The Complainant is International Business Machines Corporation of Armonk, New York, United States of America, represented internally.
The Respondent is Domain Administrator, Rich Premium Limited of Hong Kong, China; c/o WHOIS Limited, Registrant of of Johnsonville, Wellington, New Zealand. 2. The Domain Name and Registrar
The disputed domain name is registered with 1API GmbH (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 14, 2014. On October 15, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 19, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 20, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on the same day.
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” or “UDRP”), 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 October 23, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 12, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 13, 2014.
The Center appointed Susanna H.S. Leong as the sole panelist in this matter on November 24, 2014. 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.
The Panel, having reviewed the case file, noted that the Complainant asserts that it is a famous corporation identified by its trade name “International Business Machines Corporation”, also known by the name abbreviation “IBM”. The Complainant also asserts that its trade name and trademark INTERNATIONAL BUSINESS MACHINES CORPORATION is world-famous and distinctive. Furthermore, the Complainant claims that the disputed domain name consists Chinese characters “国际商用机器公司.中文网” which translates to “International Business Machines Corporation.Chinese net”. Accordingly, the Panel made an order in accordance with paragraphs 10 and 12 of the Rules to request the Complainant to furnish the Panel with further evidence in relation to having trademark rights to the term 国际商用机器公司 or 国际商业机器有限公司 by December 11, 2014. The Respondent was allowed to submit any sur-reply limited to points made in any Complainant’s submissions by December 16, 2014.
The Complainant furnished a Response to the Panel Order to the Center on December 11, 2014. The Respondent did not make any response to the Complainant’s submission. 4. Factual Background
The Complainant is a corporation identified by its trade name “International Business Machines Corporation”, also known by the name abbreviation “IBM”. Tracing its roots to the 1880s, the Complainant is and has been a leading innovator in the design and manufacture of a wide array of products that record, process, communicate, store and retrieve information, including computers and computer hardware, software and accessories. Incorporated on June 16, 1911 as an amalgamation of three previously existing companies, the Complainant officially became International Business Machines Corporation on February 14, 1924. The Complainant has been offering products under the trademark IBM ever since. Furthermore, it is known to its Chinese speaking consumers as “国际商业机器公司”.
In 2013, the Complainant was ranked the 20th largest firm in the United States by Fortune and the fourth best global brand by Interbrand. In 2014, the Complainant was ranked the 16th most admired company by Fortune. The IBM trademark was valued as worth over USD 78.8 billion by Interbrand in 2013.
The disputed domain name was registered on April 28, 2014. 5. Parties’ Contentions A. Complainant
First, the Complainant asserts that the disputed domain name is identical or confusingly similar to its marks. The reasons are summarized as follows:
(1) The trade name and trademark INTERNATIONAL BUSINESS MACHINES CORPORATION is world-famous and distinctive of the Complainant and the Complainant’s goods and services. Furthermore, it is known to its Chinese speaking consumers as “国际商业机器公司”.
(2) It is well established that paragraph 4(a)(i) of the Policy does not require the Complainant to have registered trademark rights. A complainant may rely on an unregistered word, phrase or string of characters, provided that the unregistered mark is and performs the function of a “trademark”. The unregistered mark must perform the function of distinguishing the goods and services of one person in trade from the goods or services of any other person in trade.
(3) In addition to the evidence that the Complainant has already provided in its Complaint, the Complainant submits advertising samples that show its trademark rights in the term 国际商业机器公司. As clearly shown in all three advertisements, the term 国际商业机器公司 performs the function of a trademark by distinguishing the goods and services of the Complainant from the goods or services of any other person in trade.
(4) The disputed domain name consists Chinese characters “国际商用机器公司.中文网” which translates to “International Business Machines Corporation.Chinese net”. Therefore, the characterizing part of the disputed domain name is solely defined by the four words “International Business Machines Corporation”, which are identical to the Complainant’s name and trademark.
Second, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The grounds are summarized as follows:
(1) The Respondent has not been licensed, contracted or otherwise permitted by the Complainant in any way to use the INTERNATIONAL BUSINESS MACHINES CORPORATION trade name and trademark or to apply for any domain name incorporating the INTERNATIONAL BUSINESS MACHINES CORPORATION trade name and trademark, nor has the Complainant acquiesced in any way to such use or application of the INTERNATIONAL BUSINESS MACHINES CORPORATION trade name and trademark by the Respondent.
(2) The Respondent does not belong to a company or association whose company name includes the term “International Business Machines Corporation”.
(3) There is no evidence that the Respondent is using or plans to use the trade name and trademark for a bona fide offering of goods or services.
