WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Patrick Gelsinger, Intel Corporation v. Bimei Mo

Case No. D2021-0826

1. The Parties

The Complainants are Patrick Gelsinger, and Intel Corporation, both of United States of America (“United States”), and both represented by Sideman & Bancroft LLP, United States.

The Respondent is Bimei Mo, China.

2. The Domain Name and Registrar

The disputed domain name <patgelsinger.com> (the “Disputed Domain Name”) is registered with Network Solutions, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 19, 2021. On March 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 24, 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 31, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 20, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 26, 2021.

The Center appointed Nick J. Gardner as the sole panelist in this matter on May 3, 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

Complainant Intel Corporation is a well-known company that develops, manufactures, and sells a wide variety of goods and services, including goods and services in the computer hardware, computer software and information technology industries

Complainant Patrick Gelsinger is commonly known as Pat Gelsinger and is Intel Corporation’s Chief Executive Officer.

The Disputed Domain Name used to be owned by Mr. Gelsinger. He originally registered it in 2003 but he inadvertently allowed it to lapse in or around 2014. It was re-registered by the Respondent on April 1, 2019. According to the evidence filed by the Complainant, the Disputed Domain Name has been linked by the Respondent to an online gambling website although at the time of this decision it does not resolve to any website.

Neither of the Complainants has any registered trademarks comprising the term “patgelsinger” or any variation thereof.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions can be summarized as follows.

The Complainants say that both Mr. Gelsinger and Intel Corporation have common law trademark rights in Mr. Gelsinger’s name in the form “patgelsinger”, given his position as CEO of Intel Corporation, his extensive business experience and reputation and his status as author of a number of successful books. The Complainants cite at length various previous UDRP decisions germane to this issue. Where relevant these are discussed below. The Complainants say the Disputed Domain Name is identical to this trademark.

The Complainants say the Respondent has no rights or legitimate interests in the term “patgelsinger”.

In consequence, the Complainant alleges that the Disputed Domain Name was registered and is being used in bad faith. The Complainant says the linking of the Disputed Domain Name to an online gambling website has no justification and is clear evidence of bad faith. It also says the Respondent has history of registering trademark abusive domain names (see discussion below) which is further evidence of bad faith.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

Preliminary Matters

The Panel notes that no communication has been received from the Respondent. However, given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar, then the Panel considers that this satisfies the requirement in paragraph 2(a) of the UDRP Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any Response. While the Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see, e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909).

The Panel also notes the Complaint is brought by two individual Complainants, namely Intel Corporation and Mr. Gelsinger. A complaint may be brought by multiple complainants if the interests of the complainants are co-extensive, and their grievance against a respondent arises from common legal interests. The relevant principles are set out in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), paragraph 4.11 and panel decisions cited therein. The Panel does not regard the question of whether Complainant Intel Corporation has unregistered trademark rights in Mr. Gelsinger’s name as straightforward. It is however satisfied for reasons discussed below that Mr. Gelsinger has such rights and that Mr. Gelsinger has established the other requirements under the Policy so that it is appropriate for the Disputed Domain Name be transferred to him. In those circumstances the Panel considers the question of Complainant Intel Corporation’s standing to be moot and the Panel does not propose to address it, nor the case in relation to Intel Corporation as Complainant any further.

Substantive Matters

To succeed, in accordance with paragraph 4(a) of the Policy, the Complainants must satisfy the Panel that:

(i) the Disputed Domain Name is identical with or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;

