The Complainant is International Business Machines Corporation of the United States of America, represented by Ravindra Persaud, the United States of America.
The Respondent is Lin Zong Xing of China. 2. The Domain Name and Registrar
The disputed domain name is registered with HiChina Zhicheng Technology Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on February 13, 2018. On February 14, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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.
On February 24, 2018, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On February 26, 2018, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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 March 6, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 26, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 27, 2018.
The Center appointed Jonathan Agmon as the sole panelist in this matter on April 9, 2018. 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 is one of the most well-known multinational technology companies in the world. The Complainant was incorporated on June 16, 1911 and has been using the trademark “IBM” since 1924. Through the years, the Complainant used the IBM trademark for a variety of products, from punch machines in the 1920’s, through type writers in the 1960’s to computer software and hardware in the present days.
In 2017, the Complainant’s name – IBM – was ranked as one of the most familiar brands in the world. The Complainant is also ranked as one of the largest companies in the world. In 2017, the Complainant’s IBM trademark was valued at USD 102 billion.
The Complainant spends over USD 1 billion in marketing goods and services that carry the IBM trademark and is investing efforts in maintaining its rights in the IBM trademark.
The Complainant owns multiple trademark registrations for IBM in 170 countries around the world for several decades and for broad range of goods and services, including, although not limited to, information technology related goods and services.
The Complainant is the owner of the following trademark registrations:
- United States trademark registration no. 4,181,289 IBM (design) in International Classes 6, 8, 9, 11, 14, 16, 18, 20, 21, 22, 24, 25, 26, 28, 30, 35 and 41, registered on July 31, 2012.
- United States trademark registration no. 3,002,164 IBM (design) in International Class 9, registered on September 27, 2005.
- United States trademark registration no. 2,183,815 IBM (design) in International Classes 1 and 16, registered on August 25, 1998.
- United States trademark registration no. 1,696,454 IBM (design) in International Class 36, registered on June 23, 1992.
- United States trademark registration no. 1,694,814 IBM in International Class 36, registered on June 16, 1992.
- United States trademark registration no. 1,243,930 in International Class 42, registered on June 28, 1983.
- United States trademark registration no. 1,205,090 IBM (design) in International Classes 1, 7, 9, 16, 37, and 41, registered on August 17, 1982.
- United States trademark registration no. 1,058,803 IBM in International Classes 1, 9, 16, 37, 41 and 42, registered on February 15, 1977.
- United States trademark registration no. 640,606 IBM in International Class 9, registered on January 11, 1957.
The Complainant is also the owner of the following Chinese trademark registrations:
- China trademark registration no. 5,744,987 IBM (design) in International Class 1, registered on December 7, 2009.
- China trademark registration no. 5,744,986 IBM (design) in International Class 9, registered on September 14, 2009.
- China trademark registration no. 5,744,985 IBM (design) in International Class14, registered on October 7, 2009.
- China trademark registration no. 5,744,984 IBM (design) in International Class 16, registered on April 7, 2012.
- China trademark registration no. 5,744,983 IBM (design) in International Class 18, registered on November 21, 2009
- China trademark registration no. 5,744,982 IBM (design) in International Class 21, registered on October 14, 2009.
- China trademark registration no. 5,744,981 IBM (design) in International Class 25, registered on December 14, 2009.
- China trademark registration no. 5,744,980 IBM (design) in International Class 28, registered on December 7, 2009
Complainant also owns trademark registrations for “SAMETIME” in many countries around the world for a broad range of goods and services, including, although not limited to, information technology related goods and services. More particularly, the Complainant owns the following trademark registration:
- United States trademark registration no. 2,376,424 SAMETIME in International Classes 9 and 35, registered on August 15, 2000.
Additionally, the Complainant owns the following Chinese trademark registration:
- Registration no. 5,505,341 Sametime in International Class 9, registered on July 14, 2009.
The Complainant sent the Respondent a cease and desist letter. The Respondent responded with a proposal to sell to the Complainant the disputed domain name for USD 5,000 and argued that other companies bought from him domain names.
According to a reverse WhoIs search, the Respondent owns over 1,000 domain names.
The disputed domain name resolved to a webpage that offered services under the IBM trademark. After the cease and desist letter sent by the Complainant, it resolved to a webpage offering the sale of the disputed domain name. Currently it resolves to a non-active page, which merely offers the disputed domain name for sale. 5. Parties’ Contentions A. Complainant
The Complainant argues that the disputed domain name is confusingly similar to trademarks in which it has rights: IBM and SAMETIME.
The Complainant argues that the Respondent has no right or legitimate interests in the disputed domain names. According to the Complainant, The Respondent has not been licensed, contracted or otherwise permitted by the Complainant in any way to use the “IBM” and “SAMETIME” trademarks
The Complainant argues that the Respondent registered the disputed domain name in bad faith. According to the Complainant, the Respondent has actively used the disputed domain name containing the IBM Trademarks for commercial gains.
The Complainant further argues that the Respondent registered the disputed domain name to sell it to the Complainant for USD 5,000. Such conduct, the Complainant argues, constitutes bad faith on the part of the Respondent.
