WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

NVIDIA Corporation v. Zhao Jiafei

Case No. D2013-1014

1. The Parties

The Complainant is NVIDIA Corporation of Santa Clara, California, United States of America, represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland.

The Respondent is Zhao Jiafei of Guangzhou City, Guangdong Province, China.

2. The Domain Name and Registrar

The disputed domain name <nvidia.biz> is registered with Name.com LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 7, 2013. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 11, 2013, 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”).

The Panel also notes that the Complaint appears to have been filed under the Restrictions Dispute Resolution Policy (“RDRP”), as explained below the Panel will only address the UDRP criteria for the purpose of this decision.

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 17, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 7, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 8, 2013.

The Center appointed Cherise Valles as the sole panelist in this matter on July 15, 2013. 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 is the owner of the trademark NVIDIA which the Complainant uses in connection with technological products in the semiconductor industry, including graphics processing units (“GPUs”) and mobile processor chipsets used in a variety of products ranging from smart phones to supercomputers. The Complainant has registered the Nvidia name and mark in over 70 jurisdictions covering at least 8 different classes of goods and services.

The Complainant is the owner of multiple trademark and design registrations in the United States and Canada for the mark NVIDIA, including the following:

- United States trademark registration No. 1895559 for NVIDIA, registered on April 20, 1993 in class 9;

- United States trademark registration No. 2341814 for NVIDIA, registered on March 5, 1998, in class 9;

- United States trademark registered No. 2379910 for NVIDIA, registered on March 5, 1998, in class 42;

- United States trademark registered No. 2897658 for NVIDIA, registered on October 25, 2001, in class 25;

- United States trademark registered No. 3057882 for NVIDIA, registered on April 12, 2005, in class 41;

- United States trademark registered No. 3087428 for NVIDIA registered on April 12, 2005, in class 9;

- United States trademark registered No. 3591837 for NVIDIA registered on February 7, 2007, in class 41;

- United States trademark registered No. 3588524 for NVIDIA registered on December 14, 2007, in class 35;

- United States trademark registered No. 3585695 for NVIDIA registered on February 20, 2008, in class 16;

- Canadian trademark registered No. 1288796 for NVIDIA registered on March 6, 1998, in class 9;

- Canadian trademark registered No. 1735977 for NVIDIA registered on September 7, 2000, in class 25;

- Canadian trademark registered No. 3064114 for NVIDIA registered on January 9, 2002, in class 25;

- Canadian trademark registered No. 6312073 for NVIDIA registered on September 8, 2007, in class 9;

- Canadian trademark registered No. 6439107 for NVIDIA registered on December 14, 2007, in class 41.

The Complainant was originally incorporated in California in 1993 and reincorporated in Delaware in 1998.

The disputed domain name <nvidia.biz> was registered on January 8, 2013.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, the Complainant asserts that:

The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

- The disputed domain name is confusingly similar or identical to the Complainant’s registered trademark, NVIDIA, in light of the fact that it wholly incorporates the Complainant’s mark.

The Respondent lacks rights or legitimate interests in the disputed domain name.

- The Complainant states that the Respondent should be considered as having no rights or legitimate interests in the disputed domain name. The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name that included its trademarks.

The disputed domain name has been registered and is being used in bad faith.

- The Complainant asserts that the disputed domain name was registered in bad faith. The mere fact of registration of a domain name that is confusingly similar or identical to a famous trademark by an entity that has no relationship to that mark is itself evidence of bad faith registration and use.

The Complainant requests the Panel to issue a decision finding that the disputed domain name be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy.

B. Respondent

The Respondent has not filed a response to the Complainant’s contentions.

However, before the commencement of the present proceedings, someone acting as the manager of the Website “www.nvidia.biz” sent an unsolicited message to staff members of the Complainant’s company enquiring whether they were interested in buying the Webpage “www.nvidia.biz”. The Respondent did not specify a monetary value for the domain name (see Annex 10 to the Complaint).

6. Discussion and Findings

As noted above, the Complaint appears to have been filed under the UDRP and the RDRP, the Panel will render its decision taking into account the UDRP criteria, as the UDRP has a broader scope. In any event, the outcome would have been the same if the Panel would have applied the RDRP criteria.

