WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Intel Corporation v. bingyong sui, Zhengzhou Xingang Electrical Engineering Co., Ltd
Case No. D2017-1109
1. The Parties
The Complainant is Intel Corporation of Santa Clara, California, United States of America (“United States”), represented by Beijing Lusheng Law Firm, China.
The Respondent is bingyong sui, Zhengzhou Xingang Electrical Engineering Co., Ltd of Beijing, China, self-represented.
2. The Domain Name and Registrar
The disputed domain name <auroraintel.com> is registered with Dynadot, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 8, 2017. On June 8, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 9, 2017, 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 June 23, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 13, 2017. The Response was filed with the Center on July 12, 2017.
The Center appointed Luca Barbero as the sole panelist in this matter on July 21, 2017. 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.
The due date for decision was extended to August 11, 2017.
4. Factual Background
The Complainant was established in 1968 and introduced the world’s first microprocessor in 1971. It is currently active in the global innovation of microprocessors, semiconductors, communications and networking, the Internet of Things, technological development and technological products in the Information Technology industry. The Complainant has around 300 offices worldwide and employs about 85,000 staff.
The Complainant is present in China since 1985 and has today 16 branches and offices in said country, employing over 7,500 local people.
The Complainant’s Intel technologies are used on and in association with a wide range of products and industries, including intelligent buildings, intelligent cities projects, energy management, and smart grid technology.
In China, the Complainant’s involvement in the development of the Internet of Things has led to the establishment, together with the Beijing municipal government and the Chinese Academy of Sciences, the China Intel Internet of Things Research Institute, which among other things seeks to apply Internet of Things technologies to smart buildings, smart grids and intelligent agriculture.
The Complainant is the owner, amongst others, of the following trademark registrations for INTEL valid in China: 225222 of April 30, 1985, in class 9; 1361319 of February 7, 2000, in class 9; 1369908 of February 28, 2000, in class 42; 1481984 of November 28, 2000, in class 9; 1984838 of August 7, 2002, in class 9; 6611818 of August 21, 2010, in class 9; 6623062 of April 7, 2010, in class 37; and 1342440 of December 7, 1999, in class 38.
The trademark INTEL was ranked amongst the first 10 most valuable brands from 2001 to 2010 according to the “Best global brands” charts of Interbrand.
The Complainant registered the domain name <intel.com> and has used it in connection with its global official website since March 1986. The Complainant also registered the domain names <intel.com.cn>, on October 13, 1999, and <intel.cn>, on March 17, 2003.
The disputed domain name <auroraintel.com> was registered on August 20, 2008 and is pointed to a website promoting the activity of the Respondent’s company, active in the field of electrical and low voltage services and which is identified on the website as “Aurora Intel Electrical Engineering Co., Ltd.(AIEE)”.
5. Parties’ Contentions
The Complainant states that its trademark INTEL has been in use since 1968 and is the primary mark of the Complainant, having been used on or in association with virtually all aspects of the Complainant’s business, including products, services, software, packaging, communications, social media and advertising. The Complainant highlights that it is not just a microprocessor company, as the use of the Intel brand spans the fields of computers, communications, the Internet, the Internet of Things, robotics, and energy management in manufacturing, office buildings, intelligent vehicles, and wearable technology, all of which are becoming increasingly interconnected.
The Complainant points out that, due to the Complainant’s extensive promotion of INTEL, the trademark has become one of the most widely recognized brands among the world’s consumers, including in China.
The Complainant also informs the Panel that the high-level fame and well-known status of the trademark INTEL has been recognized by courts and trademark administrative authorities in China and numerous other jurisdictions. In particular, in China, the trademark INTEL was included in the “Protection List of National Important Trademarks in 1999 and 2000”. Furthermore, the China Trademark Office (CTMO), the Chinese Trademark Review and Adjudication Board (TRAB), and the People’s Courts have recognized the fame and well-known status of the INTEL trademark in many cases.
The Complainant contends that the disputed domain name is confusingly similar to its registered and well-known trademark INTEL, as it reproduces the mark in its entirety with the addition of the term “aurora”, which can be disregarded being a common, descriptive and non-distinctive, English word.