The Complainant argues that the Respondent has registered over 1,000 domain names with well-known trademarks and claims that this is an indication of the Respondents bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 11 of the Rules provides that:
“(a) 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 language of the Registration Agreement for the disputed domain name is Chinese, as confirmed by the Registrar in its verification email to the Center of February 22, 2018.
The Complainant requested that the language of the proceeding be English.
The Respondent did not respond.
The Panel cites the following with approval:
“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (see Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004).
The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of the proceeding:
(i) The disputed domain name consists of Latin letters, rather than Chinese characters; the Respondent has registered more than 1,000 other domain names which contain Latin characters and English words.
(ii) The Respondent used the English language in the website under the disputed domain name;
(iii) The Complainant may be unduly disadvantaged by having to conduct the proceeding in the Chinese language;
(iv) The Respondent did not object to the Complainant’s request that English be the language of the proceeding.
Upon considering the above, the Panel determines that English be the language of the proceeding. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. As detailed above, the Complainant is the owner of multiple trademarks for IBM and SAMETIME in the United States of America and China. Further, “ibmsametime” is identical to an instant messaging product of the Complainant.
The disputed domain name integrates the Complainant’s trademarks IBM and SAMETIME in their entirety.
According to WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.
In the present case, the combination of “ibm” and “sametime” is identical to the Complainant’s product IBM Sametime. Therefore, this combination does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant’s trademarks. See Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110; Jack Wolfskin Ausrüstung für Draussen GmbH & Co. KGaA v. Huang Yan Jin,WIPO Case No. D2012-0128; Jack Wolfskin Ausrüstung für Draussen GmbH & Co. KGaA v. lin feifang,WIPO Case No. D2012-1042. See also Bayerische Motoren Werke AG v. RC a/k/a Sami Salem,WIPO Case No. D2012-0366; Bayerische Motoren Werke AG v. Sabri Hammad,WIPO Case No. D2007-0675; and Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787.
The addition of the generic Top-Level Domain (“gTLD”) “.com” to the disputed domain name is without significance in the present case since the use of a gTLD is technically required to operate a domain name and does not avoid confusing similarity (see F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451, and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name. WIPO Overview 3.0, section 2.1.
In the present case, the Complainant has demonstrated a prima facie case that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests.
The Panel finds that the Complainant has established a prima facie case in this regard, inter alia, since the Complainant has not licensed or otherwise permitted the Respondent to use the Complainant’s trademarks IBM and SAMETIME, or a variation thereof and the evidence presented indicates that the Respondent is not engaged in a bona fide offering of goods and services. Notably, the goods and services previously for sale on the Respondent’s website, while clearly unauthorized by the Complainant, sought to take unfair advantage of the Complainant’s trademarks.
The Respondent has not submitted any Response to the Complaint and did not provide any explanation or evidence to show any rights or legitimate interests in the disputed domain name sufficient to rebut the Complainant’s prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.
The Complainant has submitted evidence which shows that the Respondent registered the disputed domain name long after the Complainant registered its trademark. According to the evidence filed by the Complainant, it has owned a registration for the IBM trademark at least since 1957 and for the SAMETIME trademark since 2000. In view of the evidence filed by the Complainant, and the widespread use of the IBM and SAMETIME trademarks, it is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (see Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
Furthermore, the disputed domain name includes the Complainant’s trademarks in their entirety with the terms “ibm” and “sametime”. Previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (see E, Inc v. Triple E Holdings Limited,WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.
The Respondent has been using the disputed domain name to promote the sale of goods and services with the Complainant’s trademarks IBM and SAMETIME, while using the Complainant’s name on the website under the disputed domain name. The Respondent’s response to a cease and desist letter, sent by the Complainant, was a proposal to sell the disputed domain name for USD 5,000 along with the explanation that plenty of companies bought domain names from him. Thereafter, the Respondent offered the disputed domain name for sale on the website. Furthermore, the Respondent owns over 1,000 domain names, most of which contain different third party brands. The Respondent’s behavior is clear evidence that the Respondent registered and is using the disputed domain name with knowledge of the Complainant and the Complainant’s trademarks, and indicates that the Respondent’s primary intent with respect to the disputed domain name is to trade off its value. Such actions by the Respondent constitute clear indications of bad faith registration and use of the disputed domain name. See Herbalife International, Inc. v. Surinder S. Farmaha,WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the Complainant’s trademark registration amounts to bad faith”.
The Panel also finds that the evidence provided by the Complainant shows that the Respondent’s attempt to attract, for commercial gain, Internet users to its website with the intent to create a likelihood of confusion with the Complainant’s trademarks and its affiliation with the Respondent’s website falls under paragraph 4(b)(iv) of the Policy.
Based on the evidence presented to the Panel, including the registration of the disputed domain name long after the registration of the Complainant’s marks, the confusing similarity between the disputed domain name and the Complainant’s marks, and the Respondent’s use of the disputed domain name, the Respondent’s response to the cease and desist letter and the fact that over 1,000 domain names were registered under the Respondent’s name, the Panel draws the inference that the disputed domain name was registered and is being used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy. 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.
Jonathan Agmon
Sole Panelist
Date: April 23, 2018
Full & Egal Universal Law Academy