1.1 The Complainant is Intel Corporation, Santa Clara, California, United States of America, represented by Harvey Siskind LLP, United States of America.
1.2 The Respondent is Base ltd Tihame.net, Antalya, Merkez, Turkey.
2.1 The disputed domain names <intelfocus.com> and <intelfocus.net> (the “Domain Names”) are registered with GoDaddy.com, Inc (the “Registrar”).
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 25, 2008. On November 26, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On November 26, 2008, 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 (although it failed to identify billing contact details as is required by paragraph 2(a)(i)(B) of the Rules for Uniform Domain Name Dispute Resolution Policy). The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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”).
3.2 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 December 2, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 22, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 23, 2008.
3.3 The Center appointed Matthew S. Harris, Richard W. Page and Dilek Ustun as panelists in this matter on January 20, 2009. The Panel finds that it was properly constituted. Each member of 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.
4.1 The Claimant is the well known semiconductor manufacturer. It was founded in 1968 in California and now has offices and facilities worldwide. It is engaged in the development, manufacture and sale of various computer and Internet related products.
4.2 The Claimant coined the mark INTEL by combining the beginning of the words “intelligent” and “electronics”. It has used the mark INTEL in relation to various products and services for over 40 years. In 2007 it sold over USD 38 billion of INTEL branded goods and services. It owns over 2,700 registrations that comprise or incorporate the term “Intel”. They include:
(i) United States registered trade mark no. 0938772 for the word INTEL dated February 19, 1971 in class 9; and
(ii) Turkish registered trade mark no. 123748 for the word INTEL dated August 6, 1990.
4.3 According to the WhoIs records for the Domain Names, <intelfocus.com> was registered on September 21, 2000, and <intelfocus.net> was registered on November 9, 2000.
4.4 As at the date of the Complaint, both of the Domain Names resolved to the same webpages operating from the <intelfocus.net> Domain Name. The webpages are in Turkish but contain links and words that appear to be connected with computing, such as “Internet” and “hosting”.
5.1 The Complainant contends that its INTEL mark is one of the most famous trade marks in the world and has been recognised as such by various courts and trade mark administrative bodies worldwide. It makes various assertions as to the use of the Domain Names being likely to cause confusion, and to deceive Internet users into believing that the Complainant has authorised or is controlling the website operating from the Domain Names. The content of the website operating from the Domain Names is said to add to the likelihood of confusion.
5.2 It also contends that each of the Domain Names comprise the entirety of its INTEL mark combined with the “non-distinctive” word “focus”. It contends that the addition of the word “focus” is insufficient to avoid confusion with its mark. Accordingly, it contends that the Domain Names are confusingly similar to its INTEL mark.
5.3 So far as rights or legitimate interests are concerned, the Complainant asserts that there can be no plausible explanation for Respondent's use of the Domain Names, other than to intentionally trade off the goodwill in the INTEL mark in order to drive traffic to Respondent's websites. It asserts that in such circumstances the Respondent has no rights or legitimate interests in the Domain Names and it makes no difference that Respondent may offer goods or services on the website operating from the Domain Names.
5.4 It also asserts that the Respondent's use of the Domain Names involves an infringement of the Complainant's marks and that this precludes a bona fide offering of goods and/or services (citing PHE, Inc. v. Chris Calnek, WIPO Case No. D2006-1612 and Universal City Studios, Inc. v. G.A.B. Enterprises, WIPO Case No. D2000-0416).
5.5 Further, it is claimed that as the Respondent has registered the Domain Names “with complete knowledge of Intel and its rights, and with an intent to trade off Intel's goodwill”, then even if the Respondent had been commonly known by this name, this would not establish rights or legitimate interests in the Domain Names (citing Yahoo! Inc. v. Yahoo-Asian Company Limited, WIPO Case No. D2001-0051).