The Complainant states that the Respondent has no rights or legitimate interests in the disputed domain name because:
i) The Respondent holds no trademark right in the disputed domain name as it does not have any INTEL-related trademark, is not affiliated with the Complainant and has not been authorized by the Complainant to use the trademark INTEL or register any domain name that incorporates the mark;
ii) The Respondent does not possess any registered trade name or company name right on “auroraintel” or “aurora intel”, as the English translations for the Respondent’s registered Chinese company name are “Zhengzhou Xin Gang Electrical Engineering Co. Ltd” or “Zhengzhou New Harbor Electrical Engineering Co., Ltd” and not “Aurora Intel”, which has no relationship with the Respondent’s Chinese company name either in terms of meaning or pronunciation. In addition, the Respondent also refers to itself as “Aurora Intelligent Building Co., Ltd” and “AIEE”, reducing any clear connection to a single English trade name;
iii) The Respondent enjoys no other trade name or company name rights in INTEL or the disputed domain name as the Respondent’s use of Intel as a part of its unregistered English trade name constitutes unfair competition under Chinese law;
iv) The mere registration of the disputed domain name by the Respondent does not establish
any rights or legitimate interests in the disputed domain name that would avoid the application of paragraph 4(a)(ii) of the Policy.
The Complainant asserts that the disputed domain name was registered in bad faith as the Respondent knew or should have known of the Complainant’s trademark INTEL when the disputed domain name was registered for the following reasons:
i) The Complainant’s trademark INTEL was registered as early as in 1985 in China and became a famous and well-known trademark in China no later than 1999, well before the registration date of the disputed domain name;
ii) The Respondent is engaged in a technical field, namely in the “the design and construction of intelligent buildings” and “energy management”, as described on the Respondent’s website at the disputed domain name. Therefore, since the Respondent provides products or services that are the same or similar with the goods and services provided by the Complainant, which supplies also building automation solutions and energy management systems under the registered trademark INTEL, it is implausible that the Respondent would have been unaware of the Complainant’s trademark.
The Complainant also states that the Respondent registered and used the disputed domain name without authorization, being aware of the Complainant’s trademark, with the intention to take advantage of the Complainant’s trademark by driving Internet traffic to its website to promote its goods and services.
In addition, the Complainant asserts that the Respondent should have known that the use of the trademark INTEL without authorization infringes the Complainant’s prior trademark and trade name rights since, in 2011, the Complainant became aware of a company in the United Kingdom of Great Britain and Northern Ireland named “Aurora Intel Electrical Engineering (UK) Co., Ltd” which included the Respondent amongst its directors; upon notification of the infringement of the Complainant’s rights due to the incorporation of the trademark INTEL in the company name, the said company admitted the infringement and agreed to change its company name. Therefore, the Complainant states that the Respondent knows that the use of INTEL without authorization infringes the Complainant’s rights, but still uses a domain name incorporating the trademark INTEL as well as an English trade name that does the same.
The Complainant contends that the Respondent has been using the disputed domain name in bad faith because, considering the fame of the trademark INTEL in China and the fact that English is not the common language of the Chinese general public, when customers see INTEL, there is a strong likelihood that they will believe that there is a connection between the use of the word and the Complainant, rather than any other meaning.
Therefore, the Complainant concludes that, through the use of the disputed domain name and of the trademark INTEL in its trade name published on its website, the Respondent is intentionally attempting to attract Internet users to its website or other online locations for commercial gain by creating confusion with the Complainant and its mark INTEL as to the source, sponsorship, affiliation or endorsement of the website or of the products and/or services on the website.
The Respondent contends that it has rights in the disputed domain name in light of its registration since 2008 and claims that the origin of the disputed domain name, encompassing the term “auroraintel”, is connected to its prior company name 新天智能” (“Xin Tian Zhi Neng”), the translation of which in English would be “Aurora Intelligence”. The Respondent thus alleges that the term “intel” would be an abbreviation of “intelligence”.
The Respondent asserts that it is a well-known domestic company acting in the field of engineering and construction and claims to be known as “新港机电”, while “Auroraintel” would be “a translation with good wish of Chinese wording, which is not known in the business”. The Respondent also states that in China “few people knows about Intel, but every people in China knows “英特尔” when talking about computer”.
The Respondent acknowledges that the Complainant is known as “a giant of PC business, manufacturer and pioneer in Internet technology” and states that the Respondent was established in 2003 as a business in the intelligent engineering projects design and construction.
The Respondent cites the following definition of “intelligent building” provided by the Chinese “Intelligent building design guideline GB/T50314-2006” to support its allegation that the Respondent and the Complainant are conducting different businesses and are not competitors: “building acts as a platform to integrate information system facilities, information application systems, management system, public security system; building acts as a combination of structure, system, management and optimization of all to provide people with a safe, efficient, convenient, energy-saving and environment-friendly space”
The Respondent also states that it doesn’t use INTEL in its website, brochures, tenders or any other marketing material.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established rights in the trademark INTEL, based on the numerous trademark registrations cited in the section 4 above and of the undisputed well-known character of the trademark recognized at the international level.
