WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Arm Limited v. Privacy Administrator, Anonymize, Inc. / Sarbel Bandak
Case No. D2021-0594
1. The Parties
The Complainant is Arm Limited, United Kingdom, represented by Demys Limited, United Kingdom.
The Respondent is Privacy Administrator, Anonymize, Inc. United States of America (“USA”) / Sarbel Bandak, Turkey.
2. The Domain Name and Registrar
The disputed domain name <armcortex.com> is registered with Epik, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 25, 2021. On February 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 25, 2021, 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 March 3, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 23, 2021. The Response was filed with the Center on March 21, 2021.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on April 7, 2021. 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 was incorporated in the United Kingdom in 1990. It was originally a joint venture between Acorn Computers, Apple Computer and VLSI Technology. Its name is an initialism derived from “advanced RISC machines”.
The Complainant designs sophisticated electronic products such as computer processors, graphics processors and associated tools and software.
Its processors are used as the central processing unit (“CPU”) for most mobile phones including those manufactured by (it says) Apple, HTC, Nokia, Sony Ericsson and Samsung as well as other devices. It claims that in January 2005 its processors accounted for over 75 per cent of all 32-bit embedded CPUs. According to the “Complainant’s Product Backgrounder” dated January 2005, this equated to some 2.5 billion ARM core-based microprocessors.
According to the Complaint, the Complainant has some 6,500 employees in more than 20 “territories” around the world.
The Complainant’s primary website is located at “www.arm.com”.
One of the Complainant’s primary product lines is its Cortex line of processors. This line was first launched in October 2005. On October 4, 2005 in particular, the Complainant announced at the ARM Developers’ Conference in Santa Clara, California, USA the grant to Texas Instruments of the first licence of the Complainant’s ARM Cortex-A8 processor. Earlier, in March 2005, the Complainant had announced the release of technical details for the ARM Cortex processor, which included a number of series such as the ARM Cortex-M series and the ARM Cortex-R series in addition to the ARM Cortex-A series. A number of industry endorsements for the new technology were noted including from Microsoft, Accelerated Technology, Cadence, Express Logic, Symbian and others.
These announcements were publicized on the Complainant’s website. The announcements also identified both ARM and CORTEX as trademarks of the Complainant.
The Complainant has a number of registered trademarks including:
(a) United Kingdom registered trademark No. UK00002000006, ARM, in respect of a range of goods and services in International Classes 9, 16 and 42, which was field on October 31, 1994 and registered on January 29, 1999;
(b) European Union Trade Mark No. 001112986, ARM, in respect of computer related goods and services in International Classes 9 and 42, which was field on March 22, 1999 and registered on June 8, 2000;
(c) European Union Trade Mark No. 004283628, CORTEX, in respect of computer related goods and services in International Classes 9, 16 and 42, which was filed on February 11, 2005 and registered on January 15, 2009.
According to the Response, the Second Respondent1 owns a substantial portfolio of domain names and is the owner of the website Nameboxx.com which, according to the Respondent promotes the sale of “generic and brandable domain names”.
It is not in dispute between the parties that the Respondent became the registrant of the disputed domain name on October 7, 2005 – that is, three days after the Complainant’s announcement of its first licence of ARM Cortex technology to Texas instruments.
As at November 20, 2020, the disputed domain name resolved to a page on the Nameboxx.com website where the disputed domain name was listed “for sale”. The disputed domain name was also listed for sale on Sedo.com for USD 23,500.
It has not otherwise resolved to an active website or, apparently, been used.
In correspondence following the sending of a cease and desist letter on December 11, 2020, the Respondent’s agent indicated he was “authorized to sell it for [USD] 18,000.”
5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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.
Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark at the date the Complaint was filed and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of at least the three registered trademarks identified in section 4 above.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. This test is narrower than and thus different to the question of “likelihood of confusion” under trademark law. Therefore, questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. e.g. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.
In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-Level Domain (“gTLD”) component as a functional aspect of the domain name system. WIPO Overview 3.0, section 1.11.