5.6 So far as bad faith is concerned, the Complainant contends that the Respondent's activities fall within the scope of paragraph 4(b)(iv). Further, it contends that panels have found bad faith where a respondent is using a famous trade mark and there is no plausible legitimate use of the mark in a domain name. Further, bad faith is said to exist where there can be no question that a respondent knew or should have known about complainant's trade mark rights before registering its domain name.
5.7 The Complainant also discloses that it has already successfully opposed Respondent's affiliate's application to register the INTELFOCUS trademark in Turkey. Apparently, the Turkish Patent Institute issued its ruling in Complainant's favour, rejecting the application (App. No. 05016145), in October 2006.
5.8 The Respondent did not reply to the Complainant's contentions.
6.1 There are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.
6.2 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy. Namely the Complainant must prove that:
(i) the Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names (paragraph 4(a)(ii)); and
(iii) the Domain Names have been registered and are being used in bad faith (paragraph 4(a)(iii)).
6.3 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”.
6.4 The Panel will therefore address these three aspects of the Policy in turn. However, before it does so it is convenient to comment briefly on the way in which the Complainant has put its case.
6.5 The Complaint is lengthy and the Complainant has made reference to approximately twenty different cases under the Policy. The Panel has found much of these submissions and most of these citations to be of limited assistance. There are certain questions of interpretation of the Policy elements that remain the subject of controversy, discussion and debate. Where a case involves such an issue, submissions from the parties by reference to previous cases as to what is the right approach to adopt, may well be very helpful. However, in most cases of more assistance to a panel than case citations are cogent submissions supported by suitable evidence as to the key factual issues in a case (see for example, the similar comments of the three person panel in Hydentra, LP. v. Xedoc Holding SA,WIPO Case No. D2008-0454).
6.6 Often, a complainant may have limited evidence so far as the respondent is concerned. It may be that it cannot do anything more than to ask a panel to draw certain inferences from the extent of the fame of its own mark, the lack of any grant of license or other authorization, the nature of the domain name, and the way in which the domain name has been used. It is a respondent that primarily possesses information and evidence as to its own motives and activities. Indeed, if a respondent submits a detailed response that makes lengthy submissions of law but fails to provide basic factual information and evidence as to why and in what circumstances the domain name in issue was registered, that is of itself suspicious and may count against it. However, where a complainant does have relevant information as to the respondent's activities, it should provide it.
6.7 The Complainant's assertions regarding the activities of the Respondent are very limited. There are a number of factors which suggest to the Panel that the Complaint may not have fully disclosed to the Panel what it knows. First, the Domain Names were registered over eight years ago and no explanation is offered as to why it is that the Intel has only now commenced proceedings. Second, it is also clear that the parties have previously been involved in litigation. In particular, there is a reference in the Complaint to Turkish trade mark opposition proceedings brought by the Complainant in late 2006. Third, as is discussed in greater detail later on in this decision, the Complainant seems to have gone to some lengths in its Complaint to anticipate an argument on the part of the Respondent that the Respondent has become commonly known by the “Intelmark” name.
6.8 The Panel has therefore found it necessary to approach the Complainant's submissions in this case with a degree of caution. However, as will become apparent, ultimately the Panel's reservations have not materially affected the outcome of this decision.
6.9 This part of the case is relatively straight forward. The Domain Names are more likely than not to be understood as comprising the terms “intel” and “focus” in combination, together with the “.net” and “.com” gTLDs. The term “intel” is identical to a number of registered trade marks for the word “Intel” owned by the Complainant. The addition of the word “focus” to the term “intel” does not so distract from the “intel” term so as to prevent the Domain Names from satisfying the relatively low threshold test of “confusing similarity” as that phrase is understood in the terms of the Policy. In the circumstances, the Complainant satisfies the requirements of paragraph 4(a)(i) of the Policy.
6.10 In coming to that conclusion the Panel has had no need to give any regard to the Complainant's contentions as to the contents of the website operating from the website at the date of the Complaint. As is recorded in paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (the “WIPO Overview”) it has long been the consensus view amongst panelists that the content of a website (whether it is similar or different to the business of a trade mark owner) is generally irrelevant in the finding of confusing similarity.
