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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Advanced Micro Devices, Inc. v. Dmitry
Case No. D2000-0530
1. The Parties
The Complainant is Advanced Micro Devices, Inc., a corporation incorporated under the laws of the State of California, having its principal place of business at One AMD Place, M.S. 68; P.O. Box 3453; Sunnyvale, CA 94088-3453 USA.
The Respondent is an individual known as Dmitry [no last name] located in New York, New York USA [no full address given].
2. The Domain Name and Registrar
The domain name at issue is <athlonchip.com>, registered with Register.com, Inc., New York, New York, United States of America.
3. Procedural History
A Complaint dated May 26, 2000, was received by the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") in hard copy on June 2, 2000, and by e-mail on June 10, 2000, as stated in the Center’s June 13, 2000, Notification of Complaint and Commencement of Administrative Proceeding dated June 13, 2000, ("Commencement Notification"). On June 9, 2000, the Registrar confirmed receipt of the Complaint and registration of the domain name through the Registrar. The Registrar indicated that Dmitry was the current registrant. The Commencement Notification was sent by the Center to Respondent (by e-mail) and to the Registrar as Technical and Zone Contact for Respondent (by post/courier) with a copy to Complainant (by e-mail).
The Commencement Notification stated that in accordance with Paragraph 4(a) of the Rules for Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999, ("Rules") and Paragraph 5 of the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy, in effect as of December 1, 1999, ("Supplemental Rules"), the Center verified that the Complaint satisfies the formal requirements of the Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999, ("Policy"), Rules and Supplemental Rules. The Commencement Notification further stated that payment in the required amount was made by the Complainant to the Center. The Commencement Notification set the deadline for responding to the Complaint at July 2, 2000.
Having reviewed the communications records in the case file, the Administrative Panel finds that the WIPO Center has discharged its responsibility under Paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondent."
On July 10, 2000, having received no response from Respondent, the Center transmitted to the parties a Notification of Respondent Default using the same methods as those used for the Commencement Notification. No response or other document has been received by the Center from Respondent since the Notification of Default.
The Administrative Panel finds that Respondent received notice of the Complaint and failed to submit a response as required by Paragraph 5 of the Rules. Accordingly, Respondent is in default and pursuant to Paragraph 14(a) of the Rules, the Administrative Panel shall proceed to a decision based on the allegations in the Complaint, the Rules and the Supplemental Rules, and shall draw such inferences as it considers appropriate.
In view of Complainant’s designation of a single panelist, on July 12, 2000, the Center invited Carol Anne Been to serve as a panelist in Case No. D2000-0530, and transmitted to her a Statement of Acceptance and Request for Declaration of Impartiality and Independence. The Center received Ms. Been’s Statement of Acceptance and Declaration of Impartiality and Independence on July 13, 2000. On July 20, 2000, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Ms. Been was formally appointed as the Panelist. The Administrative Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules.
In the Notification of Appointment of Administrative Panel, the Projected Decision Date was set for August 3, 2000. The Transmission of Case File to Administrative Panel, dated July 20, 2000, set the Projected Decision Date as August 4, 2000. On July 27, 2000, the Center notified the parties and the Administrative Panel that there would be a one-week extension due to delay in delivery of the Case File to the Panelist. Accordingly, the Projected Decision Date was moved to August 11, 2000.
4. Factual Background
The facts as presented in the Complaint are as follows. Complainant has sold millions of dollars worth of microprocessor chips and related goods under the marks AMD ATHLON; ATHLON; AMD ATHLON (and Design); and ARROW LOGO AMD ATHLON (and Design) ("AMD Marks") since August 15, 1999. Complainant has spent millions of dollars advertising and promoting these products.
The mark ATHLON is arbitrary and has no meaning in the industry.
Complainant filed applications to register AMD ATHLON for computer hardware and software; semiconductor devices; and other goods (Serial No. 75/710,603) and ATHLON for computer hardware and software; semiconductor devices; microprocessor modules; and other goods (Serial No. 75/717,969) with the United States Patent and Trademark Office on May 20, 1999. Complainant filed additional applications to register AMD ATHLON PROCESSOR (and Design) for computer hardware and software; semiconductor devices; microprocessor modules; and related goods (Serial No. 75/739,655) and AMD ATHLON PROCESSOR (and Design) for computer hardware and software; semiconductor devices; microprocessor modules; and related goods (Serial No. 75/739,656) with the United States Patent and Trademark Office on June 23, 1999.