The Policy provides specific remedies to trademark owners against registrants of domain names where the owner of the mark (a complainant) establishes each of the following elements:

(i) the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights;

(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name was registered and is being used in bad faith.

The Complainant has the burden of proof in establishing each of these elements.

The Respondent has failed to file a response in these proceedings and is therefore in default and the Panel may draw appropriate inferences from the available evidence submitted by the Complainant.

A. Identical or Confusingly Similar

To prove this element, the Complainant must have trademark rights and the disputed domain name must be identical or confusingly similar to the Complainant’s trademark.

The Complainant is the sole and exclusive owner of the NVIDIA mark. The Complainant has had exclusive, and consistent use of the term as a trade mark for more than 19 years in over 70 jurisdictions, as well as on social media networks and in company literature. The Complainant has submitted evidence in Annex 7 to the Complaint demonstrating that it is the owner of multiple trademark and design registrations in the United States and Canada for the mark NVIDIA, as indicated in Section 4 above.

The disputed domain name is identical to the Complainant’s INVIDIA trademark as it incorporates the mark in its entirety.

The addition of the generic Top-Level Domain (“gTLD”) “.biz” is not sufficient to differentiate the disputed domain name from the Complainant’s mark. It only indicates that the disputed domain name was registered in the “.biz” gTLD. It does not quell the confusion surrounding the similarity of the disputed domain name. The addition of gTLDs such as “.net”, “.biz” or “.info”, which are required for the registration of a domain name, have no distinguishing capacity in the context of domain names. See Société Générale and Fimat International Banque v Lebanon Index/La France DN and Elie Khouri, WIPO Case No. D2002-0760. The fact remains that the most distinctive aspect of the disputed domain name replicates the Complianant’s trademark in its entirety and is likely to give rise to confusion among consumers who would assume that the disputed domain name is associated with the Complainant.

The Complainant refers the Panel to a similar case in which the NVIDIA mark was used with the gTLD “.mobi”, where the UDRP panel decided that the identifying part of the domain name was identical to the registered mark of the Complainant. See Nvidia Corporation v. 施帅东 Shi ShuaiDong, ADNDRC Case No. HK-0700134.

In light of the foregoing, the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s registered mark and that paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

The burden of proof is on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. Under the UDRP, if a prima facie case is established by the Complainant, then the burden of production of evidence shifts to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy enumerates three non-exclusive ways in which a respondent may demonstrate rights or legitimate interests in a domain name: “Any of the following circumstances, in particular but without limitation, 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):

(i) before any notice to you of the dispute, your 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) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making 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.”

The Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).

The Complainant notes that its mark is a fanciful word that is inherently distinctive. It is not a generic word or common term. The Complainant submits that the Respondent is not in any way associated with the Complainant and has never sought or received authorization or a license to use the Complainant’s NVIDIA trademark in any way or manner. The Respondent has not demonstrated that it has ever made any legitimate offering of goods or services under the Complainant’s NVIDIA trademark. The Respondent simply utilizes a domain name that is very similar to the Complainant’s mark with the clear intent to confuse Internet users and improperly redirect traffic to third party websites for commercial gain. The Respondent does not appear to be making legitimate noncommercial use or fair use of the disputed domain name.

The Complainant submits that it is unaware of any possible circumstances in which the disputed domain name could be use legitimately by the Respondent, as the Respondent has not been authorized or licensed to use the NVIDIA mark. There is no evidence in the record to suggest the Respondent possesses any trade mark applications including the term “nvidia”. Furthermore, the Complainant submits that to the best of its knowledge, the Respondent has not become commonly known by the domain time during the time the Respondent owned the disputed domain name.

The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, and the Respondent has failed to demonstrate such rights or legitimate interests.

Accordingly, the Panel finds the Respondent has no rights or legitimate interests in respect of the disputed domain name and that paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the Respondent registered or acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;

(ii) the Respondent has registered the disputed 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 the Respondent has engaged in a pattern of such conduct;

(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the Respondent’s website or location or of a product or service on its website or location.

