Battle between Intel and Pentium Fund moves to federal court

On May 12 2009 Pentium Fund Ltd (PFL) filed a complaint for declaratory relief against Intel Corporation in the US District Court for the Eastern District of Virginia to stop the transfer of the domain names 'pentiumfund.com', 'pentiumfund.net' and 'pentiumfund.org' from PFL to Intel. This filing came after a World Intellectual Property Organization (WIPO) three-member panel ordered the transfer of the domain names in an April 19 2009 decision issued under the Uniform Domain Name Dispute Resolution Policy (UDRP).

Intel has manufactured microprocessors since 1971. It introduced the first branded processor - Pentium - in 1992. Intel holds over 500 registrations throughout the world for its PENTIUM mark and owns 84 Pentium-based domain names. For years, Intel's annual sales attributable to its Pentium processors have been well over a billion dollars. Intel spends hundreds of millions of dollars each year advertising its Pentium processors.

PFL is a world renowned hedge fund and financial services company with its principal place of business in Geneva, Switzerland. It has been in business for 30 years. PFL registered the domain name 'pentiumfund.com' in May 1999, and the domain names 'pentiumfund.org' and 'pentiumfund.net' in October 2006.

On October 21 2003 PFL filed a Community Trademark application for the mark PENTIUM FUND for various business and financial services in Classes 35, 36, 38, and 41 of the Nice Classification. Intel opposed the application after it was published in November 2004. The opposition remains pending.

In February 2009 Intel filed a complaint with WIPO under the UDRP and requested the transfer of the domain names 'pentiumfund.com', 'pentiumfund.net' and 'pentiumfund.org'. PFL filed a response to the complaint.

The three-member WIPO panel found in favour of Intel and ordered the transfer of the domain names. Specifically, the panel held as follows:

Intel had established rights in the PENTIUM mark and the domain names were confusingly similar to the mark.
PFL did not use the domain names in connection with a good-faith offering of goods or services. Although PFL alleged to provide good-faith services, it offered no evidence of the alleged services to the panel. The printouts that PFL provided from the websites attached to the domain names at issue showed only links to financial services companies and to third parties selling computers built on Intel’s processors. Offering links to third-party pages does not constitute good-faith use of a domain name.
PFL registered and used the domain names in bad faith. It clearly knew of Intel’s PENTIUM mark prior to registering the domain names 'pentiumfund.org' and 'pentiumfund.net' given Intel’s opposition to PFL’s application for PENTIUM FUND. It was also more likely than not that PFL knew of the PENTIUM mark in May 1999 when it registered 'pentiumfund.com', since Intel’s PENTIUM mark is well known. Accordingly, PFL registered the domain names with an intent to attract internet users to its website for financial gain. PFL uses its domain names in bad faith by collecting pay-per-click advertising revenue.

PFL had 30 days to file for judicial review of the panel’s decision. It filed a declaratory judgment action in the jurisdiction consented to by the parties and requested that the district court stop the transfer of the domain names. According to the complaint, PFL’s registration and use of the domain names was not unlawful under the Lanham Act, and PFL had no bad-faith intent when it registered the domain name. The name Pentium was selected because the owner is the fifth child in his family and the Pentium Fund is the fifth fund started by PFL. In addition to its request that the domain names not be transferred, PFL asked for its costs and attorneys' fees. The case is pending.

Intel also filed UDRP complaints against PFL’s domain names 'pentiumgroup.net' and 'pentiumgroup.com'. Decisions were issued in those cases on May 6 2009 (see Intel Corporation v Pentium Fund (Case D2009-0272) and Intel Corporation v The Pentium Group (Case D2009-0273). PFL had until June 5 2009 to file for judicial review of those decisions, but it seems that it did not do so.

Leigh Ann Lindquist, Sughrue Mion PLLC, Washington DC

Battle between Intel and Pentium Fund moves to federal court

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