Intel Corporation v. Gu Ja Bong
Claim Number: FA0204000112465
Complainant
is Intel Corporation, Santa Clara,
CA, USA (“Complainant”). Respondent is Gu Ja Bong, Namsan-dong Geumjeong-gu
Busan, KOREA (“Respondent”).
The
domain name at issue is <pentium.biz>,
registered with Echokorea, Inc. d/b/a DomainReg.
The
undersigned certifies that he has acted independently and impartially and to
the best of his knowledge, has no known conflict in serving as Panelist in this
proceeding.
Tyrus
R. Atkinson, Jr., as Panelist.
Complainant
has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint,
as it timely filed the required Intellectual Property (IP) Claim Form with the
Registry Operator, NeuLevel. As an IP
Claimant, Complainant timely noted its intent to file a STOP Complaint against
Respondent with the Registry Operator, NeuLevel and with the National
Arbitration Forum (the “Forum”).
Complainant
submitted a Complaint to the Forum electronically on April 26, 2002; the Forum
received a hard copy of the Complaint on April 27, 2002.
On
May 6, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of May 27,
2002 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent in compliance with paragraph 2(a) of the Rules for
the Start-up Trademark Opposition Policy (the “STOP Rules”).
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On June 20, 2002, pursuant to STOP Rule 6(b), the Forum
appointed Tyrus R. Atkinson, Jr., as
the single Panelist.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the Forum has discharged its responsibility under Paragraph 2(a) of
the STOP Rules. Therefore, the Panel
may issue its decision based on the documents submitted and in accordance with
the STOP Policy, STOP Rules, the Forum’s STOP Supplemental Rules and any rules
and principles of law that the Panel deems applicable, without the benefit of
any Response from Respondent.
Transfer
of the domain name from Respondent to Complainant.
A. Complainant
1. Respondent’s <pentium.biz> domain
name is identical to Complainant’s PENTIUM mark.
2. Respondent has no rights or legitimate
interests in the <pentium.biz> domain name.
3. Respondent registered the <pentium.biz>
domain name in bad faith.
B. Respondent failed to submit a Response.
Complainant
is listed on the Principal Register of the U.S. Patent and Trademark Office
(“USPTO”) as the owner of the PENTIUM mark (Reg. No. 1834434, issued May 3,
1994). In 1992, Complainant announced the introduction of its first PENTIUM
processor, after introducing the world’s first microprocessor in 1971.
Respondent
registered the contested <pentium.biz> domain name March 27, 2002
and has yet to develop a purpose for the domain name.
Paragraph 15(a) of the STOP Rules instructs this Panel
to “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.”
In view
of Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of the Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the STOP Rules
and draw such inferences it considers appropriate pursuant to paragraph 14(b)
of the STOP Rules.
Paragraph
4(a) of the STOP Policy requires that the Complainant must prove each of the
following three elements to obtain an order that a domain name should be
transferred:
(1) the domain name is identical to a
trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the
domain name; and
(3)
the domain name has been registered or is being used in bad faith.
Due
to the common authority of the ICANN policy governing both the Uniform Domain
Name Dispute Resolution Policy (“UDRP”) and these STOP proceedings, the Panel
will exercise its discretion to rely on relevant UDRP precedent where
applicable.
Under
the STOP proceedings, a STOP Complaint may only be filed when the domain name
in dispute is identical to a trademark or service mark for which a Complainant
has registered an Intellectual Property (IP) claim form. Therefore, every STOP proceeding necessarily
involves a disputed domain name that is identical to a trademark or service
mark in which a Complainant asserts rights.
The existence of the “.biz” generic top-level domain (“gTLD”) in the
disputed domain name is not a factor for purposes of determining that a
disputed domain name is not identical to the mark in which the Complainant
asserts rights.
Complainant
has established that it has rights in the PENTIUM mark through trademark
registration with the USPTO and continuous subsequent international use.
Respondent’s <pentium.biz> domain name is identical to
Complainant’s PENTIUM mark in spelling and form.
Accordingly,
the Panel finds that STOP Policy ¶ 4(a)(i) has been satisfied.
Respondent has failed to come forward
with a Response. Therefore, it is presumed that Respondent has no rights or
legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to
respond can be construed as an admission that they have no legitimate interest
in the domain names). Furthermore, when Respondent fails to submit a Response
the Panel is permitted to make all inferences in favor of Complainant. See Vertical Solutions Mgmt., Inc. v.
Webnet-Marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure
to respond allows all reasonable inferences of fact in the allegations of
Complainant to be deemed true).
Respondent has not come forward to
proffer any evidence that it has rights in the PENTIUM mark anywhere in the
world. Complainant created the PENTIUM word and corresponding significance in
its mark, and it is unlikely that Respondent has any rights in such a unique
and distinct mark. Therefore, Respondent has not established rights or
legitimate interests in the <pentium.biz> domain name under STOP
Policy ¶ 4(c)(i). See Nat’l Acad. Of Recording Arts & Sci Inc. v. Lsites,
FA 103059 (Nat. Arb. Forum Feb. 11, 2002) (finding that, because Respondent did
not come forward with a Response, the Panel could infer that it had no
trademark or service marks identical to <grammy.biz> and therefore had no
rights or legitimate interests in the domain name).