In addition to the registrations cited above, Complainant has registered, or applied to register, the AMD Marks in 54 countries.
Complainant has registered the following domain names: <amd-athlon.com>, <athlon.net>, and <athlon.org>. Its principal web site is located at www.amd.com and offers information about Complainant’s products.
On April 13, 2000, Zdnet News published an article entitled "AMD shatters Wall Street estimates." This article stated that "Advanced Micro Devices is in the chips" with "spectacular sales and earnings in its first quarter". The article further stated that "Strong sales of [Complainant’s] high-performance Athlon chips helped AMD earn $189.3 million". It also stated that "Company officials said unit sales of Athlon chips jumped 50 percent to 1.2 million units. Total chip sales improved 14 percent from the fourth quarter and 65 percent from the year-ago quarter."
The Whois database of the Registrar shows that Respondent registered the domain name <athlonchip.com> on April 13, 2000. The Whois database shows that the Administrative Contact for this domain name is Dmitry, Dmitry xx, Dmitry Lane, xx, NY 11111. The Whois database shows that the Technical and Zone Contact for this domain name is Domain Registrar at Register.com.
Also on April 13, 2000, an e-mail message was sent from "Dmitry" to Hollis O’Brien at Complainant regarding "domain name." The message quoted the last passage from the Zdnet article described above and stated that after the author reviewed the article, he wanted to find out "more details about the Athlon Chip. I proceeded to go directly to www.athlonchip.com, as it was the first thought that came to my mind-which made the most sense." After stating that such destination was "not feasible," the author went on to state "This is where my offer comes in play. . . . Although the domain Athlonchip.com was somehow overlooked by your company before, I think you would agree that at this point it would be simply a rational decision to make. Of course an opportunity like this would require an appropriate price-an investment you cannot afford to pass up. (Revenue sharing will be considered as partial payment) I appreciate your consideration." The e-mail ended with the author providing a telephone number where he could be reached "for further discussion".
5. Parties’ Contentions
Complainant contends that its extensive use, advertising and promotion under the AMD Marks have caused Complainant, its microprocessor chips and related goods to become well known worldwide. Complainant alleges that the domain name <athlonchip.com> is confusingly similar to Complainant’s ATHLON trademark, and that the addition of the word "chip" in the domain name is not enough to avoid confusion.
Complainant contends that Respondent has no rights or legitimate interest in the domain name. In support of this contention, Complainant states that Respondent does not conduct any legitimate commercial or non-commercial business activity using the <athlonchip.com> name, is not commonly known by the <athlonchip.com> name, and has not acquired any trademark or service mark rights to the name. Complainant further claims that the e-mail message represents an admission by Respondent that he registered the domain name after reading the Zdnet article, and thus lacks any legitimate right or interest in the domain name.
Complainant argues that Respondent has registered and used the domain name in bad faith because he obtained the domain name solely for the purpose of selling it to Complainant for profit. Complainant contends that further evidence of bad faith is shown by Respondent’s failure to provide complete and accurate contact information for the <athlonchip.com> domain name registration, in breach of Respondent’s warranty under
Paragraph 2(a) of the Policy.
Respondent has not filed a response and thus has not contested the allegations of the Complaint.
6. Discussion and Findings
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and used in bad faith.
A. Similarity of the Domain Name to Complainant’s Trademarks
Complainant has applied to register, and is using, the mark ATHLON both alone and together with the initials of its company name, AMD. The mark ATHLON is used and recognized as identifying products sold by Complainant, as evidenced by the Zdnet article which discussed Complainant’s "Athlon chips". Complainant’s use of the ATHLON mark, although relatively short in duration to date (slightly less than one year at the time of this decision), establishes Complainant’s rights in the ATHLON mark prior to Respondent’s registration of the domain name.
