Arm Limited v. Sarbel Bandak [WIPO Case No. D2021-0594]
I’m continuing to delve into Com Laude’s domain name dispute archives, which contain a staggering 2.9 million words in UDRP submissions, to ferret out some of our standout cases.
In the lightning-fast world of domain name speculation, it’s not uncommon for savvy investors to snap up promising domain names before anyone else can blink. But when you go toe-to-toe with a global tech behemoth like Arm, you’d best be sure you’ve done your homework.
That’s exactly what happened in a case where we represented Arm, the world’s leading chip powerhouse, in Arm Limited v. Sarbel Bandak [WIPO Case No. D2021-0594].
At stake was the disputed domain name armcortex.com, a combination so patently linked to the well-known Arm Cortex processor line that even a casual observer could see the connection.
But the Respondent, a seasoned domain name investor, begged to differ.
Claiming innocence, he argued that he had registered the name without any knowledge of Arm’s trademarks. His defence, however, began to unravel when it emerged that he had indeed conducted trademark searches before registering the name, but had chosen to ignore them. Worse, he offered no plausible explanation for his choice of the name other than a convoluted metaphor involving brain cortexes and motor skills, noting:
I registered armcortex.com because it also reminded me motor cortex which is part of cerebral cortex, that controls the movement of the body, the limbs including arms.
The Panel, understandably unconvinced (perhaps even perplexed), didn’t buy it for a second. Nor did they spare any sympathy for the Respondent’s claim that he had a legitimate interest in the domain. With Arm having proven its trademark rights over both “Arm” and “Cortex” and demonstrating that the Respondent had never been authorised to use the name, the Panel found no basis for his defence.
The proverbial nail in the coffin came when our submissions pointed out that the Respondent had offered the domain name for sale for a staggering USD 23,000, a clear sign of bad faith intentions. Though, that said, in pre-dispute correspondence he did offer to reduce his price to USD 18,000. Very decent of him. Add to that his history of registering similar generic-branded names for resale, and the Panel reasonably found both bad faith registration and use.
But the Respondent’s defence didn’t stop there. In a bizarre attempt to justify his actions, he cited biblical references to the terms “arm” and “cortex” and even invoked passages from the Bible:
Also aside from its physical definition, arm is used in Scripture as a symbol of power in action–either divine or human. For your reference you can check : (Isaiah 53:1: “Who has believed our message? To whom has the LORD’S arm [power] been revealed.) and (‘I will bring you out from under the oppression of the Egyptians, and I will free you from slavery in many verses. I will rescue you with my powerful arm and with mighty acts of judgment’ “ (Exod 6:6)
Arguing this as proof that the combination “armcortex” had no trademark significance. The Respondent further observed:
So [the domain name is] a word symbolizing power and a word symbolizing intelligence through action and movement together is a perfect combination for me which does not make any sense for you
The Panel, unimpressed by these tenuous and strained attempts to wriggle out of his predicament, wasted no time in rejecting the Respondent’s arguments.
In the end, Arm walked away with a resounding victory and setting down a warning against future abuses of its intellectual property.
Another salutary lesson for all you cybersquatters out there: be careful what domain name you pick, or you might just get burned. And next time, leave the Bible out of it.
When confronted with challenging domain disputes, you can depend on Com Laude’s seasoned experts with well over 25 years of experience under their belts to advise you through these difficult cases. If you have a thorny domain dispute of your own, don’t hesitate to contact me.