Due to the lack of Response, it may be
inferred that Respondent intends to use the domain name in order to divert
Internet users interested in Complainant’s services or products to Respondent’s
future website. Thus, Respondent’s registration of <pentium.biz>
is not in connection with a bona fide offering of goods or services under STOP
Policy ¶ 4(c)(ii). See Credit Suisse Group o/b/o Winterthur Ins. Co. v.
Pal-Ex Kft, FA 102971 (Nat. Arb. Forum Feb. 25, 2002) (“The use of
another's trademark to attract users to Respondent's domain is not considered
to be a bona fide offering of goods or services pursuant to STOP Policy ¶
4(c)(ii)”); see also William L. Lyon & Assocs., Inc. v. Yata, FA
103043 (Nat. Arb. Forum March 21, 2002)
(finding the Respondent’s “intent to trade [on] the goodwill of
Complainant’s mark, by attracting Internet users confused as to the likely
affiliation between Complainant and Respondent’s website” indicated the
Respondent had no rights or legitimate interests pursuant to STOP Policy ¶
4(c)(ii)).
Furthermore, there is no evidence on the
record, nor has Respondent come forward to establish that it is commonly known
by the <pentium.biz> domain name pursuant to STOP Policy ¶
4(c)(iii). See Nike, Inc. v. B. B.
de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate
interests where one “would be hard pressed to find a person who may show a
right or legitimate interest” in a domain name containing Complainant's
distinct and famous NIKE trademark); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan.
23, 2001) (finding that Respondent does not have rights in a domain name when
Respondent is not known by the mark).
The Panel finds that STOP Policy ¶
4(a)(ii) has been satisfied.
Complainant’s PENTIUM family of marks
represents internationally recognized symbols of computer processor technology.
The word PENTIUM did not
exist prior to Complainant’s creation of it. Due to the aforementioned
circumstances, Complainant’s listing on the Principal Register of the USPTO,
and the nature of STOP proceedings, Respondent is thought to have been on
constructive notice of the existence of Complainant’s PENTIUM mark.
Respondent’s subsequent decision to register an infringing domain name despite
knowledge of Complainant’s prior rights in the PENTIUM mark represents bad
faith registration under STOP Policy ¶ 4(a)(iii). See Valspar Sourcing, Inc. v. TIGRE,
FA 112596 (Nat. Arb. Forum June 4, 2002) (“Respondent was on notice of
Complainant’s rights in PAINT.BIZ when it registered the disputed domain name,
because Respondent received notice of Complainant’s IP Claim. Respondent’s registration of the disputed
domain name despite this notice when Respondent had no right or legitimate
interest in the domain name is evidence of bad faith”); see also Victoria's Secret v. Hardin, FA 96694
(Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of
Complainants' famous marks, Respondent had actual or constructive knowledge of
the BODY BY VICTORIA marks at the time she registered the disputed domain name
and such knowledge constitutes bad faith).
Respondent’s <pentium.biz> domain name is
identical to Complainant’s established PENTIUM family of marks resulting in the
likelihood that Internet users will believe that there is some affiliation
between Respondent and Complainant; notwithstanding the fact that Respondent
had no authorization to make use of Complainant’s mark. Registration and use of
the <pentium.biz> domain name is evidence of bad faith pursuant to
STOP Policy ¶ 4(b)(iv). It is inevitable that Respondent will attract
unsuspecting Internet users seeking Complainant’s website thereby benefiting
from the goodwill associated with Complainant’s mark. See Phat Fashions v. Kruger, FA 96193 (Nat.
Arb. Forum Dec. 29, 2000) (finding bad faith under UDRP ¶4(b)(iv) even though
Respondent had not used the domain name because “It makes no sense whatever to
wait until it actually ‘uses’ the name, when inevitably, when there is such
use, it will create the confusion described in the Policy”); see also Red Bull GmbH v. Gutch, D2000-0766 (WIPO
Sept. 21, 2000) (finding that Respondent’s expected use of the domain name
<redbull.org> would lead people to believe that the domain name was
connected with Complainant, and thus is the equivalent to bad faith use).
The Panel finds that STOP Policy ¶
4(a)(iii) has been satisfied.
Having
established all three elements required under the STOP Policy, the Panel concludes
that relief shall be hereby GRANTED.
Accordingly,
it is Ordered that the domain name <pentium.biz> be TRANSFERRED
from Respondent to Complainant and that subsequent challenges under the
STOP Policy against this domain SHALL NOT be permitted.
Tyrus R. Atkinson, Jr., Panelist
Dated: July 3, 2002
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