The Complainant is International Business Machines Corporation of Armonk, New York, United States of America (the "United States"), represented internally.
The Respondent is Artis Stroy LTD of Moscow, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name is registered with RU-CENTER-MSK (Regional Network Information Center, JSC dba RU-CENTER) (the "Registrar"). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on August 17, 2016. On August 18, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 19, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Registrar informed the Center that the language of the registration agreement for the disputed domain name was Russian. On August 22, 2016, the Center sent An email communication to the parties in both English and Russian, regarding the language of the proceeding. On August 31, 2016, the Complainant filed an amended Complaint and confirmed its request the language of the proceeding to be English. The Respondent did not make any submissions regarding the language of the proceeding.
The Center verified that the amended 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 and 4, the Center formally notified the Respondent of the Complaint in both English and Russian, and the proceedings commenced on September 2, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 22, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default in both English and Russian on September 26, 2016.
The Center appointed Assen Alexiev as the sole panelist in this matter on October 10, 2016. 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.
In respect of the language of the proceeding, the Panel notes the following. According to the information provided by the Registrar, the language of the registration agreement for the disputed domain name is Russian. Under paragraph 11 of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
The Complainant requests that the proceeding be held in English. In support of its request, the Complainant points out that the disputed domain name contains the ordinary English word "parts" and advertises alleged IBM parts for sale and post-warranty service. According to the Complainant, this shows that the Respondent had apparent and sufficient facility with English. The Complainant also submits that it would be unfairly disadvantaged by being forced to translate the Complaint into and continue with the proceedings in Russian.
The Respondent has not rejected the Complainant's request and has not expressed any preference as to the language of the proceeding. The Center has sent all its messages to the Respondent in both English and Russian and has informed the Parties that it will accept a Response in either English or Russian.
In these circumstances, it appears to the Panel that rendering this decision in English will be fair and efficient and will not put either of the Parties at a disadvantage. Therefore, in exercise of its powers under paragraph 11 of the Rules, the Panel decides that the language of this administrative proceeding will be English. At the same time, the Panel will review and take into account the relevant evidence that is available in this case in either Russian or English. 4. Factual Background
The Complainant is a leading manufacturer 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 on February 14, 1924, and has been offering products under the IBM trademark ever since. In 2016, the Complainant was ranked the 31st largest firm in the United States by Fortune and ranked the 10th most valuable global brand by BrandZ. In 2015, Complainant was named the 5th best global brand by Interbrand.
The Complainant is the owner of the following trademark registrations in the United States for IBM (the "IBM trademark"):
- the combined trademark IBM with registration No. 4,181,289, registered in the United States on July 31, 2012 for goods and services in International Classes 6, 8, 9, 11, 14, 16, 18, 20, 21, 22, 24, 25, 26, 28, 30, 35 and 41;
- the combined trademark IBM with registration No. 3,002,164, registered in the United States on September 27, 2005 for goods in International Class 9;
- the combined trademark IBM with registration No. 2,183,815, registered in the United States on August 25, 1998 for goods in International Class 16;
- the combined trademark IBM with registration No. 1,696,454, registered in the United States on June 23, 1992 for services in International Class 36;
- the word trademark IBM with registration No. 1,694,814, registered in the United States on June 16, 1992 for services in International Class 36;
- the word trademark IBM with registration No. 1,243,930, registered in the United States on June 28, 1983 for services in International Class 42;
- the combined trademark IBM with registration No. 1,205,090, registered in the United States on August 17, 1982 for goods and services in International Classes 1, 7, 9, 16, 37 and 41; and
- the word trademark IBM with registration No. 1,058,803, registered in the United States on February 15, 1977 for goods and services in International Classes 1, 9, 16, 37, 41 and 42.
The disputed domain name was registered on November 30, 2015.
The website at the disputed domain name offers post warranty services and spare parts for IBM products. 5. Parties' Contentions A. Complainant
The Complainant contends that as a result of the high quality of goods and services it has provided to its customers for over 100 years, and its reputation as one of the premier manufacturers of computer and computer related goods and services throughout the world, the Complainant's name and the IBM trademark are famous and valuable assets. The Complainant spends over USD 1 billion marketing its goods and services globally, using the IBM trademark, and has undertaken extensive efforts to protect its name and enforce the IBM trademark.
According to the Complainant, the disputed domain name is identical or confusingly similar to the IBM trademark in which the Complainant has rights, as it incorporates this trademark in its entirety followed by the word "parts" and the generic TLD ".biz". The use of the word "parts" creates a likelihood of confusion that the disputed domain name is associated with the Complainant's products and services.
The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not been licensed or otherwise permitted by the Complainant to use the IBM trademark or to apply for any domain name incorporating it, and has not acquiesced to such use of the IBM trademark by the Respondent. There is no evidence that the Respondent is using the IBM trademark or the disputed domain name for a bona fide offering of goods or services, and IBM is not the name of the Respondent's corporate entity.
