Arm Limited v Domain Admin

WIPO Case No. D2022-1755

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Arm Limited v. Domain Admin

Case No. D2022-1755

1. The Parties

The Complainant is Arm Limited, United Kingdom, represented by Quinn IP Law, United States of America

(“United States”).

The Respondent is Domain Admin, China.

2. The Domain Name and Registrar

The disputed domain name <arm-technologies.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 13, 2022. On May 16, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 16, 2022, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 9, 2022, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 15, 2022.

The Center verified that the Complaint together with the amended 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 June 16, 2022. In accordance with the Rules, paragraph 5, the due date for Response was July 6, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 11, 2022.

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The Center appointed Louis-Bernard Buchman as the sole panelist in this matter on July 28, 2022. 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, a United Kingdom-based company, designs and markets worldwide since 1990 sophisticated electronic products, software, and services, and is one of the world’s leaders in the field of semiconductor chips, its processors being used as the main Central Processing Unit for most mobile telephones, including those manufactured inter alia by Apple and Samsung.

The Complainant owns a large portfolio of registered trademarks containing the term ARM, including, inter alia, ARM trademark registrations in various jurisdictions, including inter alia the United Kingdom trademark No. UK00002000006, registered on January 29, 1999, the United States Reg. No. 2332930, registered on

March 21, 2000 and the Singapore trademark serial No. 40201505972U, registered on November 18, 2014

(together referred to hereinafter as: the “Mark”).

The Complainant owns over 190 domain names with the element “arm”, including, inter alia, <arm.com>

(resolving to its official website) and <arm-tech.com>, which redirects to its official website.

The Respondent is apparently located in the China.

The disputed domain name was registered on April 29, 2019, and does not resolve to an active website.

Prior to initiating this administrative proceeding, the Complainant tried to solve the matter amicably by sending a demand letter to the Registrar on March 16, 2022, and requesting the Registrar to forward the letter to the Respondent.

5. Parties’ Contentions

A. Complainant

(i) The Complainant submits that the disputed domain name reproduces the Mark, in which the Complainant
has rights, and is confusingly similar to the Mark insofar as the disputed domain name contains the
distinctive element “arm” in its entirety, followed by a hyphen and the term “technologies”, such addition not

preventing a finding of confusing similarity.

(ii) The Complainant contends that the Respondent has no rights or legitimate interests in respect of the
disputed domain name. Furthermore, the Complainant contends that it never authorized the Respondent to

use the Mark in any manner and that the Respondent has never had any affiliation with the Complainant.

(iii) The Complainant submits that the Respondent has registered and is using the disputed domain name in
bad faith. The Complainant alleges that the Respondent had knowledge of the Mark when registering the

disputed domain name.

(iv) The Complainant requests that the disputed domain name be transferred to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

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6. Discussion and Findings

6.1. Procedural Aspects – Failure to Respond

Under the Rules, paragraphs 5(f) and 14(a), the effect of a failure to submit a response by the Respondent is
that, in the absence of exceptional circumstances, the Panel shall proceed to a decision on the basis of the
Complaint.

Under paragraph 4(a) of the Policy, it is the Complainant’s burden to establish that all three of the required criteria for a transfer of the disputed domain name have been met, even in the absence of a response.

Under paragraph 14(b) of the Rules, the Panel is empowered to draw such inferences from the
Respondent’s failure to file a response as it considers appropriate under the circumstances.

In this case, the Panel finds that the Respondent has failed to rebut any of the reasonable factual assertions that are made and supported by evidence submitted by the Complainant.

In particular, by failing to respond, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy or otherwise, from which the Panel might conclude that the Respondent has any rights or legitimate interests in the disputed domain name, such as making legitimate noncommercial or fair use of the disputed domain name.

Moreover, as discussed below, the Respondent has failed to provide any exculpatory information or reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent has acted in bad faith.

6.2. Requirements of Paragraph 4(a) of the Policy

A. Identical or Confusingly Similar

In comparing the Mark with the disputed domain name, it is evident that the latter consists of the Mark, followed by a hyphen “-”, the word “technologies”, and the generic Top-Level Domain (“gTLD”) “.com”.

It is well established that a gTLD is generally disregarded in the assessment of a domain name for the
purpose of determining identity or confusing similarity. See the WIPO Overview of WIPO Panel Views on
Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.1.

The Panel finds that the disputed domain name is confusingly similar to the Mark, which is incorporated in its entirety and followed by a hyphen “-” and the term “technologies”, and that the addition of these elements does not prevent a finding of confusing similarity, because the Mark remains sufficiently recognizable within the disputed domain name. See WIPO Overview 3.0, section 1.8.

Thus, the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Although a complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, previous UDRP panels have recognized that with regard to paragraph 4(a)(ii) of the Policy, this could result in the often impossible task of proving a negative proposition, requiring information that is primarily, if

not exclusively, within the knowledge of a respondent.

Thus, the consensus view of previous UDRP panels is that paragraph 4(c) of the Policy shifts the burden of production of evidence to the respondent to come forward with evidence of rights or legitimate interests in a domain name, once the complainant has made a prima facie case showing, as the Panel finds the

Complainant has made out in this case, based on the facts and arguments set out above. See Document

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Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270; and WIPO
Overview 3.0, section 2.1.