(iii) the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainants have recognised that the key hurdle they have to overcome is establishing that Mr. Gelsinger has unregistered trademark rights in his name. The Complainants cite a number of on point previous UDRP decisions – specifically International Business Machines Corp. (IBM) v. James Miller, WIPO Case No. D2020- 0274, Kenneth C. Griffin, Citadel LLC v. Riley Barnes, WIPO Case No. D2017-1887 and Chung, Mong Koo and Hyundai Motor Co. v. Individual, WIPO Case No. D2005-1068 all of which hold that common law trademark rights may arise in appropriate circumstances in the name of a chief executive of a corporation, even though neither the executive nor the corporation trade under that name. The present Panel does not consider in the circumstances of the present case it is necessary to resolve whether it agrees with the principles stated in those cases and whether they are applicable to the present facts. That is because Mr. Gelsinger also relies on his status as an author and cites Dr. Michael Crichton v. In Stealth Mode, WIPO Case No. D2002-0874; Jillian Hoffman, LLC v. Scott Manford, WIPO Case No. D2019-1878; Jeanette Winterson v. Mark Hogarth, WIPO Case No. D2000-0235 (May 22, 2000); Hill Harper v. Moniker Privacy Services / Domain Administrator, WIPO Case No. D2010-0225 and Hillary Rodham Clinton v. Michele Dinoia a/k/a SZK.com, NAF Case No. FA0502000414641. The evidence in the present case is that Mr. Gelsinger wrote two books related to his experience at Intel and as a business executive, which shared insights into how to balance work and life. Mr. Gelsinger’s first book, Balancing your Family, Faith & Work, was published in 2003. His second book, The Juggling Act: Bringing Balance to Faith, Family, and Work, was published in 2008 and 2010 (including a Chinese edition). The Juggling Act is ranked #134 on the Amazon Best Sellers list for Christian Business & Professional Growth, and the Chinese edition is ranked #145 on the Amazon Best Sellers list for Religion in Chinese. The Panel is satisfied, applying the principles set out in the above cases, that Mr. Gelsinger’s status as an author suffices to allow him to claim common law trademark rights in his name. The Panel refers to this trademark below as the PATGELSINGER trademark

It is well established that the generic Top-Level Domain (“gTLD”), in this case “.com”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.

Accordingly the Panel finds that the Disputed Domain Name is identical to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:

(i) before any notice to the respondent of the dispute, use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the 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 domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

None of these apply in the present circumstances. The Complainants have not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the PATGELSINGER trademark. The Complainant has prior rights in the PATGELSINGER trademark which precede the Respondent’s acquisition of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see, for example, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003‑0455).

The Panel finds that the Respondent has failed to produce any evidence to establish his rights or legitimate interests in the Disputed Domain Name. Accordingly the Panel finds the Respondent has no rights or any legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.

C. Registered and Used in Bad Faith

Under paragraph 4(b) of the Policy a non-exhaustive list of factors evidencing registration and use in bad faith comprises:

(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location.

In the present circumstances the Panel considers the Respondent’s exact motivation is difficult to discern. It is not immediately obvious to the Panel why the Respondent would wish to use Mr. Gelsinger’s name as a domain name which resolves to a gambling website. On balance however the Panel is satisfied that factor (ii) above applies. The filed evidence shows the Respondent has registered a number of domain names incorporating famous or well-known brands (e.g., Baidu (<baidu1588.com>), Burberry (<burberry-outlet-online.com>), Beats by Dre (<beatsbydrehots.com> and <drdreshop.com>), Coach (<coach-outlet-sale.com>), Foster’s Beer (<fosterbeer.com>), iPhone (<iphoneterritory.com>), MySpace (<myspace2.com>), Ugg (<myugguggs.com>), Tory Burch (<toryburchzone.com>), and Viagra (<viagraonlinea.com>) and famous people’s names (e.g., Dr. Dre (<drdreshop.com>), Lang Lang (<langlangmedia.com>) and Oprah Winfrey (<livingoprah.com>)), Accordingly the Panel is satisfied that a pattern of such conduct exists.

The Panel also notes that the Respondent has not filed a Response and hence has not availed himself of the opportunity to present any case of good faith that he might have. The Panel infers that none exists.

Accordingly, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith and the third condition of paragraph 4(a) of the Policy has been fulfilled.

7. Decision

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 <patgelsinger.com> be transferred to the Complainant Patrick Gelsinger.

Nick J. Gardner
Sole Panelist
Date: May 17, 2021