Disregarding the “.com” gTLD, the disputed domain name consists of both of the Complainant’s registered trademarks. Both trademarks are clearly recognisable within the disputed domain name. In cases where the Complainant’s trademark is recognisable within the disputed domain name, the inclusion of another descriptive or geographic term does not usually avoid a finding of confusing similarity as this requirement under the Policy is essentially a standing requirement. See e.g. WIPO Overview 3.0, section 1.8. Similarly, a finding of confusing similarity is not avoided where the Complainant’s trademark is combined with a third party’s trademark but still recognisable. See e.g. WIPO Overview 3.0, section 1.12. This case is even stronger for the Complainant as it owns both trademarks included and comprising the whole of the disputed domain name. Apart from anything else, each of the Complainant’s trademarks remains visually and aurally recognisable within the disputed domain name. The fact that the Complainant’s CORTEX trademark was not registered until after the registration of the disputed domain name is not relevant at this stage, but may be significant under the second and/or third inquiries. See e.g. WIPO Overview 3.0, section 1.13.
The Respondent contends that the disputed domain name just consists of two ordinary (the Respondent says common or generic) English words. That is certainly the case. The Respondent also points out that there are 222 ARM trademarks registered around the world, with the earliest apparently being registered in Spain in 1960, and some 436 registrations with CORE. The second trademark relied on by the Complainant, however, is CORTEX, not CORE. More importantly, a word which is descriptive in one context is not necessarily descriptive and so unregistrable in others. Here, the Complainant has registered trademarks for both terms in question; both are longstanding and the Complainant’s rights to them in relation to the relevant goods and services is not seriously in question.
A second contention is that there can be no confusion with the Complainant and its products because the disputed domain name resolves to a website which is not associated with any products or services. As already noted, however, the test of confusing similarity under the first limb of the Policy is not the same test as applicable under trademark law.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is identical with the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. The ultimate burden of proof, however, remains with the Complainant. See e.g., WIPO Overview 3.0, section 2.1.
The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it.
The disputed domain name is plainly not derived from the Respondent’s name. Nor is there any suggestion of some other name by which the Respondent is commonly known from which the disputed domain name could be derived. From the available record, the Respondent does not appear to hold, and certainly does not claim, any trademarks for the disputed domain name.
As the Respondent is offering the disputed domain name for sale for at least USD 18,000, the circumstances of paragraph 4(c)(iii) do not apply.
These matters, taken together, are sufficient to establish a prima facie case under the Policy that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent points out that the Complainant’s CORTEX trademark was not registered until after the disputed domain name was registered and, further, took some four years during the prosecution stage before being successfully registered.
The argument about the length of time in prosecution appears to be directed to a contention that the Complainant does not have exclusive rights over the word “Cortex”. That may be accepted. However, the fact is the trademark is registered. Further, the evidence in the record shows that the Complainant had in fact publicised its adoption and use of the term “Cortex” as a trademark for one of its lines of CPUs before the Respondent registered the disputed domain name.
The Respondent appears to contend that it registered the disputed domain name without knowledge of the Complainant’s trademarks. It does appear, however, that the Respondent undertook trademark searches before registering the disputed domain name as the Respondent states:
“The [R]espondent never found a related record in trademark databases while registering the domain name and he was not aware of the Complainant’s marks.”
The Respondent has not disclosed what trademark searches it did undertake or in which jurisdictions. However, the Complainant’s ARM trademark was registered and the application to register CORTEX in the European Union had been filed in February 2005.
The fact that the combined term is not registered as a trademark does not mean that the Respondent has rights or legitimate interests in the combined term.
The Respondent further contends that both words comprising the disputed domain name are ordinary (the Respondent says common or generic) English words. Contrary to the Respondent’s contention, however, the two words in combination do not have any ordinary or accepted meaning in English.
In correspondence before the Complaint was filed, the Respondent offered the following explanation (which it adopts in the Response) for the derivation of the combination in question:
“We invest in brandable domain names mostly and we buy many domain names with 2 words together that have a metaphorical meaning. So we invest in so many 2 words .com domain names. I like the keyword cortex because cortex is related to brain and intelligence. Evidence confirms link between IQ and brain cortex. I also own DigiCortex.com . I registered armcortex.com because it also reminded me motor cortex which is part of cerebral cortex, that controls the movement of the body, the limbs including arms. Also aside from its physical definition, arm is used in Scripture as a symbol of power in action–either divine or human. For your reference you can check : (Isaiah 53:1: “Who has believed our message? To whom has the LORD’S arm [power] been revealed.) and (‘I will bring you out from under the oppression of the Egyptians, and I will free you from slavery in many verses. I will rescue you with my powerful arm and with mighty acts of judgment’ “ (Exod 6:6) So a word symbolizing power and a word symbolizing intelligence through action and movement together is a perfect combination for me which does not make any sense for you.”