6.11 At the time of the Complaint the Domain Names appear to have been used for a business that offers computer and Internet related services. The Complaint does not seem to claim that this is anything other than a genuine business. Instead, the Complainant appears to contend that notwithstanding the fact that this is a genuine business; the Respondent nevertheless has no rights or legitimate interests in the Domain Names. It refers to various cases under the Policy which are said to be authority for the proposition that if a domain name has been chosen an used with a view to taking advantage of the goodwill in another's trade mark, then there is typically no bona fide offering of services within the meaning of paragraph 4(c)(i) of the Policy and that a respondent in such a case would not have a right or legitimate interest within the scope of the Policy. The Panel agrees that this is how the Policy operates and for reasons that are set out in greater detail under the “bad faith” heading below, it accepts that on the balance of probabilities this is the situation in this case.
6.12 The Complainant also contends that even if by reason of the Respondent's use of the “Intelfocus” name the Respondent had become commonly known by that name then the Respondent would not thereby possess rights or legitimate interests in the Domain Names. The Panel is not so sure that this is correct. Certainly the decision of Yahoo Inc. v. Yahoo-Asian Company Limited, WIPO Case No. D2001-0051 cited by the Complainant provides no authority for the proposition that the Complainant seeks to advance in this respect. In the Yahoo case it is clear that the panel was of the view that the claimed business of the respondent was a “sham”.
6.13 In the current case there is a marked lack of evidence as to the activities of the Respondent. As has already been explained, this is an issue of some concern to the Panel. Nevertheless, ultimately if a complainant can satisfy a panel that a domain name was registered with a view to taking advantage of the goodwill in the complainant's trade mark, then the burden of proof of showing that the respondent has become “commonly known” by any name would pass to the respondent. The Respondent has chosen not to file a Response in these proceedings and in the absence of such evidence there is no need for the Panel to consider this issue further.
6.14 The Panel has also taken no notice of the Complainant's assertions as to trade mark infringement when it comes to the question of “rights or legitimate interests”. Leaving aside for one moment the paucity of the evidence before the Panel as to the Respondent's activities, the Panel is unconvinced that any infringement is per se relevant to the necessary assessment under the Policy. There are early cases that suggest that infringement is relevant to the Policy but this may be an increasingly minority view. The Policy and local laws as to cybersquatting and trade mark infringement are different. They do not do, and are not intended to do, the same thing. They in large part overlap and frequently a complainant who might succeed in UDRP proceedings might well have succeeded under local trademark or anti-cybersquatting law. However, as the three person panel stated in Delta Air Transport NV (trading as SN Brussels Airlines) v. Theodule de Souza,WIPO Case No. D2003-0372, “trade mark infringement and abusive registration within the meaning of paragraph 4(a)(iii) of the Policy are two different things” and “the fact that a particular set of facts may constitute trade mark infringement has of itself no bearing on whether it is an abusive registration”. The Panel accepts that the decision of PHE, Inc. v. Chris CalnekWIPO Case No. D2006-1612 citing two cases in 2001 suggests otherwise, but the Panel opts to follow the reasoning in Delta Air Transport case. A panel under the Policy is not equipped to conduct an examination of issues of infringement for the purposes of assessing whether or not a complainant has a good claim under a particular local law of trade mark infringement.
6.15 Nevertheless, giving the Panel findings of fact of the reasons as to why the Respondent registered the Domain Names, the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.
6.16 Key to the determination in this case and the issue of bad faith registration and use is the Respondent's motives for registering the Domain Names. The Complainant has put forward extensive evidence as to the reputation of its INTEL marks. There is no doubt that this is very significant not only in the United States but worldwide. The Complainant claims that the marks have been declared famous in numerous jurisdictions. For example, the English Court of Appeal when recently referring certain questions of trade mark law to the European Court of Justice described the reputation of the Complainant's United Kingdom and Community Trade Marks as “huge”1.
