The Complainant is International Business Machines Corporation of Armonk, New York, United States of America (“United States”) represented by Devon DiSiena, United States.
The Respondent is Jonas Schlichtenbrede, ICT OHG of Siegburg, Germany. 2. The Domain Name and Registrar
The disputed domain name is registered with united-domains AG (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on November 17, 2016. On November 18, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 21, 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 and that German is the language of the registration agreement. On November 23, 2016, the Complainant requested that English be the language of the proceeding. The Respondent made no submission in this regard.
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 in both English and German of the Complaint, and the proceedings commenced on November 29, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 19, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 20, 2016.
The Respondent submitted informal communication to the Complainant on December 21, 2016 in English.
On December 22, 2016, the Complainant requested the suspension of the proceeding, which was subsequently suspended on December 23, 2016 by the Center. Following the Complainant’s request of reinstitution of the proceeding of January 9, 2017, the Center reinstituted the proceeding on January 10, 2017.
The Center appointed Peter Wild as the sole panelist in this matter on January 12, 2017. 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. 4. Factual Background
The Complainant’s subsidiary Softlayer Technologies Inc. (Softlayer) owns a number of United States trademark registrations consisting of or containing the element SOFTLAYER, registered as early as 2009. Such trademarks in the United States are: United States trademark registration No. 3,714, 244, registered on November 24, 2009 and United States trademark registration No. 3,733,335, registered on January 5, 2010. Softlayer is a cloud computing infrastructure company.
The Respondent registered the disputed domain name on August 29, 2016. The disputed domain name resolves to a Registrar parking page. 5. Parties’ Contentions A. Complainant
According to the Complainant, it acquired SoftLayer in July of 2013 which was publicly announced on July 8, 2013. The Complainant claims that such announcement received worldwide attention. The Complainant contends that SoftLayer is a wholly owned subsidiary of the Complainant and for that reason, the Complainant must be accepted as an owner of relevant rights based on the subsidiary’s trademarks. SoftLayer owns and has owned two trademark registrations for SOFTLAYER in the United States. Moreover, on January 7, 2015, Complainant announced the opening of its first cloud data center with SoftLayer in Germany.
The Complainant asserts that the disputed domain name is identical or confusingly similar to Complainant’s trademark rights and that the Respondent has no rights or legitimate interests to the domain name.
Finally, the Complainant claims that the registration and use of the disputed domain name were made in bad faith and requests transfer. B. Respondent
The Respondent did not formally reply to the Complainant’s contentions. In an informal communication of December 21, 2016, the Respondent stated that they were considering to use the disputed domain name in connection with Softlayer offerings for their cloud services and asking whether the Complainant was interested in the disputed domain name. 6. Discussion and Findings A. Language of the proceeding
The Registration Agreement regarding the disputed domain name is in German. The Complaint was filed in English and, upon a communication from the Center’s, the Complainant submitted a request that the proceeding be conducted in English. The Complainant did not file a German translation.
The Respondent submitted an email communication in English on December 21, 2016 and did not object that English be the language of the proceeding. This Panel is therefore satisfied that reasons for using English are justified and determines that in accordance with paragraph 11(a) of the Rules the language of the proceeding to be English. B. Identical or Confusingly Similar
The disputed domain name incorporates SOFTLAYER, which is identical to the Complainant’s subsidiary’s trademark. The generic Top-Level Domain (“gTLD”) “.services” has no influence on the overall appearance. The fact that the Complainant’s subsidiary holds the trademarks is sufficient for the Complainant to establish rights in said trademark as the Complainant showed sufficient evidence that the trademark owner is a wholly owned subsidiary of the Complainant. Previous Panels decided that in such cases the Complainant is considered to have rights in a trademark under the UDRP. See Toyota Motor Sales U.S.A. Inc. v. J. Alexis Productions,WIPO Case No. D2003-0624 and paragraph 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
Therefore the Panel is satisfied that the first element of the Policy is met. C. Rights or Legitimate Interests
The Complainant must establish a prima facie case that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. Once such prima facie case is made, the Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.
The Respondent is not known under the disputed domain name and claims no connection with or authorization from the Complainant. The Respondent, in his informal communication with the Complainant of December 21, 2016 did not claim to have legitimate interests or rights or to be known by the disputed domain name. He stated: “We think about using SoftLayer offerings (focus on IaaS) for some of our cloud services. This domain will be useful for this purpose to show that these services are hosted by SoftLayer”. This does not show any rights or legitimate interests in the disputed domain name but rather that the Respondent was fully aware of the Complainant and its services under the brand SoftLayer.
With the evidence on file, this Panel is satisfied that the second element of the Policy is met. D. Registered and Used in Bad Faith
On January 7, 2015, the Complainant issued a press release that it opens a data center under the trademark SOFTLAYER in Germany, one of the Complainant’s more important markets outside the United States.
In his informal communication of December 21, 2016, the Respondent stated that he was planning to use the disputed domain name for services related to or using the Complainant’s services and infrastructure known under the brand SoftLayer. With this, the Respondent admits that he was well aware of the Complainant’s trademark and services when he registered the disputed domain name. The Panel therefore decided that the disputed domain name was registered in bad faith.
It is also clear for this Panel in vewi of the Respondent’s informal response that the Respondent was planning to use the disputed domain name for commercial gain which targeting the Complainant’s services. By using the Complainant’s established trademark in a domain name, the Respondent tries to attract clients for commercial gain Moreover, although the domain name currently resolves to a Registrar parking page, it has been acknowledged that passive holding may amount to the domain name being used in bad faith.
Finally, the Complainant sent a cease-and-desist letter to the Respondent on September 9, 2016 and later a reminder asking the Respondent to disable and transfer the domain names back to the Complainant. The Respondent failed to reply in a timely manner. The Respondent replied only after the Response due date had passed. In his informal communication, the Respondent stated that he planned to use the disputed domain name for services rendered by using the Complainant’s infrastructure which it runs under the trademark SoftLayer.
For all these reasons, the Panel finds the third element of the Policy fulfilled. 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.
Peter Wild
Sole Panelist
Date: January 18, 2017
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