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Advanced Micro Devices, Inc. v. Altitude Technology SDN BHD [2005] GENDND 1974 (2 November 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Advanced Micro Devices, Inc. v. Altitude Technology SDN BHD

Case No. D2005-0658

1. The Parties

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

The Respondent is Altitude Technology SDN BHD, Alex Goh, Taman Pelangi Johor Bahru, Malaysia.

2. The Domain Name and Registrar

The disputed domain name <amd-processor.net> is registered with WebNIC.cc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 22, 2005. On June 23, 2005, the Center transmitted by email to WebNIC.cc a request for registrar verification in connection with the domain name at issue. On June 24, 2005, WebNIC.cc transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 6, 2005. The Center verified that the Complaint together with the amendment to 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 14, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was October 3, 2005.

After reception of e-mails from the Respondent offering to transfer the disputed domain name, the Complainant requested the suspension of the administrative proceeding on July 19, 2005, the Center formally notified the suspension of administrative proceeding on July 19, 2005. The Complainant requested an extension to the suspension of the administrative proceeding on August 18, 2005, the Center formally notified the to suspension of administrative proceeding on August 19, 2005.

For reasons that the Panel is unaware, the transfer of the disputed domain name did not occur. Therefore, the Complainant requested for the re-institution of the proceeding on September 16, 2005

The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 5, 2005.

The Center appointed Stéphane Lemarchand as the sole panelist in this matter on October 13, 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

The Complainant is an international well-known company in the field of computer hardware and software, semiconductor devices and microprocessor chips.

The Complainant is the owner of various US trademark registrations for the AMD sign designating notably semiconductor devices, integrated services, computer hardware and software.

The Complainant has also used the AMD trademarks on a worldwide basis and has registered the AMD trademarks in several foreign jurisdictions.

The Respondent registered the domain name <amd-processor.net> on March 16, 2004.

5. Parties’ Contentions

A. Complainant

The disputed domain name is confusingly similar to trademarks under which Complainant sells its products and services throughout the world since it incorporates the entirety of the AMD trademarks.

The disputed domain name leads to a website that sells and promotes products in direct competition with the Complainant’s products.

Respondent is not commonly known by the disputed domain name and Complainant has not licensed or otherwise permitted the Respondent to use the trademark AMD.

Even if the Complainant’s products were included among a range of products, it is not necessary to use the AMD trademark. The use of the Complainant’s trademark to bring Internet users to a website that sells and promotes competing products does not constitute a bona fide offering of goods or services.

Respondent used the Complainant’s trademark to create a likelihood of confusion in the public mind.

The Complainant is well-known throughout the world, therefore the Respondent necessarily has knowledge of the Complainant’s prior rights.

Because the Respondent had knowledge of the Complainant’s rights , he could not have registered the Domain name with the intention of using it legitimately but with the intention to divert internet users to its website for commercial gain.

B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute:

“A Panel shall 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 seems applicable”.

Paragraph 4(a) of the Policy states that, for a complaint to be granted, the Complainant must prove each of the following:

(i) that the domain name registered by the Respondent is identical or confusingly similar to the trademarks or service marks in which the Complainant has rights; and,

(ii) that the Respondent has no rights or no legitimate interests in respect of the domain name; and,

(iii) that the domain name has been registered and is used in bad faith.

A. Identical or Confusingly Similar

The disputed domain name <amd-processor.net> is made up of the Complainant’s trademark with the addition of the generic word “processor”.

Previous panels have considered that the addition of generic words to trademarks is not sufficient to escape the finding of similarity and does not change the overall impression of the designations as being connected to the Complainant (see Telstra Corporation Ltd. v. Peter Lombardo, Marino Sussich and Ray Landers, WIPO Case No. D2000-1511; Pepsico Inc v. Pepsi SRL and EMS COMPUTER INDUSTRY, WIPO Case No. D2003-0696; Pepsico Inc v. Diabetes Home care and DHC services, WIPO Case No. D2001-0174; Sony Kabushiki Kaisha v. Kil Inja, WIPO Case No. D2000-1409; America Online Inc v. Chris Hoffman, WIPO Case No. D2001-1184).

