The Complainant is International Business Machines Corporation of Armonk, New York, United States of America (“USA”), internally represented.
The Respondent is Huang Zhenlin of Putian, Fujian, China. 2. The Domain Names and Registrars
The disputed domain names , , , , , and are registered with HiChina Zhicheng Technology Ltd.; the disputed domain names , , and are registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (the “Registrars”) (together “the Domain Names”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on May 26, 2018. On May 28, 2018, the Center transmitted by email to the Registrars a request for registrar verification in connection with the Domain Names. On May 29, 2018, the Registrars transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On May 30, 2018, the Center sent an email to the Parties in English and Chinese regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on June 6, 2018. 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 in English and Chinese of the Complaint, and the proceedings commenced on June 12, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 2, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 3, 2018.
The Center appointed Karen Fong as the sole panelist in this matter on July 5, 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 was incorporated in 1911 as an amalgamation of three previously existing companies. It officially became International Business Machines on February 14, 1924 and has been offering products under the trade mark IBM ever since. The Complainant is one of the leading innovators in the design and manufacture of a wide array of products that record, process, communicate, store and retrieve information including computers, computer hardware, software and accessories. The IBM trade mark was valued by BrandZ as being worth over USD 102 billion in 2017 and over USD 86 billion in 2016.
The IBM trade mark is registered in 170 jurisdictions around the world and for a broad range of goods and services. Theses registrations include the USA and China where the Respondent is based. The earliest registration submitted in evidence is USA trade mark registration No. 640,606 in Class 9 registered on January 29, 1957 and the earliest in China is Chinese trade mark registration No 5,744,986 in Class 9 registered in December 7, 2009 (the “Trade Mark”).
The Respondent who is based in China registered the Domain Names on the following dates:
Domain Names
Registration Date
April 1, 2018
April 1, 2018
April 4, 2018
April 4, 2018
April 4, 2018
April 4, 2018
April 4, 2018
April 4, 2018
April 5, 2018
April 5, 2018
April 11, 2018
The Domain Names do not resolve to active web pages. The Respondent has also registered more than 200 other domain names which include third-party company names and brands or mis-spellings of the same in combination with non distinctive elements, e.g., , , , and . 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Names are confusingly similar to the Trade Mark, that the Respondent has no rights or legitimate interests with respect to the Domain Names, and that the Domain Names were registered and are being used in bad faith. The Complainant requests transfer of the Domain Names. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Language of the Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the 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 proceedings. According to the information received from the Registrar, the language of the registration agreement for the Domain Names is Chinese.
The Complainant submits that the language of the proceeding should be English for the following reasons:
- The Registrar is an international company and an English version of the registration agreement is published at the Registrar’s website.
- The Domain Names are in Latin characters and English words.
- There are previous UDRP decisions involving the Registrar and Complainant where English was determined the language of the proceeding.
- China was ranked 36th among countries with the top English language skills in the EF English Proficiency Index (EF EPI), compiled by EF Education First, a global language training company which draws its conclusion from data collected via English tests available for free over the Internet. Specifically, more than 52 percent of China’s population can speak English.
- The 200 other Domain Names registered by the Respondent comprise English words with Latin characters.
Based on all the facts discussed above, there is a fair chance that the Respondent understands English and it will not be unreasonable to have English as the language of the proceeding.
In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs.
The Panel accepts the Complainant’s submissions regarding the language of the proceeding. The Respondent has not challenged the Complainant’s request and in fact has failed to file a response. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner. In this case, the Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. The Panel notes that all of the communications from the Center to the Parties were transmitted in both Chinese and English. In all the circumstances, the Panel determines that English be the language of the proceeding. 6.2. Substantive Matters
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that:
(i) The Domain Names are identical or confusingly similar to trade marks or service marks in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) The Domain Names were registered and being used in bad faith. A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has registered and unregistered rights to the Trade Mark. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the trade mark and the domain name to determine whether the domain name is confusingly similar to the trade mark. The test involves a side-by-side comparison of the domain name and the textual components of the relevant trade mark to assess whether the mark is recognizable within the domain name.
