Arm Limited, a semiconductor designer company, attempted to get the domain Arm.World from its Chinese registrant by filing a UDRP.
This time, unlike the cases filed against the domains Arm.co and Arm.click, the decision was in favor of the Respondent, who listed the domain for sale. The asking price: 16 million British pounds.
Arm.World is a generic word, said the Respondent, pointing at other Chinese trademarks that incorporate the word “arm.” The WIPO panelist was convinced, ordering Arm.World to remain with the Respondent, who still has it listed for sale.
Arm Limited v. 卢春琳 (Chun Lin Lu)
Case No. D2021-0970
1. The Parties
The Complainant is Arm Limited, United Kingdom (“UK”), represented by Quinn IP Law, United States of America (“U.S.”).
The Respondent is 卢春琳 (Chun Lin Lu), China.
2. The Domain Name and Registrar
The disputed domain name <arm.world> is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 31, 2021. On March 31, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 2, 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.
On April 13, 2021, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on April 17, 2021. The Respondent did not comment on the language of the proceeding.
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 in both English and Chinese, and the proceeding commenced on April 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 12, 2021. The Respondent did not file a formal Response but sent several emails in English and Chinese on April 22, 2021 and April 23, 2021. Other emails were also sent on April 24, 2021, April 27, 2021 and May 3, 2021, which included what appeared to be a proposed settlement. On April 23, 2021, the Center directed that if the Parties wished to explore settlement of the dispute, the Complainant was to file a request for the suspension of the proceeding by April 28, 2021. No settlement was reached between the Parties. On May 14, 2021, the Center informed the Parties that it would proceed to appoint a panel.
On May 2, 2021, the Complainant submitted a supplemental filing to the Center consisting of a reference to Arm Limited v. Privacy Administrator, Anonymize, Inc. / Sarbel Bandak, WIPO Case No. D2021-0594 in respect of the domain name <armcortex.com>.
The Center appointed Francine Tan as the sole panelist in this matter on June 7, 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
The Complainant has been providing technology-related goods and services since 1990. The Complainant designs electronic products, including computer processors, graphics processors, digital memories and peripheral hardware and supplies software, development tools for computer hardware and provides software and consultancy services.
The Complainant has sold over 180 billion products under its ARM trade mark. The Complainant states that its products and services have a global reach to over 70 percent of the world’s population. The Complainant’s processors are used as the main central processing unit (“CPU”) for most mobile telephones, including those manufactured by Apple, HTC, Nokia, Sony Ericsson, and Samsung, as well for other widely‑used devices including laptops, tablets, televisions, and other electronic products. The Complainant’s ARM and ARM-formative trade marks (“the ARM marks”) enjoy a long history of use and enormous marketplace recognition and goodwill.
The Complainant owns numerous registrations for the ARM marks around the world. These include:
(i) UK Trade Mark No. UK00002000006, registered on January 29, 1999;
(ii) UK Trade Mark No. UK00003247299, registered on October 27, 2017;
(iii) UK Trade Mark No. UK00003247296, registered on October 27, 2017;
(iv) U.S. Trade Mark No. 2397339, registered on October 24, 2000; and
(v) U.S. Trade Mark No. 2332930, registered on March 21, 2000.
The Complainant also owns over 190 domain names that comprise the ARM trade mark. These include the domain names <arm.com>, <arm.careers>, <arm.group>, <arm.limited>, <arm.services>, <arm.computer>, <arm.store>, <arm.solutions> and <arm.tools>.
The disputed domain name was registered on March 2, 2017. It resolves to a webpage which offers the disputed domain name for sale.
Prior to the commencement of the proceeding, the Complainant sent a letter of demand to the Registrar on March 11, 2021, via email and requested for the letter to be forwarded to the Respondent. No response to the letter of demand was received from the Respondent.