The Complainant submits that the Respondent is intentionally attempting to divert Internet users to third party websites via an affiliate link provided by the advertising network, LiveSearchNow.com. The Complainant notes that the third party sites do not infringe upon the NVIDIA mark.

It appears that the Respondent is based in China. The Complainant has five offices in China and has generated annual revenue of over USD 1 billion annually from 2008 to 2011. Due to the Complainant’s strong presence in China, where the Respondent appears to reside, it is inconceivable that the Respondent was not previously aware of the Complainant’s well-established reputation.

The Complainant asserts that the Respondent’s registration of the disputed domain name <nvidia.biz> demonstrates bad faith as it disregards the warranties made under section 11 of the Registration Agreement for the disputed domain name, in addition to paragraph 2 of the UDRP which states that it is the responsibility of the domain name holder to research whether or not their domain name registration will infringe or violate third party rights. A basic search would have revealed the strong presence of the Complainant. The Panel finds that the Respondent therefore either did not conduct a basic search or did in fact make a basic search and was aware of the Complainant’s mark. See City Views Limited v. Moniker Privacy Services / Xander, Jeduyu, ALGEBRALIVE, WIPO Case

Furthermore, the Complainant submits that as the domain name uses the “.biz” gTLD extension which has a more stringent registration policy, the Respondent is also in contravention of the “RDRP” as the disputed domain name is not being and will not be used for a bona fide offering of business or commercial services, thereby providing evidence of bad faith. See, Madonna Ciccone, p/k/a/ Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847; Csp International Industria Calze S.P.A. v. Giancarlo Bernabei, WIPO Case No. D2003-0628.

The Panel finds that the bad faith of the Respondent is reflected by the unsolicited offer by the so-called manager of the webpage “www.nvidida.biz” enquiring whether the recipients of the email wanted to buy the disputed domain name. The Panel assumes that the Respondent was connected to the person who wrote this email, as the author described himself as “maneger (sic) of international domain:www.nvidia.biz” and the Respondent is the owner of the disputed domain name. This offer was made very shortly after the lapse of the 60 days period after the initial registration, after which ICANN stipulates that any given domain must be locked and therefore cannot be transferred to a third party; thereby further demonstrating the bad faith of the Respondent. The Panel notes that the manager of the disputed domain name did not specify an amount for the sale of the disputed domain name. However, the circumstances of this case warrant the conclusion that the Respondent would have probably sought more than out-of-pocket expenses.

However, evidence of bad faith can be found within the email address used by the so-called manager of the Website at the disputed domain name. In Chinese, “yu ming” is the Romanisation of the term “domain name”, and “shang hao” means a “business”. The combination of these words and the correspondence between the Complainant and the Respondent supports the Complainant’s contention that the Respondent registered or acquired the disputed domain name primarily for the purpose of selling the disputed domain name for a profit. For the purpose of the present proceeding, the Panel considers that the so-called manager of the website at the disputed domain name, “www.nvidia.biz”, and the Respondent, as confirmed by the Registrar, appear to be connected.

Moreover, the Panel finds that the Respondent has registered the disputed domain name with the gTLD “.biz” in an attempt to prevent the Complainant from registering its own INVIDIA mark in the “.biz” gTLD, in violation of paragraph 4(b)(ii) of the Policy.

In addition, the Complainant asserts that the disputed domain name is part of this pattern, as seen in Annex 14 to the Complaint with a selection of the Respondent’s domain names portfolio which shows the number of domain names the Respondent owns of well-known third party marks. In this respect, the Panel finds that the Respondent is clearly a sophisticated Internet user who has created various aliases in order to circumvent legal liability, or is potentially involved in a large network of cybersquatters.

Finally, the targeting of the Complainant by the Respondent is evident as the Respondent registered the domain name <tegrazone.cn> shortly after the Complainant launched its TEGRAZONE service and website “www.tegrazone.com”. This also shows bad faith on the part of the Respondent.

Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name under paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy, the Panel orders that the disputed domain name <nvidia.biz> be transferred to the Complainant.

Cherise M. Valles
Sole Panelist
Date: July 31, 2013