In this case the Domain Names contain the Complainant’s distinctive Trade Mark in its entirety plus the descriptive terms “bit”, “token”, “chain”, “echain” and “lian”. The addition of these terms does not negate the confusing similarity encouraged by the Respondent’s complete integration of the Trade Marks in the Domain Names. E.g., N.V. Organon Corp. v. Vitalline Trading Ltd., Dragic Veselin / PrivacyP,WIPO Case No. D2011-0260; Oakley, Inc. v. Wu bingjie aka bingjie wu/Whois Privacy Protection Service,WIPO Case No. D2010-0093; X-ONE B.V. v. Robert Modic,WIPO Case No. D2010-0207. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) which in this case is “.com”, “.ltd”, “.net”, “.top”, “.vip” and “.在线” (which is Chinese for “online”). It is viewed as a standard registration requirement.
The Panel finds that the Domain Names are identical or confusingly similar to trade marks in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the domain name by demonstrating any of the following:
(i) before any notice to it 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 has been commonly known by the domain name, even if it has acquired no trade mark 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.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence the complainant is deemed to have satisfied the second element.
The Complainant submits that the Respondent is not commonly known by the Trade Mark or any of the Domain Names. The Complainant has not licensed, authorized or otherwise permitted the Respondent to use the Trade Mark or apply for any domain name that incorporates the Trade Mark. There is no evidence of any use or demonstrable preparation to use the Domain Names in connection with any bona fide offering of goods or services or legitimate noncommercial fair use under the Policy.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not provided any reasons why it chose to register 11 domain names each comprising a well-known trade mark which it has no connection to. The Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Names.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names. C. Registered and Used in Bad Faith
To succeed under the Policy, the Complainant must show that the Domain Names have been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent must have been aware of the Trade Mark when it registered the Domain Names. It is implausible that it was unaware of the Complainant when it registered the Domain Names. The Trade Mark is a well-known trade mark belonging to the Complainant.
In the WIPO Overview 3.0, section 3.2.2 states as follows:
“Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.”
The fact that there is a clear absence of rights or legitimate interests coupled with no explanation for the Respondent’s choice of the Domain Names is also a significant factor to consider (as stated in section 3.2.1 of WIPO Overview 3.0). In light of the above, the Panel finds that registration is in bad faith.
The Domain Names are also used in bad faith. The fact that a domain name is inactive does not prevent a finding of bad faith registration and use (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). The passive holding of a domain name may amount to bad faith registration and use when it is difficult to imagine any conceivable future use of the domain name that would be legitimate and would not infringe a complainant’s well-known mark or would not amount to unfair competition (see Inter-IKEA v. Polanski,WIPO Case No. D2000-1614; Inter-IKEA Systems B.V. v. Hoon Huh,WIPO Case No. D2000-0438).
The fact that the Trade Mark is a famous trade mark, there are 11 domain names registered which incorporate the Trade Mark in its entirety, the address provided in the WhoIs does not appear to be a legitimate address and the failure on the part of the Respondent to make any submissions or provide any evidence to show any contemplated good faith use of the Domain Names are all circumstances which in their totality indicate bad faith use.
Further, the Respondent is the owner of more than 200 domain names which comprise trade marks owned by different trade mark owners. One of the examples of a bad faith registration is contained in paragraph 4(b)(ii) of the Policy (“you have registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided you have engaged in a pattern of such conduct”). This is part of such a pattern of conduct as the Respondent is engaged in a pattern of registration of a series of domain names incorporating well-known trade marks and therefore the Respondent’s use of the Domain Names is in bad faith.
From the above, the Panel finds that the Respondent has registered and used the Domain Names in bad faith and the Complainant has succeeded in proving the third element as well. 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 Domain Names, , , , , , , , , , and be transferred to the Complainant.
Karen Fong
Sole Panelist
Date: 19 July 2018
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