5. Parties’ Contentions
The Complainant claims that the ARM trade mark has been recognized as a well-known trade mark in judicial and quasi-judicial proceedings and in an administrative proceeding. The disputed domain name incorporates the Complainant’s ARM mark in its entirety and is identical or confusingly similar to the Complainant’s ARM mark in which it has rights. Other than the inclusion of the generic Top-Level Domain (“gTLD”) “.world”, the disputed domain name contains no additional terms which serve to distinguish itself from the Complainant’s ARM trade mark.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. This is supported by these circumstances:
(i) The Respondent is located in China and there is no evidence that she is commonly known by the name “Arm”;
(ii) The disputed domain name resolved to a website on which it was offered for sale for GBP 16,000,000;
(iii) The Respondent is not affiliated with or licensed by the Complainant;
(iv) The Respondent never responded to the Complainant’s demand letter;
(v) The Complainant has been using the ARM trade mark since as early as 1990, which predates the Respondent’s registration of the disputed domain name;
(vi) There is no evidence that the Respondent owns any trademark registrations for the word “Arm”; and
(vii) The Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services.
The disputed domain name was registered and is being used in bad faith. The Respondent has no rights in the ARM trade mark nor in the disputed domain name. The Respondent is not commonly known by the disputed domain name nor by the name “Arm”. It has no legitimate reason to have registered the disputed domain name incorporating the ARM trade mark except to capitalize on the substantial goodwill and marketplace recognition associated with the Complainant’s ARM marks and to prevent the Complainant from being able to register the domain name itself.
The Respondent had constructive notice of the Complainant’s well-known ARM mark at the time of registration of the disputed domain name. The Complainant has been using the ARM mark for almost 30 years and has held registrations for its mark since as early as 1990, predating the registration of the disputed domain name. The Complainant has over 120 registrations throughout the world for its ARM marks and has more than 190 domain name registrations which incorporate the ARM trade mark. Given the distinctiveness and fame of the Complainant’s ARM marks, the public is likely to be confused, misled, and deceived as to the source of the disputed domain name. The asking price of GBP 16,000,000 for the acquisition of the disputed domain name clearly exceeds the out-of-pocket-expenses for registering and maintaining the disputed domain name. The Respondent registered the disputed domain name in bad faith for the purpose of selling, renting, or transferring the domain name to the Complainant or the Complainant’s competitors.
The failure of the Respondent to respond to the Complainant’s letter of demand and passive holding of the disputed domain name also demonstrate the Respondent’s bad faith.
The Respondent did not file a formal response to the Complainant’s contentions. However, she sent a series of emails to the Center in both English and Chinese in April and May 2021, the Panel sets out in brief the main contents thereof:
(i) April 21, 2021 email: The Respondent stated that she was away on a business trip and only just saw the email. The disputed domain was “only displayed on the WEST.CN domain name platform. This domain name has not been officially launched, and used, and no domain name resolution has been carried out. It is now decided to revoke the ARM.WORLD domain name display show”.
(ii) April 21, 2021 email: The Respondent stated, inter alia, that “It is now agreed to provide the ARM.WORLD domain name transfer code to ARM.COM through WIPO. The domain name ARM.WORLD has not been enabled and used, and no domain name resolution has been performed. But now this domain name is disputed, and the transfer code is now restricted. Please contact … to revoke the domain name dispute to provide the ARM.WORLD domain name transfer code.”
(iii) April 22, 2021 email: The Respondent stated that “ARM is an common vocabulary, and it is used in many countries, companies and industries.”
(iv) April 23, 2021 email: The Respondent stated that “China 35 ARM trademark in other fields, the enterprise of the industry… Hope to be able to removed the domain name dispute.”
(v) April 23, 2021 email response to Complainant’s email of the same date wherein Complainant requested that the Respondent provide her agreement to suspend the proceedings and to file a request with the Centre to suspend the proceedings because the parties are discussing settlement: The Respondent stated that “[she cannot] bear any costs, This domain name has a premium cost for several years. Hold this domain name is legal, in looking for project cooperation. ARM.WORLD is a generic domain name, just a common disputed domain name; among the 35 types of trade marks in China, several companies in different industries, fields, and companies all use the name ARM; it is used in many countries, fields and industries. … I hope that the ARM’s future to and good use of the domain name. It is not only a domain name, or a business in the field of a project in the world, there are a lot of play space. I am very happy that ARM is interested in this domain name and will handle this domain name through you; I only agreed to transfer this domain name in a friend will.”