6.17 Given that reputation the Panel accepts that it is very unlikely that at the time the Domain Names were registered back in 2000 that the Respondent was not aware of the Complainant's marks. However, this is not enough. What is also necessary is that the Complainant shows that the intention of the Respondent was to take unfair advantage of the reputation that the Complainant has built up in its marks. Sometimes this may well be the natural inference from the fame and nature of the mark alone. Certainly, the greater the fame of the mark and the more inherently distinctive or unusual the form of that mark, the less likely it is that the domain name was registered without the intent to take advantage of that mark. Nevertheless, ultimately this is a matter of fact that must be assessed on a case by case basis.
6.18 Therefore, the Complainant overstates it case when it asserts that mere knowledge of the fact that a domain name is similar to or even incorporates a famous mark, will mean that a domain name has been registered in bad faith. The Complainant cites two cases in support of that proposition i.e Yahoo! Inc. v. Yahoo-Asian Company Limited, WIPO Case No. D2001-0051 and Nike, Inc. v. B.B. de Boer, WIPO Case No. D2000-1397). Neither cases in fact support what the Complainant contends. In the Yahoo! case a central part of the panel's reasoning was the conclusion that there was “no plausible explanation for the respondent's registration of the disputed domain names other than to benefit from the goodwill of Yahoo! and its famous YAHOO! Mark”. The Nike case is a little harder to follow. For example, part of its reasoning appears to be a finding that “it is very unlikely, if not nearly impossible, that, when Respondent registered the Domain Name, it was not aware that it was infringing on Complainant's trademark rights”. For the reasons already described above, the Panel is unconvinced that the test is one of whether or not the Domain Names are “infringing”. Nevertheless, in the Nike case the domain name in issue was <nike-shoes.com> and the respondent had a history of cybersquatting. There is little doubt that the domain name had been registered with the intention of taking advantage of the reputation of the complainant's mark.
6.19 What then is the factual position in the current case before the Panel? The Domain Names are more likely than not to be seen as the term “intel” combined with the term “focus”. “Intel” is not an ordinary English word (or as far as the Panel is aware an ordinary word in any other relevant language), but it is not a term that is exclusively associated with the Complainant. It is, for example, often seen as an abbreviation of the “intelligence”. In the English Court of Appeal case already referred to above, it had been chosen by the defendant (as part of the mark INTELMARK) as an abbreviation of the words “Integrated Telephone”. It does not inevitably follow from the choice of that term for use in a domain name that it must have been chosen with the intention of taking advantage of the Complainant's mark, even if the Respondent was aware of the Complainant's mark at the time of registration.
6.20 However, the test the Complainant has to satisfy is not whether a legitimate use is impossible. It must merely show that on the balance of probabilities that it was with a view to taking advantage of the Complainant's mark that the Domain Names were registered. The Panel believes that the Complainant satisfies that test in this case. There is no evidence before the Panel of how it is that the Domain Names were used between their registration and the time of the Complainant, but at the time of the Complaint it prima facie appears to have been used in connection with an offering of Internet, hosting and computer related services. This current use is the best evidence that the Panel has as to the motives of the Respondent at the time of registration. If the Domain Names were registered with the offer of these services in mind, then it seems probable that the choice was made not only with knowledge of the Complainant's mark but with a view to taking advantage of the similarity between the “Intelfocus” name and the Complainant's mark in order to draw Internet users to its website. The Respondent has certainly not put forward any other more innocent explanation. Therefore, the Panel holds that the Respondent's activities fall within the scope of paragraph 4(b)(iv) of the Policy.
6.21 This is sufficient to justify a finding in favour of the Complainant on the issue of bad faith registration and use. The Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <intelfocus.com> and <intelfocus.net> be transferred to the Complainant.
Matthew S. Harris | |
Richard W. Page | Dilek Ustun |
Dated: February 3, 2009
1Intel Corporation Inc. v. CPM United Kingdom Limited [2007] EWCA Civ 431.
Stay updated! Get new cases and decisions by daily email.
