and is being used in bad faith.
For the foregoing reasons, the Complaint is denied.
Date: January 10, 2016
1 The Panel has been given no further specific information regarding the objection/opposition.
2 The Complainant has produced in evidence an abundance of material to establish that INTEL is a very well-known trade mark in India and many other countries.