(vi) April 24, 2021 email response to the Center’s email of April 23, 2021 wherein the Center stated that that if the parties wished to explore settlement options, the Complainant should submit a request for suspension by April 28, 2021 and the Parties should submit a Standard Settlement Form: The Respondent stated, “I have made a settlement, but I will not bear any costs; the ARM agent did not reply to the email; I don’t know the intention of the ARM agent, so I continue to add some other types of Chinese trademarks. Added Chinese trademarks in multiple categories, multiple fields, and other ARM trademarks held by different companies, including machinery manufacturing, metal accessories, robotic arms, sports equipment, game consoles and other fields. (There are Chinese companies, British companies, and other overseas companies).”
(vii) April 27, 2021 email: The Respondent stated, “Can I apply to reserve this domain name without transferring it? ARM weapons and equipment, We plan to use them in military equipment exhibition halls in other countries. 1. ARM.WORLD is a general domain name, and ARM is a general vocabulary; ARM.WORLD domain name broker display page; there is no misleading or infringement against ARM. (The ARM.WORLD presentation page has been withdrawn.) ARM is a semiconductor and chip processor company, and the name of ARM is the English abbreviation (Advanced RISC Machines)”.
(viii) May 3, 2021 email, further to the Complainant’s Supplemental Filing: The Respondent stated that “(1) neither [she] nor WEST.CN customer service received any objection emails about the ARM.WORLD domain name before receiving the WIPO email. (2) After [she] received the email notification from WIPO and WEST.CN, [she] cancelled the display and evaluation of SEDO.CN when [she] cancelled the WEST.CN display. At the same time, [she] can no longer see ARM.WORLD in SEDO. (3) There are 31 major categories of appearance patents, and 45 major categories of Chinese trademarks […]. ARM.WORLD has not been launched and used. There is no conflict or infringement with the trade mark and appearance patent of ARM’s industry. The ARM company cannot monopolize, deprive, other industries and other fields of the use of the general vocabulary of ARM, including domain names. (4) In each international domain name platform, there are ARM and ARM combined domain names that are being sold and registered. (5) I hope to keep the registered domain name of ARM.WORLD, and I will not bear any fees for the appeal of ARM.”
6. Discussion and Findings
6.1 Preliminary Issue: Language of the Proceeding
The language of the Registration Agreement in relation to the disputed domain name is Chinese. The Complainant requested that the language of the proceeding be English. The reasons are that:
(i) the disputed domain name is in the English language and incorporates Latin characters, rather than Chinese characters;
(ii) the website content to which the disputed domain name resolves contains information in both the English and Chinese languages;
(iii) the Complainant’s business is conducted primarily in English; and
(iv) the Complainant will be put through significant costs and additional burden if the Complaint and evidence had to be translated into Chinese.
Paragraph 10(c) of the Rules states that “[t]he Panel shall ensure that the administrative proceeding takes place with due expedition”. Paragraph 11 of the Rules provides that:
“(a) Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The Panel notes that the Center’s communications with the Respondent were sent in English and Chinese. Taking into consideration the language of the disputed domain name and especially the fact that the Respondent has demonstrated by her various email correspondence with the Center and the Complainant her ability to understand and correspond in English, the Panel determines it appropriate and procedurally efficient that English apply as the language of the proceeding. There is no merit in burdening the Complainant and delaying the proceeding with a requirement for Chinese translations to be prepared and filed.
6.2 Substantive Issues
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and,
(ii) that the Respondent has no legitimate interests in respect of the disputed domain name; and,
(iii) that the disputed domain name has been registered and used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established it has rights in the ARM trade mark. The ARM trade mark has been reproduced in its entirety within the disputed domain name. The gTLD “.world” is a technical requirement for domain name registrations and not relevant to the issue of the identity or confusing similarity between the disputed domain name and the Complainant’s trade mark. The Panel therefore finds that the disputed domain name is identical to the ARM trade mark in which the Complainant has rights.