In the current case, the use of the generic and descriptive term “processor” in conjunction with the Complainant’s trademark does not remove the domain name in dispute from being confusingly similar, the generic terms lacking in distinctiveness. (see Lilly ICOS LLC v. Jay Kim, WIPO Case No. D2004-0891; Amazon.com Inc. v. John Beamer, WIPO Case No. D2002-1005).

Furthermore, the addition of the suffix “processor” strengthens the risk of confusion insofar as the consumer may think that it constitutes a variation of the trademark AMD owned by the Complainant.

Consequently, the Panel finds that the disputed domain name is confusingly similar to the registered trademark AMD.

B. Rights or Legitimate Interests

The Respondent has not filed any Response to the Complaint and thus has not alleged any facts or elements to justify prior rights or legitimate interests in the said domain name.

The Complainant does not appear to have licensed or otherwise authorized the Respondent to use its trademark or any domain name incorporating the trademark.

In the present case, the Respondent is using the disputed domain name to promote Complainant products as well as competitors products.

According to the Policy, paragraph 4(c)(i), a use is legitimate if, prior to commencement of the dispute, the Respondent used the domain name or a name corresponding to the domain name in connection with the bona fide offering of goods or services. The notion of “bona fide” has notably been specified by the WIPO decision Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, where it was held that, to be bona fide within paragraph 4(c)(i), the offering must meet several minimum requirements, being that:

- the Respondent must actually be offering the goods or services at issue;

- the Respondent must use the site to sell only the trade marked goods; otherwise, it could be using the trade mark to bait Internet users and then switch them to other goods;

- the site must accurately disclose the registrant’s relationship with the trade mark owner; it may not, for example, falsely suggest that it is the trade mark owner, or that the website is the official site; and

- the Respondent must not try to corner the market in all domain names, thus depriving the trade mark owner of reflecting its own mark in a domain name.

These criteria have been applied in many cases related to authorized users or not.

In the present case, the Panel finds that the Respondent’s conduct fails some of the above criteria since the Respondent does not use the domain name to resale the Complainant products by reference to the sole Complainant trademark, at the time of the Complaint, the Respondent’s website also promoted Complainant’s competitors products.

Therefore, prior to any notice of this dispute, the Respondent had not used the domain name in connection with any bona fide offering of goods or services within the meaning of Paragraph 4(c)(i) of the Policy.

Furthermore, by not submitting a Response, the Respondent has failed to demonstrate that he has rights or legitimate interests in the Domain Name.

Thus, the Panel concludes that the Respondent has no rights or legitimate interests, within the meaning of paragraph 4(a)(ii) and (c)(i-iii) of the Policy in respect of the disputed Domain Name.

B. Registered and Used in Bad Faith

The Policy, Paragraph 4(b), indicates that certain circumstances may, “in particular but without limitation”, be evidence of bad faith.

In the present case, the bad faith of the Respondent may be established by the following elements:

- The Complainant trademark is not only distinctive but also largely used throughout the world. Thus, the Respondent could not ignore the existence of the Complainant’s trademark at the time of registering the domain name <amd-processor.net> ( see Sony Kabushifi Kaisha also trading as Sony Corporation v. Sin, Eonmok, WIPO Case No. D2000-1007).

- The Respondent has not alleged any facts or elements to justify prior rights or legitimate interests in the said domain name.

- The Respondent used the website related to the disputed domain name to sell products that are competitive with the Complainant ones. It arises from the documents provided by the Complainant that the Respondent, by selling competitive Complainant products, has not used the domain name in connection with the bona fide offering of goods or services but has intentionally diverted Internet users to its website by exploiting the confusing similarity between the disputed domain name and the Complainant’s trademarks (see Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946).

The Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.

Thus, the Panel concludes that the disputed domain name was registered and is being used in bad faith.

7. Decision

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 name, <amd-processor.net> be transferred to the Complainant.

Stéphane Lemarchand
Sole Panelist

Dated: November 2, 2005