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Advanced Micro Devices, Inc. v. Piere Macena [2005] GENDND 1467 (8 August 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Advanced Micro Devices, Inc. v. Piere Macena

Case No. D2005-0652

1. The Parties

The Complainant is Advanced Micro Devices, Inc., Austin, Texas, United States of America, represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson, Chicago, Illinois, United States of America.

The Respondent is Piere Macena, Macena Systems, Middleton, Massachusetts, United States of America.

2. The Domain Name and Registrar

The disputed domain name <amd-amd.com> is registered with Abacus America Inc. dba Names4Ever.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 22, 2005. On June 22, 2005, the Center transmitted by e-mail to Abacus America Inc. dba Names4Ever a request for registrar verification in connection with the domain name at issue. On June 22, 2005, Abacus America transmitted by e-mail to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact information for the administrative, billing, and technical contact. 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”).

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 July 4, 2005. In accordance with the Rules, paragraph 5(a), the due date for the Response was July 24, 2005. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 26, 2005.

The Center appointed David, W. Quinto as the sole panelist in this matter on August 1, 2005. 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

Complainant Advanced Micro Devices, Inc. is a manufacturer and distributor of computer hardware and software, semiconductor devices, microprocessor chips, and related goods and services. Complainant obtained a United States federal registration of its AMD word mark on May 5, 1987, and obtained federal registrations of its AMD and Design marks on May 8, 2001, and September 3, 2002. Complainant contends that it has used its AMD mark in commerce since at least as early 1972. Consistent with its trademark registrations, Complainant maintains a website located at “www.amd.com”.

Respondent registered the <amd-amd.com> domain name on November 15, 2003. For a time, Respondent used the disputed domain name to point to a website where Respondent offered both Complainant’s and Complainant’s competitors’ products for sale. The disputed domain name is not currently in use.

5. Parties Contentions

A. Complainant

Complainant alleges that since the early 1970s, it has sold millions of dollars’ worth of computer hardware and software products, semiconductor devices, integrated circuits, microprocessor chips, and related goods and services, all under the AMD marks, and has spent millions of dollars to advertise and promote those products and services. Further, it alleges that it has used its AMD marks in commerce in various other countries. Complainant provided a schedule showing that it has registered AMD in over fifty-five countries.

By virtue of Complainant’s use of its AMD marks, Respondent was on constructive notice of Complainant’s rights in them. Further, Complainant has provided a website printout reflecting that, Respondent used the disputed domain name for a website at which Complainant’s products (as well as products of Complainant’s direct competitors) were offered for sale.

Complainant alleges that Respondent’s <amd-amd.com> domain name is confusingly similar to Complainant’s <amd.com> domain name and AMD marks. Complainant alleges that it never licensed or otherwise permitted Respondent to use the AMD marks or to apply for any domain name incorporating “amd” Complainant concedes that the disputed domain name does not point to any active website.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

Pursuant to Paragraph 4(a) of the Policy, a complainant has the burden to show both that it has rights in a trademark or service mark and that the respondent’s domain name is identical or confusingly similar to that mark. Here, Complainant has alleged common law use of the AMD mark tracing to 1972, and has held United States federal registrations of that mark since 1987. Accordingly, Complainant has rights in the AMD mark.

A domain name is “identical or confusingly similar” to a trademark for purposes of the Policy when the domain name includes the trademark, or confusingly similar approximation, regardless of the other terms in the domain name. Wal-Mart Stores, Inc. v. MacLeod, WIPO Case No. D2000-0662. See also Nikon, Inc. v. Technilab, Inc., WIPO Case No. D2000-1774 (holding that <nikoncamera.com> was confusingly similar to NIKON because it “wholly incorporate[d]” the mark). Here, Respondent’s domain name wholly incorporates Complainant’s mark twice. Accordingly, it is confusingly similar to a mark in which Complainant has rights.

B. Rights or Legitimate Interests

Complainant alleges that Respondent Macena has used the disputed domain name in connection with his business, Macena Systems. Complainant further alleges that Respondent is not commonly known by the disputed domain name and has not acquired any trademark or business rights in it.

Further, various panels have concluded that a merchant has no right to use a manufacturer’s mark as a domain name, at least if the merchant is not selling exclusively the manufacturer’s products. In rejecting the view that a licensee has a right to register a domain name consisting of, or containing, the licensor’s trademark, the Nikon panel rejected “any claim by a licensee to the right to register a domain name consisting of, or containing, the licensor’s trademark” and noted that its view was “closely related to the traditional rule that a ‘licensee’s use [of a mark] inures to the benefit of the licensor-owner of the mark and the licensee acquires no ownership rights in the mark itself.’” In Ferrero S.p.A. v. Fistagi S.r.l., WIPO Case No. D2001-0262, the panel noted that any other rule would “allow any distributor, wholesaler or retailer to register and monopolize a third party’s trademark as a domain name, based on the mere fact that it sells those products.” Thus, the better rule is that “the right to resell products does not create a right to use a mark more extensively than required to advertise and sell the product.” Motorola, Inc. v. Newgate Internet, Inc., WIPO Case No. D2000-0079. Further, the use of a trademark to promote and sell competitive goods is not a legitimate use. U.S. Franchise Sys., Inc. v. Jackson, National Arbitration Forum No. FA 162769; Whirlpool Props., Inc. v. Ace Appliance Parts and Serv., National Arbitration Forum No. FA 109386; Kosmea Pty. Ltd. v. Krpan, WIPO Case No. D2000-0948.

Complainant has therefore made out a prima facie case that Respondent has no rights or legitimate interest in the disputed domain name. See Experian Info. Solutions, Inc. v. Credit Research, Inc., WIPO Case No. D2002-0095; Document Techs. Inc. v. Int’l Elec. Communications, Inc., WIPO Case No. D2000-0270. In Do the Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624, the panel concluded that once a complainant has made a prima facie showing, the burden must shift to the respondent to prove by “concrete evidence” its rights on legitimate interests in the domain name. Here, because Respondent has defaulted, the panel must conclude that Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Complainant alleges that Respondent, a resident of the United States of America, had actual knowledge of Complainant’s marks. This is evidenced by Respondent’s use of the disputed domain name to sell Complainant’s (and its competitors’) products. As one panel explained:

“For an allegation of bad-faith registration and use of a domain name to succeed, the Complainant has to show at the very least that when the Respondent registered the Domain Name, the Respondent was (or was likely to have been) aware of the existence of the Complainant or, more particularly, the Complainant’s rights in respect to the trademark in question”.

See Rusconi Editore S.p.A. v. Bestinfo, WIPO Case No. D2001-0656.

Accordingly, Respondent’s actual notice of Complainant’s prior rights, combined with Respondent’s use and registration of the domain name to attract Internet traffic to a website selling competing goods for commercial gain, by creating a likelihood of confusion surrounding Complainant’s AMD marks, demonstrates Respondent’s bad faith registration and use of the disputed domain name.

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 domain name <amd-amd.com> be transferred to Complainant.

David W. Quinto
Sole Panelist

Date: August 8, 2005