The Complainant contends that the disputed domain name was registered and is being used in bad faith. The Respondent was well aware of the Complainant's IBM trademark at the time when it registered the disputed domain name in 2015. On March 24, 2016, the Complainant sent a cease and desist letter to the Respondent asking it to transfer the disputed domain name to the Complainant, to which letter the Respondent failed to reply. On April 13, 2016, the Complainant sent a second cease and desist letter to the Respondent, to which the Respondent again failed to reply.
The Respondent is actively using the disputed domain name for commercial gain. The website at the disputed domain name currently advertises alleged IBM parts for sale and post-warranty service from the Complainant. The Respondent intentionally registered the disputed domain name containing the IBM trademark to attract visitors to its website and to solicit business from third parties which will prevent the Complainant from reflecting its trademark in a corresponding domain name and disrupt the Complainant's business. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the Respondent has registered and is using the disputed domain name in bad faith.
In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.
By Rules, paragraph 5(b)(i), it is expected of a respondent to: "[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…" In the event of a default, under Rules, paragraph 14(b): "…the Panel shall draw such inferences therefrom as it considers appropriate."
As stated by the UDRP panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy's Antiques,WIPO Case No. D2000-0004: "Here, the potential evidence of good faith registration and use was in respondent's control. Respondent's failure to present any such evidence or to deny complainant's allegations allows an inference that the evidence would not have been favorable to respondent." As stated by the UDRP panel in Viacom International Inc. v. Ir Suryani,WIPO Case No. D2001-1443: "Since the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, this Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant […]. In the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended for factual and legal conclusions as proven by such evidence."
In this administrative proceeding, the Respondent's default entitles the Panel to conclude that the Respondent has no arguments or evidence to rebut the reasonable assertions of the Complainant. The Panel has to take its decision on the basis of the statements and documents submitted by the Complainant and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable. A. Identical or Confusingly Similar
The Complainant has provided evidence and has thus established its rights in the IBM trademark.
The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain ("gTLD") section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the ".biz" gTLD part of the disputed domain name.
In view of the above, the relevant section of the disputed domain name is "ibmparts". This section contains two distinguishable elements – "ibm" and "parts". The "ibm" element is identical to the word element of the IBM trademark, while the "parts" element is a generic word with no distinctiveness. The combination of these two elements is likely to appear to Internet users as representing an online location connected to the Complainant and related to spare parts for IBM products. Therefore, the Panel finds that the disputed domain name is confusingly similar to the IBM trademark in which the Complainant has rights. B. Rights or Legitimate Interests
The Complainant is required to make at least a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name. Once the Complainant makes such a showing, the Respondent may provide evidence to demonstrate that it has rights or legitimate interests in the disputed domain name. The burden of proof, however, always remains on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
The Complainant has contended that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Respondent is not commonly known by the IBM trademark and has not been authorized by the Complainant to use it. The Respondent has not carried out a bona fide activity through the disputed domain name, but has used the disputed domain name to illegitimately generate traffic to its website which offers spare parts and post warranty services for IBM products. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
There is no evidence in the available record that the Respondent is commonly known by the disputed domain name, and the Respondent has not denied the contentions of the Complainant or made any allegations relevant to the issue of rights and legitimate interests.
The disputed domain name incorporates the IBM trademark of the Complainant in its entirety and it is its distinctive element. The Respondent's website associated to the disputed domain name offers spare parts and services for the products of the Complainant. This satisfies the Panel that the Respondent must have been aware of the IBM trademark when it registered the disputed domain name, and that it chose to target the IBM trademark because of the likelihood that it will attract traffic to the Respondent's website.
As discussed in paragraph 2.3 of the WIPO Overview 2.0, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in a domain name if its use meets certain requirements, normally including the actual offering of goods and services at issue, the use of the website to sell only the trademarked goods, and the site's accurately and prominently disclosing the registrant's relationship with the trademark holder. In the present case, the Respondent has not presented any evidence, nor is there indication in the record that the Respondent is actually offering the products and services mentioned on its website, and the website does not disclose the absence of relationship between the Parties. Taking this into account, the Panel is of the opinion that the application of the so called Oki Data principles (see Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903) to the circumstances of the present case does not establish rights and legitimate interests of the Respondent in the disputed domain name.
Therefore, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
"(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."
The provisions of paragraph 4(b) of the Policy are without limitation, and bad faith registration and use may be found on grounds otherwise satisfactory to the Panel.
As discussed in section 6.B above, the facts of this case satisfy the Panel that the disputed domain name was registered with knowledge of the well known IBM trademark. The website associated with the disputed domain name has offered Internet users spare parts and services for the products of the Complainant without being recognized by the Complainant as on official source of such products and services. In view of this and in the absence of any arguments or evidence to the contrary by the Respondent, the Panel is prepared to accept that, by registering and using the disputed domain name, the Respondent has intentionally attempted to exploit the goodwill of the Complainant's IBM trademark to attract, for commercial gain, Internet users to the website associated to the disputed domain name by confusing them that this website and the products and services offered on it are related to or approved by the Complainant. This conduct of the Respondent supports a finding that the disputed domain name has been registered and is being used in bad faith.
Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. 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.
Assen Alexiev
Sole Panelist
Date: October 21, 2016
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