The Panel accordingly finds that the first element of paragraph 4(a) of the Policy has been satisfied.
B. Rights or Legitimate Interests
The Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant’s registrations of the ARM trade marks long predate the registration date of the disputed domain name. The Complainant did not license or authorize the Respondent to use ARM as a trade mark or in a domain name. Neither is there evidence that the Respondent is commonly known by the name “arm” or “arm.world”.
The Panel finds that the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. A question to be considered in the context of this case is whether the fact that “arm” is a known word with a dictionary meaning means that the Respondent has, by virtue thereof, rights or legitimate interests in the disputed domain name. On this point, the Panel determines that the answer is in the negative for the reason that the Respondent has not used the disputed domain name in connection with its common dictionary meaning. See section 2.10.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the WIPO Overview 3.0), which states:
“Panels have recognized that merely registering a domain name comprised of a dictionary word or phrase does not by itself automatically confer rights or legitimate interests on the respondent; panels have held that mere arguments that a domain name corresponds to a dictionary term/phrase will not necessarily suffice. In order to find rights or legitimate interests in a domain name based on its dictionary meaning, the domain name should be genuinely used, or at least demonstrably intended for such use, in connection with the relied-upon dictionary meaning and not to trade off third-party trademark rights.”
The Respondent has not provided any evidence which would allow the Panel to find that she has rights or legitimate interests in the disputed domain name. With reference to paragraph 4(c) of the Policy, there is no evidence that the Respondent has made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Neither is there evidence that the Respondent has been commonly known by the disputed domain name or that she has made a legitimate noncommercial or fair use of the disputed domain name.
The Panel therefore finds that the second element of paragraph 4(a) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
The Panel, however, finds that the Complainant has failed to meet its burden of demonstrating that the
disputed domain name was registered and is being used in bad faith by the Respondent, as required by paragraph 4(a)(iii) of the Policy.
The disputed domain name comprises a dictionary word which is in common use. “arm” could also be an abbreviation for many combinations of words, as the Respondent has pointed out. There also appears to be many co-existing registrations and applications for the trade mark ARM in China. Of crucial importance, the Panel notes that the Complainant has failed to produce any evidence that the Respondent has used the disputed domain name in a manner that reflects bad faith and which was targeting the Complainant and its ARM trade mark. WIPO Overview 3.0 at section 3.1.1 states that:
“Generally speaking, panels have found that the practice as such of registering a domain name for subsequent resale (including for a profit) would not by itself support a claim that the respondent registered the domain name in bad faith with the primary purpose of selling it to a trademark owner (or its competitor).”
Hence, the mere practice of domaining cannot lead to a conclusion of bad faith registration and use.
Having reviewed the substance of the Respondent’s email communications, there is no indicia to suggest that the Respondent was aware of the Complainant and its ARM trade mark and specifically targeted them. The Respondent pointed out that the “www.arm.world” presentation page, initially on display only on the <west.cn> domain name platform, had been removed. The Complainant has not furnished evidence showing, for instance, that the landing page to which the disputed domain name resolved, had links to the type of goods and services the Complainant provides and is known for and/or to third party-competitors of the Complainant. The Complainant has failed to demonstrate, with evidence, that the Respondent has been misleading Internet users or acting outside her legitimate rights within the domain name registration system. The Respondent’s comments that “Arm” is a common word in the English vocabulary and a common abbreviation, and that the word is commonly applied for as a trade mark by various parties, are all reasonable and the Panel finds the arguments persuasive. The fact that the Respondent appears to have had a subsequent change of mind about surrendering the disputed domain name does not alter the Panel’s conclusion with regard to paragraph 4(a)(iii) of the Policy.
Accordingly, the Panel finds that the third element of paragraph 4(a) of the Policy has not been satisfied.
For the foregoing reasons, the Complaint is denied.
Date: June 29, 2021
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