Bearing in mind that these administrative proceedings are proceedings on the papers and the Panel does not have the benefit of cross-examination or other judicial processes, it is not possible for the Panel to completely exclude the Respondent’s explanation for the derivation of the disputed domain name. That said, the Panel is required to decide the dispute on the materials submitted on the balance of probabilities.
The word combination embodied in the disputed domain name is not a natural or common combination in the way that, say, “long arm” or “head and shoulders” are. The suggested metaphorical combination appears both obscure and strained. It does not appear to the Panel at all likely and, accordingly, the Panel is unable to accept it. All the more so, bearing in mind the Respondent admits to being well informed about Internet technologies.
One of the other domain names the Respondent has registered is <intelcoretex.com>. The Respondent does point out that a third party has registered and is using <cortexintel.com> in connection with software and analytics and says “intel” in such combinations is simply an abbreviation, often used by technology companies, for “intelligence / intelligent”.
That may as well be. However, first, the Panel is not concerned with the rights or wrongs of the third party’s use of <coretexintel.com>. The basis on which the third party uses it is not an issue before the Panel and does not affect whether or not the Respondent has rights or legitimate interests in the disputed domain name, <armcortex.com>. As the Respondent itself acknowledges, Intel is the very well-known name of the computer chip manufacturer. It seems very unlikely that coincidence explains the Respondent’s adoption of both the disputed domain name and <intelcortex.com>.
As already noted, the Respondent also emphasises that it has not used the disputed domain name to compete with the Complainant or to create confusion with the Complainant’s offerings. In this connection, it says it has registered and sold many domain names consisting of two ordinary words for large sums. The Respondent also says it received an unsolicited offer to buy the disputed domain name for USD 2,000 which, according to the Respondent, shows the intrinsic value of the disputed domain name.
The other two-word domain names which the Respondent has sold for large sums are not in evidence. Nor are the details of the purchasers. In any event, the Panel is concerned with the disputed domain name. The fact that an unidentified third party may have been prepared to pay USD 2,000 for the disputed domain name does not confirm it has intrinsic value divorced from its value as the combination of two of the Complainant’s trademarks. Also, it appears that the Respondent itself considered the disputed domain name had a much higher value as it listed the disputed domain name on Sedo.com for sale for USD 23,000 and did not accept the USD 2,000 offer. It appears to the Panel that the value of the disputed domain name lies very much in the fact it is a combination of the Complainant’s trademarks.
In these circumstances, the Panel does not accept the Respondent’s claim that it has rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.
C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
For the reasons explained in section 5B above, the Panel is not able to accept the Respondent’s claim that it has independently derived the disputed domain name from the usage by the Complainant of the two terms “ARM” and “Cortex” as one of the Complainant’s significant product lines.
The fact that the Complainant’s CORTEX trademark was not registered until after the disputed domain name does not avail the Respondent in this case. It was already the subject of a trademark application and also had been the subject of press releases on the Complainant’s website. See WIPO Overview 3.0, section 3.8.2.
Given the nature of the Respondent’s business – registering “generic and brandable names” for resale – and the fact that the Respondent has been offering the disputed domain name for sale both on its own Nameboxx.com website and the Sedo.com website leads to a very strong inference that the Respondent registered the disputed domain name for resale. In circumstances where the Complainant has established prima facie case that the Respondent did not have rights or legitimate interests in the disputed domain name and the Respondent has not rebutted that inference, therefore, the Panel finds the Respondent registered the disputed domain name in bad faith.
The offering of the disputed domain name for sale in the manner indicated also constitutes use in bad faith under the Policy.
Accordingly, the Complainant has established all three requirements under the Policy.
The Respondent has requested a finding of reverse domain name hijacking against the Complainant, alleging a number of bad faith actions on the part of the Complainant including, amongst other things, a perceived conflict between the Complainant’s registered trademarks and Intel’s registered trademarks involving “Core”. In view of the conclusions reached above, however, the issue of reverse domain name hijacking does not arise.
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, <armcortex.com>, be transferred to the Complainant.
Warwick A. Rothnie
Date: April 19, 2021
1 As the first respondent is a privacy service, the Panel will refer to the Second Respondent as the Respondent unless it is necessary to distinguish between them.