The Complainant is International Business Machines Corporation of Armonk, New York, United States of America (“United States”), internally represented.
The Respondent is Ran Yossefi, ProcuRX of Tel Aviv, Israel. 2. The Domain Names and Registrars
The Disputed Domain Names , and are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 26, 2016. On October 27, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On October 27, 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 Center verified that 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 4, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 24, 2016. The Respondent did not submit any response by November 24, 2016. Accordingly, the Center notified the Respondent’s default on November 25, 2016. The Respondent submitted a late Response on November 26, 2016.
The Center appointed Anders Janson as the sole panelist in this matter on December 1, 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.
The Panel has not received any indication for the cause of the late Response. In accordance with the Rules, paragraph 14 a), the Panel shall proceed to decision on the Complaint, where the Respondent has not complied with the time periods established within the Rules, since no exceptional circumstances is at hand. 4. Factual Background
The Complainant is International Business Machines Corporation. The Complainant acquired Strongloop Inc. in September 2015, and the company is a wholly owned subsidiary of the Complainant.
Strongloop Inc. is the holder of the registered trademark STRONGLOOP in the United States, United States Patent and Trademark Office (“USPTO”) trademark registration 4,528,325 (wordmark), registered on May 13, 2014.
The Disputed Domain Names were originally registered on October 8, 2014. 5. Parties’ Contentions A. Complainant
The Complainant wholly owns its subsidiary Strongloop Inc., the holder of the relevant trademark. According to previous UDRP decisions, such a parent company may be considered to have rights in the trademark (see Grupo Televisa S.A de C.V Estrategia Televisa S.A de C.V Videoserpel Ltd. v. Party Night,WIPO Case No. D2003-0796). Thus, the Complainant has legal rights to the trademark “Strongloop”.
The Disputed Domain Names are identical or confusingly similar to the Complainant’s registered trademark. All three of the Disputed Domain Names consist of the Complainant’s trademark STRONGLOOP, which in turn is followed by the generic Top-Level Domains (“gTLDs”) “.biz”, “.info”, and “.net” respectively. The characterizing part of the Disputed Domain Names is solely defined by the Complainant’s STRONGLOOP trademark.
The Respondent has no rights or legitimate interests in respect to the Disputed Domain Names. The Respondent has not been licensed, contracted or otherwise permitted by the Complainant in any way to use the STRONGLOOP mark or to apply for any domain name incorporating the STRONGLOOP mark, nor has the Complainant acquiesced in any way to such use or application of the STRONGLOOP mark by the Respondent. The Respondent has no relationship at all with the Complainant or Strongloop Inc., being neither a reseller nor a business partner. There is no evidence that STRONGLOOP is the name of the Respondent’s corporate entity or that the Respondent has a connection to any association whose company name includes the term “strongloop”. Furthermore, there is no evidence that the Respondent is using or plans to use the STRONGLOOP mark or the domain names incorporating the STRONGLOOP mark for a bona fide offering of goods or services.
It was publically announced that Complainant acquired Strongloop Inc. on the IBM News room on September 10, 2015. The acquisition attracted publicity in other media, such as Reuters and Fortune.
The Respondent was aware of the STRONGLOOP trademark at the time of the registration of the Disputed Domain Names. The Respondent replied to a cease-and-desist letter from the Complainant on August 23, 2016, where the Respondent did not address the request to disable and transfer the Disputed Domain Names. Instead, the Respondent stated that he was in negotiations with Strongloop Inc.
Upon receiving confirmation that no business relationship or negotiations for a business relationship ever existed between Strongloop Inc. and the Respondent, the Complainant sent the Respondent a final cease-and-desist letter on 26 August 2016. The Respondent failed to respond to this letter.
Furthermore, the Respondent is using the Disputed Domain Names in bad faith. Specifically, the Respondent is using the Disputed Domain Names as commercially “parked” pages administered through the Registrar, GoDaddy. The Disputed Domain Names resolve to commercially “parked” pages. The Registrar has set up these parked pages with “sponsored”, i.e. paid, advertisements for various products and services. Those advertisements are pay-per-click links that redirect visitors to ads for various products and services including programs and tools to build software and applications. GoDaddy offers a program called “CashParking” where the holder of a domain name may park a domain name, allow GoDaddy to set up pay-per-click advertisments, and the domain name holder subsequently shares in the revenues generated.
The Respondent’s use of the Disputed Domain Names and the linked websites to promote links to pay-per-click advertisements that redirect to software and application building products and other products and services is clear evidence of bad faith because it creates a likelihood of confusion with the Complainant’s STRONGLOOP mark as to the source, sponsorship, or endorsement of the Respondent’s website.