Complainant has been using the ATHLON mark for semiconductor devices and microprocessor modules, otherwise known as "chips". The inclusion of the word "chip" with the ATHLON mark in the domain name confirms the confusing similarity of the domain name to Complainant’s rights, because "chip" describes the products offered by Complainant under the ATHLON mark. Domain names that include a descriptive term with another’s trademark have been held confusingly similar. See, e.g., AT&T Corp. v. WorldclassMedia.com, Case No. D2000-0553 (WIPO July 28, 2000).
Thus, the Administrative Panel holds that the domain name <athlonchip.com> is confusingly similar to Complainant’s ATHLON mark.
B. No Legitimate Interests
There is no evidence in the record of any legitimate interest of Respondent in the ATHLON mark or the phrase ATHLONCHIP included in the domain name, such as Respondent’s use of a corresponding name to offer goods or services; Respondent being known by a corresponding name; or Respondent making a legitimate noncommercial or fair use of the domain name. Because Respondent had the opportunity to respond to the Complaint, the Administrative Panel may conclude from Respondent’s failure to respond and provide contrary evidence that no such evidence exists. Mondich v. Brown, Case No. D2000-0004 (WIPO February 16, 2000,) ("It is a general principle of United States law that the failure of a party to submit evidence on facts in its control may permit the court to draw an adverse inference regarding those facts."). Thus, the Administrative Panel holds that Respondent has no rights or legitimate interests in the domain name.
C. Registration and Use in Bad Faith
The occurrence of three events in the same day suggests that Respondent registered and used the domain name in bad faith. Although the record does not reflect the precise times on April 13, 2000, that Respondent read the Zdnet article or registered the domain name, Respondent’s e-mail message suggests that upon reviewing the article that mentioned Complainant’s "Athlon chips", Respondent proceeded to register the domain name <athlonchip.com> and then sent the e-mail message to Complainant. Thus, it appears that the registration was made with full awareness of Complainant’s rights in the ATHLON mark and in an attempt to capitalize on those rights in some manner.
Although Respondent’s e-mail message did not openly state that the domain name was for sale nor demand a specific price, the clear implication of the message was that Respondent registered a domain name that Complainant had "overlooked" and now was offering Complainant the opportunity to purchase the domain name "at an appropriate price". The Administrative Panel holds that the e-mail message constitutes an offer to sell the domain name to Complainant.
Respondent’s e-mail message to Complainant referring to the Zdnet article and offering to sell the domain name to Complainant is compelling evidence that Respondent acted in bad faith. Respondent admits that the article referring to the success of Complainant’s sales of the "Athlon chip" prompted his interest in the domain name and that the domain name would cause confusion among consumers as to ownership and source. Following these statements with an offer to sell the domain name to Complainant indicates that Respondent registered the domain name primarily for the purpose of selling, renting or otherwise transferring it to Complainant as the owner of the trademark incorporated therein, as described in Paragraph 4(b)(i) of the Policy. Thus, the Administrative Panel concludes that the domain name was registered in bad faith.
The Administrative Panel does not rely on Complainant’s contention that Respondent’s failure to provide complete and accurate contact information in the registration of the domain name is evidence of bad faith. While the domain name registration agreement of the Registrar requires the registrant to provide and update the name and postal address, Respondent apparently provided sufficient contact information for the Registrar to issue the registration. Further, Respondent provided additional contact information, namely his telephone number and e-mail address, in the e-mail message to Complainant. Thus, the Administrative Panel does not consider the lack of complete and accurate contact information in the registration as evidence of bad faith under these circumstances.
The decision cited by Complainant involved a respondent that went much farther to conceal its identity, by giving a post office box address and telephone number for persons who were not associated with the respondent. Telstra Corp. Ltd. v. Nuclear Marshmallows, Case No. D2000-0003 (WIPO February 18, 2000). Here, Respondent omitted key details but provided a means of finding him and communicating with him.
Accordingly, pursuant to Paragraph 4(i) of the Policy and Paragraph 15 of the Rules, the Administrative Panel requires that the domain name <athlonchip.com> registered by Dmitry be transferred to Complainant, Advanced Micro Devices, Inc.
Carol Anne Been
Dated: August 10, 2000