(4) Therefore, it may be concluded that the Respondent did not use, or made demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with any bona fide offering of goods or services; or has not been commonly known by the disputed domain name; or is not making a legitimate noncommercial or fair use of the disputed domain name.
Third, the Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith. The grounds are summarized as follows:
(1) The Respondent registered and is using the disputed domain name in bad faith.
(2) The disputed domain name has been imitating the legitimate homepage of the Complainant as seen in a screenshot taken on September 25, 2014.
(3) The Respondent is using the IBM trade name and trademark to generate traffic to its website.
(4) The Respondent is using the disputed domain name, which is not affiliated with the Complainant, to deceive the public into thinking that there is some legitimacy to the Respondent’s website because the Respondent’s disputed domain name includes the Complainant’s trade name and trademark INTERNATIONAL BUSINESS MACHINES CORPORATION. Such actions and use of the disputed domain name with “International Business Machines Corporation” constitutes bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must establish that each of the three following elements is satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy clearly states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied in this proceeding.
Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.
On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows: A. Identical or Confusingly Similar
The Complainant has adduced evidence to demonstrate the trade name and trademark INTERNATIONAL BUSINESS MACHINES CORPORATION is world-famous and distinctive of the Complainant and the Complainant’s goods and services. Furthermore, it has adduced evidence to show that it is commonly known to its Chinese speaking consumers as “国际商业机器公司”.
Several UDRP panels have decided that the Policy affords protection not only to those having rights in registered trademarks but also to those having common law rights in their trade or service marks. See Bennett Coleman & Co Ltd v. Steven S Lalwani,WIPO Case No. D2000-0014; SeekAmerica Networks Inc. v. Tariq Masood and Solo Signs,WIPO Case No. D2000-0131. The unregistered mark must perform the function of distinguishing the goods and services of one person in trade from the goods or services of any other person in trade.
In this regard, the Panel finds that the Complainant’s trade name and trademark INTERNATIONAL BUSINESS MACHINES CORPORATION to be world-famous and distinctive of the Complainant and the Complainant’s goods and services. The Panels also finds that through extensive marketing and sales promotion, the Complainant is commonly known to its Chinese speaking consumers as “国际商业机器公司”.
The Panel accepts and finds that the Complainant’s trade name and trademark INTERNATIONAL BUSINESS MACHINES CORPORATION and IBM and its Chinese equivalent 国际商业机器公司 are well known marks in which the Complainant has rights.
In assessing the degree of similarity between the Complainant’s trademark and the disputed domain name, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between the Complainant’s trademark and the disputed domain name is to be considered from the perspective of the average consumer of the goods or services concerned in this case, and the average consumer is the Internet users seeking information about the Complainant’s products or services.
The disputed domain name consists Chinese characters “国际商用机器公司.中文网” which translates to “International Business Machines Corporation.Chinese net”. This is almost identical to the trade name and trade mark 国际商业机器公司 which the Complainant is commonly known as in the Chinese community.
Given the fame and notoriety of the Complainant’s IBM trade name and trademarks, the difference between “国际商用机器公司” and “国际商业机器公司” in term of “商用” and “商业” is insignificant to provide sufficient distinction from the Complainant’s trade name and trademark. Both terms refer to “business” in general. Furthermore, it is also an accepted principle that the addition of suffixes such as “.中文网” which translates to “.Chinese net” being a generic Top-Level Domain (gTLD) is not typically a distinguishing factor.
Bearing in mind the following factors, in particular the distinctive character of the Complainant’s IBM trade name and trademark; the distinctive component of the disputed domain name; and the visual, aural and similarities between them, the Panel therefore finds that the disputed domain name is confusingly similar to the IBM trade name and trademark in which the Complainant has rights.
The Panel finds for the Complainant on the first part of the test. B. Rights or Legitimate Interests
Based on the following reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name:
(1) The Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the term “International Business Machines Corporation” or “IBM” or its Chinese equivalent “国际商业机器公司”;
(2) There was no evidence to show that the Complainant has licensed or otherwise permitted the Respondent to use its trademark or to apply for or use any domain name incorporating the “International Business Machines Corporation” and “IBM” and its Chinese equivalent “国际商业机器公司”;
(3) There is no indication whatsoever that the Respondent is commonly known by the disputed domain name and/or is using the disputed domain name in connection with a bona fide offering of goods or services;
(4) On the contrary, the disputed domain name is currently connected to a website that imitates the legitimate IBM homepage. The Panel finds that the Respondent therefore does not have the right to use INTERNATIONAL BUSINESS MACHINES CORPORATION or IBM or its Chinese equivalent 国际商业机器公司 trade name and marks in the disputed domain name. Such a behaviour on the part of the Respondent clearly shows that it is not using the disputed domain name in connection with a bona fide offering of goods or services and that the Respondent has no rights or legitimate interests in the disputed domain name;
(5) The Complainant and its INTERNATIONAL BUSINESS MACHINES CORPORATION, IBM and its Chinese equivalent 国际商业机器公司 trade name and marks are distinctive, well known and enjoy a high degree of recognition as a result of their fame and notoriety in connection with the Complainant’s goods and services in many countries all over the world, including China. Consequently, in the absence of contrary evidence from the Respondent, the INTERNATIONAL BUSINESS MACHINES CORPORATION, IBM and its Chinese equivalent 国际商业机器公司 trade name and marks are not those that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant.