As previously noted, the Respondent offered no reason for selecting the disputed domain name. There is no evidence that the Respondent is commonly known by the disputed domain name or uses (or has made bona fide preparations to use) the disputed domain name in a business or otherwise.

The disputed domain name does not resolve to an active website.

No information is provided on what rights or legitimate interests the Respondent may have in the disputed domain name.

In addition, the term “technologies” is descriptive of the Complainant’s products and services activities. The disputed domain name confusingly similar to the Complainant’s Mark carries a risk of implied affiliation. See WIPO Overview 3.0, section 2.5.1.

To counter any notion that the Respondent has such rights or legitimate interests, the Complainant has argued that the Respondent (i) has no affiliation with the Complainant, (ii) received no authorization from the Complainant to register or use the disputed domain name, and (iii) registered the disputed domain name to attract internet users, which the Respondent failed to deny.

In the circumstances, the Panel concludes that the Complainant has established the requirement of paragraph 4(a)(ii) of the Policy with respect to the disputed domain name.

C. Registered and Used in Bad Faith

As noted above, the Respondent has failed to provide any exculpatory information or persuasive reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent acted in bad faith by creating confusion to the detriment of the Complainant in registering and using the disputed domain name, confusingly similar to the Mark.

First, the registration of a domain name that is confusingly similar to a trademark by an entity that has no relationship to that mark may be, depending on the circumstances, evidence of opportunistic bad faith. See Ebay Inc. v. Wangming, WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163.

Second, it is well established that the mere passive holding of a domain name may in appropriate
circumstances be evidence not only of bad faith registration, but also of bad faith use. See Telstra
Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; DCI S.A. v. Link Commercial
Corporation, WIPO Case No. D2000-1232; Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v.
Shane Brown, doing business as Big Daddy’s Antiques., WIPO Case No. D2000-0004; and Alitalia – Linee
Aeree Italiane S.p.A v. Colour Digital, WIPO Case No. D2000-1260.

Third, it is established in prior UDRP decisions that where the respondent knew or should have known of a trademark prior to registering the domain name, such conduct may be, in certain circumstances, sufficient evidence of bad faith registration and use. See Weetabix Limited v. Mr. J. Clarke, WIPO Case No.

D2001-0775.

Here, considering that at the date of registration of the disputed domain name the Mark was already
registered and widely used for many years, and that the Complainant and the Mark have been targeted in
2021 and 2022 in over twenty UDRP proceedings where the concerned panel found in favor of the
Complainant, publicly available on the Center’s search engine, the Panel finds it difficult to believe that the
Respondent chose to register the disputed domain name randomly with no knowledge of the Mark. See
Barney’s Inc. v. BNY Bulletin Board, WIPO Case No. D2000-0059; Kate Spade, LLC v. Darmstadter
Designs, WIPO Case No. D2001-1384, citing Cellular One Group v. Paul Brien, WIPO Case No.

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D2000-0028; and SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092.

Prior UDRP panels have held that bad faith use of a domain name by a respondent may also result from the
fact its good faith use is in no way plausible, considering the specificity of the activity (see Audi AG v. Hans
Wolf, WIPO Case No. D2001-0148). The Panel notes that a prior URDP panel has found the Mark to be
sufficiently distinctive for technological products and widely known in the relevant customer circles (see Arm
Limited v. Anthony Marino, WIPO Case No. D2022-1101), and also noting that the disputed domain name is
composed of the Mark in combination with the term “technologies”, the Panel has been unable to determine
any current or plausible future active use of the disputed domain name in good faith from the evidence
before it, considering inter alia the specificity of the Complainant’s activity and absence of any response from
the Respondent.

Moreover, in this case, the Respondent took active steps to hide his identity. Although using a proxy service to hide the identity of the registrant is not per se conclusive of bad faith registration and use (see Trinity Mirror Plc and MGN Ltd. v. Piranha Holdings, WIPO Case No. D2008-0004), the Panel notes that the fact that the Respondent used a proxy service to hide his identity and contact details prevented the Complainant from contacting him. Prior UDRP panels have held that deliberate concealment of identity and contact information may in certain circumstances be indicative of registration in bad faith (see TTT Moneycorp Limited v. Diverse Communications, WIPO Case No. D2001-0725, and Schering Corporation v. Name Redacted, WIPO Case No. D2012-0729). See section 3.2.1 of the WIPO Overview 3.0.

Finally, prior UDRP panels have held that in certain circumstances, registrants of domain names have an
affirmative duty to abstain from registering and using a domain name which is either identical or confusingly
similar to a prior trademark held by others and that contravening that duty may constitute bad faith. See
Policy, paragraph 2(b); Nike, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397; Nuplex Industries Limited
v. Nuplex, WIPO Case No. D2007-0078; Mobile Communication Service Inc. v. WebReg, RN, WIPO Case
No. D2005-1304; BOUYGUES v. Chengzhang, Lu Ciagao, WIPO Case No. D2007-1325; Media General
Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964; and mVisible Technologies,
Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141.

The Panel concludes in the light of all these circumstances that the Respondent’s registration and use of the disputed domain name constitute bad faith, and that the requirements of paragraph 4(a)(iii) of the Policy are also satisfied in this case.

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, <arm-technologies.com>, be transferred to the Complainant.

/Louis-Bernard Buchman/
Louis-Bernard Buchman
Sole Panelist
Date: August 2, 2022