The Complainant therefore affirms that:
- there is no evidence of the Respondent’s use of, or demonstrable preparations to use, the Disputed Domain Names or names corresponding to the Disputed Domain Names in connection with any bona fide offering of goods or services;
- the Respondent has not been commonly known by the Disputed Domain Names;
- the Respondent is not making a legitimate non-commercial or fair use of the Disputed Domain Names.
Considering the above, the Disputed Domain Names were registered and are being used in bad faith.
For the reasons described above, the Complainant requests that , and are transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions in due time. The Respondent submitted a late Response. The relevance of this submission is discussed further below. 6. Discussion and Findings
Given the Complaint and evidence submitted by the Complainant and the Respondent’s failure to file a Response in due time, the Panel accepts as true the reasonable contentions of the Complainant. According to paragraph 14(a) of the Rules, the decision shall be made on the Complaint, and the Complainant must establish that it is entitled to a transfer of the Disputed Domain Names.
According to Paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(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 Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant has established that the Complainant is the parent company to Strongloop Inc., which holds the trademark rights to the STRONGLOOP mark, with reference to the proof of registration submitted by the Complainant.
Considering previous WIPO UDRP decisions, it is further established that the Complainant, as the parent company to the registered holder of the trademark, does have rights to STRONGLOOP in accordance with paragraph 4(a)(i) of the Policy..
The Disputed Domain Names are , and and they contain the Complainant’s trademark STRONGLOOP in its entirety with the added generic and functional gTLDs “.biz”, “.info” and “.net”. As established in many previous UDRP decisions the later should be disregarded and the Disputed Domain Names are therefore identical to the Complainant’s registered trademark.
Accordingly, the Panel finds that the Complainant has satisfied the requirements under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant has established its rights to the registered trademark STRONGLOOP.
The Complainant has asserted that the Respondent has not been licensed, contracted, or otherwise permitted by the Complainant in any way to use the trademark, or to apply for any domain name incorporating the STRONGLOOP mark, nor has any permission been granted to the Respondent to register the Disputed Domain Names. Further, the Complainant has stated that there is a likelihood that the Respondent is receiving commercial gain by commercially parking the Disputed Domain Names with the Registrar containing sponsored pay-per-click advertisement links for various products and services, including programs and tools to build software and applications.
The Respondent has not in due time replied to the Complainant’s contentions, which leaves the Panel to decide the case on the basis of the available record and the evidence provided by the Complainant. In any event, the Panel notes that the Respondent has submitted mere unsupported assertions, which the Panel finds unconvincing in the overall circumstances of this case.
The Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the Disputed Domain Names.
Accordingly, the Panel finds that the Complainant has satisfied the requirements under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel finds that the Respondent in email correspondence with the Complainant claimed he had been discussing a cooperation with the registered holder of the company. From the emails submitted by the Complainant, the Panel does not find that the Respondent, as claimed by the Complainant, has claimed that he registered the Disputed Domain Names due to that alleged discussion. Instead, the Panel finds that the Respondent stated nothing at all about the registrations or the cause for them. The email in question was an answer to a cease-and-desist letter concerning the Disputed Domain Names.
In the submitted email from the Respondent to the Complainant, it is evident that the Respondent was well aware of the company named Strongloop Inc. As a holder of the trade name, the Complainant’s subsidiary has at least an indirect right to the STRONGLOOP trademark within the field of the subsidiary’s business. Considering his alleged discussion with Strongloop Inc., it is therefore highly unlikely that the Respondent was unaware of the Complainant’s trademark or the goodwill associated with it, when registering the Disputed Domain Names on October 8, 2014.
The Respondent does not in any way claim he has legitimate rights or interests in the Disputed Domain Names in the submitted email. It is further established that the Respondent had not been granted any right to register the Disputed Domain Names. The Respondent does not even imply that the alleged discussions in any way meant he had been granted a right to register the Disputed Domain Names in the said email.
This Panel finds that the Disputed Domain Names were registered in bad faith. The Panel finds that by using the Disputed Domain Names, the Respondent has attempted to attract Internet users to websites, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web-site. The Panel finds that Complainant has established that it is more likely than not that the Respondent is gaining commercially by this conduct.
Having considered the case file, the Panel finds on the balance that the Disputed Domain Names were registered and 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 Names , and be transferred to the Complainant.
Anders Janson
Sole Panelist
Date: December 19, 2016
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