The disputed domain name incorporates the trademark INTEL in its entirety with the addition of the generic term “aurora” as a prefix and of the generic Top-Level suffix “.com”, which the Panel finds insufficient to exclude the likelihood of confusing similarity.
Therefore, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to a trademark in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant is required to make a prima facie case that the Respondent lacks rights or legitimate interests and, once such prima facie case is made, the burden of production shifts to the Respondent to submit relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; Banco Itau S.A. v. Laercio Teixeira, WIPO Case No. D2007-0912; Wal-Mart Stores, Inc. v. WalMart Careers, Inc., WIPO Case No. D2012-0285.
The Panel finds that the Complainant has made a prima facie case and that the Respondent has not provided relevant evidence to demonstrate that it has rights or legitimate interests in the disputed domain name.
According to the case records, the Complainant has no relation with the Respondent and has not authorized it to use its trademark or the disputed domain name.
In addition, there is no indication before the Panel, either in the WhoIs records or in the other documents submitted, that the Respondent might be commonly known by the disputed domain name or by the corresponding expression “auroraintel”. Although the Respondent refers to itself as “Aurora Intel Electrical Engineering Co., Ltd” on the website published at the disputed domain name, its registered company name, mentioned also in the website ICP license, is Zhengzhou Xingang Electrical Engineering Co., Ltd, which clearly does not include the words “aurora” and “intel” or translations thereof. In addition, the Respondent claimed that its company name was in the past “新天智能” (“Xin Tian Zhi Neng”), which translation would be “Aurora Intelligence”, but did not submit any evidence of said allegation.
Furthermore, the Respondent expressly stated that Chinese customers do not identify the Respondent’s business as “auroraintel”. It also asserted to be known in China with the corresponding Chinese version “新港机电” without, however, providing any supporting evidence to substantiate this statement.
In view of the above, of the famous character of the Complainant’s trademark incorporated in the disputed domain name and of the business in which the Respondent is involved – that the Complainant demonstrated to be in part the same as the one it is engaged in – the Panel also finds that the disputed domain name has not been used by the Respondent in connection with a bona fide offering of goods or services.
Moreover, since the website published at the disputed domain name promotes the Respondent’s business, the disputed domain name has clearly not been used in connection with a legitimate noncommercial use.
In light of the above, the Panel finds that the requirement prescribed by paragraph 4(a)(ii) of the Policy has been met.
C. Registered and Used in Bad Faith
The Panel notes that, at the time of the registration of the disputed domain name in 2008, the Complainant and its trademark INTEL had reached a substantial goodwill and reputation internationally including in China, were the Respondent is located. Therefore, it is highly unlikely that the Respondent was unaware of the Complainant’s trademark at that time.
Moreover, the Respondent’s actual knowledge of the Complainant’s well-known trademark has been indeed confirmed by the Respondent’s own statements.
As mentioned above, the Respondent claimed to have selected the term “intel” encompassed in the disputed domain name as it would be an abbreviation for the word “intelligence” which was included in the Respondent’s previous company name “Aurora Intelligence Electrical Engineering Co., Ltd”. However, as highlighted in the prior paragraphs, the Respondent has not substantiated its allegations with any evidence and the records indicate that the Respondent’s current company name do not include either terms “aurora” or “intel”.
In light of the fact that the Respondent registered without authorization the disputed domain name, confusingly similar to the Complainant’s trademark INTEL, and used it to promote services which are similar to the ones provided by the Complainant under the trademark INTEL in the field of building automation solutions and energy management systems, the Panel finds that the Respondent in all likelihood registered and used the disputed domain name to promote its business having the Complainant’s trademark in mind, being conscious that Internet users could have been misled into believing that its website and activity be affiliated with the Complainant.
Therefore, the Panel finds that, on balance of probabilities, the Respondent intentionally attempted to attract users to its website for commercial gain, by causing a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of its website and the services promoted therein according to paragraph 4(b)(iv) of the Policy. See, along these lines, Intel Corporation v. Hangzhou Shanze Technology Co., Ltd and Hangzhou Zenointel Technology Co., Ltd, WIPO Case No. D2014-0248 (<zenointel.com>, <zenointel.net>), and Corporation vs Beijing Megaintel Information Technology Co., Ltd, WIPO Case No. D2017-0223 (<megaintel.com>).
Therefore, the Panel concludes that also the requirement prescribed by paragraph 4(a)(iii) of the Policy has been met, since the disputed domain name was registered and is being used in bad faith.
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 <auroraintel.com> be transferred to the Complainant.
Date: August 11, 2017