The Panel notes that the overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the complainant’s contentions. (See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1). Based on the above reasons, the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden of production to the Respondent to produce evidence to rebut this presumption.
According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) [the respondent is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Panel notes that the Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or evidence of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name. The Panel further notes that the Respondent has failed to submit a formal Response to the Complaint filed against it. In particular, the Respondent has failed to make submissions to demonstrate that it has rights or legitimate interests in the disputed domain name.
In accordance with the Rules, paragraph 14, the Panel thus draws such inferences as it considers appropriate, which are that the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent has not adduced evidence of any rights or legitimate interests in the disputed domain name.
The Panel finds for the Complainant on the second part of the test. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:
(i) circumstances indicating that a respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to a complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.
The above circumstances are indicative of registration and use of a domain name in bad faith but they are by no means exhaustive. Evidence of other circumstances adduced before the panel can also constitute registration and use of the domain name in bad faith by a respondent in appropriate cases.
One important consideration in the Panel’s assessment of whether the Respondent has registered and used the disputed domain name in bad faith is prior knowledge on the part of the Respondent of the Complainant’s rights in the trademark concerned. In this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks often transcend national borders. Taking into account the worldwide fame of the Complainant and that its INTERNATIONAL BUSINESS MACHINES CORPORATION, IBM and its Chinese equivalent 国际商业机器公司 trade name and marks are distinctive, well known and enjoys a high degree of recognition as a result of their fame and notoriety in connection with the Complainant’s goods and services in many countries all over the world, including China, the Panel finds that it is highly unlikely that the Respondent would not have had actual notice of the Complainant’s trademark rights at the time of the registration of the disputed domain name.
A simple search on the Internet would reveal the presence of the Complainant’s trademark and domain names. Therefore, the Panel finds that it is not conceivable that the Respondent would not have had actual notice of the Complainant’s trademark rights at the time of the registration of the disputed domain name. Consequently, it would have been pertinent for the Respondent to provide an explanation of its choice in the disputed domain name, failing which the Panel draws the conclusion that the disputed domain name was registered in bad faith with intent to create an impression of an association with the Complainant and its products.
Where the Respondent has chosen to register a disputed domain name that is identical or confusingly similar to the Complainant’s trademark and where the trademark in question has through substantial use acquired worldwide fame, reputation and notoriety, a reasonable conclusion is that the trademark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant. Thus, the Respondent may show that the choice of the disputed domain name was made legitimately and in good faith for the genuine offering of goods or services on the Internet. In this case, there is no evidence that the Respondent has used or intends to use the disputed domain name for purposes of bona fide offering of goods and services over the Internet. On the contrary, the Respondent is using the disputed domain name to connect to a website that imitates the legitimate website of the Complainant. Such behaviour on the part of the Respondent is indicative of bad faith registration and use as per paragraph 4(b)(iv) of the Policy. The Respondent could have explained its choice of the disputed domain name and its subsequent conduct. However, the Respondent did not do so and the Panel was not provided with any plausible explanation.
The Panel finds that the Complainant has adduced evidence and proved that by using a confusingly similar disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website in accordance with paragraph 4(b)(iv) of the Policy. The Panel finds that given the worldwide fame of the Complainant’s INTERNATIONAL BUSINESS MACHINES CORPORATION, IBM and its Chinese equivalent 国际商业机器公司 trade name and marks and a lack of plausible explanation for the choice of incorporating the Complainant’s well-known trademark in the disputed domain name, the conduct of the Respondent in using the disputed domain name to connect to a website which imitates the legitimate website of the Complainant, are certainly relevant factors indicating bad faith registration and use.
Thus, the Panel finds for the Complainant on the third part of the test. 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 disputed domain name be transferred to the Complainant.
Susanna H.S. Leong
Sole Panelist
Date: December 23, 2014
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